Ex Parte Forsyth

Patent Trial and Appeal Board

Sep 21, 2016

13413200 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/413,200 03/06/2012
107681 7590 09/23/2016
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
FIRST NAMED INVENTOR
Gordon Forsyth
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
11-564 5406
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/23/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GORDON FORSYTH
Appeal2014-006017
Application 13/413,2001
Technology Center 3600
Before PHILLIP J. HOFFMANN, SHEILA F. McSHANE, and
MATTHEWS. MEYERS, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's
final decision to reject claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, the real party in interest is NCR Corporation. Appeal
Brief filed November 26, 2013, hereafter "App. Br.," 1.
Appeal2014-006017
Application 13/413,200
BACKGROUND
The invention relates to a financial services system for use with a remote
teller system. Specification, hereafter "Spec.," Abstract, 1 :2-3. In the invention,
the financial services center has a remote teller station, and an automated teller
machine that can respond to the remote teller station and a transaction host. Id.
1:5---6, 1:12-14, 3:12-16.
Representative claims 1 and 8 are reproduced from pages 15 and 16 of the
Claims Appendix of the Appeal Brief (Claims App'x) as follows, with emphasis
added to relevant claim limitations:
1. A financial services center for use with a remote teller station, the
financial services center comprising:
a teller interface for connecting to the remote teller station; and
an automated teller machine operable to dispense first funds in
response to first commands received from the remote teller station during a
teller assisted transaction and to dispense second funds in response to
second commands received from a transaction host during a self-service
trans action;
wherein the automated teller machine is further operable to transmit a
transaction update to the transaction host indicating that the first funds have
been dispensed during the teller assisted transaction.
8. A method of operating an automated teller machine, the method
compnsmg:
receiving by the automated teller machine from a first transaction
authorization system a request to dispense funds;
dispensing by the automated teller machine funds to a customer in
response to the received request;
preparing by the automated teller machine a transaction update
comprising information about the funds dispense request received from the
first transaction authorization system; and
transmitting by the automated teller machine the transaction update to
a second transaction authorization system, which is different from the first
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Application 13/413,200
authorization system, to provide the second transaction authorization system
with information about all funds dispensed by the automated teller machine.
The Examiner rejects claims 1-13 under 35 U.S.C. § 103(a) as unpatentable
over Pranger2 and Jacobs3. Final Action mailed June 26, 2013, hereafter "Final
Act.," 3-8; Examiner's Answer mailed February 13, 2014, hereinafter "Ans.," 2.
DISCUSSION
The Appellant generally argues the rejection of the claims separately, and
we will address the claims in groupings based on common issues argued as below.
See App. Br. 7-13.
Claim 1-7, 13
The Appellant argues that the rejection of independent claim 1 is not
supported by the prior art in that Pranger fails to disclose "the personal teller
machines complete self-service transactions or communicate with a transaction
host supporting self-service transactions," as all the transactions disclosed by
Pranger involve remote tellers at the call center. App. Br. 7. The Appellant alleges
that "Pranger does not appear to even address self-service transactions" and does
not disclose "transactions that do not involve a teller, and no communication with a
transaction host separate from this teller system." Id. at 8.
Upon consideration of the evidence on this record in light of the arguments
advanced by the Appellant, we find that the Appellant has identified reversible
error in the Examiner's determination that independent claim 1 is obvious. We add
the following for emphasis.
The Examiner relies only upon Pranger for the teaching of the claim 1
limitation of "an automated teller machine operable to dispense first funds ...
during a teller assisted transaction and to dispense second funds ... received from
2 US Patent 7,814,016 B2, issued October 12, 2010.
3 US Publication 2003/0046230 Al, published March 6, 2003.
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Appeal2014-006017
Application 13/413,200
a transaction host during a self-service transaction." Final Act. 3--4. Pranger refers
to personal teller machines ("PTM"s ), and the Examiner states in a conclusory
manner that that "PTM 120 and 124 are within the scope of automated teller
