Ex Parte Tso

Patent Trial and Appeal Board

Jul 22, 2013

09854423 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL M. TSO
____________

Appeal 2012-003795
Application 09/854,423
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on November 15, 2012.

STATEMENT OF THE CASE
Michael M. Tso (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1, 3-9, 11-15, 17-23, 25-29, 31-37, and
39-41. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method of processing a
transaction, comprising:
receiving, at an intermediary computer, from a client
device associated with a first participant in the transaction, a
request to process the transaction using a first currency that is
not recognized by a second participant in the transaction,
wherein the client device is operatively connected to the
intermediary computer via a communications link, and wherein
the first currency comprises a private currency;
decrementing, by the intermediary computer, an amount
of the first currency associated with the first participant by
decrementing a balance of a first currency account of the first
participant maintained at the intermediary computer;
incrementing, by the intermediary computer, an amount
of second currency associated with the first participant by
incrementing a balance of a second currency account of the first
participant maintained at the intermediary computer, wherein
the second currency is recognized by the second participant;
and
processing the transaction using the amount of second
currency associated with the first participant.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jul. 12, 2011) and Reply Brief (“Reply Br.,” filed Nov. 28, 2011),
and the Examiner’s Answer (“Ans.,” mailed Sep. 30, 2011).
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Dethloff
Eggleston

US 4,968,873
US 6,061,600
Nov. 6, 1990
May 9, 2000
The following rejection is before us for review:
1. Claims 1, 3-9, 11-15, 17-23, 25-29, 31-37, and 39-41 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Eggleston and
Dethloff.

ISSUE
Did the Examiner err in rejecting the claims under § 103(a) over the
cited prior art combination?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
Analysis begins with a key legal question - what is the
invention claimed? Courts are required to view the claimed
invention as a whole. 35 U.S.C. § 103. Claim interpretation, in
light of the specification, claim language, other claims, and
prosecution history, is a matter of law and will normally control
the remainder of the decisional process.

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Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir.
1987).
Some cases state the standard as “the broadest reasonable
interpretation,” see, e.g., In re Van Geuns, 988 F.2d 1181, 1184,
26 USPQ2d 1057, 1059 (Fed. Cir. 1993), others include the
qualifier “consistent with the specification” or similar language,
see, e.g., In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566,
1567 (Fed. Cir. 1990). Since it would be unreasonable for the
PTO to ignore any interpretive guidance afforded by the
applicant's written description, either phrasing connotes the
same notion: as an initial matter, the PTO applies to the
verbiage of the proposed claims 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).
There are three independent claims: (a) claim 1 to a method; (b) claim
15 to a computer-readable medium; and (c) claim 29 to an apparatus.
Notwithstanding they are directed, nominally, to different statutory classes
of invention, we will treat them together - just as the Appellant has – taking
claim 1 as representative. See App. Br. 8-16.
Claim 1 is drawn to a method. The preamble indicates the claimed
subject matter is drawn to a “computer-implemented” method, thus the
method involves the use of a computer system. However, claim 1 provides
no details about said computer system. Although an “intermediary
computer” is recited for practicing each of the claims steps, there are no
details. And there are no details provided in the Specification. Evidently, an
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“intermediary computer” encompasses any computer system. See Spec.
13:3-4: “any type of intermediary 206 [(see Figs. 2A and 2B)] may be used.”
At best, the claim term “intermediary” is indicative of the computer system’s
relative position between two participants in a transaction; that is, it is
located intermediate the participants. This is supported by what is shown in
Figures 2A and 2B of the Specification.
Claim 1 defines a transaction processing method that comprises 4
steps.
In the first step, the computer receives a request to process the
transaction using a first currency comprising a “private currency” not
recognized by a second participant from a first participant’s client device,
operatively connected to it via a communications link. The Specification
does not expressly define a “private currency” that is not recognized by a
second participant. Although the Specification does disclose examples, such
as frequent flyer miles (Spec. 9:2), the scope of what is to be considered
“private currency” that is not recognized by a second participant is
unrestricted. One of ordinary skill in the art reading the claim in light of the
Specification would reasonable broadly construe a “private currency” that is
not recognized by a second participant to be any type of currency a first
participant deems to be “private” and that a second participant would not
accept as payment.
In the second step, the computer “decrement[s] a balance of [the] first
currency account of the first participant maintained at the computer.”
In the third step, the computer “increment[s]” a balance of a second
currency account of the first participant maintained at the computer, wherein
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the second currency is recognized by the second participant. The
Specification discloses US Dollars (Spec. 10:1-3) as an example.
In the fourth step, the transaction is processed “using the amount of
second currency associated with the first participant.”
Putting it all together, the claimed method as a whole provides for a
computerized business method. More specifically, claim 1 reasonably
broadly covers using a computer system to
 receive a request from a communications device of a first participant
to process a transaction with a currency not accepted by a second
participant;
 decrementing a balance of not-accepted currency;
 incrementing a balance of accepted currency; and,
 paying the second participant with accepted currency.
To use the currencies exemplified in the Specification, claim 1 covers
receiving a request from a communications device to process a transaction
with frequent flyer miles, decreasing a balance of frequent flyer miles and
increasing a balance $, and paying with $.
It should be noted that the decrementing/incrementing can be
accomplished in any arbitrary way, as the claim provides no details. A
conversion step whereby the first not-accepted currency is converted to a
second accepted currency via an albeit conventional exchange formula (see
Spec. 4:6 and 10:18-19) is not included, for example. Accordingly, claim 1
reads on reducing a first non-accepted currency and increasing a second
accepted currency, per se, and then paying with the second accepted
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currency. In fact, claim 1 is so broad that it reasonably broadly covers
paying with a second accepted currency irrespective of any first/second
currency relationship. One could practice the claimed process simply by (a)
reducing a first not-accepted currency balance and increasing a second
accepted currency balance and, independently of those balancing acts, (b)
paying with the second accepted currency.
The foregoing claim construction analysis accounts for those claim
limitations that are directed to the type of transaction to be processed; i.e.,
transactions involving first “private” not-accepted currency and second
accepted currency. However, from the computer system’s perspective,
claim 1 reads on a less complicated process: data from a device is received
(first step), a number is decreased (second step), another number is
increased (third step), and data is output (fourth step). From that
perspective, the term “currencies” and the labels attached to the term
“currencies” that are recited in the claim as being subject to the process –
that is, the “first,” “private” and “second” “currencies” – do not functionally
or structurally affect the way the computer processes the data. As such,
these claim limitations are reasonably broadly construed to be directed to
nonfunctional and descriptive material.
Now that the scope of the claimed method has been fully understood,
we turn to the rejection; more specifically, we turn to the Appellant’s
criticisms of the rejection.

