Ex Parte Hammad et al

Patent Trial and Appeal BoardJan 4, 2017

12258322 (P.T.A.B. Jan. 4, 2017)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/258,322 10/24/2008 Ayman Hammad 66945 7590 01/06/2017 KILPATRICK TOWNSEND & STOCKTONLLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 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. 80083-742725(033830US) 8808 EXAMINER MARCUS, LELAND R ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 01/06/2017 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): 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 A YMAN HAMMAD and PA TRICK FAITH Appeal2014-006795 Application 12/258,322 Technology Center 3600 Before ANTON W. PETTING, BIBHU R. MOHANTY, and CYNTHIA L. MURPHY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 19, 20, 23, 24, 26, 27, 30-36, 38, 42, 43, 46-49, and 52- 60, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). SUMMARY OF THE DECISION We AFFIRM-IN-PART. Appeal2014-006795 Application 12/258,322 THE INVENTION The Appellants' claimed invention is directed to authenticating a consumer device used to conduct a transaction at a merchant using location data coming from two different sources (Spec., para. 5). Claim 19, reproduced below, is representative of the subject matter on appeal. 19. A method for conducting a transaction, the method comprising: receiving, at a server in a payment processing network coupled with a mobile communication device held by a consumer, first location information associated with a particular location of the consumer's mobile communication device during a transaction conducted with a merchant; receiving, at the server, second location information associated with a particular fixed geographic location of the merchant at the time of the transaction, wherein the second location information is contained within a unique merchant identifier transferred from the merchant to the mobile communication device during the transaction, and wherein the second location information is then forwarded to the server from the mobile communication device via the payment processing network instead of from an access device operated by the merchant; receiving an authorization request message at the server computer; using the server computer, determining that a portable consumer device held by the consumer is authentic when the first location information matches the second location information; and using the server computer, forwarding the authorization request message to an issuer with an indicator specifying that the consumer has been authenticated or that the consumer has not been authenticated; wherein the first location information and the second location information are received from the mobile communication device held by the consumer, and wherein the second location information is provided to the mobile communication device directly from the access device operated by the merchant. 2 Appeal2014-006795 Application 12/258,322 THE REJECTIONS The following rejections are before us for review 1: 1. Claim 23 is rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. 2. Claims 19, 20, 23, 24, 26, 27, 30-36, 38, 42, 43, 46-49, and 52---60 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Stevens (US 2007 /0055785 Al, pub. Mar. 8, 2007 and Niedermeyer (US 2003/0169881 Al, pub. Sept. 11, 2003). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS Rejection under 35 USCÂ§ 112, second paragraph This rejection was made in the Final Action at page 2 and was not withdrawn in the Answer. As the Appellants have provided no arguments in this regard in the Appeal Brief, this rejection is summarily affirmed. 1 The Final rejection at page 8 listed claims 24 and 35 as rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Stevens Niedermeyer, and Singh (US 2007/0174082 Al, pub. Jul. 26, 2007). This rejection is considered withdrawn in light of the rejection of these claims 24 and 35 under the new rejection listed in the Answer at page 3. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2014-006795 Application 12/258,322 Rejection under 35 USCÂ§ 103(a) The Appellants argue that the rejection of claim 19 is improper because the cited prior art fails to disclose the claim limitations which reqmre receiving, at the server, second location information associated with a particular fixed geographic location of the merchant at the time of the transaction, wherein the second location information is contained within a unique merchant identifier transferred from the merchant to the mobile communication device during the transaction, and wherein the second location information is then forwarded to the server from the mobile communication device via the payment processing network instead of from an access device operated by the merchant ... wherein the second location information is provided to the mobile communication device directly from the access device operated by the merchant. (App. Br. 8-15 (alteration in original) (emphasis omitted and emphasis added); Reply Br. 2). In contrast, the Examiner has determined that the cited claim limitations above are shown by Niedermeyer at paragraphs 24--28 (Final Act. 4; Ans. 3-5). We agree with the Appellants. Claim 19 requires "second location information associated with a particular fixed geographic location of the merchant." The claim also requires that the "second location information" is then provided to the mobile communication device directly from the access device operated by the merchant. Here, the above citations to Niedermeyer at paragraphs 24--28 fail to disclose this. For example, in Niedermeyer at paragraph 26, it is disclosed that the payment device reader 12 includes a position sensor 12a and that position information is sent to payment processing system 14, but this is not the claimed "mobile communication 4 Appeal2014-006795 Application 12/258,322 device" that is held by the user as claimed. Paragraph 24 of Niedermeyer makes reference to Figure 1 which shows the payment position sensor 12a sending that information to the payment processing system 14 as well, rather than to the payment device 11, thus failing to disclose the argued claim limitation. For this reason, the rejection of claim 19 and its dependent claims is not sustained. The remaining claims under this rejection contain a similar claim limitation and the rejection of these claims is not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claim 23 under 35 U.S.C. Â§ 112, second paragraph. We conclude that Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. Â§ 103(a) as listed in the Rejections section above. DECISION The Examiner's rejection of claims 19, 20, 24, 26, 27, 30-36, 38, 42, 43, 46-49, and 52---60 is reversed. The Examiner's rejection of claim 23 is sustained. AFFIRMED-IN-PART 5