Ex Parte Antoo

Patent Trial and Appeal Board

Apr 27, 2016

11668918 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/668,918 01/30/2007 NizamAntoo
66945 7590 04/29/2016
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
TWO EMBARCADERO CENTER, 8TH FLOOR
SAN FRANCISCO, CA 94111
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
80083-723011(029900US) 4639
EXAMINER
KELLY, RAFFERTY D
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
EDurrell@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIZAM ANTOO
Appeal2014-006423
Application 11/668,918
Technology Center 2800
Before CARLA M. KRIVAK, JON M. JURGOV AN, and
AMBER L. HAGY, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks review under 35 U.S.C. § 134(a) from a rejection of
claims 17, 20-22, 24--26, 28, and 33--46. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm. 2
1 The real party in interest is Visa U.S.A., Inc. (App. Br. 3.)
2 Our Decision refers to the Specification filed Jan. 30, 2007 ("Spec."), the
Final Office Action mailed May 15, 2013 ("Final Act."), the Appeal Brief
filed Nov. 15, 2013 ("App. Br."), the Examiner's Answer mailed Mar. 20,
2014 ("Ans."), and the Reply Brief filed May 12, 2014 ("Reply Br.").
Appeal2014-006423
Application 11/668,918
STATEMENT OF THE CASE
The claims are directed to using a portable consumer device, such as a
payroll card, including a payment capability. (Spec. i-f 2, Abs.) Claims 17
and 21, reproduced below, are illustrative of the claimed subject matter:
1 7. A method comprising:
interacting with a portable consumer device with an access
device at a store operated by a merchant in a transaction, wherein
the portable consumer device is associated with a person and has
a monetary value, and wherein after interacting, the access
device generates and sends an authorization request message
comprising an amount substantially equal to the monetary value
and a merchant identifier to an issuer of the portable consumer
device;
receiving an authorization response message indicating
approval of the transaction from the issuer, and wherein the
merchant subsequently provides cash to the person, wherein the
cash that is provided to the person is substantially equal to the
monetary value; and
receiving a fee by the merchant from the issuer for
participating in the transaction.
21. A method comprising:
receiving an authorization request message comprising an
amount substantially equal to the monetary value and a merchant
identifier, wherein the authorization request message is
generated by an access device in response to an interaction with
the access device at a store operated by a merchant in a
transaction using a portable consumer device, wherein the
portable consumer device is associated with a person and has a
monetary value;
sending an authorization response message back to the
merchant indicating approval or disapproval of the transaction,
and wherein if the transaction is approved, the merchant provides
cash to the person in an amount substantially equal to the
monetary value; and
providing a fee to the merchant or an acquirer that is
associated with the merchant for participating in the transaction,
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Application 11/668,918
wherein the fee originates from an issuer of the portable
consumer device.
REJECTIONS
Claims 17, 20-22, 24--26, and 28 stand rejected under 35 U.S.C.
§ 102(b) based on Beane (US 2003/0163388 Al; Aug. 28, 2003). 3 (Final
Act. 2.)
Claims 17, 20-22, 24--26, 28, 44, and 45 stand rejected under 35
U.S.C. § 103(a) based on Beane and Goeller (US 2002/0178112 Al; Nov.
28, 2002). (Final Act. 2--4.)
Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) based on
Beane, Goeller, and Wheeler (US 6,950,940 B2; Sept. 27, 2005). (Final Act.
4.)
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) based on
Beane, Goeller, and Patricelli (US 2002/0198831 Al; Dec. 26, 2002). (Final
Act. 5.)
Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) based on
Beane, Goeller, and Friday (US 2005/0240477 Al; Oct. 27, 2005). (Final
Act. 5.)
Claims 39--43 stand rejected under 35 U.S.C. § 103(a) based on
Beane, Goeller, and Ramachandran (US 2001/0044747 Al; Nov. 22, 2001).
(Final Act. 6.)
Claim 46 stands rejected under 35 U.S.C. § 103(a) based on Beane,
Goeller, and Slater (US 2003/0055782 Al; Mar. 20, 2003). (Final Act. 7.)
3 The Examiner indicates the§ 102(b) rejection is withdrawn. (Ans. 7.) We
thus do not consider it further in this appeal.
