Ex Parte 5577109 et al

Board of Patent Appeals and Interferences

Sep 3, 2010

90007436 (B.P.A.I. Sep. 3, 2010)

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.
90/007,436 03/01/2005 5577109 TGIP.001 7576
50086 7590 09/07/2010
LAW OFFICE OF DAVID H. JUDSON
15950 DALLAS PARKWAY
SUITE 225
DALLAS, TX 75248
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/07/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TGIP, INC.
Appellant
___________

Appeal 2009-012849
Reexamination Control 90/007,436
Technology Center 3900
Patent No. 5,577,109
____________

Before ANTON W. FETTING, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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TGIP, Incorporated appeals under 35 U.S.C. § 134(b) and 35 U.S.C.
§ 306 from a final rejection of claims 1-18. We have jurisdiction under 35
U.S.C. §§ 134(b) and 306.
An oral hearing was held on September 16, 2009. The record includes
a written transcript of the oral hearing.
We affirm.
STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent 5,577,109 (the
‘109 patent) was filed on February 28, 2005, on behalf of the owner, TGIP,
Inc. by David H. Judson, Reexamination Control No. 90/007,436.
The ‘109 patent, entitled “Pre-Paid Card System and Method” issued
November 19, 1996, to Charles J. Stimson and Brady S. Beshear, based on
Application No. 08/407,094, filed March 20, 1995. The ‘109 patent is said
to be a continuation-in-part of Application No. 08/254,237, filed June 6,
1994, now U.S. Patent 5,511,114 (the ‘114 patent), issued April 23, 1996.
The ‘109 patent is said to be assigned to TGIP, Inc., said to be the
assignee and real party in interest.
Related Litigation
The Appeal Brief (App. Br. 1) indicates that the ‘109 patent is not
subject to any litigation and also indicates (App. Br. 1) that two related
patents, the ‘114 patent (a parent of the ‘109 patent) and U.S. Patent
5,721,768 (a continuation of the ‘109 patent), were asserted in TGIP, Inc. v.
AT&T Corp., 527 F. Supp. 2d 561 (E.D. Tex. 2007), appeal dismissed, 274
Fed. Appx. 890 (Fed. Cir. 2008), now settled (Reply Br. 1).
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Appellant’s Invention
Appellant’s invention relates to a pre-paid card system that permits
customers to make purchases using an authorized card. (Abstract.) The
system includes a plurality of cards, a host computer, a plurality of on-site
activation terminals and a main processor. (Abstract.) The on-site
activation terminals interact with the main processor operated by the main
computer (col. 6, ll. 41-42) for transmitting data between the host computer
and the terminals and enabling customers to make purchases with the
authorized cards (Abstract). The main computer also includes a database of
information regarding authorization, recharge and use status of the
authorized cards in the system. (Col. 2, ll. 25-29.)
The Claims
Claims 10 and 14 are exemplary:
10. A method, using one or more remote communications
devices connectable to a host computer having a database, to enable
customers to acquire an amount of call authorization, comprising the
steps of:
in response to one or more requests, transferring information
from a communications device to the host computer, the information
including data identifying a card to be activated or recharged, the card
having an identifying number;
associating, at the host computer, an amount of call
authorization to the identifying number of the card using the
information transferred from the communications device;
maintaining in the database a record for each card identifying
number having a call authorization amount associated therewith, the
record including a call authorization balance, a date that the card was
activated or recharged, and, for each transaction involving the card, an
identifier for a given communications device at which the transaction
has occurred, the identifier enabling an association among the given
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communications device, a transaction amount, and the card
identifying number; and
during each of one or more given calls, adjusting the call
authorization balance in the record associated with the identifying
number as the card is used to obtain network access; and using the
communication device identifiers to reconcile all transactions
associated with the one or more communication devices.
14. The method as described in claim 9 further including:
during a given purchase transaction at a remote
communications device, determining whether a card presented to the
remote communications device has a purchase authorization amount
sufficient for a given purchase amount;
if the purchase authorization amount is sufficient, and in
addition to adjusting the purchase authorization amount in the record
associated with the identifying number as goods or services are
purchased, providing transaction information indicating a result of the
given purchase transaction.
