Ex Parte Bates et al

Board of Patent Appeals and Interferences

Jan 29, 2009

11003876 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CARY LEE BATES, MAHDAD MAJD
and JOHN MATTHEW SANTOSUOSSO
____________________

Appeal 2008-1539
Application 11/003,876
Technology Center 3600
____________________

Decided: January 29, 2009 1
____________________

Before: HUBERT C. LORIN, DAVID B. WALKER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, 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 CFR § 1.304 (2008), 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 the Notification Date (electronic delivery).

Appeal 2008-1539
Application 11/003,876

2
The Appellants appeal under 35 U.S.C. § 134 (2002) from the final 1
rejection of claim 2 under 35 U.S.C. § 112, ¶ 2 (2002) as being indefinite 2
and from the final rejection of claims 1-11 under 35 U.S.C. § 103(a) (2002) 3
as being unpatentable over Peters (US 5,769,269, issued 23 Jun. 1998), 4
Korman (US 6,318,536 B1, issued 20 Nov. 2001), Kolls (US 6,056,194, 5
issued 2 May 2000), and Lincoln (US 6,820,201 B1, issued 16 Nov. 2004). 6
We have jurisdiction under 35 U.S.C § 6(b) (2002). We REVERSE the 7
rejections of claims 1-10. We AFFIRM the rejection of claim 11. 8
Appealed claims 1-10 relate to a method of requesting a refund for a 9
purchase order of a vending machine. (Spec. 3, ¶ 0012). Independent 10
claim 1, from which claims 2-10 depend, recites the step of determining 11
whether to refund at least a portion of a payment amount based on an 12
identification of the customer. Claim 1 further recites that “the customer is 13
identified by determining if the identification of the customer and the 14
purchase order in the refund request matches the identification of the 15
customer and the purchase order in the record of the purchase order.” 16
Dependent claim 2 recites “wherein determining whether to refund the 17
portion comprises” three method substeps. 18
The Examiner concludes that the phrase “wherein determining 19
whether to refund the portion” in claim 2 is indefinite. The Examiner 20
concludes that the phrase does not clearly indicate the relationship between 21
the method steps recited in claim 2 and the step of “determining whether to 22
refund the portion” recited in parent claim 1. (Ans. 3-4). The Appellant 23
contends that the scope of claim 2 is clear. (Reply Br. 2). 24
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The language of a claim satisfies § 112, ¶ 2 only if “one skilled in the 1
art would understand the bounds of the claim when read in light of the 2
specification.” Exxon Research & Eng’ring Co. v. United States, 265 F.3d 3
1371, 1375 (Fed. Cir. 2001). A claim under examination susceptible of 4
more than one reasonable interpretation may be indefinite if the scope of the 5
claim differs significantly depending on which of the reasonable 6
interpretations one adopts. Ex Parte Miyazaki, No. 2007-3300, 7
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf at 11-12 8
(BPAI Nov. 19, 2008). Here, however, one of ordinary skill in the art would 9
understand that the transitional term “wherein” appearing at the beginning of 10
the body of claim 2 means that the body of claim 2 further characterizes the 11
step of “determining whether to refund the portion” recited in claim 1. The 12
phrase “wherein determining whether to refund the portion” is not 13
ambiguous as used in claim 2. The Appellants have shown that the 14
Examiner erred in rejecting claim 2 under § 112, ¶ 2 as being indefinite. 15
The Appellants contend that Peters does not disclose or suggest 16
determining if the identification of the customer and the purchase order in 17
the refund request matches an identification of the customer and the 18
purchase order in the record of the purchase order. (App. Br. 12; Reply Br. 19
2). Peters discloses a system comprising vending machines connected by a 20
telephone communication line to a central/host station with a live customer 21
service representative. (Peters, col. 4, ll. 45-49). Peters’ system permits a 22
customer to pay for a purchase by credit card. (E.g., Peters, col. 10, ll. 43-23
49). Peter’s vending machine provides a help button which a customer may 24
use to initiate a refund transaction when a customer inserts money and either 25
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receives no product or the wrong product. (Peters, col. 9, ll. 12-18 and col. 1
15, ll. 27-37). 2
The Examiner finds that Peters’ system identifies the customer using 3
the customer’s credit card or a personal identification number [“PIN”]. 4
(Ans. 5). The Examiner also finds that Peters discloses examining sales 5
records to determine how much the system should refund and to whom the 6
system should credit or refund the amount. (Id.) The Examiner does not 7
cite any passage of Peters which supports either finding. The only apparent 8
basis for these two findings is the Examiner’s further finding that Peters’ 9
system inherently matches the PIN entered by the customer with a 10
previously established number. (Ans. 6). The Examiner reasons that: 11
12
Clearly, the PIN initiates the transaction/refund, 13
and there would not have been a transaction or 14
refund if the customer had keyed in the wrong 15
PIN. Therefore, the system must ID the user prior 16
to a refund in order to know that the proper 17
person’s credit card is correctly adjusted. 18
19
(Ans. 6-7). Alternatively, the Examiner finds that Peters discloses that the 20
customer may be identified visually by the customer service representative 21
to ensure that the same customer is still at the vending machine. (Final 22
Office Action mailed May 9, 2006 at 4). 23
The Examiner cites Korman and Kolls only as suggestive of 24
modifying Peters’ system to provide an option to a customer to view the 25
contents of all vending machines in a network and to retrieve an item from 26
another vending machine in lieu of receiving a refund. (Ans. 5-6). The 27
Examiner does not appear to cite Korman or Kolls as suggesting the 28
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performance of a step of determining if the identification of the customer 1
and the purchase order in the refund request matches an identification of the 2
customer and the purchase order in the record of the purchase order. 3
The Appellants contend that the Examiner includes no specific 4
motivation for combining aspects of Lincoln with the system of Peters as 5
modified in view of Korman and Kolls to provide a system which 6
determines if the identification of the customer and the purchase order in the 7
refund request matches an identification of the customer and the purchase 8
order in the record of the purchase order. (App. Br. 13). Lincoln warns that 9
a bank should check the identification of a customer before offering to 10
replace a traveler’s check or to refund the value of the check. (Lincoln, col. 11
8, ll. 14-21). The Examiner cites Lincoln as teaching that customer 12
identification should be required before making refunds. (E.g., Ans. 8). The 13
Examiner does not explain how one of ordinary skill in the art might have 14
modified Peters’ system in view of the teachings of Lincoln. Indeed, the 15
only reasoning which the Examiner articulates to support combining the 16
teachings of Lincoln with those of Peters, Korman and Kolls appears to be 17
that Lincoln is analogous art. (Ans. 8).2 18

