Ex Parte Bookstaff

Patent Trial and Appeal Board

Jul 25, 2016

12392190 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/392, 190 0212512009
36790 7590 07/25/2016
TILLMAN WRIGHT, PLLC
POBOX49309
CHARLOTTE, NC 28277-0076
FIRST NAMED INVENTOR
Blake BOOKSTAFF
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.
1098.002 8438
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
MAILDATE DELIVERY MODE
07/25/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BLAKE BOOKST AFF
Appeal2014-002263 1
Application 12/392,1902
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 106-118, 121, 122, 125, 133-135, and 164. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("Br.," filed July 15,
2013) and the Examiner's Answer ("Ans.," mailed September 23, 2013) and
Final Office Action ("Final Act.," mailed November 14, 2012).
2 The real party in interest is the inventor, Blake Bookstaff. Br. 3.
Appeal2014-002263
Application 12/392, 190
CLAIMED INVENTION
Appellant's claimed invention "generally relates to methods, systems
and apparatus for facilitating gratuities when payments for services are
charged to accounts in electronic transactions" (Spec. i-f 3).
Claim 106, reproduced below, is illustrative of the subject matter on
appeal:
106. A method facilitating the automatic addition, in a
financial transaction processing network, of a gratuity to an
amount of an electronic financial transaction, comprising the
steps of:
(a) maintaining, in a computer database,
(i) account information carried by a payment object,
(ii) in association with data indicative of a gratuity
to be charged against an account associated with the
payment object;
(b) following presentation of a first bill to a patron, and
subsequent presentation of the payment object,
(i) electronically receiving, from a first point of sale
(POS) terminal, over a network by a first computer,
account information acquired from the payment object and
an identification of a first party, which first party has been
presented the payment object for a payment of a first
certain amounted [sic] owed,
(ii) electronically accessing, by the first computer
from the computer database, data indicative of a gratuity
to be charged against the account associated with the
payment object, and
(iii) electronically communicating, over the
network by the first computer for receipt by the first POS
terminal, data indicative of a gratuity to be charged against
the account associated with the payment object; and
( c) following presentation of a second bill to a patron, and
subsequent presentation of the payment object,
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Application 12/392, 190
(i) electronically receiving, from a second point of
sale (POS) terminal, over a network by the first computer,
account information acquired from the payment object and
an identification of a second party, which second party has
been presented the payment object for a payment of a
second certain amounted [sic] owed,
(ii) electronically accessing, by the first computer
from the computer database, data indicative of a gratuity
to be charged against the account associated with the
payment object, and
(iii) electronically communicating, over the
network by the first computer for receipt by the second
POS terminal, data indicative of a gratuity to be charged
against the account associated with the payment object;
( d) wherein the first certain amount and the second certain
amount are not the same amount;
( e) wherein the first certain amount owed is an amount
determined by the first party prior to presentation of the payment
object to the first party for payment of the first certain amount
owed, the first certain amount owed having been presented in the
first bill for services or items ordered from the first party;
( f) wherein the second certain amount owed is determined
by the second party prior to presentation of the payment object
to the second party for payment of the second certain amount
owed, the second certain amount owed having been presented in
the second bill for services or items ordered from the second
party;
(g) wherein the data indicative of a gratuity that is
electronically communicated for receipt by the first POS terminal
is communicated for confirmation of the gratuity amount by a
person associated with the account; and
(h) wherein the data indicative of a gratuity that is
electronically communicated for receipt by the second POS
terminal is communicated for confirmation of the gratuity
amount by a person associated with the account.
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Appeal2014-002263
Application 12/392, 190
REJECTIONS
Claims 106-110, 133, and 164 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Nielsen (US 2003/0168509 Al, pub. Sept. 11, 2003)
and Mullen (US 2009/0159705 Al, pub. June 25, 2009).
Claims 111-115, 122, and 125 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Nielsen, Mullen, and Baron (US 2009/0055269 Al,
pub. Feb. 26, 2009).
Claims 116-118, 121, and 134--136 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nielsen, Mullen, and Official Notice.
ANALYSIS
Independent claim 106 and dependent claims 107-110 and 133
We are persuaded by Appellant's argument that the Examiner erred in
rejecting claim 106 under 35 U.S.C. § 103(a) because neither Nielsen nor
Mullen, individually or in combination, discloses or suggests "electronically
accessing by [a] first computer from [a] computer database, data indicative
of a gratuity to be charged against [an] account associated with [a] payment
object," as recited in claim 106 (Br. 8-12).
Nielsen is directed to an authorization system for facilitating
communications between parties involved in an electronic payment
transaction, namely, a merchant, a payment cardholder, and an acquirer who
captures electronic data concerning the transaction on behalf of the payment
card issuer (Nielsen i-f 57). Nielsen discloses, with reference to Figure 3, that
in a first embodiment, an electronic funds transfer point of sale ("EFTPOS")
terminal 32a comprises payment card reader 30, operator input device 42,
output display screen 44, EFT processing engine 46, payment transaction
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Application 12/392, 190
database 48, modem 50 and printer 52 (Nielsen if 58). The process for
obtaining authorization for an electronic payment transaction, according to
this first embodiment, is illustrated in Nielsen Figure 4, and comprises three
key stages. In the first stage, payment card details are input into EFTPOS
terminal 32a using payment card reader 40 (step 62), and sent to EFT
processing engine 46, which stores the payment card details in payment
transaction database 48 (step 64) (id. if 61). At step 66, EFT processing
