IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`In re:
`
`Ex Parte Reexamination of U.S. Patent No. 8,036,988
`
`For: System and Method for Performing Secure Credit Card Transactions
`
`Reexamination Control No.: 90/012,517
`
`Confirmation No.: 5785
`
`Examiner: John Hotaling
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`
`APPEAL BRIEF
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`
`Mail Stop Appeal Brief-Patents
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`
`
`This Appeal Brief is filed with the Patent Trial and Appeal Board under 37 C.F.R. §
`
`41.33 in response to the Final Rejection issued on March 27, 2014.
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`D'Agostino, Ex. 2003, p. 1
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`

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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`Table of Contents
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`1. Real Party In Interest .................................................................................................. 1
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`2. Related Appeals, Interferences, and Trials ................................................................ 1
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`3.
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`4.
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`5.
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`Status of Claims ......................................................................................................... 1
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`Status of Amendments ............................................................................................... 1
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`Summary of Claimed Subject Matter. ........................................................................ 2
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`A. Independent Claim 1. ........................................................................................... 2
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`B. Independent Claim 17. ......................................................................................... 3
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`C. Independent Claim 19. ......................................................................................... 4
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`D. Independent Claim 21 .......................................................................................... 5
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`E. Independent Claim 22 .......................................................................................... 6
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`6. Grounds of Rejection to be Reviewed on Appeal ...................................................... 7
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`7. Argument ................................................................................................................... 8
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`
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`A. The review here is de novo on all examiner findings contested by
`appellant. .............................................................................................................. 8
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`B. The rejections of the claims 1-10 and 13-38 under 35 U.S.C. § 102(e) as
`anticipated by Cohen should not be sustained. .................................................... 9
`
`(1) Rejection of claims 21 and 23-30 under 35 U.S.C. § 102(e) as anticipated
`by Cohen. ........................................................................................................... 10
`
`(2) Rejection of claims 1-10, 13-20, 22, and 31-38 under 35 U.S.C. § 102(e)
`as anticipated by Cohen. .................................................................................... 14
`
`
`
`
`(a) Cohen’s type of Charge does not anticipate “one or more
`merchants.” ..................................................................................... 15
`
`(b) Cohen’s particular store or a particular chain of stores does not
`anticipate “one or more merchants.” ...................................................... 17
`
`i
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`D'Agostino, Ex. 2003, p. 2
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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`(c) The claim term “one or more merchants” is a limit on the number
`of merchants. .......................................................................................... 19
`
`
`(3) Rejection of claims 1-10 and 13-38 under 35 U.S.C. § 102(e) as
`anticipated by Cohen. ......................................................................................... 20
`
`
`C. The rejections of claims 11 and 12 under 35 U.S.C. § 103(a) as being
`unpatentable over Cohen should not be sustained. ............................................ 22
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`8. Conclusion ............................................................................................................... 23
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`9. Claims Appendix ...................................................................................................... 24
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`
`ii
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`D'Agostino, Ex. 2003, p. 3
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`

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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`1. Real Party In Interest
`
`The owner of this patent and real party in interest is John D’Agostino.
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`2. Related Appeals, Interferences, and Trials
`
`There are no related appeals or interferences. U.S. Patent No. 8,036,988 (“the ‘988
`
`
`
`
`
`patent”) at issue in this reexamination proceeding is currently involved in:
`
`1. John D’Agostino v. MasterCard, Inc. et al., Case No. 1:13-cv-00738 (D. Del);
`
`and
`
`2. Petition for inter partes review, filed March 28, 2014, Case No. IPR2014-
`
`00543.
`
`The ‘988 patent at issue in this reexamination proceeding was involved in:
`
`1. Petition for covered business method review, institution denied March 7, 2013,
`
`Case No. CBM2013-00057.
`
`3. Status of Claims
`
`Claims 1-38 are pending and stand rejected. The rejections of claims 1-38 are
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`
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`
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`appealed.
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`4. Status of Amendments
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`
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`No claims have been amended or canceled after the Action from which appeal is
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`taken.
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`
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`
`
`1
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`D'Agostino, Ex. 2003, p. 4
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`

