IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`John D' Agostino
`
`Patent No:
`
`8,036,988
`
`Serial No.:
`
`90/012,517
`
`Granted:
`
`10/11/2011
`
`Filed:
`
`09/12/2012
`
`Docket No. 253.005
`
`Confitmation No.: 5785
`
`For: System and Method for Performing Secure Credit Card Transactions
`
`STATEMENT REGARDING PRIOR OR CONCURRENT
`PROCEEDINGS (37 C.F.R. § 1.565)
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`Pursuant to 37 C.P.R. § 1.565, the Patent Owner, John D' Agostino, submits
`
`herewith the Patent Trial and Appeals Board's March 7, 2014 Decision Denying
`
`Institution of Covered Business Method Patent Review of U.S. Patent No. 8,036,988.
`
`March 10, 2014
`Date: _________ _
`
`Respectfully submitted,
`Maxey Law Offices, PLLC
`
`/Stephen Lewellyn/
`
`Stephen Lewellyn
`Registration No. 51,942
`100 Second A venue South
`Suite 401 Nmih
`St. Petersburg, Florida 33701
`Tel: 727-230-4949
`
`MasterCard, Exh. 1003, p. 1
`
`

`

`Trials@uspto. gov
`571-272-7822
`
`Paper 9
`Entered March 7, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`JOHN D' AGOSTINO
`Patent Owner
`
`Case CBM2013-00057
`Patent 8,036,988
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`MasterCard, Exh. 1003, p. 2
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`I.
`
`INTRODUCTION
`
`MasterCard International Incorporated ("Petitioner") filed a petition
`
`("Pet.") requesting a review under the transitional program for covered
`
`business method patents of U.S. Patent No. 8,036,988 B2 (Ex. 1001, "the
`
`'988 patent"). Paper 5. Jolm D' Agostino ("Patent Owner") filed a
`
`preliminary response ("Prelim. Resp."). Paper 8. The Board has jurisdiction
`under 35 U.S.C. § 324. 1
`
`The standard for instituting a covered business method patent review
`
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`
`THRESHOLD-The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Petitioner challenges the patentability of claims 1-38 ofthe '988
`
`patent under 35 U.S.C. §§ 102, 103, and 112, second paragraph. Taking into
`
`account Patent Owner's preliminary response, we determine that the
`
`information presented in the petition does not demonstrate that it is more
`
`likely than not that the challenged claims are unpatentable. Pursuant to 3 5
`
`U.S.C. § 324(a), we deny the institution of a covered business method patent
`
`review as to claims 1-38 ofthe '988 patent.
`
`1 See Section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No.
`112-29, 125 Stat. 284, 329 (2011) ("AlA").
`
`2
`
`MasterCard, Exh. 1003, p. 3
`
`

