Ex Parte Poniatowski

Patent Trial and Appeal Board

Jun 21, 2016

13559194 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/559, 194
92425 7590
Paul Poniatowski
11 Keniga , m 12
Warsaw, 02-495
POLAND
FILING DATE FIRST NAMED INVENTOR
07/26/2012 Paul Poniatowski
06/23/2016
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30071-002002 1019
EXAMINER
ANW AH, OLISA
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
06/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
paulponiatowski@hotmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL PONIATOWSKI
Appeal2014-007989
Application 13/559,194
Technology Center 2600
Before KRISTEN L. DROESCH, JOHN P. PINKERTON, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-9, 11-13, and 15.2 Claim 14 is canceled.
See App. Br. 17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies himself as the real party in interest. App. Br. 3.
2 Claim 10 is objected to as being dependent upon a rejected base claim and
is not before us. See Ans. 13.
Appeal2014-007989
Application 13/559,194
STATEivIENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention generally relates to an
apparatus and method for engaging in commercial transactions. Spec. 2: 15-
16. 3
Claim 1 is representative of the claims on appeal and reads as follows:
1. An apparatus for engaging in wireless commercial
transactions, said apparatus comprising:
a mobile phone equipped with a dedicated actuator for
initiating a commercial transaction, and an optical input for
receiving information concerning prices of goods, a network hub
for wireless exchange of information between a commercial
establishment and said mobile phone within the boundaries of
the establishment, and a financial/authorization institution for
associating a PIN number with said mobile phone and for
authorizing transactions initiated by said mobile phone.
App. Br. 15 (Claims App'x.).
Re} ections on Appeal4
Claims 1-3, 6, 8, 9, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Swartz (US
7,040,541 B2; issued May 9, 2006), Medamana (US 5,181,238; issued Jan
19, 1993), Hammad (US 8,219,490 B2; issued July 10, 2012), and
Skowronek (US 2010/0023449 Al; published Jan. 28, 2010).
3 Our Decision refers to the Non-Final Office Action mailed May 21, 2014
("Non-Final Act."); Appellant's Appeal Brief filed June 2, 2014 ("App.
Br."); the Examiner's Answer mailed June 20, 2014 ("Ans."); Appellant's
Reply Brief filed July 7, 2014 ("Reply Br."); and, the Specification filed July
26, 2012 ("Spec.").
4 The Examiner has withdrawn the rejection of claim 15 under 35 U.S.C.
§ 112, first paragraph. See Ans. 3-5.
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Appeal2014-007989
Application 13/559,194
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Zalewski (US 2005/0017068 Al;
published Jan. 27, 2005) and Hammad.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Swartz, Medamana, Hammad,
Skowronek, and Johar (US 2009/0168695 Al; published July 2, 2009).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Swartz, Medamana, Hammad,
Skowronek, and Welingkar (US 8,135,798 B2; issued Mar. 13, 2012).
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Swartz, Medamana, Hammad,
Skowronek, and Zalewski.
ANALYSIS
Rejection of Claim 1under35 U.S.C. § 103(a)
Appellant contends Swartz does not teach or suggest a portable
terminal comprised of a mobile phone and "an optical input for receiving
information concerning prices of goods" and "a network hub for wireless
exchange of information between a commercial established and said mobile
phone within the boundaries of the establishment," as recited in claim 1.
App. Br. 6-10; Reply Br. 4---6. In particular, Appellant argues "Swartz does
not disclose a phone that exchange information concerning prices of goods
with commercial establishment." App. Br. 7. Appellant also argues the
phone subsystem 706 shown in Figure 3 of Swartz "is only used for
audio/conversation purposes and does not handle any hub data
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Application 13/559,194
computing/ exchange concerning prices of goods with the commercial
establishment." Id. at 9.
We are not persuaded by Appellant's arguments that the Examiner has
erred. First, we are not persuaded by Appellant's arguments regarding
Swartz because they are not commensurate with the scope of claim 1. See In
re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail
from the outset because ... they are not based on limitations appearing in
the claims."). Although Appellant argues Swartz does not teach a phone
that (1) "exchanges information concerning prices of goods with commercial
establishment" or (2) handles "any hub data computing/exchange concerning
prices of goods with the commercial establishment," claim 1 does not recite
that the mobile phone communicates with the commercial establishment
about "prices of goods." Instead, claim 1 recites a mobile phone with "an
optical input for receiving information concerning prices of goods." See
App. Br. 15 (Claims App'x.).
Second, we agree with the Examiner that Swartz teaches or suggests
the limitations at issue in claim 1. Specifically, the Examiner finds as
follows:
The rejection of claim 1 is proper because Swartz discloses
an apparatus (from abstract, see portable terminal), said
apparatus comprising a mobile phone (from Figure 3, see
unit 706), and an optical input (from Figure 2, see unit
