Ex Parte Das et al

Board of Patent Appeals and Interferences

Jun 16, 2010

11107004 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PRADEEP K. DAS, 8
DAVID W. SPENCER, 9
ROBERT A. CORDERY, and 10
FREDERICK W. RYAN, JR. 11
___________ 12
13
Appeal 2009-010583 14
Application 11/107,004 15
Technology Center 3600 16
___________ 17
18
Decided: June 16, 2010 19
___________ 20
21
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 22
ANTON W. FETTING, Administrative Patent Judges. 23
FETTING, Administrative Patent Judge. 24
DECISION ON APPEAL 25
26
Appeal 2009-010583
Application 11/107,004

2
STATEMENT OF THE CASE 1
Pradeep K. Das, David W. Spencer, Robert A. Cordery, and Frederick 2
W. Ryan, Jr. (Appellants) seek review under 35 U.S.C. § 134 (2002) of a 3
final rejection of claims 1-28, the only claims pending in the application on 4
appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
SUMMARY OF DECISION1 8
We AFFIRM. 9
THE INVENTION 10
Appellants invented a method for initiating a transaction with a mobile 11
communication device through an interaction with a printed media 12
(Specification 1:12-13). 13
An understanding of the invention can be derived from a reading of 14
exemplary claims 1, 2, and 12, which are reproduced below [bracketed 15
matter and some paragraphing added]. 16
1. A method for facilitating a transaction with a business entity 17
from a printed medium using a mobile communications device, 18
the printed medium having a the barcode including direct 19
contact data for the business entity offering the transaction and 20

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed February 6, 2009) and Reply Brief (“Reply Br.,” filed April 21,
2009), and the Examiner’s Answer (“Ans.,” mailed March 30, 2009), and
Final Rejection (“Final Rej.,” mailed July 22, 2008).
Appeal 2009-010583
Application 11/107,004

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transaction data relating to the transaction whereby a user of the 1
mobile communications device need not know the identity of 2
contact information of the business entity in advance, the 3
method comprising: 4
[1] capturing a digital image of the barcode with the mobile 5
communications device; 6
[2] decoding the digital image in the mobile communications 7
device to retrieve the direct contact data for the business entity 8
offering the transaction and the transaction data; 9
[3] initiating a communication with the business entity via 10
the mobile communications device using the decoded direct 11
contact data; 12
[4] transmitting the transaction data to the business entity to 13
facilitate the transaction; and 14
[5] authenticating that the business entity associated with the 15
transaction is trustworthy by verifying a digital signature 16
associated with the transaction. 17
18
2. The method of claim 1 wherein the digital signature is 19
included in the barcode and the step of decoding the digital 20
image includes decoding the digital signature and the step of 21
authenticating includes performing the authentication of the 22
digital signature prior to initiating the communication. 23
24
12. The method of claim 1 wherein the direct contact data is a 25
web address for the entity, and the step of initiating the 26
communication comprises automatically contacting the web 27
address. 28
29
Appeal 2009-010583
Application 11/107,004

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THE REJECTIONS2 1
The Examiner relies upon the following prior art: 2
Ogasawara US 6,512,919 B2 Jan. 28, 2003
Wang et al. US 2002/0023215 A1 Feb. 21, 2002
Gordon et al. US 6,289,323 B1 Sep. 11, 2001
Attia et al. US 7,156,311 B2 Jan. 2, 2007
3
Claims 1, 3-11, 13-17, 19-23, and 25-28 stand rejected under 35 U.S.C. 4
§ 103(a) as being unpatentable over Ogasawara and Wang. 5
Claims 2 and 18 stand rejected under 35 U.S.C. § 103(a) as being 6
unpatentable over Ogasawara, Wang, and Gordon. 7
Claims 12 and 24 stand rejected under 35 U.S.C. § 103(a) as being 8
unpatentable over Ogasawara, Wang, and Attia. 9
10
ISSUES 11
The issue of whether the Examiner erred in rejecting claims 1, 3-11, 13-12
17, 19-23, and 25-28 stand rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Ogasawara and Wang turns on whether Ogasawara 14
describes limitations [2] and [3] of claim 1. 15
The issue of whether the Examiner erred in rejecting claims 2 and 18 16
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ogasawara, 17

