Ex Parte Pravetz et al

Patent Trial and Appeal BoardSep 27, 2013

12195108 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAMES D. PRAVETZ and SUNIL AGRAWAL ____________________ Appeal 2011-009888 Application 12/195,108 Technology Center 3600 ____________________ Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and JAMES A. TARTAL, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009888 Application 12/195,108 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-41. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE.1 BACKGROUND Appellants’ invention is directed to a trusted embedded user interface for secure payments (Spec., para. [0004]). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A system, comprising: one or more processors; a memory coupled to one or more processors, wherein the memory stores program instructions executable by the one or more processors to implement a security component associated with a network-enabled application, wherein said security component is configured to: initiate a display of an embedded region of a window drawn by the network -enabled application; wherein the window is drawn according to display information received from a relying party; wherein particular information drawn within the embedded region of the window is defined by said security component according to a customization specified to said security component by a user of said system prior to creation of said window and prior to receipt of the display information; 1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed February 3, 2011) and Reply Brief (“Reply Br.,” filed June 1, 2011) and the Examiner’s Answer (“Ans.,” mailed April 1, 2011). Appeal 2011-009888 Application 12/195,108 3 wherein the particular information is not defined by the relying party; wherein at least a portion of said display information and said particular information are displayed together within the window; in response to receiving payment input via the embedded region, generate a payment request, wherein said payment request comprises: transaction information regarding a transaction between the user and the relying party; and authentication information for the user; and send the payment request to an assertion provider to authenticate the user and authorize a payment to the relying party. THE REJECTIONS The following rejections are before us for review:2 Claims 1-13 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1, 4-7, 12-14, 17-20, 25-27, 30-33, and 38-41 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sendo (US 6,970,852 B1, iss. Nov. 29, 2005) in view of Omoigui (US 2003/0126136 A1, pub. Jul. 3, 2003). Claims 2, 3, 8, 10, 15, 16, 21, 23, 28, 29, 34, and 36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sendo in view of Omoigui, and further in view of Cook (US 6,675,153 B1, iss. Jan. 6, 2004). 2 This statement of “The Rejections” is taken from Appellants’ statement of the grounds of rejection to be reviewed on appeal (App. Br. 12), which the Examiner has acknowledged is correct (Ans. 2). In setting forth the grounds of rejection in the Answer, the Examiner did not particularly set forth the correlations between claims 1-13 and claims 14-41. Instead, the Examiner stated: “[c]laims 14-26, 27-39, 40, and 41 are rejected based on the rejections of claims 1-13 because the claims claim the same invention” (Ans. 14). Appeal 2011-009888 Application 12/195,108 4 Claims 9, 22, and 35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sendo in view of Omoigui and further in view of Khoshatefeh (US 2004/0133846 A1, pub. Jul. 8, 2004). Claims 11, 24, and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sendo in view of Omoigui and further in view of Templeton (US 7,430,537 B2, iss. Sep. 30, 2008). FACTUAL FINDINGS We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Additional facts may appear in the Analysis section. 1. The Examiner found that the ActiveX controls disclosed in Sendo correspond to the “security component” recited in the claims (Ans. 7 (“ActiveX corresponds to ‘security component.’”)). 2. The Examiner found that the “Merchant Web Site” in Figure 1 of Sendo corresponds to the claimed “relying party” (Ans. 7-8). 3. The Examiner found that Sendo’s “Payment Option,” described at column 5, lines 40-60, corresponds to the claimed “particular information” (Ans. 8; see also Ans. 23 (“Sendo’s invention uses a web browser which shows payment options (C5:40-60) in order to cover the argued limitation ‘said particular information are displayed within the window.”)). 4. The Examiner cited Sendo at column 5, lines 40-60 as disclosing “the particular information is not defined by the relying party,” as Appeal 2011-009888 Application 12/195,108 5 recited in the claims (Ans. 8 (“Observe the consumer performs the act of making a selection for the type of payment option.”)). 5. The Examiner reasoned that the “Payment Option” in Sendo is not defined by the relying party because “the user does not generate a selection list of payment options but rather selects one that is already present (C5:40-60)” (Ans. 23). 6. The Examiner reasoned that Sendo’s Payment Options are not defined by the relying party because “Sendo teaches the Payment Options and Session are in programming code; therefore ‘prior to creation of said window and prior to receipt of the display information’ must be programmed into the system in order to function as described by Sendo (C5:8-26)” (Ans. 22-23). 7. Sendo discloses that the “Payment Option consists of a small piece of HTML script that is added to the web store checkout page” (Sendo, col. 5, ll. 31-35). 8. Sendo discloses that the “Payment Session Script is a piece of HTML script that belongs on a page that will be presented once the consumer has selected the Payment Option” (Sendo, col. 5, ll. 41-43). ANALYSIS Indefiniteness Independent claim 1 and dependent claims 2-10, 12, and 13 We are persuaded that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, second paragraph, on the ground that the recitation of an “assertion provider” renders claim 1 indefinite (App. Br. 13-14 and Reply Br. 4-5). Appeal 2011-009888 Application 12/195,108 6 The Examiner maintains that one of ordinary skill in the art would not be able to determine the metes and bounds of the “system,” and that claim 1, therefore, is indefinite because the assertion provider is “located outside the embodiment of [the claimed] ‘system’” (Ans. 5). Claim 1 recites that the security component is configured to “send the payment request to an assertion provider to authenticate the user and authorize a payment to the relying party.” In our view, one of