The Rejection
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Yamaki (Japanese Publication No. 4-23659), Hayashida (U.S. Patent
5,644,118) and Simmons (U.S. Patent 5,093,787).

ISSUES
With respect to claims 1-13 and 16, Appellant argues that the
combination of Yamaki, Hayashida and Simmons does not teach or suggest
“a date that the card was activated or recharged.” (App. Br. 18-19.)
Appellant also argues that the Examiner improperly construed the term
“reconcile” (Reply Br. 6-11) and that the combination of Yamaki, Hayashida
and Simmons does not teach or suggest “using the communication device
identifiers to reconcile all transactions associated with the one or more
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communication devices” (App. Br. 19-21). Appellant further argues that the
Examiner improperly combined the applied references. (App. Br. 21-23; see
also Reply Br. 12-14.)
With respect to dependent claims 14, 15, 17 and 18, Appellant argues
that the applied references do not teach or suggest the additional limitations
recited in these claims. (App. Br. 24-26; see also Reply Br. 15-17.)
Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that the combination of Yamaki,
Hayashida and Simmons teaches or suggests “a date that the card was
activated or recharged”?
2. Has the Examiner erred by improperly construing the claim term
“reconcile”?
3. Has the Examiner erred in finding that the combination of Yamaki,
Hayashida and Simmons teaches or suggests “using the communication
device identifiers to reconcile all transactions associated with the one or
more communication devices”?
4. Has the Examiner erred in combining the applied references?
5. Has the Examiner erred in finding that the combination of Yamaki,
Hayashida and Simmons teaches or suggests the additional limitations
recited in dependent claims 14, 15, 17, and 18?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
‘109 Patent
1. The ‘109 patent relates to “a pre-paid card system[] having a remote
terminal to provide on-site activation and recharging of cards in
customer-defined amounts.” (Col. 1, ll. 11-13.) “It is still a further
object of the invention to provide a pre-paid card system wherein the
host computer maintains a database of authorized cards, the database
including detailed information about the authorization, recharge and
use status of each card in the system.” (Col. 2, ll. 25-29.) The pre-
paid calling card system includes “a plurality of calling cards.”
(Col. 2, ll. 30-33.) The system may use “smart cards” to store a
security number or other information or may use “so-called ‘dumb’ or
non-intelligent cards.” (Col. 4, ll. 1-4.) Applications include pre-paid
telephone calling cards (see, e.g., col. 3, ll. 55-58) or pre-paid cards
for purchasing goods and services up to the pre-paid limit (see, e.g.,
col. 6, ll. 33-36).
2. The cards 50 are activated or recharged at on-site activation
terminals 52 (col. 6, ll. 37-38) that interact with a main processor 54
operated by a host computer 56 (col. 6, ll. 41-42; fig. 4). “The host
computer 56 contains sufficient storage associated therewith to enable
purchase records to be maintained for each authorized card 50 in the
system. Preferably, each purchase record established in the system
includes a number of pieces of information: the card security number,
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the identity of the store at which the card was issued . . . , the card’s
issue date and time, the card’s last use date and time, the card’s last
recharge number . . . , the purchase balance of the card ($xxx.xx), the
card’s last recharge amount, the card’s last recharge date and time,
and transaction codes associated with each purchase.” (Col. 6,
ll. 48-60.) “By keeping track of the data terminals at which the card is
initially authorized and later recharged, the system operator can
reconcile multiple data from different locations. This enables the
system operator to credit or charge store operators for recharging
providing by other store operators in the system.” (Col. 6, ll. 60-65;
see also col. 2, l. 67 to col. 3., l. 6, col. 4, l. 66 to col. 5, l. 6, col. 5,
ll. 36-41.)
Yamaki2
3. Yamaki relates to “a card type toll control system using a prepaid
system” (p. 2, l. 18) including a terminal device (i.e., a card type
telephone and a card type vending machine) (p. 3, ll. 35-36) and a toll
controller (p. 4, l. 1). When an ID code associated with a card is used
(p. 3, ll. 31-34), subtraction information is transmitted from the
terminal device to the toll controller to obtain a remaining balance
(p. 3, l. 35 to p. 4, l. 2).
