`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO Box 1450
`Alexandna, Virgmia 22313-1450
`www.uspto gov
`
`90/012,5l7
`
`09/12/2012
`
`
`
`
`
`8036988
`
`253.005
`
`5785
`
`EXAMINER
`Maxeymmfficesmuc —
`09W” —
`7590
`3“”
`100 Second Avenue South
`HOTALING‘ JOHN M
`
`Suite 401 North
`St. Petersburg, FL 33701
`
`ART UNIT
`3992
`
`MAIL DATE
`
`09/1 1/2013
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`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)
`
`MasterCard, Exh. 1003, p. 1
`
`MasterCard, Exh. 1003, p. 1
`
`

`

`
`
` ._ UNITED STATES PATENT AND TRADEWK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Bux145fl
`Alexandria, VA 223i 3-1450
`vmmusmogou
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER’S CORRESPONDENCE ADDRESS)
`
`BUCHANAN, INGERSOLL & ROONEY PC
`
`POST OFFICE BOX 1404
`
`ALEXANDRIA, VA 22313—1404
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'I'I'AL FORM
`
`REEXAMINATION CONTROL NO. 90/012 517.
`
`PATENT NO. 8036988.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex pan‘e reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (ReV.O7-O4)
`
`MasterCard, Exh. 1003, p. 2
`
`MasterCard, Exh. 1003, p. 2
`
`

`

`Office Action in Ex Parte Reexamination
`
`Control No.
`90/012,517
`
`Patent Under Reexamination
`8036988
`
`Examiner
`JOHN HOTALING
`
`Art Unit
`
`AIA (First Inventor to
`
`File) Status 3992
`
`N0
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`ag Responsive to the communication(s) filed on 6/7/2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`b. El This action is made FINAL.
`
`c. El A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortened statutory period for response to this action is set to expire g month(s) from the mailing date of this letter.
`Failure to respond within the period for response will result in termination of the proceeding and issuance of an ex parte reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified above is less than thirty (30) days, a response within the statutory minimum of thirty (30) days
`will be considered timely.
`
`Part |
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`
`1. El Notice of References Cited by Examiner, PTO—892.
`
`3. El
`
`Interview Summary, PTO—474.
`
`2. El
`
`Information Disclosure Statement, PTO/SB/08.
`
`4. El
`
`.
`
`Part II
`
`SUMMARY OF ACTION
`
`Claims 1-38 are subject to reexamination.
`
`Claims
`
`Claims
`
`Claims
`
`
`
`are not subject to reexamination.
`
`have been canceled in the present reexamination proceeding.
`
`are patentable and/or confirmed.
`
`DDXIDDEIZI The drawings, filed on _ are acceptable.
`
`1a.
`1b.
`
`2.
`
`3 4 5 6
`
`7 8
`
`.
`
`Claims 1-38 are rejected.
`
`
`Claims
`
`are objected to.
`
`[I The proposed drawing correction, filed on _ has been (7a) El approved (7b)I:I disapproved.
`
`I] Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)—(d) or (f).
`
`a) [I All
`
`b) [I Some* 0) El None
`
`of the certified copies have
`
`1 El been received.
`
`2 El not been received.
`
`3 [I been filed in Application No.
`
`
`
`4 El been filed in reexamination Control No.
`
`5 El been received by the International Bureau in PCT application No.
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9. [I Since the proceeding appears to be in condition for issuance of an ex parte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordance with the practice under Ex parte Quayle. 1935 CD.
`11,453 O.G. 213.
`
`10. El Other:
`
`cc: Re-uester (if third art re uester
`U.S. Patent and Trademark Office
`
`PTOL-466 (Rev. 08-13)
`
`Ottice Action in Ex Parte Reexamination
`
`Part of Paper No. 20130829
`
`MasterCard, Exh. 1003, p. 3
`
`
`
`MasterCard, Exh. 1003, p. 3
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`Summary of the Proceeding to date
`
`Reexamination was requested on 9/12/2012 and was denied on 12/06/2012.
`
`The Third Party Requestor submitted a petition requesting a review of the order
`
`denying request for ex parte reexamination.
