Ex Parte Fujisawa et al

Board of Patent Appeals and Interferences

Jun 22, 2012

10220614 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/220,614 09/03/2002 Tomonori Fujisawa K-2076 7206
32628 7590 06/22/2012
KANESAKA BERNER AND PARTNERS LLP
1700 DIAGONAL RD
SUITE 310
ALEXANDRIA, VA 22314-2848
EXAMINER
SHERR, CRISTINA O
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
06/22/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMONORI FUJISAWA and SHOUJI SATOU
____________

Appeal 2010-007813
Application 10/220,614
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007813
Application 10/220,614

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1, 4-6, and 10 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to an individual
certification method using a portable terminal (Spec. 2:12-16). Claim 1,
reproduced below with the numbering in brackets added, is representative of
the subject matter on appeal.

1. An individual certification method using a portable telephone,
said method comprising the sequentially executed steps of:
[1] requesting a unique query code from a certification server,
the requesting being performed by a registered user through a portable
telephone;
[2] verifying the user as a registered user;
[3] generating the unique query code on the certification server,
the unique query code being a random one-time code uniquely
associated with the user request;
[4] transmitting the unique query code from the certification
server to the user's portable telephone;
receiving by the portable telephone the unique query code
generated by the certification server;
directly and wirelessly transferring the query code from said
portable telephone to a sales management server;
then returning the query code from said sales management
server to the certification server;
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[5] comparing the generated query code transferred to the
portable telephone with the query code transmitted from the sales
management server in the certification server for verification; and
[6] transmitting the user's personal identification information to
the sales management server when the two query codes are
determined to be identical to each other.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Donahue US 4,880,964 Nov. 14, 1989
Walsh US 6,144,848 Nov. 7, 2000
Yamashita US 6,360,206 B1 Mar. 19, 2002

The following rejections are before us for review:
1. Claim 1 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita and Donahue.
2. Claims 4-6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita, Donahue, and Walsh.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1 Additional findings may
appear in the Analysis section below.
FF1. Yamashita is directed to an electronic shopping system that makes use
of a discount coupon (Abstract).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF2. Yamashita at col. 3:48-52 does not disclose transmitting the user's
personal identification information to the sales management server when the
two query codes are determined to be identical to each other
FF3. Donahue is directed to a scannable fraud preventing coupon having a
first panel with a coded scannable image and a second panel (Abstract) as
seen in Fig. 2.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose claim limitations [1], [2], [3], [5], and [6]
(Br. 8). The Appellants have also argued that the combination of references
is improper (Br. 8, Reply Br. 3-5).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 3-5, 8-10).
We agree with the Appellants. The Examiner has cited to Yamashita
at col. 3:48-52 as disclosing claim limitation [6] (Ans. 4) but we do not
agree with this finding (see FF2). While Yamashita at his portion does
disclose sending “authentication results” it is not disclosed that “the user’s
personal identification information” is transmitted.
Granted, however the transmission of “personal identification
information” is conventionally known. The Examiner has cited that claim
elements such as “generating the unique query code” and using a “portable
telephone” as a computer terminal are well known and we not disagree with
these contentions. However, even taking the cited prior art references here
to disclose claim limitations [1], [2], [3], [5], and [6] we find that the cited
combination of the prior art elements together with the taken Official Notice
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to result in the limitations of claim lacks articulated reasoning with rational
underpinnings and would not have been obvious.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme
Court at 418 noted that in an obviousness analysis that“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”. Here,
Yamashita is directed to an electronic shopping system that makes use of a
discount coupon (FF1) and Donahue is directed to preventing coupon fraud
(FF3) and no articulated reasoning has been provided for transmitting the
user’s personal identification information in the manner and sequence
outlined in claim limitation [6] in relation to the other claim limitations.
We find no articulated reasoning for the combination of references in
using the teachings directed to using coupons to be combined with the other
teachings known in the art in the claimed manner and to transmit the user's
personal identification information to the sales management server in the
cited combination. For these reasons the rejection of claim 1 and its
dependent claims is reversed.
Claim 10 contains similar limitations to those addressed above and the
rejection of this claim and its dependent claims is not sustained for these
same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section.

Appeal 2010-007813
Application 10/220,614

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DECISION
The Examiner’s rejection of claims 1, 4-6, and 10 is reversed.

REVERSED

MP