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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`
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`5. Summary of Claimed Subject Matter
`
`A.
`
`Independent Claim 1.
`
`A method of performing secure credit card purchases, 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
`
`(‘988 patent, 5:46-66; Fig. 1, element 12);
`
`
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`b) supplying said custodial authorizing entity with at least account identification
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`data of said customer’s account (‘988 patent, 5:64-6:7; Fig. 1, element 14);
`
`
`
`c) defining at least one payment category to include at least limiting a number of
`
`transactions to one or more merchants (‘988 patent, 8:18-20; Fig. 1, element 14), 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 (‘988 patent,
`
`8:20-23; Fig. 1, element 14);
`
`
`
`d) designating said payment category (‘988 patent, 7:43-45; 7:56-61; Fig. 1,
`
`element 14);
`
`
`
`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 (‘988
`
`patent, 6:33-37; 7:54-61; Fig. 1, element 20);
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`2
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`D'Agostino, Ex. 2003, p. 5
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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`f) communicating said transaction code to a merchant to consummate a purchase
`
`[within]1 defined purchase parameters (‘988 patent, 6:44-48; 7:46-55; Fig. 1, element 24);
`
`
`
`g) verifying that said defined purchase parameters are within said designated
`
`payment category (‘988 patent, 7:49-55; Fig. 1, element 26); and
`
`
`
`h) providing authorization for said purchase so as to confirm at least that said
`
`designated payment category and to authorize payment required to complete the purchase
`
`(‘988 patent, 7:23-29; Fig. 1, element 32).
`
`B.
`
`Independent Claim 17.
`
`
`
`
`
`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
`
`(‘988 patent, 5:64-6:7; Fig. 1, element 14);
`
`
`
`b) selecting a predetermined payment category which limits a nature, of a series of
`
`subsequent purchases to one or more merchants (‘988 patent, 6:6-14; 8:18-20; Fig. 1,
`
`element 14), 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 (‘988 patent, 8:20-23; Fig. 1, element 14);
`
`
`
`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 (‘988 patent, 6:28-37; 7:54-61; Fig. 1, element
`
`20);
`                                                            
`1 Certificate of Correction issued February 12, 2013 correcting “purchased with defined” to
`“purchased within defined”.
`
`3
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`D'Agostino, Ex. 2003, p. 6
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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`d) communicating said transaction code to a merchant to consummate a purchase
`
`within defined purchase parameters (‘988 patent, 6:44-48; 7:46-55; Fig. 1, element 24);
`
`
`
`e) verifying that said defined purchase parameters correspond to said selected
`
`payment category (‘988 patent, 7:49-55; Fig. 1, element 26);
`
`
`
`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 (‘988 patent, 7:23-29; Fig. 1, element 32); and
`
`
`
`g) associating the purchase with said pre-established account (‘988 patent, 6:29-38;
`
`Fig. 1, element 32).
`
`C.
`
`Independent Claim 19.
`
`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
`
`(‘988 patent, 5:64-6; Fig. 1, element 14);
`
`
`
`b) selecting a pre-determined payment category which limits a nature of subsequent
`
`purchase to one or more merchants(‘988 patent, 6:6-14; 8:18-20; Fig. 1, element 14), 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(‘988 patent,
`
`8:20-23; Fig. 1, element 14);
`
`
`
`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
`
`4
`
`D'Agostino, Ex. 2003, p. 7
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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`different from said pre-established account (‘988 patent, 6:28-37; 7:54-61; Fig. 1, element
`
`20);
`
`
`
`d) designating a merchant as one of said one or more merchants (‘988 patent, 6:6-8;
`
`Fig. 1, element 12);
`
`
`
`e) communicating said transaction code to said merchant to consummate a purchase
`
`within defined purchase parameters (‘988 patent, 6:8-11; Fig. 1, element 12);
`
`
`
`f) verifying that said defined purchase parameters correspond to said selected
`
`payment category (‘988 patent, 7:49-55; Fig. 1, element 26);
`
`
`
`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 (‘988 patent, 7:23-29; Fig. 1, element 32); and
`
`
`
`h) associating the purchase with said pre-established account (‘988 patent, 6:29-
`
`38; Fig. 1, element 32).
`
`D.
`
`Independent Claim 21.
`
`A method for implementing a system for performing secure credit card purchase, the
`
`method comprising:
`
`
`
`a) receiving account information from an account holder identifying an account that
`
`is used to make credit card purchases (‘988 patent, 5:66-67; 6:1-6; Fig. 1, element 14);
`
`
`
`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
`
`(‘988 patent, 6:6-8; Fig. 14), said single merchant limitation being included in said
`
`5
`
`D'Agostino, Ex. 2003, p. 8
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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`payment category prior to any particular merchant being identified as said single merchant
`
`(‘988 patent, 7:63-67; 8:1-3; Fig. 1, element 14);
`
`
`
`c) generating a transaction code utilizing a processing computer of custodial
`
`authorizing entity (‘988 patent, 6:24-28, Fig. 1, element 20), 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 (‘988 patent, 6:32-37; Fig. 1, element 20);
`
`
`
`d) communicating said transaction code to said account holder (‘988 patent, 6:37-
`
`43; Fig. 1, element 22);
`
`
`
`e) receiving a request to authorize payment for a purchase using said transaction
`
`code (‘988 patent, 7:13-22; Fig. 1, element 26); and
`
`
`
`f) authorizing payment for said purchase if said purchase is within said payment
`
`category (‘988 patent, 7:26-29; Fig. 1, element 32).
`
`E.
`
`Independent Claim 22
`
`A method for implementing a system for performing secure credit card purchase, the
`
`method comprising:
`
`
`
`a) receiving account information from an account holder identifying an account that
`
`is used to make credit card purchases (‘988 patent, 5:66-67; 6:1-6; Fig. 1, element 14);
`
`
`
`b) receiving a request from said account holder for a transaction code to make a
`
`purchase within a payment category that at least limits transaction to one or more
`
`merchants (‘988 patent, 6:6-14; 8:18-20; Fig. 14), 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(‘988 patent, 8:20-23; Fig. 1, element 14);
`
`6
`
`D'Agostino, Ex. 2003, p. 9
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`

