Ex Parte Asano

Board of Patent Appeals and Interferences

Oct 31, 2007

08865403 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMOYUKI ASANO
____________

Appeal 2006-3185
Application 08/865,403
Technology Center 3600
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Decided: October 31, 2007

____________

Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Tomoyuki Asano (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 9, 17-25, 37-46, and 53-62, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is to a method and system for providing a
service to a user and for enabling proper charge processing for the service
(Specification 1). Claim 9, reproduced below, is representative of the subject
matter on appeal.
9. A method for providing a service to a user,
comprising the steps of:
receiving a service request requesting desired
service for the user from a service provider and a digital
signature generated based on said service request from a
user terminal;
providing the service to the user terminal
according to said service request;
requesting a charge collection from an accounting
terminal based on said service request; and
providing said service request and said digital
signature to said accounting terminal when a disclosure
request of service requests and digital signatures is
received.

THE REJECTION
The Examiner relies upon the following evidence in the rejection:
Sirbu US 5,809,144 Sep. 15, 1998

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The following rejection is before us for review:
1. Claims 9, 17-25, 37-46, and 53-62 are rejected under 35 U.S.C. § 102(e) as
anticipated by Sirbu.

ISSUE
The Appellant contends that Sirbu neither discloses nor suggests the step of
providing a service request to the account server when a disclosure request is
received (Appeal Br. 6). The Examiner found that Sirbu discloses this step of
claim 9 (Final Office Action 3, citing Sirbu, col. 6, ll. 12-18 and Answer 4, citing
Sirbu, col. 5, l. 44 – col. 6, l. 37). The issue before us is whether the Appellant has
shown that the Examiner erred in rejecting claims 9, 17-25, 37-46, and 53-62 as
anticipated by Sirbu. In particular, the issue before us is whether Sirbu discloses
providing a service request and digital signature to an accounting terminal when a
disclosure request of service requests and digital signatures is received.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).
1. The Specification describes the claimed step of “providing said service
request and said digital signature to said accounting terminal when a
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disclosure request of service requests and digital signatures is received”
as follows:
Next, in a step S7, if the user 1 does not accept the
amount of the fee, processing proceeds to a step S8 and
for example, the user 1 informs the service provider 2
and the bank 3 that the user cannot accept the amount in
a predetermined period and further, the user 1 requests
the service provider 2 to disclose the service request data
and digital signature data already sent to the service
provider 2.
(Specification 6:11-17) (emphasis added.)
2. The customary definition of “request” as a noun is “1. The act of asking.
2. Something asked for.” The customary definition of “request” as a
verb is “To express a desire for; ask for …. 2. To ask (a person) to do
something.” The American Heritage Dictionary of the English Language
(4th ed. 2000), found at http://www.bartleby.com/61/93/R0169300.html.
3. Sirbu does not teach that the step of sending the countersigned EPO is
contingent on receipt of a disclosure request.
4. Rather, in Sirbu, once the merchant application software adds the
merchant’s account number and other information to the EPO to create a
countersigned EPO, the merchant application software automatically
sends the countersigned EPO to the account server 16 (Sirbu, col. 6,
ll. 12-18).
5. Although the countersigned EPO includes the EPO already received by
the merchant from the user, the EPO sent from the user does not amount
to a disclosure request, because Sirbu does not disclose that this EPO
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contains an explicit or implicit request by the user to the merchant that
asks the merchant to disclose the user’s service request and digital
signature to the account server.
6. As such, Sirbu does not anticipate claim 9 because it fails to disclose the
step of “providing said service request and said digital signature to said
accounting terminal when a disclosure request of service requests and
digital signatures is received.”
7. Similarly, Sirbu does not anticipate claim 37 because Sirbu does not
disclose any structure that performs the function of providing said service
request and said digital signature to said accounting terminal when a
disclosure request of service requests and digital signatures is received.
8. Similarly, Sirbu does not anticipate claim 53 because Sirbu does not
disclose that the service provider, i.e., the merchant, provides said service
request and said digital signature to said accounting terminal when a
disclosure request of service requests and digital signatures is received.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631
(Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).

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ANALYSIS
Independent claim 9 recites a method for providing a service to a user
comprising the step of, inter alia, “providing said service request and said digital
signature to said accounting terminal when a disclosure request of service requests
and digital signatures is received.”
The customary definition of request, as a noun, includes the act of asking
(Finding of Fact 2). As such, we interpret the claimed “disclosure request” as the
act of asking for disclosure of service requests and digital signatures. The example
provided in the Specification, as reproduced infra, is consistent with this
interpretation (Finding of Fact 1).
The Examiner relied on Sirbu’s disclosure of a merchant sending a
countersigned Electronic Payment Order (EPO) to an account server as evidence of
the claimed step of providing said service request and said digital signature to said
accounting terminal when a disclosure request of service requests and digital
signatures is received (Final Office Action 3, citing Sirbu, col. 6, ll. 12-18 and
Answer 4, citing Sirbu, col. 5, l. 44 – col. 6, l. 37). We disagree with this finding.
Sirbu does not disclose that the countersigned EPO is sent to the account
server “when a disclosure request of service requests and digital signatures is
received.” In particular, Sirbu does not teach that the step of sending the
countersigned EPO is contingent on receipt of a disclosure request (Finding of
Fact 3). Rather, in Sirbu, the merchant application software automatically sends
the countersigned EPO to the account server 16 (Finding of Fact 4). Although the
countersigned EPO includes the EPO already received by the merchant from the
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user, the EPO sent from the user does not amount to a disclosure request, because
Sirbu does not disclose that this EPO contains an explicit or implicit request by the
user to the merchant that asks the merchant to disclose the user’s service request
and digital signature to the account server (Finding of Fact 5). As such, we find
that Sirbu does not anticipate claim 9 because it fails to disclose the step of
“providing said service request and said digital signature to said accounting
terminal when a disclosure request of service requests and digital signatures is
received” (Finding of Fact 6). Accordingly, we cannot sustain the rejection of
claim 9, or any of its dependent claims 17-25.
Independent claim 37 similarly recites a system for providing a service to a
user comprising, inter alia, “means for providing said service request and said
digital signature to said accounting terminal when a disclosure request of service
requests and digital signatures is received.” For the same reasons provided supra
for claim 9, we also cannot sustain the reject of claim 37, because Sirbu does not
disclose any structure that performs the same function as recited in this element of
claim 37 (Finding of Fact 7). We likewise cannot sustain the rejection of claims
38-46, which depend from claim 37.
Independent claim 53 similarly recites a system for providing a service to a
user comprising, inter alia, a service provider that “provides said service request
and said digital signature to said accounting terminal when a disclosure request of
service requests and digital signatures is received.” For the same reasons provided
supra for claim 9, we also cannot sustain the rejection of claim 53, because Sirbu
does not disclose that the service provider, i.e., the merchant, performs the same
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function as recited in this element of claim 53 (Finding of Fact 8). We likewise
cannot sustain the rejection of claims 54-62, which depend from claim 53.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 9, 17-25, 37-46, and 53-62 as anticipated by Sirbu.

DECISION
The decision of the Examiner to reject claims 9, 17-25, 37-46, and 53-62 is
reversed.

REVERSED

hh

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