09365426 (B.P.A.I. Dec. 22, 2010)

Ex Parte HARTMAIER

Board of Patent Appeals and InterferencesDec 22, 2010

09365426 (B.P.A.I. Dec. 22, 2010)

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. 09/365,426 08/02/1999 PETER HARTMAIER OPWR.092PA 1765 95119 7590 12/22/2010 Wilson Ham & Holman 1811 Santa Rita Road, Suite 130 Pleasanton, CA 94566 EXAMINER FELTEN, DANIEL S ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 12/22/2010 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 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte PETER HARTMAIER 8 ___________ 9 10 Appeal 2009-011489 11 Application 09/365,426 12 Technology Center 3600 13 ___________ 14 15 Before JAMES D. THOMAS, ANTON W. FETTING, and 16 JOSEPH A. FISCHETTI, Administrative Patent Judges. 17 FETTING, Administrative Patent Judge. 18 DECISION ON APPEAL1 19 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011489 Application 09/365,426 2 STATEMENT OF THE CASE2 1 2 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed January 3, 2006) and Reply Brief (“Reply Br.,” filed June 1, 2006), and the Examiner’s Answer (“Ans.,” mailed March 23, 2006). Peter Hartmaier (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2 of a final rejection of claims 12-14, 23, 29-32, and 34-40. These claims, 3 along with claim 15 which is allowed, are the only claims pending in the 4 application on appeal. We have jurisdiction over the appeal pursuant to 5 35 U.S.C. § 6(b) (2002). 6 The Appellant invented a way of replenishing prepaid accounts 7 (Specification 1: Technical Field). An understanding of the invention can be 8 derived from a reading of exemplary claim 29, which is reproduced below 9 [bracketed matter and some paragraphing added]. 10 29. A method of providing prepaid account services to 11 consumers comprising the steps of: 12 [1] assigning prepaid accounts to said consumers; 13 [2] associating said prepaid accounts with wireless telephones; 14 [3] communicating with a banking network regarding consumer 15 replenishment transactions, 16 [4] wherein said communicating with said banking network 17 step further comprises the steps of: 18 [5] receiving transaction messages following individual 19 replenishment transactions by said consumers, 20 Appeal 2009-011489 Application 09/365,426 3 [6] wherein said receiving transaction messages step 1 further comprises: 2 [7] verifying location identification information 3 associated with received transaction messages, 4 wherein said location identification information 5 identifies authorized replenishment locations; 6 [8] receiving a reconciliation message 7 summarizing substantially all individual 8 transactions that occurred during a certain period; 9 [9] reconciling said individual transactions; and 10 [10] sending a message indicating the 11 disbursement of funds associated with said 12 replenishment transactions; 13 [11] communicating with a prepaid engine regarding said 14 consumer replenishment transactions; and 15 [12] sending a disbursement message to said banking 16 network, 17 [13] wherein said disbursement message comprises 18 [14] information regarding the distribution of 19 funds associated with said replenishment 20 transactions. 21 The Examiner relies upon the following prior art: 22 Taskett WO 97/04579 Feb. 6, 1997 Taskett WO 98/25237 Jun. 11, 1998 Hanson WO 98/34393 Aug. 6, 1998 Appeal 2009-011489 Application 09/365,426 4 Claims 29-32, 34, and 12-14 stand rejected under 35 U.S.C. § 112, 1 second paragraph, as failing to particularly point out and distinctly claim the 2 invention.3 3 Claims 12-14, 23, 29-32, and 34-40 stand rejected under 35 U.S.C. 4 § 103(a) as unpatentable over Taskett '237, Taskett '579, and Hanson. 5 ISSUES 6 The issue of indefiniteness turns on whether the phrase “substantially 7 all” referring to discrete rather than continuous quantities would be 8 understood by one of ordinary skill. The issue of obviousness turns on 9 whether the art describes replenishing from a designated account and 10 sending a replenishment message to a banking network. 11 FACTS PERTINENT TO THE ISSUES 12 Facts Related to the Prior Art 13 Taskett ‘237 14 01. Taskett ‘237 is directed to a way of adding funds to a prepaid 15 account. Tasket ‘237: Abstract. 16 02. Taskett ‘237 describes various techniques for sending a 17 message requesting replenishment to a banking network. 18 Tasket ‘237 14:12-22. 19 3 Note that the Examiner improperly included claim 33, cancelled by the amendment filed September 30, 2002, in the rejection. Ans. 3. Appeal 2009-011489 Application 09/365,426 5 03. 1 Taskett ‘579 2 04. Taskett ‘579 is directed to generating and transmitting summary 3 transaction data. Taskett ‘579: Abstract. 4 Hanson 5 05. Hanson is directed to a prepaid telecommunications system. 6 Hanson: Abstract. 7 06. Hanson states that the lack of verifying such location 8 identification information in prior art systems was a problem to be 9 solved. Hanson: 2:13-24. 10 07. Hanson states that “cash, bank drafts, credit cards, and 11 telephone company billing may be used to replenish the prepay 12 wireless account.” Hanson: 8:5-23. 13 ANALYSIS 14 Claims 29-32, 34, and 12-14 rejected under 35 U.S.C. § 112, second 15 paragraph, as failing to particularly point out and distinctly claim the 16 invention. 17 Claim 29 presents an example of what the Examiner found indefinite in 18 receiving a reconciliation message summarizing substantially all individual 19 transactions that occurred during a certain period. The Examiner’s point 20 was that in a discrete system, such as with computer data, a quantity is either 21 all or not all, so one of ordinary skill would not understand whether 22 “substantially all” included quantities that were not all. Ans. 3 and 8. 