Ex Parte Nielsen

Board of Patent Appeals and Interferences

Mar 30, 2009

10101581 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL NIELSEN
____________

Appeal 2008-3868
Application 10/101,581
Technology Center 2100
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Decided1: March 31, 2009
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Before LEE E. BARRETT, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/101,581

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 11-16 under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellant’s invention is directed to an automated teller machine
(ATM) system including a first plurality of automated teller machines in a
first distributed network of automated teller machines (Spec. 5:2-3) and a
second plurality of automated teller machines in a second distributed
network of automated teller machines (id. at 5:6-7). A shared switch
interconnects the first and second distributed networks of automated teller
machines (id. at 5:20-24). The system collects recorded data from at least
one of the automated teller machines in the first distributed network, and
collects recorded data from at least one of the automated teller machines in
the second distributed network (id. at 6:9-10). The collected data is stored in
a data warehouse (id. at 6:19-20). A user can then query the stored collected
data to perform a real-time or near real-time analysis of the first and second
distributed networks of automated teller machines (id. at 6:20-27).

Representative Claim
13. A data warehouse operable to receive data from a network
of automated teller machines, the data warehouse comprising:
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a data store operable to hold operational data which characterizes
operations carried out by an automated teller machine in the network of
automated teller machines; and
a data processor operable to process data in the data store to
provide information in real-time or near real-time related to the
automated teller machine in the network of automated teller machines.

Prior Art
Downing 5,963,647 Oct. 5, 1999
Singer 6,178,418 Jan. 23, 2001

Examiner’s Rejections
Claims 11-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Downing and Singer.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of independent claim 13. See 37 C.F.R. §
41.37(c)(1)(vii).

ISSUE
Would a person of ordinary skill in the art at the time of invention,
faced with the need to manage large amounts of data in the automated teller
machine system of Downing, have recognized benefits in upgrading the
databases in Downing to include the data warehouse of Singer?

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FINDINGS OF FACT
1. The Examiner finds that the combination of Downing and
Singer discloses all elements required by instant claim 13 (Ans. 3-4).
Downing
2. Downing discloses a network for transferring funds (Abstract;
Fig. 2).
3. The network collects data from an ATM machine and stores the
data in a transfer initiation file (TIF) (col. 5, ll. 47-63; col. 8, l. 57 to col. 9, l.
12) that is maintained by the network switch (col. 7, ll. 44-47; Fig. 3).
4. The information in the TIF includes data that characterizes
operations carried out by an automated teller machine, such as the ATM
sender terminal id, the recipient’s name, and the amount of transfer (Fig. 4;
col. 8, l. 57 to col. 9, l. 12).
5. The TIF allows the system to maintain a record of all transfers
at a central location (e.g., Fig. 2, element 26), to facilitate transaction
processing and fraud detection (col. 9, ll. 13-21; Fig. 2).
6. For example, the network switch compares some of the
information in the TIF with information stored in a centralized Special
Designation Nationals (SDN) file (col. 6, ll. 53-58; col. 11, ll. 38-44; Fig. 2
elements 26, 28; Fig. 3 element 34).
7. Based on this comparison, the network switch can decline or
approve the transaction. If declined, the ATM terminal displays an
explanatory message to the user, and the user is presented with the option of
selecting other transactions (col. 11, ll. 38-44).
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8. A person of ordinary skill in the art at the time of invention
would have recognized that transferring funds using Downing’s network
requires an extensive data and message security review and support
infrastructure to ensure that all legal, regulatory and fraud related issues are
in compliance (col. 9, ll. 36-40).
Singer
9. Singer discloses a system to support data query and retrieval in
a data warehousing environment including a plurality of data providing
computers accessible via a suitable communication network (col. 1, ll. 5-12).
10. Singer teaches that the advantages of managing large volumes
of data by computer were obvious, especially to large corporate entities (col.
1, ll. 15-19).
11. Singer teaches there were several advantages in using the
described data warehouse system and method of operation to manage large
volumes of data, such as enabling queried data to be requested by and
delivered to client computers without passing through a middle tier server
(Abstract), providing a manageable and scalable system architecture which
readily supports a variety of physical servers and query format translations
(id.), and supporting rapid access to large amounts of distributed data (col. 3,
ll. 18-22).

