Ex Parte Moore

Board of Patent Appeals and Interferences

Jul 18, 2012

10423012 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BARBARA A. MOORE
____________________

Appeal 2011-001287
Application 10/423,012
Technology Center 3600
____________________

Before: ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/423,012

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
10, 17-20, 22-24, 28, and 30-38. We have jurisdiction under 35 U.S.C.
§ 6(b).
The claims are directed to techniques for protecting financial
transactions (Spec. 1). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of conducting a transaction involving a
customer using a financial device to effectuate the transaction,
with the financial device being associated with a financial
account, the method comprising:
reading electronic identification data encoded on the
financial device;
transmitting, by equipment including hardware, a request
for information regarding an authorized user of the financial
account associated with the financial device to an electronic
storage system, wherein the request for information includes the
electronic identification data;
receiving, by the equipment from the electronic storage
system, the information regarding the authorized user of the
financial account in response to the request, wherein the
information is capable of being used by an end user to identify
the authorized user and was stored in the electronic storage
system prior to the transaction;
presenting, by the equipment, the received information
on a user interface to the end user to facilitate a comparison
between the received information and information presented by
a customer directly and in person to the end user to determine
whether or not the customer and the authorized user are the
same;
accepting an input from the end user indicating whether
or not the customer and the authorized user are the same; and
completing the transaction, in response to the end user
input, when the input indicates that the customer and authorized
user are the same.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pare US 5,870,723 Feb. 9, 1999
Shah US 2002/0184103 A1 Dec. 5, 2002
Johnson WO 01/69495 A1 Sep. 20, 2001

REJECTIONS
Claims 1-10, 17-20, 22-24, 28, and 30-38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pare in view of Shah; and claims 1-10,
17-20, 22-23, 28, and 30-38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Johnson in view of Shah1.
We AFFIRM and enter a NEW GROUND of rejection.

ISSUES
Did the Examiner err in asserting that a combination of Pare and Shah
renders obvious independent claim 12?
Did the Examiner err in asserting that a combination of Pare and Shah
renders obvious
wherein the received information comprises height information
of the authorized user, the method further comprising
displaying the height information at a display device of the
equipment to allow the end user to compare the height
information with a height of the customer that is perceived in
person by the end user,

1 The obviousness rejection of claim 24 under 35 U.S.C. § 103(a) over
Johnson in view of Shah is withdrawn (Exam’r’s Ans. 3).
2 We choose independent claim 1 as representative of independent claims 1
and 17. See 37 C.F.R. § 41.37(c)(1)(vii).
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as recited in dependent claim 83?
Did the Examiner err in asserting that a combination of Pare and Shah
renders obvious “wherein the signature capture device comprises a personal
digital assistant,” as recited in dependent claim 24?
Did the Examiner err in asserting that a combination of Johnson and
Shah renders obvious independent claim 14?
Did the Examiner err in asserting that a combination of Johnson and
Shah renders obvious
wherein the received information comprises height information
of the authorized user, the method further comprising
displaying the height information at a display device of the
equipment to allow the end user to compare the height
information with a height of the customer that is perceived in
person by the end user,
as recited in dependent claim 85?

OPINION
Rejection of Independent Claim 1 over Pare and Shah
We are not persuaded the Examiner erred in asserting that a
combination of Pare and Shah renders obvious independent claim 1 (App.
Br. 5-11; Reply Br. 1-6). Despite Appellant’s protestations to the contrary,
Appellant is essentially asserting that Pare teaches away from authorizations
that require tokens, such as the recited financial device (App. Br. 5-7; Reply

