Madison Wyatt, LLC

Patent Trials and Appeals Board

Jul 28, 2021

2020000366 (P.T.A.B. Jul. 28, 2021)

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.
14/449,707 08/01/2014 Chad Benson INNOVATION-P006 8863
133690 7590 07/28/2021
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
EXAMINER
KING, SIMON
ART UNIT PAPER NUMBER
2653
NOTIFICATION DATE DELIVERY MODE
07/28/2021 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):
USPTO@dockettrak.com
docketing@goodhue.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CHAD BENSON and MICHAEL L. FROST1
________________

Appeal 2020-000366
Application 14/449,707
Technology Center 2600
________________

Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and
SCOTT RAEVSKY, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1, 2, 4–7, and 9–11, which constitute all claims
pending in this application. Appeal Br. 6. We have jurisdiction under
35 U.S.C. § 6(b). The Board conducts a limited de novo review of the
appealed rejections for error based upon the issues identified by Appellant,
and in light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Madison Wyatt, LLC as the real party in interest. Appeal Brief
filed April 30, 2019 (“Appeal Br.”) 4.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A method for receiving authorization from a consumer
includes steps of connecting a phone call associated with a
consumer to an interactive voice response system after the agent
has conveyed the confirmation number to the consumer,
receiving the confirmation number from the consumer at the
interactive voice response system to provide authorization from
the consumer, and storing a record of entry of the confirmation
number by the consumer through the interactive voice response
system in a non-transitory computer readable storage medium.
Spec., Abstr.
Independent claim 1, reproduced below, illustrates the subject matter
of the appealed claims:
1. A method for receiving authorization from a consumer of
an agreement to pay using an interactive voice response system,
the method comprising steps of:
generating at a computing device a payment reference
number for the consumer to use to provide authorization of the
agreement to pay;
communicating the payment reference number to an agent
for the agent to convey to the consumer via a voice call between
the agent and the consumer;
connecting the voice call to an interactive voice response
system after the agent has conveyed the payment reference
number to the consumer during the voice call to allow the
consumer to interact with the interactive voice response system;
communicating through the interactive voice response
system a request to the consumer to pay and to enter the payment
reference number as the authorization of the agreement to pay
during the voice call;
receiving the payment reference number from the
consumer at the interactive voice response system during the
voice call to provide the authorization to pay from the consumer;
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storing a record of the payment reference number input by
the consumer through the interactive voice response system in a
non-transitory computer readable storage medium;
wherein the step of communicating the payment reference
number to the agent comprises displaying the payment reference
number on a display associated with the agent.

STATEMENT OF THE REJECTIONS2
Claims 1, 4–6, and 9–11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of Sege (US 2011/0022522
A1; published Jan. 27, 2011), Alshobaki (US 2014/0258009 A1; published
Sept. 11, 2014), and Pycko (US 8,831,204 B1; issued Sept. 9, 2014). Non-
Final Act. 3–12.
Claims 2 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combined teachings of Sege, Alshobaki, Pycko, and
Chencinski (US 5,355,406 A; issued Oct. 11, 1994). Non-Final Act. 13.

EXAMINER’S DETERMINATIONS
The Examiner finds that Sege discloses most of the limitations of
independent claim 1. Non-Final Act. 3–4. The Examiner finds, however, that
“Sege does not teach ‘communicating the payment reference number to an

2 Initially, the Examiner also rejected claims 1, 2, 4–7, and 9–11 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter without
reciting significantly more. Final Action mailed August 2, 2018 (“Final
Act.”) 2–4. However, the Examiner withdrew this rejection in the Non-Final
Action mailed February 21, 2019 (“Non-Final Act.”). Because we are
affirming the obviousness rejections, we do not address eligibility. Should
prosecution continue, however, the Examiner should evaluate whether the
claims are directed to patent-ineligible subject matter without reciting
significantly more.
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agent for the agent to convey to the consumer via a voice call between the
agent and the consumer’, nor teaches that the payment reference number was
displayed in the agent’s terminal.” Id. at 4. The Examiner further finds that
Alshobaki discloses these limitations and provides the motivation of making
“customer interaction[s] more effective and more appealing because the call
was handled by a human agent instead of a robotic[-]like [interactive voice
response system (IVR)].” Id. at 4–5.
The Examiner finds that the combination of Sege and Alshobaki
fails to teach “connecting the voice call to an interactive voice
response system after the agent has conveyed the payment
reference number to the consumer during the voice call to allow
the consumer to interact with the interactive voice response
system; communicating through the interactive voice response
system a request to the consumer to pay and to enter the payment
reference number during the voice call.”
Non-Final Act. 5. But the Examiner finds that these limitations are disclosed
by Pycko. Id. The Examiner also provides a motivation to combine Sege,
Alshobaki, and Pycko. Id. at 5–6.

