Control No. 90/012,517
`Docket No. 253.005
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Confirmation No.: 5785
`Group Art Unit: 3992
`Examiner: Hotaling, John M.
`Docket Number: 253.005
`
`For: System and Method for Performing Secure Credit Card Transactions
`
`
`In re: Reexam of U.S. Patent No.
`8,036,988 (D’Agostino)
`Control Number: 90/012,517
`Filed: March 15, 2011
`
`***
`
`Patent Owner’s Response to Non-Final Rejection Mailed September 11, 2013
`
`
`Mail Stop: Ex Parte Reexamination
`Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`
`
`In reply to the Non-Final Rejection dated September 11, 2012, Patent Owner, John
`
`
`
`D’Agostino submits this Response and requests confirmation of all claims.
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`Table of Contents begins on page 2.
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`Listing of Claims begins on page 4.
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`Listing of Appendices begins on page 15.
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`Remarks begin on page 16.
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`Control No. 90/012,517
`Docket No. 253.005
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`TABLE OF CONTENTS
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`LISTING OF CLAIMS ................................................................................................................4
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`LISTING OF APPENDICES .......................................................................................................15
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`REMARKS ..................................................................................................................................16
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`I. INITIAL REMARKS .............................................................................................................16
`
`A. Reexamination summary and claim status .......................................................................16
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`B. Summary of Patent Owner initiated interview .................................................................16
`
`C. D’Agostino explicitly referenced Cohen to the examiner for consideration ...................17
`
`D. Reexamination was ordered solely on the “one or more merchants” claim language
`and not on the “single merchant” claim language of claims 21 and 23-30 ......................19
`
`
`II. ANALYSIS AND REBUTTAL OF CLAIM REJECTIONS ................................................19
` 
`
`A. The rejection of claims 1-10 and 13-38 under 35 U.S.C. § 102(b) is improper
`because Cohen is only available under 35 U.S.C. § 102(e) .............................................19
`
`B. Claims 1-10 and 13-38 are not anticipated by Cohen because Cohen fails to
`identically teach every element of the claims ..................................................................21
`
`1. Claims 1-10, 13-20, 22, and 31-38 are not anticipated by Cohen because
`a particular type of charge limitation is not a merchant limitation,
`a merchant type limitation cannot be made before any particular merchant is
`identified, and one or more merchants is a finite number of merchants ...................22
`
`
`
`i. A type of charge limitation is not a number of merchants limitation
`because it does not limit use to any number of merchants at all ..........................23
`
`
`ii. A type of charge limitation does not necessarily operate to create a
`merchant type limitation ......................................................................................23
`
`
`iii. Even if Cohen discloses a merchant type limitation this limitation
`cannot be created before any particular merchant is identified ...........................24
`
`
`iv. It is unreasonable to interpret the one or more merchant claim language
`to include an entire specific industry of merchants .............................................25
`
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`2. Claims 21 and 23-30 are not anticipated because Cohen does not disclose
`the single merchant limitation being included in the payment category
`prior to any particular merchant being identified as the single merchant ..................28
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`Control No. 90/012,517
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`i. A one or more merchants limitation does not anticipate a single merchant
`limitation ..............................................................................................................29
`
`
`ii. Cohen requires identification of a particular store in advance at the
`time of customization ...........................................................................................30
`
`
`iii. The Requester constructively conceded Cohen does not anticipate
`the single merchant claim language .....................................................................31
`
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`C. Claims 11 and 12 are nonobvious over Cohen .................................................................32
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`III. CONCLUSION .....................................................................................................................32
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`CERTIFICATE OF SERVICE ....................................................................................................34
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`Control No. 90/012,517
`Docket No. 253.005
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`LISTING OF CLAIMS
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`1 (original). A method of performing secure credit card purchases, said method comprising:
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`
`
`a) contacting a custodial authorizing entity having custodial responsibility of account
`
`parameters of a customer's account that is used to make credit card purchases;
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`
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`b) supplying said custodial authorizing entity with at least account identification data of
`
`said customer's account;
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`
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`c) defining at least one payment category to include at least limiting a number of
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`transactions to one or more merchants, 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
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`more merchants;
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`
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`d) designating said payment category;
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`e) generating a transaction code by a processing computer of said custodial authorizing
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`entity, said transaction code reflecting at least the limits of said designated payment category to
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`make a purchase within said designated payment category;
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`
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`f) communicating said transaction code to a merchant to consummate a purchase within
`
`defined purchase parameters;
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`
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`g) verifying that said defined purchase parameters are within said designated payment
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`category; and
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`
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`h) providing authorization for said purchase so as to confirm at least that said defined
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`purchase parameters are within said designated payment category and to authorize payment
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`required to complete the purchase.