`
`In response to the petition the denial was
`
`reviewed and the petition was granted. The reexamination of claims 1-38 of the
`
`8,036,988 was ordered since Cohen raises a substantial new question of patentability
`
`as to claims 1-38 was set forth in the petition decision. For the same reasons, the third
`
`party requester‘s allegation that claims 11 and 12 are obvious over Cohen in view of
`
`Musmanno raises a substantial new question of patentability.
`
`Patents and Printed Publication Cited in the Request
`
`1. Cohen, U.S. Patent No. 6,422,462
`
`2. Musmanno et al., U.S. Patent No. 5,826,243
`
`3. Franklin et al., US. Patent No. 5,883,810
`
`4. Joao et al., U.S. Patent No. 5,903,830
`
`5. Yanagihara et al., US. Patent Application 2001/0011249
`
`Cohen and Musmanno et al are available as prior art against the ‘988 patent.
`
`Grounds of Reiection
`
`The following grounds of rejection are set forth:
`
`Claim Rejections - 35 USC § 102
`
`MasterCard, Exh. 1003, p. 4
`
`MasterCard, Exh. 1003, p. 4
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 3
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`Claims 1-10 and 13-38 are rejected under 35 U.S.C. 102(b) as being anticipated
`
`by Cohen U.S. Patent 6,442,462.
`
`i. Claim 1
`
`a) "A method of performing secure credit card purchases, said method
`comprising:"
`
`Cohen discloses that "[i]t is an object of the present invention to provide
`
`improved credit cards and methods for credit card transactions" and that "[i]t is a further
`
`object of the present invention to provide methods and apparatus for secure
`
`transmission of credit card information" (Cohen, col. 1, l1.48-62). Accordingly, Cohen
`
`anticipates secure credit card purchases.
`
`b) "contacting a custodial authorizing entity having custodial responsibility
`of account parameters of a customer's account that is used to make credit card
`purchases"
`
`Cohen discloses "a user dial[ing] into her credit card company" (Cohen, col. 3,
`
`l1.42—44). It is inherent in the art that a credit card company has custodial responsibility
`
`of a customer‘s account used to make credit card purchases. Accordingly, a user dialing
`
`into her credit card company is anticipatory of contacting a custodial authorizing entity
`
`as claimed.
`
`c) "supplying said custodial authorizing entity with at least account
`identification data of said customer's account"
`
`MasterCard, Exh. 1003, p. 5
`
`MasterCard, Exh. 1003, p. 5
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 4
`
`Cohen discloses that the user "provid[es] the ordinary credit card number and
`
`verification data" to her credit card company (Cohen, col. 3,
`
`II. 42-45). This supplies the
`
`credit card company, the custodial authorizing entity, with account identification data of
`
`the customer's account. Accordingly, Cohen anticipates the supplying manipulative step
`
`of claim 1.
`
`d) "defining at least one payment category to include at least limiting a
`number of transactions to one or more merchants"
`
`Cohen discloses that the card can "be customized for only particular uses or
`
`groups of uses," which would constitute payment categories as claimed by the '988
`
`Patent (Cohen, col. 7, l1.66-67). In addition, some of the uses that the card can be
`
`customized for include the card only being valid ”for use for that particular type of
`
`charge (computer or hardware stores...[or] for use in a particular store itself or a
`
`particular chain of stores" (Cohen, col. 8, l1.25-34). Therefore, the customized use can
`
`include limiting a number of transactions to one or more merchants.
`
`e) "said one or more merchants limitation being included in said payment
`category prior to any particular merchant being identified as one of said one or
`more merchants"
`
`Cohen discloses that a card "could be issued to the user which is only valid for
`
`use for that particular type of charge” (Cohen, col. 8,
`
`II. 25-28). A customized use card
`
`with a customized use for only that particular type of charge would result in a card with a
`
`merchant limitation (e.g., only those merchants of that type) prior to any particular
`
`merchant (e.g., a specific merchant of that type) being identified. Additionally, Cohen
`
`states that the card could even be customized for use in a particular store itself or a
`
`MasterCard, Exh. 1003, p. 6
`
`MasterCard, Exh. 1003, p. 6
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 5
`
`particular chain of stores (Cohen, col. 8, II. 32-34). This is including one or more
`
`merchants in a payment category, a particular chain of stores, prior to any particular
`
`merchant being identified.
