Ex Parte Nielsen

Board of Patent Appeals and Interferences

Mar 27, 2009

09966027 (B.P.A.I. Mar. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL NIELSEN
____________

Appeal 2009-0493
Application 09/966,027
Technology Center 3600
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Decided: 1 March 30, 2009
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Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, 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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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 31-41. Claims 1-30 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b). (2002)

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for operating and configuring a self
service terminal (Specification 1:5-6)
Claim 31, reproduced below, is representative of the subject matter on
appeal.

31. A method of operating an ATM, comprising:
a) charging customers for services rendered by the ATM; b)
predicting a time when usage of the ATM by customers will increase,
and c) increasing charges at the ATM during said time.

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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Estes US 6,508,398 B1 Jan. 21, 2003
Mishkin The Economics of
Money, Banking, and
Financial Markets
Fifth Edition
1997
The following rejection is before us for review:
The Examiner rejected claims 31-41 under 35 U.S.C. § 103(a) as
unpatentable over Estes and Mishkin.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 31-41 on
appeal as being unpatentable under 35 U.S.C. § 103(a) over Estes in view of
Mishkin on the grounds that a person with ordinary skill in the art would
understand that pricing can be successfully increased in markets where limited
alternative resources are available?
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found:
It is a very well know concept in Economics and
Marketing that the higher the demand (in this case more
usage of ATM) the higher a price one can change. This
concept has been used for centuries - charge more for
phone calls at peak time or airline tickets or whatever is
in demand. Applying this to ATM charges is clearly
obvious. (Final, p.3.)
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2. The Examiner further found that it would be obvious to modify Estes to
increase charges at the ATM during times of predicted increased usage because
“…one would be motivated to capture the highest possible revenue.” (Final, p. 3.)
3. Estes discloses
The ATM enhancement system comprises an
enhancement processor 38 which serves as an ATM
enhancement computer. The processor 38 has its own
memory 40. The ATM core computer 16 issues
commands which are available at an ATM computer port.
Line 42 is connected to this port and to command
decoder 44. The command decoder in turn is connected
to the ATM enhancement processor 38. The ATM
enhancement processor 38 can therefor monitor and
record the transactions. (Estes, col. 2, ll. 28-37 )

4. Estes discloses that monitoring of ATM enhancement processor 38 results
in
…the daily activity and the type of transactions, but not
the individual transactions, can be downloaded to the
remote enhancement host 68. In this way, a remote
operator of the automatic teller machine can keep track of
the activity and thus the usefulness of a particular
machine or its installation location. (Estes, col.3, ll. 14-19
5. Webster’s Colligate Dictionary Tenth Edition defines “usefulness” as
capable of being put to use: esp serviceable for and end or purpose.