`

`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`After confinning authorization, authorizing entity 64 establishes details of
`
`the anticipated transaction to determine a payment category, and then issues
`
`a transaction code to the customer. I d. at col. 7, 11. 43-46. The customer can
`
`utilize the transaction code to consummate a transaction within the defined
`
`parameters of the payment category, and the merchant can obtain
`
`verification and subsequent payment utilizing the transaction code only. I d.
`
`at col 7, 11. 46-55.
`
`B.
`
`Related Matters
`
`Petitioner and Patent Owner identify the following related district
`
`court proceeding involving the '988 Patent and in which Petitioner is a
`
`party: JohnD'Agostino v. MasterCard, Inc. eta!., Case No. 1:13-cv-00738
`
`(D. Del., filed April26, 2013). Pet. 5; Prelim. Resp. 4; Ex. 1007
`
`("Complaint for Patent Infringement").
`
`Petitioner and Patent Owner also identify the '988 patent as the
`
`subject of Ex Parte Reexamination proceeding No. 90/012,517. Pet 5-6;
`
`Prelim. Resp.18; Ex. 1003 ("Ex Parte Reexamination Office Action").
`
`In related proceeding CBM2013-00058, Petitioner also seeks review
`
`of U.S. Patent No. 7,840,486 B2, to which the '988 patent claims priority.
`
`Pet. 6.
`
`Illustrative Claim
`Petitioner challenges claims 1-38 of the '988 patent. Claims 1, 17, 19,
`
`C.
`
`21, and 22 are independent claims. Claim 1 is illustrative of the claims at
`
`issue and follows:
`
`4
`
`MasterCard, Exh. 1003, p. 5
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`A method of performing secure credit card purchases,
`1.
`said method comprising:
`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;
`b) supplying said custodial authorizing entity with at
`least account identification data of said customer's account;
`c) defining at least one payment category to include at
`least limiting a number of 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;
`d) designating said payment category;
`e) generating a transaction code by a processing
`computer of said custodial authorizing entity, said transaction
`code reflecting at least the limits of said designated payment
`category to make a purchase within said designated payment
`category;
`f) communicating said transaction code to a merchant to
`consummate a purchase with defined purchase parameters;
`g) verifying that said defined purchase parameters are
`within said designated payment category; and
`h) 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.
`
`5
`
`MasterCard, Exh. 1003, p. 6
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`D.
`
`The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner's
`
`contentions ofunpatentability of claims 1-38 of the '988 patent under 35
`
`U.S.C. §§ 102, 103, and 112, second paragraph, as follows (see Pet. 6-7, 14-
`
`79):
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Cohen2
`
`Cohen and
`Musmanno3
`
`Flitcroft4
`
`Flitcroft and
`Musmanno
`
`None
`
`§ 102(e)
`
`1-10, 15-25, 27-33,
`and 35-38
`
`§ 103
`
`11-14, 26, and 34
`
`§ 102(e)
`
`1-10, 15-25, 27-33,
`and 35-38
`
`§ 103
`
`11-14, 26, and 34
`
`§ 112, second
`paragraph
`
`1-20,22, and 31-38
`
`II.
`
`ANALYSIS
`
`A.
`
`Covered Business Method Patent
`
`As indicated above, claim 1 recites "a method of performing secure
`
`credit card purchases." We determine that the '486 Patent is a 'covered
`
`business method patent' under§ 18(d)(l) of the AlA. See note 1; Pet. 3-5
`
`2 U.S. Patent No. 6,422,462 B1 (Ex. 1004) ("Cohen").
`3 U.S. Patent No. 5,826,243 (Ex. 1006) ("Musmanno").
`4 U.S. Patent No. 6,636,833 B1 (Ex. 1005) ("Flitcroft").
`
`6
`
`MasterCard, Exh. 1003, p. 7
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`(quoting and discussing§ 18(d)(1)). As Petitioner contends, we determine
`
`that "the subject matter as a whole solves no 'technical problem,' and
`
`instead is directed to a method of carrying out a financial transaction." See
`
`Pet. 4. Patent Owner does not challenge Petitioner's contention.
`
`Specifically, claim 1 is directed to securely transacting credit card
`
`purchases. The method includes a custodial authorizing entity that provides
`
`a transaction code in order to facilitate a transaction between a customer and
`
`a merchant. We determine that a claim for "transacting credit card
`
