10831105 (B.P.A.I. Nov. 28, 2011)

Ex Parte Ritter

Board of Patent Appeals and InterferencesNov 28, 2011

10831105 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RUDOLF RITTER ____________ Appeal 2010-008247 Application 10/831,105 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008247 Application 10/831,105 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-36 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed to a transaction method between a client and a fixed point-of-transaction apparatus (Spec., para. [0002]). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. A transaction method between a client and a point-of- transaction (POT) apparatus, wherein said POT-apparatus is connected to a server via a telecommunication network, said method comprising: receiving, in the POT-apparatus, client data read from a memory of a portable identification element of the client, the identification element containing at least one processor configured for transmitting data via a contact-free interface and not through said telecommunication network to said POT-apparatus; linking, in the POT-apparatus, the client data, a POT-apparatus identification (POSID) and transaction-specific data into a transaction voucher, wherein said client data comprises at least one client identification (IDUI); transmitting a debit order from said POT-apparatus to said identification element of said client through said contact-free interface and not through said telecommunication network, [1] said debit order including at least said transaction-specific data, the POT-apparatus identification (POSID) and said client identification (IDUI); Appeal 2010-008247 Application 10/831,105 3 [2] verifying, by said identification element of said client, that said debit order correlates with said client identification (IDUI); upon successful verification, transmitting said transaction voucher to said server via said telecommunication network. THE REJECTION The Examiner relies upon the following as evidence in support of the rejection: Heinonen US 5,887,266 Mar. 23, 1999 Davis US 6,282,522 B1 Aug. 28, 2001 The following rejection is before us for review: 1. Claims 1-36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Heinonen and Davis. THE ISSUES With regards to claim 1 and its dependent claims, the issue turns on whether the cited prior discloses claim limitation [1] as asserted in the rejection of record. The rejection of claim 30 and its dependent claims turns on a similar issue. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:1 Additional facts may appear in the Analysis section below. 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2010-008247 Application 10/831,105 4 FF1. Heinonen at Column 8, lines 55-64 discloses that the CPU in the SIM examines if the entered identification number has been given right, but does not specifically disclose a debit order including at least said transaction- specific data, the POT-apparatus identification (POSID), and said client identification (IDUI). FF2. Davis at Column 19, lines 55-61 discloses that the debit command issued by the security card may contain a wide variety of information including the transaction identifier, the amount to debited, the security card signature, and that the terminal in turn sends the signature, command, and the terminal identifier to the payment server. FF3. Figures 11A-11D show a flowchart of the processing of a user purchase using an embodiment of the invention. FF4. Figure 11A shows that the user selects goods and/or services from the merchant site and requests purchase with a stored value card (602), and that the merchant server sends information to the client terminal (606). FF5. Figure 11D shows that the terminal sends the debit command to the payment server at 694. FF6. Davis at Column 19, lines 55-61 does not disclose that the debit order is transmitted from a POT-apparatus. ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the prior art fails to disclose the claim limitation [1] (Br. 8-11). In contrast, the Examiner has determined that claim limitation is shown by Heinonen at Column 8, lines 55-64 (Ans. 5) and Davis at Column 19, lines 55-57 and 60 (Ans. 9). Appeal 2010-008247 Application 10/831,105 5 We agree with the Appellant. We note initially that the Appellant has also argued broadly that the Office has not established that the features relied upon in the Davis reference are disclosed in the provisional application (Br. 8), but the Appellant has failed to specifically argue for any specific claimed subject matter in this regard (Br. 8). As the Appellant has not specifically argued for any item of support in the provisional application this argument is not taken. Turning to the next argument, claim limitation [1] requires: “[1] said debit order including at least said transaction-specific data, the POT-apparatus identification (POSID) and said client identification (IDUI).” (Claim 1). The Examiner has determined that claim limitation [1] is found in Heinonen at Column 8, lines 55-64 (Ans. 5), but the reference at this citation does not show the cited limitation as asserted (FF1). The Examiner in “Response to Argument” section seems to then further imply that elements of claim limitation [1] are found in Davis at Column 19, lines 55-57 and 60 (Ans. 9). Davis at Column 19, lines 55-61 does disclose that the debit command issued by the security card may include a transaction identifier and security signature, and that the terminal in turn sends the signature, command, and terminal identifier to the payment server (FF2). The Appellant in the Reply Brief then argues that this debit command appears to be used between the security card, client terminal, and payment server, and not between a point of sale and the client as recited in the claim (Reply Br. 3). We agree with the Appellant in this regard as the claimed debit order is not shown transmitted from a “POT-apparatus” (claim 1, Appeal 2010-008247 Application 10/831,105 6 emphasis added and referring to a point-of-transaction apparatus) in Davis at Column 19, lines 55-61. In Davis, Figure 11A shows that the user selects goods and requests purchase at the merchant site (FF4) and this would be the “point of transaction,” as opposed to the client terminal shown at Figure 11D (694) and referred to at Column 19, lines 55-61. For this reason the rejection of claim 1 and its dependent claims is not sustained. Claim 30 contains a similar claim limitation and the rejection of that claim and its dependent claims is not sustained for the same reasons. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting claims 1-36 under 35 U.S.C. § 103(a) as unpatentable over Heinonen and Davis. DECISION The Examiner’s rejection of claims 1-36 is reversed. REVERSED hh