Ex Parte Foote et al

Board of Patent Appeals and Interferences

Oct 15, 2009

09522085 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte DOUGLAS S. FOOTE and RORY W. MACLEOD 8
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Appeal 2009-000394 11
Application 09/522,085 12
Technology Center 3600 13
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Decided: October 15, 2009 16
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Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. 19
FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
Douglas S. Foote and Rory W. MacLeod (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-8, 22, 23, and 25-29, 3
the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We REVERSE and ENTER A NEW GROUND PURSUANT TO 37 8
C.F.R. 41.50(b). 9
THE INVENTION 10
The Appellants invented a way of modifying self-service terminals 11
(SSTs) in the form of automated teller machines (ATMs) to: provide a 12
consistent user interface; reduce the degree of security risk from fraud by a 13
third party observing a user's PIN as it is entered or the balance in a user's 14
account if this balance is presented on the ATMs display; and reduce the 15
annoyance in inclement weather to input information to a touch input 16

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 4, 2008) and Reply Brief (“Reply Br.,” filed April 2,
2008), and the Examiner’s Answer (“Ans.,” mailed April 2, 2008).
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mechanism ATM or to come into contact with a cold, soiled, or germ laden 1
touch input mechanism. (Specification 1:4 – 2:4). 2
An understanding of the invention can be derived from a reading of 3
exemplary claim 1, which is reproduced below [some paragraphing added]. 4
1. A method comprising: 5
a) in a group of ATMs, 6
i) all of which are located in public places, 7
ii) all of which are connected to a financial 8
network; 9
iii) all of which are operable to dispense cash to 10
customers in response to customer commands; 11
iii) in which is contained a sub-group of ATMs in 12
which the ATMs are not capable of dispensing 13
cash in response to commands issued by a 14
customer from a cellular telephone, 15
identifying an ATM in the sub-group; and 16
b) modifying said identified ATM into a retro-fitted ATM 17
which dispenses cash in response to commands received from a 18
cellular telephone. 19
THE REJECTION 20
The Examiner relies upon the following prior art: 21
Norris US 5,940,811 Aug. 17, 1999
Gustin US 6,012,048 Jan. 4, 2000
Suer US 6,431,439 B1 Aug. 13, 2002
Claims 1-8, 22, 23, and 25-29 stand rejected under 35 U.S.C. § 103(a) as 22
unpatentable over Suer, Norris, and Gustin. 23
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ISSUE 1
The issue of whether the Appellants have sustained their burden of 2
showing that the Examiner erred in rejecting claims 1-8, 22, 23, and 25-29 3
under 35 U.S.C. § 103(a) as unpatentable over Suer, Norris, and Gustin turns 4
on whether the references showed that it was predictable to use cellular 5
telephones to input information into an ATM. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be 8
supported by a preponderance of the evidence. 9
Facts Related to Appellants’ Disclosure 10
01. The term "wireless telephone" includes any wireless 11
communication device for facilitating telephone conversations, 12
and is not restricted to a conventional cellular telephone. 13
Specification 2:19-21. 14
Facts Related to the Prior Art 15
Suer 16
02. Suer is directed to a hand-held device to record financial 17
transactions information and make an electronic record of the 18
transaction, so that the user can electronically store information 19
about a check transaction while writing the check. Suer 3:54-58. 20
03. Suer’s device “provides a check writing surface that supports a 21
check as it is being filled out by the user, that captures the 22
handwritten payee information as it is being written, and that 23
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stores the payee information in a bit-map format […] in the 1
device's memory.” Suer 3:61-65 2
04. Suer’s “portable hand-held device may automatically grant an 3
accounting software program, such as Quicken, access to the 4
financial transaction information.” Suer 4:8-11. 5
05. Suer’s “device may [use] a transceiver, e.g., such as an infrared 6
(IR) transceiver, for wireless communication between the device 7
and a terminal unit, such as a personal computer, an ATM, or a 8
terminal at a merchant's site” to transfer information about a 9
financial transaction to accounting programs running on the PC. 10
This allows the user to more quickly and easily communicate with 11
the terminal unit. Suer 4:30-41. 12
06. Suer’s “Information Storage Device may be synchronized with 13
the Host PC […] by a communications link, such as a wireless 14
link using IR pulses, RF pulses, or any other wireless 15
communications link.” Suer 13:18-23. 16
Facts Related To Differences Between The Claimed Subject Matter And 17
The Prior Art 18
07. None of the references describe or suggest using a cellular 19
telephone to communicate with an ATM. 20
