Ex Parte White

Board of Patent Appeals and Interferences

Feb 25, 2009

09678885 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL F. WHITE
____________

Appeal 2009-1640
Application 09/678,885
Technology Center 3600
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Decided:1 February 25, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1640
Application 09/678,885

STATEMENT OF THE CASE
Daniel F. White (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 4-6, 9 and 10. Claims 11, 14-16, 19, and
20 have been withdrawn and claims 2, 3, 7, 8, 12, 13, 17, and 18 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION

We AFFIRM.2
THE INVENTION
The invention relates particularly to “electronic purchase receipts
associated with electronic purchase transactions conducted in an
environment of networked electronic devices, particularly computers.”
Specification 2:4-5.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of processing a purchase transaction
on a retail terminal, comprising the steps of:
acquiring purchase transaction data with a
retail terminal as a result of a purchase transaction
being performed on the retail terminal;
formatting the acquired purchase transaction
data into a digital receipt with the retail terminal;
receiving at the retail terminal input from a
person at the retail terminal that selectively

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 21, 2008) and Reply Brief (“Reply Br.,” filed Jul. 22, 2008),
and the Examiner’s Answer (“Answer,” mailed May 22, 2008).
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identifies purchase transaction datum for omission
from the digital receipt;
selectively omitting the identified purchase
transaction datum from the digital receipt to
generate a personalized digital receipt;
forwarding the personalized digital receipt
by the retail terminal over a network that is in
communication with the retail terminal to a device
associated with the person who identified the
purchase transaction datum for omission from the
digital receipt; and
transmitting the digital receipt to a storage
location for a merchant.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Rodriguez US 7,158,948 B1 Jan. 2, 2007

The Examiner also relied on Official Notice “that retail terminals used
with electronic cards has been common knowledge in the art.” Answer 3.

The following rejection is before us for review:
1. Claims 1, 4-6, 9 and 10 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rodriguez and Official Notice.3

