Ex Parte Smith et al

Patent Trial and Appeal Board

Aug 1, 2016

12977145 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/977,145 12/23/2010
107681 7590 08/03/2016
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
FIRST NAMED INVENTOR
Martin Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10-478-UOl 8769
EXAMINER
PARIKH, HARSHAD R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
08/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN SMITH and NATHANIEL CHRISTOPHER HERWIG
Appeal2014-005259
Application 12/977, 145 1
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is NCR Corporation.
Appeal Br. 1.
Appeal2014-005259
Application 12/977, 145
ILLUSTRATIVE CLAIM
1. A transaction terminal comprising:
a processor;
an output device;
the processor being arranged to collate transaction data
relevant to a transaction performed at said terminal and to
generate receipt data corresponding to an information rich
optical code comprising said transaction data; and
the output device being arranged to output the receipt
data in the form of said optical code such that the optical code
can be captured by a user's image capture device, which is
separate from the terminal.
CITED REFERENCES
The Examiner relies upon the following references:
Wang et al. us 5,848,426 Dec. 8, 1998
(hereinafter "Wang")
Reber et al. us 5,969,324 Oct. 19, 1999
(hereinafter "Reber")
Hui US 2010/0299217 Al Nov. 25, 2010
Nicolas et al. US 2011/0055030 Al Mar. 3, 2011
(hereinafter "Nicolas")
Burke et al. US 2011/0093344 Al Apr. 21, 2011
(hereinafter "Burke")
REJECTIONS
I. Claims 1, 2, 4, 5, 7-11, 13-17, 19, and 20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Reber and Wang.
II. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reber, Wang, and Nicolas.
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Appeal2014-005259
Application 12/977, 145
III. Claims 3 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Reber, Wang, Nicolas, and Burke.
IV. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reber, Wang, and Hui.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellants argue independent claims 1, 8, and 15 together as a
group. Appeal Br. 4--7; Reply Br. 4--5. Claim 1 is selected for analysis
herein. See 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants contend that the Examiner erred in rejecting claim 1
because the cited prior art does not teach or suggest the claimed subject
matter, specifically the recited "processor" that is "arranged ... to generate
receipt data corresponding to an information rich optical code comprising
said transaction data." Appeal Br. 4--7; Reply Br. 4--5. The Appellants
further contend that the Examiner has not provided any reason for
combining the references relied upon. Reply Br. 5.
According to the Appellants, Reber fails to meet the identified
limitation of claim 1 because Reber' s bar code does not "compris[ e] ...
transaction data"; rather, it is a nonpredictable bar code that can be used to
look up transaction data stored in a remote database. Appeal Br. 5---6. The
Appellants also contend that Wang does not teach or suggest generating
receipt data corresponding to an information rich optical code comprising
transaction data. Reply Br. 4--5.
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Application 12/977, 145
However, the Appellants do not dispute the Examiner's finding that
Reber teaches claim 1 's "generat[ing] receipt data corresponding to" an
"optical code" (even if not an "information rich" optical code, or one that
comprises "transaction data"). See Answer 4 (citing Reber col. 3, 11. 7-10,
13-15, col. 3, 11. 38--40, Figs. 1, 2). Nor do the Appellants dispute the
Examiner's finding that Wang teaches "an information rich optical code
comprising ... transaction data" (even if not "transaction data" associated
with "receipt data"). See Answer 4--5 (citing Wang col. 5., 11. 42-50, col. 7,
11. 33---60, col. 8, 1. 58---col. 9, 1. 48, Figs. 5, 10, 12, 14A, 14B, 14C).
Accordingly, the Appellants incorrectly allege that the combination of Reber
and Wang fails to teach or suggest all of the limitations of claim 1.
The Appellants contend that the Examiner has not provided any
reason for combining the teachings of Reber and Wang, such that the subject
matter of claim 1 would be obvious. Reply Br. 5. Yet, the Appellants make
no attempt to explain why the combination set forth by the Examiner is more
than a combination of prior art elements according to their established
functions that would yield a predictable result, as stated in the Final Action
(pages 11-12).
In view of the foregoing, the Appellants' arguments are not persuasive
of error in the rejection of independent claim 1 or of independent claims 8
and 15 grouped therewith. See 37 C.F.R. § 41.37(c)(l)(iv). Thus, the
rejections of independent claims 1, 8, and 15, and of dependent claims 2-7,
9-14, and 16-20, are sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-20.
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Appeal2014-005259
Application 12/977, 145
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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