Ex Parte Barber

Board of Patent Appeals and Interferences

Mar 17, 2011

09741207 (B.P.A.I. Mar. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY P. BARBER
___________

Appeal 2009-009377
Application 09/741,207
Technology Center 3600
____________

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

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009377
Application 09/741,207

2
STATEMENT OF THE CASE
Timothy P. Barber (Appellant) seeks our review under 35 U.S.C. §
134 (2010) of the rejection of claims 1-8. We have jurisdiction under 35
U.S.C. § 6(b) (2010).

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
This invention is a method of “conveying via an e-mail a monetary
value.” Specification 1:5-7.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of providing for a money transfer
over a network, comprising steps in which:
a) a stamp issuer provides to a sender a
stamp having a face value and a lifespan both
indicated on the stamp, the stamp being a string
that is a concatenation of two or more fields
including the face value and the lifespan, with at
least one of the fields calculated according to a
prescription involving a hashing or encryption of a
concatenation of others of the fields or of some
other field not part of the stamp;
b) the sender affixes the stamp to an e-mail
and sends the e-mail to a recipient; and

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 28, 2005) and Reply Brief (“Reply Br.,” filed Apr. 10, 2009),
and the Examiner’s Answer (“Answer,” mailed Jan. 9, 2007).

Appeal 2009-009377
Application 09/741,207

3
c) the recipient of the e-mail redeems the
stamp for the face value by presenting the stamp to
a predetermined entity;
wherein the predetermined entity provides
the face value to the recipient only if the stamp is
presented to the predetermined entity within the
lifespan indicated on the stamp.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kuzma
Sundsted
Messner
US 5,771,289
US 5,999,967
US 6,370,514 B1
Jun. 23, 1998
Dec. 7, 1999
Apr. 9, 2002
The Examiner states, “[a]n artisan would have also recognized the fact
that a ‘voucher’ may provide a period of time (lifespan) through which the
voucher is valid.” Answer 4 [Hereinafter “Official Notice”]

The following rejections are before us for review:
1. Claim 1 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Kuzma and Messner.
2. Claims 2-8 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kuzma, Messner, and Sundsted.

ISSUE
The issue is whether claim 1 is unpatentable over Kuzma, Messner,
and Official Notice. Specifically, the issue is whether the Examiner’s
proposed modification of Kuzma with Messner renders Kuzma
Appeal 2009-009377
Application 09/741,207

4
unsatisfactory for its intended purpose. The rejection of claims 2-8 as
unpatentable over Kuzma, Messner, Official Notice, and Sundsted also turns
on this issue.

ANALYSIS
The rejection of claim 1 under 35 U.S.C. §103(a) as being unpatentable over
Kuzma, Messner, and Official Notice.
In the rejection, the Examiner concludes:
It would have been obvious for an artisan of
ordinary skill in the art to substitute the voucher
feature of Messner for the stamp feature of Kuzma
because an artisan would have found the voucher
and the stamp art recognized equivalents to make
payments for electronic goods and or services.
Answer 4 (emphasis added). The Appellant argues that substituting the
voucher of Messner for the stamp of Kuzma renders Kuzma unsatisfactory
for its intended purpose. Reply Br. 5-7.
Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air, Inc. v. Denso Mfg.
Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984).
We find that substituting the voucher of Messner for the stamp of
Kuzma would render Kuzma unsatisfactory for its intended purpose.
Kuzma’s intended purpose is to pay for the transmission of electronic data,
and Kuzma accomplishes this by attaching electronic stamps to messages.
See Kuzma col. 2, ll. 27-36. Modifying Kuzma to remove the stamp from
the message and replace it with a voucher, which Messner describes as a gift
Appeal 2009-009377
Application 09/741,207

5
certificate or coupon for the recipient of the message (see Messner col. 2, ll.
61-64), would not allow for payment for the transmission of the electronic
data.
Further, we note that Messner with the Official Notice alone does not
teach the claimed stamp. The Examiner relied upon Kuzma to teach that the
claimed stamp, which is presented by the recipient for redemption, is a string
that is a concatenation of two or more fields that include a face value and a
lifespan, with at least one of the fields calculated according to a prescription
involving a hashing or encryption of a concatenation of others of the fields
or of some other field not part of the stamp. Answer 3. Neither Messner nor
Official Notice teaches this limitation.
Accordingly, we find that the Appellant has overcome the rejection of
claim 1 under 35 U.S.C. § 103(a) as being obvious over Kuzma and
Messner.

The rejection of claims 2-8 under 35 U.S.C. §103(a) as being unpatentable
over Kuzma, Messner, Official Notice and Sundsted
This rejection is directed to claims dependent on claim 1, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejection of claims 2-8 over the cited prior art. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.").

Appeal 2009-009377
Application 09/741,207

6
DECISION
The decision of the Examiner to reject claims 1-8 is reversed.
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) (2010).

REVERSED

mls

FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041