Ex Parte O et al

Board of Patent Appeals and Interferences

Sep 10, 2010

10201449 (B.P.A.I. Sep. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
22917 7590 09/14/2010
MOTOROLA, INC.
APPLICATION NO.
EXAMINER
1303 EAST ALGONQUIN ROAD RETTA, YEHDEGA
101201,449 07/23/2002 Timothy P. O'Hagan SBL00050TD04 6148
FILING DATE
IL0113RD
SCHAUMBURG, IL 60 196
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Docketing.US @motorola.com
09/14/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte TIMOTHY O'HAGAN,
GREGORY CANDA, and
JAMES E. TRAXLER
Appeal 2009-013932
Application 10120 1,449
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-013932
Application 10120 1,449
STATEMENT OF THE CASE
Timothy O'Hagan et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2002) of the final rejection of claims 25-29 and 3 1-36. We have
jurisdiction under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
This invention is a system and a method of using a mobile terminal to
checkout at a retail store. See Specification 26:28-28:4.
Claim 25, reproduced below, is illustrative of the subject matter on
appeal.
25. A method of assisting a shopper during a
shopping session at a retail establishment by
providing the shopper with a mobile data terminal,
comprising :
permitting the shopper to select to pay with
at least one of a credit card, debit card and cash to
pay for one or more items at the mobile data
terminal;
transmitting a link request to a host
computer corresponding to the selection of
payment method by the shopper; and
providing one of at least two disparate
checkout programs to the mobile data terminal
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Feb. 29, 2008) and Reply Brief ("Reply Br.," filed Jul. 15, 2008),
and the Examiner's Answer ("Answer," mailed May, 15, 2008).
Appeal 2009-013932
Application 10120 1,449
from the host computer based at least in part upon
the selection of payment method by the shopper, a
first checkout program associated with a cash
method of payment and a second checkout
program associated with a credit card and debit
card method of payment.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Swartz US 5,814,799 Sep. 29, 1998
Tracey US 5,979,757 Nov. 9,1999
The following rejections are before us for review:
1. Claims 25 and 3 1 are rejected under 35 U.S.C. 5 102(e) as
being anticipated by Swartz.
2. Claims 26-29 and 32-36 are rejected under 35 U.S.C. 5 103(a)
as being unpatentable over Swartz and Tracey.
ISSUE
The issue is whether claims 25 and 31 are anticipated under 35 U.S.C.
5102(e) by Swartz. Specifically, the issue is whether Swartz describes a step
of providing one of at least two disparate checkout programs to the mobile
data terminal from the host computer based at least upon the selection of
payment method by the shopper. The rejection of claims 26-29 and 32-36
under 35 U.S.C. 5 103(a) as being unpatentable over Swartz and Tracey also
turns on this issue.
Appeal 2009-013932
Application 10120 1,449
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Znc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Swartz describes a self checkout terminal 140 that can process a
purchase. See col. 18,ll. 19-20; col. 4,ll. 13-18; col. 19,ll. 30-44;
and col. 21,ll. 33-65.
2. Swartz describes that the operation of the self checkout terminal
includes a step of displaying an instruction to "ENTER CREDIT
CARD" and activating a credit card reader. See col. 18,ll. 57-58;
col. 19,ll. 30-44; and col. 21,ll. 33-65.
ANALYSIS
The rejection of claims 25 and 3 1 under 35 U.S.C. § 102(e) as being
anticipated by Swartz.
Claim 25 recites a method which includes a step of "providing one of
at least two disparate checkout programs to the mobile data terminal from
the host computer based at least in part upon the selection of payment
method by the shopper." The Appellants argue that Swartz does not
describe this step. Answer 4-5 and Reply Br. 2-3.
"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., Znc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Appeal 2009-013932
Application 10120 1,449
The Examiner cites to column 4, lines 13-18, column 19, lines 19-55,
and column 21, lines 34-61 of Swartz as describing this limitation (Answer
3) and states: 'Examiner would like to point [out] that same as Appellant's
disclosure (see fig. 19b), in Swartz, after the user selects to pay with a credit
card a return page with instructions for magnetic strip reader is provided,
i.e., by activating a credit card reader and displaying "ENTER CREDIT
CARDV'(Answer 8). The Examiner seems to be equating the program that
activates the credit card reader and the displays the "Enter Credit Card"
instruction in Swartz to the claimed checkout program. However, Swartz
does not describe that this program is provided to the mobile data terminal
from the host computer based at least in part upon the selection of payment
method by the shopper. Swartz merely describes that the self checkout
terminal performs these steps (FF 1-2) and is silent as to how the program is
provided to the self checkout terminal. Therefore, we find that the Examiner
has not established that Swartz either expressly or inherently anticipates
claim 1.
Accordingly, we find that the Appellants have overcome the rejection
of claims 25, and claim 31, dependent thereon, under 35 U.S.C. 5 102(e) as
being anticipated by Swartz.
The rejection of claims 26-29 and 32-36 under 35 U.S.C. § 103(a) as being
unpatentable over Swartz and Tracey.
Independent claim 27 recites "a host computer that receives the
selection made by the shopper and provides the mobile data terminal with
one of at least two disparate checkout programs corresponding to the
selection." Independent claim 29 recites "a software program on the host
Appeal 2009-013932
Application 10120 1,449
computer that provides an appropriate one of at least two separate HTML
pages each associated with a separate method of payment to the mobile
computer according to the method of payment selected by the customer."
For the same reasons as discussed above, we find the Examiner has not
established that Swartz expressly or inherently describes a host computer or
software program on a host computer that has a structure that is capable of
performing the functions recited above. C$ In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997) (functional language does not confer patentability
if prior art structure has capability of functioning in the same manner). We
note that the Examiner did not rely upon Tracey to cure the deficiency of
Swartz discussed above. See Answer 5-6.
As to claims 26, 28, 32-36, these rejections are directed to claims
dependent on claims 25,27, and 29, whose rejection we have reversed
above. For the same reasons, we will not sustain the rejections of claims 26,
28, 32-36 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed.
Cir. 1992) (" [Dlependent claims are nonobvious if the independent claims
from which they depend are nonobvious."). Accordingly, we find that the
Appellants have overcome the rejection of claims 26-29 and 32-36 under 35
U.S.C. 5 103(a) as being unpatentable over Swartz and Tracey.
DECISION
The decision of the Examiner to reject claims 25-29 and 31-36 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
Appeal 2009-013932
Application 10120 1,449
REVERSED
mev
MOTOROLA, INC.
1303 EAST ALGONQUIN ROAD
ILO 113RD
SCHAUMBURG IL 60196