Ex Parte Athens et al

Board of Patent Appeals and Interferences

Aug 29, 2012

10606507 (B.P.A.I. Aug. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte G. THOMAS ATHENS and MARIA P. PARKOS 8
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Appeal 2011-002393 11
Application 10/606,507 12
Technology Center 3600 13
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
JOSEPH A. FISCHETTI, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 26, 2010) and the Examiner’s Answer (“Ans.,” mailed
August 19, 2010).
G. Thomas Athens and Maria P. Parkos (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 12-15, 18-32, 42, and 3
43, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a way of detection of tampering and 6
verification of authenticity of data captured during an audit period for the 7
secure value dispensing system. (Specification ¶ 0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 12, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
12. A method for a data center to process usage data of a value 12
dispensing device comprising: 13
[1] receiving a first audit record 14
from the value dispensing device, 15
the first audit record generated 16
by the value dispensing device 17
at a start of an audit period, 18
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the first audit record including 1
a value 2
of at least one register 3
maintained by the value dispensing device 4
at the start of the audit period 5
and 6
a first digital signature; 7
[2] receiving a second audit record 8
from the value dispensing device, 9
the second audit record generated 10
by the value dispensing device 11
at an end of the audit period, 12
the second audit record including 13
a value 14
of the at least one register 15
maintained by the value dispensing device 16
at the end of the audit period 17
and 18
a second digital signature; 19
[3] receiving usage data 20
from the value dispensing device 21
for the audit period; 22
[4] determining that the first and second digital signatures 23
verify; 24
[5] determining a difference between 25
the value of the at least one register at 26
the end of the audit period 27
and 28
the start of the audit period; 29
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[6] comparing 1
the determined difference 2
with 3
corresponding data provided in the usage data; 4
and 5
[7] if 6
the determined difference 7
correlates with 8
the corresponding data provided in the usage data, 9
[then] generating a usage report for the value 10
dispensing system based on the usage data. 11
The Examiner relies upon the following prior art: 12
Mosher US 5,799,322 Aug. 25, 1998
Leon US 6,424,954 B1 Jul. 23, 2002
Lertzman US 2004/0006510 A1 Jan. 8, 2004
Claims 12, 18-25, 29-32, 42, and 43 stand rejected under 35 U.S.C. § 13
103(a) as unpatentable over Leon and Lertzman. 14
Claims 13-15, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as 15
unpatentable over Leon, Lertzman, and Mosher. 16
ISSUES 17
The issues of obviousness turn primarily on whether the art describes 18
plural audit transactions; receiving usage data; and generating a usage report, 19
and whether it was predictable to condition that report on if a difference 20
correlates with the two audit records. 21
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Leon 5
01. Leon is directed to a portable, secure, low cost, and flexible 6
postage metering system. Leon 1:49-51. 7
02. Leon provides a postage metering system that is portable, low-8
cost, secure, and flexible in operation. A secure metering device 9
(SMD) maintains important postal information and provides the 10
required secure processing. A computer (or host PC) provides the 11
user interface and coordinates transactions between the SMD, a 12
user, and a provider. Leon 2:30-36. 13
03. Leon’s SMD performs audit services. Leon 11. 14
04. The SMD includes a timer that allows it to perform services for 15
a predetermined period of time. An Audit transaction is 16
performed periodically to reset the timer, giving the SMD more 17
time to operate before the timer times out. The provider may also 18
obtain the status of the SMD by initiating the Audit transaction. 19
Leon 18:18-27. 20
05. FIGS. 5F and 5F-2 show a flow diagram of an embodiment of 21
the Audit transaction. Leon 18:30-32. 22
06. When an audit is requested, the SMD saves its current operating 23
state, at a step 5210, and transitions to an intermediate state, at a 24
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step 5212. The SMD then sends the host PC a signed message 1
that includes the required information, at a step 5214. The 2
required information may include, for example, the current 3
contents of the secure revenue registers, the device ID number, the 4
current date and time, a transaction serial number generated by the 5
SMD, and other information. Leon 18:47-54.. 6
07. The use of the Watchdog Timer forces the user to request 7