4. The toll control system includes a card with an ID code, a telephone
terminal 20, an automatic vending machine terminal 40, a card budget
setting device 30 and a principal device 10. (P. 4, ll. 9-17; fig. 1.)

2 Reference is made to the English-language translation provided by
Appellant, submitted March 1, 2005.
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The principal device 10 contains a memory circuit 15 and a toll
controller 16. (P. 4, ll. 21-25; fig. 1.) The principal device 10 is
connected to one or more telephone lines 1a-1m, which are connected
to the office circuit and exchange unit 11. (P. 4, ll. 34-35; fig. 1.) The
card budget setting device 30 includes a display unit 34. (P. 4, ll. 32-
33; fig. 1.) The principal device 10 is connected to the telephone
terminal 20 by plural extension call lines 2a-2n. (P. 5, ll. 1-4; fig. 1.)
Extension circuits 12a-12n are connected between the extension call
lines 2a-2n and the office circuit and exchange unit 11. (P. 5, ll. 2-4;
fig. 1.)
5. For placing a call, the telephone card holder inserts the card into the
telephone terminal 20 to read the ID code of the card. (P. 8, ll. 25-28;
fig. 5, steps 301, 302.) The principal device 10 determines whether
the ID code is registered and, if it is registered, determines whether
there is a “balance of budget.” (P. 8, l. 28 to p. 9, l. 5; fig. 5, steps 303
to 309.) If the ID card does not contain a balance, the telephone
terminal 20 displays a “no budget” message on the display unit 24 and
the transaction terminates. (P. 9, ll. 4-9; fig. 5, steps 310 to 312.)
6. If the card contains a balance, the principal device 10 performs an
“office line connection” for the telephone terminal 20 to connect the
telephone terminal 20 to the office line (p. 9, ll. 10-11; fig. 5,
step 313) and the telephone terminal 20 displays the balance of the
budget on the display unit 24 (p. 9, ll. 11-15; fig. 5, steps 314-316).
The toll controller 16, after being initiated by the principal device 10,
measures call-time information (p. 9, ll. 16-19) and based on this time
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information, the principal device 10 subtracts ten yen per “degree of
use” from the balance of the budget (p. 9, ll. 20-22, fig. 5, steps 317 to
320). When one degree is used, one degree (10 yen) is subtracted
from the amount of the budget. (P. 9, ll. 20-22.) After the subtraction
function is completed, the “new balance” is displayed on the display
unit 24. (P. 9, ll. 22-27, fig. 5, steps 320-322.)
Hayashida
7. Hayashida relates to “[a]n electronic cashless system [that] uses a
cashless medium for memorizing amount information and for
performing an operation of amount information.” (Abstract.) The
cashless medium 1 (figs. 2a, 2b), a substitute for an ATM card,
contains “a multi-function IC card containing an electronic brain (a
memory part and an operation and processing part).” (Col. 4, ll. 26-
30.)
8. The multi-function IC card can display the date and amount of past
purchases and replenishments (col. 7, ll. 57-62) and thus, the owner
“can determine when and how many . . . purchases, replenishments or
redepositings were made” (col. 8, ll. 48-52). The multi-function IC
card 21 can also receive information about the replenishing amount
and date from an ATM terminal 2. (Col. 6, ll. 32-34.)
Simmons
9. Simmons relates to an electronic checkbook with automatic
reconciliation “for reconciling checking account and other transaction
data” (Abstract). Simmons describes a specially configured and
programmed computer, described as an “Electronic Check Register or
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ECR.” (col. 1, ll. 12-14). The ECR can automatically enter and match
checks to transactions by time and date (col. 3, ll. 21-24) and provides
the ability to search transactions by check number, date, amount or
payee (col. 3, ll. 31-35).
10. Simmons describes that “[m]any kinds of transaction data can be
captured in the ECR and automatically reconciled and reported.”
(Col. 17, ll. 6-7.) Non-checking transactions that “can involve many
merchants” are identified by a merchant number and captured in the
ECR. (Col. 17, ll. 22-32.) These transactions stored in the ECR can
be reconciled or matched with other transaction data based on
merchant number. (Col. 17, ll. 31-39.) Transaction matching can be
accomplished by entering a transaction number generated by the ECR
into the point-of-sale terminal. (Col. 17, ll. 56-62.)
