Ex Parte Pitroda

Board of Patent Appeals and Interferences

Sep 20, 2004

09265451 (B.P.A.I. Sep. 20, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SATYAN G. PITRODA
__________
Appeal No. 2004-0297
Application No. 09/265,451
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Satyan G. Pitroda appeals from the final rejection (Paper
No. 23) of claims 48 through 82, all of the claims pending in the
application.
THE INVENTION
The invention relates to “a universal electronic transaction
card (‘UET card’) for storing, transmitting and receiving
personal, accounting and transactional information”
Appeal No. 2004-0297
Application No. 09/265,451
2
(specification, page 1). Representative claim 48 reads as
follows:
48. A pocket-sized device for storing, transmitting, and
receiving information, including personal information for a user
of the pocket-sized device, account information for accounts with
service institutions in which the user has an account, and
transactional information for account with service institutions
in which the user has an account, for a plurality of service
institutions, comprising:
a. a housing, adapted to fit in a pocket or purse;
b. a processor, enclosed in the housing, the processor
adapted to process personal information, account information and
transactional information;
c. a touch-sensitive display, supported by the housing and
coupled to the processor;
d. a memory, enclosed in the housing and coupled to the
processor, the memory adapted to store personal information,
account information, and transactional information, including a
plurality of transaction records; and
e. a communication circuit enclosed in the housing and
coupled to the processor, the processor being adapted to conduct
electronic transactions for a plurality of accounts via the
communication circuit.
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Tamada et al. (Tamada) 5,017,766 May 21, 1991
Danielson et al. (Danielson) 5,227,614 Jul. 13, 1993
Nemirofsky 5,953,047 Sep. 14, 1999
Germain Re. 36,346 Oct. 19, 1999
Hale et al. (Hale) WO 86/03869 Jul. 3, 1986

Appeal No. 2004-0297
Application No. 09/265,451
3
THE REJECTIONS
Claims 48, 50 through 63, 66 through 72 and 74 through 82
stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Tamada in view of Danielson and Hale.
Claims 49 and 73 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tamada in view of Danielson and
Nemirofsky.
Claims 64 and 65 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tamada in view of Danielson and Germain.
Attention is directed to the main and reply briefs (Paper
Nos. 29 and 32) and to the final rejection and answer (Paper Nos.
23 and 30) for the respective positions of the appellant and the
examiner regarding the merits of these rejections.
DISCUSSION
I. The 35 U.S.C. § 103(a) rejection of claims 48, 50 through 63,
66 through 72 and 74 through 82 as being unpatentable over Tamada
in view of Danielson and Hale
Tamada, the examiner’s primary reference, discloses a multi-
functional IC card which can be used as a credit card, a cash
card, or the like. The following passage from the reference
Appeal No. 2004-0297
Application No. 09/265,451
4
describes the external features and internal circuitry of the
card:
FIG. 1 shows the outer appearance of a
multifunctional IC card used, for instance, as a credit
card, and being an example of a portable electronic
apparatus according to the present invention. This IC
card is designed such that it can be used both in on-
line and off-line modes. For example, the IC card has a
transaction function by means of which it can perform
transactions in relation to a plurality of accounts
(available as, e.g., a plurality of types of credit card
and cash card), a time-piece function for displaying
time-related data including the date and the time, a
calculation function capable of executing at least four
operations; and an electronic notebook function for
storing and reading out addresses, names, phone numbers,
and the like.
FIG. 1 shows card main body 1 which can be
constituted by, for example, a thin plastic board of
rectangular shape. Card main body 1 includes contact
section 3, which is electrically connected to integrated
circuit (IC) 2 buried in main body 1, for electrically
communicating with a terminal device (not shown) in the
on-line mode, liquid crystal display section 4 for
displaying input/output data, time-related data, and the
like, and keyboard 5, all of these units being arranged
at predetermined positions on the front surface of main
body 1. Card main body 1 additionally contains battery
6 for supplying a power source voltage.
Keyboard 5 includes account keys 7, 8, 9, and 10
for designating an account; numeric keys 11; addition
key 12, subtraction key 13, division key 14, and
multiplication key 15, these being the four-operation
keys; decimal key 16; equal key 17; and the like.
Account key 7 designates a first operation
(processing) for a first account (e.g., account data of
a first credit company), account key 8 designates a
second operation for a second account (e.g., account
data of a second credit company), account key 9
designates a third operation for a third account (e.g.,
account data of a first bank), and account key 10
Appeal No. 2004-0297
Application No. 09/265,451
5
designates a fourth operation for a fourth account
(e.g., account data for a second bank).
