Ex Parte Pitroda

Patent Trial and Appeal Board

May 9, 2013

11931872 (P.T.A.B. May. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/931,872 10/31/2007 Satyan G. Pitroda 2683/102844 1744
24628 7590 05/10/2013
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
05/10/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SATYAN G. PITRODA
____________________

Appeal 2011-005583
Application 11/931,872
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005583
Application 11/931,872

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 20-33. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

BACKGROUND
Appellant’s invention is directed to a system and methods for
servicing transactions involving electronic transaction devices (Spec., para.
[0001]).
Claims 20, 22, and 29 are illustrative:
20. A system for using an electronic transaction device having
access to a network and a plurality of point of sale terminals,
the electronic transaction device associated with a client and a
plurality of service institution accounts, the system comprising:
a plurality of service institutions coupled to a network,
each service institution further coupled to the plurality of point
of sale terminals, and a transaction service provider, the
transaction service provider further comprising:
a storage medium configured to store database of client
information, including personal information, account
information, and transactional information associated with the
client;
a network port configured to communicate with a
plurality of electronic transaction devices and with a plurality of
service institutions; and
a processor, configured to:
receive transaction records from the electronic
transaction device associated with the client via the network
port;
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Application 11/931,872

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store transaction records received from the electronic
transaction device associated with the client in the database of
client information;
receive transaction records associated with the client
from the plurality of service institutions via the network port;
and
store the transaction records received from the plurality
of service institutions in the database of client information.
22. A system for conducting and reconciling electronic
transactions, comprising:
a plurality of electronic transaction devices, each
electronic transaction device having access to a network;
an electronic transaction device service provider coupled
to the network and configured to receive via the network from
the plurality of electronic transaction devices a plurality of
transaction records received from point of sale terminals;
a plurality of service institutions coupled to the electronic
transaction device service provider;
a plurality of point of sale terminals coupled to the
plurality of service institutions, wherein each point of sale
terminal provides access to the plurality of electronic
transaction devices.

29. A method for conducting and reconciling an electronic
transaction with an electronic transaction device, an electronic
transaction device service provider, a service institution, and a
point of sale terminal, comprising:
conducting an electronic transaction at the point of sale
terminal with the electronic transaction device;
storing a transaction record corresponding to the
electronic transaction on the electronic transaction device;
transmitting the transaction record from the point of sale
terminal to the service institution;
transmitting the transaction record stored on the
electronic transaction device to the electronic transaction device
service provider;
coupling the electronic transaction device service
provider with the service institution;
Appeal 2011-005583
Application 11/931,872

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comparing the transaction record transmitted to the
electronic transaction device service provider with the
transactional information transmitted to the service institution.

Appellant appeals the following rejections:
Claims 20-28 are rejected under 35 U.S.C. § 101 as claiming non-
statutory subject matter.
Claims 20 and 29-33 are rejected under 35 U.S.C. § 102(e) as
anticipated by Paltenghe (US 7,200,578 B2, iss. Apr. 3, 2007).
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Paltenghe and Chasko (US 6,738,749 B1, iss. May 18, 2004).
Claims 22-28 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Heinonen (US 6,418,326 B1, iss. Jul. 9, 2002) and Chasko.

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. The Specification describes that “the term ‘service institution’ includes
any business, service, governmental agency, or other entity, which issues
any type of card commonly carried by an individual for the purposes of
identification, credit transactions, bank transactions, frequent traveler
rewards transactions, licensing, registration or similar functions.” (Spec.,
para. [0020]).
2. Paltenghe discloses receiving records, such as point of sale receipts, at a
transaction service provider from an electronic transaction device,
stating, “financial and personal documents would be moved from the
third party merchant to the consumer 25 and then forwarded by the
consumer to the information bank [2]3.” Col. 10, ll. 57-60.
App
App

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b
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/931,872
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ceiving tra
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ank 23, in
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rsion that
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rsion that
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,
Appeal 2011-005583
Application 11/931,872

