Ex Parte Signorelli et al

Patent Trial and Appeal Board

Sep 29, 2017

13365962 (P.T.A.B. Sep. 29, 2017)

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.
13/365,962 02/03/2012 Paul D. Signorelli 05-009-Cl 8627
22927 7590 10/03/2017
Walker Innovation Tne
EXAMINER
Two High Ridge Park
Stamford, CT 06905
COLLINS, MICHAEL
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
10/03/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
iplegal@patentproperties.com
docketing @ finchamdowns. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL D. SIGNORELLI, SIH Y. LEE, PAUL T. BREITENBACH,
DANIEL E. TEDESCO, and DEAN P. ALDERUCCI
Appeal 2015-003573
Application 13/365,962
Technology Center 3600
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul D. Signorelli et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—5, 7—15, and
17—20, which are all the pending claims, under 35 U.S.C. § 102(e) as
anticipated by Pavlic (US 2005/0228720 Al, pub. Oct. 13, 2005). See
Appeal Br. 1, 9; Final Act. 5—10. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Inventor
Holdings, LLC. Appeal Br. 3.
Appeal 2015-003573
Application 13/365,962
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to “facilitating the sale and
distribution of wireless access to a communications network through a
vending machine,” where the vending machine “may also be configured to
dispense one or more physical products, such as snacks and drinks.” Spec.
17. Claims 1 and 11 are independent. Claim 1, reproduced below with
emphasis added, is illustrative of the subject matter on appeal.
1. A method, comprising:
receiving, by a vending machine and from a customer, an
indication of a product for which a unit is desired to be
purchased by the customer from the vending machine;
receiving, by a receiver device of the vending machine
and from a portable electronic device of the customer, a
wireless signal indicative of an account identifier of the
customer,
transmitting, by the vending machine and in response to
the receiving of the wireless signal, an indication of the account
identifier of the customer to a remote network device;
receiving, by the vending machine in response to the
transmitting and from the remote network device, an indication
that a payment, by the customer and for the desired unit of the
product, is validated; and
providing, by the vending machine and in response to the
indication of the payment validation, the unit of the product to
the customer.
ANALYSIS
Each of independent claims 1 and 11 recites, in relevant part, a
method that includes a step of “receiving, by a receiver device of the vending
machine and from a portable electronic device of the customer, a wireless
signal indicative of an account identifier of the customer.'1'’ Appeal Br.,
2
Appeal 2015-003573
Application 13/365,962
Claims App. (emphasis added). In rejecting the claims, the Examiner finds
that Pavlic discloses a method that includes such a step. Final Act. 5, 8
(both citing Pavlic 1 56).
Appellants persuasively assert, however, that Pavlic is deficient in
disclosing such a receiving step, at least because Pavlic’s method involves a
central payment processing center (not the vending machine) receiving
any/all customer account information for verification, authentication, and/or
reconciliation; the vending machine never receives any such customer
account information from any portable electronic device of the customer.
Appeal Br. 12; see id. at 11—13; Reply Br. 2—10. In response, the Examiner
takes the position that Pavlic’s paragraph 56 discloses an account identifier
being transmitted to the vending machine because the transmission data
(which is actually from the central payment processing center, albeit via the
portable electronic device of the customer) “includes a ‘digital signature.’”
Ans. 11; see id. at 8—13. However, we agree with Appellants that this digital
signature is no more than verification data; there is no disclosure in Pavlic
that it would be “indicative of an account identifier of the customer,” as
required by the claims.
In short, we agree with Appellants that the Examiner has not
established by a preponderance of the evidence that Pavlic discloses, either
expressly or inherently, a method that includes a step of “receiving, by a
receiver device of the vending machine and from a portable electronic
device of the customer, a wireless signal indicative of an account identifier
of the customer,” as recited in the claims. See Appeal Br. 11—13.
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Appeal 2015-003573
Application 13/365,962
Accordingly, based on the record before us—because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims—we do not sustain the rejection of independent
claims 1 and 11, and their associated dependent claims 2—5, 7—10, 12—15,
and 17—20, as anticipated by Pavlic.2
DECISION
We REVERSE the Examiner’s rejection of claims 1—5, 7—15, and
17—20 under 35 U.S.C. § 102(e) as anticipated by Pavlic.
REVERSED
2 We note that any consideration of what one of ordinary skill in the art
may deem obvious regarding possible changes to how data is transmitted in
Pavlic’s payment method is immaterial to the anticipation rejection made
here and before us for review. We further note that the Patent Trial and
Appeal Board is a review body, rather than a place of initial examination,
and we therefore decline to make a determination of what one of ordinary
skill in the art may conclude; rather, we leave it to the Examiner to
determine the appropriateness of any further course of action based on such
a conclusion should there be further prosecution of this application. See Ex
Parte Frye, 94 USPQ2d 1072, 1075-77 (BPAI 2010) (precedential).
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