Ex Parte Jung et al

Board of Patent Appeals and Interferences

Sep 17, 2010

10318818 (B.P.A.I. Sep. 17, 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.
10/318,818 12/13/2002 Changwoo Jung JP920010394US1 (255) 8962
46320 7590 09/20/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
09/20/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte CHANGWOO JUNG, 8
SEONGSOO YIM, and 9
JAEKEUN LEE 10
___________ 11
12
Appeal 2009-008915 13
Application 10/318,818 14
Technology Center 3600 15
___________ 16
17
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
BIBHU R. MOHANTY Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL1 21

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.
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STATEMENT OF THE CASE 1
Changwoo Jung, Seongsoo Yim, and Jaekeun Lee (Appellants) seek 2
review under 35 U.S.C. § 134 (2002) of a non-final rejection of claims 1-11, 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 DECISION2 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a system and method capable of forwarding the 10
electronic ticket purchased by a user over the Internet to a wireless 11
communication terminal and authenticating the electronic ticket stored in the 12
wireless communication terminal by using a scanning device. Specification 13
1:7-12. 14
An understanding of the invention can be derived from a reading of 15
exemplary claim 1, which is reproduced below [bracketed matter and some 16
paragraphing added]. 17
1. Method for purchasing and authenticating an electronic 18
ticket, comprising the steps of: 19

