Federico Zambelli Hosmer et al.

Patent Trials and Appeals Board

Oct 2, 2020

13614429 - (D) (P.T.A.B. Oct. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/614,429 09/13/2012 Federico Zambelli Hosmer 7879-37300 3466
156785 7590 10/02/2020
KHMRG (PayPal, Inc.)
1120 S. Capital of Texas Hwy
Building 2, Suite 300
Austin, TX 78746
EXAMINER
LEFFALL-ALLEN, NAKIA
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FEDERICO ZAMBELLI HOSMER,
JULIJ VANELLO PREMRU, and PIETRO SARDO
____________

Appeal 2020-002737
Application 13/614,429
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–14, and 16–20, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies PayPal, Inc. as the real party in
interest. Appeal Br. 4.
Appeal 2020-002737
Application 13/614,429

2
CLAIMED SUBJECT MATTER
Appellant’s invention relates to “provid[ing] check-in based payment
processes, which allow a user to pre-authorize a transaction by registering a
check-in at a location.” Spec. ¶ 2.
Claims 1, 11, and 17 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal (emphasis added):
1. A method comprising:
receiving a first request from a user interface operating on
a merchant device to link a first payment account associated with
a merchant with a first check-in service account;
receiving a second request from a user interface operating
on a mobile user device to link a second payment account
associated with a user with a second check-in service account;
linking, on a server, the first payment account associated
with the merchant with the first check-in service account, the first
check-in service account controlled by the merchant, the linking
executed in response to the first request received from the
merchant;
linking, on the server, the second payment account
associated with the user with the second check-in service
account, the second check-in service account controlled by the
user, the linking executed in response to the second request
received from the user;
receiving, on the server from a check-in service, check-in
data, the check-in data including a merchant identifier and user
information identifying the user, registering the user with the
second check-in service and associating the user with the mobile
user device, and a check-in operation generating the check-in
data is initiated by the mobile user device entering a physical
location associated with the merchant;
Appeal 2020-002737
Application 13/614,429

3
generating, on the server in response to the check-in
operation, a real-time pre-approval for a transaction between
the merchant identified by the merchant identifier and the user,
the pre-approval including a one-time-use PIN and a termination
event associated with the one-time-use PIN;
sending, from the server to the mobile user device over a
network, at least the one-time-use PIN;
receiving, on the server from the user interface operating
on the merchant device over the network, a validated transaction,
the validated transaction including the one-time-use PIN
associated with the pre-approval; and
processing, on the server, a payment from the second
payment account to the first payment account based at least in
part on the validated transaction.
Appeal Br. 15 (Claims App.).
REJECTIONS
The Examiner rejects claims 11–14 and 17–20 under 35 U.S.C.
§ 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite.
Final Act. 3–5.
The Examiner rejects claims 1–3, 5–8, 11–13, and 16–19 under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Silverstein2 and
Flitcroft.3 Final Act. 5–9.
The Examiner rejects claims 4, 14, and 20 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Silverstein, Flitcroft, and Royyuru.4
Final Act. 9.

2 Silverstein et al., US 7,496,527 B2 (iss. Feb. 24, 2009).
3 Flitcroft et al., US 2003/0028481 A1 (pub. Feb. 6, 2003).
4 Royyuru, US 2011/0153496 A1 (pub. June 23, 2011).
Appeal 2020-002737
Application 13/614,429

4
The Examiner rejects claims 9 and 10 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Silverstein, Flitcroft, and Bishop.5 Final
Act. 9–10.
OPINION
Rejection Under 35 U.S.C. § 112
The Examiner determines that independent claim 11 is indefinite
because the recited “user interface(s) (operating on the merchant and mobile
devices) are not part of the system” and “[i]t is unclear whether the claim is
directed toward the processor(s) or the user interface operating on each
device.” Ans. 4; see Final Act. 4. The Examiner determines that
independent claim 17 is indefinite under similar reasoning. Ans. 4–5 (“It is
unclear whether the claim is directed toward the medium or the user
interface operating machine . . . .”); Final Act. 4–5.
Appellant argues that “claims 11 and 17 are unambiguously directed
to a system and storage medium, respectively” and that “there is no
ambiguity that the claims are directed toward a system and storage medium,
rather than the user interface(s).” Reply Br. 2–3.
We agree with Appellant. As Appellant points out, claim 11 is
directed toward a system that includes “processors” and “a memory,” and
the system performs operations including “receiving a first request from a
user interface operating on a merchant device” and “receiving a second
request from a user interface operating on a mobile user device.” See Reply
Br. 2–3 (citing Spec. ¶ 31); Appeal Br. 9 (citing Spec. ¶¶ 18, 19, 24, 25, 40,
41, 59; Figs. 1, 4, 6). Although the Examiner finds that the user interfaces