3 Although the statement of the rejection in the Answer (p. 3) cites only
Rodriguez as prior art against the claims, Official Notice is clearly relied
upon in the subsequent analysis of the rejection. See Answer 3.
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ISSUES OF LAW
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 4-6, 9 and 10 under 35 U.S.C. § 103(a)
as being unpatentable over Rodriguez and Official Notice. The issue turns
on whether Rodriguez would lead one of ordinary skill in the art to employ a
“terminal” as claimed given its disclosure of using an electronic card and
card reader.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 1 is drawn to a method of processing a purchase transaction
on a retail terminal. The claimed method comprises six steps.
2. The first step of the claimed method calls for “acquiring purchase
transaction data with a retail terminal as a result of a purchase
transaction being performed on the retail terminal.”
3. The Specification does not provide a definition for “terminal” that
is inconsistent with its ordinary and customary usage. According
to the Specification (e.g., p. 12), a retail terminal encompasses
“various retail terminals [that] accept payment for the goods in
whatever form (i.e. cash, credit, debit, check, money order, etc.)
through payment acceptor units as are known in the art such as,
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cash acceptors, magnetic strip readers (MSRs), smart card readers,
and the like.” Specification 12:12-15.
4. The second step of the claimed method calls for “formatting the
acquired purchase transaction data into a digital receipt with the
retail terminal.”
5. According to the Specification, “[t]he retail terminals may also
perform formatting of the transaction data into various forms
depending on the relationship/role of the retail terminal (110, 112)
[referring to Fig. 1] to/with the instore processor 116. The retail
terminal typically processes the transaction data into an electronic
or digital form (e.g., an electronic or digital purchase transaction
record) for transmission over the network 114 to the instore
processor 116.” Specification 12:15-20.
6. According to the Specification, “[f]ormatting and/or encoding of
the transaction receipt may take many forms, of which many are
known.” Specification 25:16-17.
7. An example of a digital receipt is shown in Fig. 4. “The digital
receipt 160 may include the name of the merchant, retailer, store,
or type of business and/or like 162 (collectively “store”) and the
time and date 164. ... The receipt 160 further contains a payment
area 174 that includes the mode or method of payment used by the
consumer (i.e. cash, check, credit card, debit card, etc.). If
necessary, an amount tendered area and change due area are also
included.” Specification 26:5-19.
8. The third step of the claimed method calls for “receiving at the
terminal input from a person at the retail terminal that selectively
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identifies purchase transaction datum for omission from the digital
receipt.”
9. According to the Specification, referring to Figs. 1 and 10, “[i]n
block 306, the consumer is allowed the option of omitting or
deleting certain transaction datum from the digital receipt.”
Specification 37:13-15.
10. The fourth step of the claimed method calls for “selectively
omitting the identified purchase transaction datum from the digital
receipt to generate a personalized digital receipt.”
11. According to the Specification, referring to block 306 of Fig. 10,
“the consumer is allowed to omit certain transaction datum from
the digital receipt that is transmitted to him/her ... .” Specification
37:15-16.
12. The fifth step of the claimed method calls for “forwarding the
personalized digital receipt by the retail terminal over a network
that is in communication with the retail terminal to a device
associated with the person who identified the purchase transaction
datum for omission from the digital receipt.”
13. According to the Specification, referring to Fig. 12, “[t]he digital
receipt is typically transmitted to the consumer who made the
purchase ... .” Specification 39:21-22.
14. The Specification exemplifies a personal computer having a
modem as a device in communication with the retail terminal
(Specification 22:21) as part of in-home shopping environment
(Specification 23:7-8).
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15. The last step of the claimed method calls for “transmitting the
digital receipt to a storage location for a merchant.”
16. According to the Specification, referring to Fig. 12, “[t]he digital
receipt is typically transmitted ... the to [sic, to the] merchant who
made the sale.” Specification 39:22-23.
The scope and content of the prior art
17. Rodriguez relates to electronic receipts; i.e., “electronically
transferring proofs of purchase or other documents related to
commercial transactions.” Col. 2, ll. 10-12.
18. Rodriguez describes a safe card (Figs. 1A-1B), an electronic card
implemented in various forms such as an optical card (100 in Fig.
1A) or a smart card (Fig. 2A).
19. “A safe card is a writable/readable media whose integrity is
assured through a digital signature ... .” Rodriguez, col. 3, ll. 23-24.
20. “To read and write to the safe card, the safe card may be swiped
through a read/write machine by a manual action.” Rodriguez, col.
3, ll. 27-29. “[A] safe card may also be inserted into an optical card
machine in a manner similar to inserting an automated teller
machine (ATM) card into an ATM, in which case the optical card
machine may hold the card until the end of the transaction.”
Rodriguez, col. 3, ll. 35-39.
21. Rodriguez discloses acquiring purchase transaction data as a result
of a purchase transaction being performed with the safe card (col.
4, ll. 35-37 and 60-62) and formatting the acquired purchase
transaction data into a digital receipt with the safe card (col. 4, ll.
45-59).
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22. Rodriguez discloses input from a person at the safe card to
selectively identify purchase transaction datum for omission from
the digital receipt. See col. 4, ll. 47-50: “The e-receipt application
on the smart card may provide the user with the ability to
selectively edit and delete purchase information stored on the
smart card.”
23. Rodriguez discloses a display attached to the safe card. See Fig.
2B. Also, in describing Fig. 3A, for example, which shows a data
processing system depicting the use of e-receipts, the Specification
states that “[t]he user receives useful information from safe card
310 through user output 314.” Col. 6, ll. 16-17.
24. Accordingly, Rodriguez discloses forwarding the digital receipt by
the safe card that is in communication with the safe card to a
device associated with the person who identified the purchase
transaction datum for omission from the digital receipt.
25. Rodriguez discloses transmitting the e-receipt to a merchant server.
Col. 6, ll. 30-35.
26. Accordingly, Rodriguez discloses transmitting a digital receipt to a
merchant location.
Any differences between the claimed subject matter and the prior art
27. The claimed subject matter involves the use of a “terminal” while
