Ex Parte Doherty et al

Patent Trial and Appeal Board

Jan 31, 2017

12905755 (P.T.A.B. Jan. 31, 2017)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/905,755 10/15/2010 Thomas Cameron Doherty 505595 8629
30955 7590 02/02/2017
T ATHROP ^ GAGV. T T P EXAMINER
4845 PEARL EAST CIRCLE AGWUMEZIE, CHINEDU CHARLES
SUITE 201
BOULDER, CO 80301 ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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 @ lathropgage. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS CAMERON DOHERTY, CARLIN DOMBUSH, and
DAVID FARBER
Appeal 2014-008102
Application 12/905,7551
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants identify 34 Solutions, LLC as the real party in interest.
Appeal Br. 3.
Appeal 2014-008102
Application 12/905,755
ILLUSTRATIVE CLAIM
1. A method for electronic purchasing via a mobile web-
enabled communication device including an Internet browser,
the method comprising:
creating a contacts list, stored on the mobile
device, containing at least one shipping address;
creating a payment file, stored on the mobile
device, containing encrypted credit card information
including a card number and expiration date for at least
one credit card;
displaying, via the browser, a merchant website
including a web page displaying an order button;
placing the item to be purchased in an order list on
the web page;
selecting the order button to cause item
information including the name and price of a selected
item to be purchased to be sent from the merchant
website to the device;
requesting the price of the selected item from the
merchant website;
receiving the price of the selected item from the
merchant website;
in response to receipt of the item information from
the merchant website:
selecting a specific one of the credit cards and a
specific one of the shipping addresses from the contacts
list and the payment file, respectively;
decrypting the credit card data for the selected
credit card; and
sending the decrypted credit card data and the
selected shipping address from the device to the
merchant website for order processing.
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Appeal 2014-008102
Application 12/905,755
REJECTION
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wong et al. (US 2012/0143752 Al, pub. June 7, 2012) (“Wong”) and
Kim et al. (US 2008/0249948 Al, pub. Oct. 9, 2008) (“Kim”).
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 2—8 and the Answer at pages 2—9. Additional
findings of fact may appear in the Analysis below.
ANALYSIS
Independent claims 1,6, 10, and 15 are argued as a group. Appeal
Br. 10—13. Claim 1 is selected for analysis herein. See 37 C.F.R.
§41.37(c)(l)(iv).
The Appellants present two arguments for Examiner error in the
rejection of claim 1, each of which is addressed below.
As explained below, the Appellants’ arguments for claim 1 are not
persuasive. Accordingly, we sustain the rejection of independent claims 1,
6, 10, and 15, as well as the rejection of dependent claims 2—5, 7—9, 11—14,
and 16—20, (the Appellants relying only upon the arguments presented for
the respective independent claims (see Appeal Br. 14)).
1. “expiration date”
Claim 1 recites, in part:
creating a payment file, stored on the mobile device,
containing encrypted credit card information including a card
number and expiration date for at least one credit card; . . . and
sending the decrypted credit card data and the selected
shipping address from the device to the merchant website for
order processing.
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Appeal 2014-008102
Application 12/905,755
According to the Examiner, Wong teaches storing and sending the
credit card expiration date, because it describes storing “shipping address,
card alias, secure token, etc.” on a mobile phone. Answer 7 (quoting Wong
131); see also Final Action 5, 7 (citing Wong H 29, 31). The Examiner
finds that an expiration date is an inherent property for credit card
transactions and that there is nothing in the claim that distinguishes the “card
alias” mentioned in Wong from the “actual credit card number” (although
the Examiner appears to intend to refer to the expiration date). Answer 7.
Moreover, the Answer states that it would have been “notoriously obvious”
to one of ordinary skill in the art to replace Wong’s alias number with the
“actual credit card number” (again, appearing to intend to refer to the
expiration date). Id. at 7—8.
In addition, the Examiner finds that Kim also discloses the storing and
sending the credit card expiration date, through its disclosure of a “valid
date.” Answer 8 (citing Kim 125).
The Appellants argue that Wong discloses neither storing a credit card
expiration date on a mobile device, nor sending a card expiration date to
effect the purchase of an item. Appeal Br. 10-11 (citing Wong || 29, 31,
37, 38). According to the Appellants, neither the “card alias,” nor any of the
other data Wong identifies stored on a mobile device, constitutes an
“expiration date.” Id. at 11.
The Appellants further contend that storing the expiration date is not
inherent in Wong (or in Kim) because there is no evidence that the stored
expiration date is necessarily present — notwithstanding the Appellants’
concession that the credit card expiration date may be necessary to effect a
transaction. Reply Br. 2—3.
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Appeal 2014-008102
Application 12/905,755
The Appellants also argue that Kim does not disclose the stored
expiration date, as claimed, because Kim’s “valid date” “more logically
refers to the date of transit, as that information would likely be of interest” in
the context of Kim’s disclosure of using a mobile phone for payment of bus
or subway fares. Id. at 2.