`purchases" that includes a custodial authorizing entity to facilitate a
`
`transaction between a customer and merchant is expressly financial in
`
`nature. Accordingly, we determine that the '988 patent is a 'covered
`
`business method patent' under § 18( d)(l) of the AlA.
`
`Claim Construction
`B.
`In a covered business method patent review, a claim in an unexpired
`
`patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears. 37 C.P.R.§ 42.300(b).
`
`Under the broadest reasonable construction standard, claim terms are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a claim term must be set forth in the specification with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F .3d
`
`1475, 1480 (Fed. Cir. 1994). Reading a particular embodiment appearing in
`
`the written description into a claim is generally improper when the claim
`7
`
`MasterCard, Exh. 1003, p. 8
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993).
`
`1.
`"a number of transactions"
`Independent claim 1 recites "limiting a number of transactions," and
`
`independent claims 17, 19, 21, and 22 recite a similar limitation. Petitioner,
`
`based on the Grimes declaration, proposes that the limitation "a number of
`
`transactions" means "any number of transactions, including zero
`
`transactions, one transaction, or a plurality of transactions." Pet. 13-14
`
`(citing Ex. 1008, ~ 25). The Grimes declaration bases this construction on
`
`the '988 patent disclosure of designating a maximum amount that can be
`
`spent utilizing a particular transaction code within a predetermined period of
`
`time. Ex. 1008, ~ 25 (citing Ex. 1001, col.8, 11. 27-34). Patent Owner does
`
`not propose a construction for this limitation.
`
`Although we agree with Petitioner that "a number of transactions"
`
`means one or more transactions, we do not agree that this limitation includes
`
`zero transactions or even an infinite number of transactions, as Petitioner
`
`argues in support of the indefiniteness challenge below. Pet. 78-79.
`
`Construing this limitation to include zero transactions ignores the preceding
`
`word in the phrase "limiting a number of transactions," which implies the
`
`occurrence of at least one transaction, instead of the absence of a transaction.
`
`Similarly, construing this limitation to include an infinite number also
`
`ignores the preceding tenn "limiting" because infinite requires the absence
`
`of a limit. Accordingly, "a number of transactions" means one or more
`
`transactions, where the number of transactions is limited to a finite number.
`
`8
`
`MasterCard, Exh. 1003, p. 9
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`"one or more merchants"
`2.
`Independent claim 1 recites "limiting a number of transactions to one
`
`or more merchants," and independent claims 17, 19, 21, and 22 recite a
`
`similar limitation. Petitioner proposes, based on the Grimes declaration, that
`
`"one or more merchants" means "one merchant up to any plurality of
`
`merchants," including "all merchants in the world," and including "no limit"
`
`on the number of merchants. Pet. 13, 77-78 (citing Ex. 1008, ~ 24). Patent
`
`Owner proposes this limitation to mean "a certain quantity of merchants that
`
`is finite in number." Prelim. Resp. 7.
`
`We agree with Patent Owner that interpreting "one or more
`
`merchants" to include an infinite number of merchants is overly broad and
`
`unreasonable. Claim 1 recites "perfonning secure credit card purchases." It
`
`also recites "said one or more merchants limitation being included in said
`
`payment category," and "authoriz[ing] payment required to complete the
`
`purchase." These steps imply a reasonable, finite number of merchants to
`
`authorize payment and perform a purchase. It is unreasonable to understand
`
`this limitation to mean an infinite number of merchants can be included in
`
`said payment category. Accordingly, on this record, "one or more
`
`merchants" means "one merchant up to a plurality of merchants, where the
`
`number of merchants is a finite number."
`
`C. Unpatentability under 35 US. C. § 112, second paragraph
`Petitioner contends that claims 1-20, 22, and 31-38 ofthe '988 patent
`
`are unpatentable under 35 U.S.C. § 112, second paragraph, as being
`
`indefinite. Independent claims 1, 17, 19, and 22 recite "limiting the number
`
`9
`