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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`
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`c) generating a transaction code utilizing a processing computer of a custodial
`
`authorizing entity (‘988 patent, 6:24-28, Fig. 1, element 20), 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 (‘988 patent, 6:28-37; 7:54-61; Fig. 1,
`
`element 20);
`
`
`
`d) communicating said transaction code to said account holder (‘988 patent, 6:37-
`
`43; Fig. 1, element 22);
`
`
`
`e) receiving a request to authorize payment for a purchase using said transaction
`
`code (‘988 patent, 7:13-22; Fig. 1, element 26); and
`
`
`
`f) authorizing payment for said purchase if said purchase is within said payment
`
`category (‘988 patent, 7:26-29; Fig. 1, element 32).
`
`6. Grounds of Rejection to be Reviewed on Appeal
`
`The following is a concise statement of each ground of rejection presented for
`
`
`
`review:
`
`1. The rejection of claims 1-10 and 13-38 under 35 U.S.C. 102(e) as being
`
`anticipated by U.S. Patent No. 6,422,462 to Cohen; and
`
`2. The rejection of claims 11 and 12 under 35 U.S.C. 103(a) as being unpatentable
`
`over Cohen.
`
`
`
`
`
`7
`
`D'Agostino, Ex. 2003, p. 10
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`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`7. Argument
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`A. The review here is de novo on all examiner findings contested by appellant.
`
`
`
`This is an appeal from the examiner’s final rejection of claims 1-38 of the ‘988
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`patent. “[T]he Board reviews the particular finding(s) contested by an appellant anew in
`
`light of all of the evidence and arguments on that issue.”2
`
`Anticipation
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`
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`“A claim is anticipated only if each and every element as set forth in the claim is
`
`found, either expressly or inherently, described in a single prior art reference.”3
`
`Anticipation requires that a reference disclose “not only all of the limitations claimed but
`
`also all of the limitations arranged or combined in the same way recited in the claim.”4
`
`Obviousness
`
`
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the difference between the
`
`claimed subject matter and the prior art are such that the subject matter as a whole would
`
`have been obvious at the time the invention was made to a person having ordinary skill in
`
`the art to which said subject matter pertains.5 The question of obviousness is resolved on
`
`the basis of underlying factual determinations including: (1) the scope and content of the
`
`prior art; (2) any differences between the claimed subject matter and the prior art; (3) the
`
`                                                            
`2 Ex parte Frye, No. 2009-006013 at *10 (BPAI 2010).
`
` Verdegaal Bros. v. Union Oil. Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
`
` Net MoneyIN v. VeriSign, 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`
` KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`8
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` 3
`
` 4
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` 5
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`
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`D'Agostino, Ex. 2003, p. 11
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`level of skill in the art; and (4) where in evidence, secondary considerations.6
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`“[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead,
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`there must be some articulated reasoning with some rational underpinning to support the
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`legal conclusion of obviousness.”7
`
`B. The rejections of claims 1-10 and 13-38 under 35 U.S.C. § 102(e)
`
`as anticipated by Cohen should not be sustained.
`
`
`
`The Board should not sustain the examiner’s rejections of claims 1-10 and 13-38
`
`because Cohen fails to teach every feature in the rejected claims for these three reasons:
`
`1. Cohen does not anticipate claims 21 and 23-30. The claims are not anticipated
`
`because Cohen does not disclose a payment category that at least limits
`
`transactions to a single-merchant, the single merchant limitation being included
`
`in the payment category prior to any particular merchant being identified as the
`
`single merchant.
`
`2. Cohen does not anticipate claims 1-10, 13-20, 22, and 31-38. These claims are
`
`not anticipated because Cohen does not disclose a payment category that at least
`
`includes a limit to one or more merchants, the one or merchants limitation being
`
`included in the payment category prior to any particular merchant being
`
`identified as one of the one or more merchants.
`
`3. Cohen does not anticipate claims 1-10 and 13-38. These claims are not
`
`anticipated because Cohen does not disclose selecting or designating a payment
`                                                            
`6 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
` KSR Int’l Co. at 418.
`
` 7
`
` 
`
`9
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`D'Agostino, Ex. 2003, p. 12
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`Control No. 90/012,517
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`category that includes limiting to either an unidentified single merchant or
`
`unidentified one or more merchants, and then subsequently generating the
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`transaction code for use by a customer, where upon generating, the use of the
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`transaction code is restricted according to the payment category.
`
`Rejection of claims 21 and 23-30 under 35 U.S.C. § 102(e) as anticipated by
` (1)
`Cohen.
`
`
`
`Cohen fails to teach every feature in rejected claims 21 and 23-30. Independent
`
`claim 21 includes:
`
`(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.
`
`Cohen describes two separate, distinct types of limited-use credit cards. The first is
`
`
`
`
`
`a disposable, single-use card that is used for one transaction and then deactivated. The
`
`second is a custom-use credit card that has user created limitations that restrict use of the
`
`credit card: “In one embodiment of the invention, a user can indicate in advance of
