Ex Parte Ogino

Board of Patent Appeals and Interferences

Aug 3, 2007

09966540 (B.P.A.I. Aug. 3, 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for publication and is not binding precedent of the Board.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 HIROSHI OGINO
__________

Appeal No. 2007-1672
Application No. 09/966,540
Technology Center 3600
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Decided: August 3, 2007
__________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
STUART S. LEVY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from a decision of the Examiner rejecting claims 1-
29. 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

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The Examiner has finally rejected
• Claims 7-13 and 15-17 under 35 U.S.C. § 112, second paragraph.
• Claims 1-4, 6-11, 13, 14, and 26 under 35 U.S.C. § 102(e) over
Buckley (US 6,446,871).
• Claims 5 and 12 under under 35 U.S.C. § 103(a) over Buckley in view
of Ausems (US 6,434,403).
• Claims 15, 17, 18, 20-25, 27, and 29 under 35 U.S.C. § 103(a) over
Buckley in view of Walker (US 6,163,771).
• Claims 16, 19, and 28 under 35 U.S.C. § 103(a) over Buckley and
Walker in view of Peckover (US 6,119,101).
We AFFIRM.
The claims set forth Appellant’s invention which relates to a
transaction device comprising a sensor module for receiving product
identification through a product tag and a communication module to transmit
the product identification and device identifier associated with the
transaction device to a product server through a privacy server. The privacy
server conceals the identity of the user of the transaction device
(Specification 5:[0016]-[0017]).
We have carefully reviewed the record. 1

Claims 7-13 under 35 U.S.C. § 112, second paragraph.
The claim at issue is claim 7:

1 The record includes Appellants’ Appeal Brief, filed Mar. 9, 2006, the
Examiner's Answer, mailed Jun. 14, 2006, and Appellants’ Reply Brief, filed
Aug. 17, 2006.

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7. An electronic transaction device comprising:
a sensor module configured to receive a product identification
for a product through a product tag associated with the product;
a wireless module configured to transmit through a privacy
system, the privacy system comprising a secure mechanism for
correlating an identifier of the electronic transaction device with a
user authorized to use the electronic transaction device; and a
communication module configured to communicate the transaction
device identifier and the product identification through the wireless
module and the privacy system to perform a transaction for the
product without providing an identification of a user of the transaction
device.

A. ISSUE
The issue is whether the Examiner has made out a prima facie case
that claim 7 does not comply with the second paragraph of 35 U.S.C. § 112
for being indefinite.

B. FINDING OF FACTS
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The Examiner explains the basis for the rejection as follows:
“Claim 7 recites, a 'privacy system comprising a secure mechanism'
…” However, claim 7 is dedicated to a transaction device that does
not comprise or contain a ‘privacy system.’”
(Answer 5).
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2. The Examiner argues that “Appellant describes the device as a
‘privacy system that interacts with the claimed electronic transaction device’
(Remarks, 11-16-04, page 8). However, this description of the transaction
device clearly contradicts the device as it appears in Appellant’s
Specification (Specification, figure 5 and page/paragraphs 11/39-13/44)”
(Answer 4 and 10).

C. PRINCIPLE OF LAW
The test for compliance with the second paragraph of 35 U.S.C. §112
is whether the claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in light of the
application disclosure as they would be interpreted by one of ordinary skill
in the art. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971).

D. ANALYSIS
As best we understand it, the Examiner is arguing that while the body
of the claim calls for a combination of transaction device and privacy
system, the preamble directs the claim to the device alone. The Examiner
appears to find the claim is internally inconsistent. We disagree.
The claim is drawn to a transaction device. The preamble clearly
states that it is directed to “[a]n electronic transaction device comprising.”
This is followed by the three elements that comprise the device: a sensor
module, a wireless module, a communication module. The body of the
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claims clearly states that the wireless module is “configured to transmit
through a privacy system, the privacy system comprising a secure
mechanism for correlating an identifier of the electronic transaction device
with a user authorized to use the electronic transaction device.”
Accordingly, the claimed device interacts with the security system, it does
not include it.
We are satisfied that claim 7 sets out and circumscribes a particular
area with a reasonable degree of precision and particularity when read in
light of the application disclosure as it would be interpreted by one of
ordinary skill in the art.