2 The Examiner cites Amirpanahi (US 5,648,906, issued Jul. 15, 1997)
as evidence to support the finding that “it is old and well known in the art to
check identification information to assure that any refund goes back to the
proper user or the proper user’s card.” (Ans. 6). The Examiner appears to
use this factual determination only to support the finding that Lincoln is
analogous art. (Ans. 8). The Appellants correctly point out (see App. Br.
14) that the Examiner articulates no reasoning having rational underpinnings
to explain why Amirpanahi might have suggested modifying the combined
teachings of Peters, Korman, Kolls and Lincoln.
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Two issues are raised in connection with the rejection of claims 1-10 1
under § 103(a): 2
Have the Appellants shown that the Examiner erred in concluding that 3
Peters discloses or suggests performing the step of determining if the 4
identification of the customer and the purchase order in the refund request 5
matches an identification of the customer and the purchase order in the 6
record of the purchase order? 7
Have the Appellants shown that the Examiner failed to provide 8
reasoning having rational underpinning explaining why the teachings of 9
Korman, Kolls and Lincoln would have suggested modifying Peters’ system 10
to perform this step? 11
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if 12
“the differences between the subject matter sought to be patented and the 13
prior art are such that the subject matter as a whole would have been obvious 14
at the time the invention was made to a person having ordinary skill in the 15
art to which said subject matter pertains.” See KSR Int'l Co. v. Teleflex Inc., 16
127 S.Ct. 1727, 1734 (2007). Peters’ system differs from the subject matter 17
of claim 1 in that Peters’ system does not determine if the identification of 18
the customer and the purchase order in the refund request matches the 19
identification of the customer and the purchase order in the record of the 20
purchase order. 21
The Appellants correctly point out (see Reply Br. 3) that those 22
passages of Peters cited by the Examiner which describe providing refunds 23
do not refer to the customer’s PIN. Peters at column 11, line 66 through col. 24
12, line 12 discloses that a customer service representative computer can 25
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determine whether a credit or debit card has been entered at a vending 1
machine, whether the customer PIN is correct and whether a valid charge-2
accept condition is provided by an external credit card service bureau 3
computer to the vending machine after the help button is pressed. (Peters, 4
col. 12, ll. 4-9). This passage appears to be Peters’ only mention of the PIN. 5
The customer service representative determines whether the customer 6
PIN is correct before the customer is given the opportunity to press the help 7
button to initiate a refund request. (Compare Peters, col. 11, l. 66 – col. 12, 8
l. 12 (disclosing that the customer service representative determines whether 9
the customer PIN is correct before the product is delivered) with id., col. 12, 10
ll. 9-12, 32-35 and 39-42 (disclosing that the help button is monitored during 11
product delivery and for a three-minute time-out period thereafter)). Peters 12
does not appear to disclose requiring the customer to resubmit the credit card 13
or the PIN when the customer presses the help button. These fact supports 14
the Appellants’ assertion (Reply Br. 2) that the cited passage merely 15
describes a conventional use of a PIN to verify the credit card transaction 16
with information previously established at the credit card service bureau and 17
not a determination if an identification of the customer based on credit card 18
information or a PIN in a refund request matches the identification of the 19
customer in the purchase order. 20
Once a vending machine customer presses the help key, Peters’ 21
system provides video phone communications between the customer and the 22
customer service representative. (Peters, col. 15, l. 65 – col. 16, l. 3). The 23
customer service representative has the option of viewing still frame or real 24
time video pictures of the customer at the vending machine site. (Peters, col. 25
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16, ll. 6-8). Peters does not appear to disclose taking still frame pictures 1
before the customer presses the help button, however. Since Peters does not 2
teach recording a visual identification of the customer at the time of the 3
purchase order, Peters fails to disclose or suggest performing a step of 4
determining if a visual identification of the customer in a refund request 5
matches a visual identification of the customer in the purchase order. 6
Peters’ system differs from the subject matter of claim 1 in that 7
Peters’ system does not determine if the identification of the customer and 8
