Ex Parte Kawan

Board of Patent Appeals and Interferences

Mar 25, 2010

09238995 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JOSEPH C. KAWAN 8
___________ 9
10
Appeal 2009-005582 11
Application 09/238,995 12
Technology Center 3600 13
___________ 14
15
Decided: March 25, 2010 16
___________ 17
18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
Appeal 2009-005582
Application 09/238,995

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STATEMENT OF THE CASE 1
Joseph C. Kawan (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-5, 8, 10-17, 22, 27, 33, 39, 42-50, 55-3
58, 63-66, 69-74, and 79-81, the only claims pending in the application on 4
appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
SUMMARY OF DECISION1 8
We AFFIRM. 9
THE INVENTION 10
The Appellant invented a method and system of smart card banking 11
using a contactless interface between the smart card and a financial 12
institution banking system (Specification 1:9-12). 13
An understanding of the invention can be derived from a reading of 14
exemplary claim 1, which is reproduced below [bracketed matter and some 15
paragraphing added]. 16
1. A method of contactless interfacing for a financial 17
transaction smart card, comprising: 18

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 24, 2008) and the Examiner’s Answer (“Ans.,” mailed
August 11, 2008), and Final Rejection (“Final Rej.,” mailed October 31,
2007).
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[1] allowing a user to establish a physical contact bi-1
directional communication interface between a financial 2
transaction smart card and a hand-held computing device for 3
accessing a financial transaction smart card application on a 4
microcomputer of the financial transaction smart card; 5
[2] allowing the user to enter identifying information and 6
transaction information on the hand-held computing device; 7
[3] allowing the user to initiate a contactless bi-directional 8
communication interface via the hand-held computing device as 9
a conduit between the financial transaction smart card 10
application on the microcomputer of the financial transaction 11
smart card and a self-service transaction terminal of an on-line 12
system of a financial institution; 13
[4] verifying the financial transaction smart card by the on-14
line system based at least in part on the identifying information 15
received by the on-line system via the contactless 16
communication interface between the hand-held computing 17
device and the self-service transaction terminal; and 18
[5] communicating the transaction information entered by 19
the user on the hand-held computing device to the self-service 20
transaction terminal of the on-line system via the contactless 21
communication interface. 22
23
THE REJECTIONS 24
The Examiner relies upon the following prior art: 25
Gutman US 5,221,838 Jun. 22, 1993
Coutts US 5,563,393 Oct. 8, 1996
Daggar US 5,748,737 May 5, 1998
26
Claims 1-5, 8, 10-17, 22, 27, 33, 39, 42-45, 47-50, 55-58, 63-66, 69-74, 27
and 79-81 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 28
Gutman, Daggar, and Coutts. 29
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1
ISSUES 2
The issue of whether the Examiner erred in rejecting claims 1-5, 8, 10-3
17, 22, 27, 33, 39, 42-45, 47-50, 55-58, 63-66, 69-74, and 79-81 under 35 4
U.S.C. § 103(a) as unpatentable over Gutman, Daggar, and Coutts turns on 5
whether Gutman, Daggar, and Coutts describe a contactless bi-directional 6
communication interface via a handheld device as a conduit between a smart 7
card and a self-service terminal of a financial institution. 8
9
FACTS PERTINENT TO THE ISSUES 10
The following enumerated Findings of Fact (FF) are believed to be 11
supported by a preponderance of the evidence. 12
Facts Related to the Prior Art 13
Gutman 14
01. Gutman is directed to communication devices capable of 15
storing and updating financial information and balance 16
information (Gutman 1:8-15). 17
02. Gutman describes an electronic wallet comprising a selective 18
call receiver, which receives a wireless message from a central 19
financial computer (Gutman 4:35-43). The electronic wallet can 20
further include a bar code reading device, a printer, and a 21
magnetic card reader/writer (Gutman 4:1-6, 25-28, 44-48). The 22
receiver receives an information signal and submits it to a 23
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controller for interpretation (Gutman 5:46-54). The controller 1
may update financial information based on the wireless message, 2
thereby allowing the electronic wallet to maintain financial 3
information that may include a balance summary of transaction 4
activities for an account at a financial institution (Gutman 7:44-5
53). 6
Coutts 7
03. Coutts is directed to a business system capable of two-way 8
communication between an interface device and an automated 9
teller machine (ATM) terminal in a contactless manner (Coutts 10
1:37-42). 11
04. Coutts describes the system uses a radio-frequency (RF) 12
communication technique to enable communication between an 13
interface device and an ATM (Coutts 2:43-48). 14
Daggar 15
05. Daggar is directed to portable communication devices, such as 16
an electronic wallet, that include a multimedia transaction card 17
(Daggar 1:5-9 and 1:14-22). 18
06. Daggar describes the use of electronic wallets and generic 19
multimedia cards that allow virtually all traditional wallet items to 20
be recreated in the form of electronically stored digital cards 21
(Daggar 8:35-43). The electronic wallet provides digital 22
card/generic multimedia card integrity, smart card authentication, 23
card sensing, and further media interfaces via a generic attachment 24
card and various media interfaces (Daggar 8:56-60). The smart 25
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card reader/writer is an interactive medium that can have a non-1
contact interface (Daggar 11:59-67). The role of the electronic 2
wallet can be reduced to and limited to data storage and 3
processing protection (Daggar 11:7-16). 4
Facts Related To The Level Of Skill In The Art 5
07. Neither the Examiner nor the Appellant has addressed the level 6
of ordinary skill in the pertinent arts of smart cards, electronic 7
wallets, and electronic financial systems. We will therefore 8
consider the cited prior art as representative of the level of 9
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 10
1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the 11
level of skill in the art does not give rise to reversible error ‘where 12
