Ex Parte BaronDownload PDFPatent Trial and Appeal BoardJul 20, 201312196005 (P.T.A.B. Jul. 20, 2013) Copy Citation 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. 12/196,005 08/21/2008 Daniel Jonathan Baron 40000247-0001-002 9532 26263 7590 07/22/2013 DENTONS US LLP P.O. BOX 061080 CHICAGO, IL 60606-1080 EXAMINER MERCHANT, SHAHID R ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 07/22/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL JONATHAN BARON ____________ Appeal 2012-002475 Application 12/196,005 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL An oral hearing was held on June 6, 2013. STATEMENT OF THE CASE Daniel Jonathan Baron (Appellant) seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 4, 15, 17, 18, and 79. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2012-002475 Application 12/196,005 2 SUMMARY OF DECISION We AFFIRM.1 THE INVENTION Claim 79, reproduced below, is illustrative of the subject matter on appeal. 79. A method, comprising: upon request of a user who will become a patron at a venue that agrees to use a venue-specific credit account for charges associated with transactions by the user at the venue, establishing a payment guarantee account, wherein said request is made by way of one of a computer device, a personal digital assistant, or a mobile phone, and the payment guarantee account is established by a server-hosted application accessed by said computer device, said personal digital assistant, or said mobile phone via one or more networks; while establishing the payment guarantee account, the server-hosted application storing user information in association with the payment guarantee account, said user information including payment guarantee information and user identification information, said payment guarantee information identifying a non venue-specific account to be used for settling charges to the venue-specific credit account, and said user identification information associated with a physical user identification device to be presented at the venue to identify the user, 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed May 20, 2011) and the Examiner’s Answer (“Ans.,” mailed Aug. 19, 2011). Appeal 2012-002475 Application 12/196,005 3 subsequent to establishment of the payment guarantee account and upon said server-hosted application receiving a request to activate the venue-specific credit account, said server-hosted application sending authorization for activation of the venue-specific credit account, wherein said request to activate includes the user identification information associated with the physical user identification device, said request to activate is received by the server-hosted application from a point of sale system associated with the venue, and said server- hosted application sends the authorization for activation of the venue-specific credit account to the point of sale system: in response to at least one of instructions indicating dosing of transactions to the venue-specific credit account or a request for settlement of charges made to the venue-specific credit account, the server-hosted application using the payment guarantee account to effect a settlement of the charges made to the venue-specific credit account using the payment guarantee information, the settlement automatically including gratuity amounts (i) specified by the user as part of or subsequent to the instructions indicating the closing of transactions, or, (ii) in the event no user-specified instructions with respect to the gratuity amounts are received by the server-hosted application as part of or subsequent to the instructions indicating the closing of transactions, then as determined in accordance with at least one pre-established gratuity payment preference. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Boushy Elston Fujimoto Showghi US 5,761,647 US 2002/0143655 A1 US 2004/0139017 A1 US 6,920,431 B2 Jun. 2, 1998 Oct. 3, 2002 Jul. 15, 2004 Jul. 19, 2005 Appeal 2012-002475 Application 12/196,005 4 The following rejections are before us for review: 1. Claims 4, 15, 17, and 79 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujimoto, Boushy, and Elston. 2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujimoto, Boushy, Elston, and Showghi. ISSUE Is the Examiner’s decision to reject the claims under § 103(a) over the cited prior art combinations in error? 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 The rejection of claims 4, 15, 17, and 79 under 35 U.S.C. § 103(a) as being unpatentable over Fujimoto, Boushy, and Elston. The Appellant argued claims 4, 15, 17, and 79 as a group (Br. 6-9). We select sole independent claim 79 as the representative claim for this group, and the remaining claims 4, 15, and 17 stand or fall with claim 79. 37 C.F.R. § 41.37(c)(1)(vii) (2011). The claim limitation at issue is: “said server-hosted application sends the authorization for activation of the venue-specific credit account to the point of sale system” (claim 79). Appeal 2012-002475 Application 12/196,005 5 This limitation is said, by the Examiner, to be disclosed at column 10, lines 18-64 of Boushy. See Ans. 7. The disclosure at column 10, lines 18-64 of Boushy describes a method of tracking customer activity and accumulating activity points across casino properties. Referring to Figure 4 (reproduced below), the method comprises a triggering action via, e.g., inserting an ID card into a slot machine. “The customer ID number (or name) is read 420 by CMS [(centralized management system)] 234, which determines 430 whether it has already activated the associated customer account.” Col. 10, ll. 24-29. If it has not been activated by the CMS, “the customer account is activated 434 in CMS 234, a request for summary data from the customer's account is forwarded 438 to CPDB [(central patron database)] 220, and the activated account is updated 442 with the summary data from CPDB 250.” Col. 10, ll. 32-36. Figure 4 (of Boushy) is reproduced below: App App eal 2012-0 lication 12 Figure 4 tracking accordan The App [t]he sy player's when ce where a such a s premise skill in t 02475 /196,005 (of Boush customer ce with th ellant argu stem desc activities rtain goal uthorizatio cheme is n set forth he art wou y) depicts activity ac e present i es that ribed in so that cr s have be n is need either tau in the Fin ld not read 6 “a flow ch ross all aff nvention” Boushy s edits or r en achiev ed at a p ght nor su al Office Boushy a art repres iliated cas (col. 3, ll. imply kee ewards ca ed This is oint of sa ggested. C Action, o s suggesti enting a m ino proper 42-44). ps track n be prov not a sy le system, ontrary t ne of ord ng the nee ethod for ties in of a ided stem and o the