the purchase order in the refund request matches the identification of the 9
customer and the purchase order in the record of the purchase order. The 10
Examiner does not appear to cite Korman or Kolls to make up this 11
deficiency in the teachings of Peters. (See Ans. 5). 12
The Examiner provides no reasoning having rational underpinning to 13
support the Examiner’s conclusion that Lincoln would have made up the 14
deficiencies in the teachings of Peters, Korman and Kolls such that the 15
subject matter of claim 1 would have been obvious. “[R]ejections on 16
obviousness grounds cannot be sustained by mere conclusory statements; 17
instead, there must be some articulated reasoning having rational 18
underpinning to support the legal conclusion of obviousness.” In re Kahn, 19
441 F.3d 977, 988 (Fed. Cir. 2006). The analogous art test begins the 20
inquiry into whether the evidence identified by an Examiner supports prima 21
facie obviousness. Nevertheless, the requirement that the Examiner 22
articulate reasoning having rational underpinning to support the legal 23
conclusion of obviousness picks up where the analogous art test leaves off. 24
Id., 441 F.3d at 987. Without such reasoning to explain why the subject 25
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matter as a whole would have been obvious from the disclosures and 1
suggestions found in analogous art cited by the Examiner, the ultimate 2
conclusion of obviousness cannot stand. 3
The only apparent reasoning which the Examiner provides to support 4
combining the teachings of Lincoln with those of Peters, Korman and Kolls 5
is that Lincoln is analogous art. (Ans. 8). The finding that Lincoln is 6
analogous art, standing alone, fails to provide a rational underpinning for the 7
conclusion that the subject matter of claim 1 would have been an obvious 8
modification of Peters’ system. While the Examiner cites Lincoln as 9
suggesting that customer identification should be required before making 10
refunds (e.g., id.), the Examiner fails to explain how this suggestion might 11
have led one of ordinary skill in the art to modify Peters’ system or what sort 12
of modification might have resulted. Without articulated reasoning having 13
rational underpinning to explain how the suggestions of Lincoln might have 14
led one of ordinary skill in the art from the teachings of Peters, Korman and 15
Kolls to the subject matter of claim 1, the conclusion of obviousness cannot 16
stand. 17
The Appellants have shown that the Examiner erred in concluding that 18
Peters discloses or suggests performing the step of determining if the 19
identification of the customer and the purchase order in the refund request 20
matches an identification of the customer and the purchase order in the 21
record of the purchase order. 22
The Appellants also have shown that the Examiner failed to provide 23
reasoning having rational underpinnings explaining why the teachings of 24
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Korman, Kolls and Lincoln would have suggested modifying Peters’ system 1
to perform this step. 2
The Appellants have shown on the record before us that the Examiner 3
erred in rejecting claims 1-10 under § 103(a) as being unpatentable over 4
Peters, Korman, Kolls and Lincoln. 5
Independent claim 11 relates to a method for deploying computer 6
infrastructure. The Examiner concludes that Peters discloses or suggests all 7
of the elements of claim 11. (Ans. 5). The Appellant contends that Peters 8
does not disclose or suggest determining if the identification of the customer 9
and the purchase order in the refund request matches an identification of the 10
customer and the purchase order in the record of the purchase order. (App. 11
Br. 12; Reply Br. 2). An argument for patentability fails if the argument is 12
not based on limitations appearing in the claim. In re Self, 671 F.2d 1344, 13
1348 (CCPA 1982). Claim 11 does not recite determining if the 14
identification of the customer and the purchase order in the refund request 15
matches the identification of the customer and the purchase order in the 16
record of the purchase order; hence, the Appellants’ contention is not 17
commensurate with the scope of claim 11. 18
The Appellants also contend that Lincoln is non-analogous art and 19
that there is no motivation to combine the teachings of Peters, Korman and 20
Kolls with the teachings of Lincoln. (App. Br. 13-14). The Appellants’ 21
latter contentions are not persuasive because the Examiner does not appear 22
to rely on any modification of Peters’ system in rejecting claim 11 under 23
§ 103(a). Therefore, the Appellants have not shown that the Examiner erred 24
in rejecting claim 11 under § 103(a). 25
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Application 11/003,876

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DECISION 1
We REVERSE the rejections of claims 1-10. We AFFIRM the 2
rejection of claim 11. 3
4
AFFIRMED-IN-PART 5
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