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 16, 2008) and Reply Brief (“Reply Br.,” filed January 14,
2009), and the Examiner’s Answer (“Ans.,” mailed November 14, 2008).
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a) receiving a ticket request from a user system and generating 1
an electronic ticket image data including a ticket identifier in 2
response to the request; 3
b) encrypting the generated electronic ticket image data and 4
sending them to the user system; 5
c) forwarding the encrypted electronic ticket image data from 6
the user system to an associated user wireless communication 7
terminal; 8
d) decrypting the encrypted electronic ticket image data and 9
displaying them on a screen of the terminal; and 10
e) checking the validity of the ticket by reading the electronic 11
ticket image data displayed on the screen of the terminal. 12
13
THE REJECTIONS 14
The Examiner relies upon the following prior art: 15
Wang US 6,175,922 B1 Jan. 16, 2001
Yu US 7,044,362 B2 May 16, 2006
16
Claims 1-2 stand rejected under 35 U.S.C. § 101 as being directed 17
towards non-statutory subject matter. 18
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Wang and Yu. 20
ISSUES 21
The issue of whether the Examiner erred in rejecting claims 1-2 under 35 22
U.S.C. § 101 as being directed towards non-statutory subject matter turns on 23
whether claims 1-2 satisfy the threshold machine-or-transformation test. 24
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The issue of whether the Examiner erred in rejecting 1-11 under 35 1
U.S.C. § 103(a) as unpatentable over Wang and Yu turns on whether Wang 2
and Yu describe an electronic ticket image data. 3
FACTS PERTINENT TO THE ISSUES 4
The following enumerated Findings of Fact (FF) are believed to be 5
supported by a preponderance of the evidence. 6
Facts Related to Appellants’ Disclosure 7
01. The specification describes that the claimed invention can be 8
carried out with the use of an electronic ticketing system and a 9
user system. Specification 8:5-15. The ticketing system includes 10
a ticketing server that generates a barcode as an identifier for an 11
electronic ticket. Specification 10:19-21. A ticket 12
encryption/forwarding module further encodes the electronic 13
ticket image data to the user computer. A ticket 14
reception/decryption module resides in the wireless 15
communication terminal and is used to download and decrypt the 16
electronic ticket. Specification 12:7-10. A ticket display module 17
displays the electronic ticket data on the screen of the wireless 18
communication terminal. Specification 12:20-21 and 13:1. 19
Facts Related to the Prior Art 20
Wang 21
02. Wang is directed to portable electronic authorization devices 22
(PEADs) which advantageously and substantially eliminate the 23
security risks associated with prior art techniques of approving 24
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transactions between a user and an electronic transaction system. 1
Wang 1:12-17. A PEAD can be implemented using an Internet 2
enabled cellular telephone, a wireless PDA, or a two-way pager. 3
Wang 18:33-36. 4
03. A transaction request is submitted by a user and received by the 5
system, where the user has a second opportunity to review the 6
transaction request on a display screen and approve the 7
transaction. Wang 7:12-15. The transaction request is encrypted 8
and transmitted to a PEAD, which subsequently decrypts and 9
displays the transition request for the user’s review. Wang 8:20-10
31. Upon approval of the transaction request, the transaction data 11
is encrypted prior to being transmitted back to the electronic 12
transaction system. Wang 7:20-25. 13
04. The transaction request system can be used as a hotel 14
reservation system, where once the user approves of the 15
transaction the system can transmit an encrypted electronic room 16
key to the PEAD. Wang 17:60-67 and 18:1-3. The transaction 17
system can be further used as an airline ticket reservation system, 18
where the system transmits a boarding pass to the PEAD. Wang 19
18:13-21. The system can even further be used to transmit 20
coupons to the PEAD such that a customer can present the 21
coupons at a point of sale. Wang 18:28-32. 22
Yu 23
05. Yu is directed to electronic ticketing through handheld and 24
mobile personal computing devices. Yu 1:9-11. 25
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06. Yu describes a system that transmits a ticket to a mobile 1
computing device where the mobile computing device displays an 2
optical symbol, such as a barcode, that can be read by scanning 3
devices at the entrances to venues. Yu 2:4-10. In order to avoid 4
counterfeiting of electronic tickets, security measures can be 5
implemented within the ticket and/or scannable barcode, symbol, 6
or icon. Yu 4:11-13. The barcode can be generated using an 7
encryption algorithm based on the date, location, and type of 8
event. Yu 4:13-16. 9
ANALYSIS 10
Claims 1-2 rejected under 35 U.S.C. § 101 as being directed towards 11
non-statutory subject matter 12
The Examiner found that claims 1-2 recite “a method for purchasing and 13
authenticating an electronic ticket” that fails to satisfy the machine-or-14
transformation test. Ans. 6-7. 15
The Appellants contend that claims 1-2 satisfy the machine-or-16
transformation test because the method claims are tied to system elements, 17
specifically a user system, a wireless communication terminal, and a screen 18
of the wireless communication terminal. App. Br. 6 and Reply Br. 2-4. 19
We agree with the Appellants. The law in the area of patent-eligible 20
subject matter for process claims has recently been clarified by the Supreme 21
Court in Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964, 2010 WL 2555192 22
(U.S. June 28, 2010). Although the machine-or-transformation is not the 23
sole test in determining patent-eligibility, “the machine-or-transformation 24
test is a useful and important clue, an investigative tool, for determining 25
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whether some clamed inventions are processes under 35 U.S.C. §101.” Id at 1
*8. 2
Claims 1-2 recite “a method for purchasing and authenticating an 3
electronic ticket.” Claims 1-2 further tie this method to specific structural 4
elements. For example, a ticket request must be received from a user 5
