Federico Zambelli Hosmer et al.

Patent Trials and Appeals BoardOct 2, 2020

2020002737 (P.T.A.B. Oct. 2, 2020)

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. 13/614,429 09/13/2012 Federico Zambelli Hosmer 7879-37300 3466 156785 7590 10/02/2020 KHMRG (PayPal, Inc.) 1120 S. Capital of Texas Hwy Building 2, Suite 300 Austin, TX 78746 EXAMINER LEFFALL-ALLEN, NAKIA ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 10/02/2020 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): patent_docketing@intprop.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FEDERICO ZAMBELLI HOSMER, JULIJ VANELLO PREMRU, and PIETRO SARDO ____________ Appeal 2020-002737 Application 13/614,429 Technology Center 3600 ____________ Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU, and SHARON FENICK, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 7–14, and 16–20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b)(1). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies PayPal, Inc. as the real party in interest. Appeal Br. 4. Appeal 2020-002737 Application 13/614,429 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “provid[ing] check-in based payment processes, which allow a user to pre-authorize a transaction by registering a check-in at a location.” Spec. ¶ 2. Claims 1, 11, and 17 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal (emphasis added): 1. A method comprising: receiving a first request from a user interface operating on a merchant device to link a first payment account associated with a merchant with a first check-in service account; receiving a second request from a user interface operating on a mobile user device to link a second payment account associated with a user with a second check-in service account; linking, on a server, the first payment account associated with the merchant with the first check-in service account, the first check-in service account controlled by the merchant, the linking executed in response to the first request received from the merchant; linking, on the server, the second payment account associated with the user with the second check-in service account, the second check-in service account controlled by the user, the linking executed in response to the second request received from the user; receiving, on the server from a check-in service, check-in data, the check-in data including a merchant identifier and user information identifying the user, registering the user with the second check-in service and associating the user with the mobile user device, and a check-in operation generating the check-in data is initiated by the mobile user device entering a physical location associated with the merchant; Appeal 2020-002737 Application 13/614,429 3 generating, on the server in response to the check-in operation, a real-time pre-approval for a transaction between the merchant identified by the merchant identifier and the user, the pre-approval including a one-time-use PIN and a termination event associated with the one-time-use PIN; sending, from the server to the mobile user device over a network, at least the one-time-use PIN; receiving, on the server from the user interface operating on the merchant device over the network, a validated transaction, the validated transaction including the one-time-use PIN associated with the pre-approval; and processing, on the server, a payment from the second payment account to the first payment account based at least in part on the validated transaction. Appeal Br. 15 (Claims App.). REJECTIONS The Examiner rejects claims 11–14 and 17–20 under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 3–5. The Examiner rejects claims 1–3, 5–8, 11–13, and 16–19 under pre- AIA 35 U.S.C. § 103(a) as being unpatentable over Silverstein2 and Flitcroft.3 Final Act. 5–9. The Examiner rejects claims 4, 14, and 20 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Silverstein, Flitcroft, and Royyuru.4 Final Act. 9. 2 Silverstein et al., US 7,496,527 B2 (iss. Feb. 24, 2009). 3 Flitcroft et al., US 2003/0028481 A1 (pub. Feb. 6, 2003). 4 Royyuru, US 2011/0153496 A1 (pub. June 23, 2011). Appeal 2020-002737 Application 13/614,429 4 The Examiner rejects claims 9 and 10 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Silverstein, Flitcroft, and Bishop.5 Final Act. 9–10. OPINION Rejection Under 35 U.S.C. § 112 The Examiner determines that independent claim 11 is indefinite because the recited “user interface(s) (operating on the merchant and mobile devices) are not part of the system” and “[i]t is unclear whether the claim is directed toward the processor(s) or the user interface operating on each device.” Ans. 4; see Final Act. 4. The Examiner determines that independent claim 17 is indefinite under similar reasoning. Ans. 4–5 (“It is unclear whether the claim is