`MasterCard, Exh. 1003, p. 10
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`of transactions to one or more merchants." Petitioner argues that this
`
`limitation does not appear in the written description, is not identified in any
`
`figure of the '988 patent, and is not clarified or limited further by the
`
`dependent claims. Therefore, according to Petitioner, "limiting ... to one or
`
`more merchants" encompasses an infinite number of merchants. Pet. 77-78
`
`(citing Ex. 1008, ~ 64). Petitioner argues that a person having ordinary skill
`
`in the art would have no way of determining whether they were practicing
`
`"limiting ... to one or more merchants," because this limitation
`
`encompasses situations where there is no limit on the number of merchants
`
`with which a transaction occurs. !d.
`
`Patent Owner argues that this limitation is "definite because one of
`
`ordinary skill in the art would understand the term to require some limit on
`
`the number of merchants that purchases could be made using the transaction
`
`code." Prelim. Resp. 31-32.
`
`We agree with Patent Owner. As discussed above in our claim
`
`construction, construing "one or more merchants" to encompass an infinite
`
`number of merchants is unreasonable. As also discussed above, claim 1
`
`requires various steps, including providing authorization to complete a
`
`purchase. A person with ordinary skill in the art would understand "limiting
`
`... to one or more merchants" broadly imposes some type of reasonable
`
`limitation as to the number of merchants in order to provide the necessary
`
`authorization to complete a purchase and perform other claim steps. Even
`
`assuming, in arguendo, that "limiting ... to one or more merchants"
`
`includes a relatively large number of merchants, such a construction is
`
`10
`
`MasterCard, Exh. 1003, p. 11
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`merely broad and not indefinite. In re Gardner, 427 F.2d 786, 788 (CCPA
`
`1970) ("Breadth is not indefiniteness."). Accordingly, we do not agree with
`
`Petitioner that this limitation is indefinite.
`
`Petitioner further notes that independent claim 1 recites "limiting a
`
`number of transactions" to one or more merchants, and independent claims
`
`17, 19, and 22 recite similar limitations. Petitioner asserts that this limitation
`
`is indefinite because it includes both zero transactions and an infinite
`
`number oftransactions. Pet. 78-79 (citing Ex. 1008, ~ 67).
`
`Patent Owner argues that Petitioner's construction of "limiting a
`
`number of transactions" to include zero and infinite transactions is
`
`unreasonable and overly broad. Prelim. Resp. 32-33. We agree with Patent
`
`Owner. Specifically, based on the discussion above in the claim
`
`construction section, we agree that a person with ordinary skill in the art
`
`would understand the limitation "limiting a number of transactions" to
`
`include at least one transaction, and, therefore, construing this limitation to
`
`encompass zero transactions is unreasonable. We further agree that a person
`
`with ordinary skill in the art would understand that, while this limitation is
`
`broad, this limitation requires some limitation on the number of transactions,
`
`and, therefore, construing this limitation to encompass an infinite or limitless
`
`number of transactions is also unreasonable.
`
`Accordingly, we are not persuaded that Petitioners will more likely
`
`than not prevail in demonstrating that claims 1-20, 22, and 31-38 are
`
`unpatentable as being indefmite under 35 U.S. C. § 112, second paragraph.
`
`11
`
`MasterCard, Exh. 1003, p. 12
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`D. Unpatentability under 35 US. C.§§ 102 and 103
`Petitioner contends that claims 1-10, 15-25, 27-33, and 35-38 of the
`
`'988 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
`
`Cohen or Flitcroft, and claims 11-14, 26, and 34 are unpatentable under 35
`
`U.S.C. § 103 as obvious over Cohen or Flitcroft, and Musmanno. Pet. 14-
`
`76.
`
`1.
`
`Section 18(a)(l)(C) of the AlA
`
`Under section 18(a)(1)(C) of the AlA, a petitioner in a transitional
`
`proceeding who challenges the validity of one or more claims in a covered
`
`business method patent on grounds ofunpatentability raised under§§ 102
`
`and 103 may only suppmi such grounds on the following basis:
