Ex Parte Capel et al

Patent Trial and Appeal Board

May 23, 2016

13011132 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/011, 132 0112112011
23446 7590 05/25/2016
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
05/25/2016 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 APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellants, Integrated Bank Technology, Inc., is the real
party in interest. Appeal Br. 3.
Appeal 2014-001366
Application 13/011,132
ILLUSTRATIVE CLAIM
1. A method for coordinating the provision of a digital
receipt associated with a financial transaction, the method
compnsmg:
receiving, at a digital receipt server and from a merchant,
a digital receipt and an identifier corresponding to the digital
receipt, wherein the identifier corresponding to the digital
receipt uniquely identifies the digital receipt;
in response to said receiving a digital receipt and the
identifier at the digital receipt server, storing, in the digital
receipt server, the digital receipt and the identifier
corresponding to the digital receipt;
subsequent to said storing the digital receipt and the
identifier at the digital receipt server, receiving, at the digital
receipt server and from an issuer, an inquiry and the identifier
corresponding to the inquiry; and
wherein the identifier corresponding to the inquiry is
transmitted from the merchant to the issuer and subsequently
communicated from the issuer to the digital receipt server.
CITED REFERENCES
The Examiner relies upon the following references:
Herman et al. US 6,341,353 Bl Jan.22,2002
(hereinafter "Herman")
Sobek US 2003/0144953 Al July 31, 2003
Mikurak US 2004/0064351 Al Apr. 1, 2004
McDevitt et al. US 2007/0164106 Al July 19, 2007
(hereinafter "McDevitt")
Bernstein et al. US 2009/0177563 Al July 9, 2009
(hereinafter "Bernstein")
T omchek et al. US 2009/0228365 Al Sept. 10, 2009
(hereinafter "T omchek")
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Appeal 2014-001366
Application 13/011,132
McKenna et al.
(hereinafter "McKenna")
Uchikura
US 2009/0313132 Al Dec. 17, 2009
US 2011/0006113 Al Jan. 13, 2011
Rothschild et al. US 2011/0145083 Al June 16, 2011
(hereinafter "Rothschild")
REJECTIONS
I. Claims 1-20 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to comply with the definiteness requirement. Final
Action 10-11.
II. Claims 1, 9, and 15 were rejected under 35 U.S.C. § 103(a) as
being unpatentable over McDevitt, Uchikura, and Bernstein. Final Action
13-18.
III. Claims 2, 3, 10, 11, 16, and 17 were rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McDevitt, Uchikura, Bernstein, and
Tomchek. Final Action 19-21.
IV. Claims 4--7, 12, and 18-20 were rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McDevitt, Uchikura, Bernstein,
Tomchek, Sobek, and Rothschild. Final Action 21-24.
V. Claim 8 was rejected under 35 U.S.C. § 103(a) as being
unpatentable over McDevitt, Uchikura, Bernstein, Tomchek, Sobek,
Rothschild, and Mikurak. Final Action 24--25.
VI. Claims 13 and 14 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McDevitt, Uchikura, Bernstein, McKenna. Final Action
26-27.
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Application 13/011,132
FINDfNGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Action, at pages 10 and 13-27, and the Answer, at pages 5--49. Additional
findings of fact may appear in the Analysis below.
ANALYSIS
Rejection I
"Identifier Corresponding to the Inquiry"
Independent claims 1 and 9 - and, thus, claims 1-14 with the
dependent claims included- stand rejected under 35 U.S.C. § 112, second
paragraph, as lacking an antecedent basis for "identifier corresponding to the
inquiry." Final Action 10.
The Appellants agree with this rejection and states that a correction
will be made when prosecution is re-opened. Reply Br. 2.
This rejection is sustained.
"Issuer"
All three independent claims (1, 9, and 15) - and, thus, all claims 1-
20 - stand rejected under 35 U.S.C. § 112, second paragraph, because the
term "issuer" purportedly renders the claims indefinite. Final Action 11.
According to the Examiner, because the claims do not refer to a credit
card (or any card), the use of the term "issuer" "is a non-sequitur" and that,
even if a credit card transaction were assumed, "the issuer could be either
the merchant's issuer or the buyer's issuer." Final Action 11. Further, some
references- including one identified by the Examiner, although the
reference is not the basis for any other rejection on appeal-refer to a
merchant as the "issuer" of a receipt. Final Action 11.
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Application 13/011,132
The term "issuer" (even without any reference to a card in the claim)
does not render the claim indefinite. The Examiner erred by considering the
meaning of "issuer" outside of the context of the Specification, as an
assessment of compliance with§ 112, i-f 2 requires. This rejection is not
sustained.
Claims 2, 10, and 16
The Final Action discusses claims 2, 10, and 16, but does not set forth
a basis for any indefiniteness as to any of these claims. Final Action 11.
Accordingly, insofar as the Final Action rejected any of claims 2, 10,
and 16 - and, thus, the claims depending from them (claims 3-8, 11, and
17-20)-under 35 U.S.C. § 112, second paragraph, such rejection is not
sustained.
Rejection II
Each of the independent claims (claims 1, 9, and 15) stands rejected
under 35 U.S.C. § 103(a) over a combination of McDevitt, Uchikura, and
Bernstein. Final Action 13-18. In regard to claims 9 and 15, the Appellants
rely upon the arguments presented as to claim 1. Appeal Br. 17, 19.
The Appellants' arguments as to claim 1, discussed below, are
unpersuasive. Accordingly, the rejection of claims 1, 9 and 15 under 35
U.S.C. § 103(a) is sustained.
No Reason for Combining McDevitt and Bernstein
The Appellants argue that the rejection of claim 1 employs
impermissible hindsight and fails to provide a reason for combining the