CONTENTIONS AND ANALYSIS
I.
Appellant asserts that one of ordinary skill in the art would not
combine Sege, Alshobaki, and Pycko, and therefore the rejections should be
reversed. Appeal Br. 14–15. More specifically, Appellant asserts that Sege,
Alshobaki, and Pycko are directed towards addressing different problems,
and one of ordinary skill in the art would not combine these references. Id.
at 15.
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We understand Appellant to be arguing that the references are not
analogous art, but we disagree. “Prior art is analogous where either (1) the
art is from the same field of endeavor, regardless of the problem addressed
or (2) even if the reference is not within the same field of endeavor, the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Ethicon, Inc., 844 F.3d 1344, 1349 (Fed.
Cir. 2017) (quotations omitted). The analogous art test, then, does not ask
whether the prior art references are analogous to each other, as Appellant
seems to suggest (see Appeal Br. 14–15), but rather asks whether the
references are analogous to the claimed subject matter. See also In re Kahn,
441 F.3d 977, 986–87 (Fed. Cir. 2006).
In this case, Sege is directed to mobile payment processing. Sege ¶ 4.
Alshobaki is directed to payment processing methods and services.
Alshobaki ¶ 2. And Pycko is directed to payment processing. Pycko col. 1,
ll. 8–12. All of these inventions, then, are analogous to the subject matter of
the claims—methods for providing identity verifications as part of consumer
payment verifications.
Appellant further alleges that Sege is inconsistent with Alshobaki and
teaches away from having an agent convey the payment
reference number to the consumer via a voice call due to
jeopardizing the mobile operators[’] business model and legal
role, a merchant would have to interact with all mobile carriers
separately and shoppers would have to proceed to several
additional steps to complete the purchase leading to frustration
and a likelihood the consumer would not complete the purchase.
Appeal Br. 15–16 (citing Sege ¶ 48).
The Examiner clarifies that Sege discloses a first mechanism of an
agent interacting with the consumer and a second mechanism of a computer
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system interacting with a consumer. Examiner’s Answer 3–4, mailed
Aug. 23, 2019 (“Ans.”) (citing Sege ¶¶ 47–48). Appellant subsequently
argues that Sege actually does not use the term “agent,” but rather uses
“operator” in the context of a mobile operator. Reply Brief 16, filed Oct. 21,
2019 (“Reply Br.”).
We agree with Appellant that Sege is referring to mobile operators, or
telecommunications carriers, and not to a human operator or agent, but this
fact is not dispositive of whether Sege teaches away from having a consumer
interact with an agent via a voice call. And the fact that Sege notes
drawbacks related to having an agent convey the payment reference number
to the consumer via a voice call (e.g., Sege ¶ 48, cited in Appeal Br. 15–16)
does not teach away from doing so because Sege additionally discloses that
this approach actually has been considered:
To overcome the problem [of mobile users not recalling
authorizing a charge], some mobile network operators have
suggested that the mobile network operator itself would actually
intercede in each third party content purchase, such that the
mobile network operator itself would be required to transmit to a
mobile subscriber’s web browser the PIN confirmation page.
The advantage of an operator-run system is that it provides a
mobile network operator the capability (“PIN tracking”) to track
double-opt-in confirmation evidence in concert with its billing to
its subscribers. But the approach also has insurmountable
drawbacks insofar as 1) it pulls mobile operators, who prefer to
remain neutral, into the stream of commerce and marketing for
third party products and content that they do not control
threatening their posture as a common carrier without liability
for the contents of their carriage. Moreover, the approach
interferes with the subscriber’s shopping experience, causes
inconvenience, and interferes with a merchant's freedom and
ability to market and maintain a relationship with his customers.
Sege ¶ 14.
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Restated, Sege teaches that having the carrier operator interact with
the user has both advantages and disadvantages. But “[a] given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.” Allied Erecting v. Genesis
Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (cleaned up).
Furthermore, the Examiner clarified that the motivation to combine was
related to the benefit of “mak[ing] the customer interaction more effective
and more appealing because the call was handled by a human agent instead
of a robotic[-]like IVR.” Non-Final Act. 4. See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away [. . .] if it merely expresses a general
preference for an alternative invention[.]”).
Appellant also argues that one ordinarily skilled in the art would not
combine Sege with Pycko and that there is simply no teaching of an agent
connecting the phone to an interactive voice response system after the agent
has conveyed the number to the consumer during the voice call to allow the
consumer to interact with the IVR. Appeal Br. 17. This argument is
unpersuasive because the Examiner relied on Pycko for disclosing the agent
connecting the consumer call to an IVR system after the agent and the
consumer are already in a voice call, in order for the consumer to enter
information. Non-Final Act. 5. One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. In re Keller, 642 F.2d 413, 426 (Fed. Cir. 1981).
II.
Appellant next argues that the combination of Sege, Alshobaki, Pycko
does not teach a payment reference number for the consumer to use to
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provide authorization for the agreement to pay. Appeal Br. 18–23. Appellant
argues that Sege “describes a request to authorize the payment by the
consumer, wherein the consumer/subscriber requests a verification code or a
confirmation code.” Id. at 20. According to Appellant, “[p]aragraph 77
teaches that the verification code or confirmation code is used to confirm
