Ex Parte Gatto et al

Board of Patent Appeals and Interferences

Jan 26, 2009

09862036 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEAN-MARIE GATTO, THIERRY BRUNET DE COURSSOU,
and PIERRE-JEAN BENEY
____________

Appeal 2008-3099
Application 09/862,036
Technology Center 2100
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Decided: January 26, 2009
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Before HOWARD B. BLANKENSHIP, THU A. DANG, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3 and 5-31. We have jurisdiction under 35 U.S.C. §
6(b).
We reverse.

Invention
Appellants’ invention relates to a public access kiosk for conducting
trusted lightweight e-commerce transactions. A method of carrying out an
online transaction between an electronic kiosk and a remote server coupled
to a network includes initiating a transaction at the kiosk (See Figs. 6, 7, 8,
10 and 11). A copy of the transaction is stored in a non-volatile memory
within the kiosk (Fig. 13, S133; Fig. 15, S152; Spec. 24:13-14). The
transaction is sent to the remote server under a control of the kiosk (Fig. 14,
S142; Spec. 25:1-3). A provisional acknowledgment of the transaction is
generated from the copy of the transaction stored in the non-volatile memory
when a confirmed acknowledgment is not received from the remote server
within a predetermined period of time (Spec. 16:14-22).

Representative Claims
1. An electronic kiosk comprising:
a processor for controlling the kiosk;
a network interface to interface with a computer network;
a user interface enabling user interaction with the processor and
initiation of a transaction with a remote server coupled to the computer
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network, the transaction including a plurality of execution sequences and
associated plurality of critical states, and
a non-volatile cache memory configured to selectively store a context
of the transaction, the context of the transaction including all information
that is necessary for the processor to resume execution of the transaction at a
beginning of an interrupted one of the plurality of execution sequences;
a context data save engine controlled by the processor for selectively
storing the context of the transaction to the non-volatile cache memory at
each of the plurality of critical states, and
a context data recovery engine controlled by the processor for
retrieving the stored context from the non-volatile cache memory to enable
the processor to resume and to complete execution of the transaction from
the beginning of the interrupted execution sequence.

17. A method of carrying out an online transaction between an
electronic kiosk and a remote server, each of the kiosk and the remote server
being coupled to a network, the method comprising the steps of:
initiating a transaction at the kiosk;
storing a copy of the transaction in a non-volatile memory within the
kiosk;
sending the transaction to the remote server under a control of the
kiosk, and
generating a provisional acknowledgment of the transaction from the
copy of the transaction stored in the non-volatile memory when a confirmed
acknowledgment is not received from the remote server within a
predetermined period of time.
Appeal 2008-3099
Application 09/862,036

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Prior Art
The Examiner relies on the following references as evidence of
unpatentability.
Hillson 6,324,528 B1 Nov. 27, 2001
Korman 6,318,536 B1 Nov. 20, 2001

Examiner’s Rejections
Claims 1-3 and 5-31 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Hillson and Korman.

ISSUES
Because claims 1 and 17 are the only independent claims, the appeal
turns on the following issues:
(1) Have Appellants shown that the Examiner erred by finding that
the combination of Hillson and Korman teaches a context data save engine
and a context data recovery engine as recited in claim 1?
(2) Have Appellants shown that the Examiner erred by finding that
the combination of Hillson and Korman teaches generating a provisional
acknowledgement of the transaction from the copy of the transaction stored
in the non-volatile memory when a confirmed acknowledgement is not
received from the remote server within a predetermined period of time as
recited in claim 17?

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FINDINGS OF FACT
1. The Examiner finds that Hillson does not teach a context data
save engine controlled by the processor for selectively storing the context of
a transaction (Ans. 5).
2. The Examiner finds that Hillson does not teach a context data
recovery engine to enable the processor to resume and complete execution of
the transaction (Ans. 5).
3. Korman discloses a host computer that monitors individual
kiosks by receiving diagnostic and maintenance information from the kiosks
(col. 10, ll. 45-50).
4. Korman discloses a method of making a payment. If the
payment is not validated, the user can try to make the payment again (col.
12, ll. 35-39).
5. Korman discloses that after a user deposits coins into a kiosk,
the kiosk prints a receipt redeemable for cash (col. 11, ll. 39-41).
6. Korman discloses that a user can use a credit card as a method
of additional payment. A remote terminal is contacted to verify the credit
card. If verified, a ticked is purchased and a receipt is issued (col. 12, ll. 26-
34).

PRINCIPLES OF LAW
Prima Facie Case of Unpatentability
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
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presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).

ANALYSIS
I. Section 103 rejection of claim 1(claims 2, 3, and 5-16 dependent)
Claim 1 recites a “context data save engine controlled by the
processor for selectively storing the context of the transaction to the non-
volatile cache memory at each of the plurality of critical states.” The
Examiner relies on Korman to teach this claimed element (Ans. 6).
However, the section of Korman relied on by the Examiner merely discloses
that a host computer monitors individual kiosks by receiving diagnostic and
maintenance information from the kiosks (FF 3). We agree with Appellants
that receiving diagnostic and maintenance information from kiosks does not
teach or suggest the “context data save engine controlled by the processor
for selectively storing the context of the transaction to the non-volatile cache
memory at each of the plurality of critical states” as recited in claim 1.
Claim 1 also recites a “context data recovery engine controlled by the
processor for retrieving the stored context from the non-volatile cache
memory to enable the processor to resume and to complete execution of the
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transaction from the beginning of the interrupted execution sequence.” The
section of Korman relied on by the Examiner (Ans. 6) to teach this element
merely discloses that if a payment is not validated, the user can try to make
the payment again (FF 4). We agree with Appellants that repeatedly trying
to make a payment does not teach or suggest the “context data recovery
engine controlled by the processor for retrieving the stored context from the
non-volatile cache memory to enable the processor to resume and to
complete execution of the transaction from the beginning of the interrupted
execution sequence” as recited in claim 1.
Appellants have thus demonstrated error in the Examiner’s prima
facie case for obviousness of the subject matter of claim 1.

II. Section 103 rejection of claim 17 (claims 18-31 dependent)
Claim 17 recites “generating a provisional acknowledgement of the
transaction from the copy of the transaction stored in the non-volatile
memory when a confirmed acknowledgement is not received from the
remote server within a predetermined period of time.” The Examiner relies
on Korman to teach this element (Ans. 11). However, the sections of
Korman that the Examiner relies on merely teach printing a receipt (FF 5-6).
We agree with Appellants that printing a receipt does not teach or suggest
“generating a provisional acknowledgement of the transaction from the copy
of the transaction stored in the non-volatile memory when a confirmed
acknowledgement is not received from the remote server within a
predetermined period of time” as recited in claim 17.
Appellants have thus demonstrated error in the Examiner’s prima
facie case for obviousness of the subject matter of claim 17.
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CONCLUSIONS OF LAW
(1) Appellants have shown that the Examiner erred by finding that
the combination of Hillson and Korman teaches a context data save engine
and a context data recovery engine as recited in claim 1.
(2) Appellants have shown that the Examiner erred by finding that
the combination of Hillson and Korman teaches generating a provisional
acknowledgement of the transaction from the copy of the transaction stored
in the non-volatile memory when a confirmed acknowledgement is not
received from the remote server within a predetermined period of time as
recited in claim 17.

DECISION
The Examiner’s § 103(a) rejection of claims 1-3 and 5-31 over
Hillson and Korman is reversed.

REVERSED

msc

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