6. The Specification describes increasing ATM fees when demand is more
inelastic than normal in that:

…the price of performing certain transactions on an
ATM using an ATM may be increased for a time period
spanning an hour before and an hour after a football
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match occurring in a stadium close to the ATM.
Similarly, it may be desirable to increase charging levels
on a wet day since a customer having taken trouble to
approach an ATM on such a day will probably have a
greater need of the transaction than a customer who
happens to be passing on a dry day.
(Specification 8:6-10).
7. The Examiner took official notice “…that it is well know to one of
ordinary skill in the art at the time of the invention that a public event will mean
more people and more people will mean more potential ATM users.” (Final p.3)
8. The Examiner found that “ATM send (sic) performance data to a server
for every transaction including type and time of occurrence. (see Estes, column 1,
line 46 "monitor"& column 2, line 25-58, "monitor.. the transactions") (Answer,
p.4).
9. Estes discloses that:
In order to control and update the information supplied
the monitor and printer, as well as read the performance
of the ATM enhancement processor 38, modem 64 is
connected to the processor 38. The modem is connected
through line 66 to a remote enhancement host 68. The
modem enhancement host 68 can update the performance
of the ATM enhancement processor 38 as well as read its
performance. (Estes, col.3, ll. 5-11.)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
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person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). 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, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
We affirm the rejection of claims 31-41.
Claim 31
Appellant argues that the recording and monitoring functions of the ATM
enhancement processor 38 does not equate to “predicting” because “‘predicting’
refers to a future event, namely, the ‘time when usage…will increase[]’” whereas,
“… ‘monitoring’ and ‘recording’ in the Estes-passage refer to a current event, or
possibly a recent past event, namely, the ‘transaction.’” (Reply Br. 3.)
We disagree with Appellant. Estes in addition to disclosing recording
transactional data, also discloses using this data to keep track of the activity at the
machine (FF 4) to thus evaluate the usefulness of a particular machine. Further,
according to Estes, the data is evaluated to determine if the machine is useful at a
given location (FF 4). In determining if the involved machine has usefulness, by
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definition, the future serviceability of the machine at a given location is considered
(FF 5). Thus, contrary to Appellant’s position, Estes discloses evaluating the
recorded transaction to determine the future serviceability of a given machine.
With is in mind, we conclude that a person with ordinary skill in the art
would know that in evaluating a machine’s usefulness at a given location, such as
disclosed by Estes, one would correlate time and use to arrive at a usefullness
determination. In such a process, one would need to predict that the historic usage
of the machine will continue similarly in the future. We thus conclude that it is not
beyond the knowledge of a person with ordinary skill in the art to use the same
historic data to predict peak usages of the machine as part of a usefullness
determination. See KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)
(In making the obviousness determination one “can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ”).
Appellant next argues that the Examiner wrongly asserts that Mishkin
shows that an increase in charges captures the highest possible revenue. Appellant
points out that Mishkin teaches precisely the opposite. (Appeal Br. 9.)
Specifically, Appellant maintains that Figure 1 in Mishkin teaches increased
pricing equals lower demand. (Appeal Br. 9.) We accept this. But, what
Appellant’s argument fails to discuss is that the Specification describes such
periods where ATM fees increase is tied to when demand is more inelastic than
normal, such as when someone is ready to enter a stadium event an hour before the
start (FF 6) and needs cash to buy a ticket, or to buy items from a roving vendor
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once inside. Such inelasticity in market conditions does not appear to be the case
in Figure 1 of Mishkin where market equilibrium is allowed to occur.
We find however that the Examiner alternatively presented inelastic market
demand situations as evidence of how pricing can be successfully increased for
certain products, such as with phone calls and airline travel (FF 1). In such cases,
as with most common carriers, there is a limited or fixed resource which allows
such pricing practices to be successful. We thus agree with the Examiner, and
conclude that a person with ordinary skill in the art would know that when a
customer cannot use alternative markets as a source to purchase the same item,
such as with an airline which has only a limited number of seats, pricing at the
instant market can be increased, within reason, because the user has no where else
to go. The application of common sense may control the combining of references.
Common sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit
the teachings of multiple patents together like pieces of a
puzzle.
KSR, 127 S. Ct. at 1742.
Appellant’s response to the Examiner’s airline fare example is that “[o]ne
reason is that it seems clear that the highest charges for telephones/airlines occur
during the weekdays, because that is the time when businesses utilize those
services most. The telephone/airline companies reduce the charges on weekends,
in order to attract customers when business is slack.” (Appeal Br. 11-13.) We
disagree with Appellant because as Appellant admits, the market bears the
weekday price increases irrespective of those of the weekend because the
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consumer, like those who an hour before a sports event, need the service to do
business or to gain entrance into the arena.
Appellant next argues that because some banks do not charge ATM fees for
their own customers, they do not seek to capture the highest possible revenue
(FF 12). In light of the breadth of the claim, the Appellant’s argument is not
persuasive as to error in the rejection because claim 31 does not distinguish
between customer and non-customer, it merely states increasing charges at the
ATM during said time.
Appellant argues that pages 3 and 4 of the Final Office action “…in essence,
reduces the invention to a "gist," and then rejects the invention thusly
characterized. That is not allowed.” (Appeal Br. 14.) We have read the
Examiner’s reasoning and conclude that, style aside, we find (FF 1,2) that the
Examiner has provided some articulated reasoning with some rational
underpinning for why a person with ordinary skill in the art would modify Estes to