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8. The Specification does not define or describe the term transaction
record.
9. The ordinary and customary definition of the term record, as defined by
Merriam Webster’s Collegiate Dictionary (10th ed.), is: “something that
recalls or relates past events.”
10. Paltenghe discloses matching merchant offers with customer profiles.
Col. 12, ll. 42-44.
11. Chasko discloses a system to record transaction data on smart cards with
a copy on a local server. Col. 2, l. 54 to col. 3, l. 1.
12. Chasko discloses comparing transaction records from a smart card with a
copy on a local server. Col. 4, ll. 38-42.
13. Chasko discloses comparing transaction records from a smart card with a
copy on a central database facility. Col. 4, ll. 55-57.

App
App

14. H
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15. C
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05583
/931,872
iscloses an
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An
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. Col. 5,
7
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ments of c
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ll. 53-55.
n device,
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to the
Appeal 2011-005583
Application 11/931,872

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16. Chasko discloses using a personal computer to read data from a smart
card “to select and verify the appropriate data transaction records to be
sent to the expense accounting department for reimbursement.” Col. 5, l.
58 to Col. 6, l. 1.
ANALYSIS
Patentable subject matter
We are persuaded of error by Appellant’s arguments that the “service
institutions” and “transaction service provider” are not human, because the
“service provider” must be coupled to a network and point-of-sale terminals
(claim 20) and to the electronic transaction device service provider (claim
22), and the “transaction service provider” comprises a network port and
processor (claim 20) and is coupled to a network to receive records from
point of sale terminals (claim 22). App. Br. 6-8, Rep. Br. 2. Claim 22
additionally requires the “transaction service provider” is electronic. In
addition, the “service institution” is described by Appellant’s Specification
as “any business, service, governmental agency, or other entity,” not a
human. FF 1. These facts provide sufficient evidence that the Appellant is
not claiming a human being. For this reason, we do not sustain the rejection
under 35 U.S.C. § 101 of claims 20-28.
Anticipation Rejection – Claim 20
We are not persuaded of error by Appellant’s argument that Paltenghe
does not disclose storing “records of transactions.” App. Br. 9. Claim 20
recites a processor, configured to receive and store transaction records, but
does not further utilize these transaction records. As such, the records are
non-functional descriptive material, undeserving of patentable weight. See
In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Nevertheless, Paltenghe
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Application 11/931,872

