Ex Parte Rizzo et al

Board of Patent Appeals and Interferences

Mar 8, 2010

09908549 (B.P.A.I. Mar. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CAROL J. RIZZO, PHOEBE RIN-RIN HSU, and MICHAEL L.
SEARS
____________

Appeal 2009-004107
Application 09/908,549
Technology Center 3600
____________

Decided: March 8, 2010
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-14, 18-51, and 55-74, 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 AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed a system for performing
a cash transaction with an ATM machine that enables a cardholder to
authorize another person to withdraw cash from the cardholders bank
account at any ATM of the cardholders bank (Spec. 2:7-11). Claim 1,
reproduced below, is representative of the subject matter of appeal.

1. A method for performing a cash transaction with a self-service
financial transaction terminal, comprising:
allowing an originator to access a financial institution server via
an access portal;
receiving recipient identification information from the originator
by the financial institution server via the access portal;
furnishing a unique authentication code associated with the
recipient identification information to the originator by the financial
institution server via the access portal;
receiving a designation from the originator by the financial
institution server via the access portal of an amount of cash authorized
for withdrawal by the recipient at any one of a plurality of financial
institution transaction terminals and a source account for the amount
of cash authorized for withdrawal;
[1] receiving a specification from the originator by the financial
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institution server via the access portal of predefined parameters for
withdrawal of the cash by the recipient consisting of at least one of a
predetermined delay period of time after which the withdrawal of the
cash by the recipient is allowed and a pre-determined contractual
escrow condition upon an occurrence of which the withdrawal of the
cash by the recipient is allowed;
[2] receiving a selection from the originator by the financial
institution server via the access portal for one of an option for
notification of the originator and an option for non- notification of the
originator when the authorized cash is withdrawn by the recipient;
notifying the originator by the financial institution server via the
access portal of an availability of the authorized cash for withdrawal
by the recipient at any one of the plurality of financial institution
transaction terminals;
[3] allowing withdrawal of the cash by the recipient at one of
the plurality of financial institution transaction terminal; and if the
originator's selection of the option for notification of the originator is
received, notifying the originator of the withdrawal of the cash.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Brody US 5,350,906 Sep. 27, 1994
Marcous US 5,650,604 Jul. 22, 1997
Downing US 5,963,647 Oct. 5, 1999
Joao US 7,096,003 B2 Aug. 22, 2006

The following rejections are before us for review1:

1 We note that the Examiner has withdrawn the rejection of claims 1-14, 18-
51, and 55-74 made under 35 U.S.C. § 112, first paragraph, at page 24 of the
Answer.
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1. Claims 1, 7-14, 18-19, 21-25, 27-37, 38, 44-50, 51, 55-56, 58-
62, and 64-74 stand rejected under 35 U.S.C. 103(a) as being unpatentable
Downing and Joao.
2. Claims 2-6, 20, 39-43, and 57 stand rejected under 35 U.S.C.
103(a) as being unpatentable under Downing, Joao, and Marcous.
3. Claims 26 and 63 stand rejected under 35 U.S.C. 103(a) as
being unpatentable under Downing, Joao, and Brody.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
This issue turns on whether the prior art discloses claim limitations
[1], [2], and [3] and whether the combination of Downing and Joao would
have been obvious.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Downing has disclosed a system for transferring funds from an
individual (Title).
FF2. Downing discloses that once a sender provides a codeword and the
transaction code to a recipient that the recipient can receive transferred cash
through an ATM, even without using a card to access the system (Abstract).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF3. Joao discloses a transaction security apparatus (Title) which
determines whether a transaction on the account is authorized (Abstract).
FF4. Joao discloses that the apparatus may be used in ATM transactions
(Col. 8:37-46).
FF5. Joao at Col. 10:30-36 states that:

The present invention may also be equipped with, and be utilized
with, hardware and software necessary for providing self-monitoring
functions, automatic control and/or responses to occurrences,
automatic notice of an occurrence and/or a situation, to an owner, user
and/or authorized individual. In this regard, any and all of the
embodiments described above may comprise a monitoring device, a
triggering device and/or any other suitable device for detecting an
occurrence and/or identifying a situation which may warrant
providing notice to a card holder, account owner, cellular telephone
owner and/or an authorized individual.

FF6. Joao at Col. 10:30-36 discloses the use of monitoring device for
detecting an occurrence which may warrant notice to a cardholder.

