Ex Parte 6032859 et al

Patent Trial and Appeal Board

Nov 30, 2012

90011146 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT 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.
90/011,004 10/01/2010 6032859 079301US 4868
27910 7590 12/03/2012
STINSON MORRISON HECKER LLP
ATTN: PATENT GROUP
1201 WALNUT STREET, SUITE 2900
KANSAS CITY, MO 64106-2150
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/03/2012 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CARD ACTIVATION TECHNOLOGIES, INC.
____________

Appeal 2012-012492
MERGED Reexamination Control Nos. 90/011,004 and 90/011,146
Technology Center 3900
____________

Before, JOSIAH C. COCKS, MICHAEL W. KIM, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL

SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, 22-31, and 33-38. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention concerns a counter top terminal system which
activates debit card transactions. (Abstract)
Claims 1 and 20 are illustrative.
1. A method for processing debit purchase transactions, the method
comprising the steps of:
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providing a counter-top terminal having telecommunications means operable
with a computer, at least one keypad for data entry to the computer, a display
responsive to the computer, and a card reader communicating with the computer
for modifying purchasing value of a card in response to card use;
entering transaction data to the computer through keypad data entry;
reading a debit styled card through the card reader for providing card data to
the computer;
entering a customer authorization code for authorizing access to a customer
data base of a host data processor;
entering a clerk authorization code for initiating a debit purchase transaction;
electronically transmitting a transaction request to the host data processor
through the telecommunications means of the counter-top terminal for requesting a
response of approval or disapproval from the host data processor;
receiving a response from the host computer; and
displaying the response from the host data processor for the debit purchase
transaction on the counter-top terminal display.

20. A method for processing debit purchase transactions, the method
comprising the steps of:
providing a counter-top terminal having telecommunications means operable
with a computer, at least one keypad for data entry to the computer, a display
responsive to the computer, and a card reader communicating with the computer
for modifying purchasing value of a card in response to card use;
entering sales transaction data to the computer through keypad data entry by
a clerk;
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entering confirmation of the sales transaction data by a customer;
reading a debit styled card through the card reader for providing card data to
the computer;
entering an authorization code through the keypad for having the computer
initiate communication with a host data processor;
entering a customer authorization code for authorizing access to a customer
data base of a host processor;
entering a clerk authorization code for initiating a debit purchase transaction;
electronically transmitting a transaction request to the host data processor
through the telecommunications means of the counter-top terminal for requesting a
response of approval or disapproval from the host data processor;
receiving a response from the host computer; and displaying the response
from the host data processor for the debit purchase transaction on the counter-top
terminal display.
(Claims Appendix 1 and 6, App. Br.).

THE REJECTIONS
Claims 1-3, 5-6, 9-14, 16-17, 19-20, 22, 24-25, 28-31, 33, 35-36 and 38
were rejected under 35 U.S.C. 102(b) as anticipated by US 5,577,109 (hereinafter
“Stimson”).
Claims 7, 8, 18, 26-27 and 37 were rejected under 35 U.S.C. 103(a) as
unpatentable over Stimson in view of US 5,278,752 (hereinafter “Narita”).
Claims 4, 15, 23 and 34 were rejected under 35 U.S.C. 103(a) as
unpatentable over Stimson in view of US 5,732,136 (hereinafter “Murphree”).

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THE REJECTION OF CLAIMS 1-3, 5-6, 9-14, 16-17, 19-20, 22, 24-25, 28-31, 33,
35-36 and 38 UNDER 35 U.S.C. §102(b)

ISSUE
The positions of the Examiner and Appellant are detailed in the Appeal Brief
filed on January 30, 2012, the Examiner’s Answer mailed on March 23, 2012 and
the Reply Brief filed on May 25, 2012. The primary issues in dispute are whether
the claims recite three distinct codes having three distinct functions and whether, as
properly construed, Stimson discloses the features recited in the claims.

ANALYSIS
Because Appellant argues the patentability of claims 1-3, 5-6, 9-14, 16-17,
19-20, 22, 24-25, 28-31, 33, 35-36 and 38 as a group, we analyze these claims
together, treating claims 1 and 20 as illustrative. Referring to all the claims in this
group, Appellant initially argued that the claim language itself requires the claims
to be construed as possessing three distinctive codes having three distinct
functions. (App. Br. 6). In its Reply Brief, Appellant appears to concede that
claims 1 and 10 recite only two code limitations. (Reply Br. 1-2).
The Examiner contends that the “authorization code” in claims 20 and 29
was simply a generic description for the clerk authorization code and the customer
authorization code, not a third and distinct code. (Ans. 3).1 With this in mind, the
Examiner rejects the above-noted group of claims as anticipated by Stimson.
(Final Rej. 3-5).

1 The pages in the Examiner’s Answer are not numbered. For convenience, we
refer to the pages of the Examiner’s Answer by their location in the document,
counting the title page identified as EXAMINER’S ANSWER as page 1.
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Appellant argues that the Examiner’s rejection of this group of claims relies
on an improper construction of the claim limitations, namely that the general
authorization code is satisfied by the disclosure of a either a clerk authorization
code or a customer authorization code (App. Br. 10-11), and that the disclosure in
Stimson cited by the Examiner of a clerk authorization code is deficient. (App. Br.
11-13). Because the construction of the appealed claims is central to the issues
before us and because at least two of the disputed terms (“customer authorization
code” and “clerk authorization code”) are not mentioned in the specification, we
begin by reviewing the prosecution history.
Prosecution of Application 08/929,993
Appellant’s initial application 08/929,993 (Initial Application) filed on
September 15, 1997 claimed priority to provisional applications 60/025,281 filed
on September 18, 1996 and 60/033,153 filed December 13, 1996. Appellant’s
Initial Application, which led to the March 7, 2000 issuance of US 6,032,859
(hereinafter “Initial ‘859 Patent”), included one claim and no mention of either a
“clerk authorization code” or a “customer authorization code” anywhere in the
claims or specification. On June 22, 1998, Appellant filed a preliminary
amendment adding claims 2-50. (June 22, 1998 Preliminary Amendment.)
Appellant’s June 22, 1998 Preliminary Amendment added independent
application claim 30, which recited a “method for processing debit purchase
transactions” and included, inter alia, the step of “entering an authorization code
through the keypad for having the computer initiate communications with a host
data processor.” (Id. at 6). Appellant also added application claim 31, which
depended from application claim 30 and read as follows:

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31. The method according to claim 30 wherein the
authorization code entering step comprises the steps of:
entering a customer authorization code for
authorizing access to a customer data base of a host
processor; and
entering a clerk authorization code for initiating a
debit purchase transaction.
(Id. at 9).

Appellant took the same approach to newly added independent application
claim 40 and dependent application claim 43, which depended from application
claim 40. (Id. at 8-9). Notwithstanding that the Initial Application made no
mention of a “customer authorization code” and a “clerk authorization code,”
Appellant argued that the newly added claims were fully supported by the
specification and that no new matter was being introduced. (Id. at 11).
The question of whether there exists written description support for the
claimed “customer authorization code” and/or the claimed “clerk authorization
code” is not before us on re-examination. 37 C.F.R. § 1.552(c). However, we
understand the claims were found invalid by the U.S. District Court for the District
of Delaware in Case No. 09-cv-0945 as lacking written description support for the
“clerk authorization code.” The District Court’s decision is on appeal to the Court
of Appeals for the Federal Circuit. (Appeal No. 2011-1528). Appellant appended
its Opening Brief in that appeal to its Appeal Brief in this matter as “Related
Proceedings.” Since the written description issue is not before us and the
“customer authorization code” and “clerk authorization code” are not discussed in
the specification, we construe the claims in accordance with other wording
Appellant points to in the specification and the prosecution history.
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Without commenting on the presence or absence of written description for
the terms “customer authorization code” and “clerk authorization code,” in a non-
final Official Action mailed on March 8, 1999, the Examiner indicated allowable
subject matter in application claims 31, 32, 43 and 44. (“First Official Action”
p.6). With respect to application claims 31 and 43, the Examiner noted that the
cited references (Gutman, Nair and Levine) did not “teach or fairly suggest the
steps of entering a customer authorization access to a customer data base of a host
processor and entering a clerk authorization code for initiating a debit purchase
transaction.” (Id.). While it is true that the Examiner found Gutman disclosed
entering an authorization code through a keypad (Id. at 3), the Official Action does
not state whether the Examiner found the further limitation on the authorizing steps
to recite codes that were not interchangeable or synonymous with each other, as
Appellant asserts. (App. Br. 8).
In an amendment mailed on September 8, 1999 and received on September
13, 1999, Appellant cancelled application 31 and amended application claim 30 by
deleting the step of “entering an authorization code through the keypad for having
the computer initiate communication with a host processor” and inserting the
limitations from application claim 31. (Amendment in Response to First Official
Action p. 2-3). As noted above, application claim 31 recited steps that comprised
the step deleted from application claim 30. Application claim 30 issued as claim 1
of the Initial ‘859 Patent).
Appellant made the same amendments to application claim 40, which issued
as application claim 10, which is also a subject of this appeal. (Id. at 3-4).
In the same amendment, Appellant added claims 51 and 60, which became
issued claims 20 and 29. (Id. at 4-7). These claims recited the deleted subject
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matter from application claims 30 and 40 (Issued claims 1 and 10) i.e., “entering an
authorization code through the keypad for having the computer initiate
communication with the host processor” with the additional subject matter the
Examiner indicated was allowable from application clams 43 and 44, i.e., entering
sales transaction data to the computer through keypad data entry by a clerk and
entering confirmation of the sales transaction data by a customer. (Id., see also,
First Official Action, p. 6).
Issued claims 1 and 20 also included limitations reciting electronically
transmitting a transaction request to the host processor through the
telecommunication means of the counter-top terminal for requesting a response of
approval or disapproval from the host processor, receiving a response from the host
processor and displaying the response from the host data processor for the debit
purchase transaction on the counter-top terminal display. Issued claims 10 and 29
recited the additional steps of communicating with a host data processor through
the telecommunications means of the counter-top terminal for requesting
authorization of the debit purchase transaction, requesting authorization of the
debit purchase transaction from the host data processor and receiving the
authorization.

