MARTINEZ, Jose-Luis Celorio. et al.

Patent Trials and Appeals Board

Sep 11, 2020

2019003453 (P.T.A.B. Sep. 11, 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.
13/551,124 07/17/2012 Jose-Luis Celorio MARTINEZ 0076412-000084 9261
21839 7590 09/11/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BAGGOT, BREFFNI
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSE-LUIS CELORIO MARTINEZ and
ANDREA CHRISTINE GILMAN
____________________

Appeal 2019-003453
Application 13/551,1241
Technology Center 3600
____________________

Before JON M. JURGOVAN, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–38, constituting all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
Mastercard International Incorporated. Appeal Br. 2.
2 Our Decision refers to the Specification (“Spec.”) filed July 17, 2012; the
Non-Final Office Action (“Non-Final Act.”) mailed June 22, 2018; the
Appeal Brief (“Appeal Br.”) filed December 21, 2018; the Examiner’s
Answer (“Ans.”) mailed February 14, 2019; and the Reply Brief (“Reply
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CLAIMED INVENTION
The claims relate to a mobile device which initiates an electronic
financial transaction by transmitting an authorization request to a point of
sale (POS) terminal. Spec., Abstr. The authorization request includes a
payment card and is for a remaining amount after applying a discount for a
deal to the transaction amount. Id.
Claims 1, 10, 20 and 29 are independent. Claim 1 is for a method
with steps performed at a mobile device; claim 10 is for a method with steps
performed at a merchant point of sale device; claim 20 is for a mobile
device; and claim 29 is for a system with a merchant point of sale device.
Claims 2–9 depend from claim 1; claims 11–19 depend from claim 10;
claims 21–28 depend from claim 20; and claims 30–28 depend from claim
29. Claim 1, reproduced below, is representative of the claimed subject
matter. Argued claim limitations are shown in italics:
1. A method for initiating an electronically processed
transaction at a mobile device, comprising:
transmitting, by a transmitter of a mobile device to a point
of sale device, an electronic wallet identifier associated with the
mobile device to initiate an electronically processed transaction;
receiving, by a receiver of the mobile device from the
point of sale device via a payment network, transaction
information for the electronically processed transaction, wherein
the transaction information includes at least a transaction
amount;
storing, in a database on the mobile device, at least one
deal and a payment card, wherein each deal of the at least one
deal includes at least a discount amount;
receiving, by the receiver of the mobile device from a
transaction processing server, an indication of one or more deals
valid for the transaction;

Br.”) filed March 28, 2019.
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displaying, on a display of the mobile device, the
transaction information and information related to a deal of the
at least one deal stored in the database that is valid for the
transaction;
receiving, via an input of the mobile device, an indication
of a deal associated with the displayed information related to a
deal of the at least one deal to be applied to the electronically
processed purchase transaction to be initiated by the mobile
device; and
initiating, by a processor of the mobile device, an
electronic financial transaction using the stored payment card
by transmitting from the mobile device to the point of sale
terminal, by the transmitter of the mobile device, an
authorization request for the electronic financial transaction,
wherein the authorization request includes the payment
card and is for a remaining amount, and
wherein the remaining amount is based on the transaction
amount and the discount amount corresponding to the indicated
deal.

Appeal Br. 23 (Claims App.).

REJECTION3
Claims 1, 2, 9, 20, 21, and 28 stand rejected under 35 U.S.C. § 103
over Killian (US 2009/0094125 A1, April 9, 2009), Owen
(US 2010/0048226 A1, February 25, 2010), VanDeburg
(US 2013/0144700 A1, June 6, 2013) and Wall (US 2013/0046643 A1,
February 21, 2013). Final Act. 17–21.

3 In the Non-Final Office Action, claims 1–38 were rejected under 35 U.S.C.
§ 101. Non-Final Act. 8–16. However, the Examiner withdrew the § 101
rejection in the Answer. Ans. 3. Accordingly, the § 101 rejection is not
before us and thus we do not address it further in this decision.
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Claims 10, 11, 16, 17, 19, 29, 30, 35, 36 and 38 stand rejected under
35 U.S.C. § 103 over Killian, VanDeburg, and Wall. Final Act. 21–25.
Claims 3–8, 13–15, 18, 22–27, 31–34, and 37 stand rejected under
35 U.S.C. § 103 over Killian, Owen, VanDeburg, Wall, and Chaikin
(US 2011/0246284 A1, October 6, 2011). Final Act. 25–29.