directed toward the medium or the user interface operating machine . . . .”); Final Act. 4–5. Appellant argues that “claims 11 and 17 are unambiguously directed to a system and storage medium, respectively” and that “there is no ambiguity that the claims are directed toward a system and storage medium, rather than the user interface(s).” Reply Br. 2–3. We agree with Appellant. As Appellant points out, claim 11 is directed toward a system that includes “processors” and “a memory,” and the system performs operations including “receiving a first request from a user interface operating on a merchant device” and “receiving a second request from a user interface operating on a mobile user device.” See Reply Br. 2–3 (citing Spec. ¶ 31); Appeal Br. 9 (citing Spec. ¶¶ 18, 19, 24, 25, 40, 41, 59; Figs. 1, 4, 6). Although the Examiner finds that the user interfaces 5 Bishop et al., US 2007/0052517 A1 (pub. Mar. 8, 2007). Appeal 2020-002737 Application 13/614,429 5 from which the first and second requests are received “are not part of the system” (Ans. 4), we disagree that this renders the claim indefinite; we understand that the claim requires the system to receive the recited first and second requests from user interfaces of a merchant device and a mobile user device, respectively, and not that these user interfaces are part of the claimed system. Similarly, claim 17 is directed toward a “non-transitory machine- readable storage medium” including instructions that cause a machine to perform operations including “receiving a first request from a user interface operating on a merchant device” and “receiving a second request from a user interface operating on a mobile user device.” We find that the metes and bounds of the claims are clear in this regard. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112 rejection of claims 11–14 and 17–20 as indefinite. Rejections Under 35 U.S.C. § 103 The Examiner relies on Flitcroft for the limitation of “generating . . . in response to the check-in operation, a real-time pre-approval for a transaction,” as recited in independent claim 1 and similarly recited in independent claims 11 and 17. Final Act. 6–7 (citing Flitcroft ¶¶ 86, 87, 103, 187, 202, 207, 235); see Ans. 7 (citing Flitcroft ¶¶ 204, 205, 231, 232). According to the Examiner, “[t]he ‘event triggers’ of Flitcroft . . . are in response to a user’s check-in operations.” Final Act. 3 (citing Flitcroft ¶¶ 75, 86). Appellant argues that Flitcroft does not teach or suggest “generating . . . in response to the check-in operation, a real-time pre- approval for a transaction,” where “the check-in data is initiated by the mobile user device entering a physical location associated with the Appeal 2020-002737 Application 13/614,429 6 merchant,” as claimed. Appeal Br. 10–11; Reply Br. 4–5. Specifically, Appellant argues that Flitcroft “teach[es] at most generating a single merchant or one-time use account for use in a transaction.” Appeal Br. 10; see Reply Br. 4–5. We agree with Appellant. Flitcroft teaches limited use credit card numbers and/or cards that “can be used for a single or limited use transaction, thereby reducing the potential for fraudulent reuse of these numbers and/or cards.” Flitcroft Abstr. For example, validation or activation of a limited use card may be limited to a specific merchant prearranged by the user or determined “at the time of making the purchase, during the authorization process or during the settlement process.” Id. ¶ 103; see id. ¶¶ 202, 204. The cited portions of Flitcroft, however, are silent on a check-in operation (such as Silverstein’s location-based check-in operation (see Final Act. 6)) being the basis for pre-approval of a transaction. Other portions of Flitcroft appear to teach that the determination of whether a transaction is valid occurs at the time a card is used for a transaction, rather than during a pre-approval. Flitcroft ¶¶ 101, 160, 186, 220–221. Accordingly, we find that the Examiner does not identify, and we are unable to discern, where Flitcroft teaches or suggests pre-approving a transaction in response to a check-in operation. For the foregoing reasons, we do not sustain the Examiner’s § 103 rejections of claims 1–5, 7–14, and 16–20. Appeal 2020-002737 Application 13/614,429 7 CONCLUSION The Examiner’s rejection of claims 11–14 and 17–20 under 35 U.S.C. § 112 is reversed. The Examiner’s rejections of claims 1–5, 7–14, and 16–20 under 35 U.S.C. § 103 are reversed. DECISION SUMMARY In summary: REVERSED Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed 11–14, 17–20 112 Indefiniteness 11–14, 17–20 1–3, 5–8, 11–13, 16–19 103 Silverstein, Flitcroft 1–3, 5–8, 11–13, 16–19 4, 14, 20 103 Silverstein, Flitcroft, Royyuru 4, 14, 20 9, 10 103 Silverstein, Flitcroft, Bishop 9, 10 Overall Outcome 1–5, 7–14, 16–20