Ex Parte Berstis

Board of Patent Appeals and Interferences

Sep 27, 2006

09466438 (B.P.A.I. Sep. 27, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte VIKTORS BERSTIS
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Appeal No. 2006-1818
Application No. 09/466,438
Technology Center 3600
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ON BRIEF
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Before OWENS, CRAWFORD, and BAHR, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
The examiner has finally rejected claims 1 to 6, 8 to 10, 13 to 23 and 25,
which are all of the claims pending in this application. Claims 7, 11, 12 and 24
have been cancelled.
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Application No. 09/466,438
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The appellant's invention relates to a system and method for automatically
authorizing a remote point of purchase action at a facility which permits such
action. The system prompts a user with additional security-related questions when
the user selects responses that deviate from the user's typical selections
(specification, p. 1). A copy of the claims under appeal is set forth in the appendix
to the appellant's brief.
The prior art
The prior art references of record relied upon by the examiner in rejecting
the appealed claims are:
Penzias 5,311,594 May 10, 1994
Kanevsky et al. (Kanevsky) 5,774,525 Jun. 30, 1998
Findley 6,108,642 Aug. 22, 2000
(Filed Feb. 02, 1998)
The rejections
Claims 1 to 4, 6, 8, 9, 13 to 21, 23 and 25 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Findley in view of Kanevsky.
Claims 5, 10 and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Findley in view of Kanevsky and Penzias.
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Rather than reiterate the conflicting viewpoints advanced by the examiner
and the appellant regarding the above-noted rejections, we make reference to the
answer (mailed March 9, 2004) for the examiner's complete reasoning in support
of the rejections, and to the brief (filed December 15, 2003) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration
to the appellant's specification and claims, to the applied prior art references, and
to the respective positions articulated by the appellant and the examiner.
Appellant's invention is a method for automatically authorizing a remote
point of purchase action at a facility including the initial step of storing selections
of goods and services made by an authorized user during a previous transaction
into a user profile (specification at page 9). This user profile in a fuel pump
environment includes the type of fuel usually purchased by the user, whether or
not the user usually requests a receipt, whether the user purchases a car wash and
the type of car wash (specification at page 10). After the user profile is retrieved,
the method compares whether the current purchase matches the user profile
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Application No. 09/466,438
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(specification at page 10). If there is an inconsistency between the user profile and
the current purchase, the user is required to answer a security question.
The examiner relies on Findley for disclosing the invention as claimed except
that the examiner recognizes that the Findley system does not require the user to
answer a security question. The examiner relies on Kanevsky for this teaching.
The examiner also recognizes that Findley does not describe requiring the user to
answer this question if the current purchase is inconsistent with the user profile.
The examiner states:
. . . Examiner takes Official Notice that a plurality [of] conditions are
old and well known as criteria for making determinations of fraud.
These include but are not limited to the two embodiments of Findley
(i.e. current merchant versus past merchant, and quantity of items
purchased) as well as a comparison between a current item purchased
versus past items purchased [answer at page 6].
In our view, the examiner has improperly utilized the concept of Official
Notice to supply a critical limitation of appellant's claimed invention that is missing
in the prior art relied upon by the examiner. As set forth in In re Ahlert, 424 F.2d
1088, 1091, 165 USPQ 418, 420 (CCPA 1970): the Patent Office ... may take
notice of facts beyond the record which, while not generally notorious, are capable
of such instant and unquestionable demonstration as to defy dispute. In re Knapp
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Application No. 09/466,438
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Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961). This rule must be
construed narrowly and must regard facts found in such manner with an eye toward
narrowing the scope of any conclusions to be drawn therefrom. Allegations
concerning specific "knowledge" of the prior art, which might be peculiar to a
particular art should be supported and the appellant given the opportunity to make
a challenge. See In re Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (1966).
Typically, it is found necessary to take notice of facts which may be used to
supplement or clarify the teaching of a reference disclosure, perhaps to justify or
explain a particular inference to be drawn from the reference teaching. The facts so
noticed serve to "fill in the gaps" which might exist in the evidentiary showing
made by the examiner to support a particular ground for rejection. Facts judicially
noticed should not comprise the principal evidence upon which a rejection was
based.
While a person of ordinary skill in the art may possess the requisite
knowledge and ability to modify the method of Findley, the modification is not
obvious unless
the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d
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900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Obviousness can only be
established by combining or modifying the teachings of the prior art to produce the
claimed invention where there are some teachings, suggestions, or motivations to
do so found either in the references themselves or in the knowledge generally
available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 1075,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In view of the foregoing, we will not sustain the examiner’s rejection of
claim 1 and claims 2 to 4, 6, and 8 dependent thereon. We will also not sustain
this rejection as to claims 9, 14 and 18 and claims 13, 15 to 17, 19 to 21, 23 and 25
which depend therefrom because each of claims 9, 14 and 18 require that a user be
asked a security question if the options goods and/or services by the user is
inconsistent with the user profile. We will likewise not sustain the rejection of
claims 5, 10 and 22 which are dependent from claims 1, 9 and 18 respectively
under 35 U.S.C. § 103 as being unpatentable over Findley, Kanevsky and Penzias
because the examiner relies on Official Notice in this rejection for the limitation of
asking a security question if the option for goods and/or services by the user is
inconsistent with the user profile.
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REMAND
This case is remanded to the examiner to determine whether prior art is
available that would have fairly suggested to one of ordinary skill in the art to
modify the Findley method to include the step of requiring the user to answer a
security-related question if the options for goods and/or services by the user are
inconsistent with the user's prestored selections of goods and/or services.
This remand to the examiner pursuant to 37 CFR § 41.50(a)(1) (effective
September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat.
Office 21 (September 7, 2004)) is made for further consideration of a rejection.
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Accordingly, 37 CFR § 41.50(a)(2) applies if a supplemental examiner's answer is
written in response to this remand by the Board.
REVERSED/REMANDED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
MEC/vsh
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Application No. 09/466,438
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