Walker, Jay S. et al.

Patent Trials and Appeals Board

Jan 15, 2020

13619743 - (D) (P.T.A.B. Jan. 15, 2020)

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.
13/619,743 09/14/2012 Jay S. Walker 058407/426816 3816
826 7590 01/15/2020
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/15/2020 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAY S. WALKER, ANDREW S. VAN LUCHENE,
DANIEL E. TEDESCO, and JOSHUA D. ROGERS

Appeal 2019-001277
Application 13/619,743
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Groupon, Inc.
Appeal Br. 2.
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STATEMENT OF THE CASE
Claims 1–23 stand finally rejected by the Examiner under pre-AIA 35
U.S.C. § 103(a) as obvious in view of Smith et al. (WO 97/28510, published
Aug. 7, 1997) (“Smith”) and Van Luchene et al. (US 6,687,679 B1, issued
Feb. 3, 2004) (“Van Luchene”). Final Act. 2.
Claim 1, which is representative, is reproduced below (bracketed
numbering has been added for reference to the claim limitations):
1. A method comprising:
[a] determining, by a license plate scanning unit, an
account number based on an identification of a license plate of
a vehicle that is physically present at a location of a merchant;
[b] determining, by the processor, an identity of an
account holder associated with the license plate number;
[c] in response to determining the identity of the account
holder associated with the license plate number, displaying an
indication of the identity of the account holder;
[d] in response to displaying the indication of the identity
of the account holder, receiving confirmation via a user
interface that the account holder is physically present at the
location of the merchant;
[e] retrieving frequent shopper data associated with the
account holder;
[f] determining, by a processor, based on the frequent
shopper data, information identifying an identifier representing
an item or service of at least one previous order associated with
the account holder and one or more contractual terms of the at
least one previous order associated with the account holder;
[g] displaying the identifier and the one or more
contractual terms of the at least one previous order associated
with the account holder;
[h] receiving an instruction from the account holder to
purchase the item or service according to the contractual terms
of the at least one previous order; and
[i] consummating the purchase in accordance with the
received instruction.
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REJECTION
The Examiner found that Smith described all the steps recited in claim
1, but not [a] “determining, by a license plate scanning unit, an account
number based on an identification of a license plate of a vehicle that is
physically present at a location of a merchant” and [b] “determining, by the
processor, an identity of an account holder associated with the license plate
number.” Final Act. 3–5.
The Examiner found that Smith describes “determining an account
number based on an identification of an account holder associated with an
account number,” but does not specifically disclose using a license plate
number to determine the account number. Id. However, the Examiner
found that Van Luchene discloses using a scan of a license plate to
determine an account number. Id. The Examiner determined that it would
have been obvious to one of ordinary skill at the time of the invention to use
the license plate identification unit of Van Luchene in the invention of Smith
because “there are a limited number of predictable ways to identify a user
and performing license plate identification is one such predictable way.” Id.

Discussion
Appellant contends that the pending claims are not obvious over the
combination of Smith and van Luchene. Appellant’s arguments are
addressed below.
1. “[H]ow would one even use a license plate reader in connection
with a device having the form factor of a vending machine?”
Appellant states that Smith is directed to a system for electronic
ordering and vending systems. Appeal Br. 8. In contrast, Appellant states
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that Van Luchene “describes a wholly unrelated system that may in some
embodiments include a license plate reader system 500.” Id. at 9. Appellant
asks “how would one even use a license plate reader in connection with a
device having the form factor of a vending machine?” Id.
This argument is not persuasive. The license plate reader from Van
Luchene was cited by the Examiner as an identification method that could be
used in Smith’s method to identify account holders in Smith’s method.
Final Act. 2. Appellant questions how the license plate would be used with
a vending machine. Appeal Br. 9. To the extent that a vending machine is
used in Smith’s method, the method would work like this: the license plate
reader scans and identifies the user, the user confirms their identity and
presence at the merchant (step [d] of claim 1; Final Act. 4), and then walks
to where the vending machine is situated to obtain the item. Appellant
raised the question without explaining why one of ordinary skill in the art
could not use the two together. Thus, this argument is unavailing.

2. Are the publications analogous prior art to the claimed invention?
Appellant correctly stated that the cited prior art must be analogous to
the claimed invention and faults the Examiner for not making such a finding.
Reply Br. 3 (fn. 1). We find this argument to have no merit because Smith,
Van Luchene, and the claimed invention relate to sales and therefore are
analogous and pertinent to each other. Thus, even if an error was made by
the Examiner in the statement of the legal analysis, Appellant did not
demonstrate that this error should result in reversal of the rejection.

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3. Is there a legally sufficient rationale to support the obviousness
rejection?
Appellant contends that the Examiner did not articulate sufficient
reason that would have prompted one of ordinary skill in the art to modify
Smith in the manner asserted. Appeal Br. 9–10. Appellant argues “why
would a person having ordinary skill in the art waste the time to jettison a
perfectly good account holder identification method in favor of the proffered
license plate mechanism from Van Luchene?” Id. at 10. Appellant asserts
that “[n]o rationale appears in the record and Appellant is aware of no
evidence suggesting that that the proffered combination would produce any
actual benefit to the Smith system.” Id.
This argument is not persuasive. The Examiner stated that the
“rational[e] for including such an identification unit is that there are a
limited number of predictable ways to identify a user and performing license
plate identification is one such predictable way.” Final Act. 3. The
Examiner’s rationale is legally sufficient. As held in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007):
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. .
. . [A] court must ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
Thus, the license plate scanner had been used in Van Luchene to
improve identification, and thus it would have obvious have used it for its
“established function[ ]” in Smith’s system. Appellant’s argument,
particularly in the Reply Brief, indicates that other identification means are
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disclosed in Smith and known in the prior art. Reply Br. 4–5. However, the
fact that other ways of identifying an account holder are known, does make
the use of Van Luchene’s method in Smith’s method any less obvious when
it is being used for its established function.