E. CONCLUSION OF LAW
For the foregoing reason, we reverse the rejection of claims 7-13
under 35 U.S.C. § 112, second paragraph.

Claims 1-4, 6-11, 13, 14, and 26 under 35 U.S.C. § 102(e) over Buckley.
Appellant states that the claims stand or fall together, with claim 1
being representative (Appeal Br. 3). Claim 1 reads as follows:
1. A transaction device comprising:
a sensor module configured to receive a product identification for a
product through a product tag; and
a communication module configured to transmit the product
identification and a device identifier associated with the transaction
device to a product server through a privacy server to obtain product
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information from the product server without providing an identification
of a user of the transaction device.

A. ISSUE
The issue is whether Appellant has shown error in the rejection.

B. FINDING OF FACTS
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The Examiner found that
… Buckley et al. clearly disclose a transaction device (figure 3E;
column/line 4/48-5/8) comprising a sensor module (e.g. barcode
reader) (column 5, lines 9-37; column 6, lines 12-19) and a
communication module (figures 4 and 5), that are configured to
receive (e.g. product information) (figure 9; column 8, lines 27-44)
and transmit data to servers (figures 4, 5, 8 and 9; column 9, lines 8-
64 or inherently DNS, caching, and/or proxy servers), respectively.
The device also receives data from servers based on the product
identification (figures 4, 5, 8 and 9; column 10, lines 14-65), makes
requests to purchase a product without providing an identifier of the
user (column/line 5/62-6/13), stores retrieved product data (figure 9;
column 10, lines 7-39; column/line 10/55-11/26).
(Answer 6).
2. Appellant did not dispute the Examiner’s characterization of what
Buckley discloses.
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3. Appellant argued that “Buckley is completely silent on whether or not
the user’s identity is revealed during the request” (Appeal Br. 4).
4. The Examiner did not dispute that Buckley does not explicitly
mention not revealing the user’s identity. The Examiner responded as
follows:
… Appellant asserts that Buckley et al. do not teach obtaining
product information from the product server without providing an
identification of a user of the transaction device. Buckley et al.
disclose an interactive data transfer system comprising a pen, a data
well, and a remote computer ('871, abstract; figures 2A, 3A-C and 4).
Specifically, Buckley et al. teach a user scanning a barcode with a pen
and storing the scanned barcode in pen memory ('871, column 6, lines
13-18). When the pen is ready to send the scanned barcodes over the
internet ('871, figure 4), the pen interfaces with a data well and
downloads the barcodes to the well ('871; figures 3A-E; column 6,
lines 58-67) which sends the barcodes to a computer ('871, figure 3A)
for transfer to a remote internet server ('871, figure 4). For example,
Buckley et al. apply teach scanning a product identifier (e.g.
encyclopedia, newspaper, or item barcode) to obtain product
information (e.g. encyclopedia information, ads, catalog website for
placing an order for an item) ('871, figures 4, 5, and 9; column 9, lines
8-25; column 11, lines 45-50; column 12, lines 37-51). In each
instance, the information conveyed from the pen to the data well to
the computer to the internet server is the only barcode, hence Buckley
et al. explicitly teach obtaining product information from a product
server through a privacy server ('871, figure 5) without providing an
identification of a user of the transaction device (i.e. pen and data
well).
(Answer 11-12).

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C. PRINCIPLE OF LAW
“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., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987).