Rodriguez discloses the use of a safe card but otherwise Rodriguez
discloses the claimed operations to form and transmit digital
receipts.
The level of skill in the art
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28. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of processing digital transactions.
We will therefore consider the cited prior art as representative of
the level of ordinary skill in the art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (“[T]he absence of
specific findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)).
29. It is within the knowledge of one of ordinary skill in the art that
networks transmit digital information to displays and servers.
30. It is within the knowledge of one of ordinary skill in the art that
servers store data.
31. “Applicant concedes that one of ordinary skill in the art knows that
retail terminals have been used with electronic cards.” Reply Br. 2.
Secondary considerations
32. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
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During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). “[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation. As
this court has discussed, this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
Further, as applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee. Am. Acad., 367 F.3d at 1364.” In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Limitations appearing in the
specification but not recited in the claim are not read into the claim. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented 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.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). 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, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
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factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The Appellant argued claims 1, 4-6, 9 and 10 as a group (App. Br. 4-7
and Reply Br. 2-3). We select claim 1 as the representative claim for this
group, and the remaining claims 4-6, 9 and 10 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant’s major argument is that Rodriguez is directed to the
use of an electronic card, not a retail terminal. See, e.g., Reply Br. 2:
Yes, Applicant concedes that one of ordinary skill
in the art knows that retail terminals have been
used with electronic cards. That concession,
however, does not concede that the teachings of
Rodriguez are immediately applicable to retail
terminals as set forth in Applicant's claims. Indeed,
one of the arguments made by Applicant is that the
card of Rodriguez provides the ability to edit data
with mechanisms on the card so why would one of
ordinary skill in the art modify a terminal to do
what one can already do with the card of
Rodriguez?
The argument is not persuasive as to error in the rejection because the
broadest reasonable construction of the claim in light of the Specification as
it would be interpreted by one of ordinary skill in the art is such that the
“terminal” recited in the claim encompasses the combination of the
electronic card and card reader that Rodriguez discloses. “Analysis begins
with a key legal question -- what is the invention claimed? Courts are
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required to view the claimed invention as a whole. 35 U.S.C. § 103. Claim
interpretation, in light of the specification, claim language, other claims,
and prosecution history, is a matter of law and will normally control the
remainder of the decisional process.” Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561 (Fed. Cir. 1987).
The Specification describes examples of terminals useful in the
invention and includes “smart card readers.” FF 3. Rodriguez expressly
describes smart card readers. FF 20. Accordingly, the “terminal” recited in
the claim encompasses Rodriguez’s card reader.
Furthermore, the claim broadly covers any mechanism within the
“terminal” for conducting the steps of the claimed method. In that regard,
the method claimed is not limited so as to exclude the use of an electronic
card situated in the card reader whereby card reader conducts the steps of the
claimed method via the electronic card. Nowhere in the claim is there a
limitation which excludes the use of electronic cards of the type that
Rodriguez discloses. Nor is the method claim limited such that the recited
steps could not be performed via an electronic card situated within the card
reader. Given the broadest reasonable construction of the claim, the claim
encompasses the use of the combination of a card reader and an electronic
card, whereby the steps of the claimed method are conducted via the
electronic card.
In light of this construction of the claim, because Rodriguez discloses
the combination of a card reader and an electronic card, the steps of the
claimed method being conducted via the electronic card, Rodriguez would
lead one of ordinary skill in the art to employ a “terminal” such as the one
recited in the claim.
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The Appellant also argues that “What was not known was the
modification of the receipt by a person, such as the customer, at the purchase
site with the retail terminal before the receipt is sent to a device associated
with the person who provided the modification data. Rodriguez does not
enable modification of the receipt by a person, such as a customer, at the
purchase site with the retail terminal before the receipt is sent to a device
associated with the person who provided the modification data.” App. Br. 6.
This argument is not persuasive as to error in the rejection.
As to modifying the receipt at a purchase site, this is not provided for
in the claim. The claim calls for identifying purchase transaction datum for
omission and selectively omitting the identified purchase transaction datum
from the digital receipt and forwarding the receipt to the person identifying
purchase transaction datum for omission. Rodriguez discloses acquiring
purchase transaction data and providing the user with the ability to
selectively edit the purchase information on the card. FF 21 and 22.
Rodriguez further discloses a user output for the information on the card.
FF 23. To one of ordinary skill in the art, in providing an output for
information, including a receipt, on an electronic card for a user who has
been given the ability to selectively edit the purchase information on the
card necessarily allows the user who made the modification to receive the
modified result.
For the foregoing reasons, we find that the Appellant has not shown
error in the rejection of claim 1. We reach the same conclusion as to claims
4-6, 9 and 10 which have not been separately argued but which stand or fall
with claim 1.

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CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1, 4-6, 9 and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Rodriguez and Official Notice.

DECISION
The decision of the Examiner to reject claims 1, 4-6, 9 and 10 is
affirmed.
AFFIRMED

JRG

PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
1700 S. PATTERSON BLVD.
DAYTON, OH 45479-0001
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