Ex Parte Jarman et al

Patent Trials and Appeals Board

Sep 26, 2013

09862917 - (D) (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL JARMAN and GAVIN HOWARD
____________________

Appeal 2011-005078
Application 09/862,917
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005078
Application 09/862,917

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-21, 23-26, 28, 37-39, 41-43, and 45-
48. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We affirm-in-part.

BACKGROUND
Appellants’ invention is directed to “a utility metering system, which
incorporates a transaction authorisation system.” (Spec. 1:5-7).
Claims 1 and 45, reproduced below, are representative of the
invention on appeal:
1. A financial transaction authorization system comprising:
A. a financial institution which processes credit/charge
card charge requests,
B. a utility meter provided at a meter location separate
and spaced from the financial institution, the utility meter
having an associated meter location identifier unique to the
meter location, and
C. a user interface unit separate and spaced from the
financial institution, the user interface unit being adapted to
process a submitted credit/charge card charge authorization,
wherein the utility meter is arranged:
a. to communicate with the user interface unit,
b. to obtain the card charge authorization therefrom, and
c. to transmit a credit/charge card charge request to the financial
institution based on the card charge authorization and meter
location identifier, the card charge request including:
(1) data identifying a credit/charge card account, and
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(2) data verifying that the credit/charge card
corresponding to the credit/charge card account is physically
present at the location of the user interface unit,
to obtain authorization of the card charge from the financial
institution, wherein the financial institution processes the card
charge request from the utility meter regardless of whether the
card charge request relates to any utility usage measurements
made by the utility meter.
45. A method of processing credit/charge card payments
including the steps of:
a. receiving a funds transfer authorization identifying a
credit/charge card to be charged, the funds transfer
authorization:
(1) including data uniquely identifying a location at
which a utility meter is installed, and
(2) being unrelated to any measurements made by the
utility meter;
b. accepting the data uniquely identifying the location as
verifying that the credit/charge card is physically
present at the location, and
c. processing the funds transfer authorization as a card
present type transaction.

Appellants appeal the following rejections:
Claim 45 is rejected under 35 U.S.C. § 101 as claiming ineligible
subject matter.
Claims 1-12, 14-21, 23, 28, 37-39, 41-43, and 45-47 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Synesiou (US 5,959,549, iss.
Sep. 28, 1999), Sloan (US 5,146,067, iss. Sep. 8, 1992), and Davis
(US 6,282,522 B1, iss. Aug. 28, 2001).
Claims 13, 24-26, and 48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Synesiou, Sloan, Davis, and Bos (WO 00/58922 A1, pub.
Oct. 5, 2000).
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FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. Synesiou discloses a schematic illustration of its utility dispensing
system (annotated Synesiou Figure 1 shown below):

Annotated Synesiou Figure 1, highlighting master control centre 22 and
controller 34.
2. Synesiou discloses that:
Each controller 34 contains a plurality of remote measurement
modules 38 (each of which is shown in greater detail in FIG. 3),
and a control circuit 40 which operates together with the remote
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measurement modules 38 to control the supply of electricity to
each consumer site 8 (up to a maximum of 32).
(Col. 3, ll. 58-63).
3. Synesiou discloses:
... the display unit [73] is not limited to displaying status
information transmitted by the controller 40 of the communal
metering controller 34, but can be used by the consumer to
communicate with the master control centre 22, for example.
This feature can be used to allow the consumer to make
payments to the utility supplier.
(Col. 5, ll. 48-53).
4. Synesiou discloses “mains modem 76 of the remote display unit
communicates with the communal metering controller 34 ....” (Col. 5,
ll. 34-37).
5. Synesiou discloses “mains modem 76 which is arranged to be plugged
into the mains electrical supply at the consumer site and which allows
communication between the remote display unit and the communal
metering controller 34 which controls the supply of electricity to that
consumer site, via the mains modem 42.” (Col. 5, ll. 18-24).
6. Synesiou discloses current metering functions of the remote
measurement module 38/utility meter. (Col. 4, ll. 14-18).
7. Synesiou discloses communicating the current usage data to the
communal metering controller 34. (Col. 4, ll. 18-23).
8. Synesiou discloses sending pulses to the local LED display. (Col. 4, ll.
24-29).
9. Synesiou discloses local storage of a unique identification number.
(Col. 4, ll. 29-36).
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10. Synesiou discloses the consumer display unit 73 in “communication
with the master control centre [22], [to] enter the PIN, enter a credit
card number ...” so a consumer can purchase credit for utility usage.
(Col. 5, ll. 53-58).
11. Synesiou discloses a diagram of communal metering controller 34,
showing mains modem 42 (that communicates with consumer display
unit 73) and multiple remote measurement modules 38, at figure 2,
shown below:

Annotated Figure 2 of Synesiou showing remote
measurement modules 38 and mains modem 42
within communal metering controller 34.
12. Davis discloses a system for payment of goods or services purchased
over the Internet using a card reader attached to a client terminal.
(Abstract, col. 6, ll. 18-26).
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ANALYSIS
Patentable subject matter
We are not persuaded by Appellants’ argument that claim 45 meets
the “machine or transformation test” because the data is “transformed into a
‘card-present’ indication.” (App. Br. 9). See In re Bilski, 545 F.3d 943,
961-62 (Fed. Cir. 2008) (en banc). We agree with the Examiner that the
claim fails both prongs of the test, because the claim is not tied to a
particular machine, and fails to physically transform elements. (Ans. 4). As
part of this analysis, we agree that the “receiving” step is merely a data-
gathering step which therefore represents insignificant extra-solution
activity. Although the test is not the sole test of patent eligible subject
matter, it is a useful tool in the analysis. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011).
We are not persuaded by Appellants’ argument that the claimed
method is “plainly not abstract” (App. Br. 10), because “a specific set of
data (a credit/charge funds transfer authorization) is coupled with data
relating to a specific device (utility meter location data) ....” (Reply Br. 4).
However, the “accepting” step is an abstract mental concept of assigning a
particular meaning to an item of data. The “processing” step is not further
defined, and is broadly construed to encompass merely conveying the data
with the assigned meaning to another party, because the claim does not limit
who performs the method. An individual could accept the data and request
and pass it along to a credit-card processing entity to satisfy the steps of the
claim, and for that individual the significant portions of the claim recite a
purely abstract, mental process.
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Because the claim fails the machine-or-transformation test and recites
an abstract mental process, and because there are no other factors that weigh
toward patent eligibility, we affirm the rejection of claim 45 under 35 U.S.C.
§ 101 as reciting ineligible subject matter.

Rejection under 35 U.S.C. § 103(a) of claims 1-12, 14-21, 23, and 38
Claim 1 recites “the utility meter is arranged: a. to communicate with
the user interface unit, b. to obtain the card charge authorization therefrom,
and c. to transmit a credit/charge card charge request to the financial
institution.”
We are persuaded the Examiner erred by Appellants’ argument that
Synesiou' s utility meter 38 only communicates with the substation / CMC
34, does not receive anything from the user interface unit 73, and only
transmits consumption data to the substation / CMC 34 rather than a charge
request that is transmitted to the financial institution. (App. Br. 13). In
contrast, the Examiner finds the meter at “remote measurement module 38”
and cites to column 5, lines 52-57 of Synesiou as disclosing the
communication with the user interface unit to obtain a charge authorization,
and transmission of the charge request to a financial institution. (Ans. 6).
However, the cited section of Synesiou discloses communication between
the consumer display unit/user interface unit and the “master control centre
22” and not the remote measurement module 38/utility meter, as claimed.
(FF 1-3). Therefore, we do not sustain the rejection of claim 1 or dependent
claims 2-12, 14-21, 23, and 38 all rejected under 35 U.S.C. § 103(a) over
Synesiou, Sloan, and Davis.

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Rejection under 35 U.S.C. § 103(a) of claims 13 and 24-26
Dependent claims 13 and 24-26 depend indirectly from claim 1.
Because the rejection of claim 1 and its similarly-rejected dependent claims
are reversed above, we also reverse the rejection under 35 U.S.C. § 103(a)
over Synesiou, Sloan, Davis, and Bos of claims 13 and 24-26.