periodic audits of the SMD. The audits allow the provider to 8
monitor the status of the SMD's revenue registers and determine if 9
any attempt to defraud the SMD has occurred. Leon 24:40-45. 10
08. The Audit transaction terminates when the SMD sends the host 11
PC an ERROR message in response to an error during processing 12
of the audit message. Leon 29:41-46. 13
09. Leon does not explicitly describe the accounting performed 14
during its audit operation. 15
Lertzman 16
10. Lertzman automates and facilitates the identification and setting 17
up of the aggregators, participants, and merchants; streamlines 18
transactions between specific merchants and their respective 19
participants related to particular aggregators; and reports related 20
information to appropriate users in a common, secure environment 21
accessible by these users. Lertzman ¶ 0010. 22
11. FIG. 10 is a flowchart showing the process for the 23
reconciliation of the Periodic Merchant Report (150) for an 24
applicable date range to be reconciled. Detail transaction data is 25
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reconciled to summary transaction data (152) by comparing the 1
detail line items and amounts to the summary data. Transactions 2
are then validated against merchant remittance amounts. 3
Lertzman ¶ 0075. 4
ANALYSIS 5
Each of the independent claims recites what are essentially the steps 6
performed in reconciling a bank statement, whose steps are known not just 7
to one of ordinary skill, but to everyone who reads the directions on the back 8
of most bank statements describing the reconciliation process. Thus, the 9
Examiner applies Lertzman for the general reconciliation process and Leon 10
for applying it to system audit transactions, which generally also apply such 11
automated techniques as digital signatures for security. 12
When viewed in this context, we are not persuaded by the Appellants’ 13
arguments that the art fails to describe plural audit transactions (App. Br. 7); 14
receiving usage data (App. Br. 8); and generating a usage report if the 15
difference correlates with the two audit records (Id.). Thus, Appellants are 16
arguing that one cannot wholly incorporate Lertzman’s reconciliation 17
process within Leon. 18
“The test for obviousness is not whether the features of a secondary 19
reference may be bodily incorporated into the structure of the primary 20
reference.... Rather, the test is what the combined teachings of those 21
references would have suggested to those of ordinary skill in the art.” In re 22
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 23
1544, 1550, (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the 24
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references be physically combinable to render obvious the invention under 1
review.”); and In re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining the 2
teachings of references does not involve an ability to combine their specific 3
structures.”). 4
The Examiner found that Leon described the necessity for auditing its 5
financial registers periodically, and sends out an audit record every time a 6
timer was to be reset. Thus, Leon sends out the two audit records in the 7
claim at two sequential timer resets. Although Leon does not explicitly 8
describe the steps performed for the audit itself, it does send out digitally 9
signed messages containing register balances. Lertzman describes an audit 10
implementation such as might be appropriated for Leon, which again is 11
simply a conventional bank statement reconciliation operation. This clearly 12
reconciles the intervening usage data to the beginning and ending balances. 13
Thus, the issue regarding message contents is not so much what Leon 14
explicitly describes, as what Leon suggests would be required to properly 15
perform an audit that Leon runs. As to the conditional running of the report 16
in the last claim limitation, Leon terminates the audit transaction in case of 17
an error, so the report would only run when there was no error, i.e., when the 18
usage data reconciled to the beginning and ending balances, as in a bank 19
statement reconciliation. 20
Arguments as to the remaining claims either repeat the arguments 21
supporting claim 1 or refer to them for reliance. 22
CONCLUSIONS OF LAW 23
The rejection of claims 12, 18-25, 29-32, 42, and 43 under 35 U.S.C. § 24
103(a) as unpatentable over Leon and Lertzman is proper. 25
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The rejection of claims 13-15, 26, and 27 under 35 U.S.C. § 103(a) as 1
unpatentable over Leon, Lertzman, and Mosher is proper. 2
DECISION 3
The rejection of claims 12-15, 18-32, 42, and 43 is affirmed. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6
§ 1.136(a)(1)(iv) (2007). 7
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AFFIRMED 9
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