`
`purchase, on the telephone with the credit card company, what the single use or the
`
`customized credit card number is to be used for.”8 Cohen also describes that the custom-
`
`use card can be limited to a type of charge or could be limited to a particular store or chain
`
`of stores:
`
`                                                            
`8 Cohen at col. 3, ll.49-54.
`
`
`10
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`D'Agostino, Ex. 2003, p. 13
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`Control No. 90/012,517
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`As one example, an employee could be given authorization to
`purchase a new computer system. A customized credit card could
`be issued to the user which is only valid for use for that particular
`type of charge (computer hardware and software stores) and to the
`credit limit decided by the issuer or authorizing party at the
`corporation, such that if the employee tries to use it for anything
`else or for a charge in excess of that authorized, the charge will be
`declined. The card could even customized for use in a particular
`store itself or a particular chain of stores (such as a particular
`restaurant, or a particular chain of restaurants).9
`
`The examiner relies on Cohen’s disclosure of limiting use to a type of charge,
`
`
`
`particular store, and a particular chain of stores for the claimed “said single merchant
`
`limitation being included in said payment category prior to any particular merchant being
`
`identified as said single merchant.”10 Particularly, the examiner finds that a user specifying
`
`a particular merchant inherently teaches limiting to a single merchant before the single
`
`merchant is identified:
`
`One of the ways for accomplishing payments is to pay only a
`particular merchant as disclosed by Cohen. Therefore, Cohen
`discloses a payment category that must include a single merchant
`prior to any particular merchant being identified as said single
`merchant because Cohen’s payment categories “be[sic] customized
`for only particular uses or groups of uses”. The payment category
`can be chosen by the customer based on the customer preferences
`
`                                                            
`9 Cohen at col. 8, ll. 24-35.
`
`10 Action at 14.
` 
`
`11
`
`D'Agostino, Ex. 2003, p. 14
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`Control No. 90/012,517
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`Appeal Brief
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`that only a single merchant be paid. Therefore, based on the
`customer’s intention to use the customized card to make a purchase
`from a single merchant, as disclosed by Cohen, the payment
`category must limit the transaction to only a single merchant prior to
`the merchant being selected.11 (emphasis original).
`
`Further, in the final office action, the examiner refers appellant to pages 17-19 of
`
`
`
`the examiner’s prior non-final action as additional support for his rejection.12 But in the
`
`non-final office action, the examiner doesn’t even assert Cohen discloses limiting to a
`
`single merchant: “Additionally, Cohen states that the card could even be customized for
`
`use in a particular store itself or a particular chain of stores (Cohen, col. 8, ll. 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.”13
`
`
`
`Here, beyond the examiner’s reasoning being entirely circular, the examiner’s
`
`contention fails for three separate reasons. First, the claim is not satisfied by Cohen’s
`
`disclosure of limiting use to a particular store or chain of stores. In order for a credit card
`
`company to create a limit on a credit card to a particular store, the customer must
`
`communicate the identity of that particular store to the credit card company so that the
`
`credit card company can create the limit to that store. Similarly a customer must also
`
`identify a particular chain of stores and communicate that identity to the credit card
`
`                                                            
`11 Action at 15.
`
`12 Action at 12.
`
`13 Non-Final Action at 19 (emphasis added). 
`
`12
`
`D'Agostino, Ex. 2003, p. 15
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`Control No. 90/012,517
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`Appeal Brief
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`company to create the limit to that particular chain of stores. The word “particular” itself
`
`denotes a specific identification so as not to refer to any other store or chain of stores.
`
`
`
`The examiner appears to dance around this requirement. And summarily concludes
`
`that creating a limit to a particular store or chain of stores can be made without identifying
`
`the particular store or chain of stores to which transactions are to be limited. The examiner
`
`finally concludes that this teaches a payment category including limiting transactions to a
`
`single merchant before that single merchant is identified. This finding is simply not
`
`supported by the documentary evidence.
`
`
`
` Cohen’s particular store or chain of stores limitation, by nature of the limitation
`
`itself, requires a user to identify a store or chain of stores and communicate that identity to
`
`the credit card company so that the credit card company can create the limit and restrict
`
`purchases to only that identified store or chain of stores. Whereas, the claim requires a
`
`payment category that limits transactions to a single merchant before any merchant is
`
`identified as the single merchant. Moreover, the phrase “single merchant” is not even used
`
`by Cohen.
`
`
`
`Second, limiting to a particular store or chain of stores is not the same as limiting to
`
`a single merchant. A particular store or chain of stores limitation is an identity limitation
`
`whereas a single merchant limitation is a numerical limitation. That is, the only way a
`
`particular store or chain of stores limitation can be made is by identifying that store or
`
`chain of stores from other stores or chain of stores. Conversely, a single merchant
`
`limitation is not related to the particular identity of any store or chain of stores, rather it is a
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`numerical limitation that limits use to only one merchant. Stated differently, a particular
`
`13
`
`D'Agostino, Ex. 2003, p. 16
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`