`
`(i) prior art that is described by section 1 02( a) of such
`title (as in effect on the day before such effective date); or
`(ii) prior art that-
`(I) discloses the invention more than 1 year before the
`date of the application for patent in the United States; and
`(II) would be described by section 1 02( a) of such title (as
`in effect on the day before the effective date set forth in section
`3(n)(1)) if the disclosure has been made by another before the
`invention thereof by the applicant for patent.
`
`AlA Section 18(a)(1)(C).
`
`2.
`
`Priority
`
`The '988 patent was filed on October 12, 2010 and issued on October
`
`11, 2011. Ex. 1001. The '988 patent is a continuation of application
`
`111252,009, filed on October 17, 2005, which is now U.S. Patent No.
`
`7,840,486. !d. That application is a continuation of application 10/037,007,
`
`12
`
`MasterCard, Exh. 1003, p. 13
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`filed on November 9, 2001, which is a continuation-in-part of application
`
`09/231,745, filed on January 15, 1999, which is now U.S. Patent No.
`
`6,324,526. !d.
`
`Cohen was filed on March 30, 1999 and issued on July 23, 2002. Ex.
`
`1004. Cohen claims priority to Provisional Application No. 60/079,884,
`
`filed on March 30, 1998. !d.
`
`Flitcroft was filed on January 22, 1999 and issued on October 21,
`
`2003. Ex. 1005. Flitcroft claims priority to Provisional Application No.
`
`60/099,014, filed on September 9, 1998; Provisional Application No.
`
`60/098,175, filed on August 26, 1998; and Provisional Application No.
`
`60/092,500, filed on July 13, 1998. Id.
`
`3.
`
`Analysis
`
`Petitioner submits that Cohen and Flitcroft qualify as § 1 02( e) prior
`
`art references, assuming that the '988 patent receives the benefit of the
`
`earliest filing date, January 15, 1999. Pet. 14, 45. Although Cohen and
`I
`Flitcroft were filed prior to the effective filing date of the '988 patent,
`
`neither Cohen nor Flitcroft was published prior to the effective filing date of
`
`the '988 patent. As such, we agree with Petitioner that both Cohen and
`
`Flitcroft only qualify as§ 102(e) references. Accordingly, neither Cohen
`
`nor Flitcroft qualifies as prior art, for a covered business method review,
`
`under Section 18(a)(l)(C) of the AlA.
`
`Petitioner does not direct us to any further evidence to demonstrate
`
`that Cohen and Flitcroft qualify as prior art under Section 18(a)(1)(C) of the
`
`AlA. Instead, Petitioner argues that the Board previously has instituted a
`
`13
`
`MasterCard, Exh. 1003, p. 14
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`covered business method patent review on the basis of a reference that
`
`qualifies under§ 102(e). Pet. 14, n. 4 (citing CBM2013-00008, paper 20,
`
`20-21, 35). Nonetheless, Section 18(a)(1)(C) of the AlA governs what
`
`qualifies as prior art in this proceeding, and in that earlier Board proceeding,
`
`the Board issued a clarifying order, effectively amending the decision to
`
`institute and withdrawing the previously instituted ground based on the
`
`§ 1 02( e) reference, reasoning that the reference does not qualify as prior art
`
`in CBM proceedings under Section 18(a)(1)(C) of the AlA. See CBM2013-
`
`00008, paper 24, 2-3.
`
`Because Petitioner has not demonstrated that Cohen or Flitcroft
`
`qualifies as prior art under Section 18(a)(1)(C) of the AlA, we are not
`
`persuaded that Petitioner demonstrates that it is more likely than not that
`
`claims 1-10, 15-25, 27-33, and 35-38 are unpatentable as being anticipated
`
`by Cohen or Flitcroft. We similarly are not persuaded that Petitioner
`
`demonstrates that it is more likely than not that claims 11-14, 26, and 34 are
`
`unpatentable as being obvious over Cohen or Flitcroft, and Musmanno.
`
`III.
`
`CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the petition does not establish that it is more likely than not that
`
`claims 1-38 of the '988 patent are unpatentable and, accordingly, decline to
`
`institute a covered business method patent review of the '988 patent.
`
`IV.
`
`ORDER
`
`For the foregoing reasons, it is
`
`14
`
`MasterCard, Exh. 1003, p. 15
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`ORDERED that the petition is denied as to all challenged claims of
`
`the '988 patent.
`
`15
`
`MasterCard, Exh. 1003, p. 16
`
`