D. ANALYSIS
The issue is whether Buckley teaches the claimed communication
module, i.e.,
a communication module configured to transmit the product
identification and a device identifier associated with the transaction
device to a product server through a privacy server to obtain product
information from the product server without providing an
identification of a user of the transaction device.
(Claim 1). Appellant did not argue that Buckley teaches a communication
module configured to transmit product identification and a device identifier
associated with the transaction device to a product server through a privacy
server to obtain product information from the product server. Rather,
Appellant argued that Buckley’s module does not teach a communication
module configured to transmit the information “without providing an
identification of a user of the transaction device.”
There is no dispute that Buckley does not disclose a communication
module configured to provide the identification of a user. In fact, there is no
mention of providing the identification of a user anywhere in the reference.
On the other hand, Buckley does not expressly teach a communication
module configured not to provide the identification of a user. We agree with
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Appellant that the Examiner is taking the position that Buckley inherently
teaches a communication module configured not to provide the identification
of a user. In that regard, when a reference is silent about an asserted
inherent characteristic, it must be clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991). However, we find the Examiner has provided a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of
Buckley and that it would be so recognized by persons of ordinary skill. See
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990).
As the Examiner has argued (FF 1 and 4), Buckley discloses an
interactive data transfer system comprising a pen, a data well, and a remote
computer and teaches obtaining product information from a product server
through a privacy server (see Fig. 5). There is no indication that
identification of a user of the transaction device (i.e., pen and data well)
must or would be provided. One of ordinary skill would use the Buckley
system without any expectation of having to provide his/her identification.
One of ordinary skill would use the Buckley system in the manner described
and the most efficient way of doing that would be to do it as described in the
reference, which is without adding an additional step of providing his/her
identification. We see no reason why one of ordinary skill using the
Buckley device would include a step of providing identification when one of
ordinary skill would have no reason to do so. We find that the normal
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operation of the Buckley system, as it would be understood by persons of
ordinary skill reading the Buckley patent, reasonably supports the
determination that the absence of a step to provide his/her identification
necessarily flows from the teachings of Buckley and that it would be so
recognized by persons of ordinary skill. Accordingly, we find that the
Buckley device is inherently configured to transmit the information “without
providing an identification of a user of the transaction device.” We find that
there are no differences between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field of the
invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Accordingly, in our view, the Examiner has made out a prima facie
case of anticipation for the claimed subject matter over Buckley. Since the
Examiner has established a prima facie case of anticipation based on
inherency, the burden shifts to the Appellant to prove that the subject matter
shown to be in the prior art does not possess the characteristics of the
claimed invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138
(Fed. Cir. 1986). In that regard, Appellant has not shown that one of
ordinary skill would not read Buckley as disclosing a transaction device
comprising a communication module configured not to provide the
identification of a user.

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E. CONCLUSION OF LAW
For the foregoing reasons, we affirm the rejection of claims 1-4, 6-11,
13, 14, and 26 under 35 U.S.C. § 102(e) over Buckley.
Claims 5 and 12 under 35 U.S.C. § 103(a) over Buckley in view of Ausems.
Claims 15, 17, 18, 20-25, 27, and 29 under 35 U.S.C. § 103(a) over Buckley
in view of Walker.
Claims 16, 19, and 28 under 35 U.S.C. § 103(a) over Buckley and Walker in
view of Peckover.
The Appeal Brief addresses these rejections but argues in support of
the patentability of claims 5, 12, 15-25, 27- and 29 for the same reason used
in support of the patentability of claims 1-4, 6-11, 13, 14, and 26, namely
that the prior art fails to show a device which does not reveal the user’s
identity (Appeal Br. 4-5). Since we have found that Appellant has failed to
show that the Examiner erred in rejecting claims 1-4, 6-11, 13, 14, and 26
under 35 U.S.C. §102(e) over Buckley on the ground that Appellant did not
show that one of ordinary skill would not read Buckley as disclosing a
transaction device comprising a communication module configured not to
provide the identification of a user, we likewise find that Appellant has
failed to show that the Examiner erred in rejecting claims 5 and 12; 15, 17,
18, 20-25, 27, and 29; and, 16, 19, and 28, under 35 U.S.C. § 103(a) over
Buckley in view of Ausems, Walker and Peckover, respectively.
No other arguments having been made, we affirm the rejections under
35 U.S.C. § 103(a).

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DECISION
The decision of the Examiner to reject claims 7-13 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The decision of the Examiner to reject claims 1-4, 6-11, 13, 14, and
26 under 35 U.S.C. § 102(e) over Buckley, claims 5 and 12 under 35 U.S.C.
§ 103(a) over Buckley in view of Ausems, and claims 15, 17, 18, 20-25, 27,
and 29 under 35 U.S.C. § 103(a) over Buckley in view of Walker, and
claims 16, 19, and 28 under 35 U.S.C. § 103(a) over Buckley and Walker in
view of Peckover 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)(1)(iv).
AFFIRMED

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