`

`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
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`store or chain of stores limitation is limited to only the identified store or chain of stores,
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`whereas a single merchant limitation is not limited by way of identity.
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`
`
`
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`Third, and finally, it is true that limiting use of a credit card to only particular types
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`of charges can be done without identifying a particular merchant. But limiting a credit
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`card’s use by a type of charge plainly does not create a limit to a single merchant. At most
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`a particular type of charge limitation (e.g., clothing stores) creates an indeterminable
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`numerical limit on a number of merchants, where the number is greater than one. And this
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`cannot meet the claim because the claim requires limitation to a single merchant.
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`
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`Thus Cohen does not disclose every feature of independent claim 21 because Cohen
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`does not disclose a payment category that at least limits transactions to a single-merchant,
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`said single merchant limitation being included in said payment category prior to any
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`particular merchant being identified as said single merchant. Claims 23-30 are appealed on
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`the same basis as their respective base claim 21. Accordingly, the rejection should be
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`reversed.
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`(2) Rejection of claims 1-10, 13-20, 22, and 31-38 under 35 U.S.C. § 102(e)
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`as anticipated by Cohen.
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`
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`Cohen fails to teach every element in the rejected claims. Independent claim 1
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`includes:
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`(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.
`
`
`14
`
`D'Agostino, Ex. 2003, p. 17
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`

