Ex Parte Baron

Patent Trial and Appeal Board

Jul 20, 2013

12196005 (P.T.A.B. Jul. 20, 2013)

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
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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
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Figure 4
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6
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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
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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
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Application 12/196,005

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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
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Application 12/196,005

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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
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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

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