Ex parte Byrley

Board of Patent Appeals and Interferences

Jan 30, 1998

07933960 (B.P.A.I. Jan. 30, 1998)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte FRANK D. BYRLEY
_______________
Appeal No. 95-0456
Application 07/933,9601
_______________
ON BRIEF
_______________
Before KRASS, BARRETT, and LEE, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 6, 12 and 13, all of the claims pending in
the application.
The invention pertains to an apparatus and method for
electronic marketing, best understood from an analysis of
representative independent claim 1, reproduced as follows:

1 Application for patent filed August 21, 1992. According
to appellant, this application is a continuation of
Application 07/488,144, filed March 5, 1990, now abandoned.
Appeal No. 95-0456
Application No. 07/933,960
2
1. A system for processing selected transactions,
comprising in combination:
a master accounting station including recording means for
recording and updating information with respect to specific
accounts;
a plurality of account processing stations;
a plurality of magnetic stripe cards, wherein one or more
cards represents an account;
a plurality of magnetic stripe readers capable of reading
information encoded on the plurality of magnetic stripe cards,
with at least one of the magnetic stripe readers operatively
connected to each of the plurality of account processing
stations;
a plurality of magnetic stripe encoders capable of
encoding information onto the plurality of magnetic stripe
cards, with at least one of the magnetic stripe encoders
operatively connected to each of the plurality of account
processing stations;
wherein each of the plurality of account processing
stations receives information from its respective at least one
reader and sends processed information to its respective at
least one encoder; and
an automatic communication system operable for the
automatic transmission of information from the plurality of
account processing stations to the master accounting station,
wherein an account processing station transmits information
read from a magnetic stripe card to the master accounting
station if that information meets a first predetermined
condition regarding transactions since transaction information
was last transferred to the master accounting station, and
wherein any transaction is processed entirely off-line from
the master accounting station if that information does not
meet the first predetermined condition, and the result of the
transaction is encoded onto the magnetic stripe card by the
associated at least one magnetic stripe encoder.
The examiner relies on the following references:
Appeal No. 95-0456
Application No. 07/933,960
3
Braun 3,594,727 Jul. 20, 1971
Takesako 4,641,239 Feb. 3, 1987
Hudson et al. 4,650,978 Mar. 17, 1987
(Hudson)
Bergeron et al. 4,882,473 Nov. 21, 1989
(Bergeron)
Claims 1 through 6, 12 and 13 stand rejected under
35 U.S.C. ' 103 as unpatentable over either one of Braun or
Takesako in view of Hudson in further view of Bergeron.
Reference is made to the briefs and answers for the
respective positions of appellant and the examiner.
OPINION
We will not sustain the rejection of claims 1 through 6,
12 and 13 under 35 U.S.C. ' 103 because the examiner has
failed to establish a prima facie case of obviousness with
regard to the instant claimed subject matter.
In short, the examiner has not articulated a cogent
rationale as to how or why the applied references would have
been combined in any particular manner so as to arrive at the
instant claimed subject matter. In the principal answer, the
examiner never even makes an explicit statement as to the
specific ground of rejection, referring, instead, via a
handwritten note, at line 5 of page 2, to “BRIEF, P.3.”
Additionally, the examiner never fully explains the rejection.
Appeal No. 95-0456
Application No. 07/933,960
4
Rather than specifically applying the teachings of the
references to the claim language, the examiner merely refers,
generally, to ATM operations and on-line operations in various
sections of Takesako and to “the obviousness of explicit
client account card data requesting ‘on-line’ operation”
[principal answer, page 2] at column 9 of Bergeron. There is
no explanation as to how or why these alleged teachings of the
two references are to be combined. Additionally, although
Braun and Hudson form part of the rejection, and Braun is
applied as a primary reference, alternatively to Takesako, the
examiner never specifically applies the teachings of these
references to the claim language nor does the examiner
indicate how or why these teachings would be combined with the
teachings of Takesako and/or Bergeron to arrive at the instant
claimed subject matter. In the principal answer, at page 3,
