Ex Parte Ghafoor et al

Board of Patent Appeals and Interferences

Nov 23, 2010

10051355 (B.P.A.I. Nov. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/051,355 01/18/2002 Gameelah Ghafoor 9457.00 9272
26884 7590 11/23/2010
PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2nd FLOOR
DULUTH, GA 30096
EXAMINER
CHENCINSKI, SIEGFRIED E
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
11/23/2010 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 GAMEELAH GHAFOOR, AHMAR GHAFOOR,
MARIE MACINTYRE, and ANTHONY HOLMES
____________

Appeal 2009-004947
Application 10/051,355
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004947
Application 10/051,355
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) 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) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a method of
operating a self-service terminal such as an ATM machine (Spec. 1:1-2).
Claim 1, reproduced below, is representative of the subject matter of appeal.
1. An Automated Teller Machine, ATM, comprising:
a) a user interface including means for identifying a user;
b) means for obtaining contact information
which enables the ATM to contact a communications device
associated with the user; and
c) contact means for establishing a link with the
communications device to allow a transaction to be executed using the
communications device.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Walker US 6,327,348 B1 Dec. 4, 2001
Ahuja US 2001/0056402 A1 Dec. 27, 2001
Smith US 6,430,496 B1 Aug. 6, 2002
Savage US 7,194,414 B1 Mar. 20, 2007

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Application 10/051,355

The following rejections are before us for review:
1. Claim 12 is rejected under 35 U.S.C. § 112, second paragraph,
as failing to set forth the subject matter which the applicants regard as the
invention.
2. Claims 1, 3-6, 8-12, 14-16, and 18-19 are rejected under
35 U.S.C. § 103(a) as unpatentable over Ahuja and Savage.
3. Claims 2 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ahuja, Savage, and Official Notice.
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ahuja, Savage, and Official Notice.
5. Claims 17 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ahuja, Savage, and Walker.

THE ISSUES
With regards to the rejection of claim 12 under 35 U.S.C. § 112,
second paragraph the issue turns on whether those skilled in the art would
understand what is claimed when the claim is read in light of the
Specification.
With regards to the rejection of claim 1 and its dependent claims
under 35 U.S.C. § 103(a) the issue turns on whether Savage discloses the
elements of claim limitation “b” as asserted by the Examiner. The rejection
of the independent claims 5-6, 11-12, and 16 turns on a similar issue.

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Appeal 2009-004947
Application 10/051,355

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. The Specification states that a self-service terminal can obtain
contact information for a communications device associated with a user and
establish a link to allow a transaction to be entered thereby (Spec. 1:18-22).
FF2. Ahuja has disclosed a method and system for accessing financial
information or conducting financial transactions using wireless
communication devices including cellular phones and personal digital
assistants. (Abstract).
FF3. Ahuja in Fig. 7 shows an ATM 150, a wireless financial server
terminal 150, an home PC 152, and a telephone network 151 in
communication with each other.
FF4. Ahuja at [0044]-[0050] discloses the use of data transfer taking place
over the telephone [0044] and that a cellular telephone may serve as a
terminal [0050].
FF5. Ahuja at [0044]-[0050] does not disclose the ATM having means for
obtaining a telephone number of a telephone associated with the user.
FF6. Savage has disclosed a self-service terminal such as an ATM that
includes a speech generator and loudspeaker for producing natural language
operating instructions for the user (Abstract).

2 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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Appeal 2009-004947
Application 10/051,355

FF7. Savage at Col. 4:15-18 discloses that a user whose account is
overdrawn may be advised, in a stern male voice, to immediately contact the
relevant financial institution.
FF8. Savage at Col. 4:15-18 does not disclose means for obtaining contact
information which enables the ATM to contact a communications device
associated with the user.

