Ex Parte Betancourt et al

Patent Trial and Appeal Board

Mar 23, 2015

11678125 (P.T.A.B. Mar. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERNEST BLAS BETANCOURT,
DEBORAH ANNE BETANCOURT, and KOKESH P. KADAKIA
____________

Appeal 2012-009419
Application 11/678,125
1

Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN
and SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a decision of
the Examiner to reject claims 28–47. We have jurisdiction under 35 U.S.C. § 6.

We AFFIRM.

1
According to Appellants, the real party in interest is Newfuel Acquisition
Corporation (Appeal Brief filed March 21, 2012, hereafter “App. Br.” 2).
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2

BACKGROUND
The invention relates to a system and method for providing control of a
service system for points of sale (Specification, hereafter “Spec.,” ¶ 1). The
invention is directed towards pre-authorizing processing transaction requests prior
to a vehicle's arrival at a service station for improving the efficiency of the
refueling process (id. ¶¶ 2, 3, 6).
Representative claims 28 is reproduced from page 14 of the Appeal Brief
(Claims App’x) as follows, with emphasis added to relevant claim limitations:
28. A method comprising:
prior to a vehicle's arrival at a vehicle service station, receiving, by a
computing device of the vehicle service station, transaction information for a pre-
authorized fueling transaction at the vehicle service station, wherein the transaction
information further includes a confirmation of funding by a carrier organization
employing at least one of the vehicle and a driver of the vehicle, wherein the
confirmation is specific to the pre-authorized fueling transaction;

receiving, by the computing device, an activation request for a fueling
system upon the vehicle's arrival at the vehicle service station, wherein the
activation request includes an authorization code corresponding to the pre-
authorized fueling transaction;

determining, by the computing device, that the fueling transaction was
pre-authorized using the authorization code;

activating the fueling system without requiring entry of payment
information; and

logging transaction data associated with the fueling transaction upon
completion of the fueling transaction.

The Examiner rejected all the claims at issue as follows:
I. Claims 28–47 under 35 U.S.C. § 112, second paragraph,
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II. Claims 28–32, 35–39 and 42–46 under 35 U.S.C. § 103(a) as
unpatentable over Grdina,
2
Withrow,
3
and Pereyra,
4

III. Claims 33, 40, and 47 under 35 U.S.C. § 103(a) as unpatentable over
Grdina, Withrow, Pereyra, and Fleischer,
5
and
IV. Claims 34 and 41 under 35 U.S.C. § 103(a) as unpatentable over
Grdina, Withrow, Pereyra, and Leung.
6

(Final Action entered August 16, 2011, hereafter “Final Act.,” 2–17;
Examiner’s Answer mailed April 10, 2012, hereinafter “Ans.,” 4–10).

DISCUSSION
For Rejection I, Appellants argued all the claims together, with claim 28
serving as a representative claim (App. Br. 6). For Rejection II, where Appellants
asserted that Grdina, Withrow, and Pereyra failed to disclose all the limitations of
the claims, Appellants used independent claim 28 as a representative claim, where
independent claims 35 and 42, as well as dependent claims 36–39 and 43–46, stand
or fall with it (id. at 7–11). For Rejections III and IV, as to claims 33, 40, and 47,
as well as claims 34 and 41, Appellants similarly contended that Grdina, Withrow,
and Pereyra failed to disclose all the limitations of base claim 28, where the
additional references of Fleischer and Leung, respectively, also failed to cure the
deficiencies (id. at 7, 12); therefore, the issues that we will address for claim 28
also apply to these claims.