5 Bishop et al., US 2007/0052517 A1 (pub. Mar. 8, 2007).
Appeal 2020-002737
Application 13/614,429

5
from which the first and second requests are received “are not part of the
system” (Ans. 4), we disagree that this renders the claim indefinite; we
understand that the claim requires the system to receive the recited first and
second requests from user interfaces of a merchant device and a mobile user
device, respectively, and not that these user interfaces are part of the claimed
system. Similarly, claim 17 is directed toward a “non-transitory machine-
readable storage medium” including instructions that cause a machine to
perform operations including “receiving a first request from a user interface
operating on a merchant device” and “receiving a second request from a user
interface operating on a mobile user device.” We find that the metes and
bounds of the claims are clear in this regard.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112
rejection of claims 11–14 and 17–20 as indefinite.
Rejections Under 35 U.S.C. § 103
The Examiner relies on Flitcroft for the limitation of “generating . . .
in response to the check-in operation, a real-time pre-approval for a
transaction,” as recited in independent claim 1 and similarly recited in
independent claims 11 and 17. Final Act. 6–7 (citing Flitcroft ¶¶ 86, 87,
103, 187, 202, 207, 235); see Ans. 7 (citing Flitcroft ¶¶ 204, 205, 231, 232).
According to the Examiner, “[t]he ‘event triggers’ of Flitcroft . . . are in
response to a user’s check-in operations.” Final Act. 3 (citing Flitcroft
¶¶ 75, 86).
Appellant argues that Flitcroft does not teach or suggest
“generating . . . in response to the check-in operation, a real-time pre-
approval for a transaction,” where “the check-in data is initiated by the
mobile user device entering a physical location associated with the
Appeal 2020-002737
Application 13/614,429

6
merchant,” as claimed. Appeal Br. 10–11; Reply Br. 4–5. Specifically,
Appellant argues that Flitcroft “teach[es] at most generating a single
merchant or one-time use account for use in a transaction.” Appeal Br. 10;
see Reply Br. 4–5.
We agree with Appellant. Flitcroft teaches limited use credit card
numbers and/or cards that “can be used for a single or limited use
transaction, thereby reducing the potential for fraudulent reuse of these
numbers and/or cards.” Flitcroft Abstr. For example, validation or
activation of a limited use card may be limited to a specific merchant
prearranged by the user or determined “at the time of making the purchase,
during the authorization process or during the settlement process.” Id.
¶ 103; see id. ¶¶ 202, 204. The cited portions of Flitcroft, however, are
silent on a check-in operation (such as Silverstein’s location-based check-in
operation (see Final Act. 6)) being the basis for pre-approval of a
transaction. Other portions of Flitcroft appear to teach that the
determination of whether a transaction is valid occurs at the time a card is
used for a transaction, rather than during a pre-approval. Flitcroft ¶¶ 101,
160, 186, 220–221. Accordingly, we find that the Examiner does not
identify, and we are unable to discern, where Flitcroft teaches or suggests
pre-approving a transaction in response to a check-in operation.
For the foregoing reasons, we do not sustain the Examiner’s § 103
rejections of claims 1–5, 7–14, and 16–20.
Appeal 2020-002737
Application 13/614,429

7
CONCLUSION
The Examiner’s rejection of claims 11–14 and 17–20 under 35 U.S.C.
§ 112 is reversed.
The Examiner’s rejections of claims 1–5, 7–14, and 16–20 under
35 U.S.C. § 103 are reversed.
DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected 35 U.S.C. §
References/
Basis Affirmed Reversed
11–14, 17–20 112 Indefiniteness 11–14, 17–20
1–3, 5–8,
11–13, 16–19
103 Silverstein,
Flitcroft
1–3, 5–8,
11–13, 16–19
4, 14, 20 103 Silverstein,
Flitcroft,
Royyuru
4, 14, 20
9, 10 103 Silverstein,
Flitcroft,
Bishop
9, 10
Overall
Outcome
1–5, 7–14,
16–20