2 The Examiner has withdrawn the previously asserted rejection of claims 1-
27 under 35 U.S.C. § 101 as being directed towards non-statutory subject
matter (Ans. 9).
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Wang, and Gordon turns on whether the Appellants’ arguments in support of 1
claims 1 and 17 are found persuasive. 2
The issue of whether the Examiner erred in rejecting claims 12 and 24 3
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ogasawara, 4
Wang, and Attia turns on whether the Attia describes the step of initiating 5
the communication comprises automatically contacting the web address. 6
7
FACTS PERTINENT TO THE ISSUES 8
The following enumerated Findings of Fact (FF) are believed to be 9
supported by a preponderance of the evidence. 10
Facts Related to Appellants’ Disclosure 11
01. In one embodiment, direct contact data is a phone number of a 12
business entity (Specification 3:13-16). In another embodiment, 13
direct contact information is a web address (Specification 3:1 – 14
4:2). 15
Facts Related to the Prior Art 16
Ogasawara 17
02. Ogasawara is directed to an electronic shopping system which 18
utilizes a program downloadable wireless video phone as a 19
purpose type dedicated terminal which enables a shopper to 20
capture, recognize, and decode captured images (Ogasawara 1:16-21
21). 22
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03. The system begins when a purchaser dials the number of a 1
server for a company from which the purchaser would like to 2
make a purchase transaction, using wireless telephone (Ogasawara 3
12:11-18). Once a connection between the wireless telephone and 4
server is established, the customer ID and customer name are 5
provided to the server and a purchase transaction program is 6
downloaded from the server to the wireless telephone (Ogasawara 7
12:24-41). The server verifies that the telephone number provided 8
is in the customer database and the customer may further be 9
required to enter an authorization number or a password 10
(Ogasawara 12:51-67). After authorization, the purchaser can use 11
the program to select items to purchase (Ogasawara 14:3-6). A 12
purchaser selects items by scanning UPC bar codes with a bar 13
code scanner or within the image field of the digital camera in the 14
wireless telephone (Ogasawara 14:6-12 and 20:41-45). Once the 15
image is captured, the program decodes the bar code image data to 16
its corresponding numeric bar code data using pattern recognition 17
software (Ogasawara 21:17-20). Once the bar code is decoded to 18
its numeric values, the bar code data is transmitted to the store’s 19
server through the wireless telephone function of the system 20
(Ogasawara 21:20-23). The program or system then returns the 21
description and price of the product to the wireless telephone 22
(Ogasawara 14:23-28). The purchaser then confirms the selected 23
items and submits a payment for the items (Ogasawara 14:29-45 24
and 21:36-38). 25
26
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Wang 1
04. Wang is directed to portable electronic authorization devices 2
which eliminate the security risks associated with approving 3
transactions between a user and an electronic transaction system 4
(Wang ¶ 0002). 5
05. Transactional authorization or approval data requires the 6
inclusion of certain pieces of identification data (Wang ¶ 0051). 7
For example, a transaction embodied in the transaction request 8
may be transmitted if an electronic signature prior to being 9
encrypted and retransmitted back to the system is included (Wang 10
¶ 0051). 11
Gordon 12
06. Gordon is directed to a method and system for paying for goods 13
and services in a manner similar to checks, credit cards, and debit 14
cards (Gordon 1:6-9). 15
07. Gordon describes the use of digital signatures in bar codes to 16
authenticate messages (Gordon 4:36-39). A party wishing to 17
make a purchase creates a value message that includes payer 18
identification, payee identification, and a value amount with an 19
appended digital signature (Gordon 2:5-8). Once the message is 20
authenticated by a postal authority, an account status is adjusted to 21
reflect successful completion of negotiating the value message 22
(Gordon 2:8-15). 23
24
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Attia 1
08. Attia is directed to a system and method for barcode scanning 2
and decoding using a mobile device (Attia 1:11-15). 3
09. Attia describes that prior art mobile devices consist of software 4
and hardware that allow a user to scan any barcode and be 5
redirected to media information (e.g. a website, product 6
description, price, etc.) about the scanned product (Attia 1:35-42). 7
Attia further describes a system and software application that 8
launches a browser after a user scans a barcode and the browser is 9
directed to a site that allows a user to make purchases (Attia 4:19-10
29). 11
ANALYSIS 12
Claims 1, 3-11, 13-17, 19-23, and 25-28 rejected under 35 U.S.C. § 13
103(a) as being unpatentable over Ogasawara and Wang 14
Appellants contend that Ogasawara fails to describe or suggest 15
limitations [2] and [3] of claim 1 and further fails to describe the purpose of 16
the preamble that a user of the mobile communications device need not 17
know the identity of contact information of the business entity in advance 18
(App. Br. 8-9). Appellants note that the Examiner has agreed that 19
Ogasawara fails to describe limitations [2] and [3] in the Final office action 20
(App. Br. 8-9 and Final Rej. 3), but the Examiner’s final position is that 21
Ogasawara does describe these limitations (Ans. 25-26). 22
We disagree with the Appellants. Limitation [2] requires decoding a 23
digital image to retrieve direct contact data for the business entity offering 24
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the transaction. Limitation [3] further requires using this decoded direct 1
contact data to initiate communication with this business entity. 2
There is no specific definition provided for the term “direct contact data” 3
in the specification, (FF 01). Furthermore, the claims do not require any 4
specific definition for the term “direct contact data” as the phrase has a clear 5
meaning. As such, claim 1 merely requires any information or data 6
reasonably pertaining to direct contact to the business entity. 7
Ogasawara describes an electronic shopping system (FF 02). A 8
purchaser contacts a store and when communication is established, a 9
transaction program is downloaded to the purchaser’s wireless telephone (FF 10
03). The user then selects items by scanning bar codes into the downloaded 11
program (FF 03). The scanned bar codes are decoded and information is 12
submitted to the system (FF 03). The transaction program or the system 13
returns information, including the product description and product price (FF 14
03). The user is prompted to confirm the purchase of these items and then 15
proceeds to provide payment for the selected items (FF 03). 16
The information decoded and submitted to the server includes both 17
direct contact information and transaction information. As discussed supra, 18
the term “direct contact information” does not require any specific 19
information. Since the term direct contact information can be broadly 20
construed, the decoded bar code information in Ogasawara that includes 21
numeric values is direct contact information since these numeric values 22
represent data to be searched directly by the server. These unique numeric 23
values are the subject of the contact between the purchaser and the system. 24
That is, Ogasawara describes decoded numeric values that are transmitted to 25
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Application 11/107,004