3 We choose dependent claim 8 as representative of dependent claims 8 and
28. See 37 C.F.R. § 41.37(c)(1)(vii).
4 We choose independent claim 1 as representative of independent claims 1
and 17. See 37 C.F.R. § 41.37(c)(1)(vii).
5 We choose dependent claim 8 as representative of dependent claims 8 and
28. See 37 C.F.R. § 41.37(c)(1)(vii).
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Br. 1-3, 5-6). However, Pare’s extensive critique of tokens at columns 1-2
shows the use of tokens for authorization was known, but not preferred. A
teaching away is more persuasive in the context of inoperability than to
preference. See Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73
F.3d 1085, 1090 (Fed Cir. 1995) (a warning against use of an element, rather
than omission of mention of the element, is required to find teaching away);
Baxter Int’l, Inc. v. McGraw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998)
(finding no teaching away where nothing in the prior art device suggested
that the claimed invention was unlikely to work); In re Sponnoble, 405 F.2d
578, 587 (CCPA 1969) (if when combined, the references would produce a
seemingly inoperative device, then they teach away from their combination).
Nothing in Pare suggests a token-based system is inoperable.
Appellant further asserts that because Pare discloses automatic
authorization, “presenting, by the equipment, the received information on a
user interface to the end user to facilitate a comparison between the
received information … and information presented by a customer
directly and in person to the end user,” as recited in independent claim 1,
was not contemplated (App. Br. 7-10; Reply Br. 3-5; emphasis original).
However, the Examiner cites a combination of Pare and Shah for disclosing
this aspect (Exam’r’s Ans. 5, 12-15). See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (the argument that a single reference alone does
not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
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the rejections are based on combinations of references”). In particular, the
Examiner substitutes the cashier of Shah to perform the final authorization
of Pare.
Appellant then asserts that Shah does not disclose “presenting
information regarding an authorized user received from an electronic
storage system” (App. Br. 10-11; emphasis original). However, Pare is
cited for disclosing the information from the electronic storage system
(Exam’r’s Ans. 3-5, 13-15). See In re Merck & Co., Inc., 800 F.2d at 1097.

Rejection of Dependent Claim 8 over Pare and Shah
We are not persuaded the Examiner erred in asserting that a
combination of Pare and Shah renders obvious
wherein the received information comprises height
information of the authorized user, the method further
comprising displaying the height information at a display
device of the equipment to allow the end user to compare the
height information with a height of the customer that is
perceived in person by the end user,
as recited in dependent claim 8 (App. Br. 11-12; Reply Br. 6-7). A
combination of Pare and Shah is cited for disclosing the display of received
information to the end user (Exam’r’s Ans. 3-5, 13-15). While dependent
claim 8 specifically recites displaying height information, the type of
information displayed is non-functional descriptive material. See In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). We denominate this a new ground of
rejection under 37 C.F.R. § 41.50(b).
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Rejection of Dependent Claim 24 over Pare and Shah
We are not persuaded the Examiner erred in asserting that a
combination of Pare and Shah renders obvious “wherein the signature
capture device comprises a personal digital assistant,” as recited in
dependent claim 24 (App. Br. 13). We agree with and adopt the Examiner’s
findings and rationales, as set forth on pages 17-18 of the Examiner’s
Answer.

Rejection of Independent Claim 1 over Johnson and Shah
We are not persuaded the Examiner erred in asserting that a
combination of Johnson and Shah renders obvious independent claim 1
(App. Br. 14-16; Reply Br. 7-8). Appellant asserts that because Johnson
discloses automatic authorization, “presenting, by the equipment, the
received information on a user interface to the end user to facilitate a
comparison between the received information and information presented
by a customer directly and in person to the end user,” as recited in
independent claim 1, was not contemplated (App. Br. 14-15; Reply Br. 7-8;
emphasis original). However, the Examiner cites a combination of Johnson
and Shah for disclosing this aspect (Exam’r’s Ans. 9, 18-19). See In re
Merck & Co., Inc., 800 F.2d at 1097. Specifically, the Examiner substitutes
the cashier of Shah to perform the final authorization of Johnson.
Appellant then asserts that “[t]here is no teaching or hint in Shah of
presenting information (received from an electronic storage system)”
(App. Br. 14; Reply Br. 7; emphasis original). However, Johnson is cited
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for disclosing the information from the electronic storage system (Exam’r’s
Ans. 8-9, 18-19). See In re Merck & Co., Inc., 800 F.2d at 1097.

Rejection of Dependent Claim 8 over Johnson and Shah
We are not persuaded the Examiner erred in asserting that a
combination of Johnson and Shah renders obvious “wherein the received
information comprises height information of the authorized user, the method
further comprising displaying the height information at a display device of
the equipment to allow the end user to compare the height information with
a height of the customer that is perceived in person by the end user,” as
recited in dependent claim 8 (App. Br. 16; Reply Br. 8-9). Johnson discloses
biometric data, and the Examiner construes biometric data to include height
and weight because these are old and well known methods of identifying
people typically found on drivers licenses (Exam’r’s Ans. 19-21). Appellant
has not challenged the Examiner’s finding that biometric data including
height and weight is well known, and only asserts specifics concerning the
Johnson reference itself. Accordingly, Appellant has not met the burden of
rebutting the Examiner’s proffered prima face case of obviousness. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[o]nce a prima facie case of
obviousness [is] established..., the burden shift[s] to appellant to rebut it”).

DECISION
The Examiner’s rejection of claims 1-10, 17-20, 22-24, 28, and 30-38
is AFFIRMED.

Appeal 2011-001287
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FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
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case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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