Ex Parte Lourie

Board of Patent Appeals and Interferences

Sep 8, 2008

09884868 (B.P.A.I. Sep. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD LOURIE
____________

Appeal 2008-1463
Application 09/884,868
Technology Center 3600
____________

Decided: September 8, 2008
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-5. We have jurisdiction under 35 U.S.C.
§ 6(b)(2002). We affirm.
Appeal 2008-1463
Application 09/884,868

2
Appellant claims an anonymous transaction method that enables an
individual to make purchases in a secure manner, with minimal risk, and
without sacrificing convenience (Specification 9:2-4). Claim 1, reproduced
below with disputed claim limitations in bold typeface, is representative of
the subject matter on appeal.
1. An anonymous method of transaction, said
method comprising:
providing a card of predetermined
denominational value having an indicia of
identification associated with said card and said
value;
providing an electronic means for
transmitting information;
issuing said card to a consumer
anonymously in exchange for payment by said
consumer of said predetermined denominational
value associated with said card;
presenting said card to a merchant as
transactional payment to said merchant for a
transaction of goods or services, wherein said
transactional payment by said consumer to said
merchant is less than or equal to said
predetermined denominational value associated
with said card;
verifying said card by transmitting with said
electronic means said indicia of identification and
the amount of said transactional payment by said
consumer to said merchant, to a card issuing
authority;
issuing with said electronic means an
approval code from said card issuing authority to
said merchant;
Appeal 2008-1463
Application 09/884,868

3
completing said transaction with said
merchant by providing said goods or services to
said consumer; and
transferring funds from said card issuing
authority to said merchant in the amount of said
transactional payment from said consumer to said
merchant

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Risafi US 6,473,500 B1 Oct. 29, 2002

Claims 1-5 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Risafi.

ISSUE
The dispositive issue is whether the Examiner erred in rejecting
claims 1-5 as anticipated by Risafi. The issue turns on the construction of
“anonymous[-ly].”
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

Appeal 2008-1463
Application 09/884,868

4
FINDINGS OF FACT
We find the following enumerated findings to be supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).

1. The plain meaning of “anonymous” is “having an unknown or
unacknowledged name: an anonymous author.” See anonymous. The
American Heritage® Dictionary of the English Language, Fourth
Edition (Houghton Mifflin Company, 2004).
2. Appellant’s Specification describes an anonymous transaction.
According to the Specification, “[t]he transaction would involve only
the exchange of the card and the payment, with no communication of
personal information. In other words, the transaction is completely
anonymous.” (Specification 9:20-22).
3. The Specification provides no lexicographic definition of
“anonymous” or “anonymously.”
4. Risafi discloses a system for using a prepaid card that permits a card
user to purchase a card through an agent at a retail establishment via a
terminal, select a PIN, have the card activated at the point of purchase,
use the card to purchase goods and services, and reload the card for
future use (Risafi, abstract).
5. Risafi describes a known method of using a prepaid card where the
value of the card can be stored either in the memory of the card itself
or in a central host, which can be accessed using information stored
on a magnetic stripe on the back of the card. Verification of the
Appeal 2008-1463
Application 09/884,868

5
identity of the purchaser of the card typically is not required. (Risafi,
col. 1, l. 54 – col. 2, l. 8).
6. Risafi teaches that “the card is more secure than a cash card because a
PIN or verified signature may be required in order to use it” (Risafi,
col. 7, ll. 51-53) (emphasis added).
7. Risafi also notes that “[i]t is noteworthy that card 100 does not
necessarily include card user 10’s name” (Risafi, col. 11, ll. 16-17).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We must be careful not
to read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004)(“Though understanding the claim language may be aided by
explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment”).
The challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
Appeal 2008-1463
Application 09/884,868

6
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003).
We remind appellants that it is their burden to precisely define the
invention, not that of the examiner. In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997). Appellants always have the opportunity to amend the claims
during prosecution, and broad interpretation by the examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).

ANALYSIS
The Appellant argues claims 1-5 as a group. We treat claim 1, the
only independent claim, as representative.
The Appellant and the Examiner dispute the meaning of the term
“anonymous[-ly]” as used in the bolded portions of claim 1 above. The
Appellant argues that the Specification provides a definition of the term
“anonymous[-ly]” as it applies to the step of issuing a card (Br. 4; Reply Br.
4; quoting Specification 9-10). The quoted portion of the Specification
reads: “The transaction would involve only the exchange of the card and the
payment, with no communication of personal information. In other words,
the transaction is completely anonymous” (Finding of Fact 2). The
Appellant argues that the Examiner’s definition of anonymous in the Final
Appeal 2008-1463
Application 09/884,868

