Ex Parte RobertsonDownload PDFPatent Trial and Appeal BoardSep 11, 201311036183 (P.T.A.B. Sep. 11, 2013) Copy Citation 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. 11/036,183 01/13/2005 Steven C. Robertson ROBERT.P001C1 8349 7590 09/11/2013 Patrick M. Dwyer PC 14419 Greenwood Ave. N, Box 322 Seattle, WA 98133 EXAMINER FADOK, MARK A ART UNIT PAPER NUMBER 3625 MAIL DATE DELIVERY MODE 09/11/2013 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 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte STEVEN C. ROBERTSON 7 ___________ 8 9 Appeal 2011-005506 10 Application 11/036,183 11 Technology Center 3600 12 ___________ 13 14 15 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16 NINA L. MEDLOCK, Administrative Patent Judges. 17 18 FETTING, Administrative Patent Judge. 19 20 21 DECISION ON APPEAL22 Appeal 2011-005506 Application 11/036,183 2 STATEMENT OF THE CASE1 1 Steven C. Robertson (Appellant) seeks review under 35 U.S.C. § 134 2 of a final rejection of claims 23-25, 29, 31, and 45-47, the only claims 3 pending in the application on appeal. This is the second time this 4 application has come before the Board (although the prior appeal was before 5 the Board of Patent Appeals and Interferences). The primary reference is the 6 same as in the prior appeal, but the claims have been amended, and in 7 particular, limitation [a2] below was added. We have jurisdiction over the 8 appeal pursuant to 35 U.S.C. § 6(b). 9 The Appellant invented an online gift certificate and contribution 10 broker that allows consumers to purchase gift certificates that may be 11 redeemed at any participating electronic merchant (Spec. 1:Background – 12 Field of Invention). 13 An understanding of the invention can be derived from a reading of 14 exemplary claim 23, which is reproduced below [bracketed matter and some 15 paragraphing added]. 16 23. A system 17 for providing an electronic gift certificate service 18 for users and merchants 19 over a distributed network, 20 comprising: 21 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed November 5, 2010) and Reply Brief (“Reply Br.,” filed February 7, 2011), and the Examiner’s Answer (“Ans.,” mailed December 7, 2010). Appeal 2011-005506 Application 11/036,183 3 a. at least one computer server connected to the distributed 1 network, 2 [a1] the server running 3 a gift certificate authority site 4 and 5 a gift certificate authority server application, 6 [a2] the gift certificate authority site and the gift 7 certificate authority server application 8 both completely separate 9 from any conventional credit card banking 10 system; 11 b. a plurality of merchants 12 each having at least one computer server connected to the 13 distributed network, 14 each merchant computer server running at least one 15 merchant site and one server application 16 to provide online service to users over the 17 distributed network, 18 each merchant computer server also running a gift 19 certificate agent, 20 the agent being a client application to the gift 21 certificate authority server application, 22 and also completely separate from any 23 conventional credit card banking system; 24 c. a plurality of user input/output devices 25 operatively configured to access the gift certificate 26 authority site and an online service at a merchant site; 27 d. the gift certificate authority server application 28 being operatively connected to data storage residing on 29 computer readable media, 30 the data storage comprising selected data associated with 31 users, merchants and gift certificates; 32 Appeal 2011-005506 Application 11/036,183 4 and 1 e. the gift certificate authority server application being 2 operatively configured to: 3 i. receive and store selected user, merchant and gift 4 certificate data; 5 ii. programmatically create and sell a gift certificate to a 6 purchaser; 7 iii. receive a redemption request from the merchant’s gift 8 certificate agent regarding a transaction using a gift 9 certificate; 10 iv. send approval or denial of a gift certificate redemption 11 to the merchant's gift certificate agent; 12 v. process a merchant's gift certificate redemption, the 13 process including the sending of selected data to the 14 merchant's gift certificate agent; 15 and 16 vi. subtract a transaction amount from the currency 17 amount available on a specific gift certificate and store a 18 new currency amount available for that gift certificate. 