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`Control No. 90/012,517
`Docket No. 253.005
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`2 (original). 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.
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` (original). The method of claim 1 wherein said step of communicating the transaction code to a
`
` 3
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`merchant to consummate said purchase within defined purchase parameters further comprises
`
`designation of said merchant as one of said one or more merchants.
`
` (original). The method of claim 1 wherein said step of generating said transaction code further
`
` 4
`
`comprises said customer obtaining said transaction code.
`
` (original). The method of claim 1 further comprising generating a transaction code which
`
` 5
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`reflects at least one of a plurality of said payment categories.
`
` (original). The method of claim 1 further comprising defining at least one payment category to
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` 6
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`include amount parameters for a cost of one or more purchases.
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` (original). The method of claim 1 further comprising defining at least one payment category to
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` 7
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`include time parameters during which the purchase can be completed.
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` (original). The method of claim 1 further comprising defining at least one payment category to
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` 8
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`include limiting said transaction code to a single transaction for a purchase within a
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`predetermined period of time.
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`Control No. 90/012,517
`Docket No. 253.005
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`9 (original). The method of claim 1 further comprising defining at least one payment category to
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`include limiting purchases to a single transaction at a maximum amount for purchase within a
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`predetermined period of time.
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`
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`10 (original). The method of claim 1 further comprising defining at least one payment category
`
`to include limiting purchases to at least two purchases at a maximum total amount for items
`
`purchased within a predetermined time period.
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`
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`11 (original). The method of claim 1 further comprising defining at least one payment category
`
`to include using said transaction code for at least two purchases for a repeating transaction at a
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`fixed amount payable at each of a fixed number of time intervals.
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`
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`12 (original). The method of claim 11 further comprising defining at least one payment category
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`to include limiting purchases to said repeating transaction at said fixed amount payable at each of
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`said fixed number of time intervals.
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`
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`13 (original). The method of claim 1 further comprising defining at least one payment category
`
`to include using said transaction code for a repeating transaction at a fixed amount payable at
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`each of an unspecified number of time intervals.
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`
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`14 (original). The method of claim 1 further comprising defining at least one payment category
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`to include limiting a repeating transaction to a maximum dollar amount.
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`Control No. 90/012,517
`Docket No. 253.005
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`15 (original). The method of claim 1 further comprising defining at least one payment category
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`to include limiting purchases to a limited time interval during which a purchase is permitted.
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`
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`16 (original). The method of claim 1 further comprising communicating said transaction code to
`
`the customer at the location of the merchant for use in person.
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`
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`17 (original). A method of performing secure credit card purchases, said method comprising:
`
`
`
`
`
`a) identifying a pre-established account that is used to make credit card purchases;
`
`b) selecting a predetermined payment category which limits a nature, of a series of
`
`subsequent purchases to one or more merchants, 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;
`
`
`
`c) generating a transaction code by a processing computer of a custodial authorizing
`
`entity of said pre-established account, said transaction code associated with at least said pre-
`
`established account and the limits of said selected payment category and different from said pre-
`
`established account;
`
`
`
`d) communicating said transaction code to a merchant to consummate a purchase within
`
`defined purchase parameters;
`
`
`
`e) verifying that said defined purchase parameters correspond to said selected payment
`
`category;
`
`
`
`f) 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; and
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`Control No. 90/012,517
`Docket No. 253.005
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`g) associating the purchase with said pre-established account.
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`18 (original). The method of claim 17 wherein 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.