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Claims 1, 15, and 19
The Appellant argues that Eggelston’s telecommunications connection
is not an “intermediary computer” as claimed. App. Br. 8-11. The
Examiner made a finding that element 38 (“telecommunications
connection”) of Figure 2 of Eggleston meets the claimed “intermediary
computer.” Ans. 5. The Appellant’s argument is unpersuasive as to error in
the rejection because (a) the claimed “intermediary computer” reasonably
broadly covers any computer system (see claim construction analysis supra)
and (b) Eggleston defines the “telecommunications connection 38” as
covering a “computer network” (col. 23, ll. 7-8, emphasis added).
Next, the Appellant argues that Eggleston’s telecommunications
connection does not perform any of the claim steps. App. Br. 11-13. The
Examiner made a finding that Eggleston discloses means for performing a
number of the claim steps. Ans. 5.
A premise implicit in Appellant’s argument is that the claimed
“intermediary computer” is somehow different or operates in a manner
different from Eggleston’s telecommunications connection (i.e., element 38
in Fig. 2). However, there is no evidence on the record supporting this
premise. Accordingly, the Appellant’s argument is unpersuasive as to error
in the rejection because a computer system (i.e., the claimed “intermediary
computer”) reads on a computer network (i.e., Eggleston’s
telecommunications connection 38 in Fig. 2) and, if there is any difference,
as the Appellant appears to allege there is, the record before us does not so
show to any convincing degree.

