Ex Parte Raines

Board of Patent Appeals and Interferences

Nov 12, 2010

10628819 - (D) (B.P.A.I. Nov. 12, 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.
10/628,819 07/28/2003 Walter L. Raines Raines-003 5872
26604 7590 11/12/2010
KENNETH L. NASH
P.O. BOX 680106
HOUSTON, TX 77268-0106
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
11/12/2010 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 WALTER L. RAINES
____________________
Appeal 2009-013706
Application 10/628,819
Technology Center 3600
____________________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.
DECISION ON APPEAL1

STATEMENT OF CASE

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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Application 10/628,819

2
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-12 and 15-21. Claims 22-24 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
Additionally, a continuation application 11/120,811, of the present
Application, is currently on appeal, Appeal No. 2009-012327, and is being
concurrently decided.

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.2

THE INVENTION
Appellant’s claimed invention relates to a system and method for
retrieving a copy of an original receipt by merchants to avoid chargebacks
on legitimate sales. (Abs.)
Independent claim 1, which is deemed to be representative, reads as
follows:
1. A computer implemented method for
processing a plurality of credit card financial transactions
by a plurality of purchasers, comprising:
producing a plurality of paper receipts related to
said plurality of credit card financial transactions such
that each of said plurality of paper receipts comprise
machine-readable data and separately located human-
readable text which identify each of said plurality of

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jul. 18, 2006) and Reply Briefs (“1st Reply Br.,” filed Jan. 25,
2007 and “2nd Reply Br.,” filed Jul. 2, 2008), and the Examiner’s Answers
(“Ans.,” mailed Nov. 30, 2006 and “Subsequent Ans.,” mailed Apr. 3,
2008).
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credit card financial transactions, said machine-readable
data comprises at least a credit card number, an amount
of purchase, and a date of purchase, said human-readable
text comprises at least said amount of purchase and said
date of purchase, each of said plurality of paper receipts
comprises an endorsement by a respective of said
plurality of purchasers to confirm each of said plurality
of credit card financial transactions;
optically scanning each of said plurality of paper
receipts for producing an electronic representation of
each of said plurality of paper receipts including said
endorsement and for reading said machine-readable data
on said paper receipt such that said machine-readable
data is recognized; and
electronically storing said electronic representation
of said paper receipt utilizing said recognized machine-
readable data so as to be organized for said electronic
retrieval based on said machine-readable data.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ballard 6,032,137 Feb. 29, 2000
Cruse et al. 2002/0010659 A1 Jan. 24, 2002
The Examiner rejected claims 1, 5, 16, 18, and 21 under 35 U.S.C.
§ 102(b) as being anticipated by Ballard. Additionally, the Examiner
rejected claims 2-4, 6-12, 15, 17, and 19-20 under 35 U.S.C. § 103(a) as
being obvious over Ballard and Cruse.3

3 Appellant improperly refers to this 35 U.S.C. § 103(a) rejection as being
anticipated rather than obvious and also improperly refer to claims 2-4, 6-15,
17, and 19-20 rather than claims 2-4, 6-12, 15, 17, and 19-20 in Appellant’s
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ISSUES
With respect to independent claims 1 and 16, Appellant argues inter
alia, that Ballard does not disclose a printer which produces paper receipts
related to credit card financial transactions comprised of machine-readable
data and separately located human readable text wherein “the machine-
readable data comprises at least a credit card number, an amount of
purchase, and a date of purchase,” as generally recited by independent
claims 1 and 16. (App. Br. 14; see also 2nd Reply Br. 2.) Additionally, with
respect to independent claims 7 and 12, Appellant generally argues that the
combination of Ballard and Cruse fails to teach or suggest the limitations of
claims 7 and 12. (App. Br. 29.) Specifically, Appellant argues that Cruse is
non-analogous art when compared with claimed invention. In making this
argument, the Appellant argues “Cruse is not (1) in the field of the
inventor’s endeavor and (2) is not reasonably pertinent to the particular
problem with which the inventor was involved.” (App. Br. 29.)
In response, the Examiner found that Ballard discloses all of the
limitations recited in independent claims 1 and 16. (Ans. 3-4).
Additionally, with respect to independent claims 7 and 12, the Examiner
concluded that the combination of Ballard and Cruse makes obvious the
subject matter recited by independent claims 7 and 12. (Ans. 5-6).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made

Appeal Brief. (App. Br. 13). These deficiencies were remedied in
Appellant’s 2nd Reply Brief. (2nd Reply Br. 2.)
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but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
1. Did the Examiner err in finding that Ballard discloses machine-
readable data comprising “at least a credit card number, an amount of
purchase, and a date of purchase,” as recited by the system and method of
claims 1 and 16 under 35 U.S.C. § 102(b)?
2. Does Cruse cure the deficiencies of Ballard under 35 U.S.C.
§ 103(a), as rejected in claims 2-6, 17, 19, and 20?
3. Did the Examiner err in combining Ballard and Cruse to teach or
suggest the limitations of claims 7-12 and 15 under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).