`
`f) "designating said payment category“
`
`Cohen discloses that "...a user can indicate in advance of purchase...what the
`
`single use or the customized credit card number is to be used for" (Cohen, col. 3,
`
`ll. 49-
`
`52). This is in effect a designation of a customized use, which is anticipatory of
`
`designating a payment category as is recited in claim 1 of the '988 Patent.
`
`9) "generating a transaction code by a processing computer of said
`custodial authorizing entity"
`
`Cohen discloses "credit cards or credit card numbers are generated" by the
`
`credit card company (Cohen, col. 2, l1.35-36). The disposable or customized credit card
`
`numbers can be indistinguishable from ordinary credit card numbers such that "both
`
`users and vendors are encouraged to use the credit card in the same manner as regular
`
`credit cards" (Cohen, col. 3, ll. 6-9).
`
`h) "said transaction code reflecting at least the limits of said designated
`payment category to make a purchase within said designated payment category"
`
`The customized or disposable credit card numbers of Cohen, like the transaction
`
`code of the '988 Patent, may have a "single or a limited range use," where the single or
`
`customized use corresponds to the single or customized use previously indicated
`
`(Cohen, col. 3, II. 47-48). Accordingly, the customized credit card number reflects the
`
`limits of the payment category, in that the card number can only be used for the
`
`designated customized use.
`
`MasterCard, Exh. 1003, p. 7
`
`MasterCard, Exh. 1003, p. 7
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 6
`
`i) "communicating said transaction code to a merchant to consummate a
`purchase with defined purchase parameters"
`
`Cohen discloses that "...the user transmits his or her credit card information to
`
`the vendor. That vendor then verifies the transaction..." (Cohen, col. 5, II. 36-37). It is
`
`inherent in the art that the process of a vendor verifying a transaction includes
`
`requesting authorization for the transaction from the issuer of the credit card used in the
`
`transaction, and that authorization requests include transaction details (e.g., defined
`
`purchase parameters). Accordingly, transmission of the credit card information to the
`
`vendor for verification anticipates the communicating step as recited in claim 1 of the
`
`'988 Patent.
`
`j) "verifying that said defined purchase parameters are within said
`designated payment category"
`
`Cohen discloses that the vendor "then verifies the transaction" such that the card
`
`"is only valid for use for that particular type of charge...such that if the [user] tries to use
`
`it for anything else...the charge will be declined" (Cohen, col. 8, II. 25-32). This
`
`constitutes "verifying the defined purchase parameters being within the payment
`
`category," such that if the transaction details are not within the customized use
`
`associated with the card, the charge will be declined. Accordingly, Cohen anticipates
`
`the verifying step recited in claim 1.
`
`k) "providing authorization for said purchase so as to confirm at least that
`said defined purchase parameters are within said designated payment category
`and to authorize payment required to complete the purchase"
`
`Cohen discloses that, as part of the verification/authorization of the transaction
`
`"...the credit card company notes the identity of the vendor, authorizes the transaction (if
`
`MasterCard, Exh. 1003, p. 8
`
`MasterCard, Exh. 1003, p. 8
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 7
`
`the credit card number is valid and the purchaser has sufficient funds available), and
`
`forwards the authorization code to the vendor" (Cohen, col. 5, II. 45-49). Accordingly, as
`
`stated above, the authorization of the transaction confirms that the purchase
`
`parameters are within the customized use, and the fonNard of the authorization code to
`
`the vendor authorizes the payment required to complete the transaction. Therefore,
`
`Cohen anticipates this recitation of claim 1.
`
`ii. Claim 2
`
`"The method of claim 1 further comprising the step of designating at least
`one of said one or more merchants subsequent to generating said transaction
`code"
`
`Cohen discloses "...the user transmit[ting] his or her credit card information to the
`
`vendor," which would thereby designated the vendor as one of
`
`the one or more
`
`merchants subsequent to the generation of the credit card number. Col. 3,
`
`II. 49-52..
`
`iii. Claims 3 and 20
`
`“wherein said step of communicating the transaction code to a merchant to
`consummate said purchase within defined purchase parameters
`further
`comprises designation of said merchant as one of said one or more merchants"
`
`Claim 3 includes the above recitation and is dependent from claim 1. Claim 20
`
`includes the same recitation, but is instead dependent from claim 19. Cohen discloses
`
`generating a customized credit card number, which may then be submitted to the
`
`vendor (Cohen, col. 5, l1.36- 37).