Facts Related To The Level Of Skill In The Art 21
08. Neither the Examiner nor the Appellants has addressed the level 22
of ordinary skill in the pertinent arts of systems analysis and 23
programming, on line banking systems, automated teller machine 24
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design, or commercial financial transaction system design. We 1
will therefore consider the cited prior art as representative of the 2
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 3
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific 4
findings on the level of skill in the art does not give rise to 5
reversible error ‘where the prior art itself reflects an appropriate 6
level and a need for testimony is not shown’”) (quoting Litton 7
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 8
(Fed. Cir. 1985). 9
Facts Related To Secondary Considerations 10
09. There is no evidence on record of secondary considerations of 11
non-obviousness for our consideration. 12
PRINCIPLES OF LAW 13
Obviousness 14
Section 103 forbids issuance of a patent when ‘the differences 15
between the subject matter sought to be patented and the prior art are 16
such that the subject matter as a whole would have been obvious at 17
the time the invention was made to a person having ordinary skill in 18
the art to which said subject matter pertains.’ 19
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 20
21
In Graham, the Court held that that the obviousness analysis is 22
bottomed on several basic factual inquiries: “[(1)] the scope and content of 23
the prior art are to be determined; [(2)] differences between the prior art and 24
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 25
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 26
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U.S. at 406. “The combination of familiar elements according to known 1
methods is likely to be obvious when it does no more than yield predictable 2
results.” Id. at 416. 3
ANALYSIS 4
As discussed supra, the claims are drawn to modifying ATM’s so cash 5
can be withdrawn from commands from a cellular telephone. See claim 1 6
limitation (b), and claim 8, limitation (6). The Appellants present numerous 7
arguments, but the dispositive argument is that none of the references 8
suggest using a cellular telephone to operate an ATM. See App. Br. 7 and 8; 9
see also Reply Br. 1-2. 10
The Examiner did not find that any of the references describe using a 11
cellular telephone to operate an ATM. Instead, the Examiner found that 12
Suer described using a wireless device to operate an ATM and that a cellular 13
telephone is a species of the wireless device genus. Ans. 4. We agree with 14
this finding as far as it goes. The issue is showing that the species of cellular 15
telephone was a predictable alternative to the species of wireless devices 16
described by Suer (Suer was the only reference describing such a use for 17
wireless devices). The Examiner concluded it was obvious to use the 18
cellular telephone to attract customers having different devices. 19
This is not enough to present a prima facie case. As the Appellants 20
argued, if a reference shows a species, that does not block a patent to another 21
species. App. Br. 15. The fact that a claimed species or subgenus is 22
encompassed by a prior art genus is not sufficient by itself to establish a 23
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prima facie case of obviousness. In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1
1994). 2
The Examiner then went on to find that using a cellular telephone would 3
not affect Suer’s system because Suer’s system is merely used for the 4
purpose of facilitating wireless communication with another terminal. Id. 5
This is not accurate. In Graham v. John Deere Co., 383 U.S. 1, 13-14 6
(1966), differences between the prior art and the claims at issue are to be 7
ascertained. The differences between Suer and the claimed cellular 8
telephone per se are in the capacity for use of Suer’s device that a cellular 9
phone would not necessarily have, as follows. (1) Suer is directed to a hand-10
held device that has the capacity to record financial transactions information 11
and make an electronic record of the transaction, so that the user can 12
electronically store information about a check transaction while writing the 13
check. FF 02. (2) Suer’s device provides a check writing surface that 14
supports a check as it is being filled out by the user, that captures the 15
handwritten payee information as it is being written, and that stores the 16
payee information in a bit-map format in the device's memory. FF 03. (3) 17
Suer’s portable hand-held device may automatically grant an accounting 18
software program, such as Quicken, access to the financial transaction 19
information. FF 04. (4) Suer’s device may use a transceiver, such as an 20
infrared (IR) transceiver, for wireless communication between the device 21
and a terminal unit, such as a personal computer, an ATM, or a terminal at a 22
merchant's site to transfer information about a financial transaction to 23
