UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/012,517
`
`09/12/2012
`
`8036988
`
`253.005
`
`5785
`
`09112/2014
`
`7590
`34111
`Maxey Law Offices, PLLC
`100 Second A venue South
`Suite 401 North
`St. Petersburg, FL 33701
`
`EXAMINER
`
`HOTALING, JOHN M
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`09/12/2014
`
`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. 1021, p. 1
`
`

`

`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. 8036988.
`
`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. 1021, p. 2
`
`

`

`Control No.
`
`90/012,517
`
`Patent Under Reexamination
`
`8036988
`
`Examiner
`
`Art Unit
`
`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
`
`2.
`
`AlA (First Inventor to File)
`Status
`3992
`JOHN HOTALING
`I
`No
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address --
`1. [8J Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Ct. 37 CFR 1.313(a). A Certificate will be issued
`in view of
`(a) [8J Patent owner's communication(s) filed: 23 Julv 2014.
`(b) D Patent owner's failure to file an appropriate timely response to the Office action mailed: __ .
`(c) D Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31 ).
`(d) D The decision on appeal by the D Board of Patent Appeals and Interferences D Court dated __
`(e) D Other: __
`The Reexamination Certificate will indicate the following:
`(a) Change in the Specification: DYes 1Z1 No
`(b) Change in the Drawing(s): DYes 1Z1 No
`(c) Status of the Claim(s):
`(1) Patent claim(s) confirmed: 1-38.
`(2) Patent claim(s) amended (including dependent on amended claim(s)): __
`(3) Patent claim(s) canceled: __ .
`(4) Newly presented claim(s) patentable: __ .
`(5) Newly presented canceled claims: __ .
`(6) Patent claim(s) D previously D currently disclaimed: __
`(7) Patent claim(s) not subject to reexamination: __ .
`
`3. D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`4. [8J Note the attached statement of reasons for patentability and/or confirmation. Any comments considered necessary
`by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly to avoid
`processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for Patentability
`and/or Confirmation."
`5. 0 Note attached NOTICE OF REFERENCES CITED (PT0-892).
`6. 0 Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/08 substitute).
`7. D The drawing correction request filed on __ is: D approved D disapproved.
`
`8. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)D All b)D Some*
`c)D None
`of the certified copies have
`D been received.
`D not been received.
`D been filed in Application No. __ .
`D been filed in reexamination Control No. __ .
`D been received by the International Bureau in PCT Application No. __ .
`
`* Certified copies not received: __ .
`
`9. D Note attached Examiner's Amendment.
`
`10. D Note attached Interview Summary (PT0-474).
`11. D Other: __
`
`All correspondence relating to this reexamination proceeding should be directed to the Central Reexamination Unit at
`the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`cc: Requester (if third party requester)
`U.S. Patent and Trademark Off1ce
`PTOL-469 (Rev. 08·13)
`Notice of Intent to Issue Ex Parte Reexamination Certificate
`
`Part of Paper No 20140904
`
`John M Hotaling II/
`Primary Examiner
`~rt Unit: 3992
`
`MasterCard, Exh. 1021, p. 3
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 2
`
`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
`
`Claims 1-38 are confirmed.
`
`The following is an examiners statement of reasons for confirmation of the claims
`
`in this reexamination proceeding. Appellant contends:
`
`Cohen does not disclose designating/selecting a payment category that
`places limitations on a transaction code before the transaction code is generated.
`Independent claims 1 and 17 are representative. Claim 1 is reproduced below, in
`relevant part (emphasis added):
`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.
`
`Claim 17 is reproduced below, in relevant part (emphasis added):
`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.
`
`Independent claims 19, 21, and 22 include similar limitations and need not
`be discussed separately. Each independent claim requires the designating or
`selecting step to be performed before the generating step. The specification of
`the '988 patent only describes generating the transaction code after both (1)
`identifying an account that is used to make credit card purchases to associate
`with the transaction code and (2) designating or selecting a payment category.
`Admittedly, Cohen discloses that a credit card number can have its use
`customized, but Cohen does not disclose defining/selecting customized uses of
`the credit card number before the credit number is generated for use. Instead,
`Cohen describes customizing use after the credit card number is generated:
`In one embodiment, with respect to customization, the user
`receives one or more credit cards, each of which is inactive .... When the
`
`MasterCard, Exh. 1021, p. 4
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 3
`
`user receives the credit card, or when the user is ready to activate the
`credit card, the user determines ... what particular uses or types of uses are
`desired.
`
`Whereas, every independent claim of the '988 patent requires selecting or
`designating a payment category that includes limiting to either a single merchant
`or one or more merchants, and then subsequently generating the transaction
`code for use by a customer, where upon generating, use of the transaction code
`is restricted according to the payment category.
`Consequently, because Cohen does not disclose selecting or designating
`a payment category that includes limiting to either an unidentified single
`merchant or unidentified one or more merchants, before the transaction code is
`generated for use by the customer, Cohen does not disclose every feature of
`independent claims 1, 17, 19, 21 and 22. The remaining dependent claims are
`appealed on the same basis as their respective base claims 1, 17, 19, and 22.
`Accordingly, the rejection should be reversed.
`
`(AB 20-22, contested limitations emphasized)
`
`The examiner agrees with the Appellant's contentions. Cohen discloses the
`
`following relevant section with respect to the contested sequence of claimed method
`
`steps:
`
`The invention can be practiced according to a wide variety of
`embodiments. In one embodiment, for example, a user dials into her credit card
`company before making a transaction, and after providing the ordinary credit
`card number and verification data, is provided with a disposable or customized
`number and/or mailed. provided with. or allowed to activate a disposable or
`customized card for a single or a limited range use.
`In one embodiment of the invention, a user can indicate in advance of
`purchase, on the telephone call with the credit card company, what the single
`use or the customized credit card number is to be used for. This can be used to
`provide additional security and/or control the uses of the funds placed on that
`card.
`
`(Cohen 3:40-55 emphasis added)
`
`MasterCard, Exh. 1021, p. 5
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 4
`
`Upon further consideration the examiner agrees with appellant's argument that
`
`Cohen fails to teach that the transaction code is generated after the designation of the
`
`payment category and any specific criteria within the payment category.
`
`Therefore, claims 1 and 17 are confirmed over the prior art since the prior art fails
`
`to disclose the specific sequence of method steps including selecting or designating a
`
`payment category before the transaction code is generated.
`
`Independent claims 19, 21, and 22 recite limitations commensurate in scope to
`
`claims 1 and 17 and are confirmed for the same reasons.
`
`Additionally, Claim 21 recites;
`
`(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.
`
`The examiner agrees with the Appellant's contention (AB 1 0-14) that Cohen does
`
`not disclose a single merchant being included in a payment category prior to any
`
`particular merchant being identified.
`
`Accordingly, Claims 1-38 are confirmed.
`
`Conclusion
`
`Any comments considered necessary by PATENT OWNER regarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submissions
`
`by the patent owner should be labeled: "Comments on Statement of Reasons for
`
`Patentability and/or Confirmation" and will be placed in the reexamination file.
`
`MasterCard, Exh. 1021, p. 6
`
`