engine 46 issues a message to output display screen 44 prompting the
terminal operator to enter a sales amount, which subsequently is written to
payment transaction database 48 (id.). The sales amount and the payment
card details are then sent by EFT processing engine 46 to printer 52; this
begins the second stage of the authorization process, wherein a transaction
signature slip is printed and presented to the cardholder (step 68) (id.). If
EFTPOS terminal 32a is operating in the "gratuity" mode, printer 52 is
instructed to print off lines that permit both a gratuity amount and a total
amount to be entered (step 72) (id. if 64). When presented with the printed
signature slip, the cardholder completes the slip, specifying the total amount
(including any gratuity) that he/she wishes to pay (step 76) (id. if 66). Upon
returning to the EFTPOS terminal with the completed signature slip, after
verifying that the cardholder' s signature is valid, when the terminal is in the
gratuity mode, the terminal operator is prompted to enter the total amount
indicated on the signature slip; EFT processing engine 46 then accesses the
transaction details in payment transaction database 48 and overwrites the
stored sale amount with the total amount (id. if 68). In the third, and final
stage of the process, EFT processing engine 46 obtains the transaction
details from payment transaction database 48 and forwards the information,
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Appeal2014-002263
Application 12/392, 190
together with the merchant ID, to the acquirer as an authorization request
(id. ii 69).
In the Final Office Action, the Examiner cites Figures 3, 4 (steps 64--
88), 7, and 9 and paragraphs 20, 57, and 58 of Nielsen as disclosing
"electronically accessing by [a] first computer from [a] computer database,
data indicative of a gratuity to be charged against [an] account associated
with [a] payment object," as recited in claim 106 (Final Act. 5---6). However,
as described above, rather than accessing data indicative of a gratuity from a
computer database, the cardholder in Nielsen is presented with a printed
receipt, and fills in a gratuity on the printed receipt. Although Nielsen
discloses that the sales amount is written to payment transaction database 48,
as Appellant observes, this occurs before any gratuity has been determined,
and even when the gratuity is provided by the cardholder, the new
transaction total (including the gratuity), rather than "data indicative of [the]
gratuity," is written to the payment transaction database (Br. 11 (citing
Nielsen ii 68) ).
Nielsen discloses a second embodiment of the authorization system
with reference to Figure 9 in which a merchant EFTPOS base terminal 32b
is accompanied by a portable handset 150 (Nielsen ii 77). In this
embodiment, the EFTPOS base terminal comprises only an EFT processing
engine, a payment transaction database, and a radio transceiver; the other
elements, i.e., the payment card reader, operator input device, printer, and
output display screen, are housed in the portable handset (id.). The steps in
the authorization process are substantially similar to those described above
with respect to the first embodiment except that the payment card details and
a sales amount are entered into the portable handset rather than the EFTPOS
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Application 12/392, 190
terminal itself (id. if 78). After communicating with the EFTPOS terminal,
the portable handset produces a transaction signature slip; the cardholder
completes the printed signature slip, indicating the total amount to be paid;
and the operator enters the total amount into the portable handset using the
operator input device (id.). The information is then transmitted to the EFT
processing engine at the EFTPOS base terminal, and authorization is sought
for the payment transaction (id.).
Mullen is directed to a payment card, and discloses that a user can
utilize buttons located on the card to perform activities that would otherwise
be performed at an A TM, a payment card reader, or by a waitress (Mullen,
Abstract). Mullen, thus, discloses that the card could have buttons
corresponding to different tip amounts and that a user could use these
buttons to indicate, when the card is swiped, that, for example, a 10% tip, is
authorized (see, e.g., Mullen if 98, Fig. 7).
The Examiner asserts in the Final Office Action that "the smart
card/ device of the Mullen reference is particularly well suited to be
integrated into the second embodiment of Nielson (Fig. 9) as the interface of
the Mullen device can be integrated into a point of sale device
(if 0109/if 011 O; and it would free-up manual operation at point-of-sale
(Nielson (if [0079)[)]" (Final Act. 3). But the Examiner does not otherwise
explain how Mullen's payment card would be integrated into the Nielsen
POS device or why this combination discloses or suggests "electronically
accessing by the first computer [which electronically receives, from a first
point of sale (POS) terminal, over a network, account information acquired
from the payment object] from the computer database, data indicative of a
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Application 12/392, 190
gratuity to be charged against the account associated with the payment
object," as recited in claim 106.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 106 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the Examiner's rejection of dependent claims 107-110 and 133.
Independent claim 164
Claim 164 includes language substantially similar to the language of
claim 106. Therefore, we do not sustain the Examiner's rejection of
claim 164 under 35 U.S.C. § 103(a) for the same reasons set forth above
with respect to claim 106.
Dependent claims 111-118, 121, 122, 125, and 134-136
Each of claims 111-118, 121, 122, 125, and 134--136 depends,
directly or indirectly, from independent claim 106. Neither the Examiner's
rejection of claims 111-115, 122, and 125 based on Baron, in combination
\vith Nielsen and l\1ullen, nor the Examiner's rejection of claims 116-118,
121, and 134--136 based on Official Notice, in combination with Nielsen and
Mullen, cures the deficiency in the Examiner's rejection of claim 106.
Therefore, we do not sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 111-118, 121, 122, 125, and 134--136 forthe same
reasons set forth above with respect to claim 106.
DECISION
The Examiner's rejections of claims 106-118, 121, 122, 125, 133-
135, and 164 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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Appeal2014-002263
Application 12/392, 190
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