Ex Parte Shahbazi et al

Board of Patent Appeals and Interferences

Aug 16, 2012

11172379 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HAMED SHAHBAZI, CHRIS ERICKSEN, and
ROY GONCALVES
____________________

Appeal 2011-003993
Application 11/172,379
Technology Center 3600

Before ANTON W. FETTING, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-003993
Application 11/172,379

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention is directed to a method for integrating a variety
of products and services in an electronic kiosk and managing the allocation
of a change amount from one transaction to other transactions. (Spec., para.
[0005]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for automated service comprising:
selecting a first transaction from a plurality of
transactions offered by an electronic kiosk;
executing the first transaction via the electronic kiosk
resulting in a change amount;
selecting a second transaction from the plurality of
transactions offered by the electronic kiosk; and
executing the second transaction via the electronic kiosk
using the change amount to fund the second transaction.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 21, 2010) and Reply Brief (“Reply Br.,” filed Sept. 24,
2010), and the Examiner’s Answer (“Ans.,” mailed Sept. 15, 2010).
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THE REJECTION
The following rejection is before us for review:
Claims 1-24 are rejected under 35 U.S.C. § 102(e) as unpatentable
over Burke (US 6,876,971 B1, issued Apr. 5, 2005).

ISSUE
Did the Examiner err in concluding that claims 1-24 are anticipated by
Burke?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office.).
FF1. Burke discloses a system for extending point of sale cash
transactions to allow consumers to save change or transfer discretionary
funds into saving or donating accounts managed by a central clearinghouse
(Abstract).
FF2. Burke states that the system
includes a network composed of consumers/payors with
identification cards, neutral merchants who enter data and funds
into remote POS terminals, central clearinghouse that
offers/process accounts, and service providers for participating
consumer/account holders, i.e. nonprofit giving, travel, mutual
funds, savings, ets. [sic] The network provides consumers with
a seamless, convenient, and painless way to save/donate every
time they spend at multiple POS counter locations
(Abstract).
Appeal 2011-003993
Application 11/172,379

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ANALYSIS
Independent Claims 1, 23, and 24
Appellants argue claims 1, 23, and 24 as a group (App. Br. 5-7). We
select claim 1 as representative of the group. The remaining claims stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Appellants argue that the Examiner erred in rejecting claims 1, 23,
and 24 under 35 U.S.C. § 102 because Burke fails to disclose “selecting a
first transaction from a plurality of transactions offered by an electronic
kiosk” and “selecting a second transaction from the [same] plurality of
transactions offered by the electronic kiosk,” as recited in the claims (App.
Br. 5 and Reply Br. 4). Appellants argue that although Burke discloses that
the customer can extend the point of sale cash transaction by choosing to
receive the change, donate the change, or save the change, there is no
common plurality of transactions offered from which the first transaction
(cash purchase) and the second transaction (application of accrued change)
are or can be selected (App. Br. 5-7).
We agree with the Examiner that Burke discloses all of the elements
of claim 1 (Ans. 4). Burke discloses “[a]n automated way for sales
establishments to extend point of sale (POS) cash transactions to allow
consumers to save change or transfer discretionary funds into saving or
donating accounts managed by a central clearinghouse,” and teaches that a
network of consumers/payors, merchants, central clearinghouse, and service
providers provides consumers with a “way to save/donate every time they
spend at multiple POS counter locations” (Abstract). Burke thus discloses
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that a consumer is offered the option at POS counter locations to make
purchases and is also offered options to transfer discretionary funds into
saving accounts or donating accounts, i.e., a plurality of transactions.
Contrary to Appellants’ argument, Burke thus discloses a common plurality
of transactions from which a first transaction (e.g., a purchase) and a second
transaction (e.g., a donation) can be selected. Burke describes that, in
making a purchase at the POS location, if a consumer offers funds in excess
of the purchase price, the consumer may elect to donate or save all or a
portion of the change (col. 3, ll. 27-31). Burke thus discloses selecting a
second transaction (e.g., to transfer funds to a donating account) from the
plurality of transactions and executing the second transaction using the
change amount to fund the second transaction.
Appellants argue that “[b]ecause a user can select making [a] donation
only after a transaction that results in a change amount is executed, the POS
cannot offer making a donation as one of a plurality of transactions that also
includes the transaction resulting in the change amount” (App. Br. 6).
Appellants also argue, in the alternative, that if the user were to select to
donate or save as the first transaction, the user cannot select a second
transaction using the change amount resulting from execution of the first
transaction (App. Br. 7). We disagree.
Burke discloses an automated way to allow consumers to “transfer
discretionary funds into savings or donating accounts managed by a central
clearinghouse” (Abstract). Burke also describes that a user may make a
direct transfer of cash into the system, which may be used to fund a
subsequent purchase or donation (col. 6, l. 61 – col. 7, l. 3 and Fig. 7).
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Burke thus contemplates that the plurality of transactions offered at the POS
locations includes the options to make a donation or save discretionary funds
in addition to the option to make a purchase.
We are not persuaded that the Examiner erred in rejecting claims 1,
23, and 24 as anticipated by Burke; therefore, we will sustain the Examiner’s
rejection. We also will sustain the Examiner’s rejection of dependent claims
2-6, 12-18, and 20-22, which were not separately argued.