`
`iv. Claim 4
`
`"wherein said step of generating said transaction code further comprises
`said customer obtaining said transaction code"
`
`MasterCard, Exh. 1003, p. 9
`
`MasterCard, Exh. 1003, p. 9
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 8
`
`Cohen discloses
`
`a user.., is provided with a disposable or customized
`
`number..." (Cohen, col. 3,
`
`II. 43-45). The user being provided with the customized credit
`
`card number is the same as the customer obtaining the transaction code. Accordingly,
`
`Cohen anticipates claim 4 of the '988 Patent.
`
`v. Claim 5
`
`"generating a transaction code which reflects at least one of a plurality of
`said payment categories"
`
`Cohen discloses that the disposable or customized card number "can also be
`
`customized for only particular uses or groups of uses" (Cohen, col. 7,
`
`II. 66-67).
`
`Accordingly, the customized number would reflect at least one of a group of customized
`
`uses.
`
`vi. Claim 6
`
`"defining at least one payment category to include amount parameters for a
`cost of one or more purchases"
`Cohen discloses that "[a] customized credit card could be issues to the user
`
`which is only valid...to the credit limit decided by the issuer or [user]..." (Cohen, col. 8,
`
`l1.25-30). The provided credit limit signifies amount parameters for a cost that may be
`
`included as at least one of the customized uses that may be designated.
`
`vii. Claim 7
`
`"defining at least one payment category to include time parameters during
`which the purchase can be completed"
`
`Cohen discloses that "...each of the disposable credit cards can be given an
`
`expiration date...[t]hus, if the credit card is not used within the time limit, it expires"
`
`MasterCard, EXh. 1003, p. 10
`
`MasterCard, Exh. 1003, p. 10
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 9
`
`(Cohen, col. 6,
`
`||.4-7). Accordingly, Cohen discloses time parameters during which the
`
`purchase can be completed.
`
`viii. Claim 8
`
`"defining at least one payment category to include limiting said transaction
`code to a single transaction for a purchase within a predetermined period of time"
`
`Similar to claim 7, above, claim 8 recites a purchase within a predetermined
`
`period of time, but additionally limits the transaction code to a single transaction.
`
`Likewise, Cohen discloses that a card may "be valid for a specific predetermined
`
`amount of time" (Cohen, col., 7, II. 61-62). In addition, Cohen also discloses that the
`
`card may be used for a single transaction, stating that "[w]ith respect to the disposable
`
`card, the user is instructed that, after use of the number once, the number may not be
`
`used again" (Cohen, col. 3, ll.60-62). Accordingly, Cohen‘s disposable card valid for a
`
`specific predetermined period of time anticipates claim 8 of the '988 Patent.
`
`ix. Claim 9
`
`"defining at least one payment category to include limiting purchases to a
`single transaction at a maximum amount for purchase within a predetermined
`period of time"
`
`As discussed above, Cohen discloses that a disposable card number could be
`
`used for a single transaction, which may also only be valid up to a specific credit limit.
`
`Additionally, as also discussed above, Cohen discloses that the card may also only be
`
`valid for a specific predetermined amount of time. Furthermore, Cohen directly discloses
`
`this specific recitation, stating that "[t]he card could be valid only for purchase on that
`
`particular day, to a certain designated purchase limit, and even, if desired only in a
`
`certain store..." (Cohen, col. 8,
`
`II. 43-45).
`
`MasterCard, Exh. 1003, p. 11
`
`MasterCard, Exh. 1003, p. 11
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`x. Claim 10
`
`Page 10
`
`"defining at least one payment category to include limiting purchases to at
`least one payment category to at least two purchases at a maximum total amount
`for items purchased within a predetermined period of time"
`
`Claim 10 includes the same recitation of claim 9, but is directed towards "at least
`
`two purchases" at a maximum total amount, rather than the "single transaction" recited
`
`in claim 9.
`
`Cohen discloses throughout that a disposable card number may be used for a
`
`single use, while a customized card number may be used for customized use, which
`
`can include multiple transactions of multiple types, or from "groups of stores or types of
`
`stores, or types of purchases or items" (Cohen, col. 8,
`
`II. 43-47). Accordingly, Cohen
`
`anticipates the recitation of claim 10 of the '988 Patent.
