Ex Parte Parmelee et al

Board of Patent Appeals and Interferences

Jun 30, 2009

09683943 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER L. PARMELEE and MARK D. SMITH
____________

Appeal 2008-002907
Application 09/683,943
Technology Center 2400
____________

Decided:1 July 1, 2009
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 09/683,943

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-41. The Appellants appealed
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). On March 19, 2009, we affirmed the rejection of all the claims, and
Appellants filed a Request for Rehearing on May 11, 2009.

A. INVENTION
The invention at issue on appeal relates to automated transaction
machine digital signature system and method. (Spec. 1.)

II. ISSUE
Have Appellants specifically identified any points misapprehended or
overlooked by the Board in its decision?

III. ANALYSIS
In the Request for Rehearing, Appellants advance that dependent
claim 5 is an exemplary indication of points which were misapprehended or
overlooked by the Board in our decision. At the outset, we note that
arguments to a dependent claim do not clearly show any other points
misapprehended or overlooked by the Board in our decision.
Appellants' Request for Rehearing generally addresses the same
contention as advanced in the Brief and Reply Brief. That contention is that
the Wheeler provisional application does not provide adequate support for
the Wheeler published application to establish the earlier domestic priority
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date for the Wheeler published application. While we agree with Appellants
that the totality of the subject matter in the Wheeler published application is
more polished and goes into greater depth and detail than the subject matter
taught in the Wheeler provisional application, the Examiner did not rely
upon the totality of the Wheeler published application to evidence these
specific features which were known in the art at the time Appellants'
invention was made. The Examiner limited the specific factual findings
which were relied upon in the rejection and provided evidence to support
that those specific factual findings, in the Wheeler published application,
were known in the art at the time of the Wheeler provisional application,
prior to Appellants filing date. After the Board’s reasoned analysis of the
totality of the Wheeler provisional application, we found "ample support for
those portions of the Wheeler published application which were relied upon
in the rejection to entitle those portions of the published application to the
filing date of the provisional application." (Decision 6, ll. 11-14).
Appellants contend that this finding is not supported in the decision or in any
other part of the record. (Request 2). As in the Brief and Reply Brief,
Appellants provide no evidence or reasoned analysis with specific
findings/citations and conclusions with which to support this contention.
Appellants advance a number of arguments based on form rather than
substance. For example, the Appellants contend that the four e-mail
communications in the Wheeler provisional application are "significantly
dissimilar to the organization and content of the subject matter in the
Wheeler publication." (Request 2). As acknowledged above, the form of
the disclosure does not indicate a lack of support. Moreover, additional
content in the published application does not necessarily support Appellants'
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contention that the specific portions relied upon by the Examiner in the
rejection are not supported by the Wheeler provisional application.
Appellants further contend that the Board based its decision on
improper hindsight since Appellants contend that the subject matter relied
upon in the Examiner's rejection is not supported by the provisional
application. (Request 2). We disagree with Appellants' contention since we
find the Examiner's reliance in the Wheeler published application to be
supported by the Wheeler provisional application.
With respect to our reliance upon Ex parte Yamaguchi in our decision
at page 15, Appellants contend that the Wheeler provisional application is a
set of unconnected e-mails that do not clearly show all of the subject matter
as the Wheeler publication. (Request 3). Again, Appellants’ contention
appears to go beyond the limited subject matter portions which the Examiner
relied upon in the Wheeler published application in the grounds of the
rejection. Appellants further contend that "the portions of the Wheeler
Publication relied upon by the Board in its decision include significant
amounts of non-prior art new matter not found in the Wheeler Provisional,"
but Appellants do not specifically identify these "significant amounts of non-
prior art new matter." Therefore, we find that Appellants’ argument does
not specifically identify any points of overlooked or points misapprehended
by the Board in our decision.
In accordance with Ex parte Yamaguchi,
http://www.uspto.gov/web/offices/dcom/bpai/ prec/fd074412.pdf, slip op.
(BPAI Aug. 29, 2008) (precedential) the Examiner found that the Wheeler
provisional application clearly shows the same subject matter as applied
from the Wheeler published application used in the prior art rejections. The
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Examiner found that both documents clearly show the same subject matter -
a factual finding. By making this factual finding, the Examiner then shifted
the burden to Appellants to show why such a factual finding was erroneous.
While there are differences between the Wheeler published application and
its corresponding Wheeler provisional application, the differences are simply
not germane to the facts relied upon by the Examiner in the rejection.
Appellants address an exemplary discussion with respect to dependent
claim 5, which the Board addressed generally for judicial efficiency in the