system. Additionally, encrypted electronic image data is forwarded from the 6
user system to a wireless communication terminal, which includes a display 7
screen. The claims also implicitly require the use of specific computing 8
devices because at the focus of the claims is electronic data. The 9
specification further describes such computing devices. FF 01. Therefore, 10
claims 1-2 are specifically tied to particular machines and claims 1-2 satisfy 11
the machine prong of the machine-or-transformation test. Since the machine 12
prong of the machine-or-transformation test is satisfied, we need not 13
evaluate whether the claims transform physical objects in to a different state 14
or thing. As such, claims 1-2 recite patent-eligible methods or processes. 15
Claims 1-11 rejected under 35 U.S.C. § 103(a) as unpatentable over 16
Wang and Yu 17
The Appellants first contend that (1) Wang and Yu fail to describe an 18
electronic ticket image data, as claim 1 requires the generation, encryption, 19
forwarding, and decryption of electronic ticket image data. App. Br. 7-13 20
and Reply Br. 5-9. We disagree with the Appellants. 21
First, the Appellants are contesting the Examiner’s construction of the 22
claims and therefore we must define metes and bounds of the claims. The 23
Appellants specifically argue that the Examiner’s claim construction of the 24
term “electronic ticket image” is incorrect. App. Br. 10-12 and Reply Br. 6-25
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9. The Appellants construe this term to mean “digital information used to 1
derive an electronic image of a ticket” and argue the Examiner’s 2
construction of an “electronic ticket image” meaning “data representing an 3
electronic ticket” is incorrect. Reply. Br. 6. The Appellants acknowledge 4
that the prior art describes electronic ticket data, but contend that electronic 5
ticket image data is not described. Reply Br. 6. In construing the claims, the 6
Examiner found that the plain and ordinary meaning of electronic ticket 7
image data to mean “data representing an electronic ticket.” Ans. 7. 8
However, the Examiner further applied this definition to the claim language 9
to construe the claim limitation of an electronic ticket image to require 10
“digital information used to derive an electronic image of a ticket.” Ans. 7. 11
As such, both the Appellants and Examiner agree on the claim construction 12
that an electronic ticket image data is “digital information used to derive an 13
electronic image of a ticket.” 14
The Appellants further contend that the Examiner’s construction of the 15
term “derive” does not accurately characterize the nature of the data. Reply 16
Br. 7. The Appellants submit that the Examiner’s construes “derive” to 17
mean what the data is subsequently used to create instead of reflect the 18
nature of what the data actually is. Reply Br. 7. We disagree with the 19
Appellants. The claims must be construed in the broadest reasonable 20
construction in light of the specification. Phillips v. AWH Corp., 415 F.3d 21
1303, 1316 (Fed. Cir. 2005). The specification fails to set forth any special 22
definition for the term “derive.” The claims do not further require any 23
specific limitations towards the meaning of “derive” and only broadly 24
require the generation of image data. As such, the Examiner’s construction 25
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of the term “derive” to be merely data use to create an image is both 1
reasonable and consistent with the original disclosure. 2
Wang describes a transaction system that incorporates the use of 3
portable electronic authorization devices (PEADs). FF 02. Wang describes 4
that once a user has submitted a transaction request the transaction system 5
transmits an encrypted transaction data file to a PEAD to user review and 6
approval. FF 03. Upon approval and completion of the transaction, the 7
transaction system transmits to transaction data to the PEAD. FF 03. 8
For example, the transaction system can be used towards a hotel 9
reservation system, where the system transmits an electronic room key to the 10
PEAD of the user that the user can use to gain access to an assigned hotel 11
room. FF 03. Alternatively, the system can transmit boarding passes to the 12
user’s PEAD to present at the boarding gate or the system can transmit 13
coupons that the user can present at a point of sale. FF 03. Although Wang 14
does not explicitly describe that the coupons can contain barcodes that can 15
be scanned to retrieve coupon information, Wang suggests that the 16
transmitted coupons are rendered in some fashion that a cashier at the point 17
of sale would recognize the coupon information. This suggests that the 18
coupon is in some sort of image. As such, Wang suggests that use of an 19
electronic ticket image data. 20
Yu further describes a ticketing system that transmits an optical image to 21
a mobile computing device. FF 06. Yu explicitly describes that the image 22
can contain a barcode image that can be scanned by typical barcode 23
scanners. As such, Yu explicitly describes the use of electronic ticket image 24
data that is rendered in its image form on the mobile computing device. 25
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As such, the combination of Wang and Yu clearly describe the 1
generation, encryption, forwarding or transmitting, and decrypting of 2
electronic ticket image data. 3
CONCLUSIONS OF LAW 4
The Examiner did err in rejecting claims 1-2 under 35 U.S.C. § 101 as 5
being directed towards non-statutory subject matter. 6
The Examiner did not err in rejecting claims 1-11 under 35 U.S.C. 7
§ 103(a) as unpatentable over Wang and Yu. 8
9
DECISION 10
To summarize, our decision is as follows. 11
• The rejection of claims 1-2 under 35 U.S.C. § 101 as being directed 12
towards non-statutory subject matter is not sustained. 13
• The rejection of claims 1-11 under 35 U.S.C. § 103(a) as unpatentable 14
over Wang and Yu is sustained. 15
16
No time period for taking any subsequent action in connection with this 17
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED 21
22
23
24
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11
mev 1
2
Address 3
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP 4
STEVEN M. GREENBERG 5
950 PENINSULA CORPORATE CIRCLE 6
SUITE 2022 7
BOCA RATON FL 33487 8