Ballard
B1. Ballard is directed to a system for remote data acquisition, and
centralized processing and storage associated with different applications
including sale, business, banking and general consumer transactions. (Abs.)
B2. Ballard describes that in addition to scanning images and text, the
DAT scanner 202 also scans DataGlyph ™ elements which represent digital
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information with machine readable data which are encoded into many, tiny,
individual glyph elements. (Col. 5, l. 64 – Col. 6, l. 2.)
B3. Ballard describes that the use of glyph technology in its system
improves the accuracy, cost and performance of the system and includes
error correction codes which can be referenced to correct scanning errors or
to correct damage to the document caused by ink spills or ordinary wear.
(Col. 6, ll. 13-22.)
B4. Ballard additionally describes that the DataGlyph ™ information
could identify the location of a signature on the receipt. (Col. 11, ll. 6-9.)
B5. Ballard describes that the receipt depicted in figure 3B can also
contain a signature which can be captured by a scanner. (Col. 11, ll. 7-9.)
B6. Figure 3B of Ballard depicts a paper receipt from a credit card
financial transaction which includes inter alia, purchased item data 376.
(Col. 9, ll. 54-63; see also Fig. 3B.)

Cruse
C1. Cruse is directed to a web-based inventory management system
which maintains a central database repository. (Abs.)
C2. Cruse’s system enables customers to view their orders, receipts,
parts and other data from the proprietor's web site (e.g., using a browser).
Additionally, customers are able to update their scanned orders and receipts
that are in error, generate bar code labels, and view/print reports. (¶ [0060].)

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PRINCIPLES OF LAW
Anticipation
“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., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

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ANALYSIS
ISSUE 1
Claims 1, 5, 16, 18, and 21 rejected under 35 U.S.C. § 102(b) as anticipated
by Ballard.
Independent claims 1 and 16
Appellant argues inter alia, that Ballard does not disclose a printer
which produces paper receipts related to credit card financial transactions
comprised of machine-readable data and separately located human readable
text wherein the “machine-readable data comprises at least a credit card
number, an amount of purchase, and a date of purchase,” as generally recited
by independent claims 1 and 16. (App. Br. 14.) Specifically, Appellant
argues that while the Dataglyphs ™ disclosed by Ballard are machine-
readable data, the DataGlyphs ™ do not include “at least a credit card
number, an amount of purchase, and a date of purchase,” as required by the
system and method of claims 1 and 16. (2nd Reply Br. 2-4.) In response, the
Examiner finds that the receipt depicted in figure 3B of “Ballard discloses
each of a plurality of receipts comprising machine-readable data
compris[ing] at least a credit card number, an amount of purchase, and a date
of purchase.” (Ans. 7.) We cannot agree.
While we agree with the Examiner that Ballard teaches machine-
readable data, specifically, a DataGlyph ™ (FF B2), we cannot agree with
the Examiner that Ballard’s DataGlyph ™ discloses machine-readable data
comprising “at least a credit card number, an amount of purchase, and a date
of purchase,” as required by Appellant’s claims. Instead, we find that
Ballard describes its DataGlyphs ™ contain error correction codes and
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formatting information (FF B3, B4.) As such, we find that Ballard fails to
disclose the machine-readable data required to anticipate independent claims
1 and 16. We also do not find any basis for believing that these machine-
readable data are disclosed inherently in Ballard. Thus, we agree with
Appellant’s argument that Ballard fails to disclose at least “machine-
readable data compris[ing] at least a credit card number, an amount of
purchase, and a date of purchase,” as required by independent claims 1 and
16.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 1 and 16 under 35 U.S.C. § 102(b) as being
anticipated by Ballard. As such, we find that the rejections of claims 5, 18,
and 21 which depend from claims 1 and 16, respectively were also made in
error for the same reasons discussed supra.

ISSUE 2
Dependent claims 2-6, 17, 19, and 20 rejected under 35 U.S.C. §
103(a) as being obvious over Ballard and Cruse.
As discussed supra, Appellant has shown that the Examiner erred in
rejecting independent claims 1 and 16 under 35 U.S.C. § 102(b) as
anticipated by Ballard. The addition of Cruse does not cure the deficiencies
of Ballard, and, as such, we find that the rejections of claims 2-6, 17, 19, and
20, which depend from claims 1 and 16 respectively, were also made in error
for the same reasons discussed supra.