`
`xii. Claim 13
`
`"defining at least one payment category to include using said transaction
`code for a repeating transaction at a fixed amount payable to each of an
`unspecified number of time intervals“
`
`Claim 13 includes a recitation identical to that of claim 12, except that the number
`
`of time intervals recited in claim 13 is unspecified. As discussed above, Cohen
`
`discloses that "the card can have a user customized range of dates or series of dates"
`
`for fixed amounts. (Cohen, col. 7,
`
`II. 44-46). When the series of dates is customized to
`
`have no end but rather be a series of repeating dates (e.g., every Wednesday, the first
`
`of every month, etc.) as is disclosed in Cohen, then the credit card number would be
`
`used for a repeating transaction at an unspecified number of time intervals. Accordingly,
`
`Cohen anticipates claim 13 of the '988 Patent.
`
`MasterCard, Exh. 1003, p. 12
`
`MasterCard, Exh. 1003, p. 12
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`xiii. Claims 14, 26, and 34
`
`Page 11
`
`"defining at least one payment category to include limiting a repeating
`transaction to a maximum dollar amount"
`
`Claims 14, 26, and 34 each include the above recitation and are dependent from
`
`claims 1, 21, and 22, respectively. As discussed previously with respect to claims 11-13,
`
`Cohen discloses a repeating transaction as well as a designated purchase limit. In
`
`addition, Cohen discloses that "combinations of dates of transactions, types of
`
`transactions, amounts for individual and/or total transactions, etc. on a single card, or on
`
`multiple cards, can be set as well" (Cohen, col. 10,
`
`II. 31-35). Accordingly, Cohen
`
`discloses the combination of groups of uses, which includes limiting a repeating
`
`transaction to a maximum dollar amount.
`
`xiv. Claims 15, 27, and 35
`
`"defining at least one payment category to include limiting purchases to a
`limited time interval during which a purchase is permitted"
`
`Claims 15, 27, and 35 each include the above recitation, and are dependent from
`
`claims 1, 21, and 22, respectively.
`
`As discussed above with respect to claim 7, Cohen discloses that "...each of the
`
`disposable credit cards can be given an expiration date...[t]hus, if the credit card is not
`
`used within the time limit, it expires" (Cohen, col. 6,
`
`ll. 4-7). And specifically, Cohen also
`
`discloses that the card "...could also be valid for a specific predetermined amount of
`
`time" (Cohen, col. 7, II. 61-62). Accordingly, Cohen anticipates the claimed limited time
`
`interval during which a purchase is permitted.
`
`xv. Claims 16, 28, and 36
`
`MasterCard, EXh. 1003, p. 13
`
`MasterCard, Exh. 1003, p. 13
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 12
`
`"communicating said transaction code to the customer at the location of
`the merchant for use in person"
`
`Claims 16, 28, and 36 each include the above recitation and are dependent from
`
`claims 1, 21, and 22, respectively.
`
`Like the '988 Patent, Cohen discloses that the disposable or customized credit
`
`card number are ideally suited for Internet or other network-based financial transactions,
`
`but may also be used in person. Along these lines, Cohen discloses that there may be a
`
`physical manifestation of the card, that may be provided to the vendor such that "[t]he
`
`vendor could read the number of the disposable or customized card, could scan the
`
`number with a bar code scanner, could read a magnetic strip on the disposable card, or
`
`so forth" (Cohen, col. 4, II. 31-35). Accordingly, Cohen discloses that the transaction
`
`code may be communicated to the customer at the location of the merchant for use in
`
`person.
`
`xvi. Claims 17 and 19
`
`a) "A method of performing secure credit card purchases, said method
`comprising the steps of:"
`
`As pointed out above with respect to claim 1, Cohen discloses that "[i]t is an
`
`object of the present invention to provide improved credit cards and methods for credit
`
`card transactions" and that "[i]t is a further object of the present invention to provide
`
`methods and apparatus for secure transmission of credit card information" (Cohen, col.
`
`1,
`
`II. 48-62). Accordingly, Cohen anticipates secure credit card purchases.
