Ex Parte Loevenguth et al

Patent Trial and Appeal Board

Apr 20, 2016

12978704 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/978,704 12/27/2010
20350 7590 04/22/2016
KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
Rebecca Loevenguth
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.
90945-788291 (017800US) 1684
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
04/22/2016 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REBECCA LOEVEN GUTH, EV ANS MEHEW, DA VE OWEN,
DIANNA LYONS, and SCOTT P AINTIN
Appeal2013-009832 1
Application 12/978,7042
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-10 and 22-32. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed March
28, 2013) and Reply Brief ("Reply Br.," filed August 12, 2013), and the
Examiner's Answer ("Ans.," mailed June 10, 2013), Advisory Office Action
("Adv. Act.," mailed November 28, 2012), and Final Office Action ("Final
Act.," mailed August 15, 2012).
2 Appellants identify The Western Union Company of Englewood,
Colorado as the real party in interest (App. Br. 3).
Appeal2013-009832
Application 12/978,704
We REVERSE.
CLAIMED INVENTION
Appellants' claimed invention "relates generally to payments with
mobile devices. More specifically the [claimed] invention relates to
verifying that both users and mobile devices, which attempt to use account
information for transactions, are authorized to do so" (Spec. i-f 1 ).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. A system for approving, at a server, a payment
request received from a mobile device at a point of sale device,
the point of sale device remote from the server, wherein the
system comprises:
[(a)] a server, wherein the server is configured to:
[ (1)] store a device authentication table, wherein
the device authentication table correlates particular
authentication information with particular mobile device
ID's·
'
[(2)] receive a device authentication request,
wherein the device authentication request comprises
authentication information and a mobile device ID;
[(3)] determine whether the authentication
information is correlated with the mobile device ID in the
device authentication table;
[(4)] receive a payment request;
[ ( 5)] approve the payment request if the server
determines that the authentication information is
correlated with the mobile device ID in the device
authentication table; and
[ (b)] a point of sale device remote from the server,
wherein the point of sale device is configured to:
[(1)] receive authentication information and a
mobile device ID;
2
Appeal2013-009832
Application 12/978,704
[(2)] transmit the device authentication request
comprising the authentication information and the mobile
device ID.
REJECTIONS3
Claims 1-7, 9, 10, 22, 26, and 29-32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wentker (US 2009/0325542 Al, pub. Dec. 31,
2009) and Laracey (US 2011/0251892 Al, pub. Oct. 13, 2011).4
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wentker, Laracey, and Prakash (US 2012/0030110 Al, pub. Feb. 2, 2012).
Claims 23-25, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wentker, Laracey, and Official Notice (as evidenced by
Aabye (US 2010/0198728 Al, pub. Aug. 5, 2010)).
ANALYSIS
Independent claims 1, 31, and 32 and dependent claims 2-7, 9, 10, 22, 26,
29, and 30
Appellants argue that the Examiner erred in rejecting independent
claims 1, 31, and 32 under 35 U.S.C. § 103(a) because neither Wentker nor
Laracey discloses or suggests receiving a device authorization request
comprising authentication information and a mobile device ID; determining
whether the authentication information is correlated with the mobile device
ID in a device authentication table; and approving a payment request if the
3 The rejection of claims 1-10 and 22-32 under 35 U.S.C. § 112, first
paragraph, has been withdrawn (Ans. 2).
4 According to the Advisory Office Action, "[ c ]laim 31 recites similar
limitations as claim 1 and is rejected under the same art and rationale" (Adv.
Act. 2).
3
Appeal2013-009832
Application 12/978,704
authentication information is correlated with the mobile device ID in the
device authentication table, i.e., limitations (a)(2) through (a)(5), as recited
in independent claim 1, and similarly recited in independent claims 31 and
32 (App. Br. 8-11). More particularly, Appellants argue that "Wentker does
not check if two pieces of information in a single authentication request
correlate with each other to approve a payment request" and that "Laracey
does not remedy this deficiency of Wentker" (id. at 10).
In rejecting claims 1, 31, and 32, the Examiner asserts that Laracey
discloses receiving a device authentication request comprising authentication
information and a mobile device ID; determining whether the authentication
information is correlated with the mobile device ID in the device
authentication table; and approving the payment transaction (Final Act. 4
(citing Laracey i-fi-f 17, 33, 34)). However, we agree with Appellants that
there is nothing in the cited portions of Laracey that discloses or suggests
approving a payment request based on the receipt of authentication
information and a mobile ID. Instead, the authentication process described
in paragraphs 33 and 34 of Laracey is performed in order to confirm the
user's authority to conduct transactions and submit payment requests using
the disclosed transaction management system (App. Br. 10). In other words,
Laracey merely authenticates users and devices so that payment requests can
be submitted (id.). We find nothing in the cited portions of Laracey that
discloses or suggests that the payment requests include authentication
information and mobile device IDs, as called for in independent claims 1,
31, and 32.
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1, 31, and 32 under 35 U.S.C. § 103(a). We also do not sustain the
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Appeal2013-009832
Application 12/978,704
Examiner's rejection of claims 2-7, 9, 10, 22, 26, 29, and 30, each of which
depends, directly or indirectly, from claim 1.
Dependent claims 8, 23-25, 27, and 28
Each of claims 8, 23-25, 27, and 28 depends, directly or indirectly,
from claim 1. Neither the rejection of claim 8 based on Prakash, in
combination with Wentker and Laracey, nor the rejection of claims 23-25,
27, and 28 based on Official Notice, in combination with Wentker and
Laracey, cures the deficiency in the Examiner's rejection of claim 1.
Therefore, we do not sustain the Examiner's rejections of claims 8, 23-25,
27, and 28 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejections of claims 1-10 and 22-32 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
5