10330796 (B.P.A.I. Feb. 28, 2007)

Ex Parte Meek et al

Board of Patent Appeals and InterferencesFeb 28, 2007

10330796 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte JAMES MEEK, DONALD MCCOY, GREGORY SHIMEK, RON DIFRANGO, ANTHONY LEE, KEN KORAN, WILLIAM HEMLICK, CHANGNING JIANG, ROBERT D. SYMONDS, IREK SINGER, PETER ST. GEORGE, and ROBERT BRADLEY GILL _____________ Appeal No. 2007-0390 Application No. 10/330,796 Technology Center 3600 ______________ Decided: February 28, 2007 _______________ Before HUBERT C. LORIN, JENNIFER D. BAHR, and ROBERT E. NAPPI, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of claims 1 and 48 through 69. For the reasons stated infra we will not sustain the Examiner’s rejection of these claims. Appeal 2007-0390 Application 10/330,796 2 Invention The invention is directed to a method of presenting marketing materials to users of an automated transaction machine such as an Automatic Teller Machine. See pages 1 and 10 through 12 of Appellants’ Specification. Claim 1 is representative of the invention and is reproduced below: 1. A method comprising: a) receiving first ATM user identifying data corresponding to a first ATM user conducting a first financial transaction at a first ATM, with a marketing computer remote from the first ATM, and wherein the first financial transaction is conducted through communication between the first ATM and a first remote computer other than the marketing computer, b) responsive to receipt of the first ATM user identifying data, sending with the marketing computer to the first ATM, first presentation identifying data corresponding to at least one first marketing presentation to output to the first ATM user during the first financial transaction. Reference The reference relied upon by the Examiner is: Walker US 6,694,300 B1 Feb. 17, 2004 (filed Dec. 19, 1997) Appeal 2007-0390 Application 10/330,796 3 Rejection at Issue Claims 1 and 48 through 69 stand rejected under 35 U.S.C. § 102(e) as being anticipated over Walker. The Examiner’s rejection is set forth on page 3 of the Answer. Throughout the opinion we make reference to the Briefs (received April 10, 2006 and September 6, 2006), and the Answer (mailed July 6, 2006) for the respective details thereof. Issues Appellants contend that the rejection under 35 U.S.C. § 102(e) is in error as Walker does not teach all of the limitations of independent claim 1. Appellants argue that Walker does not teach that the system can be used with ATMs and further that Walker does not teach the relational arrangement among the ATM, marketing computer, and first remote computer as recited in the claims. The Examiner in response contends that the rejection is proper. The Examiner maintains, Walker teaches that the system can be applied to a network of ATMs. Further, the Examiner states that Walker teaches two computers connected to the ATMs, the central controller item 12 and the Electronic Funds Transfer Network (EFTN) item 19. Thus, the issue presented to us is whether Walker teaches a system which can be applied to an ATM network and whether Walker teaches the relational arrangement between the ATM, marketing computer, and remote computer as claimed. Appeal 2007-0390 Application 10/330,796 4 Findings of Fact Appellants’ Specification on page 1 states that “Automated transaction machines are known in the art” and that a “type of automated transaction machine is an automated teller machine (ATM).” Appellants define an ATM as typically being used to conduct financial transactions, such as dispensing cash, making deposits, transferring funds, etc. Further, Appellants state “[a]lthough the description of the invention herein will be made with reference to an ATM, it should be understood that the principles of the invention are equally applicable to many types of automated transaction machines.” Id. Thus, we find that the scope of the claim term ATM is a subset of automated transaction machines which are used to perform financial transactions. Walker teaches a system for providing supplementary sales at a card authorization terminal (a part of the point of sale terminal). See col. 1, ll. 9- 11. Walker teaches that the system can also be used with Automated Teller Machines. See col. 11, ll. 35-42. The disclosure of Walker focuses primarily on the embodiment where the card authorization terminal is part of a merchant’s point of sales machine. In this embodiment the system allows a sponsoring merchant, the merchant at which the customer is making a purchase, to sell items (referred to as an upsell) to customers of any store having a similar card authorization terminal. See col. 3, ll. 