2
US Patent 6,965,872 B1, issued November 15, 2005.
3
US Patent 6,116,505, issued September 12, 2000.
4
US Publication 2003/0120608 A1, published June 26, 2003.
5
US Patent 4,250,550, issued February 10, 1981.
6
US Patent 7,379,920 B2, issued May 27, 2008.
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35 U.S.C. § 112, Second Paragraph Rejection
The Examiner rejected all the claims as indefinite under 35 U.S.C. § 112,
second paragraph on the basis that the claim term “logging transactional data” for
the fueling transaction did not set forth “any steps involved in the method/process,”
so that “it is unclear what method/process applicant is intending to encompass.”
(Ans. 5). The Examiner further stated that the claims were indefinite because they
merely recited a use absent any active, positive steps delimiting the actual practice
of the claim. (Id.).
Appellants argued that the term “logging transactional data” was not
indefinite because one of ordinary skill in the art could interpret the term in light of
the specification (App. Br. 6). Appellants asserted that one of skill in the art
would “recognize that logging is an act and understand the scope of this feature.”
(Reply Brief, hereafter “Rep. Br.,” 1).
Claims are in compliance with 35 U.S.C. § 112, second paragraph if “the
claims, read in light of the specification, reasonably apprise those skilled in the art
both of the utilization and scope of the invention, and if the language is as precise
as the subject matter permits.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-
Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Here, the Specification
discloses the content and storage of “transaction log information.” See Spec. ¶¶
57, 58, 60. For example, the Specification discloses:
Upon completion of the transaction, transaction log
information may be received from the service system in
step 1225. For example, a cost associated with the
transaction as well as an amount of fuel dispensed may
be reported. In step 1230, the first point of sale system
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may be identified from multiple point of sale systems as
the appropriate recipient of the transaction log
information. The identification and determination may be
made, in one example, by comparing a transaction ID
transmitted along with the transaction log information
with a transaction ID which may have been stored when
the service system was activated. Once the corresponding
point of sale system is determined, the transaction log
information is transmitted thereto in step 1235. In one or
more arrangements, a copy of the transaction log
information may be stored locally in the surrogate control
system, for various purposes including auditing and
record keeping.
Spec. ¶ 60.
While we acknowledge that there is no specific disclosure in the
Specification for “logging” per se, we nonetheless determine that one of ordinary
skill in the art would be reasonably apprised of the scope of “logging transactional
data” in light of the related disclosures of the Specification, where the content and
subsequent storage of the transaction information is disclosed, and further in light
of our view that “logging” is, in and of itself, a method step. We agree with the
Appellants that the scope of this term “logging” could be reasonably viewed as the
act (or step) of recordation of the transactional data and that the claim term meets
the requirements of 35 U.S.C. § 112, second paragraph. We therefore reverse the
Examiner’s indefiniteness rejection of representative claim 28.
35 U.S.C. § 103(a) Rejection
Appellants argued that the Examiner failed to establish prima facie
obviousness because the combination of Grdina, Withrow, and Pereyra failed to
disclose every element of representative claim 28 (App. Br. 7). More specifically,
Appellants contended that the references failed to disclose the claim limitations of
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“further includes a confirmation of funding by a carrier organization employing at
least one of the vehicle and a driver of the vehicle” and “activating the fueling
system without requiring entry of payment information.” (Id. at 7–10).
Specifically, Appellants asserted that Grdina failed to disclose the claim
limitation related to the confirmation of funding associated with a carrier
organization “employing at least one of the vehicle and a driver of the vehicle,”
because its teachings are limited only to confirmation in a consumer/retailer sales
arrangement, and do not include the teaching of use with a carrier organization that
employs a vehicle and driver (id. at 7–8). Appellants further contended that there
would be no reason to adapt Grdina to the context of a carrier organization,
because such organizations do not employ consumers (id. at 8). Further,
Appellants contended that Pereyra also fails to disclose a carrier organization (id.
at 9).
In response, the Examiner noted Grdina’s disclosure of pre-authorization of
transactions, with scanning of a bar code at a fuel pump with pricing, and also its
teaching of a transaction associated with the vehicle and driver of a carrier
company (Ans. 5–6, citing Grdina at 10:46–57; 5:25–28). Further, the Examiner
found that Pereyra’s disclosures also supported the teaching of confirmation of
funding by a carrier organization (id., 7; citing Pereyra, Fig. 3D–step 952).
We determine that the preponderance of the evidence supports the
Examiner’s findings that the confirmation claim limitation is disclosed. Grdina
teaches, in context, that the use of its invention includes both private and
commercial consumer use, where utilization by “operators of fleet and cargo
transportation companies” is disclosed. See Grdina at 5:21–25. We concur with
the Examiner that one of ordinary skill in the art would view the disclosure of pre-
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authorization at a fuel pump in that light, where pre-authorization would include
use with carrier fleets, which employ vehicles and their drivers. See Grdina at
10:46–57.
Appellants further asserted that Withrow failed to disclose the claim
limitation of “activating the fueling system without requiring entry of payment
information.” (App. Br., 10). More specifically, Appellants stated that Withrow
requires payment information be provided before activating the fuel system, citing
its teaching that “[t]he dispenser is then prepared to receive identifying information
and/or financial information from the customer to enable the ensuing transaction.”
(id., citing Withrow at 11:18–20).
The Examiner relied upon Withrow’s disclosure of the use of a transponder
for finding that fueling can occur without entry of payment information (Ans. 11).
In specific support, the Examiner referenced the disclosure that “if the customer is
using a personal or car-mounted transponder to identify herself (Block 305), the
control system receives the customer identifying information and/or financial
information from the transponder… [where] the control system attempt to obtain
pre-authorization (Block 385),” and where these steps lead to the activation of the
fueling system (id., citing Withrow, 11:48–59; 12:52 – 55). We determine that the
preponderance of the evidence supports the Examiner’s finding that the activation
claim limitation is disclosed. Withrow’s example of transponder use clearly
discloses the activation of the fueling system without requiring entry of payment
information. We therefore determine that, based upon the Examiner’s findings,
Grdina, Withrow, and Pereyra serve to establish prima facie obviousness of
representative claim 28.

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SUMMARY
The rejection of claims 28–47 under 35 U.S.C. § 112, second paragraph is
reversed.
The rejection of claims 28–47 under 35 U.S.C. § 103(b) 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).

AFFIRMED

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