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`
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`19 (original). A method of performing secure credit card purchases, said method comprising the
`
`steps of:
`
`
`
`
`
`a) identifying a pre-established account that is used to make credit card purchases;
`
`b) selecting a pre-determined payment category which limits a nature of a subsequent
`
`purchase to one or more merchants, 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;
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`
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`c) generating a transaction code by a processing computer of a custodial authorizing
`
`entity of said pre-established account, said transaction code associated with at least said pre-
`
`established account and the limits of said selected payment category, and different from said pre-
`
`established account;
`
`
`
`
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`d) designating a merchant as one of said one or more merchants;
`
`e) communicating said transaction code to said merchant to consummate a purchase
`
`within defined purchase parameters;
`
`
`
`f) verifying that said defined purchase parameters correspond to said selected payment
`
`category;
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`Control No. 90/012,517
`Docket No. 253.005
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`g) 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; and
`
`h) associating the purchase with said pre-established account.
`
`
`
`
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`20 (original). The method of claim 19 wherein 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.
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`
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`21 (original). A method for implementing a system for performing secure credit card purchases,
`
`the method comprising:
`
`
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`a) receiving account information from an account holder identifying an account that is
`
`used to make credit card purchases;
`
`
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`b) receiving a request from said account holder for a transaction code to make a purchase
`
`within a payment category that at least limits transactions to a single merchant, said single
`
`merchant limitation being included in said payment category prior to any particular merchant
`
`being identified as said single merchant;
`
`
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`c) generating a transaction code utilizing a processing computer of a custodial authorizing
`
`entity, said transaction code associated with said account and reflecting at least the limits of said
`
`payment category, to make a purchase within said payment category;
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`
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`d) communicating said transaction code to said account holder;
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`e) receiving a request to authorize payment for a purchase using said transaction code;
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`f) authorizing payment for said purchase if said purchase is within said payment category.
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`- 9 -
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`Control No. 90/012,517
`Docket No. 253.005
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`22 (original). A method for implementing a system for performing secure credit card purchases,
`
`the method comprising:
`
`
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`a) receiving account information from an account holder identifying an account that is
`
`used to make credit card purchases;
`
`
`
`b) receiving a request from said account holder for a transaction code to make a purchase
`
`within a payment category that at least limits transactions to one or more merchants, 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;
`
`
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`c) generating a transaction code utilizing a processing computer of a custodial authorizing
`
`entity, said transaction code associated with said account and reflecting at least the limits of said
`
`payment category, to make a purchase within said payment category;
`
`d) communicating said transaction code to said account holder;
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`e) receiving a request to authorize payment for a purchase using said transaction code;
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`f) authorizing payment for said purchase if said purchase is within said payment category.
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`23 (original). The method of claim 21 wherein the step of receiving account information from an
`
`account holder identifying an account that is used to make credit card purchases further
`
`comprises receiving information identifying a credit card account.
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`
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`24 (original). The method of claim 21 wherein the step of generating a transaction code utilizing
`
`a processing computer of a custodial authorizing entity further comprises generating a
`
`transaction code which reflects at least one of a plurality of predetermined payment categories.
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`Control No. 90/012,517
`Docket No. 253.005
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`25 (original). The method of claim 21 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to a single merchant further comprises receiving a request from said account holder
`
`for a transaction code to make a purchase within a payment category that is automatically chosen
`
`by a custodial authorizing entity.
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`
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`26 (original). The method of claim 21 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to a single merchant further comprises receiving a request from said account holder
`
`for a transaction code to make a purchase within a payment category that includes limiting a
`
`repeating transaction to a maximum dollar amount.
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`
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`27 (original). The method of claim 21 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to a single merchant further comprises receiving a request from said account holder
`
`for a transaction code to make a purchase within a payment category that includes limiting
`
`purchases to a minimum time interval after which a subsequent purchase is permitted.
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`
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`28 (original). The method of claim 21 wherein the step of communicating said transaction code
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`to said account holder further comprises communicating said transaction code to said account
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`holder at the location of the merchant for use in person.
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`Control No. 90/012,517
`Docket No. 253.005
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`29 (original). The method of claim 21 wherein said step of receiving a request to authorize
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`payment for a purchase using said transaction code further identifies said single merchant.
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`
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`30 (original). The method of claim 21 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to a single merchant further comprises receiving a request from said account holder
`
`for a transaction code to make a purchase within a predetermined payment category that is
`
`further limited in accordance with transaction details provided by said account holder.
