Ex Parte Smets et al

Patent Trial and Appeal BoardOct 2, 2018

13451770 (P.T.A.B. Oct. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/451,770 04/20/2012 125619 7590 10/04/2018 Mastercard International Incorporated c/o Buckley, Maschoff & Talwalkar LLC 50 Locust A venue New Canaan, CT 06840 FIRST NAMED INVENTOR Patrik Smets 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. P00798-US-UTIL (MOl.210) CONFIRMATION NO. 6972 EXAMINER ANDERSON,FOLASHADE ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 10/04/2018 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): martin@bmtpatent.com szpara@bmtpatent.com colabella@bmtpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRIK SMETS, DAVID A. ROBERTS, and JONATHAN MAIN Appeal2017-006843 Application 13/451,770 1 Technology Center 3600 Before CARLA M. KRIVAK, MICHAEL M. BARRY, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 6-9 and 21-27. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. 1 Appellants identify MASTERCARD INTERNATIONAL INCORPORATED as the real party in interest. See Appeal Br. 2. 2 Claims 1-5 and 10-20 are cancelled. See Appeal Br. 23, 25. Appeal2017-006843 Application 13/451,770 STATEMENT OF THE CASE Introduction According to Appellants, the claimed invention relates to "couponing in the context of a contactless purchase transaction." Abstract, Spec. 2:3--4. 3 Exemplary Claims Claims 6, 8, 26, and 27 are independent. Claims 6 and 8 are exemplary of the claimed subject matter and are reproduced below with limitations at issue emphasized: 6. A method for performing a payment transaction, compnsmg: reading, by a prox1m1ty reader, a prox1m1ty payment system environment (PPSE) of a payment-enabled mobile device tapped on a landing site of the proximity reader by a consumer; determining, by the proximity reader, that a proximity coupon system environment (PCSE) is present on the payment- enabled mobile device and that the PCSE should be consulted because a transaction amount is an initial transaction amount; storing, by the proximity reader in a storage device, a candidate list of payment products read from a memory of the payment-enabled mobile device; reading, by the proximity reader, the PCSE from the payment-enabled mobile device and selecting a coupon application based on a coupon application priority specified by the proximity payment device; 3 Throughout this Decision, we refer to: (1) Appellants' Specification filed April 20, 2012 ("Spec."); (2) the Final Office Action mailed July 15, 2016 ("Final Act."); (3) the Appeal Brief filed October 19, 2016 ("Appeal Br."); (4) the Examiner's Answer mailed February 10, 2017 ("Ans."); and (5) the Reply Brief filed March 21, 2017 ("Reply Br."). 2 Appeal2017-006843 Application 13/451,770 processing, by the proximity reader, coupon information with an initial transaction amount and determining a final transaction amount; recovering, by the proximity reader, the candidate list of payment products; selecting, by the proximity reader, a payment product from the candidate list; transmitting, by the proximity reader to a point of sale (POS) device, payment product information of the selected payment product and the final transaction amount for payment processing; and instructing, by the proximity reader, the consumer to remove the payment-enabled mobile device from the proximity reader. 8. A method for performing a payment transaction, compnsmg: reading, by a proximity reader in a retail store, a proximity payment system environment (PPSE) of a proximity payment device of a consumer; determining, by the proximity reader, that a proximity coupon system environment (PCSE) is present in the proximity payment device and that the PCSE should be consulted because a transaction amount is an initial transaction amount; reading, by the proximity reader, the PCSE and selecting a coupon application based on a coupon application priority specified by the proximity payment device; processing, by the proximity reader, coupon information with an initial transaction amount to determine a final transaction amount; providing an indication, by the proximity reader to the consumer, to remove the proximity payment device; providing an indication, by the proximity reader to the consumer, to again present the proximity payment device; 3 Appeal2017-006843 Application 13/451,770 reading, by the proxnn1ty reader, the PPSE of the proximity payment device; building, by the proximity reader, a candidate list of payment products; selecting, by the proximity reader, a payment product from the candidate list based on a relative priority associated with each payment product and the selected coupon application; and transmitting, by the proximity reader, payment product information of the selected payment product and the final transaction amount to a point of sale (POS) device for payment processmg. Appeal Br. 23-24. REFERENCES AND REJECTIONS Claims 6, 7, 21-23, and 26 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Martin et al., (U.S. 8,799,087 B2; issued Aug. 5, 2014) ("Martin"), Brudnicki et al., (U.S. 2012/0265685 Al; Oct. 18, 2012) ("Brudnicki"), and Deibert et al., (U.S. 2008/0172317 Al; July 18, 2008) ("Deibert"). Final Act. 6-12. Claims 8, 9, 24, 25, and 27 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of von Behren et al., (U.S. 8,196,131 B 1; issued June 5, 2012) ("von Behren") and Brudnicki. Final Act. 12-16. Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. Arguments not made are waived. See 3 7 C.F.R. Â§Â§ 4I.37(c)(l)(iv), 4I.39(a)(l); see also Manual of Patent Examining Procedure ("MPEP") Â§ 1205.02. 