ordinary skill in the art would readily understand from this language what is claimed when claim 1 is read in light of the Specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.”). We agree with Appellants that whether the assertion provider is a part of the claimed system or not is a question of breadth, not indefiniteness (App. Br. 13), such that the recitation of “an assertion provider” in claim 1 does not render the claim indefinite. See In re Miller, 441 F.2d 689, 693 (CCPA 1971). We also are persuaded that the Examiner erred in finding that the phrase “particular information” renders claim 1 indefinite under 35 U.S.C. § 112, second paragraph (App. Br. 14-16 and Reply Br. 5). The Examiner notes that the Specification describes various types of information that are required in making online purchases and that the phrase “particular information” is not lexicographically defined by Appellants. Therefore, the Examiner concludes that one of ordinary skill in the art would not be able to determine what constitutes the “particular information,” as recited in claim 1 (Ans. 5 and 21). We cannot agree. Appeal 2011-009888 Application 12/195,108 7 Claim 1 does not recite “particular information” in isolation (App. Br. 15). Instead, claim 1 recites that the “particular information” is information “drawn within the embedded region of the window [and] is defined by said security component according to a customization specified to said security component by a user of said system prior to creation of said window and prior to receipt of the display information.” Claim 1 also recites that the “particular information” is “not defined by the relying party” and that it is “displayed together within the window” with the recited “display information.” One of ordinary skill in the art would understand from this language what is claimed when claim 1 is read in light of the Specification. See Orthokinetics, 806 F.2d at 1565. Therefore, we cannot agree with the Examiner that claim 1’s recitation of “particular information” renders the claim indefinite. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 112, second paragraph. We also will not sustain the Examiner’s rejection of dependent claims 2-10, 12, and 13. Dependent claim 11 We are persuaded that the Examiner erred in rejecting claim 11 under 35 U.S.C. § 112, second paragraph, on the ground that the recitation, “wherein the payment information does not include a credit card number or other account identifier for the user,” renders the claim indefinite (App. Br. 16-17 and Reply Br. 5-6). The Examiner maintains that the subject recitation “contradicts the Original Specification” (Ans. 5-6 and 21). Yet the law is abundantly clear that limitations appearing in the Specification may not properly be read into the claims. See, e.g., Superguide Corp. v. DirecTV Enterprises, Inc., Appeal 2011-009888 Application 12/195,108 8 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”). That the Specification may describe some embodiments in which the user’s credit card number is used does not negate other embodiments in which the payment information does not include a credit card number or other account identifier for the user (App. Br. 17). In fact, the Specification clearly describes at paragraph [0051] that “[i]n some embodiments, payment may be authorized to the relying party 140 in such a way that the relying party 140 does not receive the user’s credit card number or personal information about the user.” See also Spec., para. [0079]. One of ordinary skill in the art would understand what is claimed when claim 11 is read in light of the Specification. Therefore, we will not sustain the Examiner’s rejection of claim 11 under 35 U.S.C. § 112, second paragraph. Obviousness Independent claim 1 and dependent claims 4-7, 12, and 13 We are persuaded that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) by Appellants’ argument that Sendo, on which the Examiner relies, does not disclose or suggest “wherein the particular information [drawn within the embedded region of the window] is not defined by the relying party,” as recited in claim 1 (App. Br. 19 and Reply Br. 7-8). The Examiner found that the claimed “relying party” is the “merchant web site” described in Sendo (FF 2) and that the “particular information” is Sendo’s “Payment Option” menu (FF 3). The Examiner thus concluded that Appeal 2011-009888 Application 12/195,108 9 the “Payment Option” selectable list is “not defined by the relying party” (i.e., the merchant web site) because the user selects from the list that is already present (FF 4 through FF 6). We disagree. Sendo discloses that the Payment Option is “a small piece of HTML script that is added to the web store checkout page” (FF 7). This script provides selectable options that, when selected, download further HTML script code from the merchant web site (FF 8). Sendo thus discloses that the Payment Option originates at, and is presented by the merchant web site, and is therefore “defined by the relying party,” in direct conflict with the claim language. See also Sendo, col. 8, ll. 41-43 (describing that “[t]o integrate the service, the merchant will create a link on their checkout page that will be labeled in accordance with the inventive payment option.”). In view of the foregoing, we will not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). We also will not sustain the rejection of claims 4-7, 12, and 13, which depend from claim 1. Independent claims 14, 27, 40, and 41 and dependent claims 17-20, 25, 26, 30-33, 38, and 39 Each of independent claims 14, 27, 40 and 41 includes language substantially identical to the language of claim 1. Therefore, we will not sustain the rejection of claims 14, 27, 40, and 41 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to claim 1. We also will not sustain the Examiner’s rejection of claims 17-20, 25, 26, 30-33, 38, and 39, each of which depends from one of independent claims 14, 27, 40 and 41. Appeal 2011-009888 Application 12/195,108 10 Dependent claims 2, 3, 8-11, 15, 16, 21-24, 28, 29, and 34-37 The Examiner has not established on the record that any of Cook, Khoshatefeh, and Templeton cures the deficiencies of Sendo as set forth above. Therefore, we will not sustain the Examiner’s rejections of dependent claims 2, 3, 8-11, 15, 16, 21-24, 28, 29, and 34-37 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to independent claims 1, 14, 27, 40, and 41. DECISION The Examiner’s rejection of claims 1-13 under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner’s rejections of claims 1-41 under 35 U.S.C. § 103(a) are reversed. REVERSED Klh