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`
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`31 (original). The method of claim 22 wherein the step of receiving account information from an
`
`account holder identifying an account that is used to make credit card purchases further
`
`comprises receiving information identifying a credit card account.
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`
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`32 (original). The method of claim 22 wherein the step of generating a transaction code utilizing
`
`a processing computer of a custodial authorizing entity further comprises generating a
`
`transaction code which reflects at least one of a plurality of predetermined payment categories.
`
`
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`33 (original). The method of claim 22 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to one or more merchants further comprises receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that is automatically
`
`chosen by a custodial authorizing entity.
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`Control No. 90/012,517
`Docket No. 253.005
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`34 (original). The method of claim 22 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to one or more merchants further comprises receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that includes
`
`limiting a repeating transaction to a maximum dollar amount.
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`
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`35 (original). The method of claim 22 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to one or more merchants further comprises receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that includes
`
`limiting purchases to a minimum time interval after which a subsequent purchase is permitted.
`
`
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`36 (original). The method of claim 22 wherein the step of communicating said transaction code
`
`to said account holder further comprises communicating said transaction code to said account
`
`holder at the location of the merchant for use in person.
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`
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`37 (original). The method of claim 22 wherein said step of receiving a request to authorize
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`payment for a purchase using said transaction code further identifies a merchant as one of said
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`one or more merchants.
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`- 13 -
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`Control No. 90/012,517
`Docket No. 253.005
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`38 (original). The method of claim 22 wherein the step of receiving a request from said account
`
`holder for a transaction code to make a purchase within a payment category that at least limits
`
`transactions to one or more merchants further comprises receiving a request from said account
`
`holder for a transaction code to make a purchase within a predetermined payment category that is
`
`further limited in accordance with transaction details provided by said account holder.
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`Control No. 90/012,517
`Docket No. 253.005
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`LISTING OF APPENDICES
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`The following Appendices are submitted herewith:
`
`Appendix
`A
`
`B
`
`C
`
`Description
`Response, Remarks filed July 29, 2008; Application No.
`11/252,009, now Pat. No. 7,840,486.
`Response, Remarks filed May 13, 2009; Application No.
`11/252,009, now Pat. No. 7,840,486.
`U.S. Pat. No. 5,621,201.
`
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`Control No. 90/012,517
`Docket No. 253.005
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`Remarks
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`I. INITIAL REMARKS
`
`
`
`A. Reexamination summary and claim status.
`
`
`
`Reexamination of claims 1-38 of U.S. Pat. No. 8,036,988 (‘988 Patent) was requested on
`
`September 12, 2012 and was denied on December 6, 2012. On January 7, 2013 the Requester
`
`moved the Office to reconsider its denial of the reexamination request. On June 7, 2013 the
`
`Director of Central Reexamination overturned the denial and ordered reexamination of claims 1-
`
`38 on limited grounds with respect to U.S. Pat. No. 6,422,462 to Cohen. On September 11, 2013,
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`the Office issued a First Non-Final Office Action rejecting claims 1-10 and 13-38 as being
`
`anticipated by Cohen and claims 11 and 12 as being obvious in view of Cohen. This Response is
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`filed in reply to the First Non-Final Office Action. Original claims 1-38 are pending in this
`
`reexamination. And no claims are amended or added by this Response.
`
`
`B. Summary of Patent Owner initiated interview.
`
`
`
`The examiner and conferees are thanked for their courtesy extended to the undersigned
`
`for their telephone interview of November 8, 2013 wherein Cohen, the single merchant claim
`
`language of independent claim 21, the one or more merchants claim language of independent
`
`claims 1, 17, 19, and 22, and the Director’s Decision on Petition were discussed. There was no
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`determination made concerning any of these issues.
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`Control No. 90/012,517
`Docket No. 253.005
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`C. D’Agostino explicitly referenced Cohen to the examiner for consideration.