ANALYSIS
§ 103 Rejections
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) where present, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
Independent Claims 1, 10, 20 and 29
Appellant argues for patentability of independent claims 1, 11, 20, and
29 together as one group. Accordingly, we select claim 1 as representative
of the group and will refer only to this claim, except when necessary to refer
to other claims. See 37 C.F.R. § 41.37(c)(1)(iv).
Argument Concerning Authorization Request from Mobile Device to Point
of Sale (POS) Terminal
The Examiner finds that Killian shows the claimed “initiating” step
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indicated in italics in claim 1 as reproduced above. Non-Final Act. 18
(citing Killian, code [57], ¶¶ 7, 28, 79, 99, 148, 150). The Examiner makes
similar findings for claims 10, 20, and 29. Id. at 17–18, 21–22. Appellant
disagrees with the Examiner’s finding, and argues that Killian does not
“describe the authorization request with the payment card and the remaining
amount that is used . . . to initiate the electronic financial transaction as
recited in the claims.” Appeal Br. 18.
At the outset, we note that claim 1 recites “wherein the authorization
request includes the payment card and is for a remaining amount.” Claim
20 recites a similar limitation. The underlined part of this recitation is an
“intended use” limitation indicating the purpose for which the authorization
request is to be used. We note that the claims do not recite that the
authorization request is actually used by a device to pay the remaining
amount. Such a limitation is not afforded patentable weight. Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
(Fed. Cir. 2003) (“An intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates”; such statements often appear in the
claim’s preamble but can appear elsewhere in a claim); In re Otto, 312 F.2d
937 (CCPA 1963) (intended use of hair curling was of no significance to the
structure of a hair curler and process of making); In re Sinex, 309 F.2d 488,
492 (CCPA 1962) (statement of intended use in an apparatus claim failed to
distinguish over the prior art apparatus).
Even if we give patentable weight to this limitation, the plain meaning
of the phrase “is for a remaining amount” does not require that the
authorization request includes a remaining amount, contrary to Appellant’s
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argument; it could simply mean that the authorization request is to arrange
for payment of the remaining amount calculated by another device in the
system. See Spec. ¶ 55 (describing that the merchant—not customer mobile
device—calculates the remaining amount). In this regard, we note that
during examination of patent applications before the Office, claim terms are
given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed.
Cir. 2004). Appellant’s Specification describes that the authorization
request is “for a remaining amount” (¶¶ 6–9, 70, 74) and also mentions that
“[t]he authorization request may include at least the reduced amount 412 and
the payment card 414 to be charged in the transaction” (¶ 43).
In sum, a person of ordinary skill in the art would have understood the
Specification to describe that the authorization request may or may not
include the reduced or remaining amount. Thus, Appellant’s argument that
the authorization request includes both a payment card and a remaining
amount (Appeal Br. 18) is not commensurate in scope with the claim under
its broadest reasonable interpretation consistent with the Specification,
which does not require that the authorization request includes the remaining
amount. Limitations not appearing in a claim cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
In the Reply Brief, inconsistent with its Appeal Brief argument,
Appellant recognizes that the claimed authorization request need only
include a customer payment card number sent to a point-of-sale device.
Reply Br. 2. The Examiner relies on Killian as teaching transfer of a
payment card account number from a customer’s mobile device to a POS
terminal, which initiates an authorization request. Non-Final Act. 18 (citing
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Killian ¶ 148). Killian also teaches that a payment transaction may be
initiated from a customer’s device (such as a mobile telephone) and that the
customer’s device may be used to enter transaction information such as an
amount due. Id. (citing Killian ¶ 28). Killian further teaches use of
promotional offers and electronic coupons to fund a portion of a payment
transaction. Killian ¶¶ 91, 97, 130; see also Owen ¶ 3.
Considering these teachings together, Killian at least suggests the
claimed “initiating” step, notwithstanding Appellant’s arguments to the
contrary. Appellant does not explain sufficiently why Killian’s transfer of a
payment card account number cannot be considered an authorization request
that initiates a payment transaction. Killian ¶ 148. After all, Killian
explains that the merchant device uses the same information transferred
from the mobile device to produce an authorization request. Id. Appellant
further presents no evidence that development of the claimed “initiating”
step was uniquely challenging or difficult for one of ordinary skill in the art
to solve in view of the prior art teachings. Leapfrog Enterprises, Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Thus, Appellant’s
argument is unpersuasive to show Examiner error.
Argument Concerning Authorization Response from Server
Appellant also argues that Killian does not describe the claimed
authorization response to the POS terminal from a server. Appeal Br. 18.
This limitation appears in claim 10, which recites “receiving, from the
server, an authorization response indicating at least one of approval and
denial of the financial transaction.” Appeal Br. 24. Claim 29 recites a
similar limitation. Id. at 28. The Examiner finds this limitation taught by
Killian. Non-Final Act. 22 (citing Killian ¶¶ 128, 133); Ans. 4 (citing
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Killian, Figs. 5 and 10 [Step 1016]).