the examiner’s sole reliance on Braun and Hudson is for the
proposition that “[d]ebit ATM card concepts are notoriously
old, in any case, as shown by Braun and Hudson.” Reference to
the final rejection is no help in ascertaining the true nature
of the rejection as it merely refers to things “discussed
previously” [page 2, final rejection]. Further reference back
to the office action of February 3, 1993 merely references
Appeal No. 95-0456
Application No. 07/933,960
5
“prior art as set forth previously further in view of
Bergeron” [page 2]. References back to office actions of May
21, 1992 and September 18, 1991 are similarly useless in
ascertaining a full explanation of the examiner’s application
of the references to the claim language. Then, when one goes
all the way back to the office action of February 11, 1991, it
is discovered that the rejection of claims 1 through 12
therein is based on a different statutory section, i.e., 35
U.S.C. ' 102.
Accordingly, the examiner never explains his position
with regard to how the cited references are specifically
applied to the claim language. Normally, we would summarily
remand the application to the examiner for correction and
explanation. However, in the instant case, for the reasons
infra, and for reasons of expediency, we will merely reverse
the examiner’s rejection under 35 U.S.C. ' 103 because there
is clearly no case of prima facie obviousness established with
regard to claimed subject matter in view of the applied
references.
Independent claims 1, 12 and 13 all require automatic
communication wherein the communication is from the account
processing stations to the master accounting station if
Appeal No. 95-0456
Application No. 07/933,960
6
information on the magnetic stripe card “meets a first
predetermined condition” regarding “transactions since
transaction information was last transferred to the master
accounting station” and wherein the transaction is processed
off-line from the master accounting station if that
information does not meet the first predetermined condition,
the result of the transaction being encoded onto the magnetic
stripe card.
Clearly, though Braun does disclose a card reader, Braun
does not disclose an encoder for encoding information onto a
plurality of magnetic stripe cards. Takesako does disclose
both reading to a card and encoding information on a card but
there is nothing suggested therein regarding the claimed
operation of the automatic communication for transmitting
information. The examiner points to “lines 55 of col. 4 and
continuing in col. 5” [principal answer, page 2] of Takesako
and contends that the predetermined condition “could be merely
the read card information being collated and cooperating with
a ‘transfer request’ as opposed to ‘passbook’.” Collating and
reading card information, in our view, falls far short of a
“predetermined condition,” as claimed. However, even if we
were to consider that a debit card system, similar to that
Appeal No. 95-0456
Application No. 07/933,960
7
disclosed by Hudson, may be suggestive of a “predetermined
condition” in the sense that if the transaction is for less
than the amount of money in the account indicated by the debit
card, then the transaction is permitted to take place and if
the account balance is less than the amount of the
transaction, then the transaction does not take place, the
“predetermined condition” being the account balance on the
debit card, this still does not meet or make obvious the
limitations appearing in the claims. Clearly, the
“predetermined condition” in the prior art debit card scenario
has nothing to do with “transactions since transaction
information was last transferred to the master accounting
station” and there is nothing in such a prior art debit card
system to suggest the claimed alternative on-line or off-line
transactions, the choice being dependent on the data content
of the magnetic stripe card. While Bergeron teaches an on-
line wagering system, there is nothing therein to suggest this
alternative on-line or off-line transaction dependency on data
content. While appellant strenuously argues [principal brief,
page 5] this non-obvious point of distinction, with which we
agree, the examiner never comes to grips with this claim
limitation.
Appeal No. 95-0456
Application No. 07/933,960
8
The examiner’s decision rejecting claims 1 through 6, 12
and 13 under 35 U.S.C. ' 103 is reversed.
REVERSED
Errol A. Krass )
Administrative Patent Judge )
)
)
)
Lee E. Barrett ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jameson Lee )
Administrative Patent Judge )
Appeal No. 95-0456
Application No. 07/933,960
9
Timmons & Kelly
The White House on Turtle Creek
2401 Turtle Creek Boulevard
Dallas, Texas 75219-4760