Ex Parte Olliphant et al

Patent Trial and Appeal Board

Apr 25, 2016

11853962 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111853,962 09/12/2007
132862 7590 04/27/2016
Schwegman Lundberg & Woessner, P,A, I PayPal
P.O. Box 2938
Minneapolis, MN 55402
Hugo Olliphant
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.
2043.434US 1 4027
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
slw@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGO OLLIPHANT, DAVID GAUSEBECK, and
VISHWANATH SHASTRY
Appeal 2014-002577 1,2
Application 11/853,962
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 12, 23, and 24. We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants' Specification ("Spec.," filed Sept. 12,
2007), Appeal Brief ("Appeal Br.," filed Sept. 18, 2013), and Reply Brief
("Reply Br.," filed Dec. 2, 2013), as well as the Final Office Action ("Final
Action," mailed Jan. 23, 2013) and the Examiner's Answer ("Answer,"
mailed Oct. 2, 2013).
2 According to Appellants, the real party in interest is eBay Inc. Appeal
Br. 2. Nonetheless, we note that as of July 23, 2015, the current assignee as
recorded at the US Patent Office is PA YP AL, INC.
Appeal2014-002577
Application 11/853,962
We AFFIRivI.
Appellants' invention relates generally to "electronic payment
processing," and, specifically, "to a system to arrange for automatic funding
of micro-transactions using multiple sources including Automated Clearing
House micropayments." Spec. i-f 1. Independent claims 1, 12, 23, and 24 are
under appeal. We reproduce below independent claim 1 as representative of
the appealed claims. 3
1. A method comprising:
analyzing, by a transaction analysis module implemented
via one or more processors, a transaction condition of a micro-
transaction, the micro-transaction including a micropayment of a
transaction amount;
testing a group of micropayment options to determine
whether there exists a micropayment option for charging the
transaction amount, the group of micropayment options
comprising availability of a valid credit card account associated
with the user; and
responsive to determining the unavailability of a valid
credit card account associated with the user, requesting the user
to create an ACH account.
Appeal Br., Claims App.
3 We correct a typographical error in the last paragraph of the claim.
Specifically, we remove the word "to" in "create to an ACH account," as per
the Amendment filed March 21, 2013, and entered by the Advisory Action
mailed April 8, 2013.
2
Appeal2014-002577
Application 11/853,962
REJECTION AND PRIOR ART
The Examiner rejects claims 1, 12, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Tal (US 2008/0140564 Al, pub. June 12,
2008) and Cook (US 7 ,395,241 B 1, iss. July 1, 2008). See Final Action 3---6;
see also Answer 2--4.
ANALYSIS
We have reviewed Appellants' arguments regarding the rejection of
independent claims 1, 12, 23, and 24 (see Appeal Br. 9-16). However, we
are not persuaded by any of Appellants' arguments, and, thus, we sustain the
rejection.
For example, Appellants argue that Tal does not teach or suggest the
limitation of "testing a group of micropayment options to determine whether
there exists a micropayment option for charging the transaction amount, the
group of micropayment options comprising availability of a valid credit card
account associated with the user," as recited in claim 1. See Appeal Br. 11-
12. More particularly, Appellants argue that "[i]n Tal only certain payment
options are displayed. There is no testing in Tal to determine whether a
valid credit card account is available because a valid credit card account is
not displayed as one of the payment options." Id. at 11.
The Examiner responds that "Tal shows that various micropayment
options are recognized and considered." Answer 6. Further, the Examiner
states (id. at 7):
Determining which [options] may be used in a given transaction
(e.g., based on recipient and payer factors) is an example of
testing (e.g., considering) a group of micropayment options to
determine which ones exist (e.g., are viable in a given situation).
A credit card is one possible option to be evaluated (Tal:
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Appeal2014-002577
Application 11/853,962
paragraph 46), but it may be determined to be unavailable, e.g.,
for minors who are only authorized to use prepaid cards (Tal:
paragraph 89).
Contrary to Appellants' arguments, Tal teaches more than merely
displaying certain payment options. Tal discloses that the "options are
limited according to one or more parameters," and are preferably "selected
according to one or more characteristics of the recipient party," such as
country of residence or age. Tal i-f 89. Even if we agree that Tal does not
explicitly disclose displaying a valid credit card account as an option (see
Appeal Br. 11), Appellants have not persuasively rebutted the Examiner's
finding that Tal teaches considering a group of micropayment options, which
includes a credit card (see Answer 7). Further, Appellants do not provide
evidence or reasoning4 sufficient to persuade us that the Examiner's
statement that "[ d]etermining which [options] may be used in a given
transaction (e.g., based on recipient and payer factors) is an example of
testing ... a group of micropayment options to determine which ones exist"
is unreasonable. Id.
Appellants additionally argue that the Examiner does not establish
that the combination of Tal and Cook teaches the limitation of "responsive
to determining the unavailability of a valid credit card account associated
with the user, requesting the user to create an ACH account," as recited in
4 Although Appellants present arguments in the Reply Brief regarding the
Examiner's interpretation of the "testing" limitation (see Reply Br. 2---6),
because the arguments are made for the first time in the Reply Brief and are
not in response to any new argument raised in the Answer, Appellants'
arguments are not timely raised. Thus, we do not consider the arguments.
See 37 C.F.R. § 41.41(b)(2) (2015).
4
Appeal2014-002577
Application 11/853,962
claim 1. See Appeal Br. 11-15. For example, Appellants argue that "the
Examiner's conclusion that Tal 'exemplifies a scenario in which use of a
credit card is deemed to be unavailable' is incorrect" (id. at 12 (emphasis
omitted)), and that both Tal and Cook are silent as "requesting the user to
create an ACH account" (id. at 15 (emphasis omitted)).
In response to Appellants arguments, the Examiner determines that
"within the scope of claim 1 ... no request needs to be offered to the user to
create an ACH account." Answer 8. We agree with the Examiner.
Specifically, the claimed "requesting the user to create an ACH
account" is "responsive to" or contingent upon "determining the
unavailability of a valid credit card." Appeal Br., Claims App. Claim 1
does not require that a valid credit card be determined unavailable. See id.
Inasmuch as the prerequisite condition for performance of the "requesting"
is not required, the broadest reasonable interpretation of claim 1
encompasses a method that ends with the above-discussed testing limitation,
in which there is no determination that a valid credit card is unavailable.
Thus, Appellants' arguments regarding the alleged deficiencies in the
combination of Tal and Cook with respect to the responsive limitation are
unpersuasive of Examiner error.
Appellants further argue that Tal teaches away because "the claim
language presumes that a credit card, if available, can be used for processing
a micropayment, contrary to Tal." Appeal Br. 13. Appellants do not,
however, point to anything in claim 1 that actually requires using a credit
card for processing a micropayment. Thus, we are unpersuaded that Tal
teaches away from the claimed invention.
Based on the foregoing, we sustain the rejection of claim 1.
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Appeal2014-002577
Application 11/853,962
Appellants argue claims 12, 23, and 24 with claim 1. Thus, we also sustain
the rejection of claims 12, 23, and 24.
DECISION
We AFFIRM the Examiner's rejection of claims 1, 12, 23, and 24
under 35 U.S.C. § 103.
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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