ANALYSIS
Claims 1-13 and 16
With respect to the first issue, we are not convinced by Appellant’s
argument (App. Br. 18-19) that the combination of Yamaki, Hayashida and
Simmons does not teach or suggest a host computer database including “a
date that the card was activated or recharged.”
The Examiner acknowledged that Yamaki does not teach or suggest
“a date that the card was activated or recharged” (Ans. 8) and cited
Hayashida for the disclosure of an electronic cashless system with a cashless
medium 1 that displays the date of past replenishments. (Ans. 8; FF 7-8.)
Thus, the Examiner concluded that the disputed limitation would have been
obvious. (Ans. 8-9.) We agree with the Examiner.
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Yamaki relates to a pre-paid card type toll control system including a
terminal device (e.g., telephone or vending machine) and a toll controller, in
which card balance information is stored by the toll controller. (FF 3.)
Hayashida relates to an electronic cashless system (FF 7) that provides the
date of replenishments and receives such information from an ATM
terminal 2 (FF 8.)
Thus, we agree with the Examiner that modifying Yamaki to include
Hayashida’s step of displaying or receiving the dates of replenishments
would have been obvious. (Ans. 8-9.) A person of ordinary skill in the art
would recognize that this modification would improve Yamaki’s pre-paid
card type toll control system by providing additional transactional
information about the date of replenishment. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007).
Appellant argues that, in “Hayashida, the ‘replenishment date’ data is
actually written to the card memory” and “[a]s a consequence, any
permissible combination of Yamaki and Hayashida means that Hayashida’s
‘replenishment date’ data (written to the card memory) would end up in
Yamaki’s card, and not in the host computer.” (App. Br. 18.) However, the
rejection is not based on incorporating Hayashida’s data relating to the date
of replenishments into an identification card of Yamaki. (Ans. 8.) Instead,
the Examiner cited Hayashida for providing the date of replenishments.
(Ans. 8; FF 7-8.) Furthermore, Hayashida teaches that the date of
replenishments can be stored on an ATM terminal 2 (i.e., a host computer
database). (FF 8.) Although Appellant contends that the claim language
“places the ‘date that the card was activated or recharged’ data in the host
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where the ‘prepaid card user’ does not have direct access” (App. Br. 19),
such a feature of restricting user access to the activation or recharging data is
not claimed.
Appellant also argues that “there is no reason to include
‘replenishment date’ data on the Yamaki card, as such data would be
superfluous.” (App. Br. 22; see also Reply Br. 14.) However, as discussed
previously, the combination of Yamaki and Hayashida is based on the
improvement of a similar device in the same way as in the prior art.
Therefore, the Examiner has not erred in finding that the combination
of Yamaki, Hayashida and Simmons teaches or suggests a host computer
database including “a date that the card was activated or recharged.”
With respect to the second issue, we are not convinced by Appellant’s
argument (Reply Br. 6-11) that the Examiner improperly construed the term
“reconcile.”
Appellant argues that the claim term “reconcile” must be interpreted
as reconciliation of “system-based and . . . multiple user accounts, as
opposed to merely a reconciliation of a single user’s individual transactions
in a single account” (Reply Br. 7) and that “the Simmons ECR and host
operation is designed solely to enable an individual user to manage his or her
own account data (but not someone else’s) . . .” (Reply Br. 12).
Under the broadest reasonable interpretation consistent with the
Specification, we do not agree. The Specification of the ‘109 patent
describes a “plurality of calling cards” (FF 1) and a “host computer 56 [that]
contains sufficient storage . . . to enable purchase records to be maintained
for each authorized card 50 in the system (emphasis added) (FF 2). The
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Specification of the ‘109 patent further describes that “each purchase record
established in the system includes a number of pieces of information . . .
[including] the identity of the store at which the card was issued” and that
“[b]y keeping track of the data terminals at which the card is initially
authorized and later recharged, the system operator can reconcile multiple
data from different locations” (emphasis added) (FF 2). In other words, the
Specification of the ‘109 patent describes reconciling multiple transactions
for a single card, rather than reconciling multiple transactions for multiple
cards, as argued by Appellant. Appellant has not pointed to any special
definition of “reconcile” in the Specification that would require a different
interpretation.
