Ex Parte Ross

Board of Patent Appeals and Interferences

Jul 15, 2009

09966023 (B.P.A.I. Jul. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IAN ROSS
____________

Appeal 2009-0446
Application 09/966,023
Technology Center 3600
____________

Decided:1 July 16, 2009
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000446
Application 09/996,023

STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-2, 9-14, and 18-23 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-IN-PART.

THE INVENTION
The Appellant’s claimed invention is directed to a self-service
terminal associated with an organization having individuals under its
supervision, each individual having a sponsor, whereby the terminal
provides the individuals with access to financial services provided by a
financial institution in accordance with rules established by the sponsor and
the organization (Spec. 2:1-5). Claim 1, reproduced below, is representative
of the subject matter of appeal.
1. A method of providing financial transactions via a self-
service terminal associated with an organization having individuals
under its supervision, the method comprising the steps of:
maintaining a financial account for the organization;
maintaining a financial account for an individual under the
supervision of the organization;
allowing a sponsor and/or the organization to establish rules
governing use of funds within the financial account by the individual;
and when a transaction is requested by the individual at a self-service
terminal located in premises used by the organization,
2
Appeal 2009-000446
Application 09/996,023

examining the rules and fulfilling the transaction if the transaction is
consistent with the established rules for that individual.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Slater US 6,615,190 B1 Sep. 2, 2003
The following rejections are before us for review2:
1. Claims 1-2, 9-14, and 18-23 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Slater.

THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regard to claim 1 this issue turns on whether Slater discloses a
system in which the organization establishes rules which are then examined
at the transaction request.

2 We note a typographical error in the Examiner’s Answer in the listing of
the claims under rejection. The Examiner’s Answer at page 3, line 5, lists
the claims under rejection under 35 U.S.C. § 102(e) as being claims 1-2, 9-
14, and 18-26 while at the same page at line 17, lists the claims under
rejection as 1-17. The Final Rejection of Feb. 23, 2007 lists the same
typographical error but properly presents the claims under rejection as 1-2,
9-14, and 18-23 with claims 24-26 considered non-elected claims. As such
the claims under Final Rejection and subject of this Appeal are claims 1-2,
9-14, and 18-23. The Appellant has presented arguments that the restriction
requirement with regards to claims 24-26 made by the Examiner is improper
(Br. 8, 38-42) but this is not subject matter which can be appealed to the
Board of Patent Appeals and Interferences. See Manual of Patent
Examining Procedure § 1002.02(c)(2) and 1201 (8th ed., rev. 7, July, 2008).
3
Appeal 2009-000446
Application 09/996,023

With regards to claims 2, 11, and 14 this issue turns on whether Slater
discloses the step of offering products or services provided by the
organization.
With regards to claims 10 and 13 this issue turns on whether Slater
discloses that the terminal is located on the premises used by the
organization.
With regards to claims 9 and 12 this issue turns on whether Slater
discloses a personal computer to maintain the financial account and
accessing the account with an ATM machine.
With regards to claims 18-20 this issue turns on whether Slater
discloses “wherein the rules limit times-of-day when specific transactions
are allowed.”
With regards to claims 21-23 this issue turns on whether Slater
discloses that “a non-authorization message is displayed if the requested
transaction fails to comply with a rule.”

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence3:
FF1. Slater discloses a sponsor funded stored value card in which a
company funds an account associated with the card which is then issued to a

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
4
Appeal 2009-000446
Application 09/996,023

cardholder (Abstract). The stored value card replaces the need to issue
checks (Col. 1:37-39) to employees which can be costly (Col. 1:11-19).
FF2. Slater discloses that the cardholder is prohibited from depositing
funds in the account (Abstract).
FF3. Slater discloses that the funds may be withdrawn at the employee’s
discretion through known manners of withdrawal, e.g. ATM machines and
point of sale (POS) purchases (Col. 2:31-36).
FF4. Slater discloses that an implementation specialist may ensure that
applicable government regulations are followed (Col. 3:8-15) in the stored
value cards.
FF5. Slater discloses that a sponsor company which sells gasoline may
provide customers that meet predetermined criteria (e.g. have purchased
twelve tanks of gasoline) a sponsor funded stored value card which can be
used to purchase items such as gasoline or oil, at the sponsor company, or
affiliated stores (Col. 7:46-52).
FF6. Slater discloses that the system network (Fig. 2) uses a computer (Col.
4:46-50) and an ATM for access by the cardholder (Col. 5:56-58).
FF7. Slater discloses that the sponsor may fund the stored value card at
periodic intervals corresponding to the employee’s payday (Col. 2:27-32).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
5
Appeal 2009-000446
Application 09/996,023

of the claim. 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.