4 Appeal2017-006843 Application 13/451,770 ANALYSIS 35 USCÂ§ 103(a) Rejection of Claims 6, 7, 21-23, and 26 Issue 1: Does the Examiner err in finding the combination of Martin, Brudnicki, and Deibert teaches or suggests "determining, by the proximity reader, that a proximity coupon system environment (PCSE) is present on the payment-enabled mobile device," as recited in exemplary claim 6, and similarly recited in claim 26? The Examiner finds Martin teaches or suggests the limitation at issue. Final Act. 7 (citing Martin 5:37--44, 4:1-6, and Fig. 1, #102). In particular, the Examiner finds Martin teaches determining whether a PPSE directory including payment products, loyalty cards, and coupons is present on a wireless device. Martin 5:41--44 ("an electronic Macy's credit card, an electronic Macy's loyalty card, and applicable electronic coupon may be provisioned in PPSE application 108" on wireless device 102). Appellants dispute the Examiner's factual findings, arguing the Examiner cited portion of Martin: describes how a wallet client (running on the consumer's wireless device 102) may populate the PPSE application 108 of the consumer's wireless device 102 with AIDs associated with location information (for example, an electronic Macy's credit card, an electronic Macy's loyalty card, and an applicable electronic coupon may be provisioned in PPSE application 108 of the consumer's wireless device 102 when the received location data indicates a Macy's store location). Such processing is easily distinguishable from that which is claimed. Appeal Br. 15 (citing Martin 5:37--44). In response, the Examiner notes Appellants' Specification describes a "PPSE [that] contains a list of generic payment products supported by the proximity payment device" and a PCSE "created for coupon applications," 5 Appeal2017-006843 Application 13/451,770 and, therefore, based on "the Specification [, one] of ordinary skill in the art would have recognized that both the PPSE and PCSE are directories used to store application data for future transactions," including payment products and coupons. Ans. 13 (citing Spec. 3:9-11, 9: 14--16, 10: 1-6). Accordingly, the Examiner interprets the claimed PCSE as a directory including coupon data, and finds the claimed PCSE encompasses Martin's PPSE directory, which includes coupon data. We find Appellants' argument unpersuasive. Appellants, in essence, argue the Examiner's interpretation of the term "PCSE" is unreasonably broad. Appellants, however, fail to establish the Examiner's interpretation is inconsistent with Appellants' Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation, the words of the claim must be given their ordinary and customary meaning unless the meaning is inconsistent with the specification. Id. at 1365. The presumption that a term is given its ordinary and customary meaning may be rebutted by Appellants clearly setting forth a different definition of the term in the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, Appellants have provided insufficient evidence to demonstrate that the Examiner's interpretation of PCSE is inconsistent with the Specification or otherwise unreasonably broad. In view of the Examiner's interpretation of the term PCSE, we agree with the Examiner's finding that Martin's PPSE directory including coupons teaches or suggests the claimed PCSE. See Final Act. 7; Ans. 13. Thus, we agree with the Examiner that Martin teaches, or at least suggests the limitation at issue, as recited in claim 6 and similarly recited in claim 26. 6 Appeal2017-006843 Application 13/451,770 Issue 2: Does the Examiner err in finding the combination of Martin, Brudnicki, and Deibert teaches or suggests "storing, by the proximity reader in a storage device, a candidate list of payment products read from a memory of the payment-enabled mobile device," as recited in exemplary claim 6, and similarly recited in claim 26? The Examiner finds Martin teaches or suggests the limitation at issue. See Final Act. 7 (citing Martin 6:59-7:7). Appellants argue that "Martin fails to teach or suggest a proximity reader that stores a candidate list of payment products read from a memory o(the payment-enabled mobile device, as claimed." Appeal Br. 16. The Examiner responds that in Martin, "'stored AIDs [application identifiers] may be pre-programed using firmware to be automatically populated within PPSE application and may be stored in order of priority ... the plurality of AIDs can be stored in a list format or directory format within PPSE application and be made accessible by reader."' Ans. 16 ( citing Martin 5 : 5 5---60). We agree with the Examiner's finding. See Ans. 16. In addition, we note that in Martin, PPSE 108 is installed within mobile device 102. See Martin Fig. 1. Accordingly, we find Appellants' argument unpersuasive because we agree with the Examiner that Martin's AIDs stored in a list format in PPSE 108 of mobile device 102 teach "a candidate list of payment products read from a memory of the payment-enabled mobile device, as claimed." See Ans. 15-16. Issue 3: Does the Examiner err in finding the combination of Martin, Brudnicki, and Deibert teaches or suggests "reading, by the proximity reader, the PCSE from the payment-enabled mobile device and selecting a 7 Appeal2017-006843 Application 13/451,770 coupon application based on a coupon application priority specified by the proximity payment device," as recited in exemplary claim 6, and similarly recited in claim 26? The Examiner finds Martin's discussion of directories which contain prioritized couponing information teaches or suggests the limitation at issue. See Final Act. 7 (citing Martin 2:35--40, 7:1-5, 8:29--45). Appellants dispute the Examiner's factual findings, arguing "Martin instead