23 Appeal 2009-011489 Application 09/365,426 6 The Appellant argued that the word “substantially” has been found to not 1 necessarily render a claim indefinite, citing In re Nehrenberg, 280 F.2d 161, 2 164 (CCPA 1960) and In re Mattison, 509 F.2d 563, 565 (CCPA 1975). 3 Indefiniteness was not at issue in Nehrenberg and the CCPA found that the 4 phrase “to substantially increase the efficiency of the compound” could be 5 understood because the claim 6 further requires that the substituent Ep has an electron 7 withdrawing capacity such that a phenol containing only the 8 substituent Ep has an acid ionization constant Ka of at least 50 9 10-10. The claims must be read in light of the specification. In 10 re Cohn, 438 F.2d 989, 58 CCPA 996 (1971); In re Moore, 11 supra. The specification teaches how the electron-withdrawing 12 substituents must be selected and positioned on the ring in order 13 to provide the desired increase in extraction efficiency at the 14 low pH ranges. 15 In re Mattison, 509 F.2d at 565. In the present application, the phrase 16 “substantially all” modifies a number of transactions, which is a discrete 17 quantity, as contrasted with a continuous efficiency quantity in Mattison. 18 Further, the instant Specification, far from providing guidelines by which to 19 recognize the scope of the phrase “substantially all,” does not use the word 20 “substantially”, but rather states that “bank 102 sends a reconciliation file 21 summarizing all transactions.” Specification 16:3-4. Thus the claim is 22 indefinite both for making a discrete variable ambiguous as to value and for 23 being in conflict with the Specification. 24 Claims 12-14, 23, 29-32, and 34-40 rejected under 35 U.S.C. § 103(a) as 25 unpatentable over Taskett '237, Taskett '579, and Hanson. 26 With respect to claim 23, which is similar to claim 29, but also recites 27 “processing replenishment transactions by causing the transfer of said 28 Appeal 2009-011489 Application 09/365,426 7 replenishment amounts from a designated source account to said prepaid 1 accounts…” The Appellant argues the art fails to show a designated source 2 account. Appeal Br. 12. We find this argument puzzling as the Appellant 3 recites the passage from Hanson, found on page 8 in lines 5-7, that “cash, 4 bank drafts, credit cards, and telephone company billing may be used to 5 replenish the prepay wireless account.” FF 07. Bank drafts and credit cards 6 all designate specific source accounts on their face. 7 As to independent claims 29, 31, 32 and 34, the Appellant argues that 8 the art fails to show location identification information that identifies 9 authorized replenishment locations, or sending a disbursement message to a 10 bank. 11 The Examiner found that the location identification information was a 12 predictable extension to Hanson, which stated that the lack of verifying 13 customer identification information in prior art systems was a problem to be 14 solved. FF 06. We agree with the Examiner that stating a known problem 15 in the context of the claimed subject matter, where that problem is readily 16 solved by one of ordinary skill, makes that solution predictable. Extending 17 the solution to variants whose only difference is in data that are also 18 appropriate for similar treatment would be predictable variants to the 19 solution. As the need for data verification is shown by Hanson, extending 20 this to verifying the location where replenishment would occur would be 21 seen as a predictable security measure to insure against giving information to 22 false sites. 23 As to sending a disbursement message, Taskett ‘237 describes a caller 24 sending such messages. FF 02. To the extent the Appellant argues the 25 Appeal 2009-011489 Application 09/365,426 8 recipient of the message is not a bank (Appeal Br. 13 and Reply Br. 1-2), 1 claims 29-32 send the disbursement message to a banking network, not a 2 bank per se. Claim 34 does refer to a bank rather than a banking network, 3 but the banking network is clearly a tool used by the bank, and since the 4 bank is responsible for the replenishment, the message recipient is within the 5 scope of the bank. 6 Claim 30 recites verifying that permanent account numbers have been 7 activated. The Examiner makes no finding that the art describes this or that 8 this would be predictable to one of ordinary skill. Thus, the Examiner failed 9 to present a prima facie case as to claim 30. 10 CONCLUSIONS OF LAW 11 Rejecting claims 29-32, 34, and 12-14 under 35 U.S.C. § 112, second 12 paragraph, as failing to particularly point out and distinctly claim the 13 invention is not in error. 14 Rejecting claims 12-14, 23, 29, 31, 32, and 34-40 under 35 U.S.C. 15 § 103(a) as unpatentable over Taskett '237, Taskett '579, and Hanson is not 16 in error. 17 Rejecting claim 30 under 35 U.S.C. § 103(a) as unpatentable over 18 Taskett '237, Taskett '579, and Hanson is in error. 19 DECISION 20 To summarize, our decision is as follows. 21 • The rejection of claims 29-32, 34, and 12-14 under 35 U.S.C. § 112, 22 second paragraph, as failing to particularly point out and distinctly 23 claim the invention is sustained. 24 Appeal 2009-011489 Application 09/365,426 9 • The rejection of claims 12-14, 23, 29, 31, 32, and 34-40 under 35 1 U.S.C. § 103(a) as unpatentable over Taskett '237, Taskett '579, and 2 Hanson is sustained. 3 • The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable 4 over Taskett '237, Taskett '579, and Hanson is not sustained. 5 No time period for taking any subsequent action in connection with this 6 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 7 § 1.136(a)(1)(iv) (2007). 8 9 AFFIRMED 10 11 12 13 mev 14 15 Address 16 WILSON HAM & HOLMAN 17 1811 SANTA RITA ROAD, SUITE 130 18 PLEASANTON, CA 94566 19