Dependent Claims 7-11 and 19
Each of claims 7-11 and 19 recites that the operation of selecting a
second transaction comprises selecting a subset of the plurality of
transactions. We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Burke does not disclose an overlap in the plurality
of transactions offered when the consumer pays for the desired merchandise
(i.e., a first selected transaction) and when the change is credited to
predetermined accounts (i.e., the second selected transaction) and therefore,
does not present a subset of the plurality of transactions from which the
second transaction can be selected. As described above, Burke discloses that
a consumer is offered options at POS counter locations to make a purchase,
transfer funds into saving accounts, and transfer funds into donating
accounts, i.e., a plurality of transactions. Therefore, Burke discloses a
common plurality of transactions from which both a first transaction (e.g., a
purchase) and a second transaction (e.g., a donation) can be selected. Burke
discloses donating funds to a charity as a subset of the plurality of
transactions (col. 4, ll. 25-36; col. 4, l. 66-col. 5, l. 7).
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Claim 7 recites that the operation of selecting a second transaction
comprises presenting a subset of the plurality of transactions “based on the
change amount.” We are not persuaded of error on the part of the Examiner
by Appellants’ further argument with respect to claim 7 that Burke presents
the same options every time and therefore does not present a subset of the
plurality of transactions based on the change amount. Burke discusses
sufficiency of funds, and describes that the user is given an option to donate
or save the amount of change after a determination is made that the amount
of cash exceeds the purchase price (col. 4, l. 66 – col. 5, l. 7).
During patent prosecution, the terms in a claim must be interpreted
using “the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here,
the phrase “based on the change amount,” as broadly construed covers
offering an option to make a donation if the cash amount is more than the
purchase price, i.e., when the sale transaction yields a change amount, as
disclosed in Burke.
Claim 10 recites that the operation of selecting a second transaction
comprises selecting a subset of the plurality of transactions based on a user
transaction history. We are not persuaded of error on the part of the
Examiner by Appellants’ further argument with respect to claim 10 that the
Examiner erred in finding that Burke discloses the limitations of claim 10 at
col. 4, l. 66-col. 5, l. 7. Burke describes in the cited portion that if there is
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more cash than price, a message is displayed asking whether the consumer
wishes to retain some of the cash due. If yes, the consumer is prompted to
enter into a keypad the amount that he or she wishes to retain or donate.
Burke thus provides an option to donate based on whether the previous sales
transaction, i.e., the user transaction history, has yielded a change amount.
Claim 19 recites that the operation of selecting the second transaction
comprises detecting a location of the electronic kiosk and presenting a subset
of transactions from the plurality of transactions, wherein the subset of
transactions is selected in relation to the location. We agree with the
Examiner that the phrase “selected in relation to the location” in claim 19 is
reasonably broadly construed to cover an arrangement, as disclosed in
Burke, where the subset of transactions are transactions that may be
performed specifically at the terminal location. The subset of transactions is,
thus, “selected in relation to the [terminal] location” (Ans. 8).
For the reasons set forth above, we are not persuaded that the
Examiner erred in rejecting claims 7-11 and 19 as anticipated by Burke;
therefore, we will sustain the Examiner’s rejections.

DECISION
The Examiner’s rejection of claims 1-24 under 35 U.S.C. § 102(e) as
being anticipated by Burke 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) (2010).
AFFIRMED
Appeal 2011-003993
Application 11/172,379

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