In addition, we find nothing in the claim language that would require
the interpretation urged by Appellant. For example, independent claim 10
recites “data identifying a card” (emphasis added) and contains multiple
references to “the card” (emphasis added). Claim 10 also recites
maintaining records of communication device identifiers “for each
transaction involving the card” (emphasis added). Finally, the disputed
limitation “reconcile” appears in the recitation of “using the communication
device identifiers to reconcile all transactions associated with the one or
more communication devices.” Thus, in the context of the claim, the term
“reconcile” most naturally refers to reconciling all transactions involving a
particular card. The other independent claims contain similar language and
are interpreted in a similar manner.
With respect to the third issue and fourth issues, we are not convinced
by Appellant’s argument (App. Br. 19-21) that the combination of Yamaki,
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Hayashida and Simmons does not teach or suggest “using the
communication device identifiers to reconcile all transactions associated
with the one or more communication devices.” We are also not convinced
by Appellant’s argument (App. Br. 21-23; see also Reply Br. 12-14) that the
Examiner improperly combined the applied references.
The Examiner acknowledged that Yamaki does not teach or suggest
“using the communication device identifiers to reconcile all transactions
associated with the one or more communication devices” (Ans. 11) and cited
Simmons for the disclosure of an electronic check register that stores
non-checking transactions with merchants and provides the ability to
reconcile such transactions from a merchant’s point of sale terminal.
(Ans. 10-11; FF 9-10.) Thus, the Examiner concluded that the disputed
limitation would have been obvious. (Ans. 10-11.) We agree with the
Examiner.
As discussed previously, Yamaki relates to a pre-paid card type toll
control system including an identification card, a terminal device (e.g.,
telephone or vending machine) and a toll controller, in which card balance
information is stored by the toll controller. (FF 3.) Simmons relates to an
electronic check register (ECR) (FF 9) with the ability to reconcile
transactions by generating a merchant number to be entered into a
merchant’s point-of-sale terminal (FF 10). Thus, we agree with the
Examiner that modifying Yamaki to include Simmons’ ability to reconcile
transactions would have been obvious. (Ans. 10-11.) A person of ordinary
skill in the art would recognize that this modification would improve
Yamaki’s pre-paid card type toll control system by providing the additional
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capability of reconciling transactions from different merchants. See KSR,
550 U.S. at 417.
First, Appellant agues that Simmons does not teach or suggest “any
use of ‘merchant number’ (the alleged ‘device identifier’ therein) to
reconcile transactions associated with the one or more device identifiers”
(App. Br. 20) because “Simmons simply provides that a merchant number
can be entered . . . by the user – to further assist the matching of the
manually ECR-recorded data to the financial transaction data that is
processed (through the financial network) and that is available at the host.”
(App. Br. 21.) However, as discussed previously, Simmons teaches that the
ECR can reconcile transactions by generating a merchant number to be
entered into a merchant’s point-of-sale terminal (i.e., the claimed “one or
more communication devices”). (FF 9-10.)
Second, Appellant argues that the claim language “using the . . .
device identifiers to reconcile [] transactions associated with the . . . devices”
means “a reconciliation of different transactions (involving the same card
identifying number) that have occurred using one or more devices (as
reflected by the ‘device identifiers’).” (App. Br. 21.) In contrast, Appellant
argues, Simmons teaches “making sure that the transaction data for a single
transaction is consistent with the various components (the ECR and host) of
the system.” (App. Br. 21.) However, Simmons teaches that the ECR can
be used to reconcile transactions that “can involve many merchants”
(emphasis added). (FF 10.)
Third, Appellant argues that the combination of Yamaki and Simmons
is improper. (App. Br. 21-22; see also Reply Br. 12-13.) In particular,
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Appellant argues that “the system [of Yamaki] is designed to prevent the end
user (who holds the card) from accessing the card and modifying the amount
stored therein” but “Simmons . . . teaches a system where the end user is
provided with an electronic device (the ECR) that is designed to receive end
user input and that can be freely manipulated by the end user.” (App.
