Ex Parte RE36116 et al

Board of Patent Appeals and Interferences

Apr 1, 2010

90007258 (B.P.A.I. Apr. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PATRICK D. MCCARTHY
____________________

Appeal 2009-000022
Reexamination Control 90/007,258
Patent Re. 36,1161
Technology Center 3900
____________________

Decided: April 1, 2010
____________________

Before ANTON W. FETTING, KEVIN F. TURNER and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 U.S. Patent No. Re. 36,116 (filed Feb. 15, 1996) (reissued Feb. 23, 1999)
to McCarthy. Reissue of U.S. Patent No. 5,287,268 (filed Nov. 16, 1992).
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2
The Patent Owner [hereinafter Appellant] filed a Request for
Rehearing (hereinafter "Request") of our Decision on Appeal of September
18, 2009 (hereinafter "original Decision") in which we Affirmed-In-Part, the
Examiner's rejection of the appealed claims.
We grant the Appellant's Request to the extent that we consider the
arguments set forth therein, but DENY the Appellant's request to modify our
original Decision.

STATEMENT OF THE CASE
In our original Decision, we Affirmed-In-Part, the Examiner's Final
Rejection of claims 1-5, 8-11, 14-18, 20-29 and 31-35. In particular, we
Reversed the Examiner's rejection of claims 1-5 and 35, but Affirmed the
rejection of claims 8-11, 14-18, 20-29 and 31-34 (Original Decision 20).
In the Request, the Appellant seeks reconsideration of our decision to
Affirm the rejections of independent claims 8, 14, 22 and 31, and contends
that these claims, and any claims dependent thereon, must be found
patentable (Request 1).

ISSUE
In the Request, the Appellant contends that we erred in our affirmance
of claims 8, 14, 22 and 31 in our original Decision because the Examiner's
rejections are based on an interpretation of the UPI article2 with which we
disagreed in the original Decision (Request 1-2). In particular, the Appellant

2 Paula Maynard, Business World In Plastic Credit Times A Card That
Rewards Paying Cash; Cash Card Discounts Go Into Consumer’s Savings
Account (United Press International 1981).
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contends that while the Examiner's rejection relies on the UPI article for the
disclosure of "merchant-specific" credit rate and on the AB article3 for the
disclosure of an electronic debit card payment system, a person of ordinary
skill in the art would not combine these two references (Request 4). As
such, the issue raised by the Appellant's Request is whether "the Board's
analysis of the combinability of the UPI and AB articles is in error . . . ."
(Request 4).

ANALYSIS
We initially observe that the Examiner's rejections pertinent to the
independent claims 8, 14, 22 and 31 were as follows:
1. Claims 1, 2, 4, 14, 15, 17, 22, 23, 27, 28 and 35 rejected under
35 U.S.C. § 102(b) as anticipated by the UPI article.

2. Claims 8-11, 16, 20, 21, 24-26 and 31-34 rejected under 35
U.S.C. § 103(a) as unpatentable over the UPI article and the AB
article.
(Ans. 15, 33).
As such, independent method claims 14 and 22 were rejected by the
Examiner as anticipated by the UPI article. In our original Decision, we
found any structure required in claims 14 and 22 as being inherently
described in the UPI article, and further found these claims anticipated by
the UPI article alone (Original Decision 12-13). Therefore, the Appellant's
argument in the Request contending error in combining the UPI article with