7 5) for receiving information concerning prices of goods, a
network hub (from Figure 1, see unit 13A) for wireless
exchange of information between a commercial establishment
(from column 4, see retail facility) and said mobile within
the boundaries of the establishment.
Ans. 9 (see also col. 4, 11. 38-39). In regard to the optical input unit 75,
Swartz also teaches that "[ c ]ollection of data is preferably performed by a
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Appeal2014-007989
Application 13/559,194
bar code scanner 75," which may be used to retrieve data files "including
items such as prices." See Swartz, col. 3, 11. 9-13; col. 5, 11. 19-20.
Appellant has failed to provide persuasive evidence or arguments to rebut
the Examiner's findings. Thus, for the reasons stated by the Examiner, we
agree with the Examiner's findings and adopt them as our own.
Third, in the Reply Brief, Appellant argues the rejection of claim 1
based on Swartz is wrong for several reasons not argued in the Appeal Brief.
See Reply Br. 5---6. For example, Appellant argues Swartz does not disclose
"a phone engaging commercial transaction or a phone equipped with a
dedicated actuator" or "a phone exchanging communications of such data
with the retailer or a phone requesting transaction authorization initiated by
said phone." Id. Because these arguments are raised by Appellant for the
first time in the Reply Brief without a showing of good cause, they are
waived. See 37 C.F.R. § 41.41(b)(2) (2012); see also Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.").
Thus, based on this record, we do not find error ( 1) in the Examiner's
findings that Swartz teaches or suggests the disputed limitations of claim 1
or (2) in the Examiner's conclusion that the combination of Swartz,
Medamana, Hammad, and Skowronek renders the subject matter of claim 1
obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's
rejection of claim 1, as well as claims 2-9 and 11-13, which depend from
claim 1 and are not argued separately. 5 See 37 C.F.R. § 41.37(c)(l)(iv).
5 We note that claim 1 recites an apparatus comprising a mobile phone and,
among other things, "a network hub" and "a financial/authorization
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Application 13/559,194
Rejection of Claim j5 under 35 U.S.C. § j03(a)
Appellant contends the combination of Zalewski and Hammad does
not teach or suggest the limitation "using the phone, issuing an instruction to
the terminal to request authorization of payment, wherein the instruction
requesting authorization is sent directly from the phone," as recited in claim
15. App. Br. 10-13; Reply Br. 2--4. The Examiner finds that Hammad
teaches this limitation because Hammad teaches ( 1) the consumer 20 may
interact with his mobile communication device 30 with access device 42 at
merchant 40 to initiate the transaction (citing Hammad, col. 6, 11. 50-60) and
(2) the authorization response message may be sent from the payment
processing network 60 directly to the mobile communication device 30
(citing Hammad, col. 7, 11. 50-55). Ans. 5-7. Appellant argues Hammad
does not teach the limitation at issue because, although it teaches the
customer initiates the transaction, uploads the transaction information from
the device 42 to phone 30, and the phone relays that information to the
processing network 60 (see Hammad, col. 6, 11. 51---66), Hammad teaches the
server computer 60(a) of the payment processing network generates the
payment authorization request and sends it to the issuer 70, not the mobile
institution." We do not think it is physically possible for an apparatus
comprising a mobile phone to include either, or both of, "a network hub" or
"a financial/authorization institution." "An inoperative invention ... does
not satisfy the requirement of 35 U.S.C. 101 that an invention be useful." In
re Harwood, 390 F.2d 985, 989 (CCPA 1968). In the event of further
prosecution of claims 1-9 and 11-13, we leave it to the Examiner to
determine whether these claims fail to comply with the utility requirement of
§ 101. We also leave it to the Examiner to determine whether claim 1
complies with (1) the enablement requirement of 35 U.S.C. § 112, first
paragraph, and (2) the definiteness requirement of 35 U.S.C. § 112, second
paragraph, due to the unclear scope of the claim language.
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Application 13/559,194
phone. App. Br. 11-13; Reply Br. 2--4. We are persuaded by Appellant's
argument because Hammad teaches the "[s]erver computer 60(a) of the
processing network 60 processes the information received from mobile
communication device 30" and "[s]erver computer 60(a) sends the
information in an authorization request message to issuer 70 [which]
processes the authorization request message and determines whether to
authorize or decline the transaction." Hammad, col. 7, 11. 4--6 and 33-36.
Thus, because Hammad does not teach "using the phone, issuing an
instruction to the terminal to request authorization of payment, wherein the
instruction requesting authorization is sent directly from the phone," as
recited in claim 15, we do not sustain the Examiner's rejection of claim 15.
DECISION
We affirm the Examiner's decision rejecting claims 1-9 and 11-13
under 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claim 15 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
7