Br. 22.) However, the rejection is not based on modifying the principal
device 10 of Yamaki to incorporate Simmons’ feature of providing access to
financial records. (Ans. 10-11.) Instead, as discussed previously, the
rejection is based on modifying Yamaki’s pre-paid card type toll control
system with Simmons by providing the ability to reconcile transactions from
different merchants. (Ans. 10-11.)
Fourth, Appellant argues that “there is also no reason to include . . .
[replenishment date] data in the host, since Yamaki does not perform any
reconciliation function.” (App. Br. 22; see also Reply Br. 14.) However, as
discussed previously, the combination of Yamaki and Hayashida is based on
the improvement of a similar device in the same way as in the prior art.
Fifth, Appellant argues that “because the Yamaki system does not do
any reconciliation, the proposed addition of an entirely new reconciliation
function [of Simmons] is not just a simple substitution of parts that one of
ordinary skill might be expected to try or to carry out with any reasonable
likelihood of being successful.” (App. Br. 22-23; see also Reply Br. 14.)
However, the rejection is not based on the simple substitution of one element
of Simmons for another element of Yamaki. (Ans. 10.) Instead, as
discussed previously, the combination of Yamaki and Simmons is based on
the improvement of a similar device in the same way as in the prior art.
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Sixth, Appellant argues that “Simmons only operate[s] to perform
reconciliation with respect to transactions within a single user account”
(Reply Br. 9) but “is not a teaching or suggestion of a system-based
reconciliation across multiple accounts using device identifiers as recited in
the subject claim limitations at issue” (Reply Br. 10-11). Therefore,
Appellant argues, “any required modification of Simmons (to work within
the context of the claimed invention) would defeat the intended purpose of
account-specific ECR-host reconciliation function” and teaches away from
the combination of references. (Reply Br. 13.) However, as discussed
previously, the claim term “reconcile” is not required to be interpreted as
reconciling multiple transactions for multiple cards.
Finally, Appellant argues that Yamaki and Simmons are
“incompatible systems” because “Yamaki is a closed system that uses a
specialized bill reader device to receive funds” with “no interaction with a
separate financial system” and “one of the explicit problems Yamaki tried to
solve . . . avoid[s] having to incorporate the ‘read/write function’ on the
terminal telephone sets and automatic vending machines, which would be
required if one of ordinary skill wanted to incorporate the Simmons ECR
device.” (Reply Br. 13.) However, the Examiner does not cite Simmons for
the disclosure of a separate financial system or the “read/write function” of
the ECR device. (Ans. 10.) Instead, as discussed previously, the
combination of Yamaki and Simmons is based on the improvement of a
similar device in the same way as in the prior art.
Therefore, the Examiner has not erred in finding that the combination
of Yamaki, Hayashida and Simmons teaches or suggests “using the
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communication device identifiers to reconcile all transactions associated
with the one or more communication devices” and the Examiner has not
erred in combining the applied references.
We conclude that the Examiner has not erred in rejecting independent
claims 1, 6, 7, 8, 9, 10, and 16 under 35 U.S.C. § 103(a). Dependent
claims 2-5 and 11-13 were not argued separately, and fall together with
claims 1 and 6, from which they depend.
Claims 14, 15, 17 and 18
With respect to the fifth issue, we are not convinced by Appellant’s
argument (App. Br. 24-26; see also Reply Br. 15-17) that the combination of
Yamaki, Hayashida and Simmons does not teach or suggest the additional
limitations recited by dependent claims 14, 15, 17 and 18.
In particular, Appellant argues that the combination of Yamaki,
Hayashida and Simmons does not teach or suggest “determining whether a
card presented to the remote communications device has a purchase
authorization amount sufficient for a given purchase amount” and “if the
purchase authorization amount is sufficient, and in addition to adjusting the
purchase authorization amount in the record associated with the identifying
number as goods or services are purchased, providing transaction
information indicating a result of the given purchase transaction,” as recited
in claim 14. (App. Br. 24-26; see also Reply Br. 15-17.) Appellant also
argues that the combination of Yamaki, Hayashida and Simmons does not
teach or suggest “wherein the transaction information is a remaining credit
balance,” as recited in claim 15. (Reply Br. 15.) Claim 17 recites
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limitations similar to claim 14 and claim 18 recites limitations similar to
claim 15.