As to Wong, we agree with the Appellants that there is no disclosure
of a stored “expiration date” in Wong and no basis for the inherency of such
a feature. Although the Examiner finds (and the Appellants admit) that the
expiration date is necessary for credit card transactions, such does not
necessarily require the expiration date to be stored on a mobile device, as
claimed. However, the Appellants do not respond to what we understand as
the Examiner’s determination (see Answer 7—8), as discussed above, that it
would have been obvious for a person of ordinary skill in the art to include
the expiration date among the data stored on Wong’s mobile phone.
Therefore, the Appellants present no basis for error in this determination.
Furthermore, the Appellants’ argument that Kim fails to teach the
stored expiration date is also unpersuasive. As an initial matter, the
Appellants’ assertion (Reply Br. 2) that, rather than constituting an
expiration date, Kim’s “valid date” “more logically refers to the date of
transit, as that information would likely be of interest,” rests on speculation.
Moreover, Kim discloses that the purpose of the “valid date” is not limited
to the transit-fare context. Kim (| 25) states that “a financial authority such
as a card company or a bank transmits information . . . including a
customer’s number and a valid date of a card to be issued to a card issuance
applicant” — a situation independent of payment for transit.
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Appeal 2014-008102
Application 12/905,755
2. “order button”
Claim 1 recites, in part:
selecting the order button to cause item information
including the name and price of a selected item to be purchased
to be sent from the merchant website to the device.
According to the Examiner, “all online checkouts and payments”
display the items purchased and their respective prices — such functionality
being shown in the description of Wong’s checkout button. Answer 9; see
also Final Action 5—6 (citing Wong 132).
The Appellants dispute this finding, arguing that “[t]he instant claim
limitation is particularly significant,” because
the present system combines the product price and description
information with the payment/shipping information held within
the mobile device, allowing the consumer to verify, on a single
screen, all components needed to complete a purchase.
Appeal Br. 13. Further, in the Reply Brief, the Appellants argue:
[T]he claimed “order button” cannot be equivalent (or similar)
to a “checkout button”, as asserted by the Examiner, because
when a ‘checkout’ button is selected, the items to be purchased
have — by necessity — already been displayed on the mobile
device, and in distinction, when Applicants’ claimed “order
button” is selected, the item information including the
description and price of a selected item to be purchased is
THEN sent from the merchant website to the device. Thus the
two types of buttons cannot possibly have the same function.
Reply Br. 5. The Reply Brief emphasizes that the “claim recites a different
sequence of operations than that disclosed in the Wong referenceId.
The Appellants’ reasons for distinguishing the claim from Wong rely
upon features that are not set forth in the identified language of claim 1.
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Appeal 2014-008102
Application 12/905,755
Contrary to the Appellants’ assertion, the claimed features do not
require the user to “verify, on a single screen,” the product price,
description, and payment/shipping information. See Appeal Br. 13. Indeed,
claim 1 does not require any items to be displayed anywhere, let alone “on a
single screen,” nor does the claim describe any mechanism for a user to
“verify” anything, as the Appellants allege. See id. Further, establishing the
shipping information is set forth in a separate limitation of claim 1, which
requires “selecting ... a specific one of the shipping addresses from the
contacts list.” Appeal Br. 16, Claims App.
Nor does claim 1 require “a different sequence of operations than
that disclosed in the Wong reference” (Reply Br. 5) as the Appellants
contend, whereby the “item information” is “sent. . . from the merchant
website to the device,” as alleged. Indeed, the Specification explains that the
mobile device displays the product information (which would include the
price) before activating the “order button”:
To make a purchase, the user first displays a web page on
a merchant’s website using web browser 104 on mobile device
101. After the user selects the item(s) to be purchased by
placing the item(s) in an order list, such as a ‘shopping cart’ or
the like, an order button 112 on the web page is selected
(‘clicked on’) to initiate the purchasing transaction, at step 204.
Spec. 111. Because it is an aspect of a preferred embodiment, the approach
of displaying product information before activation of the “order button”
would not be inconsistent with the claim.
In addition, the Appellants concede that Wong performs the claimed
function, but allege that it occurs before — rather than after — activating
Wong’s checkout button:
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Appeal 2014-008102
Application 12/905,755
[T]he claimed “order button” cannot be equivalent (or
similar) to a “checkout button”, as asserted by the Examiner,
because when a ‘checkout’ button is selected, the items to be
purchased have — by necessity — already been displayed on
the mobile device.
Reply Br. 5. Thus, rather than distinguishing Wong, the Appellants merely
contend that a different instrumentality of Wong — i.e., other than the
checkout button — meets the claim limitation at issue.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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