the prior art itself reflects an appropriate level and a need for 13
testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 14
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 15
Facts Related To Secondary Considerations 16
08. There is no evidence on record of secondary considerations of 17
non-obviousness for our consideration. 18
PRINCIPLES OF LAW 19
Obviousness 20
A claimed invention is unpatentable if the differences between it and 21
the prior art are “such that the subject matter as a whole would have been 22
obvious at the time the invention was made to a person having ordinary skill 23
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in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 1
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 2
In Graham, the Court held that that the obviousness analysis is 3
bottomed on several basic factual inquiries: “[(1)] the scope and content of 4
the prior art are to be determined; [(2)] differences between the prior art and 5
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 6
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 7
U.S. at 406. “The combination of familiar elements according to known 8
methods is likely to be obvious when it does no more than yield predictable 9
results.” Id. at 416. 10
ANALYSIS 11
Claims 1-5, 8, 10-17, 22, 27, 33, 39, 42-45, 47-50, 55-58, 63-66, 69-74, 12
and 79-81 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 13
Gutman, Daggar, and Coutts. 14
The Appellant contends that (1) Gutman fails to describe a financial 15
smart card capable of bi-directional communication and the remainder of 16
limitation [3] of claim 1 (App. Br. 4-5) and that (2) Daggar and Coutts fail to 17
remedy the deficiencies of Gutman (App. Br. 5-7). 18
We disagree with the Appellant. Limitation [3] requires allowing a user 19
to communicate from a smart card to a self-service terminal using a 20
contactless bi-directional interface of a hand-help computing device. 21
Gutman describes a system with an electronic wallet that includes a card 22
reader, printer, and bar code reader (FF 02). Gutman further describes that 23
the electronic wallet initiates a wireless message to a financial institution 24
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where the message relates to account transaction information and balance 1
information (FF 02). 2
The Examiner acknowledges that Gutman fails to describe the use of a 3
smart card, a self-service terminal, and the use of the electronic wallet as a 4
conduit between the smart card and self-service terminal (Ans. 4-5). The 5
Examiner cites Daggar to describe the use of a smart card (FF 06). Daggar 6
further describes limiting the role of the electronic wallet to data storage and 7
processing protection (FF 06). Limiting the role of a wallet as a processor or 8
data storage renders the wallet as a general purpose interface device between 9
the smart card and an another device. That is, Daggar describes the ability 10
to limit the role of the electronic wallet to be a mere conduit between a smart 11
card and another device. The Examiner further cites Coutts to describe a 12
wireless interface between a wireless device and an automated teller 13
machine (ATM) (FF 04). An ATM is a self-service terminal of a financial 14
institution. As such, the combination of Gutman, Daggar, and Coutts 15
describe all of the features of limitation [3]. 16
The Appellant’s argument that Gutman, Daggar, and Coutts individually 17
fail to describe this limitation is not found persuasive because the Appellant 18
is responding to the rejection by attacking the references separately, even 19
though the rejection is based on the combined teachings of the references. 20
Non-obviousness cannot be established by attacking the references 21
individually when the rejection is predicated upon a combination of prior art 22
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097, (Fed. Cir. 23
1986). Although the Appellant argues that the Appellant has shown that the 24
references do not describe the limitations of claims 1 and 63 (App. Br. 7), 25
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we find that the references do describe the limitations of claims 1 and 63 for 1
the reasons discussed supra. 2
The Appellant additionally contends that (3) there is no reason to 3
combine the cited references and the Examiner’s reasoning was conclusory 4
(App. Br. 8). We disagree with the Appellant. 5
Gutman is concerned with a communication device and communicating 6
with financial institutions (FF 01). Gutman accomplishes this by describing 7
a wireless electronic wallet that uses information on a financial card to 8
communicate with a financial institution (FF 02). 9
Daggar is also concerned with communication devices and 10
communicating financial information (FF 05). Daggar solves this concern 11
by describing an electronic wallet that uses smart cards to manage the 12
transmitted information (FF 06). 13
Coutts is also concerned with contactless communication between a 14
communication device and a financial institution (FF 03). Coutts 15
accomplishes this by describing a device that wirelessly communications 16
with an automated teller machine (ATM) of a financial institution (FF 04). 17
Gutman, Daggar, and Coutts are all concerned with the wireless or 18
contactless communication with a financial institution. A person with 19
ordinary skill in the art would have recognize the benefits, including 20
increasing the flexibility and capabilities of the wireless communication 21
devices, of combining the smart card features from Daggar and the ATM 22
features of Coutts to the contactless communication system of Gutman. As 23
such, a person with ordinary skill in the art would have been lead to combine 24
Gutman, Daggar, and Coutts in order to realize these benefits. 25
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CONCLUSIONS OF LAW 1
The Examiner did not err in rejecting claims 1-5, 8, 10-17, 22, 27, 33, 2
39, 42-45, 47-50, 55-58, 63-66, 69-74, and 79-81 under 35 U.S.C. § 103(a) 3
as unpatentable over Gutman, Daggar, and Coutts. 4
DECISION 5
To summarize, our decision is as follows. 6
• The rejection of claims 1-5, 8, 10-17, 22, 27, 33, 39, 42-45, 47-50, 55-7
58, 63-66, 69-74, and 79-81 under 35 U.S.C. § 103(a) as unpatentable 8
over Gutman, Daggar, and Coutts is sustained. 9
No time period for taking any subsequent action in connection with this 10
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 11
12
AFFIRMED 13
mev 14
15
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