41 separate groups of arguments for the 41 claims.
We will address Appellants' arguments to dependent claim 5, but find
the arguments to be unpersuasive. In the Brief at page 29, Appellants argue
that dependent claim 5 recites that the digital safe-deposit account is
associated with a financial account number and that the computer processor
is operative to access the private key associated with the one digital safe-
deposit account responsive to a message received from the at least one
ATM, which message includes a financial account number that corresponds
to the account number associated with the one digital safe-deposit account.
As discussed in our decision at page 17, we discussed the merits of
dependent claim 3 regarding the combination of Wheeler and Cohen to
retrieve an electronic document from a data store and send the document to
the ATM machine. In the combination of teachings, we find that it would
have been obvious to one of ordinary skill in the art at the time of the
invention that there would necessarily have to be some identification
information/"financial account information" with which to retrieve and
forward the appropriate electronic document. With encryption of the
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electronic information, access to the key would therefore have also been
necessary.
With respect to Appellants' argument concerning the "computer
processor," the decision at pages 15-16 addresses the application of the prior
art to the teachings concerning the computer processor. Appellants'
arguments do not address the merits of this correlation and mapping.
Therefore, Appellants' argument does not specifically identify any points
overlooked or misapprehended by the Board in the decision. With respect to
dependent claim 5, Appellants further reiterate the arguments advanced with
respect to independent claim 1, which we found unpersuasive of the error in
the Examiner's showing.
Appellants go on to again reiterate their contention that the Wheeler
publication does not qualify as prior art. (App. Br. 30). Again, as discussed
in the decision with respect to independent claim 1, we find Appellants'
argument to be unpersuasive of the error in the Examiner's showing of
obviousness. Since our above discussion evidences the content of a
discussion of dependent claim 5 to have been already shown in the prior
discussions with respect to Appellants' claim invention, the Board
summarily dismissed the arguments as unpersuasive in the decision at page
18. Therefore, Appellants have not specifically identified any points
overlooked or misapprehended in our decision.
Furthermore, Appellants' continued in their arguments to maintain that
the Office has not provided any reason or other rationale as to why one of
ordinary skill of the art would modify and/or combine the Wheeler
"provisional," with Cohen or any other applied art to produce the recited
subject matter. (Request 5). As discussed in the decision with respect to the
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Reply Brief, it is not the Wheeler provisional application which is applied as
prior art, it is the Wheeler published application. Therefore, Appellants'
argument is unpersuasive of error.
Rather, the issue is a difference of opinion as to whether the
provisional application provides adequate support under 35 U.S.C. § 112,
first paragraph, for those portions relied upon in the rejection to evidence
that the specific teachings were known by others before the invention thereof
by Appellants. We found in the decision that there was "ample support" in
the provisional application for those portions. While the form and specific
wording used in the provisional application differs from that in the published
application, we nonetheless found support that those facts were known in the
art prior to the time Appellants filed their application for patent.
Appellants argue that the Office has not established a "clear showing"
that the Wheeler provisional supports the subject matter of the Wheeler
publication, and that the "text" of the Wheeler provisional and the Wheeler
publication are "too dissimilar." (Request 5-6) We disagree with Appellants
and note that it is the subject matter as appreciated by one of ordinary skill in
the art at time of the invention rather than the form or specific text used
which is evaluated to determine whether the provisional application supports
those portions of the published application relied upon by the Examiner.
Hence, we find that Appellants' arguments with respect to dependent claim 5
do not specifically identify any points overlooked or misapprehended by the
Board in its decision.
With respect to claim 20, Appellants argue that although the Wheeler
provisional application discusses "viewing what was signed," nowhere does
the Wheeler provisional or any of the other applied art teach viewing an
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electronic document to be signed on an ATM or any other device from
which a financial account number is received. (Request 8). We find
Appellants' contention unavailing since the method of independent claim 20
merely sets forth enabling an electronic document displayed by an
automated transaction machine to be digitally signed by the private key. If
the rejection of claim 20 was based merely upon anticipation, Appellants
may have a basis for this argument, but the rejection is based upon
obviousness. "Common sense" at least suggests that a document to be
digitally signed by a user would have been viewed prior to signing and
would have been suggested by a teaching that you can display the document
which was signed. We find that the Wheeler publication evidences and
suggests viewing prior to the signing since a display device is suggested to
be available for viewing after the signing. The Supreme Court considers
“common sense” in evaluating prior art teachings.
Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.

(KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)).

The necessary hardware to view before and view after are the same and is
present in the prior art. Therefore, it would have been readily apparent to
skilled artisans to view before so that the user can make an informed
decision on what is being signed.
Furthermore, we find that this is no more than a modification clearly
within the ordinary skill of artisans at the time of the invention. Appellants
have not identified any difficulty in displaying before or after the signing.
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Therefore, Appellants' argument does not show error in the Examiner’s
showing of obviousness. Nor does Appellants' argument specifically
identify any points overlooked or misapprehended by the Board in its
decision.
With respect to dependent claim 23, Appellants argue that nowhere
has the Office shown prior art of record (i.e., prior art that is not
contaminated with the allegedly non-prior art portions of the Wheeler
publication) which shows the recited element of storing a digitally signed
copy of electronic document in a digital safe-deposit account in association
with the financial account number. (Request 8-9). The decision at pages 28-
29 addresses the merits of Appellants' argument, and we found that the
Wheeler publication disclosed and fairly suggested the storage of some
information concerning an account. As identified in the decision,
Appellants' claim 23 is generic as to the method recited in parent claim 20
(Dec. 26-27), and we found that the Wheeler publication taught and fairly
suggested storage in association with an account identifier. Therefore,
Appellants' argument does not show error to Examiner’s initial showing of
obviousness. Nor does Appellants' argument specifically identify any points
overlooked or misapprehended by the Board in its decision.
With respect to Appellants' arguments concerning the Examiner's
improper rejections based on the Wheeler provisional application (Request
9), it is the Wheeler published application which is relied upon in the
rejection. Therefore, Appellants' argument does not show error to
Examiner’s in the showing of obviousness. Nor does Appellants' argument
specifically identify any points overlooked or misapprehended by the Board
in its decision.
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Appellants argue that "[t]he fact that the Office has been required to
rely on the (non-prior art) Wheeler Publication rather than the Wheeler
Provisional in presenting rejections constitutes an admission by the office
that the Wheeler provisional does not provide a sufficient written description
to support the rejections." (Request 9). We disagree with Appellants
wherein the published application is citable prior art under 35 U.S.C.
§ 102(e) which may have the benefit of the earlier filing date under
35 U.S.C. § 119(e). Therefore, Appellants' argument does not show error in
the Examiner’s showing of obviousness. Nor does Appellants' argument
specifically identify any points overlooked or misapprehended by the Board
in its decision.
With respectful of Appellants' arguments concerning the "Office is
now prepared to accept and issue patents which have the glaring defects in
the disclosure" of the Wheeler provisional (Request 9), we find no relevance
of this argument as to whether or not the Wheeler provisional application
adequately supports those portions of the Wheeler published application
which were relied upon by the Examiner in rejection. Therefore, Appellants'
argument does not show error in the Examiner’s showing of obviousness.
Nor does Appellants' argument specifically identify any points overlooked
or misapprehended by the Board in its decision. Since Appellants have not
specifically identified any points misapprehended or overlooked by the
Board in its decision, we decline to modify our decision.

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IV. CONCLUSION

For the aforementioned reasons, we found that the portions of the
Wheeler publication are amply supported by the teachings generally recited
in the Wheeler provisional application and therefore the Wheeler publication
is entitled to the priority date thereof for the relied upon subject matter.
Additionally, we found all of Appellants' arguments to be unpersuasive of
error in the Examiner's initial showing of obviousness, and Appellants’
arguments do not specifically identify any points misapprehended or
overlooked by the Board in its decision.

V. ORDER
We grant the request for rehearing to the extent that it was considered,
but we decline to modify our decision based upon Appellants' arguments.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REQUEST DENIED

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walker & jocke LPA
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