ISSUE 3
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Claims 7-12 and 15 rejected under 35 U.S.C. § 103(a) as being obvious over
Ballard and Cruse.
Independent Claims 7 and 12
Appellant generally argues that the combination of Ballard and Cruse
fails to teach or suggests the limitations of claims 7 and 12. (App. Br. 29.)
Specifically, Appellant argues that Cruse is non-analogous art. In making
this argument, the Appellant argues “Cruse is not (1) in the field of the
inventor’s endeavor and (2) is not reasonably pertinent to the particular
problem with which the inventor was involved.” (App. Br. 29.) We cannot
agree.
As an initial matter, independent claims 7 and 12 do not recite the
requirements for the machine-readable data recited by independent claims 1
and 16. Rather, independent claim 7 requires “a plurality of receipts . . .
compris[ing] an endorsement,” which we find that Ballard clearly teaches.
(FF B5.) Similarly, independent claim 12 recites “receipt data . . .
comprising underlying items purchased,” which we find Ballard also
teaches. (FF B6.) Additionally, we find that the remainder of independent
claims 7 and 12 generally recite a web site for providing a viewable copy of
the receipt required by the claims, which the Examiner relied on Cruse to
teach. (Ans. 6.) Specifically, the Examiner found that Cruse teaches a web-
based inventory management system which enables customers to view their
receipts on a web site. (FF C1, C2.) Thus, we find that the combination of
Ballard and Cruse teaches or suggests the limitations recited by independent
claims 7 and 12.
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With respect to Appellant’s argument that Ballard and Cruse are
nonanalogous, we also cannot agree. Whether a reference is analogous art is
part of the analysis of the scope and content of the prior art in the
obviousness determination. See Heidelberger Druckmaschinen AG v.
Hantscho Commercial Prods. Inc., 21 F.3d 1068, 1071 (Fed. Cir. 1994).
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor
or is reasonably pertinent to the problem with which the
inventor was concerned in order to rely on that reference
as a basis for rejection. References are selected as being
reasonably pertinent to the problem based on the
judgment of a person having ordinary skill in the art.
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (Internal citations
omitted).
A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it logically would have recommended itself to an
inventor's attention in considering his problem because of the matter with
which it deals. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Ballard and
Cruse are reasonably pertinent to the problem with which the Appellant is
concerned because they address the question of making financial transaction
data available in an electronic format. (FF B2, C2). While the Appellant
may be correct that “Cruse is not even aware of the problem of
chargebacks,” (App. Br. 36), this alone is not dispositive. Instead, we find
that one skilled in the art would appreciate from Cruse’s disclosure the
ability to provide customers with views of their receipts through a web site.
(FF C2). Therefore, we find that one of ordinary skill in the art would have
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been led by Ballard and Cruse to the invention of independent claims 7 and
12.
Further, to the extent Appellant seeks an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s holding in KSR, 550 U.S. at 418. The Examiner has
provided an articulated reasoning with rational underpinning for why a
person with ordinary skill in the art would modify the remote data
acquisition and centralized processing and storage system of Ballard to
incorporate Cruse’s system which includes a web site for allowing
customers to view receipts online. (FF B1, C2). Specifically, the Examiner
articulates a rationale based on allowing users an alternative means to access
a copy of their paper receipt online. (Ans. 7). Accordingly, we find no error
in the combination of Ballard and Cruse with respect to independent claims
7 and 12.

Dependent claims 8-11 and 15
Appellant does not separately argue claims 8-11 and 15, which
depend from claims 7 and 12, respectively, and so has not shown that
the Examiner erred in rejecting claims 8-11 and 15 under 35 U.S.C. §
103(a) as being unpatentable over Ballard and Cruse for the same
reasons we found as to claims 7 and 12, supra.

CONCLUSIONS OF LAW
1. We conclude that the Examiner erred in finding that Ballard
discloses machine-readable data comprising “at least a credit card number,
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an amount of purchase, and a date of purchase,” as required by the system
and method of claims 1 and 16 under 35 U.S.C. § 102(b).
2. We conclude that Cruse fails to cure the deficiencies of Ballard
under 35 U.S.C. § 103(a), as rejected in claims 2-6, 17, 19, and 20.
3. We conclude that the Examiner did not err in combining Ballard
and Cruse to teach or suggest the limitations of claims 7-12 and 15 under 35
U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-6 and 16-21 is
REVERSED. The decision of the Examiner to reject claims 7-12 and 15 is
AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).

AFFIRMED-IN-PART

ack

cc:

KENNETH L. NASH
P.O. BOX 680106
HOUSTON, TX 77268-0106