With respect to the first limitation of claim 14, Yamaki teaches that
when a telephone cardholder inserts a card with an ID code into a telephone
terminal 20 (i.e., a “remote communications device”), a principal device 10
transmits budget information to the telephone terminal 20 (FF 5), where a
balance of a budget is displayed on a display unit 24 (FF 6). Yamaki teaches
that if the card contains a balance, a call is initiated by the principal
device 10 and that the principal device 10 subtracts ten yen per “degree of
use” based on call-time information from the budget. (FF 6.) In other
words, if the card contains a balance, the principal device 10 automatically
performs a telephonic connection to the telephone terminal 20 for one
“degree of use” or more (i.e., Yamaki teaches “a purchase authorization
amount sufficient for a given purchase amount”). In addition, the broad
language of the claim does not exclude an interpretation where telephone
card holder of Yamaki manually calculates the total cost of the call (i.e., “a
given purchase amount”) based on the balance and “degree of use.”
With respect to the second limitation of claim 14, as discussed
previously, Yamaki teaches that if the card contains a balance, the call is
automatically initiated by the principal device 10 (i.e., determining “if the
purchase authorization amount is sufficient”) and that the principal
device 10 subtracts ten yen per “degree of use” based on call-time
information from the budget corresponding to the ID code (i.e., “adjusting
the purchase authorization amount in the record associated with the
identifying number as goods or services are purchased”). Yamaki also
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teaches that after the subtraction function is completed, a new balance is
displayed on the display unit 24 (i.e., “providing transaction information
indicating a result of the given purchase transaction”). (FF 6.)
With respect to claim 15, as discussed previously, Yamaki teaches
that the new balance is displayed on the display unit 24 (i.e., “wherein the
transaction information is a remaining credit balance”).
Appellant argues that Yamaki does not “determine whether the ‘card
presented [] has a purchase authorization amount sufficient for a given
purchase amount’” because “the principal device [of Yamaki] . . . simply
checks for a budget balance (is there a positive balance?), not whether any
such balance might be sufficient for a given transaction.” (App. Br. 25.)
However, as discussed previously, Yamaki teaches that if the card contains a
balance, the principal device 10 automatically performs a telephonic
connection to the telephone terminal 20 for one “degree of use” or more
(i.e., Yamaki teaches “determining whether a card presented . . . has a
purchase authorization amount sufficient for a given purchase amount”). As
also discussed previously, the claim language is broad enough so as not to
exclude an interpretation where the telephone card holder of Yamaki
manually calculates the total cost of the call based on the balance and
“degree of use.”
Appellant also argues that the “‘determining’ step (namely,
determining whether a purchase authorization amount is sufficient for a
given purchase amount) is a function that is separate and distinct from the
function of ‘providing transaction information indicating a result of the
given purchase transaction.’” (Reply Br. 16.) However, Yamaki teaches
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that the step of subtracting ten yen per “degree of use” based on call-time
information from the budget is separate from the step of displaying the new
balance of the card is on the display unit 24. (FF 6.)
Therefore, the Examiner has not erred in finding that the combination
of Yamaki, Hayashida and Simmons teaches or suggests the additional
limitations recited in dependent claims 14, 15, 17, and 18.
We conclude that the Examiner has not erred in rejecting claims 14
and 15 under 35 U.S.C. § 103(a). Claim 17 recites limitations similar to
those discussed with respect to claim 14 and claim 18 recites limitations
similar to those discussed with respect to claim 15. We further conclude that
the Examiner has not erred in rejecting claims 17 and 18 for the reasons
discussed with respect to claims 14 and 15.
CONCLUSION
Based on the findings of fact and analysis above, we conclude that the
Examiner has not erred in rejecting claims 1-18 under 35 U.S.C. § 103(a).
DECISION
The rejection of claims 1-18 under 35 U.S.C. § 103(a) 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

bim

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FOR APPELLANT:

LAW OFFICE OF DAVID H. JUDSON
15950 DALLAS PARKWAY
SUITE 225
DALLAS, TX 75248