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the system that represent both direct contact data and transaction data. As 1
such, the Appellants’ argument is not found persuasive. 2
Appellants further argue that claim 1 requires that the consumer need not 3
know the identity of contact information of the business entity in advance, as 4
required by the preamble, and Ogasawara fails to describe this feature. We 5
also do not find this argument persuasive. We note that the phrase “need not 6
know” is a subjunctive phrase, merely phrasing the possibility of ignorance, 7
and does not require that the user actually not know the identity of the 8
business entity. Further, there are many ways of contacting an entity 9
without actually knowing the identity of the entity itself; knowing contact 10
information alone is sufficient. 11
Appellants further contend that (2) Wang fails to describe limitation [5] 12
of claim 1 (App. Br. 9-10). We disagree with the Appellants. Limitation [5] 13
requires authenticating the business entity by verifying the transaction digital 14
signature. Ogasawara describes that a user must be authenticated by 15
requiring the user to submit an authorization number and a password (FF 16
03). Wang describes that transaction approval requires that a digital 17
signature is transmitted to the receiving party and then retransmitted (FF 05). 18
That is, both parties are required to maintain and transmit a digital signature 19
that is recognized by both parties to the transaction. As such, the 20
combination of Ogasawara and Wang explicitly describe limitation [5] of 21
claim 1. 22
Claims 2 and 18 rejected under 35 U.S.C. § 103(a) as being 23
unpatentable over Ogasawara, Wang, and Gordon 24
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Appellants contend that (3) Wang and Gordon fail to describe the 1
limitation of “performing the authentication of the digital signature prior to 2
initiating the communication” as required by claim 2 and 18 (App. Br. 10). 3
We disagree with the Appellants. As discussed supra, the combination of 4
Ogasawara and Wang describe performing authentication of a digital 5
signature for a transaction. Gordon also describes the use of digital 6
signatures to authenticate information (FF 07). 7
Gordon describes the use of value messages that include payer 8
identification, payee identification, and a value amount with a digital 9
signature appended to the message (FF 07). In other words, the digital 10
signatures are embedded within the value messages. A postal authority then 11
validates the value message and then the communication of the value 12
message is completed and reflected in the account status (FF 07). That is, 13
until the value message is authenticated by the postal authority, 14
communication between the payor and payee does not occur. As such, 15
Gordon describes the use of a digital signature to authenticate prior to 16
communication as required by claims 2 and 18. 17
Appellants further contend that Ogasawara and Wang fail to describe or 18
suggested all of the limitations of claims 1 and 17 as argued supra and 19
Gordon fails to cure these deficiencies (App. Br. 10). We disagree with the 20
Appellants. The Appellants’ arguments were not found to be persuasive 21
supra and are not found to be persuasive here for the same reasons. 22
23
Claims 12 and 24 rejected under 35 U.S.C. § 103(a) as being 24
unpatentable over Ogasawara, Wang, and Attia 25
Appeal 2009-010583
Application 11/107,004