Appellant’s argument hinges on the same assumption discussed
above—that the authorization request includes both the payment card and
remaining amount. Appeal Br. 18. As explained, the broadest reasonable
interpretation of the claims includes that the authorization request includes
only a payment card, and not a remaining amount, and since mobile
electronic payment transactions involving transfer of a card number and
discounting are known in the electronic payment transactions industry, we
are not persuaded that the Examiner errs in finding the claim limitation
obvious under its broadest reasonable interpretation. See Killian ¶¶ 91, 97,
130. Appellant attempts to distinguish the authorization response on the
basis of the nature of the authorization request, but as we have stated, the
broadest reasonable interpretation is that the authorization request includes
only the payment card, which is known in the art, as taught by Killian and
other references.
Argument Concerning Reasons to Combine the References
Appellant argues “there is no reason an ordinarily skilled artisan
would seek to modify the split funding transactions model of Killian using
the teachings of Owen, VanDeburg, or Wall in the manner suggested by the
Office Action.” Appeal Br. 19. That both Killian and Owen teach split
funding transactions is one reason the Examiner states for combining the
references. Non-Final Act. 3; Ans. 5. The common teachings of the
references may constitute a reason to combine. See KSR, 550 U.S. at 401
(“Often, it will be necessary for a court to look to interrelated teachings of
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multiple patents . . . to determine whether there was an apparent reason to
combine the known elements in the fashion claimed.”).
In addition, the Examiner finds that one of ordinary skill in the art
would have combined the elements of the prior art references with no
change in their respective functions using known methods. Non-Final Act.
19–20. The Examiner further finds “[o]ne of ordinary skill in the art would
have been reasonably prompted to make the combination because of the
efficiency of requesting authorization when the discount has already been
applied.” Id. at 20. Appellant does not sufficiently address these reasons to
combine the references, so we are not persuaded of Examiner error.
Appellant further argues “[a] person of ordinary skill in the art would
not modify Killian in the manner suggested by the Examiner because doing
so would change Killian’s ‘rearranged and novel transaction flow’ in a
manner that would destroy the ability of Killian to achieve its intended
purpose, or change principle of operation of Killian.” Appeal Br. 19. We
agree with the Examiner that these arguments are not sufficiently developed
such that they could be responded to, and merely constitute a general denial,
not a specific argument. Ans. 5. For example, the argument does not
indicate what intended purpose is destroyed or what principle is changed by
combination of the references. In addition, the argument does not explain
why the combination of references would destroy the intended purpose or
change the principle of operation. See 37 C.F.R. § 41.37(c)(1)(iv) (“The
arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.”).
Accordingly, we are not persuaded of error in the Examiner’s stated
reasons to combine the prior art references.
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Argument Concerning Merchant Initiated Electronic Financial Transactions
Appellant further contends the combination of Killian, Owen,
VanDeburg, and Wall “would lead to a process of merchant initiated
electronic financial transactions, which is different from Applicant’s
amended claimed invention.” Appeal Br. 19. Appellant does not explain
why the prior art references must be viewed as “merchant initiated”
transaction systems whereas the claims are “customer initiated.” As the
Examiner notes, Killian teaches that its payment transaction is initiated from
a customer’s device, which suggests Killian describes a “customer initiated”
transaction system. Ans. 6 (citing Killian, Fig. 10, step 1006, ¶¶ 7, 28). On
this record, we are not persuaded that persons of ordinary skill in the art
would view the prior art references as “merchant initiated” systems or even
that such a distinction is recognized in the art.
Accordingly, we do not find Appellant’s argument persuasive to show
Examiner error.
Reply Brief Arguments
In the Reply Brief, Appellant argues that Killian’s objective is to
protect the payment card from being presented to the merchant point-of-sale
device. Reply Br. 3. Although this may be true for some parts of Killian,
Appellant does not address the parts of Killian disclosing transfer of a
customer payment card number from a customer’s mobile device to a POS
terminal. See Non-Final Act. 18 (citing Killian ¶ 148). For the same reason,
we find unpersuasive Appellant’s argument that the secondary references,
like Killian, only disclose transferring a request for payment transaction to a
payment services provider, customer’s financial institution, and merchant’s
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financial institution, which are not analogous to a point-of-sale device.
Reply Br. 3.

Remaining Claims
No separate arguments are presented for the remaining dependent
claims. Accordingly, we sustain the Examiner’s rejections of these claims
for the reasons stated with respect to the independent claims from which
they depend. See Final Act. 20–21, 24–29; 37; C.F.R. § 31.47(c)(1)(iv).

CONCLUSION
The Examiner’s rejections of claims 1–38 under 35 U.S.C. § 103 are
affirmed.
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 9, 20,
21, 28
103 Killian, Owen,
VanDeburg, Wall
1, 2, 9,
20, 21, 28

10, 11, 16,
17, 19, 29,
30, 35, 36,
38
103 Killian, Owen,
VanDeburg
10, 11,
16, 17,
19, 29,
30, 35,
36, 38

3–8, 13–
15, 18, 22–
27, 31–34,
37
Killian, Owen,
VanDeburg, Wall,
Chaikin
3–8, 13–
15, 18,
22–27,
31–34, 37

Overall
Outcome
1–38

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED