Ex Parte FreenyDownload PDFPatent Trial and Appeal BoardJun 16, 201411018176 (P.T.A.B. Jun. 16, 2014) Copy Citation 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. 11/018,176 12/21/2004 Charles C. Freeny JR. 2551.202 7156 30589 7590 06/17/2014 DUNLAP CODDING, P.C. PO BOX 16370 OKLAHOMA CITY, OK 73113 EXAMINER WINTER, JOHN M ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 06/17/2014 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHARLES C. FREENY, JR. ____________ Appeal 2012-002082 Application 11/018,176 Technology Center 3600 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1, 28, and 29. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention relates to a proximity service provider system (PSPS) that allows users to access proximity services (e.g., toll gates, gas pumps, kiosks, pay phones, vending machines) and owners of proximity service systems to get paid without having to have separate Appeal 2012-002082 Application 11/018,176 2 communication networks (Spec. [0003]). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. A method for providing a predetermined service, comprising the steps of: [1] receiving a request for a predetermined service and a cyber card code by a proximity service system; [2] locally approving the cyber card code by the proximity service system utilizing a cipher algorithm; [3] providing, by the proximity service system, a predetermined service in response to approving the cyber card code; and [4] outputting information to a proximity service provider computer system indicating usage of the proximity service system. THE REJECTION The Examiner relies upon the following as evidence in support of the rejection: Maes US 6,016,476 Jan. 18, 2000 Withrow US 6,116,505 Sep.12, 2000 The following rejection is before us for review: 1. Claims 1, 28, and 29 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Withrow and Maes. FINDINGS OF FACT We find that the following findings cited in the Analysis section below are supported at least by a preponderance of the evidence.1 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-002082 Application 11/018,176 3 ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the cited prior art fails to disclose claim limitation [2] (App. Br. 4-5; Reply Br. 5-10). In contrast, the Examiner has determined that the cited claim limitation [2] is found in Maes at column 11, lines 9-40 and column 13, lines 19-39 (Ans. 6, 8). We agree with the Appellant. Claim limitations [2], [3], and [4] require: [2] locally approving the cyber card code by the proximity service system utilizing a cipher algorithm; [3] providing, by the proximity service system, a predetermined service in response to approving the cyber card code; and [4] outputting information to a proximity service provider computer system indicating usage of the proximity service system. (Claim 1, emphasis added). Thus, claim limitation [2] requires that the proximity service system locally approve the cyber card code utilizing a cipher algorithm. Claim limitation [3] provides the proximity service in response to local approval and claim limitation [4] outputs information to a proximity service provider computer system that indicates usage of the proximity service system. Here, the citations to Maes at column 11, lines 9-40 and column 13, lines 19-39 fail to specifically disclose claim limitation [2]. Maes at column 11, lines 9-40 describes locally determining whether a digital certificate is still valid, but this is only a portion of the approval process. Maes at column 11, lines 9-40 relates to a portion of the security process performed after a biometric verification and prior to accessing credit card information stored Appeal 2012-002082 Application 11/018,176 4 in Maes’ portable information and transaction processing device (col. 2:23- 59 and col. 11:9-40). As shown for example in Fig. 5, in Mayes the approval process is completed by sending the information to the financial institution (step 220) and this step is not performed locally. Maes at column 13, lines 19-39 further describes this additional level of security for user verification, but is also not related to locally approving a cyber code by the proximity service system for providing a proximity service as the claim requires. Apparently recognizing this deficiency, the Examiner argues in the Examiner’s Answer that the cited limitation [2] is also found in Withrow at column 10, line 58 to column 11, line 4 (Ans. 7-8). However, Withrow at column 10, line 58 to column 11, line 4 fails to specifically disclose cited limitation [2]. While Withrow at column 10, lines 61-62 does describe that control of Withrow’s system may be distributed in varying degrees throughout its various systems, Withrow clearly discloses its fuel dispenser, relies on remote systems for credit approval (see e.g., col. 7:50-52, col. 9:26- 30, col. 9:67-10:20, col. 11:28-29, col. 12:2-7, col. 12:25-40). That is, Withrow fails to disclose providing a predetermined service in response to locally approving a cyber card code by the proximity service system, as the claim requires. The Examiner has also asserted that the Specification does not provide a lexicographic definition for the term “locally,” and as such, “the authentication process can be performed at any machine along the network, such as the dispenser” in Withrow (Ans. 8-9). However, claim limitation [2] recites “locally approving the cyber card code by the proximity service Appeal 2012-002082 Application 11/018,176 5 system utilizing a cipher algorithm” and Appellant’s Specification at paragraph [0025] describes “authoriz[ing] services locally at the service location (or proximity service system) with out [sic] having to get remote authorization each time a service or product is delivered” (emphasis added), which reasonably limits the local approval to being performed at the proximity service system, and explicitly excludes any form of remote authorization. However, even if we were to agree with the Examiner that the term “locally” is broad enough to encompass the entire fueling and retail network disclosed in Withrow, i.e., consider Withrow’s dispenser control system 80 which is in communication with central control system 50 (col. 7:50-52) as one local system, Withrow at column 9, line 67 to column 10, line 4 still discloses that its central control system contacts a remote host to obtain approval or authorization, and as such, cannot reasonably be relied on to address claim limitation [2]. For these reasons the rejection of claim 1 and its dependent claims 28 and 29 is not sustained. DECISION The Examiner’s rejection of claims 1, 28, and 29 is reversed. REVERSED pgc Copy with citationCopy as parenthetical citation