Ex Parte Freeny

Patent Trials and Appeals Board

Jun 16, 2014

11018176 - (D) (P.T.A.B. Jun. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/018,176 12/21/2004 Charles C. Freeny JR. 2551.202 7156
30589 7590 06/17/2014
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
06/17/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLES C. FREENY, JR.
____________

Appeal 2012-002082
Application 11/018,176
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 28, and 29. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF THE DECISION
We REVERSE.
THE INVENTION
The Appellant’s claimed invention relates to a proximity service
provider system (PSPS) that allows users to access proximity services (e.g.,
toll gates, gas pumps, kiosks, pay phones, vending machines) and owners of
proximity service systems to get paid without having to have separate
Appeal 2012-002082
Application 11/018,176
2

communication networks (Spec. [0003]). Claim 1, reproduced below with
the numbering in brackets added, is representative of the subject matter on
appeal.

1. A method for providing a predetermined service, comprising the steps
of:
[1] receiving a request for a predetermined service and a cyber
card code by a proximity service system;
[2] locally approving the cyber card code by the proximity service
system utilizing a cipher algorithm;
[3] providing, by the proximity service system, a predetermined
service in response to approving the cyber card code; and
[4] outputting information to a proximity service provider
computer system indicating usage of the proximity service system.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Maes US 6,016,476 Jan. 18, 2000
Withrow US 6,116,505 Sep.12, 2000

The following rejection is before us for review:
1. Claims 1, 28, and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Withrow and Maes.
FINDINGS OF FACT
We find that the following findings cited in the Analysis section
below are supported at least by a preponderance of the evidence.1

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2012-002082
Application 11/018,176
3

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose claim limitation [2] (App. Br. 4-5; Reply
Br. 5-10).
In contrast, the Examiner has determined that the cited claim
limitation [2] is found in Maes at column 11, lines 9-40 and column 13, lines
19-39 (Ans. 6, 8).
We agree with the Appellant. Claim limitations [2], [3], and [4]
require:
[2] locally approving the cyber card code by the proximity service
system utilizing a cipher algorithm;
[3] providing, by the proximity service system, a predetermined
service in response to approving the cyber card code; and
[4] outputting information to a proximity service provider computer
system indicating usage of the proximity service system. (Claim 1,
emphasis added).

Thus, claim limitation [2] requires that the proximity service system locally
approve the cyber card code utilizing a cipher algorithm. Claim limitation
[3] provides the proximity service in response to local approval and claim
limitation [4] outputs information to a proximity service provider computer
system that indicates usage of the proximity service system.
Here, the citations to Maes at column 11, lines 9-40 and column 13,
lines 19-39 fail to specifically disclose claim limitation [2]. Maes at column
11, lines 9-40 describes locally determining whether a digital certificate is
still valid, but this is only a portion of the approval process. Maes at column
11, lines 9-40 relates to a portion of the security process performed after a
biometric verification and prior to accessing credit card information stored
Appeal 2012-002082
Application 11/018,176
4

in Maes’ portable information and transaction processing device (col. 2:23-
59 and col. 11:9-40). As shown for example in Fig. 5, in Mayes the
approval process is completed by sending the information to the financial
institution (step 220) and this step is not performed locally. Maes at column
13, lines 19-39 further describes this additional level of security for user
verification, but is also not related to locally approving a cyber code by the
proximity service system for providing a proximity service as the claim
requires.
Apparently recognizing this deficiency, the Examiner argues in the
Examiner’s Answer that the cited limitation [2] is also found in Withrow at
column 10, line 58 to column 11, line 4 (Ans. 7-8). However, Withrow at
column 10, line 58 to column 11, line 4 fails to specifically disclose cited
limitation [2]. While Withrow at column 10, lines 61-62 does describe that
control of Withrow’s system may be distributed in varying degrees
throughout its various systems, Withrow clearly discloses its fuel dispenser,
relies on remote systems for credit approval (see e.g., col. 7:50-52, col. 9:26-
30, col. 9:67-10:20, col. 11:28-29, col. 12:2-7, col. 12:25-40). That is,
Withrow fails to disclose providing a predetermined service in response to
locally approving a cyber card code by the proximity service system, as the
claim requires.
The Examiner has also asserted that the Specification does not provide
a lexicographic definition for the term “locally,” and as such, “the
authentication process can be performed at any machine along the network,
such as the dispenser” in Withrow (Ans. 8-9). However, claim limitation [2]
recites “locally approving the cyber card code by the proximity service
Appeal 2012-002082
Application 11/018,176
5

system utilizing a cipher algorithm” and Appellant’s Specification at
paragraph [0025] describes “authoriz[ing] services locally at the service
location (or proximity service system) with out [sic] having to get remote
authorization each time a service or product is delivered” (emphasis added),
which reasonably limits the local approval to being performed at the
proximity service system, and explicitly excludes any form of remote
authorization. However, even if we were to agree with the Examiner that the
term “locally” is broad enough to encompass the entire fueling and retail
network disclosed in Withrow, i.e., consider Withrow’s dispenser control
system 80 which is in communication with central control system 50 (col.
7:50-52) as one local system, Withrow at column 9, line 67 to column 10,
line 4 still discloses that its central control system contacts a remote host to
obtain approval or authorization, and as such, cannot reasonably be relied on
to address claim limitation [2].
For these reasons the rejection of claim 1 and its dependent claims 28
and 29 is not sustained.

DECISION
The Examiner’s rejection of claims 1, 28, and 29 is reversed.

REVERSED

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