`

`Case CBM2013-00057
`Patent 8,036,988
`
`PETITIONER:
`
`Robert Scheinfeld
`Eliot Williams
`BAKER BOTTS LLP
`robert.scheinfeld@bakerbotts.com
`eliot. williams@bakerbotts.com
`
`PATENT OWNER:
`
`Stephen Lewellyn
`Britney Maxey
`MAXEY LAW OFFICES, PLLC
`s.lewellyn@maxeyiplaw .com
`b.maxey@maxeyiplaw .com
`
`16
`
`MasterCard, Exh. 1003, p. 17
`
`

`

`CERTIFICATE OF SERVICE
`
`It is hereby cetiified by the undersigned that a true copy of the Statement
`
`Regarding Prior or Concurrent Proceedings, filed March 10, 2014, was sent via email to:
`
`Charles F. Wieland III
`Buchanan Ingersoll & Rooney, P.C.
`1737 King Street, Suite 500
`Alexandria, VA 22314
`Charles. wieland@bipc.com
`
`March 10, 2014
`
`Date:
`
`-------------------
`
`For the Patentee,
`
`/Stephen Lewellyn/
`
`Stephen Lewellyn
`Registration No. 51,942
`100 Second A venue South
`Suite 401 Nmih
`St. Petersburg, Florida 33701
`
`MasterCard, Exh. 1003, p. 18
`
`

`

`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`18420093
`
`90012517
`
`International Application Number:
`
`Confirmation Number:
`
`5785
`
`Title of Invention:
`
`SYSTEM AND METHOD FOR PERFORMING SECURE CREDIT CARD PURCHASES
`
`First Named Inventor/Applicant Name:
`
`8036988
`
`Customer Number:
`
`34111
`
`Filer:
`
`Stephen James Lewellyn
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`253.005
`
`Receipt Date:
`
`Filing Date:
`
`TimeStamp:
`
`1 0-MAR-2014
`
`12-SEP-2012
`
`15:37:49
`
`Application Type:
`
`Reexam (Patent Owner)
`
`Payment information:
`
`Submitted with Payment
`
`I no
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size( Bytes)/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(ifappl.)
`
`625441
`
`1
`
`Miscellaneous Incoming Letter
`
`20140310144018174.pdf
`
`no
`
`18
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`d1248e2618bc96a 1 Oeb2ccbec9e 1590a885
`d68e0
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`Warnings:
`
`Information:
`
`MasterCard, Exh. 1003, p. 19
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`

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`Total Files Size (in bytes)
`
`625441
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 0), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`MasterCard, Exh. 1003, p. 20
`
`

`

`

`

`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-·1450
`W"aAA"I.IJ:.'=ptO.QOV
`
`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 TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 901012.517.
`
`PATENT NO. 8.036.988.
`
`ART UN IT 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 parte reexamination requester will be
`acknowledged or considered (37 CFR 1 .550(g)).
`
`PTOL-465 (Rev.0?-04)
`
`MasterCard, Exh. 1003, p. 22
`
`

