Ex Parte Singhal

Patent Trial and Appeal Board

Dec 10, 2012

10091882 (P.T.A.B. Dec. 10, 2012)

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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/091,882 03/06/2002 Tara Chand Singhal 11195.41 6932
103550 7590 12/10/2012
Tara Chand Sighal
P.O. Box 5075
Torrance, CA 90510
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
12/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TARA CHAND SINGHAL
____________________

Appeal 2011-005731
Application 10/091,882
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005731
Application 10/091,882

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 18-32. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellant’s invention relates to a method and apparatus for a payment
system for restaurants that facilitate efficient payment from dining customers
and for customers making payment without disclosing sensitive data to
waiters (Spec. 2, ll. 4-7).
Claim 18, reproduced below, is representative of the subject matter on
appeal:
18. A payment system for restaurant merchants that provides
privacy of customer bankcard data of a customer from a
merchant system, comprising:
a. a restaurant bill that shows a payment amount and a
service code, the service code includes a merchant number
identification to a central computer system that is independent
from the merchant system;
b. a wireless device of the customer, (i) is entered a data
of the service code, a payment amount, and an optional tip into
the device, and (ii) the device wirelessly sends the data to the
central computer system which pre-stores customer data and
merchant data;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 27, 2010) and Reply Brief (“Reply Br.,” filed
January 31, 2011) and the Examiner’s Answer (“Ans.,” mailed
November 22, 2010).
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c. the central computer system has a processor (i) that
identifies the customer (ii) processes a payment request from
the customer to the merchant by retrieving customer and
merchant data and submits a payment transaction request to an
existing payment authorization network, (iii) receives a
payment approval record from the payment authorization
network (iv) wirelessly sends a payment approval notification
to the customer on the wireless device and (v) sends the
payment approval notification to the merchant system, wherein
the central computer system in lieu of the merchant system
having submitted the payment transaction request, the payment
system maintains privacy of customer bankcard data from the
merchant system.

THE REJECTIONS
The following rejections are before us for review:
Claims 18, 24 and 30 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.2
Claims 18-32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Showghi (US 6,473,739 B1, iss. Oct. 29, 2002) in view of
Meyer (US 5,933,812, iss. Aug. 3, 1999).

ANALYSIS
Written Description
Independent claims 18, 24, and 30
Appellant argues that the Examiner erred in rejecting claim 18 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (App. Br. 14-29 and Reply Br. 19-34). The
Examiner, on the other hand, maintains that the rejection is proper because

2 The Examiner mistakenly refers to claims 18, 20, and 30 in the Examiner’s
Answer in addressing the rejections under 35 U.S.C. § 112, first paragraph.
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there is no clear showing in the Specification that “the central computer
system (10) is actually independent from the merchant system,” as recited in
claim 18 (Ans. 3-4).
We agree with Appellant. The Specification describes that the present
invention is directed to a payment system for the restaurant industry that
facilitates efficient payment using a bankcard for a restaurant meal without
providing personal sensitive data from a customer’s bankcard to
employees/waiters of the restaurant (Spec. 6, ll. 5-8). The Specification thus
describes, with reference to Figure 3, a payment system including a central
system 10, which stores merchant data, including merchant identification,
for participating merchants who have created accounts on the system, and
personal data for participating customers, including information regarding
one or more accounts of the customer (Spec. 6, ll. 10-22; 9, ll. 10-14; and 12,
26-31). A “Merchant System 08” is shown in Figure 3, separate from the
central system 10, and the Specification describes that a system network
interface allows the central system 10 to communicate with the customer 06,
the merchant system 08, and the card processor 36 (Spec. 8, ll. 1-3). The
further description in the Specification of the processing of a payment
transaction also is indicative of the independence of the central system from
the merchant system (see, e.g., Spec.13-14 and Figure 5).
The Examiner takes the position that Figure 3 does not show that the
central computer is independent of the merchant system and asserts “it as
[sic] readily apparent from Figure 4 that the Merchant Database (440) is
contained within the cylinder labeled Central System Storage Devices (426)
and that both are considered to be part of the overall Central System (10) as
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evident by the box that is drawn around the entirety of the figure” (Ans. 8).
We cannot agree.
In our view, one of ordinary skill in the art would readily understand,
in light of the Specification, including Figure 3, that the central system is
separate and independent from the merchant system. The presence of the
merchant database in the storage devices at the central system is merely
consistent with the pre-storage of information regarding merchants who
register to use the central system (see, e.g., Spec. 6, ll. 24-28; 7, ll. 25-31; 9,
ll. 10-14; and 12, ll. 25-31). It is not an indication that the merchant system
is a part of the central system or vice versa.
The Specification conveys with reasonable clarity to those skilled in
the art that Appellant was in possession of the invention as now claimed,
including a central system that is independent from the merchant system, at
the time the application was filed. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991). Therefore, we will not sustain the
Examiner’s rejection of independent claim 18 under 35 U.S.C. § 112, first
paragraph. For the same reasons, we also will not sustain the Examiner’s
rejection of independent claims 24 and 30.

