Ex Parte Odom et al

Board of Patent Appeals and Interferences

Sep 13, 2006

09821441 (B.P.A.I. Sep. 13, 2006)

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is not binding precedent of the Board.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 PAT ODOM, TRACEY FATLAND, DOLLY GILLIAM, CHERI BARNETT,
TERRY HARBIN, L.J. SONGY and TERRY HAIR
_____________

Appeal No. 2006-1921
Application No. 09/821,441
Technology Center 3600
______________

ON BRIEF
_______________

Before OWENS, NAPPI and FETTING, 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
7 through 13, claims 1 through 6 and 14 through 33 are canceled. For the reasons stated
infra we will not sustain the examiner’s rejection of claims 7 through 13.

THE INVENTION

The invention relates to a method for processing bill payment transactions at point
of sale terminals. See pages 3 and 4 of appellants’ specification. Claim 7 is
representative of the invention and is reproduced below:

Appeal No. 2006-1921
Application No. 09/821,441

7. A method for processing an in-person bill payment at a point of sale
location, comprising:
identifying a biller for whom payment of a payment transaction is to be
received;
obtaining transaction information concerning the payment;
receiving payment for the bill;
assigning a transaction identifier to the transaction;
scanning at least one transaction document and generating at least one
electronic image therefrom;
storing each electronic image in an image memory with an image
identifier and linking the image identifier to a transaction identifier;
transmitting the transaction information to a payment server;
receiving from the payment server instructions regarding the transaction;
and
transmitting to an image server a copy of each electronic image and the
image identifier and linked transaction identifier.

THE REFERENCE
The references relied upon by the examiner are:

Vak et al. (Vak) 5,473,143 Dec. 5, 1995
Graves et al. (Graves) 5,652,802 Jul. 29, 1997

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Application No. 09/821,441

THE REJECTIONS AT ISSUE
Claims 7 through 10, 12 and 13 stand rejected under 35 U.S.C. § 102 as being
anticipated by Vak. Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Vak in view of Graves. The examiner’s rejections are set forth on
pages 4 through 6 of the answer. Throughout the opinion we make reference to the brief
and the answer for the respective details thereof.

OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation and obviousness relied upon
by the examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, appellants’ arguments set forth in the brief
along with the examiner’s rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellants and the examiner, for the reasons
stated infra we will not sustain the examiner’s rejection of claims 7 through 10, 12 and
13 under 35 U.S.C. § 102 or the examiner’s rejection of claim 11 under 35 U.S.C. § 103.
Appellants argue, on page 5 of the brief, that Vak does not teach the claimed step
of transmitting to an image server an electronic image as Vak does not teach a server
receiving the image. Appellants assert that “[a] server is generally recognized as a
computer that makes services such as access to data files, programs, and peripheral
devices, available to workstations on a network” and that contrary to the examiner’s
assertion the central processing unit (CPU) of Vak’s point of sales terminal (POS) is not
a server. Further, on page 6 of the brief, appellants argue that even if the POS terminal of
Vak were to be considered to be a server:
[N]owhere does Vak teach or suggest the method step of “transmitting to” the
POS terminal a “copy of each electronic image and the image identifier and
linked transaction identifier” required by claim 7. The electronic images of Vak
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Application No. 09/821,441

are generated within the POS terminal 12 (in camera 184) and hence are not
“transmitted to” the terminal. See figure 2 of Vak and Column 10, line 66 through
Column 11, line 4.

In response, on pages 6 and 7 of the answer, the examiner, relies on a dictionary
definition of the term “server” to determine the scope of the claim and asserts that the
microprocessor, item 120, of Vak meets the claimed server. Regarding appellants’
arguments directed to Vak not teaching transmitting image data to the server, the
examiner states that the microprocessor 120 of Vak is considered to be the server, not the
POS terminal as stated by appellants, and as such the examiner considers this limitation
to be met by the camera in the POS terminal transmitting the data to the microprocessor.
Finally the examiner states on pages 7 and 8:
[A]ssigning an image identifier to the image of the transaction and linking that
image identifier to the transaction identifier is indeed inherent to the method of
Vak et al., because doing so must necessarily occur, since without an image
identifier (for example, a filename of the stored image file) linked to the
transaction identifier, the method would not be able to work/function as disclosed
because the image could not be received/utilized.

We disagree with the examiner’s rationale. Independent claim 7 recites “scanning
at least one transaction document and generating at least one electronic image”, “storing
each electronic image in an image memory with an image identifier and linking the
image identifier to a transaction identifier” and “transmitting to an image server a copy of
each electronic image and the image identifier and linked transaction identifier.” Thus,
claim 7 requires scanning an image, storing the image with an identifier and then
transmitting the image, the image identifier and transaction identifier to an image server.
Whether the microprocessor, item 120 meets the claim limitation of a server is irrelevant,
as Vak does not teach transmission of image identifier to the microprocessor. Nor do we
consider such transmission to be inherent. As discussed by the examiner, on page 7 of
the brief, the image data is scanned by the camera 184 and stored in an image buffer 174
(see figure 2). However we find no evidence of record that the image identifier, which is
linked to the image, is transmitted to the microprocessor. The examiner has asserted that
the image identifier is inherent, even if we were to agree, the claim calls for transmitting
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Application No. 09/821,441

the image and the image identifier and the transaction identifier to the server (asserted to
be the microprocessor). The examiner has not shown this to be inherent. We find Vak’s
disclosure is silent as to an image identifier as such it is unclear whether the image data
and image identifier and transaction identifier are transmitted to the microprocessor or
whether the microprocessor generates an image identifier and transaction identifier and
links them to the image data. Thus, we find that the examiner has not shown that Vak
anticipates the limitations if independent claim 7. Accordingly, we will not sustain the
examiner’s rejection of independent claim 7 and dependent claims 8 through 10, 12 and
13 under 35 U.S.C. § 102.
Claim 11 is dependent upon claim 7. The examiner has rejected claim 11 over the
combined teachings of Vak and Graves. As noted, above Vak does not teach all of the
limitations of independent claim 7. The examiner has not asserted, nor do we find that
Graves teaches or suggests modifying Vak to include transmitting an electronic image,
and image identifier and transaction identifier to an image server as claimed in
independent claim 7. Accordingly, we will not sustain the examiner’s rejection of claim
11 under 35 U.S.C. § 103, for the reasons stated supra with respect to claim 7.

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Conclusion
In summary, we will not sustain the examiners rejection of claims 7
through 10, 12 and 13 under 35 U.S.C. § 102 or the examiner’s rejection of claim
11 under 35 U.S.C. § 103. The decision of the examiner is reversed.

REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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