Ex Parte Capel et al

Patent Trial and Appeal Board

Aug 26, 2016

13011132 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/011, 132 0112112011
23446 7590 08/30/2016
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Charles W. Capel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
23502US01 4057
EXAMINER
BER ONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES W. CAPEL and JOEL KUNZE
Appeal2014-001366
Application 13/011,132 1
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
The Appellants filed a Request for Rehearing, dated July 25, 2016, of
the Decision on Appeal, dated May 25, 2016 ("Decision," herein), which
reversed the rejection of claims 1-20 under 35 U.S.C. § 112, second
paragraph, and affirmed the rejection of claims 1-20 under 35 U.S.C.
§ 103(a). We have jurisdiction over the Request for Rehearing under 35
U.S.C. § 6(b).
1 According to the Appellants, Integrated Bank Technology, Inc., is the real
party in interest. Appeal Br. 3.
Appeal2014-001366
Application 13/011,132
ANALYSIS
The Final Office Action rejected claims 1-20 under 35 U.S.C.
§ 103(a), based upon various combinations of references, each such
combination including McDevitt, Uchikura, and Bernstein. Final Action
13-27.
The Appellants argue that the Decision affirming the rejections under
35 U.S.C. § 103(a) "misapprehended or overlooked the fact that the Final
Action and the Reply Brief both assert that Bernstein discloses a 'digital
receipt server."' Req. Reh'g 2. Based upon this alleged error, the
Appellants argue that the Examiner's rejections under 35 U.S.C. § 103(a)
should be reversed. Id. at 2-3.
According to the Request for Rehearing, the Examiner relies upon
McDevitt for teaching a "digital receipt server," but only as to certain
aspects of claim 1, and the Examiner relies upon Bernstein (rather than
McDevitt) for teaching a "digital receipt server" as to certain other aspects
of claim 1. Id. at 3--4. .
The Appellants rely upon a quotation from the Final Office Action,
wherein substantial text is omitted and replaced by an ellipsis, to support the
allegation that the Examiner identifies Bernstein as teaching the claimed
"digital receipt server." Id. at 4 (quoting Final Action 16). Yet, the Final
Office Action reveals that the Examiner identifies McDevitt as teaching a
"digital receipt server," which- in the course of the Final Office Action-
the Examiner explains may be modified by the teachings ofUchikura and
Bernstein. See, e.g., Final Action 13-18. Thus, the Final Office Action
states, for example:
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Appeal2014-001366
Application 13/011,132
It would have been obvious to one of ordinary skill in the
art at the time of the invention to include in the method (system,
medium) including storing receipt and identifier at [the] digital
receipt server as taught by the combination of McDevitt and
Uchikura the "accounting server 105" reconciling settlement and
transaction purchase data passed from merchant to issuer to the
server as taught by Bernstein to realize the claimed invention.
Id. at 18. Similarly, the Examiner states: "[T]he accounting server or one or
more servers in communication with [the] account management system of
Bernstein may be combined with the receipts server of McDevitt and
U chikura." Answer 41 (emphasis omitted).
In addition, the Request for Rehearing does not dispute that the
combination ofMcDevitt, Uchikura, and Bernstein teaches all the limitations
of claim 1. Therefore, the Request for Rehearing does not state a basis for
error in the rejection of claim 1. Although the Appellants (Req. Reh'g 2-5)
allege a deficiency in one of the references (Bernstein), such an allegation
cannot suffice to show error, where the rejection is based upon a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) ("[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.")
As to the other pending claims, the Appellants rely upon the same
argument presented as to claim 1. See Req. Reh'g 3. Accordingly, the
Request for Rehearing is not persuasive of error in the rejection of any of
claims 1-20 under 35 U.S.C. § 103(a).
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Appeal2014-001366
Application 13/011,132
DECISION
The Appellants' Request for Rehearing has been granted to the extent
that the Decision has been reconsidered in light of the Appellants' Request
for Rehearing, but is denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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