increase prices at predicted heightened usage times, enough to establish a prima
facie case.
Claim 32
Claim 32 recites wherein the time coincides with public events occurring
near the ATM. Appellant seeks citation of evidence because “[o]ne reason is that it
is not clear what, exactly, is being Noticed,….”(Appeal Br. 16) First, Appellant’s
objection fails for either of two reasons. First, the Appellant has not specifically
pointed out the supposed errors in the Examiner's taking of Official Notice,
“includ[ing] stating why the noticed fact is not considered to be common
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knowledge or well-known in the art. See 37 CFR § 1.111(b).” MPEP §
2144.03(C). An adequate traverse must contain adequate information or argument
to create on its face a reasonable doubt regarding the circumstances justifying
Examiner's notice of what is well known to one of ordinary skill in the art. In re
Boon, 439 F.2d 724, 728 (CCPA 1971). That has not been done here.
The Examiner found “…that it is well know to one of ordinary skill in the art
at the time of the invention that a public event will mean more people and more
people will mean more potential ATM users.” (FF 7) It is clear from the
Examiner’s statement that the Notice is directed to people using the ATM in
conjunction with public events.
In our view, the Examiner judicially applied assertions that certain facts are
well known or common knowledge in the art by providing a technical line of
reasoning underlying the determination of obviousness that is clear and
unmistakable. MPEP § 2144.03(B) and (E). We therefore credit the Official
Notice of the Examiner with respect to the above listed facts. Appellant has not
provided any evidence to rebut these findings by the Examiner. Hence, we find no
error in the Examiner’s use of Official Notice as cited above.
Second, and additionally, Appellant raises this objection in the first instance
in their Appeal Brief when the case is under the jurisdiction of the Board. This
does not constitute seasonably traverse a well-known statement during
examination. See In re Chevenard, 139 F.2d 711 (CCPA 1943).
Appellant’s next challenge the Official Notice stating that even if accepted,
the Official Notice fails because “[t]he mere presence of a public event near an
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ATM does not imply that the ATM has raised charges at that time.” (Appeal Br.
16.) That argument is not well taken because the Appellant is attacking the
Official Notice individually when the rejection is based on a combination of Estes,
Official Notice and the Examiner’s finding of like increases with fares on air
travel. See In re Keller, 642 F.2d 413, 426, (CCPA 1981); In re Young, 403 F.2d
754, 757-58 (CCPA 1968).
Claims 33 and 37
Claim 33 recites impertinent part, wherein the ATM sends performance data
to a server which data indicate, for each individual transaction executed by the
ATM, the type of transaction and the time of occurrence of the transaction.
Appellant argues that Estes fails to show performance data (Appeal Br. 17).
We disagree with Appellant. As discussed above with respect to claim 31, Estes in
addition to disclosing recording transactional data, discloses using this data to keep
track of the activity at the machine (FF 4), and to thus evaluate the usefulness of a
particular machine or its installation location. Such an evaluation in our view
involves the use of performance data, e.g., the transaction records leading to a
determination of usefulness of the machine.
Appellant next argues that because Estes discloses reporting “…the daily
activity and the type of transactions, but not the individual transactions…” claim
33 distinguishes over it because it requires individual transactions (Appeal Br. 18).
While Estes discloses excluding reporting of individual transactions, we do not see
this as determinative under an obviousness standard because extraction of a
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particular type of data from raw data is merely a selection process governed by
system design. See, In re Hopkins, 342 F2d 1010, 1015 (CCPA 1965).
Claim 34
Claim 34 recites wherein the ATM responds to commands received from the
server and for altering the operation of the ATM. Appellant argues that the modem
line referred to by the Examiner in response to this claim feature does not show the
subject matter of claim 34 (Appeal Br. 19). We disagree with Appellant. We find
that Estes (FF 9) discloses that the modem allows a remote enhancement host or
server to communicate with the ATM processor 38 in order to update the
performance of the ATM enhancement processor 38 as well as read its
performance.
Claim 35
Claim 35 states in pertinent part: a) transmitting performance data from the
ATM over a network to a server, which data is representative of the occurrence of
operations carried out by the ATM; and b) analyzing the data to determine volume
of transactions at particular times of the ATM.
Appellant argues that Estes “… fails to show the "transmitting" and
"analyzing" of the "transaction," as claimed.” (Appeal Br. 20.) We disagree with
Appellant. As discussed above with respect to claim 31, Estes in addition to
disclosing recording transactional data, further discloses using this data to keep
track of the activity at the machine, and to thus analyze the useful of a particular
machine using transaction data.

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Claim 36
Claim 36 recites wherein the performance data is representative of customer
usage of the terminal. Appellant argues that Estes fails to teach performance data
(Appeal Br. 21). We disagree with Appellant. As discussed above with respect to
claims 33 and 34, we find that Estes discloses performance data (claim 33) which
is transmitted via modem to a server (claim 34). In light of the breadth of the
claim, the Appellant’s argument is not persuasive as to error in the rejection.
Claim 38
Claim 38 recites wherein said time is predicted by analyzing historical data
representing usage of the ATM over a predetermined period of time. As to claim
38 and claims 39-41 Appellant argues that Estes fails to disclose “historical data”
(Appeal Br. 22). We disagree with Appellant. Estes specifically discloses
downloading “daily activity” data (FF 4), which, even if such downloads occur at
the end of each day, the data is historical in the sense that it reflects transactions
occurring earlier in time. Appellant also argues Estes does not analyze, but for the
reasons given above for claims 31, 33 and 35, Estes discloses an analysis of the
daily transaction data to determine the usefulness of the machine at a given
location (FF 4).
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CONCLUSIONS OF LAW

We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 31-41 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 31-41 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

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LV:

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