teachings ofMcDevitt and Bernstein. Appeal Br. 12-13. Although the
Appellants acknowledge that the Examiner actually sets forth such a
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Application 13/011,132
rationale - "[a] person of skill in the art would have been motivated at the
time of the invention to combine the features to reduce the number of parties
accessing confidential account data, for greater security, while eliminating
erroneous authorization request declines" (Final Action 18) - the
Appellants contend that it is insufficient because "[ t ]his justification is no
more than a paraphrasing of a couple sentences of Bernstein" (Appeal Br. 13
(citing Bernstein i-fi-f 10, 11)).
The Appellants state no defect in the reason, other than its source (i.e.,
Bernstein). The Appellants' argument is unpersuasive because a prior art
reference may provide a reason for combining its teachings with those of
other references. See WMS Gaming Inc. v. International Game Tech., 184
F.3d 1339, 1355 (Fed. Cir. 1999) ("The suggestion to combine may be found
in explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved.").
No "Reasonable Expectation of Success"
The Appellants argue that the Examiner erred in rejecting claim 1
because the Examiner presents "no articulated reasons or findings of fact or
other non-boilerplate reasoning" for a "reasonable expectation of success"
when combining McDevitt and Bernstein and fails to show that their
combination would have been "predictable." Appeal Br. 13-14.
"The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention." Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., 2016 WL 2620512, at *6 (Fed. Cir. 2016). Thus, the Appellants'
argument fails to address the substance of the rejection, because the
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Application 13/011,132
Examiner proposes a combination of references (and corresponding
teachings) that collectively meet the limitations of claim 1. Such an analysis
as the Examiner has employed-unlike an "obvious to try" approach-
subsumes the issue of whether there is a reasonable expectation of success in
arriving at the claimed invention. The Appellants' argument is not
persuasive.
McDevitt and Bernstein "teach away from each other"
The Appellants argue that the Examiner erred in rejecting claim 1,
based upon a combination of references including McDevitt and Bernstein,
because McDevitt requires "specialized point-of-sale equipment" whereas
Bernstein "squarely rejects the use of such specialized equipment," such that
these two references "are mutually repellent and teach away from each
other." Appeal Br. 14.
However, "teaching away" requires some criticism or discouragement
from pursuing the claimed invention. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). This the Appellants have not
shown.
Insofar as the Appellants might be contending that Bernstein and
McDevitt have incompatible features and thus cannot be combined, such an
argument is also unpersuasive. "[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review." In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
Bernstein Does Not Teach a "Digital Receipt Server"
The Appellants contend that the Examiner erred in "assert[ing] that
Bernstein discloses a 'digital receipt server,"' in the rejection of claim 1.
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Appeal Br. 14--15 (citing Final Action 15-18). The Appellants also appear
to argue that Bernstein is defective because it does not disclose "receipts,"
even though the Appellants do not contend that the Examiner relies upon
Bernstein for such teaching. Reply Br. 8. The Appellants' arguments are
unpersuasive, because the Examiner relies upon McDevitt, not Bernstein, for
teaching these claimed features. See, e.g., Final Action 15 ("McDevitt
teaches storing, in the digital receipt server, the digital receipt and the
identifier corresponding to the digital receipt.") The Final Action cites
portions of McDevitt supporting these findings. See id. at 14 (citing
McDevitt i-fi-18, 24, 27, 34, 37).
Uchikura Does Not Teach an "identifier" that
"uniquely identifies the digital receipt"
The Appellants argue that the Examiner erred in relying upon
Uchikura for teaching claim 1 's "identifier corresponding to the digital
receipt uniquely identifies the digital receipt" because "Uchikura does not
disclose digital receipts or even paper receipts at all." Appeal Br. 15; see
also Reply Br. 9.
This argument is unpersuasive because - as is stated in the Final
Action on page 15 and in the Answer at page 43 - the Examiner relies upon
a combination of Uchikura and McDevitt for teaching the limitation at issue,
rather than relying upon Uchikura alone. See In re Keller, 642 F.2d 413,
426 (CCP A 1981) ("one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.").
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Rejections 111-Vl
For all of the dependent claims (2-8, 10-14, and 16-20) that stand
rejected under 35 U.S.C. § 103(a), the Appellants list the additional
references relied upon in the Final Rejection and state a rationale identified
by the Examiner for combining each such reference with the other references
employed in the respective rejection. (Appeal Br. 16-20). After listing the
references and the corresponding rationales, the Appellants identically state
(for each of three groupings of claims): "It is respectfully submitted that
such thin justifications are insufficient under KSR." (Appeal Br. 17, 19, 20).
Yet, the Appellants have provided no explanation of why any of the
justifications might be defective. Indeed, "any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Because the Appellants have failed to provide an adequate
explanation for their assertions of error, the Appellants' arguments are not
persuasive. The rejection of claims 2-8, 10-14, and 16-20 is sustained.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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