`

`Application/Control Number: 90/012,517
`Art Unit: 3992
`
`Page 5
`
`All correspondence relating to this ex parte reexamination proceeding should be directed:
`
`By Mail to: Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to: (571) 273-9900
`Central Reexamination Unit
`
`By hand to: Customer Service Window
`Randolph Building
`401 Dulany Street
`Alexandria, VA 22314
`
`Registered users of EFS-Web may alternatively submit such correspondence via the electronic
`filing system EFS-Web, at https:/ /efs.uspto.f!"ov/efile/mvportal/efs-registered. EFS-Web offers
`the benefit of quick submission to the particular area of the Office that needs to act on the
`correspondence. Also, EFS-Web submissions are "soft scanned" (i.e., electronically uploaded)
`directly into the official file for the reexamination proceeding, which offers parties the
`opportunity to review the content of their submissions after the "soft scanning" process is
`complete.
`
`Any inquiry concerning this communication should be directed to the Central Reexamination
`Unit at telephone number (571) 272-7705.
`
`Signed:
`
`/John M Hotaling II/
`Primary Examiner
`Central Reexamination Unit
`AU 3992
`(571) 272 4437
`
`Conferees:
`
`/C.S./
`
`/WHC/
`
`MasterCard, Exh. 1021, p. 7
`
`

`

`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. 1021, p. 8
`
`