`

`Ex Parte Reexamination Interview Summary 90/012,517
`8036988
`~Ex_a_m~i-ne-r------------~A~r~tU~n~i~t------------------~
`
`Control No.
`
`Patent Under Reexamination
`
`JOHN HOTALING
`
`3992
`
`All participants (USPTO personnel, patent owner, patent owner's representative):
`
`(1) JOHN HOTALING
`
`(2) Cameron Saadat
`
`Date of Interview: 08 November 2013
`
`(3) Alex Kosowski
`
`( 4) Stephen Lewellvn
`
`Type: a)[gl Telephonic b)O Video Conference
`c)O Personal (copy given to: 1 )0 patent owner
`
`2)0 patent owner's representative)
`
`Exhibit shown or demonstration conducted: d)O Yes
`If Yes, brief description: __
`
`e)[gl No.
`
`Agreement with respect to the claims f)O was reached. g)[gl was not reached. h)O N/A.
`Any other agreement(s) are set forth below under "Description of the general nature of what was agreed to ... "
`
`Claim(s) discussed: 21.
`
`Identification of prior art discussed: Cohen 6422462.
`
`Description of the general nature of what was agreed to if an agreement was reached, or any other comments:
`Patent Owner's representative emphasized that the custom use card of claim 21 is limited to a single merchant. The
`examiner stated that the arguments would be given further consideration upon receiving a formal response.
`
`(A fuller description, if necessary, and a copy of the amendments which the examiner agreed would render the claims
`patentable, if available, must be attached. Also, where no copy of the amendments that would render the claims
`patentable is available, a summary thereof must be attached.)
`
`A FORMAL WRITTEN RESPONSE TO THE LAST OFFICE ACTION MUST INCLUDE PATENT OWNER'S
`STATEMENT OF THE SUBSTANCE OF THE INTERVIEW. (See MPEP § 2281 ). IF A RESPONSE TO THE
`LAST OFFICE ACTION HAS ALREADY BEEN FILED, THEN PATENT OWNER IS GIVEN ONE MONTH FROM THIS
`INTERVIEW DATE TO PROVIDE THE MANDATORY STATEMENT OF THE SUBSTANCE OF THE INTERVIEW
`(37 CFR 1.560(b)). THE REQUIREMENT FOR PATENT OWNER'S STATEMENT CAN NOT BE WAIVED.
`EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`//John M Hotaling III/
`Primary Examiner, Art Unit 3992
`
`/AJKI
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Off1ce
`PTOL-474 (Rev. 04·01)
`
`Ex Parte Reexamination Interview Summary
`
`Paper No. 20131108
`
`MasterCard, Exh. 1003, p. 23
`
`

`

`Control No. 90/012,517
`Docket No. 253.005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re: Reexam of U.S. Patent No.
`
`Confirmation No.: 5785
`
`8,036,988 (D 'Agostino)
`
`Group Art Unit: 3992
`
`Control Number: 90/012,517
`
`Examiner: Hotaling, John M.
`
`Filed: March 15, 2011
`
`Docket Number: 253.005
`
`For: System and Method for Performing Secure Credit Card Transactions
`
`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.
`
`Table of Contents begins on page 2.
`
`Listing of Claims begins on page 4.
`
`Listing of Appendices begins on page 15.
`
`Remarks begin on page 16.
`
`- 1 -
`
`MasterCard, Exh. 1003, p. 24
`
`

`

`Control No. 90/012,517
`Docket No. 253.005
`
`TABLE OF CONTENTS
`
`LISTING OF CLAIMS ................................................................................................................ 4
`
`LISTING OF APPENDICES ....................................................................................................... 15
`
`REMARKS .................................................................................................................................. 16
`
`I.
`
`INITIAL REMARKS ............................................................................................................. 16
`
`A. Reexamination summary and claim status ....................................................................... 16
`
`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. § 1 02(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
`
`1. 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
`
`n. 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
`
`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
`
`- 2-
`
`MasterCard, Exh. 1003, p. 25
`
`

`

`Control No. 90/012,517
`Docket No. 253.005
`
`1. A one or more merchants limitation does not anticipate a single merchant
`limitation .............................................................................................................. 29
`
`n. 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
`
`C. Claims 11 and 12 are nonobvious over Cohen ................................................................. 32
`
`III. CONCLUSION ..................................................................................................................... 32
`
`CERTIFICATE OF SERVICE .................................................................................................... 34
`
`- 3-
`
`MasterCard, Exh. 1003, p. 26
`
`

`

`Control No. 90/012,517
`Docket No. 253.005
`
`LISTING OF CLAIMS
`
`1 (original). A metho