Obviousness
Independent claim 18 and dependent claims 19-23
We are persuaded of error on the part of the Examiner by Appellant’s
argument that neither Showghi nor Meyer discloses or suggests a payment
system, as recited in independent claim 18, including “a central computer
system that is independent from the merchant system,” which “processes a
payment request from the customer to the merchant” such that “the payment
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system maintains privacy of customer bankcard data from the merchant
system” (App. Br. 34-55 and Reply Br. 35-57). The Examiner relies on
Showghi as disclosing these features (Ans. 4-5). However, none of the cited
portions of Showghi on which the Examiner relies discloses or suggests a
system independent from the merchant system that processes payments and
thus maintains privacy of customer bankcard data from the merchant system,
as recited in claim 18.
Showghi discloses a system and method for enabling patrons of
spectator events in confined venues, e.g., sports stadiums, to use wireless
communication devices to remotely order and pay for food to be delivered to
their seats (Showghi, Abstract). However, Showghi does not disclose or
suggest a system independent from the merchant system that processes order
payments. Instead, Showghi discloses that a customer either prearranges for
payment of items to be subsequently ordered by providing payment
information, e.g., credit or debit card information, to the venue merchant on
entering the venue (Showghi, col. 4, ll. 38-48) or, alternatively, provides
payment information, e.g., credit card information, to the venue merchant
when placing an order (Showghi, col. 5, ll. 17-22 and Fig. 4).
Responding to Appellant’s argument, the Examiner takes the position
that Showghi teaches at column 5, lines 32-38 “that credit or debit
information need never be given to the merchant” (Ans. 9). However,
Showghi merely discloses at column 5, lines 32-38 that, in addition to the
use of credit or debit cards, other means of payment include corporate
accounts and billing through third party accounts such as the customer’s
internet service provider or cellular telephone provider. There is no
suggestion or disclosure in that portion or any of the other portions of
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Showghi cited by the Examiner that a system independent of the venue
merchant system processes payment transactions, i.e., that the payment is
processed without the customer having to provide payment information, e.g.,
bankcard data or telephone number data, to the venue merchant system
(App. Br. 52).
In view of the foregoing, we will not sustain the Examiner’s rejection
of independent claim 18 under 35 U.S.C. § 103(a). We also will not sustain
the Examiner’s rejection of dependent claims 19-23.

Independent claims 24 and 30 and dependent claims 25-29, 31, and 32
Independent claims 24 and 30 include language substantially similar
to claim 18. Therefore, we will not sustain the Examiner’s rejections of
claims 24 and 30 under 35 U.S.C. § 103(a) for the same reasons as set forth
above with respect to claim 18. We also will not sustain the Examiner’s
rejections of dependent claims 25-29, 31, and 32.

DECISION
The Examiner’s rejection of claims 18, 24, and 30 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The Examiner’s rejection of claims 18-32 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

peb