`

`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
`
`
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`Independent claims 17, 19, and 22 similarly include “said one or more merchants
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`limitation being included in said payment category prior to any particular merchant being
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`identified as one of said one or more merchants.”
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`(a) Cohen’s type of charge does not anticipate “one or more merchants.”
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`
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`The examiner relies on Cohen’s disclosure of limiting a credit card’s use to a type
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`of charge (e.g., clothing stores) to meet this claimed feature:
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`Cohen provides a limit of “clothing stores” then there is
`necessarily a limit on the number of stores, as not all stores are
`clothing stores. At the same time there is no limit or specific
`identification of any specific store. Cohen therefore limits a
`number of transactions to one or more merchants, those of a
`specific industry, while not identifying and[sic] particular
`merchant. Therefore, limiting to a specific industry would not be
`excluded from meeting the claim limitation of one or more
`merchant.14
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`The appellant argued that the Office, in granting the reexamination, used an
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`
`
`incorrect claim construction for “one or more merchants,” and under the correct
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`construction, a type of charge limitation does not anticipate “one or more merchants.”
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`Particularly, the appellant advanced, in light of the specification, that “one or more
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`merchants” means “a certain quantity of merchants that is finite in number.” And that
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`under this meaning an entire industry of merchants would be excluded.
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`                                                            
`14 Action at 7.
`
`
`15
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`D'Agostino, Ex. 2003, p. 18
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`

`

`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
`
`
`
`The Board, in its decision denying covered business method review of the ‘988
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`patent, found that “one or more merchants” means “one merchant up to a plurality of
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`merchants, where the number of merchants is a finite number.”15 The Board explained that
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`this is the broadest reasonable construction:
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`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 “preforming secure credit
`card purchases.” It also recites “said one or more merchants
`limitation being included in said payment category” and
`“authorize[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.16
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`While the Board’s construction differs slightly from the appellant’s, under the
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`
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`Board’s construction, a type of charge limitation (i.e., limiting to an entire industry of
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`merchants) still does not meet the claim. Using the examiner’s example of limiting use to
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`clothing stores, admittedly this creates some numerical limit because not all merchants are
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`clothing stores. But limiting use to every clothing store that might exist in the entire world
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`does not create a numerical limit that fits within meaning of “one or more merchants,”
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`because such a numerical limit is not a “reasonable, finite number” to “authorize payment
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`and perform a purchase.”
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`                                                            
`15 Action at 9.
`
`16 Id. 
`
`16
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`D'Agostino, Ex. 2003, p. 19
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`

`

`Control No. 90/012,517
`Docket No. 253.005
`Appeal Brief
`
`
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`Stated differently, limiting to an entire industry (e.g., clothing stores) creates an
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`indeterminable limit on the number of merchants, because how does one know the number
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`of clothing stores that exist in the entire world on any given day. And an indeterminable
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`number is not a finite number. Since Cohen’s type of charge limitation does not create a
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`reasonable, finite numerical limit to authorize payment and perform a purchase, a type of
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`charge limitation does not anticipate the claim element “one or more merchants.”
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`(b) Cohen’s particular store or a particular chain of stores does not anticipate “one
`or more merchants.”
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`
`
`
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`The examiner also relies on Cohen’s disclosure of limiting use to a particular store
`
`or a particular chain of stores to meet the disputed claim element:
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`Cohen discloses the card can be used for one or more merchants (a
`particular store or a particular chain of stores) and as such the
`payment category at least limits transactions to one or more
`merchants (a particular store or a particular chain of stores). The
`claim does not require when, how, or that the one or more
`merchants is identified but only that the payment category at least
`limits transactions to one or more merchants.17
`
`First, the examiner seems to concede that Cohen’s particular store or chain of stores
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`
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`use limitation cannot be made without first identifying the particular store or chain of
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`stores, which is correct. Second, contrary to the examiner, the claim explicitly states that a
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`particular merchant is not identified as one of the one or more merchants until after the
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`payment category includes the limit to one or more merchants. Since Cohen’s particular
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`                                                            
`17 Action at 9.
`
`
`17
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`D'Agostino, Ex. 2003, p. 20
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`

`

`Control No. 90/012,517
`Docket No. 253.005
`Appeal