Rejection under 35 U.S.C. § 103(a) of claims 28 and 39
Independent claim 28 recites “communicating the card charge
authorization request from the user interface unit to the utility meter” and
“transmitting a message generated in dependence on the card charge
authorization request and meter location identifier from the utility meter to a
financial institution.”
We are persuaded the Examiner erred in rejecting claim 28 under 35
U.S.C. § 103(a) by Appellants’ argument that in Synesiou “the user interface
unit 73 only communicates any power purchase to the substation / CMC 34
and or to the power provider,” and “the meter 38 only communicates power
consumption to the substation / CMC 34.” (App. Br. 13). For the disputed
claim limitations the Examiner cites to Synesiou column 5, lines 34-37 and
52-57. (Ans. 8).
The first cited section discloses communication between the consumer
display unit/user interface unit and the remote measurement module
38/utility meter (FF 4, 5), and the second cited section discloses
communication between the consumer display unit/user interface unit and a
“master control centre 22” (FF 1-3). These cited sections, however, do not
disclose communicating a message from the remote measurement module
38/utility meter and the master control centre 22, or a financial institution, as
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claimed. Therefore, we do not sustain the rejection of claim 28 or dependent
claim 29.

Rejection under 35 U.S.C. § 103(a) of claims 37 and 41
Independent claim 37 recites “(1) the utility meter is arranged to
communicate with the user interface unit, to obtain the card charge data, and
to transmit card charge request including the card charge data and the meter
location identifier to the financial institution.”
We are persuaded the Examiner erred in rejecting claim 37 by
Appellants’ argument that Synesiou does not meet the claim language.
(App. Br. 14). The Examiner rejected claim 37 together with claim 1, so we
reverse the rejection for the same reasons set forth above at claim 1. We
also reverse the rejection of dependent claim 41.

Rejection under 35 U.S.C. § 103(a) of claim 42
Independent claim 42 recites:
42. A financial transaction authorization system comprising:
A. a user interface unit capable of accepting a
credit/charge card transaction, and
B. a utility meter provided at a meter location having an
associated meter location identifier unique to the
meter location, and
C. a financial institution processing card charge requests,
wherein upon accepting a credit/charge card transaction
at the user interface unit, one or both of the utility meter
and user interface unit transmits a card charge request to
the financial institution, the card charge request encoding
data representing:
(1) a credit/charge card account,
(2) an amount to be charged to the credit/charge card
account,
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(3) the presence of the credit/charge card at the location
of the user interface unit, and
(4) the meter location identifier,
wherein the financial institution processes the card
charge request regardless of whether the card charge
request relates to any utility usage measurements made
by the utility meter.
We construe the claim as reciting that either the user interface unit or
the utility meter transmits a request to a financial institution. We further
construe the particular data represented in the request as non-functional
descriptive material, undeserving of patentable weight because there is no
functional relationship between the data and the “substrate” of the method,
which is “the financial institution processes the card charge request ....”
That is, the processing step does not require the use of particular data. See
In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Finally, in the case where
a user interface unit transmits a request, the claim requires a utility meter,
but that meter does not perform any function within the claim scope.
We are not persuaded of error by Appellants’ argument that “neither
of Synesiou's utility meter 38 and user interface unit 73 transmit a charge
request to a financial institution (these only communicate with the substation
/ CMC 34).” (App. Br. 14). We find Synesiou discloses a consumer display
unit 73/user interface unit transmits a charge request to a financial institution
by transmitting a credit card number to the master control centre 22 (FF 10).
We are not persuaded of error by Appellants’ argument that “Synesiou
only processes charge requests related to utility usage” (App. Br. 14),
because Davis discloses using a card reader attached to a user terminal to
pay for goods or services purchased by the user (FF 11).
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We are also not persuaded by Appellants’ argument that the Examiner
“fail[s] to explain why an ordinary artisan would have conceived or
contemplated the combination” of references. (Reply Br. 7; see also App.
Br. 18-21). The Examiner reasons the combination would have been
obvious because “each element merely would have performed the same
function as it did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.” (Ans. 7).
A prima facie conclusion of obviousness may be supported by a showing
that the claims are directed to a process, machine, manufacture, or
composition of matter already known in the prior art that is altered by the
mere substitution of one element for another known in the field, and such
modification yields a predictable result. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007) (citing U.S. v. Adams, 383 U.S. 39, 40 (1966)). The
KSR Court further stated that “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
417. When considering obviousness of a combination of known elements,
the operative question is thus “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id.
For these reasons, we affirm the rejection of claim 42 under 35 U.S.C.
§ 103(a).