payment[—]not for authorization of an agreement to pay.” Id.
Appellant’s arguments are unpersuasive of reversible error because
we see no patentable distinction between Sege labeling the transmitted
number as a verification or confirmation code and the claim labeling the
transmitted number as “a payment reference number” “to provide
authorization of the agreement to pay.” Appellant’s Specification indicates
that Appellant’s agreement to pay is “a form of promise arrangement such as
may be used in collecting on debt incurred by the consumer” and states that
the agent is presented with a confirmation number. Spec., p. 3, ll. 23–28, p.
4, ll. 21–23. Furthermore, prior to the claim amendments of April 11, 2018,
the claims included the term, “confirmation number” instead of payment
reference number. More importantly, Sege explains that the verification code
is used to authorize the payment for a product. E.g., Sege ¶ 65.
Appellant further alleges that Alshobaki and Pycko do not disclose a
payment reference number for the consumer to use to provide authorization
of an agreement to pay. This argument is not persuasive because the
Examiner relies on Sege for teaching the payment reference number. Non-
Final Act. 3. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references. In
re Keller, 642 F.2d at 426.
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III.
Appellant contends that Sege does not teach communicating the
payment reference number to an agent for the agent to convey to the
consumer via a voice call between the agent and the consumer. Appeal
Br. 23–24. More specifically, Appellant contends that Sege teaches away
from having an agent convey the payment reference number to the consumer
via a voice call. Id. These arguments are unpersuasive for similar reasons as
those set forth above.
Appellant further contends that Alshobaki does not teach
communicating the payment reference number to an agent for the agent to
convey to the consumer via a voice call between the agent and the consumer.
Appeal Br. 24–25. Appellant argues that the limitations are not taught
because the Alshobaki reference was not considered as a whole, and
Appellant implies that Alshobaki teaches away from the claimed invention.
Id. at 25.
These arguments are unpersuasive. Alshobaki expressly discloses
“[the c]ustomer service representative 1402 could also receive the temporary
validation code information via portal 1406 and convey the information over
the telephone to [the] user 1401.” Alshobaki ¶ 88. Alshobaki also discloses
an alternate method of having the message sent directly to the consumer, but
expressing an alternate method does not mean the reference teaches away.
“A reference does not teach away [. . .] if it merely expresses a general
preference for an alternative invention[.]” DePuy Spine, 567 F.3d at 1327.
Appellant also argues that Pycko does not teach or discuss
communicating the payment reference number to an agent for the agent to
convey to the consumer via a voice call between the agent and the consumer.
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Appeal Br. 23–24. This argument is unpersuasive because the Examiner
relies on Alshobaki—not—Pycko for teaching these limitations, as stated
above. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references. In
re Keller, 642 F.2d at 426.
IV.
Appellant next argues that the cited art does not teach connecting the
voice call to an IVR after the agent has conveyed the payment reference
number to the consumer during the voice call to allow the consumer to
interact with the IVR. Appeal Br. 27–29. More specifically, Appellant
contends that Pycko does not teach connecting the voice call to an IVR after
the agent has conveyed the payment reference number to the consumer
during the voice call to allow the consumer to interact with the IVR. Id.
This argument does not persuade us of reversible error because
Appellant again argues the references individually. In this case, the
Examiner relies on Pycko only for connecting the voice call to an IVR
during a voice call to allow the consumer to interact with the IVR—not for
teaching doing so after the agent has conveyed the payment reference
number to the consumer during the voice call. Non-Final Act. 5. Rather, the
Examiner relies on the combination of Sege and Alshobaki for teaching that
an agent conveys the payment reference number to the consumer. Id.
Appellant further argues that neither Sege nor Alshobaki discloses
connecting the voice call to an IVR after the agent has conveyed the
payment reference number to the consumer during the voice call to allow the
consumer to interact with the IVR. Appeal Br. 28–29. This argument is
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unpersuasive because the Examiner relies on Pycko for teaching these
limitations—not Sege or Alshobaki. Non-Final Act. 3–5.
V.
Appellant contends that the cited art does not teach displaying the
payment reference number on a display associated with the agent. Appeal
Br. 30–34. More specifically, Appellant argues that Alshobaki teaches that
the temporary code should be sent by text message. Id. 30–31 (citing
Alshobaki ¶ 88). This argument is unpersuasive because Alshobaki
additionally discloses that an alternative solution is to have a customer agent
receive “the temporary validation code information via portal 1406 and
convey the information over the telephone to user 1401.” Alshobaki ¶ 88.
Conclusions
For the foregoing reasons, Appellant has not persuaded us of
reversible error in the Examiner’s obviousness rejection of independent
claims 1, 6, and 11. Accordingly, we affirm the Examiner’s rejection of
these claims and also of claims 4, 5, 9, and 10, which depend from claims 1
and 6.
We, likewise, affirm the Examiner’s obviousness rejection of claims 2
and 7 over Sege, Alshobaki, Pycko, and Chencinski. Appellant merely
argues that Chencinski does not cure the purported deficiencies of the base
references, discussed above. Appeal Br. 34–35.

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DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–6, 9–11 103 Sege, Alshobaki,
Pycko
1, 4–6, 9–11
2, 7 103 Sege, Alshobaki,
Pycko, Chencinski
2, 7
Overall
Outcome
1, 2, 4–7, 9–
11