Prosecution of Reexamination 90/009,459
Issued claims 20-22, 25-33 and 36-38 of the Initial ‘859 Patent were the
subject of an Ex Parte Reexamination proceeding (90/009,459) which occurred
prior to the proceedings which led to this appeal. In Reexamination proceeding
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90/009,459, an Official Action mailed on July 2, 2009 indicated that a third party
requestor had raised a substantial new question of patentability (July 2, 2009
Official Action p. 3), but, citing 37 C.F.R. § 1.552(c), also noted that issues
concerning whether certain claims were not included in the specification as
originally filed was beyond the scope of reexamination. (Id. at 4).
On October 14, 2009, the Examiner in Reexamination proceeding
90/009,459 rejected claims 20-22, 25-33 and 36-38 as anticipated by Narita,
identified in the Request For Reexamination. (Oct. 14, 2009 Official Action p. 2-
3). In response, with respect to claims 20 and 29, Appellant argued that the
customer PIN number in Narita is “part of the customer confirmation feature that
Narita is directed to” and is not an “authorization code through the keypad for
having the computer initiate communication with a host processor.” (Response To
Office Action, mailed by Appellant on Dec. 14, 2009, p. 11). With respect to
claims 21 and 32, Appellant specifically argued that Narita did not disclose a clerk
authorization code or suggest any code that initiates a debit purchase transaction.
(Id. at 13). Appellant added, “An entered authorization code, or clerk
authorization code, initiates communication with a host data processor, and
transaction data is transmitted to the host for approval or disapproval of the
transaction.” (Id.). (emphasis added).
In a final action mailed on May 27, 2010, the Examiner was not persuaded
as to claims 20 and 29, but confirmed the patentability of claims 21 and 32. (May
27, 2010 Official Action p. 9.) In rejecting claims 20 and 29, the Examiner
explained:
the claims themselves show that a PIN entered by a
customer can be part of the authorization code.
Dependent claims 21 and 32 each describe the entering of
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the authorization code further comprises, in part,
“entering a customer authorization code for access to a
customer database of a host processor.” (emphasis
added).
(Id. at 7).
In confirming claims 21 and 32, the Examiner explained:
Each of the claims requires that the step of entering an
authorization code further comprises entering a customer
authorization code and “entering a clerk authorization
code for initiating a debit purchase transaction. (emphasis
added).
(Id.)
Thus, in Reexamination proceeding 90/009,459 the Examiner reasoned that
the step of entering the authorization code in claims 20 and 29 included the two
steps recited in claims 21 and 32, i.e., entering the customer authorization code,
which did not contribute patentable subject matter, and entering the clerk
authorization code, which did contribute patentable subject matter. The Examiner
further noted that the term “clerk authorization code” is not defined in the
specification and is mentioned only in reference to a phone debit card transaction.
(Id.). While we agree with this Examiner that a clerk authorization code is
logically a code by the clerk that authorizes the transaction to proceed, as discussed
further herein, we do not find that the specification indicates the code must link to
a particular merchant.
On June 10, 2010, Appellant responded to the May 27, 2010 Final Action.
Appellant stated that:
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By the proposed amendments to the claims submitted
herein, Patent Owner has amended independent claims
20 and 29 to include the limitations of dependent claims
21 and 32, respectively, and has cancelled dependent
claims 21 and 32. Because the ‘clerk authorization code’
is not taught or suggested by the Narita reference, Patent
Owner believes the proposed amendments render the
remaining claims under consideration in this
reexamination proceeding, and notes that all of the
independent claims in the patent will not include the
“clerk authorization code” limitation. (emphasis added).
(June 10, 2010 Response to Final Action, p.4)
Although Appellant had drafted and prosecuted claims 21 and 32 as steps
further limiting the step of entering a customer authorization code, the amendment
of May 27, 2010 simply added the steps from claims 21 and 32 to claims 20 and 29
without explicitly stating in the claim that these limitations further limited the step
of entering the customer authorization code. (Id.). Amended claims 20 and 29
were then determined to be patentable.