7
Office Action (which relies on the same section of the Specification) is
erroneous (Br. 3-4). According to the Examiner:
Therefore, prior art will be interpreted to
disclose applicant's
. . . anonymous method of transaction. . .
. . . issuing said card to a consumer
anonymously in exchange for payment by said
consumer of said predetermined denominational
value associated with said card . . .
where prior art discloses purchasing a card
by providing payment in cash, or
where prior art discloses prepaid card(s)
where verification of a purchaser's identify is not
required, or
where an individual purchases a prepaid
card at a card dispensing device.
(Final Office Action 4; Answer 3-4).
The Appellant argues that use of information personal to the
purchaser, such as a PIN, may not rise to the level of verification of personal
identification (thereby meeting the Examiner’s definition of anonymity), but
would not be anonymous in the sense used in the claimed invention, because
it would include the use of information personal to an individual (Br. 4).
According to the Appellant, the key is not if a device is used, but rather
whether there is an exchange of personal information (Id.). Appellant argues
that using a PIN is contrary to completing a transaction with no
communication of personal information, which he argues is part of the
definition of anonymous given in the Specification (Br. 5). Appellant argues
that Risafi consistently teaches issuing the card along with a PIN (citing
Risafi, Abstract; col. 3, ll. 58-68; col. 4, ll. 17-22; col. 6, ll. 40-45).
Appeal 2008-1463
Application 09/884,868

8
According to Appellant, Risafi does not indicate anywhere that the card can
be used without a PIN (Br. 5).
The Examiner found that Risafi discloses issuing a card to a consumer
anonymously as required by claim 1 at column 1, line 54 – column 2, line 8,
and also points to references to card dispensing devices at column 6, lines
38-58, and references to purchasing cards via cash payments in support of
that finding (Answer 4). The Appellant concedes that the pre-paid cards of
Risafi, column 1, line 54 – column 2, line 8, can be issued without the
exchange of personal information, but argues that those cards otherwise fail
to meet the limitations of claim 1 (Br. 5). In particular the Appellant argues
that prepaid cards do not utilize the required verification step, issuance of an
approval code step, or the transfer of funds from a card issuing authority step
(Id.). We need not reach this argument because we find, as discussed more
fully below, that a card can be issued to a customer anonymously even when
a PIN is employed.
The Examiner found that Risafi provides a PIN number and no
personal information, and applied the ordinary meaning and broadest
reasonable interpretation of “anonymous[-ly],” because the Appellant
provides no explicit definition of the term in the Specification (Answer 6).
We agree with the Examiner (Finding of Fact 5). The passage cited by the
Appellant as a definition uses the term “anonymous,” but does not appear to
be a lexicographic definition (Findings of Fact 2 and 3).
Neither the Appellant nor the Examiner proffers a dictionary
definition, but the Appellant’s definition is narrower than the ordinary
meaning of the term, which we find to be “having an unknown or
unacknowledged name” (Finding of Fact 1). This definition is consistent
Appeal 2008-1463
Application 09/884,868

9
with the passage of the Specification cited by the Appellant (Finding of Fact
2) and represents the broadest reasonable interpretation in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
As such, we find the use of a PIN, which communicates no name or identity
of a user, would not preclude an anonymous transaction. Moreover, Risafi
teaches that the card is more secure than a cash card because a PIN or
verified signature may be required in order to use it (Finding of Fact 6),
implying that the use of a PIN is optional. Risafi also notes that “[i]t is
noteworthy that card 100 does not necessarily include card user 10’s name”
(Finding of Fact 7).
Without a clear lexicographic definition in the Specification (Finding
of Fact 3), we decline the Appellant’s invitation to read limitations from the
Specification into the claims, where the claim is broader than the example in
the Specification. See Superguide Corp., 358 F.3d at 875. The Appellant’s
entire argument relies on his definition of “anonymous[-ly],” which we find
to be inconsistent with the broadest reasonable interpretation. We find no
error in the Examiner’s claim interpretation of “anonymous[-ly],” which is
consistent with the broadest reasonable construction of the terms in light of
the specification as it would be interpreted by one of ordinary skill in the art.
The Appellant therefore has not shown error in the Examiner’s
rejection of claim 1. Claims 2-5 are not argued separately and, thus fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). See also Young, 927 F.2d
at 590.

Appeal 2008-1463
Application 09/884,868

10
CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-5 under 35 U.S.C. § 102(e) as anticipated by Risafi.
DECISION
The decision of the Examiner to reject claims 1-5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

hh

DAVIS, BROWN, KOEHN, SHORS & ROBERTS, P.C.
THE DAVIS BROWN TOWER
215 10TH STREET SUITE 1300
DES MOINES, IA 50309