describes ... how preferred AIDs are provisioned into P ALs in the reader" and that "once AIDs are placed in a PAL (of the reader) the AID may be ranked and/or assigned a priority level indicator representing the preference order ( of the merchant) in which the associated transaction application should be used for the wireless transaction." Appeal Br. 16-1 7 ( emphasis added). The Examiner responds that "Martin teaches directories which contain payment information and others with couponing information (Martin 2:31- 60); albeit the directories have the same title PPSE. Martin teaches a priority of application identifiers (Martin 5:55-60). Finally Martin teaches that softcards and coupons may be applied in the same transaction." Ans. 15. We are unpersuaded of error. Although Martin may teach that "preferred AIDs are provisioned into P ALs in the reader" ( Appeal Br. 16), Appellants' argument is not responsive to the Examiner's finding that Martin teaches a PPSE 108 that includes "a priority [(order)] of application identifiers" (AIDs) including coupon identifiers (Ans. 15) and that the PPSE 108 is installed within mobile device 102. See Martin Fig. 1. 8 Appeal2017-006843 Application 13/451,770 For the reasons discussed above, Appellants have not shown error in the Examiner's factual findings in the 35 U.S.C. Â§ 103(a) rejection of claims 6 and 26. Accordingly, we sustain the Examiner's 35 U.S.C. Â§ 103(a) rejection of independent claim 6 and 26, as well as the rejections of dependent claims 7, 21-23, which are not argued separately. See Appeal Br. 13. 35 USCÂ§ 103(a) Rejection of Claims 8, 9, 24, 25, and 27 Issue: Based on Appellants' arguments, the dispositive issue presented on appeal for the above-captioned claims is whether the Examiner errs in finding the combination of von Behren and Brudnicki teaches or suggests "selecting, by the proximity reader, a payment product from the candidate list based on a relative priority associated with each payment product and the selected coupon application," as recited in exemplary claim 8, and similarly recited in claim 2 7. The Examiner finds von Behren teaches or suggests the limitation at issue. Final Act. 12 (citing von Behren 7:38--41, 8:56-9:2). The first portion of von Behren cited by the Examiner discloses that "the wallet application can be used by the contactless payment device user to select certain card software applications as preferred applications via a user-inter- face, thereby creating an order based on the type of card software application. The second cited portion describes the operation of an NFC controller. Appellants argue " von Behren fails to teach or suggest selecting, by the proximity reader, a payment product from the candidate list based on a relative priority associated with each payment product and the selected 9 Appeal2017-006843 Application 13/451,770 coupon application." Reply Br. 6; see Appeal Br. 20. "Instead, von Behren specifies that the wallet application (on the user's mobile device) contains a list of all the registered payment applications and can be used by the contactless payment device user to select certain card software applications as preferred applications via a user-interface, thereby creating an order based on the type of card software application." Appeal Br. 20; see Reply Br. 6. We find Appellants' argument persuasive. Although we agree with the Examiner that the cited portions of von Behren teach "selecting ... a payment product from the candidate list based on a relative priority associated with each payment product," the Examiner does not demonstrate that von Behren teaches selecting "a payment product from the candidate list" based on "the selected coupon application." In Appellants' claimed invention, ... the payment product selection process in the proximity payment device is modified based on the selection of the couponing application. This is because of the fact that, in some cases, a couponing application is only eligible in combination with a specific payment product, for example, as part of an arrangement between a retailer (such as "Best Buy" stores) and an issuer of a payment product (such as MasterCardÂ®). So when the PPSE is updated to indicate the presence of the PCSE for purposes of a "Best Buy" coupon, it may equally imply that the priority of the MasterCardÂ® product is increased in the PPSE so that MasterCardÂ® becomes the preferred payment application in the PPSE. Spec. 11: 19--26. The Examiner does not sufficiently explain how von Behren's wallet application can be used to select certain card software (payment) applications as preferred applications based on a "selected coupon application," as recited in claim 8, rather than "based on the type of card 10 Appeal2017-006843 Application 13/451,770 software application" (von Behren 7:38--41). See Final Action 12-15; Answer 16-19. Accordingly, on this record, the Examiner has not shown how von Behren, alone or in combination with Brudnicki, teaches or suggests the limitation at issue as recited in claim 8 and similarly recited in claim 2 7. Because we agree with at least one of the dispositive arguments advanced by Appellants for claim 8, we need not reach the merits of Appellants' other contentions. We, therefore, do not sustain the Examiner's 35 U.S.C. Â§ 103 (a) rejection of independent claims 8 and 27. We also do not sustain the rejection of dependent claims 9, 24, and 25 for similar reasons. DECISION We affirm the Examiner's decision rejecting claims 6, 7, 21-23, and 26 under 35 U.S.C. Â§ 103(a). We reverse the Examiner's decision rejecting claims 8, 9, 24, 25, and 27 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED-IN-PART 11