The Current Appeal (Merged Reexamination 90/011,004, and 90/011,046)
In the present Merged Reexamination Appellant now argues that the three
code limitations in claims 20 and 29, amended in previous Reexamination
proceeding 90/009,459, are distinct with each code having a distinct function.
(App. Br. 6, Reply Br. 2). Appellant argues that “entering a customer
authorization code for authorizing access to a customer data base of a host data
processor” is disclosed in the ‘859 patent specification at column 3, lines 33-34;
that “entering a clerk authorization code for initiating a debit purchase transaction”
is disclosed in the specification at column 4, lines 12-13; and that “entering an
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authorization code through the keypad for having the computer initiate
communication with a host data processor” is disclosed in the specification at
column 4, lines 12-14. (App. Br. 4-5) (emphasis omitted).
Two of the three lines in the ‘859 patent disclosure Appellant cites as
disclosing the step of “entering an authorization code through a keypad to initiate
communication with a host processor” overlap with the lines Appellant cites as
disclosing “entering a clerk authorization code for initiating a debit purchase
transaction.” (App. Br.4-5). Column 4, lines 12-13 of the ‘859 patent
specification disclose that a phone debit card is read and the collected amount is
entered and confirmed by the clerk with an authorization number. (Col. 4, ll. 12-
13). According to Appellant, this initiates the debit transaction. (App. Br. 4). As
distinguished from the step of entering a clerk authorization code, Appellant cites
column 4, line 14 of the ‘859 patent specification, which states the main unit
transmits its “‘...terminal ID number.…’” as supporting entering an authorization
code through a keyboard for having the computer initiate communications with the
host data processor. (App. Br. 5). Appellant does not explain how a terminal’s
transmission of an existing terminal ID number constitutes a separate step
involving “entering an authorization code through the keypad.” Nor does
Appellant explain how the clerk’s entering of a clerk authorization code, which
would require a man-machine interface, such as a keypad, and which results in a
terminal ID not under the control of the clerk being transmitted automatically,
constitutes entry of a distinct general authorization code through a keypad. The
portions of the specification cited by Appellant demonstrate only that entering the
clerk authorization code to initiate the transaction also initiates communication
with the host processor by causing the terminal unit to transmit ID information to
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the host. The cited portion specification is silent about whether any terminal ID
information or any other separate authorization code is “entered” anywhere.
In its Opening Brief in its appeal to the Court of Appeals to the Federal
Circuit (Opening Brief p. 8) and in the Appeal Brief (App. Br. 8-9), Appellant
argues that in Reexamination 90/009,459 claims 20 and 29 were amended to
include the use of all three separate transaction codes to complete the claimed
purchase transaction. Appellant takes this position notwithstanding that in
confirming claims 21 and 32 the Examiner in Reexamination 90/009,045 indicated
(i) that “the claims themselves show that a PIN entered by a customer can be part
of the authorization code” and (ii) that “[e]ach of the claims requires that the step
of entering an authorization code further comprises entering a customer
authorization code and entering a clerk authorization code for initiating a debit
purchase transaction.” (May 27, 2010, Official Action p. 9, emphasis added). In
amending claims 20 and 29 to incorporate these limitations, Appellant also
affirmatively represented that it had “amended independent claims 20 and 29 to
include the limitations of dependent claims 21 and 32.” (June 10, 2010, Response
to Final Action, p.4).
Appellant also argued in its Appeal Brief and in its Opening Brief in its
Federal Circuit appeal that “if the reexamination unit had believed that the general
‘authorization code’ was synonymous with the ‘clerk authorization code,’ it would
have rejected the proposed amendments as violating the basic tenet of patent law
that two elements in the same claim cannot perform the same function.” (App. Br.
9, Opening Brief, 45-46). Appellant cites no authority for this “basic tenet” which
does not appear to consider circumstances in which multiple steps are performed to
carry out a single function. As discussed above, in this case Appellant introduced
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the step of “entering the clerk authorization code” into the claims as one of two
steps (the other being entering the customer authorization code) limiting the
broader step of entering an authorization code. (Application 08/929,993, June 22,
1998, Preliminary Amendment).
We look to the specification to provide context. In the overlapping lines of
the specification Appellant cites as disclosing these steps, the clerk enters a code
and the terminal responds by transmitting its terminal ID. The lines in the
specification cited by Appellant state “[a]fter the Phone Debit Card is read and the
collected amount is entered and confirmed by the clerk with an authorization
number 118, the main unit transmits a card number, its terminal ID number and the
amount to the appropriate phone card switch or provider.” (Col. 4, ll. 12-14).
These lines of the specification cited by Appellant do not indicate that the terminal
ID is entered anywhere. Step 118 appears only in Figure 2, which does not show
any codes other than a PIN and a confirmation requested from the customer and an
“authorization code” requested from the clerk. As discussed above, the portions of
the specification cited by Appellant demonstrate only that entering the clerk
authorization code to initiate the transaction also initiates communication with the
host processor by causing the terminal unit to transmit ID information to the host.
Perhaps most relevant to the claim construction is Appellant’s own
admission. Appellant argued in Reexamination 90/009,459 that “[a]n entered
authorization code, or clerk authorization code, initiates communication with a
host data processor, and transaction data is transmitted to the host for approval or
disapproval of the transaction.” (Response To Office Action, mailed by Appellant
on Dec. 14, 2009, p. 11, emphasis added). Here, in order to obtain allowance by
incorporating the step of entering a clerk authorization code to initiate a debit
