Ex Parte Gaillard

Board of Patent Appeals and Interferences

Oct 13, 2011

10256393 (B.P.A.I. Oct. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte JOEL GAILLARD 8
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Appeal 2010-005180 11
Application 10/256,393 12
Technology Center 3600 13
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Before HUBERT C. LORIN, ANTON W. FETTING, and 17
MEREDITH C. PETRAVICK, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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STATEMENT OF THE CASE 1
Joel Gaillard (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2
final rejection of claims 1, 3-15, 17, and 19-21, the only claims pending in 3
the application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a personal portable identification and transaction 6
control device (Specification 1:12-13). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A method for a transaction through the instrumentality of a 11
personal portable identification and transaction control device 12
(PPITCD) comprising the following steps: 13
a) transmitting the amount of the transaction to said PPITCD; 14
b) indicating the transaction amount through an interface device 15
of said PPITCD; 16
c) validating said transaction; 17
d) encoding on said PPITCD the transaction amount 18
with an electronic signature distinctive of said PPITCD; 19
e) transmitting the encoded transaction amount 20
from said PPITCD 21
to a financial institution associated to said PPITCD; 22
and 23
f) decoding the nature and the amount of the transaction 24
and 25
applying said transaction 26
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to an account associated to said PPITCD 1
at said financial institution associated to said 2
PPITCD. 3
The Examiner relies upon the following prior art: 4
Wang US 6,850,916 B1 Feb. 1, 2005
Vazvan WO 97/45814 Dec. 4, 1997
Claims 1, 3-15, 17, and 19-21 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Wang and Vazvan. 6
ISSUES 7
The issues of obviousness turn primarily on whether the Examiner 8
suggested bodily incorporation of Vazvan into Wang or vice versa, and 9
whether it was predictable that Wang’s encrypted transaction would be 10
transmitted on to a financial company that ultimately processed the funds 11
transfer for a transaction. 12
FACTS PERTINENT TO THE ISSUES 13
The following enumerated Findings of Fact (FF) are believed to be 14
supported by a preponderance of the evidence. 15
Facts Related to the Prior Art 16
Wang 17
01. Wang is directed to a portable transaction arrangement for 18
permitting a user to conduct a charge card transaction. The charge 19
card terminal is configured to communicate with a magnetic stripe 20
card or electronic smart card. The portable transaction 21
arrangement includes an emulation card having an emulation card 22
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interface that emulates an interface of the charge card. Wang 3:5-1
15. 2
02. In some cases, transaction approval data requires the inclusion of 3
certain pieces of identification data such as data representative of 4
an "electronic signature" prior to being encrypted and 5
retransmitted back to the electronic transaction system. Wang 6
FIG. 3B shows the format of representative transaction approval 7
data. Once appended, transaction approval data is then encrypted 8
prior to being retransmitted back to the electronic transaction 9
system. Wang 8:16-32. 10
Vazvan 11
03. Vazvan is directed to remote purchase and bill payment 12
transactions. Vazvan:Abstract. 13
04. Vazvan shows that one of ordinary skill would have known that 14
following a data transfer between a card reader and authorization 15
device in such a transaction, there would have been a subsequent 16
transmission of the transaction to a financial institution associated 17
with the card, to actually cause the underlying funds to be 18
transferred. Vazvan 5:10-30. 19
ANALYSIS 20
We are unpersuaded by the Appellant’s argument that the art fails to 21
describe or suggest step (d) of encoding on said PPITCD the transaction 22
amount with an electronic signature distinctive of said PPITCD. App. Br. 9-23
16. See FF 01-02. 24
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The Appellant's contention regarding Vazvan not transmitting encoded 1
data does not persuade us of error on the part of the Examiner because the 2
Appellant responds to the rejection by attacking the references separately, 3
even though the rejection is based on the combined teachings of the 4
references. Nonobviousness cannot be established by attacking the 5
references individually when the rejection is predicated upon a combination 6
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 7
(Fed. Cir. 1986). 8
We are further unpersuaded by the Appellant’s argument that “the 9
complex encryption techniques disclosed in Wang would effectively 10
eliminate the convenient and free exchange of information and telecash as 11
disclosed in Vazvan.” App. Br. 13. The Examiner applied Vazvan only for 12
its description showing that one of ordinary skill would have known that 13
following Wang’s transmission between the card reader and authorization 14
device, there would have been a subsequent transmission of the transaction 15
to a financial institution associated with Wang’s card or device, to actually 16
cause the underlying funds to be transferred. 17
"The test for obviousness is not whether the features of a secondary 18
reference may be bodily incorporated into the structure of the primary 19
reference.... Rather, the test is what the combined teachings of those 20
references would have suggested to those of ordinary skill in the art." In re 21
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d 22
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the 23
references be physically combinable to render obvious the invention under 24
review."); and In re Nievelt, 482 F.2d 965 (CCPA 1973) ("Combining the 25
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teachings of references does not involve an ability to combine their specific 1
structures."). 2
The Appellant’s arguments regarding change of operation and 3
unsatisfactory for intended purpose are similarly unpersuasive as, again, the 4
Examiner does not find any bodily incorporation of Vazvan into Wang or 5
vice versa. 6
To the extent the Appellant is arguing that Wang only describes 7
encrypting the transaction for the communication between Wang’s card 8
reader and electronic authorization device, the Examiner’s findings 9
essentially include the ubiquity of such encoding for security in 10
transmissions to financial companies. If nothing else, Wang demonstrates 11
the need for such encryption prior to transmission, and the transmission to a 12
financial company would if anything, require more security than a local 13
transmission. Since Wang already encrypted the transaction, one of ordinary 14
skill would have seen the efficiency in simply retransmitting that already 15
encrypted transaction to the financial company. 16
Alternatively, the card reader in Wang, which would necessarily connect 17
to the financial company to ensure immediate recordation of the transaction, 18
is accordingly itself a component of the financial company’s network and so 19
transmission from Wang’s authorization device to the card reader is a 20
transmission to the financial company. 21
As to separately argued claim 17, although the Examiner nominally 22
draws more in from Vazvan than he did in claim 1, the use of Vazvan is 23
again simply to show the types of hardware that would be used in any 24
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transaction validation system. Claims 17 ultimately is a broader form of 1
claim 1 and is therefore described by the art for the same reasons. 2
CONCLUSIONS OF LAW 3
The rejection of claims 1, 3-15, 17, and 19-21 under 35 U.S.C. § 103(a) 4
as unpatentable over Wang and Vazvan is proper. 5
DECISION 6
The rejection of claims 1, 3-15, 17, and 19-21 is affirmed. 7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2007). 10
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AFFIRMED 12
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