10-15. Walkers’ card authorization terminal communicates with the customer’s credit card issuing computer. The card authorization terminal communicates data such as account number, merchant identifier, price, and items purchased. See col. 1, ll. 38-44 and col. 2, ll. 14-20. The credit card issuing computer is Appeal 2007-0390 Application 10/330,796 5 depicted as controller item 12 and operates as a credit card clearing house. See col. 3, ll. 55-60. The central controller also contains the database and makes the decisions concerning upsells to be presented to the customer. See col. 4, lines 4, ll. 27-35 and col. 5, ll. 14-25. Walker does not disclose that the card authorization terminals communicate with the electronic financial network. An example of Walker’s system is provided in column 10 of the patent. A customer at an authorization terminal in store “7777” might be displayed an offer for an upsell. For example, for $4.50 the customer will be sold a coupon worth $5.00 at McDonald’sTM. See col. 10, ll. 22-32. The central controller will then update a database of reconciliation of funds between merchants including debiting and crediting the merchants’ accounts. See col. 10, ll. 33-46. Thus, we find that in Walker’s system there are two types of financial transactions. The first type of transaction occurs between the card authorization terminal and the central controller, item 12, which operates as a credit card clearing house. We note the central controller also operates as a marketing computer as when it provides information concerning upsell offers to the card authorization terminal. The second financial transaction discussed in Walkers’ system is between the central controller, item 12, and the EFTN. Walker does not provide detail of how these financial transactions are used; assumedly they are to reconcile transfer of funds between merchant accounts and customer credit card accounts. It is clear from Walker’s disclosure that the card authorization terminal does not communicate directly with EFTN. Appeal 2007-0390 Application 10/330,796 6 Analysis Independent claim 1 recites “receiving first ATM user identifying data corresponding to a first ATM user conducting a first financial transaction at a first ATM, with a marketing computer” and “sending with the marketing computer to the first ATM, [a] first presentation.” Thus, the scope of claim 1 includes a marketing computer which receives data identifying ATM users and provides a presentation to the ATM. Claim 1 further recites “wherein the first financial transaction is conducted through communication between the first ATM and a first remote computer other than the marketing computer.” Thus, the scope of claim 1 also includes a second computer separate from the marketing computer which performs a financial transaction with the ATM. As discussed supra, we find that the scope of the term ATM is an automated transaction machine which is used to perform financial transactions. As discussed supra, we find that Walker teaches a system to allow an upsell at card authorization terminals; these terminals can be associated with a point of sales terminal or an ATM. However, we do not find that Walker teaches a marketing computer, separate from the computer which performs a financial transaction with the ATM. Walker discusses two computers which perform financial transactions, the central controller, item 12, performs financial transactions with the ATM and the EFTN performs transactions with the central controller. The central controller also performs the functions of the marketing computer. Contrary to the claim which requires a separate computer to communicate the financial transactions and marketing Appeal 2007-0390 Application 10/330,796 7 information to the ATM, Walker teaches that the central controller communicates both the financial transaction and the marketing data to the ATM. Accordingly, we do not find that Walker discloses all of the limitations recited in independent claim 1 and we will not sustain the Examiner’s rejection of claim 1 or claims 48 through 69 dependent on claim 1, under 35 U.S.C. § 102(e). Conclusion We consider the Examiner’s rejection of claims 1 and 48 through 69 under 35 U.S.C. § 102(e) to be in error as we do not find that Walker teaches the relational arrangement between the ATM, marketing computer, and remote computer as claimed. Appeal 2007-0390 Application 10/330,796 8 Order For the forgoing reasons, we will not sustain the Examiner’s rejection, under 35 U.S.C. § 102. The decision of the Examiner is reversed. REVERSED APJ Initials: hh RALPH E. JOCKE Walker & Jocke LPA 231 SOUTH BROADWAY MEDINA OH 44256