Addition key 12 is used as a "next" key for
advancing the display state of liquid crystal display
section 4, and for mode-selection; subtraction key 13 is
used as a "back" key for restoring display section 4 to
its previous display state; and equal key 17 serves a
dual purpose, being the used as "yes" key and also as
the initialization key (power-on key).
Embossed data (not shown) is formed at a
predetermined position of the rear surface of card main
body 1 as card holder data.
FIG. 2 shows a circuit arrangement of the
integrated circuit shown in FIG. 1. Communication
control circuit 21, reset control circuit 22, and power
source control circuit 23 are connected to contact
section 3. In addition, battery check circuit 24 for
checking whether the voltage of battery 6 is more than a
predetermined value or not is connected to power source
control circuit 23. Internal bus 38 is connected to
program memory 28 for storing a control program, working
memory 29 used for arithmetic operations, data memory 30
consisting of a nonvolatile memory such as an EEPROM for
storing transaction data, timer circuit 31 used when
time is counted during program execution, and timer
circuit section 32 for generating time-piece data
including time data and date data. This timer circuit
section 32 includes timer circuits 322 and 323, and
frequency divider 311. Oscillator 33 having a frequency
of 32.768 kHz is connected to timer circuit section 32.
Display section 4 is connected to internal bus 38
through display control circuit 34 and display driver
35. Keyboard 5 is also connected to internal bus 38
through keyboard interface 36. In addition,
confirmation data generating circuit 37 for generating
the confirmation data of the input transaction data
using key data based on DES (Data Encryption Standard)
and CPU (Central Processing Unit) 27 for controlling the
entire circuit shown in FIG. 2 are connected to internal
bus 38.
Communication control circuit 21 is operated in the
on-line mode. More specifically, serial data supplied
from the terminal equipment (not shown) through contact
section 3 is converted into parallel data and output to
Appeal No. 2004-0297
Application No. 09/265,451
6
data bus 38. Otherwise, parallel data supplied from
data bus 38 is converted into serial data and output to
the terminal equipment through contact section 3 [column
2, line 31, through column 3, line 47].
Danielson discloses a pocket-size computer processing system
which includes, among other features, a touch sensitive display
(see, for example, element 17 in Figure 2).
Hale discloses a pocket-size personal terminal for
performing a variety of financial and other transactions on-line.
The terminal possesses the capability of generating a “review
history trail” which displays a record of earlier transactions
(see page 9 and Figure 5).
The manner in which the examiner applies Tamada, Danielson
and Hale to reject claims 48, 50 through 63, 66 through 72 and 74
through 82 appears in the final rejection and answer, while the
appellant’s position to the contrary appears in the briefs. As
the appellant’s arguments frame the issues for review, we shall
evaluate the rejection of each of the contested claims in the
order argued in the main brief.
Claim 48
The appellant submits that the rejection of claim 48 is
unsound because (1) Tamada relates to conventional transactions
involving paper slips rather than electronic transactions of the
Appeal No. 2004-0297
Application No. 09/265,451
1 The appellant’s specification defines “transactional
information” as
includ[ing] information relating to one or more
individual financial transactions, such as credit card
transactions, medical treatment payments, insurance
payments, and the like. The transaction information
includes various transaction details that may appear on
a paper receipt for any given financial transaction,
such as a subtotal, a tip, if any, a transaction total,
the date and place of the transaction, and the user’s
signature [page 5].
7
sort required by the claim, (2) Tamada and Hale fail to teach a
memory adapted to store “transactional information” comprising a
plurality of transaction records as disclosed1 and claimed, and
(3) the references do not establish any motivation or suggestion
to combine them in the manner proposed. Given the scope of claim
48 and the fair teachings of the references, these arguments are
not persuasive.
Although Tamada does disclose an off-line mode of operation
involving the use of paper slips, this reference clearly teaches
an alternative on-line mode of operation which would have
suggested electronic transactions as defined in claim 48. Any
lack of specificity on Tamada’s part in describing the on-line
mode is more than compensated for by Hale’s disclosure of
electronic transactions. Hale also clearly suggests a memory
adapted to store transactional information comprising a plurality
Appeal No. 2004-0297
Application No. 09/265,451
2 Words which are defined in the specification must be given
the same meaning when used in a claim. McGill, Inc. v. John Zink
Co., 736 F.2d 666, 674, 221 USPQ 944, 949 (Fed. Cir.), cert.
denied, 469 U.S. 1037 (1984).