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Application 11/668,918
APPELLANT'S ARGUMENTS
§ 103 (a) Rejection over Beane and Goeller
Claims 17, 21, and 28
1. Regarding independent claims 17 and 28, Appellant argues Beane
fails to teach or suggest "interacting with a portable consumer device with
an access device at a store operated by a merchant in a transaction," as
recited in claims 1 7 and 18. (App. Br. 15.) Instead, Appellant contends,
Beane is directed to a self-service order processing terminal designed to
avoid the use of a merchant and a store that is operated by a merchant.
(App. Br. 15.)
2. Regarding independent claims 17 and 28, Appellant argues Beane
fails to teach or suggest "receiving an authorization response message
indicating approval of the transaction from the issuer, and wherein the
merchant subsequently provides cash to the person, wherein the cash that is
provided to the person is substantially equal to the monetary value," as
recited in the claims. (App. Br. 15-16.) Specifically, Appellant argues
Beane (i-f 81) states nothing about dispensing cash that is substantially equal
to the monetary value of a portable consumer device, such as a prepaid card
with a loaded value of $500 given an employee by an employer. Appellant
contends Beane's self-service terminal cannot do this because, as explained
in the Specification's background, regulations prohibit ATMs from
dispensing more than $200 per day, so it is not possible for Beane's self-
service terminal to allow an employee to redeem the entire amount of his
prepaid card, which may reflect his pay for a particular pay period, for cash.
Id.
3. Regarding claims 17 and 28, Appellant argues Beane fails to
disclose "an authorization request message comprising an amount
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Application 11/668,918
substantially equal to the monetary value and a merchant identifier to an
issuer of the portable consumer device," as recited in claims 17 and 28.
(App. Br. 16-17.) Specifically, Appellant contends Beane's self-service
terminal is not a "merchant," and Beane has no authorization request
message comprising a merchant identifier and an amount substantially equal
to the monetary value of a portable consumer device. Appellant also argues
that Goeller (i-f 59) implies a consumer may ask for an amount of cash back
when paying for a transaction with a personal check, and that this does not
describe an authorization request message comprising an amount
substantially equal to the monetary value, nor does it describe anything
related to a portable consumer device (e.g., a payroll card). (App. Br. 17.)
4. Regarding claim 21, Appellant presents the same arguments (1 }-
(3) as set forth for claims 17 and 28. (App. Br. 17-20.)
§ 103 (a) Rejection over Beane, Goeller, and Friday
Dependent Claim 3 7
5. Regarding claim 37, Appellant argues Friday (i-f 30, Figs. 2A, 2B)
describes the normal interchange process where the merchant pays a fee for
the transaction, whereas the claim recites a reverse interchange process in
which the merchant receives a fee for the transaction. (App. Br. 20-21.)
Appellant concludes Friday does not teach or suggest the claimed "wherein
the means for receiving the fee by the merchant or the acquirer associated
with the merchant from the issuer of the portable consumer device for
participating in the transaction comprises a means for receiving the fee by
the acquirer associated with the merchant from the issuer of the portable
consumer device for participating in the transaction."
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Application 11/668,918
§ 103(a) Rejection over Beane, Goeller, and Ramachandran
Dependent Claim 3 9
6. Regarding claim 39, Appellant argues Ramachandran (i-f 75) does
not mention any employer or employee and thus fails to teach or suggest the
claimed "wherein the person and an employer of the person are not charged
a fee for the transaction." (App. Br. 21.)
ANALYSIS
Regarding argument (1), we agree with the Examiner's finding that
Beane (i-f 52) describes the claimed feature. (Ans. 7 .) Specifically, Beane
(i-f 52) describes a terminal in a food court of a mall that is shared by
multiple restaurants. A consumer can use the terminal to place an order at a
selected restaurant. Furthermore, Beane (i-f 81) states the customer may pay
with a debit card and select a cash back option. The Examiner finds Beane' s
mall may be considered the claimed "store" and the restaurants of the food
court may be considered the claimed "merchants.''
Although Appellant argues a mall is made up of many stores and thus
a mall itself is not a store (Reply Br. 2), the claim as written is not limited to
a single store. Appellant's argument is thus not commensurate in scope with
the claim as recited. 4
Moreover, we disagree with Appellant's argument that Beane's
terminal is designed to avoid the use of a merchant and a store that is
operated by the merchant. (Reply Br. 2.) Beane (i-f 52) states orders are
placed at a selected restaurant using the terminal in the mall's food court.
4 We also note that, consistent with Beane' s description, the Examiner could
have interpreted a restaurant owner as the claimed "merchant" and the
physical premises of the restaurant as the "store."