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discloses receiving and storing point of sale receipts, which are records of
transactions, in an “information bank.” FF 2, 3.
We are not persuaded of error by Appellant’s argument that Paltenghe
does not store records from electronic transaction devices and service
institutions “in the same data base” (App. Br. 9), because we find Paltenghe
discloses storing bills and POS receipts in a single “information bank 23,”
which is a “database of client information,” as claimed. FF 4.
We are not persuaded of error by Appellant’s argument that Paltenghe
does not provide an enabling disclosure “relating to the storage and
communication of transaction records, [because] Paltenghe dismisses the
entire concept of a highly functional electronic wallet as impractical.” App.
Br. 10, 11, 12, Rep. Br. 3, 4. Paltenghe discusses advantages and
disadvantages of different types of “electronic wallet” versions, including a
pocket sized computer that stores all records (FF 5), a server-based storage
version (FF 6), and a preferred hybrid version (FF 7). Even though
Paltenghe points out a disadvantage of the pocket-sized version that differs
from the claimed invention’s server-based version, this does not mean that
Paltenghe does not provide an enabling disclosure.
We also are not persuaded of error by Appellant’s argument that
Paltenghe teaches away by reference to the same underlying disclosure as
above. App. Br. 12-13, Rep. Br. 3, 4. The prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
the alternatives when the disclosure does not criticize, discredit, or otherwise
discourage the solution claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). Although Paltenghe cites a disadvantage of the pocket-sized
version, there is no indication that such a version would be inoperative,
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hence it is still suggested, just not desired. Moreover, the pocket-sized
version is not the same as the claimed invention’s server-based version, so
any alleged teaching away is inapplicable.
Anticipation Rejection – Claims 29-33
We are persuaded of error by Appellant’s argument that Paltenghe
does not disclose the step of comparing. App. Br. 11, Rep. Br. 4. In the
context of the method claim of claim 29, the “transaction records” serve a
function, because they are compared, so the term receives patentable weight.
The term “transaction record” is not explicitly defined, so we use the
ordinary and customary meaning, which is a record of a transaction that has
taken place. FF 8, 9.
The Examiner directs us to Paltenghe column 12, lines 20-55, as
disclosing the comparing step. This section, however, discloses comparing
only by matching customer offers with customer profiles. FF 10. An offer
is not a transaction that has taken place, and a profile is not a record of a
transaction, so this section does not disclose the claimed step of comparing
transaction records. The Examiner has therefore failed to set forth a prima
facie case of obviousness. For this reason, we do not sustain the rejection
under 35 U.S.C. § 102(e) of claim 29 and dependent claims 30-33.
Obviousness Rejection – Claim 21
We are not persuaded of error by Appellant’s argument that Chasko
“does not reconcile any records with transactional information received from
a plurality of service institutions; instead, it appears to concern only in-store
data.” Rep. Br. 5. See also, App. Br. 12. Chasko discloses a system to
record transaction data on smart cards. FF 11. Chasko also writes a copy to
a local, in-store server and/or a central database facility. FF 12, 13. Chasko
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also discloses comparing the smart card transaction data with the data on the
central database. FF 13. We find one of ordinary skill would recognize that
a central database would typically hold records from a plurality of
institutions/stores, which meets the claim language of “transactional
information received from the plurality of service institutions.”
Obviousness Rejection – Claims 22-28
We are persuaded of error by Appellant’s arguments that neither
Heinonen nor Chasko discloses records going from a point of sale terminal
to an electronic transaction device to an electronic transaction device service
center, and that there is no motivation for such a combination of
telecommunications signaling art (Heinonen) with financial transactions art
(Chasko). App. Br. 13, Rep. Br. 5.
The Examiner finds that Heinonen discloses the claimed structural
elements of a point-of-sale terminal, electronic transaction device, and
electronic transaction device service provider (FF 14). Ans. 9-10. The
Examiner finds, however, that Heinonen does not disclose the electronic
transaction device service provider receiving records from the electronic
transaction device, which records were received from the point-of-sale
terminal. Ans. 10. Instead, the Examiner finds that Chasko meets this
element by disclosing that transaction records from point of sale terminals
stored on a customer’s smart card can be sent to an expense accounting
department for reimbursement. Id. The Examiner articulates a motivation to
adopt Heinonen with the features of Chasko as being “for the purpose of
providing more convenient and time consuming for communicating
transaction records between the transaction device service provider and the
electronic transaction device.” Ans. 10-11.
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We assume Chasko’s smart card corresponds to the claimed electronic
transaction device (FF 15). If we assume Chasko’s expense accounting
department corresponds to the claimed electronic transaction device service
provider (FF 16), the Examiner’s rationale does not instruct us to a reason to
modify Heinonen, because we do not understand what “more convenient and
time consuming” means (indeed, being more time consuming appears to be a
rationale not to combine), and how implementing the transfer of Chasko in
the structure of Heinonen would yield such benefits. Therefore, we find the
Examiner has not set forth a prima facie case of obviousness of claim 22.
For this reason, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claim 22 and dependent claims 23-28.

DECISION
We reverse the rejection under 35 U.S.C. § 101 of claims 20-28.
We affirm the rejection under 35 U.S.C. § 102(e) of claims 20.
We reverse the rejection under 35 U.S.C. § 102(e) of claims 29-33.
We affirm the rejection under 35 U.S.C. § 103(a) of claim 21.
We reverse the rejection under 35 U.S.C. § 103(a) of claims 22-28.

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-IN-PART

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