8
of transaction records as defined in the appellant’s
specification2 and recited in claim 48. The definition of the
term “transactional information” in the appellant’s specification
(see n.1, supra) is so broad and open-ended that it comprehends
the review history trail records taught by Hale. Finally, the
self-evident advantages and conveniences afforded by the
electronic transactions disclosed by Tamada and Hale, the memory
for storing transaction records taught by Hale, and the touch
sensitive display disclosed by Danielson would have provide the
artisan with ample suggestion or motivation to utilize these
features in the pocket-sized device disclosed by Tamada.
Accordingly, we shall sustain the standing 35 U.S.C. § 103(a)
rejection of claim 48 as being unpatentable over Tamada in view
of Hale and Danielson.
Claims 53 and 54
Claim 53 depends from claim 48 and requires the
transactional information which the memory is adapted to store to
include a plurality of images corresponding to receipts of
transactions. Claim 54 depends from claim 48 and requires the
Appeal No. 2004-0297
Application No. 09/265,451
9
account information which the memory is adapted to store to
include a plurality of images of replicas of cards. As the
applied references, including the portions of Tamada referred to
by the examiner, do not teach, and would not have suggested, a
device having these characteristics, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of claims 53 and 54 as
being unpatentable over Tamada in view of Danielson and Hale.
Claim 77
Claim 77 depends from claim 48 and requires at least one of
the transaction records to comprise a receipt. As indicated
above, Hale would have suggested providing the Tamada device with
a memory adapted to store transaction records such as those
embodied by the history trail depicted in Hale’s Figure 5. At
least some of the individual records shown in Figure 5 (see 26-1,
26-3, 26-4), which display the transaction date, vendor and
purchase price, constitute receipts as broadly recited in claim
77. The appellant’s argument to the contrary rests on an
improper reading of limitations from the specification into the
claim. Thus, we shall sustain the standing 35 U.S.C. § 103(a)
rejection of claim 77 as being unpatentable over Tamada in view
of Danielson and Hale.
Appeal No. 2004-0297
Application No. 09/265,451
10
Claim 78
Claim 78 depends from claim 77 and requires the receipt to
include a user authorization. Since the applied references,
including the portions of Hale specified by the examiner, do not
teach, and would not have suggested, this subject matter, we
shall not sustain the standing 35 U.S.C. § 103(a) rejection of
claim 78 as being unpatentable over Tamada in view of Danielson
and Hale.
Claim 71
Claim 71 is an independent claim which recites a pocket-
sized device similar to that recited in independent claim 48.
The appellant contends that the rejection of this claim is
unsound because the applied references, and particularly Tamada,
do not teach or suggest a device meeting the limitation in the
claim requiring a communication circuit adapted to conduct
electronic transactions with a merchant. For the reasons
discussed above in connection with claim 48, such argument is not
convincing. Therefore, we shall sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 71 as being unpatentable over Tamada
in view of Danielson and Hale.
Appeal No. 2004-0297
Application No. 09/265,451
11
Claim 81
Claim 81 depends from claim 71 and requires at least one of
the transaction records to comprise a receipt. For the reasons
discussed above in connection with claim 77, we shall sustain the
standing 35 U.S.C. § 103(a) rejection of claim 81 as being
unpatentable over Tamada in view of Danielson and Hale.
Claim 58
Claim 58 is an independent claim which recites a method of
using a pocket-sized device of the sort at issue. The appellant
contends that the rejection thereof is unsound because the
applied references, and particularly Tamada, do not meet the
limitation requiring the step of sending and receiving
information including transaction information including at least
one transaction record between the device and service
institutions. For the reasons discussed above in connection with
claim 48, this argument is not persuasive. Hence, we shall
sustain the standing 35 U.S.C. § 103(a) rejection of claim 58 as
being unpatentable over Tamada in view of Danielson and Hale.
Claim 79
Claim 79 depends from claim 58 and requires the transaction
record to comprise a receipt. For the reasons discussed above in
connection with claim 77, we shall sustain the standing 35 U.S.C.
Appeal No. 2004-0297
Application No. 09/265,451
12
§ 103(a) rejection of claim 79 as being unpatentable over Tamada
in view of Danielson and Hale.
Claims 63 and 66
Claim 63 is an independent claim which recites a method of
using a pocket-sized device of the type in question. The method
requires the step of transmitting account information from the
device to a point of sale terminal via the display of the device.
Because the applied references, including the portion of Tamada
pointed to by the examiner, do not teach, and would not have
suggested, a method having this step, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of claim 63, and dependent
claim 66, as being unpatentable over Tamada in view of Danielson
and Hale.