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purchase, Appellant affirmatively argued that entering the clerk authorization code
performs the function of initiating communications with a host data processor, i.e.,
exactly the same function performed by the claimed step of entering an
authorization code through a keyboard. Thus, Appellant itself confirmed that there
is no distinction in the function performed by entering the authorization code
through a keyboard and entering a clerk authorization code. At best, entering a
clerk authorization code is a step performed in carrying out entering an
authorization code through the keyboard, rather than a separate and distinct
function.
We are mindful of Appellant’s contention in this Appeal that claims 20 and
29 recite three distinct code limitations. (Reply Br. 2). However, taken in context
of the specification and the prosecution history, which includes Appellant’s
explicit admission that the “clerk authorization code” performs the same function
as the more general “authorization code” (Id.), we cannot accept Appellant’s
argument that the “authorization code” in independent claims 20 and 29 “must be
something different” from the combination of codes in original dependent claims
21 and 32, simply because it appears as a separate element in claims 20 and 29.
(Reply Br. 5-6).
The Examiner rejects claim 1 as anticipated by Stimson, finding, inter alia,
that the subject matter forming the basis for patentability in Reexamination
90/009,045, i.e., entering the customer authorization code and entering the clerk
authorization code, is disclosed in Stimson. (Final Rej. 4-5). In rejecting claim 20,
the Examiner finds that Stimson’s disclosure of entering a customer authorization
code and entering a clerk authorization code also anticipates the step of entering an
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authorization code. (Final Rej. 12). We agree with this aspect of the Examiner’s
construction of claim 20 and turn to the substance of the rejection. (Ans. 6).
With respect to “entering a customer authorization code . . . for authorizing
access to a customer database” the Examiner cites column 7, lines 9-10 and lines
13-14 of Stimson, which disclose that the user may enter a personal code number
(PIN number) and that the host computer checks the database. (Final Rej. 4-5, 12).
With respect to “entering a clerk authorization code for initiating a debit purchase
transaction,” the Examiner cites column 7, lines 2-3 of Stimson, which disclose
that the seller or user is prompted to enter the security code. (Final Rej. 5, 12).
Alternatively, the Examiner cites Figure 3 of Stimson for disclosing that the seller
presses different buttons to sell a new card, recharge a card or void a transaction.
(Id.).
Appellant argues that Stimson does not teach the key limitation of a clerk
authorization code for initiating a debit purchase transaction. (App. Br. 12-13).
Appellant contends that Stimson fails to disclose the features of a clerk
authorization code because the code in Stimson is not to some degree proprietary
to the clerk, as allegedly suggested by the term itself and the specification. (Id.).
Appellant emphasizes that the term “clerk authorization code” “refers to a parcel of
information or data which has the characteristics of a ‘code’ and which further has
the characteristic that it is proprietary to some degree related to authority, in
particular with respect to the clerk (i.e., ‘authorization’).” (Id. at 12). Appellant
also argues that there is an element of security secrecy and proprietary information
which is inseparable from the term “authorization. (Id.). The Examiner points out
that neither the specification nor the claims make mention of any proprietary
aspect of the claimed clerk authorization code. (Ans. 11)
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As previously noted Appellant cites to column 4, lines 12-13 of the ‘859
patent as disclosing the claimed “clerk authorization code.” (App. Br. 4). The
cited portion of the specification makes no mention of a “code” but instead states
that “the collected amount is entered and confirmed by the clerk with an
authorization number.” (Col. 4, ll. 12-13). Nothing in the cited portion of the
specification discusses the source of the authorization number or its parameters.
Nothing in this disclosure of an authorization number indicates that the
authorization number is in any way proprietary to the clerk. The specification
simply states that after the after the collected amount is entered and confirmed by
the clerk with an authorization number, the main unit transmits the card number,
the terminal ID, etc. (Col.4, ll. 12-14). Thus, “authorization” in the context of the
specification simply means entering a number that permits the transaction to
proceed.
Appellant does not appear to dispute that Stimson’s disclosure of a customer
entered PIN constitutes entering a customer authorization number as recited in the
present claims. At col. 7, lines 2-5 Stimson also discloses that the seller or user is
prompted to enter a security code from the back of the card, using a magnetic card
reader, manual entry or other method. Since Stimson discloses that the number can
be entered by the seller, we agree with the Examiner that this action constitutes
entry of a clerk authorization code. Because Appellant’s specification is silent as
to the source of the authorization number, we would reach the same conclusion
even if we agreed with Appellant’s argument that there is a level of security
associated with the claimed entering of a clerk authorization code. Thus, we agree
with the Examiner that Stimson discloses the claimed clerk authorization code and
anticipates claims 1 and 20, as properly construed.
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Stimson also discloses that entry of the security code enables access to the
main processor via a dedicated purchasing network or other well-known type of
communications method (col. 7, ll. 5-8) and that the system keeps track of the
security number and the identification of the authorizing terminal (See, col. 2, l.
67- col. 3, l. 5; col. 6, ll. 45-65). Thus, Stimson discloses that entering the clerk
authorization code functions to initiate the transaction and, because a terminal ID
would be transmitted to the host processor, initiates communication with the host.
Thus, even under Appellant’s proposed construction of claim 20, as Appellant
argues is supported by the specification and which we decline to adopt, we would
still hold claim 20 anticipated by Stimson.
We thus affirm the rejection of claims 1-3, 5-6, 9-14, 16-17, 19-20, 22, 24-
25, 28-31, 33, 35-36 and 38 as anticipated by Stimson.