machine." Id. at 3 (referring to Fig. 1 of Pranger). In the Answer, the Examiner
fails to address the Appellant's argument concerning the lack of disclosure in
Pranger of self-service transactions. See Ans. 2--4. Although Pranger mentions
automated teller machines ("ATMs"), it describes them by noting their limitation is
that they "do not address the desire of many customers to have a personal/human
relationship with their financial institution." Pranger 1 :32-34. Pranger does not
disclose a PTM as a type of ATM, nor as a modification of an ATM. More
importantly, the Examiner does not identify any portion of Pranger that describes a
self-service transaction-instead Pranger's descriptions of embodiments are all
directed to teller-assisted transactions only.
Claim 13, which depends from claim 8, also requires authorization of self-
service transactions at the automated teller machine, and for similar reasons to
those discussed for claim 1, we determine that Pranger' s teachings are deficient.
We therefore cannot sustain the rejection of independent claim 1, and claims
2-7 that depend from it, as well as claim 13, because Pranger fails to disclose the
claim limitation directed to a self-service transaction.
Claims 8, 9, 10, 12
For claim 8, the Appellant argues that Pranger does not disclose different
first and second transaction authorization systems, and Jacobs fails to disclose
"that the automated teller machine prepares and transmits a transaction update to a
second transaction authorization system, or that the transaction update includes
information about all funds dispensed by the automated teller machine." App. Br.
10-11. The Appellant also alleges that the Examiner employs impermissible
hindsight in combining the references. Id. at 12-13.
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Appeal2014-006017
Application 13/413,200
We are not persuaded by the Appellant's arguments as to independent claim
8. The Appellant conflates the arguments directed to Pranger's disclosure of a
single remote teller with a different issue, that is, the disclosure of transaction
updates to authorization systems, and also argues the references separately where
the rejections are based on combinations of references. See In re Keller, 642 F.2d
413, 426 (CCPA 1981). The Examiner relies upon Jacobs for its disclosures
relating to transaction updating and authorization systems. See Final Act. 6-7.
Jacobs discloses, inter alia, receiving a request from an ATM for dispensing funds,
authorization of the same, updating the transaction in the local cache and sending
the transaction update to different servers for subsequent authorizations in multiple
systems. See Jacobs i-fi-133, 35-36, 41.
Jacobs' teachings also allow for transaction updating before, during, or after
the steps of dispensing funds, as recited in claim 9. See Jacobs i-fi-f 10, 33, 35, 48.
Additionally, we also find no reversible error with the Examiner's finding that the
use of different communications channels for the command from the first
authorization system and transm1ss10n of the transaction update to a second
transaction authorization system, as recited in claim 10, is a minor difference and
can be considered a design choice. Final Action 7-8; see, also, In re Rice, 341
F.2d 309, 314 (CCPA 1965). As to claim 12, we find no reversible error with the
Examiner's finding that Jacobs would allow transaction updating information
about multiple funds dispense requests-repeated updating based on on-going
transaction requests is taught. Final Action, 8; see, e.g., Jacobs i133, 35.
Turning to the issue of the rationale to combine, in KSR, the Supreme Court
stated "[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We find no error with the
Examiner's determination that it would have been obvious to one of skill in the art
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Application 13/413,200
to include Jacob's ability to update transaction data in the financial remote host
system of Pranger because each element would have performed the same function
as it did separately, and one of skill would have recognized that the results of the
combination were predictable. Final Act. 4.
We therefore sustain the rejections of claims 8, 9, 10, and 12.
Claim 11
The Examiner finds that Pranger discloses transaction update comprising an
existing defined message in a message protocol. Final Act. 4 (citing Pranger 5:3-
11). We find the Appellant's argument that the prior art fails to disclose this
teaching to be persuasive because we do not find a disclosure of a defined message
in either Pranger or Jacobs. Ans. 10-11.
We therefore cannot sustain the rejection of claim 11.
SUMMARY
The rejection of claims 1-7, 11, and 13 under 35 U.S.C. § 103(a) is reversed.
The rejection of claims 8, 9, 10, and 12 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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