19 The Examiner relies upon the following prior art: 20 Gillin US 7,010,512 B1 Mar. 7, 2006 21 22 VISAnet1-VISAnet8, a collection of articles listed in PTO 892 mailed 23 Feb. 13, 2008 (hereinafter Visanet). 24 Claims 23, 24, 25, 29, 31, 45, 46, and 47 stand rejected under 25 35 U.S.C. § 112, first paragraph, as not enabling a person of ordinary skill in 26 the art to make and use the claimed subject matter from the original 27 disclosure. 28 Claims 23-25, 29, 31, 45, 46, and 47 stand rejected under 35 U.S.C. 29 § 103(a) as unpatentable over Gillin and Visanet. 30 Appeal 2011-005506 Application 11/036,183 5 ISSUES 1 The issue of enablement turns on whether the Specification enabled 2 the limitation “the gift certificate authority site and the gift certificate 3 authority server application both completely separate from any conventional 4 credit card banking system.” The issues of obviousness turn primarily on 5 whether the Examiner found that same limitation to be described by or 6 shown to be predictable in view of the applied prior art. 7 8 FACTS PERTINENT TO THE ISSUES 9 The following enumerated Findings of Fact (FF) are believed to be 10 supported by a preponderance of the evidence. 11 Gillin 12 01. Gillin is directed towards debit/credit/charge accounts, but 13 without issuing physical cards and providing them to the gift 14 recipient, which provides significant advantages to transactions 15 normally involving gift certificates (Gillin, col. 4, ll. 55-59). 16 17 ANALYSIS 18 Claims 23, 24, 25, 29, 31, 45, 46, and 47 rejected under 35 U.S.C. § 112, 19 first paragraph, as not enabling a person of ordinary skill in the art to make 20 and use the claimed subject matter from the original disclosure. 21 We are persuaded by the Appellant’s argument that Specification, 22 paragraph 0010 enables the limitation “the gift certificate authority site and 23 the gift certificate authority server application both completely separate from 24 any conventional credit card banking system.” App. Br. 10-11. 25 Appeal 2011-005506 Application 11/036,183 6 The Examiner’s findings at Answer, page 4 only show that the 1 opposite unclaimed implementation is also enabled. 2 3 Claims 23-25, 29, 31, 45, 46 and 47 rejected under 35 U.S.C. § 103(a) as 4 unpatentable over Gillin and Visanet. 5 We are persuaded by the Appellant’s argument that the Examiner 6 made no findings as to limitation [a2] of “the gift certificate authority site 7 and the gift certificate authority server application both completely separate 8 from any conventional credit card banking system” being described by or 9 shown to be predictable in view of the prior art. Thus the Examiner failed to 10 present a prima facie case. 11 The Examiner only refers to the enablement rejection in the 12 obviousness findings as to this limitation. The enablement rejection is 13 separate. For the claims to be rejected under obviousness, all of the 14 limitations must be described or shown to be predictable, irrespective of 15 whether the Appellant’s Specification enabled them. 16 We do not propose to enter a new ground of rejection because the 17 word “completely” in that same limitation [a2] necessarily implies any 18 implementation of the invention cannot even share the same communication 19 routing network as any conventional credit card banking system, which one 20 of ordinary skill in today’s interconnected environment would be unlikely to 21 consider. 22 Appeal 2011-005506 Application 11/036,183 7 CONCLUSIONS OF LAW 1 The rejection of claims 23, 24, 25, 29, 31, 45, 46, and 47 under 2 35 U.S.C. § 112, first paragraph, as not enabling a person of ordinary skill in 3 the art to make and use the claimed subject matter from the original 4 disclosure is improper. 5 The rejection of claims 23-25, 29, 31, 45, 46, and 47 under 35 U.S.C. 6 § 103(a) as unpatentable over Gillin and Visanet is improper. 7 8 DECISION 9 The rejections of claims 23-25, 29, 31, and 45-47 are reversed. 10 11 REVERSED 12 13 14 15 hh 16 Copy with citationCopy as parenthetical citation