`
`
` The Requester alleges that D’Agostino attempted to burry Cohen in a last minute,
`
`
`
`“massive Information Disclosure Statement.”1 The Requester cites to the reexamination of
`
`D’Agostino’s U.S. Pat. No. 6,324,526 (‘526 Patent) to highlight that D’Agostino knew of Cohen
`
`and its relevance. But the Requester appears to have conveniently ignored the examination of
`
`D’Agostino’s U.S. Pat. No. 7,840,486 (‘486 Patent) during which Cohen was explicitly
`
`referenced to the examiner for consideration. Specifically, D’Agostino turned the examiner’s
`
`attention to Cohen while the reexamination of the ‘526 patent was proceeding. 2
`
`
`
`And D’Agostino again turned the examiner’s attention to Cohen after reexamination of
`
`the ‘526 Patent concluded.3
`
`
`
`
`1 Request p. 3, 10-11 Sept. 12, 2012
`2 App. A., Response, Remarks, p. 16 (July 29, 2008).
`3 App. B., Response, Remarks, p. 17 (May 13, 2009).
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`Control No. 90/012,517
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`
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`Significantly, the ‘988 Patent is a continuation of the ‘486 Patent and the same examiner
`
`examined both applications that ultimately matured into the ‘486 Patent and the ‘988 Patent.4
`
`Consequently, Cohen was also considered by the examiner during examination of the ‘988
`
`Patent: “[t]he examiner will consider information which has been considered by the Office in a
`
`parent application when examining: (A) a continuation application filed under 37 CFR
`
`1.53(b)….”5
`
`
`
` Moreover, there simply is no requirement for an applicant to submit an Information
`
`Disclosure Statement to cite references to the Office for consideration in a continuation
`
`application when those references were cited by the examiner in the parent application unless the
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`applicant wants those references listed on the patent issuing from the continuation application.6
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`Contrary to the Requester’s insinuated evil plot to hide Cohen, the real reason this Information
`
`Disclosure Statement was filed was to have the listed references printed on the ‘988 Patent.
`
`
`4 Examiner Bijendra K. Shrestha was assigned application No. 11/252,009 that matured into the
`‘486 Patent and application No. 12/902,339 that matured into the ‘988 patent.
`5 MPEP § 609.02(A)(2).
`6 MPEP § 609.02
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`Control No. 90/012,517
`Docket No. 253.005
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`D. Reexamination was ordered solely on the “one or more merchants” claim language
`and not on the “single merchant” claim language of claims 21 and 23-30.
`
`The Director ordered reexamination solely on the “one or more merchant” claim
`
`language of the ‘988 Patent.7 This claim language is recited only by independent claims 1, 17,
`
`19, and 22 of the ‘988 Patent. In contrast, independent claim 21 recites “….[the] single merchant
`
`limitation being included in said payment category prior to any particular merchant being
`
`identified as said single merchant.” And this “single merchant” limitation was the reason
`
`independent claim 21 was allowed.8
`
`
`
`Further, the Requester never challenged the Office’s original denial of the Request on the
`
`“single merchant” claim language. But, rather challenged the denial only on the “one or more
`
`merchant” claim language that is not part of claims 21 and 23-30.9 Indeed, Cohen does not
`
`anticipate the “single merchant” claim language. Thus, D’Agostino respectfully requests the
`
`Office to withdraw the rejection of claims 21 and 23-30.
`
`
`II. ANALYSIS AND REBUTTAL OF CLAIM REJECTIONS
`
`
`A. The rejection of claims 1-10 and 13-38 under 35 U.S.C. § 102(b) over Cohen is
`improper because Cohen is only available under 35 U.S.C. § 102(e).
`
`
`
`
`
`Claims 1-10 and 13-38 stand rejected under 35 U.S.C. § 102(b) as allegedly being
`
`anticipated by U.S. 6,442,462 (“Cohen”). This rejection is improper because Cohen is not
`
`available under 35 U.S.C. § 102(b).
`
`
`7 Decision on Petition, p. 5 (Jun. 7, 2013).
`8 Notice of Allowance, p. 2 (April 29, 2011) (the single merchant claim language is the same
`claim language found in parent application and was the reason for allowing the parent
`application).
`9 Petition, pp. 2-8 (Jan. 7, 2012).
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`Control No. 90/012,517
`Docket No. 253.005
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`
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`Cohen was granted on July 23, 2002 from application No. 09/280,483 filed March 30,
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`1999, which is a non-provisional application of provisional application No. 60/079,884 filed
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`March 30, 1998. Accordingly, Cohen’s effective prior art date under 35 U.S.C. § 102(b) is July
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`23, 2002 and its effective prior art date under 35 U.S.C. § 102(e) is March 30, 1998.