`
`b) "identifying a pre-established account that is used to make credit card
`purchases"
`
`MasterCard, Exh. 1003, p. 14
`
`MasterCard, Exh. 1003, p. 14
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 13
`
`Cohen discloses that the user "provid[es] the ordinary credit card number and
`
`verification data" to her credit card company (Cohen, col. 3,
`
`||.42-45). It is inherent in the
`
`art and disclosed by Cohen that providing the ordinary credit card number and
`
`verification data to a credit card company is for the purpose of identifying a pre-
`
`established account used to make purchase with provided same credit card.
`
`c) "selecting a pre-determined payment category which limits its a nature,
`of a series of subsequent purchases to one or more merchants"
`
`As stated with respect to claim 1, Cohen discloses that the card can "be
`
`customized for only particular uses or groups of uses," which would constitute payment
`
`categories as claimed by the '988 Patent (Cohen, col. 7, II. 66-67). In addition, some of
`
`the uses that the card can be customized for include the card only being valid "for use
`
`for that particular type of charge (computer or hardware stores...[or] for use in a
`
`particular store itself or a particular chain of stores" (Cohen, col. 8, II. 25-34). Therefore,
`
`the customized use can include limiting a number of transactions to one or more
`
`merchants. As also discussed previously, Cohen also discloses that the customized
`
`uses may include limited use for both a series of subsequent purchase or a single
`
`subsequent purchase.
`
`d) "said one or more merchants limitation being included in said payment
`category prior to any particular merchant being identified as one of said one or
`more merchants"
`
`Cohen discloses that a card "could be issued to the user which is only valid for
`
`use for that particular type of charge" (Cohen, col. 8, “25-28) (emphasis added). A
`
`customized use card with a customized use for only that particular type of charge would
`
`MasterCard, Exh. 1003, p. 15
`
`MasterCard, Exh. 1003, p. 15
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 14
`
`result in a card with a merchant limitation (e.g., only those merchants of that type) prior
`
`to any particular merchant (e.g., a specific merchant of that type) being identified.
`
`e) "generating a transaction code by a processing computer of a custodial
`authorizing entity of said pre—established account"
`
`As discussed with respect to claim 1, Cohen discloses "credit cards or credit card
`
`numbers are generated" by the credit card company (Cohen, col. 2, ||.35-36). The
`
`disposable or customized credit card numbers can be indistinguishable from ordinary
`
`credit card numbers such that "both users and vendors are encouraged to use the credit
`
`card in the same manner as regular credit cards" (Cohen, col. 3, ll. 6-9).
`
`f) "said transaction code associated with at least said pre- established
`account and the limits of said selected payment category"
`
`The ‘988 Patent states that "the transaction code is pre-coded to be indicative of
`
`a specific credit card account...and a designated payment category" (col. 6, ||.33-35).
`
`Similarly, The customized or disposable credit card numbers of Cohen, like the
`
`transaction code of the '988 Patent, may have a "single or a limited range use," where
`
`the single or customized use corresponds to the single or customized use previously
`
`indicated (Cohen, col. 3,
`
`II. 47-48). In addition, Cohen also discloses that "...the credit
`
`card can be marked, if desired, to show both that it has been processed to charge
`
`money to the person's account...," which illustrates the association of the customized
`
`credit card with the specific credit card account (Cohen, col. 4,
`
`II. 36-38).
`
`9) "different from said pre-established account"
`
`Cohen discloses that "[n]o vendor would ever.., receive or have access to the
`
`user's permanent credit card number. Rather, the vendor would receive a disposable
`
`MasterCard, EXh. 1003, p. 16
`
`MasterCard, Exh. 1003, p. 16
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 15
`
`credit card number from the user's supply" (Cohen, col. 4,
`
`ll. 26- 31). Accordingly,
`
`Cohen discloses that the disposable or customized credit card number is different from
`
`the account number of the user's pre-established account.
`
`h) "communicating said transaction code to said merchant consummate a
`purchase within defined purchase parameters“
`
`Cohen discloses that "...the user transmits his or her credit card information to
`
`the vendor. That vendor then verifies the transaction..." (Cohen, col. 5,
`
`II. 36-37). The
`
`process of a vendor verifying a transaction includes requesting authorization for the
`
`transaction from the issuer of the credit card used in the transaction, and that
`
`authorization requests include transaction details (e.g., defined purchase parameters).
