Ex Parte Enright et al

Board of Patent Appeals and Interferences

Dec 6, 2007

10603266 (B.P.A.I. Dec. 6, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFERY M. ENRIGHT, KEVIN F. MARTIN,
BRAD STEPHENSON, ROY HATHAWAY,
TOM KEHNER, CHRISTOPHER J. KNOUFF,
KENNETH C. VARN, JEFFREY R. THOMAS,
JAY PAUL DRUMMOND, JOHN KORTIS,
DAVID A. CRANE, EVAN F. GOLDRING,
ROBERT NOVITSKEY, MICHAEL RUSSELL,
MICHAEL MOTT, CHRIS DIVITA,
AND DOUG WILLIAMS
____________________

Appeal 2007-0069
Application 10/603,266
Technology Center 2600
____________________

Decided: December 6, 2007
____________________

Before KENNETH W. HAIRSTON, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants have requested a rehearing of our decision dated May 3,
2007, wherein we affirmed the obviousness rejection of claims 1 and 68 to
89 under 35 U.S.C. § 103.
Appeal 2007-0069
Application 10/603,266

Appellants present a number of legal and factual issues, which we
have considered. We will address the legal issues and then the factual ones.
Legal Issues
Appellants first express concern over the legal standard for review in
view of the decision in KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727 (2007).
(Reh’g 3.) We have reviewed the detailed rejections that the Appellants
have received, especially in the rejection of August 17, 2005 and in the
Examiner’s Answer of June 19, 2006, and find a detailed application of the
cited art references to the claimed subject matter, on a claim-by-claim basis.
We do not find error in this regard.
Appellants also expressed concern over a believed misapprehension
by the Board of the burden of proof (Reh’g 15). They believed that the
Board based its decision on Appellants’ arguments, and not a review of the
Examiner’s rejections. A review of the Decision indicates that a careful
review of the rejections of the claims was performed. We found that the
Examiner made a prima facie case for the rejection of the claims in the
application. Case law indicates that Appellants have the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness” (emphasis omitted))
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). We do not
find error in the Board’s review of the Examiner’s rejections, except as will
be noted in this response.
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Appeal 2007-0069
Application 10/603,266

Factual Issues
Appellants wrote:

The Board’s [sic] relies on Gustin for teaching ‘verifying
signature…over networks’ and ‘an ATM machine with scanned
images of submitted checks … plus connections to remote terminals
for transferring the image data.’ The Board’s reliance is without
basis. Gustin does not teach or suggest using a network to verify a
check signature, as relied upon by the Board.

(Reh’g 5, middle).

The passages quoted in the Appellants’ text above are taken from
page 7, Findings of Fact (FF) 5, of the Board’s Decision, which expressed
the justification for combining the two references, Gustin and Anderson, by
showing that they were addressing the same field of endeavor. The full
statement in the Board Decision was, “As the reference Gustin teaches
using TIFF images of checks and verifying signature and transaction data
over networks (col. 13), and as Anderson addresses the same field of
endeavor . . . , we find the rejection based on the two references to be
appropriate for rendering the claims obvious (emphasis added).”
On careful review of Gustin, we find that we have slightly misstated
the text of that reference (See col. 13, l. 44). Gustin confirms rather than
verifies the signature forwarded to the bank. On reconsideration, the quoted
sentence from the Board Decision should have read, “As the reference
Gustin teaches using TIFF images of checks and confirming signature and
transaction data over networks (col. 13), and as Anderson addresses the
same field of endeavor …” (emphasis added). We thus agree with
Appellants that the sentence was in error, but also find that the thrust of the
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Appeal 2007-0069
Application 10/603,266

sentence still holds true, that the references are properly combined in the
rejection. (See KSR Int’l v. Teleflex Inc. cited above.)
Additionally, we amend the Decision by omitting the words “image
data” from the Analysis section on page 10, middle, as Gustin teaches
scanning an image, but only transmitting the transactional data. The sentence
now reads “Gustin discloses an ATM machine with scanned images of
submitted checks and other standard ATM features, plus connection to
remote terminals for transferring signature and transactional data.”
However, the thrust of the paragraph remains intact.
Appellants further contend that the Board erred in its interpretation of
Gustin (Reh’g 6, middle). Appellants indicate:
Gustin’s ATM communication is limited to an ATM
host. Both Gustin and Anderson use a proprietary bank
network for their ATM to ATM host communication. There
isn’t any prior art teaching or suggestion of record of using a
markup language protocol to communicate between an ATM
and its host.

We find this assertion to be in error. We turn to Anderson, and note
on Col. 7, line 30+, specific mention of ATMs being connected to user’s
banks. In col. 32, ll. 57 to 67, we see disclosed the teaching of ATM
machines communicating by SGML standards with HTTP servers across the
Internet. We find this sufficient teaching to render Appellants’ claims of
Board error not convincing. The specific arguments Appellants mention of
“clearing” checks is not relevant to this teaching, or reflected in the claim
limitations.
Appellants contend that the application of Gustin’s and Anderson’s
teachings have not been correctly documented (Reh’g 11, middle). We have
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Appeal 2007-0069
Application 10/603,266

reviewed the Examiner’s and the Board’s decisions, and find a statement of
the teachings of the prior art, and the application of the prior art to the
claimed subject matter. The resolving of the level of ordinary skill in the art
was expressed in the reasons for the rejections, and the maintenance of the
rejection. We do not find error in that process.
We do find that claim 73 did not receive individual attention in the
Opinion, though it was included in the Decision (Reh’g 12). Claim 73 adds
the limitation that the ATM dispenses cash under computer control. We thus
amend the Decision by noting that both Anderson and Gustin include in their
ATM disclosures the indication that the ATM dispenses cash, as is their
well-known function (Gustin, col. 1. l. 9; Anderson, col. 22, bottom). It
would be obvious that this feature be included in the prior art teachings as
used in the rejection of claim 1.
We have reviewed the other contentions of the Appellants but do not
find error in our affirmance of the rejections of the Examiner.
DECISION
The Request for Rehearing is granted with regard to reconsidering the
issues raised by the Appellants. The wording of the Opinion is modified as
indicated in various paragraphs above. However, the Request is denied with
respect to altering the affirmance of the rejections of the Examiner.

REHEARING - DENIED, BUT DECISION AMENDED

clj
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Appeal 2007-0069
Application 10/603,266

RALPH E. JOCKE
WALKER & JOCKE, P.A.
231 SOUTH BROADWAY
MEDINA, OH 44256
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