FF7. Joao at Col. 12:8-16 states that:

It is still another object of the present invention to provide an
apparatus and a method for providing authorization, notification
and/or security in financial transactions and/or in wireless
communications transactions, which is programmable with respect to
authorized times of usage (i.e. specific days, dates, time of day, time
of month, year, etc.), and/or any other limitations regarding amount of
transaction limitations, parties involved, and/or geographical area
and/or location of allowed usage.

FF8. Joao at Col. 12:8-16 discloses authorization and notification in
financial transactions which is programmable for times of usage such as
specific days, dates, time of day, month, and year.
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PRINCIPLES OF LAW
Principles of Law Relating Claim Construction
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) Id. at 407
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
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determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
Joao fails to disclose limitations [1], [2], and [3] as identified in claim 1
above. The Appellants argue that Joao fails to disclose limitation [2] and
instead teaches “routine notification of all financial transactions” instead of
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“a selection from the originator of an option of notification”. The
Appellants argue that limitation [1] is not disclosed because Joao discloses a
method for “specifying generalized time or days in which a transaction may
take place” an not “a predetermined delay period” (Br. 10).
In contrast the Examiner has determined that Joao discloses the cited
limitations at Col. 10:30-36, Col. 11:35-12:25, and Col. 12:8-17 and that the
references are properly combined in the rejection (Ans. 18-24).
We agree with the Examiner. Claim limitations [2] and [3] require:
[2] receiving a selection from the originator by the financial
institution server via the access portal for one of an option for
notification of the originator and an option for non-notification of the
originator when the authorized cash is withdrawn by the recipient;
[3] allowing withdrawal of the cash by the recipient at one of
the plurality of financial institution transaction terminal; and if the
originator's selection of the option for notification of the originator is
received, notifying the originator of the withdrawal of the cash.
Note that the above claim limitations do not require that only a “transaction-
specific” selection from the originator as an option for notification can be
used. That is, limitations [2] and [3] do not exclude the originator from
providing notification for all financial transactions. Here, Joao had
disclosed a device for use in ATM transactions (FF4) and having a
monitoring device for detecting an occurrence which may warrant notice to a
cardholder (FF6) and provide notification of financial transactions (FF7)
meeting the cited claim limitations. Regardless, the modification of the
system to include a “transaction-specific” notification would have been an
obvious expedient to one of ordinary skill in the art to reduce any desired
number of unwanted notifications.
Claim 1 also includes limitation [1] which requires:
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[1] receiving a specification from the originator by the financial
institution server via the access portal of predefined parameters for
withdrawal of the cash by the recipient consisting of at least one of a
predetermined delay period of time after which the withdrawal of the
cash by the recipient is allowed and a pre-determined contractual
escrow condition upon an occurrence of which the withdrawal of the
cash by the recipient is allowed;

Joao discloses the authorization and notification in financial
transactions which may be programmed for times of usage (such as specific
days, dates, time of day, month, and year) (FF8). By setting the
authorization of the financial transaction to the programmed usage time, the
limitation is met for the “predetermined delay period”.
The Appellants also argue the Examiner has used hindsight to
combine the references of Downing and Joao to meet the claim limitations
of claim 1. We disagree. Downing has disclosed a system for transferring
cash through an ATM (FF2) and Joao had disclosed a system which is
programmable with respect to the times of usage, parties involved, and
locations for usage (FF7). The modification of the system of Downing with
that of Joao to be programmable with respect to the times of usage, parties
involved, and locations for usage is considered an obvious, predictable
combination of known elements for increased security in transactions. The
Appellants have provided the same argument addressed above for claim 38.
For the reasons given above the rejection of claims 1 and 38 under 35 U.S.C.
103(a) as being unpatentable Downing and Joao is not sustained.
With regard to claims 2-6, 20, 39-43, and 57 the Appellants argue that
limitations [1], [2], and [3] are not shown by Marcous but the Examiner has
asserted these elements are found in Joao. Similarly with regards to the
rejection of claims 26 and 63 the Appellants argue that limitations [1], [2],
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and [3] are not shown by Brody but the Examiner has asserted these
elements are found in Joao. For the same reasons addressed above, the
rejection of these claims is also not sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 7-14, 18-19, 21-25, 27-37, 38, 44-50, 51, 55-56, 58-62,
and 64-74 under 35 U.S.C. 103(a) as being unpatentable Downing and Joao.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 2-6, 20, 39-43, and 57 under 35 U.S.C. 103(a) as being
unpatentable under Downing, Joao, and Marcous.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 26 and 63 under 35 U.S.C. 103(a) as being unpatentable
under Downing, Joao, and Brody.

DECISION
The Examiner’s rejection of claims 1-14, 18-51, and 55-74 is
sustained.
AFFIRMED

MP

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