4. Is there a reasonable expectation of success?
An obviousness determination requires finding both that a skilled
artisan would have been motivated to combine the teachings of the prior art
and that the skilled artisan would have had a reasonable expectation of
success in doing so. Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
821 F.3d 1359, 1367 (Fed. Cir. 2016). Appellant contends that “there are
many reasons to think that the proffered combination would not be expected
to succeed.” Appeal Br. 11. We address Appellant’s arguments below.
A. “[M]any different people might be authorized to drive a given
vehicle (e.g., two or more members of a family), and a license plate would
presumably only identify some fraction of those people.” Appeal Br. 11.
While it is true that the occupant of the car is not necessarily the
account holder associated with the license plate, this does not mean that the
method would not be expected to work. The claim requires [b] determining
“an identity of an account holder associated with the license plate number,”
[c] displaying the identity of the account holder, and then [d] “receiving
confirmation via a user interface that the account holder is physically present
at the location of the merchant.” Thus, in step [d] of the claim, there is
confirmation that the account holder is at the merchant location. If the
driver of the car is not the account holder associated with the license plate,
the account holder does not confirm they are “physically present at the
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location of the merchant.” The claimed method therefore expressly covers
instances where the driver is not the account holder by requiring
confirmation of the presence of the account holder.
B. “[I]t is not clear that a private entity would even be allowed access
to license plate identification records, which are typically handled by state
governments.” Appeal Br. 11. “How would one go about acquiring the
necessary access rights to the data?” Id.
The claim does not require that the license plate information be
obtained from a state government source. Account holders can voluntarily
provide their license plate in order to participate in the license plate scanning
method of identifying account holders. Ans. 5.
Appellant responds that “[e]ven if the pending claims do not require
obtaining license plate identification records by a private entity, it is
nevertheless true that a typical operator of the order kiosk of Smith is a
private entity, a fact that reduces motivation of a person having ordinary
skill in the art to combine the order kiosk.” Reply Br. 6. Appellant does not
explain why the “motivation” to use license plate identification would be
reduced because Smith is a private entity. There is no indication that Van
Luchene’s method is not a private entity and yet it used license
identification. Thus, Appellant’s own argument is defeated by the teaching
in Van Luchene.
C. “Smith contemplates use of its vending machine system ‘with
pharmaceutical preparations’ in which case ‘[t]he device may be utilized to
order/vend prescription pharmaceuticals’ . . . In such high profile use cases,
identifying the wrong person even within a family could create significant
medical liabilities.” Appeal Br. 11–12.
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The claim does not require that the “item or service” purchased is a
pharmaceutical preparation. However, when the item is a pharmaceutical
drug, Appellant has not identified a step in the method that would not
succeed when an account holder makes the purchase of the drug. While it
may be true that an error in the method could create medical liability,
Appellant has not identified a specific reason as to why the claimed method
would be susceptible to errors that would lead to medical liability.
Appellant also has not explained how the existence of a “liability” would
mean that that claimed method would not succeed to buy a drug.2
D. “[I]n situations where the user does not have a car, a license plate
reader would not serve any purpose; how could there be a reasonable
expectation of success then?” Appeal Br. 12.
The first step of the claim recites [a] “determining, by a license plate
scanning unit, an account number based on an identification of a license
plate of a vehicle that is physically present at a location of a merchant.”
Thus, if a “user” does not have a car, the method could not be used by them.
To say that the method lacks a reasonable expectation of success for this
reason is like saying a method for treating a headache would not succeed if
the patient did not have a headache.
E. “[A]s a practical matter, there is unlikely to be a location at which a
license plate reader could be disposed. A vending machine could be placed
anywhere, and typically vending machines are located within buildings (to
this end, a climate controlled environment is likely required for the

2 Appellant has not explained how their claim avoids such liability.
Consequently, Appellant’s own argument raises the question of whether the
claim lacks enablement. In re Wands, 858 F.2d. 731, 737 (Fed. Cir. 1988).

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pharmaceutical and printer cartridge embodiments contemplated in Smith).
But Van Luchene’s license plate reader requires ‘a roadway 512 such as a
drive-thru alley in a fast food restaurant,’ which would frustrate any attempt
at using the proffered combination in a climate-sensitive environment.”
Appeal Br. 12.
This argument does not persuade us that the Examiner erred. First,
Smith does not require a local vendor. Smith expressly teaches that in a
“preferred embodiment,” a “local vending ability” is provided, but Smith
does not limit the method to this embodiment. Smith 3: 32–34. Smith does
not even limit its method to using a vender: “A preferred embodiment of the
present invention comprises a device and system incorporating features of
the present invention so that a user may obtain desired products from the
device either by having the product vended immediately or ordered from a
host controller for later delivery.” Smith 11:12–17 (emphasis added). -
Second, Appellant has not provided evidence that a climate controlled
environment is necessarily for a vender.

Summary
For the foregoing reasons, the rejection under 35 U.S.C. § 103 of
claim 1 is affirmed. The rejection of claims 2–23, which were not separately
argued, is also affirmed. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
Claims 1–
23
103 Smith, Van
Luchene
Claims 1–
23

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Application 13/619,743

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TIME PERIOD
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