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The Appellant disagrees with the Examiner’s obviousness
determination on the grounds that Eggleston does not teach a transaction
between a first participant and a second participant involving a first currency
that is not recognized by a second participant. App. Br. 13-16. The
Examiner made a finding that this was shown in Eggleston at column 46,
lines 4-54 (Ans. 5) and in the Response at Answer, page 9.
The difficulty with the Appellant’s argument is that the argument is
not commensurate in scope with what is claimed. The Appellant argues that,
under a first interpretation of the Examiner’s obviousness rationale,
“Eggleston does not appear to entail an exchange of currency (private or
otherwise) between the consumer and the retailer that the retailer does not
recognize” (App. Br. 15) and that, under a second interpretation of the
Examiner’s obviousness rationale, “Eggleston fails to teach or suggest a
transaction between two retailers that entails an exchange of currency
(private or otherwise) between a first retailer and a second retailer that the
second retailer does not recognize” (App. Br. 15). However, as reasonably
broadly construed, the method as claimed is not limited so as to require an
exchange of currency between two participants that a second participant
does not recognize. As reasonably broadly construed (see supra), the
method covers using a computer system to receive a request from a
communications device of a first participant to process a transaction with a
currency not accepted by a second participant; decrementing a balance of
not-accepted currency; incrementing a balance of accepted currency; and,
paying the second participant with accepted currency. It is not necessary
that there be an an exchange of currency between two participants that a
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second participant does not recognize in order to practice the method as
broadly as claimed. Another difficulty with the argument is that the claim is
drawn to a computer-implemented method.
Having addressed all the arguments challenging the rejection of claim
1, and claims 15 and 29 which stand or fall with claim 1, and finding they
are not persuasive as to error in their rejection, the rejection of claims 1, 15,
and 29 is sustained.

Claims 3, 17, and 31
The Appellant argues that “Eggleston fails to teach or suggest that the
amount of second currency incremented by the telecommunications
connections (the alleged intermediary computer or transaction processor) is
determined based upon at least the amount of first currency decremented by
the telecommunications connections.” App. Br. 17. We are not persuaded
by this argument. As the Examiner (Ans. 6) pointed out, Eggleston (col. 44,
l. 64 to col. 45, l. 67) discloses an incentive program whereby points are
awarded with which one can win prizes. See also col. 12, ll. 60-65. From
the perspective of a computer database, as points (i.e., the second currency
accepted by the retailer) are incremented, the prizes (first currency) are
decremented. The computer thus necessarily determines the amount of
increment for the points (i.e., second currency) based upon the amount of
prizes (i.e., first currency) decremented.

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Claims 4, 18, and 32
The Appellant argues that “[t]he relied-upon passage of Eggleston,
[(col. 21, ll. 4-28, see Ans. 6)] fails to teach or suggest that the amount of
second currency incremented by Eggleston's telecommunications
connections (the alleged intermediary computer or transaction processor) is
determined based upon a set of conversion criteria.” App. Br. 17.
Notwithstanding that exchange rates per se are known, Eggleston’s incentive
program - whereby prizes are awarded based on the number points –
implicitly employs prize/point conversion criteria. Accordingly, the
argument is unpersuasive as to error in the rejection.

Claims 5, 19, and 33
The Appellant argues that Eggleston does not disclose “the set of one
or more conversion criteria includes a time at which the request from the
first participant is received,” as claimed. App. Br. 17. The Examiner relied
on the passage at column 1, lines 46-62 and Figure 9 as evidence that
Eggleston discloses this subject matter. Ans. 6.
We agree with the Appellant that said passage discusses tracking data,
not conversion criteria that includes time at which a request from the first
participant is received.

Claims 6-9, 20-23, and 34-37
These claims call for conversion criteria that include “attributes” of
the first participant, second participant, and the transaction, and including
products or services involved in the transaction. The Appellant argues these
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limitations are not shown in Eggleston as the Examiner has alleged. App.
Br. 18-20. The difficulty with the argument as to “attributes” lies in the
breadth of scope of the claim term “attributes.” Given its scope, “attributes”
reasonably broadly encompasses any characteristic, including the eligibility
and qualification of the first participant, second participant, and the
transaction. In that regard, Eggleston’s incentive program necessarily
includes as conversion criteria the eligibility and qualification of the
consumer, retailer, and the transaction. Similarly, Eggleston’s incentive
program necessarily includes as conversion criteria products or services
involved in the transaction because the program awards specific prizes.
Conversion depends on the prize awarded. Accordingly, the argument is
unpersuasive as to error in the rejection of these claims.

Claims 14 and 28
The Appellant argues that “Eggleston . . . fails to teach or suggest that
the award redemption transaction involves a first currency that is not
recognized by the retailer.” App. Br. 21. This argument was addressed
earlier with respect to claim 1. We incorporate herein our reasons for
finding the argument unpersuasive as to error in the rejection of these
claims.

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Claims 11-13, 25-27, 29, and 39-41
These claims were not specifically addressed in the Appeal Brief.
Accordingly they stand or fall with the claims on which they depend. In that
regard, these claims depend from claims whose rejection has been affirmed.
There, their rejection is also affirmed.

DECISION
The decision of the Examiner to reject claims 5, 19, 33 is reversed.
The decision of the Examiner to reject claims 1, 3, 4, 6-9, 11-15, 17,
18, 20-23, 25-29, 31, 32, 34-37, and 39-41 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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