Ex Parte Celi et al

Board of Patent Appeals and Interferences

Apr 26, 2012

10324535 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH CELI, JR., THOMAS E. CREAMER, NEIL A. KATZ,
and VICTOR S. MOORE
____________

Appeal 2010-012219
Application 10/324,535
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 4, 36-41, and 44.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is directed to using automated teller machines
with wireless computing devices (Spec., para. [0001]). Claim 1, reproduced
below, is further illustrative of the claimed subject matter.
1. A method for performing a financial transaction
using a portable device and an automated teller machine, the
method comprising:
within the portable device, executing an application
configured to communicate with the automated teller machine
having a graphic symbol reader;
within the portable device, receiving a first user input
specifying transaction information comprising at least a
personal identification code for a transaction, wherein the first
user input is an audible input that the portable device converts
into a non-audible first user input specifying the transaction
information;
the portable device generating a first graphic symbol
specifying the transaction information;
displaying the first graphic symbol upon a display screen
of the portable device;
placing the first graphic symbol within a scanning zone
of the automated teller machine so that the first graphic symbol
can be read by the graphic symbol reader;
the automated teller machine deciphering the user
specified transaction information from the first graphic symbol
and processing the transaction;
the automated teller machine prompting the user for
supplemental information if further information is required for
the transaction, the prompting being provided via a display
screen or a speaker of the automated teller machine;
within the portable device, receiving a second user input
specifying the supplemental information in response to the
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prompting, wherein the second user input is an audible input
that the portable device converts into a non-audible second user
input specifying the supplemental information;
the portable device generating a second graphic symbol
specifying the supplemental information;
displaying the second graphic symbol upon the display
screen of the portable device;
placing the second graphic symbol within a scanning
zone of the automated teller machine so that the second graphic
symbol can be read by the graphic symbol reader;
the automated teller machine deciphering the user
specified supplemental information from the second graphic
symbol and processing the transaction; and
during said transaction processing, sending to the
portable device a transmission comprising promotional
information from the automated teller machine via the display
screen or the speaker of the automated teller machine, wherein
the promotional information is targeted for the user.

Claims 1, 36-41, and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Black (US 2002/0138433 A1, pub. Sep. 26, 2002) in view
of Challa (US 2003/0058261 A1, pub. Mar. 27, 2003), Fare (US 7,136,623
B2, iss. Nov. 14, 2006), and Ahuja (US 2001/0056402 A1, pub. Dec. 27,
2001); and claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Black in view of Fare and Ahuja.
We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in asserting that a combination of Black, Challa,
Fare, and Abuja renders obvious independent claims 11 and 4?

1 We choose independent claim 1 as representative of claims 1, 36, 38-41,
and 44. See 37 C.F.R. § 41.37(c)(1)(vii).
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Did the Examiner err in asserting that a combination of Black, Challa,
Fare, and Abuja renders obvious “a short range wireless transceiver,” as
recited in dependent claim 37?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 14-24
and 26-27 of the Examiner’s Answer.

ANALYSIS
Independent Claims 1 and 4
We are not persuaded the Examiner erred in asserting that a
combination of Black, Challa, Fare, and Abuja renders obvious independent
claims 1 and 4 (App. Br. 15-23). Appellants mention several disadvantages
overcome by the claimed invention (App. Br. 16-17). However, if the cited
combination of references includes every aspect set forth in the claims, then
the cited combination also overcomes those disadvantages.
Appellants assert that “in Black, the portable device is not used to
conduct a financial transaction with the ATM” (App. Br. 17-18, 21).
However, it is the combination of Black, Challa, Fare, and Abuja which is
cited for disclosing conducting a financial transaction on an ATM with a
portable device (Exam’r’s Ans. 3-7, 22-24). See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single reference
alone does not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
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show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”).
Appellants assert that “[n]one of the cited references or any
combination thereof discloses the concept of the present invention, namely
performing a financial transaction directly between a portable device and an
ATM in which user-specified transaction information is transmitted to the
ATM via a graphic symbol, which can be read by a graphic symbol reader of
the ATM, or a short range wireless communications link which can be
received by a transceiver of the ATM” (App. Br. 18). However, the
Examiner’s claim chart (Exam’r’s Ans. 14-22) and explanation (Exam’r’s
Ans. 3-7, 23-24) sets forth a proper case of prima facie obviousness with
respect to those aspects, and Appellants have only set forth the above
general conclusory statements in response. See In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“[o]nce a prima facie case of obviousness [is]
established..., the burden shift[s] to appellant to rebut it”).
Appellants assert that “[n]o promotional information, let alone
promotional information specifically targeted for the user, is mentioned
anywhere in [Fare/Abuja]” (App. Br. 18-19, 21-22). However, at least
paragraphs [0023]-[0024] of Black disclose targeted promotional
information (Exam’r’s Ans. 22). See In re Merck & Co., Inc., 800 F.2d at
1097.
Appellants assert that “the purpose of the transmission of user-
targeted promotional information to the user according to the present
invention[,] targeted marketing,” is different from the rationale set forth by
the Examiner for combining Black, Challa, Fare, and Abuja (App. Br. 19-20,

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22-23). However, the rationale for combining references does not need to
coincide with Appellants’ purposes.

Dependent Claim 37
We are persuaded the Examiner erred in asserting that a combination
of Black, Challa, Fare, and Abuja renders obvious “a short range wireless
transceiver,” as recited in dependent claim 37 (App. Br. 20-21). The
Examiner has not shown that any of the cited references specifically disclose
a short range wireless transceiver.

DECISION
The decision of the Examiner to reject claims 1, 4, 36, 38-41, and 44
is AFFIRMED.
The decision of the Examiner to reject claim 37 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).

AFFIRMED-IN-PART

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