Ex Parte Getchius

Patent Trial and Appeal Board

Dec 16, 2015

12938661 (P.T.A.B. Dec. 16, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/938,661 11/03/2010
25537 7590 12/18/2015
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Jeffrey M. Getchius
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.
20100208 3902
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/18/2015 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY M. GETCHIUS
Appeal2013-004035
Application 12/938,661
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-20 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2013-004035
Application 12/93 8, 661
THE INVENTION
The Appellant's claimed invention is directed to a method and
apparatus for facilitating the purchase of items at a point-of-sale terminal
based on barcode information presented by a wireless device (Spec., para
12). Claim 1, reproduced below with the numbering in brackets added, is
representative of the subject matter on appeal.
1. A method comprising:
[ 1] receiving barcode information at a point-of-sales terminal,
wherein the barcode information is obtained from a barcode image
acquired from a wireless communication device, the barcode image
corresponding to a transaction between the wireless communication
device and the point-of-sales terminal; and
[2] generating a message in response to the received barcode
information for transmission to the wireless communication device to
permit acknowledgement of the transaction by a user of the wireless
communication device.
THE REJECTIONS
The following rejections are before us for review:
1. Claim 2 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
2. Claims 1, 2, 4--7, 9--11, 14--16, 19, and 20 are rejected under
35 U.S.C. § 102(a) and (e) as anticipated by Wong (US 2010/0138344 Al,
pub. June 3, 2010).
3. Claims 3, 8, 12, 13, 17, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wong.
2
Appeal2013-004035
Application 12/93 8, 661
FINDil-.JGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
ANALYSIS
Rejection under 35 USC§ 112, second paragraph
The Examiner has determined that claim 2 is indefinite because there
is no antecedent basis for the limitation for generating a notification message
in response "to the acknowledgment of the transaction by the user" (Ans. 3,
7). The Examiner states that an acknowledgement has not been performed
in the claim (id.).
The Appellant argues that the rejection of claim 2 is improper and that
one of ordinary skill in the art would be able to ascertain the scope of the
claim (App. Br. 5-7; Reply Br. 2--4).
We agree with the Appellant. Here, base independent claim 1 recites
that the device "permit [ s] acknowledgment of the transaction by a user" It
would be clear to one of ordinary skill in the art that the permitted
"acknowledgement" in the base claim was the "acknowledgement" referred
to in claim 2. One of ordinary skill in the art would be able to determine the
scope of the claim limitation, and the claim is not indefinite. For this reason,
this rejection of record is not sustained.
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).
3
Appeal2013-004035
Application 12/93 8, 661
T'\• ,• 1 "l~TTr1r--,t>'fr\I"'\/ 1 \ 1 KeJecnon unaer jJ U.L).L. s JUL( a ana e) ana
35 USC§ 103(a)
The Appellant argues that the rejection of claims 1, 2, 4--7, 9--11, 14--
16, 19, and 20 is improper because the cited prior art fails to disclose
elements of claim limitation [2] (App. Br. 8-13; Reply Br. 4--7).
In contrast, the Examiner has determined that the cited claim
limitation is found in Wong at paras. 20 and 21 (Ans. 6, 8-12).
We agree with the Appellant. Claim limitation [2] requires (emphasis
added):
[2] generating a message in response to the received barcode
information/or transmission to the wireless communication device to
permit acknowledgement of the transaction by a user of the wireless
communication device.
Here, the cited claim limitation requires "generating a message ... for
transmission to the wireless communication device to permit
acknowiedgement of the transaction by a user of the wireiess
communication device." In this particular case, the "generated message" is
not only for transmission to the "wireless communication device," but also
to "permit acknowledgment" of the transaction and performs a function
beyond mere intended use.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987). Wong at paras.
20 and 21 fails to disclose the argued claim feature. Wong at para. 21 states:
"After scanning, the user may be given the option, in step 110, of confirming
the payment, such as with a signature, checking an 'accept' icon, etc." Here,
4
Appeal2013-004035
Application 12/93 8, 661
there is no specific disclosure in Wong that the option of confirming the
payment is done from the user's device beyond conjecture into probabilities
or possibilities; it could be done on the merchant's point-of-sales device. As
the cited claim limitation has not been shown in the prior art, we are
constrained to reverse the rejection of claim 1 and its dependent claims. The
other claims contain a similar limitation and the rejections of these claims
are not sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner's rejection of claims 1-20 is reversed.
REVERSED
cda
5