Ex Parte Hogl et al

Board of Patent Appeals and Interferences

Feb 15, 2011

10018237 (B.P.A.I. Feb. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTIAN HOGL and JOSEF GUNDEL
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Appeal 2010-001924
Application 10/018,237
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

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 2010-001924
Application 10/018,237

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-24 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a method of
transmitting a code to a user. (Spec. 1:1-2). Claim 1, reproduced below
with numbering in brackets added, is representative of the subject matter of
appeal.

1. A method comprising:
[1] receiving financial account identifier information of a user
at a code allocation unit;
[2] generating an access code for the user, the access code being
to identify the user to a business entity; and
[3] from the code allocation unit, effecting a value transfer
utilizing the financial account identifier information and the access
code, [4] the access code being reflected in an amount of value
associated with the value transfer so as to be transmitted to the user
together with a receipt for the value transfer.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Taskett WO 96/38813 Dec. 1996
Renner WO 97/10560 Mar. 1997
Appeal 2010-001924
Application 10/018,237
3

The following rejections are before us for review:
1. Claims 1-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Renner and Taskett.

THE ISSUES
With regards to claim 1, and its dependent claims, the issue turns on
whether the cited prior art of Taskett discloses claim limitation [4] identified
above. The remaining claims 12-24 turn on a similar issue.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Taskett has disclosed a refundable prepaid telephone card (Title).
FF2. Taskett at 7:13-24 discloses that upon receipt of an ID number that a
computer determines whether sufficient funds exist in the account to make
the call.
FF3. Taskett at 4:23-31 has disclosed that the card bearing the ID code and
an associated document with a replacement code may be sold together. In
an alternative embodiment both the ID code and the replacement code are
dispensed from an ATM machine or POS terminal.
FF4. Taskett at 7:13-24 and 4:23-31 does not disclose the access code
being reflected in an amount of value associated with the value transfer so as
to be transmitted to the user together with a receipt for the value transfer.

2 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 2010-001924
Application 10/018,237
4

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose claim limitation [4] cited above (Supp. Br.
15-16, Reply Br. 3-4). The Appellants argue that “‘[w]hile the ID number in
Taskett may be used to determine the balance of the associated prepaid
telephone account, an ID being “associated” with certain data is distinct
from a code “being reflected in an amount of value.”’
In contrast, the Examiner has determined that Taskett discloses the
cited claim limitation at 7:13-24 and 4:25-31 (Ans. 4, 10-11).
We agree with the Appellants. Claim limitation [4] requires:
[4] the access code being reflected in an amount of value associated
with the value transfer so as to be transmitted to the user together with
a receipt for the value transfer. (Claim 1, emphasis added).

Thus, claim 1 requires “the access code being reflected in an amount
of value associated with the value transfer”. Taskett at 7:13-24 and 4:25-31
does not reflect the access code being reflected in an amount of value
associated with the value transfer (FF4) as the claim requires.
For these reasons the rejection of claim 1 and its dependent claims is
reversed. The remaining claims contain the same limitation identified
above, or a similar claim limitation, and the rejection of these claims is not
sustained for these same reasons.

DECISION
The Examiner’s rejection of claims 1-24 is reversed.
Appeal 2010-001924
Application 10/018,237
5

REVERSED

MP

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