Claim 67
Claim 67 is an independent claim which recites a method of
conducting a credit card transaction. The appellant contends
that the rejection thereof is unsound because the applied
references do not teach, and would not have suggested, a method
meeting the limitations in the claim requiring the steps of
establishing an electronic communication between a universal
electronic transaction card and a point of sale transaction
system and transmitting a transaction record for a credit
Appeal No. 2004-0297
Application No. 09/265,451
13
transaction to the universal electronic transaction card. For
the reasons discussed above in connection with claim 48, this
argument is not persuasive. Accordingly, we shall sustain the
standing 35 U.S.C. § 103(a) rejection of claim 67 as being
unpatentable over Tamada in view of Danielson and Hale.
Claim 68
Claim 68 depends from claim 67 and requires the step of
storing transactional information for a credit transaction in the
universal electronic transaction card. For the reasons discussed
above in connection with claim 48, this argument is not
convincing. Therefore, we shall sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 68 as being unpatentable over Tamada
in view of Danielson and Hale.
Claims 69 and 70
Claim 69 depends from claim 67 and requires a step of
establishing an electronic communication between the universal
electronic transaction card and a point of sale transaction
system that occurs before establishing an electronic
communication between the point of sale transaction system and a
service institution system. Claim 70 depends from claim 67 and
requires a step of establishing an electronic communication
between a point of sale transaction system and a service
Appeal No. 2004-0297
Application No. 09/265,451
14
institution system that occurs while electronic communication
between the universal electronic transaction card and the point
of sale transaction system is in effect. The appellant’s
contention that the rejection of these claims is unsound because
Tamada and the other applied references do not disclose these
sequences is not persuasive. The examiner’s position that the
references imply either sequence in order to complete the
electronic transactions suggested by Tamada and Hale is eminently
reasonable on its face. Therefore, we shall sustain the standing
35 U.S.C. § 103(a) rejection of claims 69 and 70 as being
unpatentable over Tamada in view of Danielson and Hale.
Claim 80
Claim 80 depends from claim 67 and requires the transaction
records to comprise a receipt. For the reasons discussed above
in connection with claim 48, 67 and 77, we shall sustain the
standing 35 U.S.C. § 103(a) rejection of claim 80 as being
unpatentable over Tamada in view of Danielson and Hale.
Claims 50 through 52, 55 through 57, 59 through 62, 72, 74
through 76 and 82
We shall sustain the standing 35 U.S.C. § 103(a) rejection
of dependent claims 50 through 52, 55 through 57, 59 through 62,
72, 74 through 76 and 82 as being unpatentable over Tamada in
Appeal No. 2004-0297
Application No. 09/265,451
15
view of Danielson and Hale since the appellant has not challenged
such with any reasonable specificity, thereby allowing these
claims to stand or fall with their respective parent claims 48,
58, 71 and 81 (see In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987)).
II. The 35 U.S.C. § 103(a) rejection of claims 49 and 73 as being
unpatentable over Tamada in view of Danielson and Nemirofsky
We shall sustain the standing 35 U.S.C. § 103(a) rejection
of dependent claims 49 and 73 as being unpatentable over Tamada
in view of Danielson and Nemirofsky since the appellant has not
challenged such with any reasonable specificity, thereby allowing
these claims to stand or fall with their respective parent claims
48 and 71 (see In re Nielson, supra).
III. The 35 U.S.C. § 103(a) rejection of claims 64 and 65 as
being unpatentable over Tamada in view of Danielson and Germain
As Germain does not overcome the above noted deficiencies of
Tamada and Danielson with respect to parent claim 63, we shall
not sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 64 and 65 as being unpatentable over Tamada in
view of Danielson and Germain.
Appeal No. 2004-0297
Application No. 09/265,451
16
SUMMARY
The decision of the examiner:
a) to reject claims 48, 50 through 63, 66 through 72 and 74
through 82 under 35 U.S.C. § 103(a) as being unpatentable over
Tamada in view of Danielson and Hale is affirmed with respect to
claims 48, 50 through 52, 55 through 62, 67 through 72, 74
through 77 and 79 through 82, and reversed with respect to claims
53, 54, 63, 66 and 78;
b) to reject claims 49 and 73 under 35 U.S.C. § 103(a) as
being unpatentable over Tamada in view of Danielson and
Nemirofsky is affirmed; and
c) to reject claims 64 and 65 under 35 U.S.C. § 103(a) as
being unpatentable over Tamada in view of Danielson and Germain
is reversed.
Appeal No. 2004-0297
Application No. 09/265,451
17
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
Appeal No. 2004-0297
Application No. 09/265,451
18
WELSH & KATZ, LTD
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606