Ex Parte Kawai

Board of Patent Appeals and Interferences

Feb 24, 2010

09981696 (B.P.A.I. Feb. 24, 2010)

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UNITED STATES PATENT AND TRADEMARK OFFICE 2
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BEFORE THE BOARD OF PATENT APPEALS 5
AND INTERFERENCES 6
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Ex parte EIJI KAWAI 9
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Appeal 2009-009093 12
Application 09/981,696 13
Technology Center 3600 14
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Decided: February 24, 2010 17
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH 21
A. FISCHETTI, Administrative Patent Judges. 22
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CRAWFORD, Administrative Patent Judge. 24
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DECISION ON APPEAL27
Appeal 2009-009093
Application 09/981,696

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STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 5, 8 to 14, 19 to 21, 24 to 32, and 35 to 45. We have 3
jurisdiction under 35 U.S.C. § 6(b) (2002). Appellant appeared for oral 4
hearing on February 4, 2010. 5
Appellant invented an electronic guide information processing system 6
for electronically processing guide information (Spec. 1). 7
Claim 1 under appeal reads as follows: 8
1. An electronic guide information 9
processing system for electronically processing 10
guide information about a customers attracting 11
facility having an entrance and an exit, the system 12
comprising: 13
an information distributing apparatus for 14
converting the guide information into electronic 15
guide information, encrypting the electronic guide 16
information, and then distributing the encrypted 17
electronic guide information; 18
a portable terminal apparatus for recording 19
the encrypted electronic guide information, 20
decrypting the encrypted electronic guide 21
information at the entrance, and presenting the 22
electronic guide information to an information 23
user; and 24
an information processing apparatus 25
comprising an information collecting apparatus for 26
collecting the electronic guide information from 27
the portable terminal apparatus at the exit, the 28
information processing apparatus erasing the 29
electronic guide information from the portable 30
terminal apparatus at the exit and writing in the 31
portable terminal apparatus information about the 32
information user's use of the customers attracting 33
facility at the exit. 34
Appeal 2009-009093
Application 09/981,696

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The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Gershman US 6,401,085 B1 Jun. 4, 2002 3
Treyz US 6,587,835 B1 Jul. 1, 2003 4
The Examiner rejected claims 1 to 5, 8 to 14, 19 to 21, 24 to 32, 5
and 35 to 45 under 35 U.S.C. § 103(a) as being unpatentable over Treyz in 6
view of Gershman. 7
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ISSUE 9
Has Appellant shown that the Examiner erred in finding that Treyz 10
discloses an information processing apparatus that erases electronic guide 11
information from a portable terminal apparatus at the exit of a customer 12
attracting facility and writes, on the portable terminal apparatus, information 13
about the user’s use of the customer attracting facility at the exit? 14
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FINDINGS OF FACT 16
Treyz discloses a system based on handheld computing devices that 17
assist users in shopping and in performing wireless transactions (col. 1, ll. 6 18
to 9). The system allows users to obtain information regarding products 19
offered for sale using local and remote wireless links (col. 1, ll. 41 to 45). 20
The system may provide shopping assistance service which provides 21
information about current events through an information screen provided on 22
the handheld device (col. 2, ll. 57 to 63). The shopping assistance service 23
may be used to make financial transactions (col. 3, ll. 37 to 38). The 24
financial transactions may be monitored by continuously sending financial 25
transaction information to the handheld device (col. 46, ll. 9 to 42). The 26
Appeal 2009-009093
Application 09/981,696

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shopping assistance service turns on automatically when the service detects 1
the handheld device’s presence (col. 49, ll. 41 to 44). 2
The Examiner stated: 3
Treyz discloses . . . an information processing 4
apparatus comprising an information collecting 5
apparatus for collecting the electronic guide 6
information from the portable terminal apparatus at 7
the exit (colleting data is equivalent to 8
deleting/erasing the data as claimed in the next 9
step; C49, shopping assistance link 10
deleted/collected along with icon/descriptive 11
information—once user out of range or has exited 12
the facility). . . . Treyz does not expressly disclose 13
sending information to the user in a “batch” format 14
at a specific location (exit), Treyz does disclose 15
continuously sending financial transaction 16
information to the user device, indicating where 17
and what the user did with the system (C46 L9-18
42). . . . Therefore, it would have been obvious to 19
one of ordinary skill in the art at the time the 20
invention was made to send the information to the 21
user at specific times and locations as a way to 22
decrease transmission costs. 23
(Ans. 3 to 4). 24
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PRINCIPLES OF LAW 26
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the 27
Examiner to establish a factual basis to support the legal conclusion of 28
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). 29
Appeal 2009-009093
Application 09/981,696

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ANALYSIS 1
We will not sustain the Examiner’s rejection. Although the Examiner 2
is correct that in the Treyz device information may be written to the 3
handheld device in batches and erased once the device is out of range, the 4
Examiner has not established that the writing to the device and the erasing of 5
the device occur at the exit. Treyz discloses that the information is erased 6
when the device is out of range but does not disclose that the device is out of 7
range at the exit. In addition, once out of range, it is not possible to write to 8
the device. Therefore, the erasing and writing does not occur at the same 9
location. 10
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CONCLUSION OF LAW 12
On the record before us, Appellant has shown that the Examiner erred 13
in rejecting the claims. 14
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DECISION 16
The Examiner's decision is reversed. 17
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REVERSED 19
Appeal 2009-009093
Application 09/981,696

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FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER 4
LLP 5
901 NEW YORK AVENUE, NW 6
WASHINGTON, DC 20001-4413 7