THE REJECTIONS UNDER 35 U.S.C. § 103
Appellant argues that dependent claims 7, 8, 26, 27, and 37 are not obvious
over the combination of Stimson and Narita because independent claims 1, 10, 20
and 29 are patentable. We have affirmed the rejections of claims 1, 10, 20 and 29.
In the absence of further argument distinguishing these claims 7, 8, 26, 27 and 37,
we affirm the rejection of these claims as well.
Appellant argues that dependent claims 4, 15, 23 and 24 are not obvious
over the combination of Stimson and Murphree because independent claims 1, 10,
20 and 29 are patentable. We have affirmed the rejections of claims 1, 10, 20 and
29. In the absence of further argument distinguishing these claims 4, 15, 23 and
24, we affirm the rejection of these claims as well

Appeal 2012-012492
MERGED Reexamination Control Nos. 90/011,004 and 90/011,146

19

ORDER
The rejection of claims 1-3, 5-6, 9-14, 16-17, 19-20, 22, 24-25, 28-31, 33,
35-36 and 38 under 35 U.S.C. 102(b) as anticipated by Stimson is affirmed.
The rejection of claims 7, 8, 18, 26-27 and 37 under 35 U.S.C. 103(a) as
unpatentable over Stimson in view Narita is affirmed.
The rejection of claims 4, 15, 23 and 34 under 35 U.S.C. 103(a) as
unpatentable over Stimson in view of Murphree is affirmed.

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R § 1.136(a)(1)(iv).

AFFIRMED

Rvb

PATENT OWNER

STINSON MORRISON HECKER LLP
ATTN: PATENT GROUP
1201 WALNUT STREET, SUITE 2900
KANSAS CITY, MO 64106-2150

THIRD PARTY REQUESTERS

TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
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PATRICK J. LEE
KAYE SCHOLER LLP
Appeal 2012-012492
MERGED Reexamination Control Nos. 90/011,004 and 90/011,146

20

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