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PRINCIPLES OF LAW
Claim Interpretation
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re American Academy of Science Tech Center, 367 F.3d
1359, 1369 (Fed. Cir. 2004) (citations omitted). The Office must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification. Id. at 1364 (citing In re Bass, 314
F.3d 575, 577 (Fed. Cir. 2002)).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007).

ANALYSIS
Appellant contends that Singer does not mention an automated teller
machine. Appellant further contends that the Examiner has not shown any
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motivation to add the data warehouse of Singer to Downing’s network for
transferring funds. (Br. 5).
The TIF in Downing holds operational data which characterizes
operations carried out by an automated teller machine in the network of
automated teller machines (FF 3-5). Therefore, the TIF of Downing is a
“data store operable to hold operational data which characterizes operations
carried out by an automated teller machine in the network of automated
teller machines” within the meaning of claim 13. The network switch
processes data in the data store to provide information in real-time or near
real-time related to the automated teller machine in the network of
automated teller machines (see FF 6-7). Therefore, the network switch of
Downing is a “data processor operable to process data in the data store to
provide information in real-time or near real-time related to the automated
teller machine in the network of automated teller machines” within the
meaning of claim 13.
Downing therefore describes a “data warehouse” as defined by
Appellant (see Spec. 4:11-13), and as required by claim 13. Because
Downing alone discloses all that the claim requires, Appellant’s arguments
about lack of motivation to combine Downing and Singer are not persuasive.
Moreover, even assuming that the data warehouse of claim 13
requires something more than the “data store” and “data processor,” the
Examiner correctly found that the ordinary artisan would have recognized
the benefits in using a data warehouse as taught by Singer in the ATM
network of Downing. According to the Examiner, “Singer’s data warehouse
would provide storage means for the data collected” and “would allow the
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collected data to be analyzed.” (Ans. 4). We are not persuaded of error in
the Examiner’s finding of a motivation to combine the teachings of Downing
and Singer.2
The references provide more than adequate support for the
Examiner’s finding of a motivation to combine. Downing speaks to a need
for an extensive support infrastructure to manage the data used by the ATM
network when transferring funds (FF 8). Singer discloses an extensive
support infrastructure to manage data using a data warehouse (FF 9).
Benefits of managing data using Singer’s data warehouse system include
enabling queried data to be requested by and delivered to client computers
without passing through a middle tier server, providing a manageable and
scalable system architecture which readily supports a variety of physical
servers and query format translations, and supporting rapid access to large
amounts of distributed data (FF 10-11).
Moreover, managing ATM operational data as disclosed by Downing
with a data warehouse as disclosed by Singer appears to represent the
combination of familiar elements according to known methods that does no
more than yield predictable results. See KSR, 127 S. Ct. at 1739. Appellant
has provided no evidence tending to show that using a data warehouse in the
management of ATM operational data was “uniquely challenging or difficult
for one of ordinary skill in the art” (see Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at
1741)).

2 The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact. In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000).
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CONCLUSION OF LAW
A person of ordinary skill in the art at the time of invention, faced
with the need to manage large amounts of data in the automated teller
machine system of Downing, would have recognized the benefits in
upgrading the databases in Downing to include the data warehouse of
Singer.

DECISION
The Examiner’s rejection of claims 11-16 under 35 U.S.C. § 103(a) as
being unpatentable over Downing and Sing 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).

AFFIRMED

msc

MICHAEL CHAN
NCR CORPORATION
1700 SOUTH PATTERSON BLVD
DAYTON OH 45479-0001