Ex Parte Beasley et al

Patent Trial and Appeal Board

May 31, 2017

12564356 (P.T.A.B. May. 31, 2017)

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.
12/564,356 09/22/2009 Garland B. Beasley 600592/377229 8212
826 7590 06/02/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
DANNEMAN, PAUL
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARLAND B. BEASLEY, CHARLES JARRETT,
ALAN ANDERSON, JAY JACOBSON, RAYMOND DALTON, and
BRIAN BATES
Appeal 2015-0037671
Application 12/5 64,3 5 62
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Oct.
16, 2014) and Reply Brief (“Reply Br.,” filed Feb. 18, 2015), and the
Examiner’s Answer (“Ans.,” mailed Dec. 18, 2014) and Final Office Action
(“Final Act.,” mailed Apr. 16, 2014).
2 Appellants identify Murphy Oil USA, as the real party in interest. App.
Br. 2.
Appeal 2015-003767
Application 12/564,356
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellants’ claimed invention “relate[s] generally to secure financial
transactions,” and “[mjore particularly ... to the management of financial
transactions having multi-factor security and verification useful for the
purchase and sale of products and services.” Spec. 11.
Claims 1, 8, and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method, comprising:
receiving an authorization code request and a mobile
terminal identifier to initiate a transaction, the received mobile
terminal identifier being associated with a mobile terminal, the
authorization code request comprising a requested currency
amount to facilitate the transaction;
verifying, by a processor, that the mobile terminal
identifier is registered with an account, the mobile terminal
identifier and a customer verification number being associated
with the account, the customer verification number having not
been included in the authorization code request;
generating an authorization code in response to verifying
that the mobile terminal identifier is registered;
storing the authorization code in association with the
account;
providing for transmission of the authorization code to the
mobile terminal;
receiving a verification request from a point of sale
terminal in response to the point of sale terminal receiving a
request for purchase of goods or services, the verification request
including a received authorization code, a received customer
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Application 12/564,356
verification number, and one or more purchase parameters
associated with the goods or services requested for purchase,
provided to the point of sale terminal by a user;
verifying that the received authorization code matches the
authorization code stored in association with the account, and the
received customer verification number matches the customer
verification number associated with the account;
verifying that the purchase parameters do not violate one
or more predetermined restrictions defined to prohibit or limit the
purchase of the goods or services; and
providing for transmission of a verification reply to the
point of sale terminal to authorize the transaction in response to
verifying that the received authorization code matches the
authorization code stored in association with the account, the
received customer verification number matches the customer
verification number associated with the account and that the
purchase parameters do not violate the predetermined restrictions
defined to prohibit or limit the purchase of the goods or services
associated with the transaction.
REJECTION
Claims 1—23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kumar (US 2010/0041368 Al, pub. Feb. 18, 2010).
ANALYSIS
Independent Claim 1 and Dependent Claims 2—7
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claims 1, 8, and 16 under 35 U.S.C. § 103(a) because Kumar does
not disclose or suggest
receiving a verification request from a point of sale
terminal in response to the point of sale terminal receiving a
request for purchase of goods or services, the verification
request including a received authorization code, a received
customer verification number, and one or more purchase
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Application 12/564,356
parameters associated with the goods or services requested for
purchase, provided to the point of sale terminal by a user[,]
as recited in claim 1, and similarly recited in claims 8 and 16. App. Br. 11—
16; see also Reply Br. 4—10.
Kumar relates to electronically delivering a prepaid card to a mobile
device. Kumar 11. Kumar describes that after a sender purchases an
electronic gift card, a merchant server receives the purchase data (e.g., the
name of the recipient, mobile device number for the recipient, and an
amount of funds for the electronic gift card). Id. H 22—23. The merchant
server processes the purchase information to generate prepaid card
information (e.g., prepaid card number and prepaid card authorization code),
and sends the purchase data and generated prepaid card data to an over-the-
air (OTA) provisioning server for issuance of an electronic prepaid card. Id.
H 24—25. And the OTA provisioning server requests information from a
telecommunications operations server regarding whether recipient’s mobile
device associated with the recipient mobile number provided by the
merchant server is NFC enabled. Id. 125. If the device is NFC enabled, the
OTA provisioning server delivers a softcard (i.e., a software-implemented
entity for facilitating transactions (id. 112)) to the recipient’s mobile phone
number. Id. 126. The recipient downloads the electronic prepaid card on
the NFC enabled mobile device as a softcard, and the softcard may be used
at an appropriate retail store. Id. H 29-30.
If the mobile device is not NFC enabled, the OTA provisioning server
delivers an SMS message to the recipient’s mobile device. Id. 126. The
SMS message includes a prepaid card authorization code, which is
associated with a previously registered amount of funds. Id. 131. The
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Application 12/564,356
recipient provides the cashier at a point of sale (POS) system the prepaid
card authorization code, and the cashier enters the authorization code and
phone number into the POS system. Id. 31—32. The POS system
validates the authorization code and phone number with the merchant server,
and the merchant server, upon determining the authorization code is valid,
indicates the amount of funds associated with the prepaid card. Id. 132.
The cashier then encodes the dollar amount onto a plastic magnetic stripe
card. Id.
In rejecting claim 1 under § 103(a), the Examiner cites paragraph 32
of Kumar as disclosing “providing a prepaid authorization code and the
mobile device 116 to the cashier who enters the authorization code and the
phone number in the POS system 120,” and POS system 120 “validating]
the authorization code and phone number with merchant server to verily that
the authorization code has not been previously used.” Final Act. 4.
But claim 1 recites, and claims 8 and 16 similarly recite, that the
verification request from the point of sale terminal includes at least three
types of data, i.e., “a received authorization code, a received customer
verification number, and one or more purchase parameters associated with
the goods or services requested for purchase.” In contrast, Kumar describes
POS system 120 providing two pieces of information to the merchant server:
an authorization code and a phone number. Even assuming arguendo that a
mobile phone number meets the claimed customer verification number, the
information sent by Kumar’s POS system lacks at least the claimed one or
more purchase parameters.
In the Answer, the Examiner responds that the total price of the goods
or services selected for purchase constitutes the claimed purchase
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parameters. Ans. 3 (citing Kumar | 32). The difficulty with the Examiner’s
analysis is that Kumar does not describe or suggest that POS system 120
sends the total price in the verification request. Rather, paragraph 32 of
Kumar describes verifying only that the authorization code has not been
used, and, thus, only requires the authorization code and phone number in
the request to the merchant server. After the merchant server sends the
amount of funds associated with the card to the POS, the cashier loads the
dollar amount of the electronic gift card onto a physical card, and the
physical card is used to make a purchase of goods or services.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 8, and 16, and dependent claims 2—7, 9-15, and
17-23 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1—23 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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