inary d Appeal 2012-002475 Application 12/196,005 7 for sending authorization to a point of sale system because the Boushy system does not operate to authorize purchases or to approve gambling credit accounts at particular slot machines. Br. 9. In response the Examiner reasons: It is evident that [in practicing the Boushy method] when the account is activated at a central server (CMS), the user of the account would be able to utilize the account for future transactions like gaming activity, wagering or other new activities at the current casino. In this case, it is understood that when the CMS activates the customer account, the customer's ID card is also authorized for future transactions on the newly established customer account since the customer's ID card is one way of making transactions on the newly established customer account. It would be understood by one skilled in the art that activities like betting or wagering (see column 10, lines 52-54) can only be done if the venue-specific credit account has been authorized for activation at a point of sale system (i.e. slot machine). In other words, step 444 in Figure 4 implies that the venue-specific credit account has been authorized for activation at the slot machine and new activity data like betting and wagering will be updated on the customer's account. For example, if the CMS does not activate the customer account, then the customer would not be able to use the ID card at a slot machine. However, if the customer account is activated, and the ID card is used at a slot machine, it is implied that the customer account has been authorized for activation.... It would not make any sense according to Boushy’s invention in general to activate an account and not tell the customer. Ans. 11-12. After careful review of the evidence, we find that, on balance, the evidence in the record weighs in favor of the Examiner’s position. Appeal 2012-002475 Application 12/196,005 8 The claimed method expressly requires a server-hosted application send a signal to a point-of sale system. As the Examiner well explains, Boushy provides for an interaction between a slot machine and a CMS and a CPDB such that, when an ID card inserted in the slot machine and it is determined not to be activated, three steps occur: (a) the account is updated in CMS; (b) a request for summary data is forwarded to CPDB; and (c) the activated account is updated with the summary data. All these steps necessarily involve the sending of signals between a server and a slot machine. After the steps have occurred, in the future when the previously- unactivated ID card is inserted into the slot machine, the ID card will be recognized as associated with an active account and play can occur. The Appellant argues that, notwithstanding Boushy may show the sending of signals with respect to point-tracking, “[t]his is not a system where authorization is needed at a point of sale system” (Br. 9). As to “authorization,” we agree with the Examiner that an ID card used in a property’s slot machine is necessarily authorized. Certainly when the ID card is inserted in the slot machine and the account is not recognized as having been activated, the 3-step activation process (see supra) yields a result that implicitly “authorizes” the ID card for use in the slot machine. Cf. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (It is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.) The question of obviousness does not turn on whether Boushy shows a server-hosted application sending authorization to a machine because, in Appeal 2012-002475 Application 12/196,005 9 our view, Boushy discloses it implicitly. The question of obviousness turns on whether it would have been obvious to do so in the context of activating a venue-specific credit account at a point-of-sale system. In that regard, there is no dispute that Boushy does not expressly disclose “venue-specific credit account[s]” and a “point-of-sale system.” However, the rejection is not over Boushy alone. The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In that regard, Fujimoto, for example, discloses a House Card with which one can make purchases. As the Examiner details (Ans. 6), Fujimoto (see paras. [0052]-[0055]) describes a system whereby a venue-specific credit account (i.e., the “House Card”) can be read at a card reader and “[a]s a result, the guest may utilize various services” para. [0056]. The card reader serves, in part, as a “point- of-sale system.” The Examiner found that Fujimoto disclosed “venue- specific credit accounts” and a “point-of-sale system,” but conceded that Fujimoto did not disclose a server-hosted application sending authorization to a machine, relying on Boushy instead. Ans. 6-7. However, the combination of Fujimoto and Boushy does teach all the elements. We agree with the Examiner that based on the evidence as a whole, on balance, it would have been obvious to modify Fujimoto to include a server-hosted application such that authorization for activation of the venue-specific credit account (e.g., Fujimoto’s House Card) is sent to the point of sale system (e.g., Fujimoto’s card reader). The combination would yield, as expected, a method to authorize a venue-specific credit account at a point-of-sale system as claimed. “The combination of familiar elements according to known Appeal 2012-002475 Application 12/196,005 10 methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007). While Boushy is not expressly directed to credit accounts at a point-of-sale system but rather to point accumulation, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR at 417. For the foregoing reasons, we do not find the Appellant’s argument persuasive as to error in the rejection. Accordingly, the rejection is sustained. The rejection of claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Fujimoto, Boushy, Elston, and Showghi. The Appellant challenges the rejection of dependent claim 18 for the reasons challenging the rejection of claim 79. Those reasons having been addressed and not found persuasive as to error in the rejection of claim 79 and claims 4, 15, and 17 dependent thereon, we find the same as to the rejection of claim 18, and accordingly the rejection of claim 18 is sustained. CONCLUSIONS The rejections of claims 4, 15, 17, and 79 under 35 U.S.C. § 103(a) as being unpatentable over Fujimoto, Boushy, and Elston, and claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Fujimoto, Boushy, Elston, and Showghi, are affirmed. Appeal 2012-002475 Application 12/196,005 11 DECISION The decision of the Examiner to reject claims 4, 15, 17, 18, and 79 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 hh Copy with citationCopy as parenthetical citation