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Rejection under 35 U.S.C. § 103(a) of claim 43
Independent claim 43 recites that the user interface unit is
“communicating with the utility meter to obtain the location identifier” that
the user interface unit uses in processing a funds transfer authorization.
We are persuaded of error by Appellants’ argument that the user
interface unit 73 in Synesiou does not obtain or process the meter location
identifier. (App. Br. 14). The Examiner cites to Synesiou column 4, lines
16-36 as disclosing the user interface unit communicating with the meter to
obtain the location identifier. (Ans. 10). This section discloses metering
functions of the remote measurement module 38/utility meter (FF 6),
communicating the current usage data to the communal metering controller
34 (FF 7), sending pulses to the local LED display (FF 8), and local storage
of a unique identification number (FF 9). This section, however, does not
disclose any communication between the consumer display unit 73 and the
remote measuring module 38/utility meter, which means it does not meet the
disputed claim language. Therefore, we reverse the rejection of claim 43
under 35 U.S.C. § 103(a).

Rejection under 35 U.S.C. § 103(a) of claim 45
Independent claim 45 recites “data uniquely identifying a location at
which a utility meter is installed, and ... b. accepting the data uniquely
identifying the location as verifying that the credit/charge card is physically
present at the location.”
We are persuaded of error by Appellants’ argument that “Synesiou
does not include, in the course of a funds transfer authorization, accepting
meter location data as verifying card presence at the meter location as in
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clause b ....” (App. Br. 14). The Examiner, relying on the language of claim
43, cites to Synesiou column 5 lines 52-57 as disclosing “processing the data
... to verify that the credit/charge card is physically present at the location of
the utility meter” (Ans. 10-11), combined with the card reader of Sloan
(Ans. 11, 18-19). We note that because in Synesiou the utility meter is
physically removed from the location of the consumer (see FF 1, 2, 11), the
location information of the remote measurement module 38/utility meter has
nothing to do with the physical card presence at the card reader at the
consumer’s location. Therefore, the combination does not meet the claim
language. For this reason, we reverse the rejection of claim 45 under 35
U.S.C. § 103(a).

Rejection under 35 U.S.C. § 103(a) of claim 46
Independent claim 46 recites a “user interface unit: ... (2) being
situated at the meter location, and (3) being connected in communication
with the utility meter.”
We are persuaded of error by Appellants’ argument that “Synesiou
does not include a user interface unit connected in communication with the
utility meter as in clause c(3) ....” (App. Br. 15). The Examiner rejects
claim 46 along with claim 1, without reference to the claim language of
claim 46. However, the Examiner cites to column 5, lines 55-57 of Synesiou
as disclosing communication between the utility meter and user interface
unit (Ans. 6). This section of Synesiou discloses the consumer display unit
73/user interface unit in communication with the master control center 22,
but not the remote measurement module 38/utility meter. (See FF 3, 10).
We find Synesiou discloses the remote measurement module 38/utility meter
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is not at the same location as the consumer display unit 73/user interface
unit, because it is part of communal metering controller 34 located away
from a residence where the consumer display unit 73/user interface unit is
located. (See FF 1, 11). In addition, although Synesiou discloses the
consumer display unit 73/user interface unit communicates via the mains
modem 42 in the communal metering controller 34 (FF 5), this is separate
from the remote measurement module 38/utility meter (FF 11).
For these reasons, we reverse the rejection of claim 46 under 35
U.S.C. § 103(a).

Rejection under 35 U.S.C. § 103(a) of claim 47
Independent claim 47 recites a method that communicates data to a
“user interface unit: (1) being at a meter location, (2) being arranged to
communicate with a utility meter at the meter location.”
We are persuaded the Examiner erred by Appellants’ argument that
“Synesiou does not include a user interface unit arranged to communicate
with a utility meter as in clause b(2) (Synesiou's user interface unit 73 does
not communicate with utility meter 38, and only communicates with the
substation / CMC 34 and/or the power provider)” (App. Br. 15), for the same
reasons set forth above at claims 1 and 46. For these reasons, we reverse the
rejection of claim 47 under 35 U.S.C. § 103(a).

Rejection under 35 U.S.C. § 103(a) of claim 48
Dependent claim 48 depends from claim 47. Because the rejection of
claim 47 is reversed above, we also reverse the rejection under 35 U.S.C. §
103(a) over Synesiou, Sloan, Davis, and Bos of claim 48.
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DECISION
We affirm the rejection under 35 U.S.C. § 101 of claim 45.
We affirm the rejection under 35 U.S.C. § 103(a) of claim 42.
We reverse the rejections of claims 1-21, 23-26, 28, 37-39, 41, 43, and
46-48 under 35 U.S.C. § 103(a)

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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