accounting programs running on the PC. This allows the user to more 24
quickly and easily communicate between the accounting data and the 25
terminal unit. FF 05. 26
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The Examiner has provided no evidence that the cellular telephone 1
species of wireless devices would perform as the species described by Suer. 2
The Examiner did not even produce evidence or make a finding that it was 3
predictable to incorporate a cellular telephone in Suer’s PDA, or to 4
incorporate Suer’s PDA in a cellular telephone. 5
Thus, we find the Appellants’ arguments persuasive as to both 6
independent claims 1 and 8 and claims 2-7, 22, and 27-29 depending from 7
them. 8
As to claims, 23, 25, and 26, these claims depend from cancelled claims 9
20 and 15, and so purport to incorporate non-existent claim limitations. As a 10
procedural matter, we reverse the rejection of these claims under § 103. A 11
rejection of a claim, which is so indefinite that “considerable speculation as 12
to meaning of the terms employed and assumptions as to the scope of such 13
claims” is needed, is likely imprudent. See In re Steele, 305 F.2d 859, 862 14
(CCPA 1962) (holding that the examiner and the board were wrong in 15
relying on what at best were speculative assumptions as to the meaning of 16
the claims and basing a rejection under 35 U.S.C. § 103 thereon.) We find it 17
imprudent to speculate as to the scope of claims 23, 25, and 26 in order to 18
reach a decision on the obviousness of the claimed subject matter under § 19
103. It should be understood, however, that our reversal is based on the 20
indefiniteness of the claimed subject matter and does not reflect on the 21
merits of the underlying rejection. 22
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NEW GROUND OF REJECTION 1
The following new ground of rejection is entered pursuant to 37 C.F.R. § 2
41.50(b). Claims 23, 25, and 26 are rejected under 35 U.S.C. § 112, second 3
paragraph, as failing to particularly point out and distinctly claim the 4
invention. 5
The test for definiteness under 35 U.S.C. § 112, second paragraph, is 6
whether “those skilled in the art would understand what is claimed when the 7
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety 8
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations 9
omitted). 10
Each of these claims is written in dependent form incorporating the 11
subject matter of a cancelled parent claim. Claim 23 claims dependence 12
from cancelled claim 20, and claim 25 claims dependence from that claim 13
23. Claim 26 claims dependence from cancelled claim 15. Thus, each of 14
these claims purports to incorporate non-existent subject matter, and so we 15
enter a new ground of rejection of claims 23, 25, and 26 under 35 U.S.C. § 16
112, second paragraph, as being indefinite for failing to particularly point 17
out and distinctly claim what Appellants’ intend as their invention. 18
CONCLUSIONS OF LAW 19
The Appellants have sustained their burden of showing that the 20
Examiner erred in rejecting claims 1-8, 22, and 27-29 under 35 U.S.C. § 21
103(a) as unpatentable over Suer, Norris, and Gustin. 22
As a procedural matter, we reverse the rejection of claims 23, 25, and 26 23
under § 103(a) because we find it imprudent to speculate as to the scope of 24
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claims 23, 25, and 26 in order to reach a decision on the obviousness of the 1
claimed subject matter. 2
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 3
Claims 23, 25, and 26 are rejected under 35 U.S.C. § 112, second paragraph, 4
as failing to particularly point out and distinctly claim the invention. 5
DECISION 6
To summarize, our decision is as follows. 7
• The rejection of claims 1-8, 22, 23, and 25-29 under 35 U.S.C. § 8
103(a) as unpatentable over Suer, Norris, and Gustin is not sustained. 9
• A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 10
o Claims 23, 25, and 26 are rejected under 35 U.S.C. § 112, 11
second paragraph, as failing to particularly point out and 12
distinctly claim the invention. 13
This Decision contains a new rejection within the meaning of 37 C.F.R. 14
§ 41.50(b) (2007). 15
Our decision is not a final agency action. 16
37 C.F.R. § 41.50(b) provides that Appellants, WITHIN TWO 17
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 18
the following two options with respect to the new rejection: 19
(1) Reopen prosecution. Submit an appropriate amendment of 20
the claims so rejected or new evidence relating to the claims 21
so rejected, or both, and have the matter reconsidered by the 22
Examiner, in which event the proceeding will be remanded 23
to the Examiner. . . . 24
(2) Request rehearing. Request that the proceeding be reheard 25
under § 41.52 by the Board upon the same record. . . . 26
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 2
1.136(a)(1)(iv) (2007). 3
4
REVERSED 5
41.50(b) 6
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mev 10
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MICHAEL CHAN 12
NCR CORPORATION 13
1700 SOUTH PATTERSON BLVD 14
DAYTON OH 45479-0001 15
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