ANALYSIS
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner has determined that the rejection of 12 under 35 U.S.C.
§ 112, second paragraph, is proper because the phrases describing obtaining
contact information which “enables the ATM to contact a communications
device” and for establishing a communications link “so that a transaction
may be executed (sic)” fail to set forth the subject matter which the
applicants regard as their invention (Ans. 3-5, 11-12).
In contrast, the Appellants have argued that this rejection is improper
(Corr. App. Br. 20-23).
We agree with the Appellants. The test for definiteness under
35 U.S.C. § 112, second paragraph, is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). Here, the cited claim
limitations for obtaining contact information which “enables the ATM to
contact a communications device” and establishing a communications
link “so that a transaction may be executed (sic)” are supported by the
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Appeal 2009-004947
Application 10/051,355

Specification (see FF1) and those skilled in the art would understand what is
being claimed in light of the Specification so this rejection is not sustained.

Rejections under 35 U.S.C. § 103
The Appellants argue that the rejection of claim 1 is improper because
the prior art which has been cited is missing claim elements and because
claim limitations have been ignored (Corr. App. Br. 14-16). The Appellants
specifically argue that Savage at Col. 4:15-18 does not show the cited claim
recitations (Corr. App. Br. 14).
In contrast, the Examiner has determined that the rejection of record is
proper and that the cited claim limitation is shown in the prior art (Ans. 5,
12-13).
We agree with the Appellants. Claim 1 is reproduced below
(emphasis added):
1. An Automated Teller Machine, ATM, comprising:
a) a user interface including means for identifying a user;
b) means for obtaining contact information
which enables the ATM to contact a communications device
associated with the user; and
c) contact means for establishing a link with the
communications device to allow a transaction to be executed using the
communications device.
Here claim limitation “b” requires “means for obtaining contact
information which enables the ATM to contact a communications device
associated with the user.” The Examiner has asserted that the “means for
obtaining contact information” is shown in Savage at Col. 4:15-18 (Ans. 6).
Savage at Col. 4:15-18 states that a user whose account is overdrawn may be
advised in a stern voice to immediately contact the relevant financial
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Appeal 2009-004947
Application 10/051,355

institution (FF7). Savage at Col. 4:15-18 does not disclose that the user
actually contacts the financial institution or even if they do if any “contact
information” for them is obtained by the ATM (FF8) as claim limitation “b”
requires. For these reasons the rejection of claim 1 and its dependent claims
is not sustained. Independent claims 6, 11-12, and 16 contain the same or
a similar limitation to the limitation addressed above for claim 1 and the
rejection of these claims and their dependent claims is not sustained for
these same reasons.
With regards to independent claim 5, the claim includes a limitation
for “means for obtaining [a] telephone number for a telephone associated
with the user” and claim 10 contains a similar limitation. The Appellants
argues that the cited prior art does not show these claim limitations (Corr.
App, Br. 39-41). The Examiner has asserted that Ahuja discloses this (Ans.
14-15) and cites to Ahuja at [0044]-[0050]. Ahuja at [0044]-[0050] does
disclose the use of data transfer taking place over the telephone (FF4) but
does not disclose the ATM having means for obtaining a telephone number
of a telephone associated with the user (FF5). For these reasons the
rejection of claims 5 and 10 is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claim 12 under 35 U.S.C. § 112, second paragraph as failing to set
forth the subject matter which the applicants regard as the invention.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1, 3-6, 8-12, 14-16, 18-19 under 35 U.S.C. § 103(a) as
unpatentable over Ahuja and Savage.
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We conclude that Appellants have shown that the Examiner erred in
rejecting claims 2 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Ahuja, Savage, and Official Notice.
We conclude that Appellants have shown that the Examiner erred in
rejecting claim 7 under 35 U.S.C. § 103(a) as unpatentable over Ahuja,
Savage, and Official Notice.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 17 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Ahuja, Savage, Walker.

DECISION
The Examiner’s rejection of claims 1-20 is reversed.

REVERSED

JRG

PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2nd FLOOR
DULUTH, GA 30096

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