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`
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`The ‘988 Patent matured from application No. 12/902,399 filed October 12, 2010, which
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`is a family member of and has priority to application No. 09/231,745 filed January 15, 1999. And
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`support for these claims are found in this original filing. Thus the ‘988 Patent has an effective
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`filing date of January 15, 1999, which pre-dates Cohen’s 102(b) date of July 23, 2002 by more
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`than two years. Therefore, Cohen is only available under 102(e) as of March 30, 1998.
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`
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`B. Claims 1-10 and 13-38 are not anticipated by Cohen because Cohen fails to
`identically teach every element of the claims.
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`Claims 1-10 and 13-38 were rejected under 35 U.S.C. § 102(b) as allegedly being
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`
`
`
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`anticipated by U.S. 6,442,462 (“Cohen”). This rejection is respectfully traversed.
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`
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` “[A] claim is anticipated [only] if each and every limitation is found either expressly or
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`inherently in a single prior art reference.”10 And each element must be found in the prior art
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`reference as arranged by the claim.11
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`
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`During examination claims must be “given their broadest reasonable interpretation
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`consistent with the specification.”12 The broadest reasonable interpretation of the claims must
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`also be consistent with the interpretation that those skilled in the art would reach.13 “Under a
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`broadest reasonable interpretation, words of the claim must be given their plain meaning, unless
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`
`10 Celeritas Techs. Ltd. v. Rockwell Intl. Corp., 150 F.3d 1354, 1360 (Fed.Cir.1998).
`11 In re Bond, 910 F.2d 831 (Fed. Cir. 1990).
`12 MPEP § 2111; Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`13 MPEP § 2111; In re Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999).
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`- 20 -
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`

`

`Control No. 90/012,517
`Docket No. 253.005
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`such meaning is inconsistent with the specification. The plain meaning of a term means the
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`ordinary and customary meaning given to the term by those of ordinary skill in the art at the time
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`of the invention. …the best source for determining the meaning of a claim term is the
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`specification….”14 But it is improper to import claim limitations from the specification.15
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`
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`The Office’s has the initial burden to establish that the allegedly inherent subject matter
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`necessarily flows from the cited reference. “The fact that a certain result or characteristic may
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`occur or be present in the prior art is not sufficient to establish the inherency of that result or
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`characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993)....”16
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`“To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive
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`matter is necessarily present in the thing described in the reference, and that it would be so
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`recognized by persons of ordinary skill. Inherency, however, may not be established
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`by probabilities or possibilities. The mere fact that a certain thing may result from a given set of
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`circumstances is not sufficient.’ ” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-
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`51 (Fed. Cir. 1999).”17
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`1. Claims 1-10, 13-20, 22, and 31-38 are not anticipated by Cohen because a
`particular type of charge limitation is not a merchant limitation, a merchant type
`limitation cannot be made before any particular merchant is identified, and one
`or more merchants is a finite number of merchants.
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`
`Claim 1 recites: “defining at least one payment category to include at least limiting a
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`
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`number of transactions to one or more merchants, said one or more merchants limitation being
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`included in said payment category prior to any particular merchant being identified as one of
`
`
`14 MPEP § 2111.01(I).
`15 MPEP § 2111.01(II).
`16 MPEP § 2112(IV).
`17 MPEP § 2112(IV).
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`Control No. 90/012,517
`Docket No. 253.005
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`said one or more merchants” (emphasis added). Independent claims 17, 19, and 22 recite similar
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`requirements.
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`
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`The Office contends that Cohen discloses a customized use card that can be limited to a
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`particular type of charge. And that a customized use card limited to a “particular type of charge
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`would result in a card with a merchant limitation (e.g., only those merchants of that type) prior to
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`any particular merchant (e.g., a specific merchant of that type) being identified.” The Office
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`asserts this teaching anticipates the “one or more merchant” claim language limitation.18
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`D’Agostino respectfully submits this is incorrect for the following reasons.
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`i. A type of charge limitation is not a number of merchants limitation because it does
`not limit use to any number of merchants