12
The Appellants contend that (4) Attia fails to describe the limitation of 1
“the direct contact data is a web address for the entity” as required by claim 2
12 and 24 (App. Br. 10-11). We disagree with the Appellants. Attia 3
describes a system where after a user scans a barcode, a browser is launched 4
and directed to a website where a user is enabled to make purchases (FF 09). 5
Attia further describes that prior art mobile devices consist of hardware and 6
software that allow a user to scan a barcode and be redirected to media 7
information (e.g. a website, product description, price, etc.). As such, Attia 8
explicitly describes a bar code consists of information that automatically 9
redirects a user to a website that allows a user to purchase the product 10
associated to the barcode. The Appellants fail to provide any further 11
rationale as to how this description from Attia is distinguished from the 12
claimed limitation of “automatically contacts a web address” and as such 13
this argument is not found persuasive. 14
The Appellants contend that Ogasawara and Wang fail to describe or 15
suggested all of the limitations of claims 1 and 17 and Attia fails to cure 16
these deficiencies (App. Br. 10). We disagree with the Appellants. The 17
Appellants’ arguments were not found to be persuasive supra and are not 18
found persuasive here for the same reasons. 19
CONCLUSIONS OF LAW 20
The Examiner did not err in rejecting claims 1, 3-11, 13-17, 19-23, and 21
25-28 rejected under 35 U.S.C. § 103(a) as being unpatentable over 22
Ogasawara and Wang. 23
The Examiner did not err in rejecting claims 2 and 18 rejected under 35 24
U.S.C. § 103(a) as being unpatentable over Ogasawara, Wang, and Gordon. 25
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The Examiner did not err in rejecting claims 12 and 24 rejected under 35 1
U.S.C. § 103(a) as being unpatentable over Ogasawara, Wang, and Attia. 2
3
DECISION 4
To summarize, our decision is as follows. 5
• The rejection of claims 1, 3-11, 13-17, 19-23, and 25-28 rejected 6
under 35 U.S.C. § 103(a) as being unpatentable over Ogasawara and 7
Wang is sustained. 8
• The rejection of claims 2 and 18 rejected under 35 U.S.C. § 103(a) as 9
being unpatentable over Ogasawara, Wang, and Gordon is sustained. 10
• The rejection of claims 12 and 24 rejected under 35 U.S.C. § 103(a) as 11
being unpatentable over Ogasawara, Wang, and Attia is sustained. 12
13
No time period for taking any subsequent action in connection with this 14
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 15
16
AFFIRMED 17
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mev 21
PITNEY BOWES INC. 22
35 WATERVIEW DRIVE 23
MSC 26-22 24
SHELTON CT 06484-3000 25