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Application 11/668,918
Processing a food order necessarily involves use of both a merchant and a
store operated by the merchant to receive the order and prepare and serve the
ordered food. Thus, we are not persuaded by this argument.
Regarding argument (2), the Examiner is correct that Beane (i-f 81)
describes a debit card that can be used to get cash back as a part of a
transaction, and that, under a broadest reasonable interpretation, 5 the amount
of cash received by a user is a "monetary value" associated with the card.
(Ans. 8; Reply Br. 3). The Examiner is also correct that arguments
attempting to distinguish the claimed invention from an A TM that is
restricted by regulation to dispense only limited monetary amounts, are not
supported by the claim language, which is entirely silent regarding such
features. (Id.) Appellant's contentions are thus not commensurate in scope
with the argued claims.
Regarding argument (3), we agree with the Examiner that the
combination of Beane and Goeller teach the claimed limitation for the
reasons stated by the Examiner. (Ans. 8.) Specifically, the Examiner states
that Goeller (i-f 59) teaches, as part of a transaction, a message is sent to a
service organization. The message includes a merchant identifier, third
party identifier, and the cash back desired. Although Appellant argues it
would not make sense for the cash back in Goeller to be an amount
substantially equal to the monetary value of a portable consumer device
because the consumer would not be able to pay for the transaction for which
he wrote the check (Reply Br. 3--4 ), the Examiner relies upon Goeller
5 Claims are given their broadest reasonable interpretation consistent with
the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369
(Fed. Cir. 2004).
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Application 11/668,918
merely for details of the authorization request message, not other features of
the claim that are taught by Beane. Thus, Appellant's argument does not
address the rejection as the Examiner applies it. Moreover,
[ t ]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Under the
proper obviousness analysis, we agree with the Examiner the claimed
limitation is at least suggested by Beane and Goeller, and that one of
ordinary skill would combine the concepts set forth in the references to
arrive at the claimed invention.
Argument ( 4) repeats arguments (1) to (3), and for the stated reasons,
we are not persuaded of Examiner error in the rejection of claim 21.
Regarding argument ( 5), we agree with the Examiner that claim 3 7
states, in the alternative, that either a merchant or an acquirer may receive a
fee for the transaction. (Ans. 9.) Thus, Appellant's argument that Friday
does not describe a merchant receiving a fee is not persuasive, because the
reference discloses that an acquirer receives a transaction fee (Friday i-f 30),
and disclosure of one of the claimed alternatives is sufficient to teach the
claimed limitation.
Regarding Appellant's Reply Brief argument that Friday does not
described an acquirer receiving a fee from an issuer, we cannot consider this
new argument as the Examiner has not had an opportunity to address it in
the briefing for this appeal. See 37 C.F.R. § 41.41(b)(2).
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Regarding argument ( 6), we agree with the Examiner that
Ramachandran (ii 7 5) teaches a user is not charged a fee for a transaction,
rendering obvious the corresponding limitation of claim 39. Although
Appellant argues a monthly fee is a transaction fee (Reply Br. 5), we regard
Ramachandran's disclosure as suggesting the monthly fee is an alternative to
a transaction fee. Specifically, Ramachandran describes that a user can pay
a monthly subscription fee and receive a certain amount of files from the
ATM "for no additional fee per dispense transaction." (Ramachandran
ii 7 5.) This suggests that the monthly fee is charged instead of a transaction
fee, so a monthly-fee user qualifies as a "person ... not charged a fee for the
transaction," as recited in claim 39.
In addition, one of ordinary skill would assume the user's employer
would not be charged a fee for the transaction either, as there is no indication
in Ramachandran that the transaction is related to the user's employment.
Thus, Ramachandran teaches, or at least suggests, the claimed limitation,
and we are not persuaded of Examiner error.
Remaining Claims
No separate arguments are presented for the dependent claims and,
therefore, we sustain the rejections of those claims for the reasons previously
stated. In re King, 801F.2d1324, 1325 (Fed. Cir. 1986); In re Sernaker,
702 F.2d 989, 991 (Fed. Cir. 1983); 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
To support a rejection under§ 103(a), "there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). On this record,
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Application 11/668,918
we find the Examiner's reasoning and underpinning adequate to support the
conclusion of obviousness.
DECISION
For the above reasons, the Examiner's Decision rejecting claims 17,
20-22, 24--26, 28, and 33--46 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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