Ex Parte Turk et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11735769 (B.P.A.I. Jun. 28, 2012)

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.
11/735,769 04/16/2007 James J. Turk 01929-P0001G 2604
24126 7590 06/29/2012
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
DASS, HARISH T
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
06/29/2012 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 JAMES J. TURK and GEOFFREY TURK
____________

Appeal 2011-003875
Application 11/735,769
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003875
Application 11/735,769

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-3, 5, and 10-20. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM but denominate our affirmance as a NEW GROUND of
rejection under § 41.50(b).
BACKGROUND
Appellants’ invention is directed to an electronic transaction system
using asset-based electronic cash. (Spec., para. [0002]).
Claim 1 is illustrative:
1. An asset based electronic cash system which does not
permit fractional banking comprising:
at least one storage site having secure facilities for storage
of a valuable commodity;
an inventory of a valuable commodity stored in said secure
facilities at a said storage site;
a computer system which does not permit fractional
banking having software executing thereon that causes said
computer system to:
maintain records of the amount of said inventory of a
valuable commodity stored in said secure facility;
create electronic coins, said electronic coins
comprising electronic data identifying a unique serial number and
a specified amount of said valuable commodity, and having a
digital signature for verifying that the electronic coins were
created by said computer system and a date which represents the
date when said electronic coin was created;
transmit said electronic coins to a system user;
receive said electronic coins from a payee of said
system user; and
confirm that said electronic coins have not been
previously spent;
a database of said serial numbers of said electronic coins,
wherein a recipient of a first electronic coin may submit said first
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Application 11/735,769

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electronic coin to said computer system to determine if said first
electronic coin has been previously spent, wherein said computer
system checks said database of said serial numbers to ensure that
said first electronic coin has not been previously spent, and if said
first electronic coin has not been previously spent then said
computer system records said first electronic coin as spent, and
creates a second electronic coin and transmits said second
electronic coin to said recipient, and wherein said computer
system subtracts an amount representing transactional costs from
a specified amount of said valuable commodity identified in said
first electronic coin to determine a specified amount of said
valuable commodity identified in said second electronic coin, said
transactional costs including a storage fee that is determined based
on a period of time since the date contained in the electronic data
representing when said electronic coin was created;
a total of amounts of said electronic coins issued by said
computer system being less than or equal to an amount of said
inventory of a valuable commodity stored in said secure facility;
said asset based electronic cash system permitting entities
to conduct financial transactions without reliance on national
currencies in conducting said financial transactions, thereby
eliminating payment risk, whereby obligations of a system user to
a payee who receives electronic coins are extinguished.

Appellants appeal the following rejection:
Claims 1-3, 5, and 10-20 under 35 U.S.C. § 103(a) as unpatentable
over Turk (WO 94/18640, pub. Aug. 18, 1994), Rosen (US 5,453,601, iss.
Sep. 26, 1995), and Donal O’Mahony, et al., Electronic Payment Systems,
145-65, 168-83 (1997) (hereinafter “O’Mahony”).

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Ans. 4 to 13.
Additional findings of fact may appear in the Analysis that follows.

Appeal 2011-003875
Application 11/735,769

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ANALYSIS
We are not persuaded of error by the Examiner by Appellants'
argument that neither Turk not Rosen discloses confirmation that coins have
not been previously spent, and that neither Rosen nor O’Mahony discloses
money backed by a valuable commodity, because these arguments are
directed to the individual teachings of the references while the rejection is
directed to the combined teachings of the references. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this regard,
Mahoney is relied on for the teaching of confirming that the coins have not
been previously spent and Turk is relied on for teaching coins/currency
backed by a valuable commodity (Ans. 4-5, 7).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Mahoney is not properly combined with Turk or
Rosen. We agree with the Examiner’s rationale to combine the references
found on pages 6 to 7 of the Answer. In this regard, we agree that the
rejection is based on a combination of known elements combined so as to
perform the same function as each did separately to produce a predictable
result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the cited references do not disclose transaction
costs including storage fees. We agree with the Examiner and take Official
Notice that the charging of storage fees for storing items for the time the
items are stored is old and well known, as evidenced by the charging of
storage fees at pawn shops.
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Application 11/735,769

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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection of claims 2, 3, 5, and 10-20
because the Appellants have not addressed the separate patentability of these
claims.
We recognize that the Examiner did not clearly take Official Notice
that it is well known to charge storage fees in the statement of the rejection
of claim 1. Therefore we denominate our affirmance of the Examiner’s
rejection as a new ground of rejection.

DECISION
The decision of the Examiner is affirmed but denominated as a new
ground of rejection.

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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