`
`i) "verifying that said defined purchase parameters correspond to said
`selected payment category"
`
`As discussed previously with respect to claim 1's identical recitation, Cohen
`
`discloses that the vendor "then verifies the transaction" such that the card "is only valid
`
`for use for that particular type of charge...such that if the [user] tries to use it for
`
`anything else...the charge will be declined" (Cohen, col. 8, “25-32). This constitutes
`
`"verifying the defined purchase parameters being within the payment category," such
`
`that if the transaction details are not within the customized use associated with the card,
`
`the charge will be declined.
`
`j) "providing authorization for said purchase so as to confirm at least that
`said defined purchase parameters are within said selected payment category and
`to authorize payment required to complete the purchase"
`
`As discussed with respect to this recitation included in claim 1, Cohen discloses
`
`that, as part of the verification/authorization of the transaction "...the credit card
`
`MasterCard, Exh. 1003, p. 17
`
`MasterCard, Exh. 1003, p. 17
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 16
`
`company notes the identity of the vendor, authorizes the transaction (if the credit card
`
`number is valid and the purchaser has sufficient funds available), and fonNards the
`
`authorization code to the vendor" (Cohen, col. 5, ll.45-49). Accordingly, as stated above,
`
`the authorization of the transaction confirms that the purchase parameters are within the
`
`customized use, and the forward of the authorization code to the vendor authorizes the
`
`payment required to complete the transaction. Therefore, Cohen anticipates this
`
`recitation of claim 17.
`
`k) "associating the purchase with said pre-established account"
`
`Cohen discloses, as discussed above, that "...the credit card can be marked, if
`
`desired, to show both that it has been processed to charge money to the person‘s
`
`account..." (Cohen, col. 4, ll.36-38). By showing that the transaction has been
`
`processed, and that money has been charged to the person's account, the transaction
`
`is therefore associated with the charge on the person's account and is therefore
`
`associated with the pre-established account. Accordingly, Cohen anticipates this
`
`recitation.
`
`Claim 19 is almost identical to claim 17, except for two recitations. First, in claim
`
`19, the "selecting a predetermined payment category" step recites a single subsequent
`
`purchase instead of the series of subsequent purchases recited in claim 17. As
`
`discussed above, Cohen discloses disposable card numbers for a single transaction.
`
`Second, claim 19 also includes the recitation "designating a merchant as one of
`
`said one or more merchants." As discussed previously with respect to claims 2, 3, and
`
`20, Cohen discloses that a merchant may be designated by the customer "transmit[ting]
`
`MasterCard, EXh. 1003, p. 18
`
`MasterCard, Exh. 1003, p. 18
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 17
`
`his or her credit card information to the vendor," which anticipates this recitation (Cohen,
`
`col. 5, ||.36-37).
`
`Based upon the foregoing, it is apparent that Cohen discloses the method for
`
`performing secure credit card purchases as recited in claims 17 and 19 of the '988
`
`Patent.
`
`xvii. Claim 18
`
`"said step of verifying that said defined purchase parameters correspond
`to said selected payment category further identifies said merchant as one of said
`one or more merchants"
`
`Cohen discloses that "[u]pon use of the card, the information regarding the
`
`transaction is transmitted to the credit card company, as is known in the art" (Cohen,
`
`col. 13, In. 66 - col. 14, In. 1).
`
`It is inherent in the art that merchant identification is
`
`included in the transaction details transmitted to the credit card company. Accordingly,
`
`during the verification of the transaction details, the merchant is identified as one of the
`
`one or more merchants based on the included merchant identification. Accordingly,
`
`Cohen anticipates claim 18 of the '988 Patent.
`
`xviii. Claims 21 and 22
`
`The recitations of claim 22 are identical to the recitations of claim 21, except that
`
`where claim 21 recites "a single merchant," claim 22 recites "one or more merchants."
`
`a) "A method for implementing a system for performing secure credit card
`purchases, the method comprising:"
`
`As pointed out above with respect to claims 1 and 17, Cohen discloses that "[i]t is
`
`an object of the present invention to provide improved credit cards and methods for
`
`MasterCard, EXh. 1003, p. 19
`
`MasterCard, Exh. 1003, p. 19
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 18
`
`credit card transactions" and that "[i]t