3 Helen Duffy, Direct Debit at Point of Sale, in American Banker, Dec.
1985, at 24 (renumbered pp. 1-8).
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the AB article is misdirected and unpersuasive with respect to claims 14 and
22.
Turning now to claims 8 and 31, which were rejected based on the
combination of the UPI article and the AB article, the Appellant contends
that the program described in the UPI article is targeted to a merchant who
seeks to avoid the "technology expense" of accepting debit or credit,
whereas the "AB article is directed to the implementation of fully electronic
transactions." (Request 3). As such, the Appellant argues that "AB is
describing exactly what merchants targeted by the SPS [UPI] system are
trying to avoid[]" and that the Examiner is effectively saying that a banker
would "try to sell a fully electronic payment system" to a merchant that has
"already demonstrated distain for technology and technology expense[.]"
(Request 3-4). The Appellant concludes that the business models of UPI and
AB articles "are diametrically opposed and thus a person of ordinary skill,
whether a banker, businessman or otherwise, would not combine them."
(Request 4).
We disagree. Firstly, the UPI article does not support the contention
that the described program is targeted to a merchant who seeks to avoid
"technology expense" or that such merchant has a "disdain for technology
and technology expense." (Request 3-4). Instead, the UPI article states:
The merchant willingly pays the administrative costs -- about
the same amount he is forced to pay the credit card companies -- to
gather the new business and eliminate credit card fraud and long
delays in reimbursement.
. . .
Storekeepers say they prefer cash in hand to waiting for credit
card companies to reimburse them.
(UPI article, 1-2)
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Hence, the benefit to the merchant that is described by the UPI article
is that of marketing, reduction in fraud, and improved cash flow. The UPI
article is substantially silent as to the alleged "technology expense" and does
not establish that the participating merchants have some "distain for
technology." As such, there are insufficient persuasive facts to support the
Appellant's argument.
The Appellant's argument also does not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Even if
the purpose of the program described in the UPI article may have been to
encourage use of cash so as to avoid cost of debit/credit transactions,
different reasons for combining the teachings of references may also serve as
the basis for an obviousness determination. KSR, 550 U.S. 398, 420 ("Under
the correct analysis, any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed."); see also Cross Med.
Prod., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed.
Cir. 2005).
In the above regard, encouraging cash payment is not mutually
exclusive of electronic debit/credit payment transactions. Facilitating the
manner in which customer account information is obtained, and how a
merchant-specific credit rate is applied to the transaction, would be a
rational reason for implementing the program described in the UPI article
using technology described in the AB article (Original Decision 16). Indeed,
increasing sales and revenue would provide unremarkable and obvious
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reasons for accepting electronic debit/credit payment transactions, even if
cash is preferred and encouraged. Whereas the Appellant has noted that it is
not unheard of for merchants such as gas stations to provide discounts for
cash payment (Request 3), we observe that such merchants still accept
debit/credit payment in addition to cash.
The Appellant's attempt to distinguish the disclosures in the UPI
article and the AB article again distills to the originally submitted argument
that the monetary expense involved would dissuade one of ordinary skill in
the art from combining these references together. However, as we have
already stated, such economic reasons do not establish that such combination
would not have been obvious, or that a person of ordinary skill in the art
would not make such a combination. (Original Decision 16). See
Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
1983).
Furthermore, as we already stated:
Indeed, electronically transmitting the consumer’s account
number and the credit value merely applies existing electronic fund
transaction technologies and the known technique of electronically
acquiring and transmitting account/value information to a portion of
the credit value transaction, i.e., at the point-of-sale terminals. Such
application of existing technology and techniques to yield predictable
results is unpatentable. (Original Decision 16). See KSR, 550 U.S. at
415-17; see also Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007) (“[a]ccommodating a prior art mechanical
device that accomplishes [a desired] goal to modern electronics would
have been reasonably obvious to one of ordinary skill . . .” in the
relevant art).
(Original Decision 17-18).
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The Appellant has not shown that such implementation of existing
technology and techniques would have been beyond the skill of one of
ordinary skill in the art.
Finally, we note the fact that the Examiner's rejection modifying the
teaching of the UPI article in view of the AB article does not mean that these
articles cannot be viewed in their entirety for what they fairly disclose to one
of ordinary skill in the art. See In re Bush, 296 F.2d 491, 496 (CCPA 1961)
(“[W]here a rejection is predicated on two references each containing
pertinent disclosure which has been pointed out to the applicant, we deem it
to be of no significance, but merely a matter of exposition, that the rejection
is stated to be on A in view of B instead of on B in view of A, or to term one
reference primary and the other secondary.”).
The AB article clearly describes the use of POS terminals for
facilitating electronic debit/credit transactions, and further suggests the use
of such POS systems for rebate system like that described in the UPI article
(Original Decision 16 citing FF 3-5). Hence, it would also have been
obvious to one of ordinary skill in the art to utilize the credit/debit system as
described in the AB article to electronically provide merchant-specific credit
rate and value as taught by the UPI article, to enhance the provision of
rebates on transactions, and to make such programs available to more
merchants based on their business margins and needs (i.e., by allowing the
merchant to determine the credit rate).
Therefore, in view of the above, we find no error in our conclusion in
the original Decision in affirming the rejections of independent claims 8, 14,
22 and 31.
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DECISION
While we have reconsidered certain aspects of our original Decision
in light of Appellant's Request, we decline to modify our original Decision
in any respect.

DENIED

ack

Kurt L. Grossman
Wood Herron & Evans LLP
2700 Carew Tower
Cincinnati OH 45202

THIRD PARTY REQUESTOR
Martin P. Hoffman, Esq.
Hoffman Wasson & Gitler, PC
2461 South Clark Street, Suite 522
Alexandria, VA 22202