ANALYSIS
Claim 1
The Appellant argues that the rejection of claim 1 is improper because
the claim requires “[t]he same set of rules must be found in both (1) the
creation of the rules and (2) the application of the rules to the transaction”
and that Slater does not disclose this (Br. 11, 15, 29). The Appellant also
argues that the government regulations in Slater are not established
separately by the organization (Br. 13-14, 20-22) or applied during the
transaction (Br. 14-15, 23-24) as the claim requires. The Appellant also
argues that Slater fails to show rules in the claimed payment system and
within the financial account of the individual (Reply Br. 1-2).
In contrast the Examiner has determined that Slater discloses the
claimed limitations because it discloses that the cards operate in a known
manner as ATM cards (Ans. 6-7). The Examiner has also determined that
when you go to an ATM there are “rules” that are checked before issuing
cash or merchandise including whether there is enough cash in the account,
whether the card is stolen, and whether the card is valid, etc. (Ans. 7).
We agree with the Examiner. Slater discloses a sponsor funded stored
value card in which a company funds an account associated with the card
6
Appeal 2009-000446
Application 09/996,023

which is then issued to an employee (FF1). Slater has disclosed that the
funds may be withdrawn at the employee’s discretion through known
manners of withdrawal, e.g. ATM machines (FF3). Conventional ATM
cards are well known to routinely have rules established to check to see if
the ATM card is valid and if enough funds are in the account when the
transaction is requested. As such, Slater discloses a system in which the
organization establishes rules for the use of the sponsor cards (for example
that you can not exceed a withdrawal beyond the balance of your account)
which are then examined at the transaction request. Slater even specifically
discloses a example of establishing rules and examining them at the
transaction request in disclosing a sponsor funded stored value card which
can be used to only purchase items such as gasoline or oil, at the sponsor
company, or affiliated stores (FF4) which serves as a “rule” as to the cards
use which is then checked during the transaction request. For these reasons
the rejection of claim 1 is sustained.

Claims 2, 10-11, and 13-14
Claims 2, 11, and 14 require that the step of offering products or
services be provided by the organization. Claims 10 and 13 require that the
terminal is located on the premises used by the organization. The Appellant
argues that Slater fails to disclose these claimed limitations (Br. 30-32). We
agree with the Examiner. Slater discloses these limitations in disclosing that
the sponsor funded stored value card can be used to purchase items such as
gasoline or oil, at the sponsor company (FF4). For these reasons the
rejection of claims 2, 10-11, and 13-14 is sustained.

7
Appeal 2009-000446
Application 09/996,023

Claims 9 and 12
The Appellant argues that the rejection of claim 12 under 35 U.S.C.
§ 102(b) as being anticipated by Slater is improper because the reference
fails to teach the limitation for a personal computer to maintain the financial
account, accessing the account with an ATM, or an official at school to
organize the rules (Br. 33-34). The Appellant also argues that claim 12
should be interpreted in means-plus-function format under 35 U.S.C. § 112,
sixth paragraph (Br. 33-34). In contrast the Examiner has determined that
Slater discloses these limitations in Figure 2 (Ans. 5).
We agree with the Examiner. Slater discloses using a computer and
ATM which are conventionally operated over a network (FF6) whether or
not that portion of the claim is accorded patentable weight under 35 U.S.C.
§ 112, sixth paragraph. Further, claim 12 also recites “means for allowing a
sponsor and/or organization to establish rules.” The use of the alternative
“or” only requires that one of the sponsor or organization establishes rules
and there is no requirement in the claim that an official at school organize
the rules. As Slater has shown that a sponsor company may establish a rule
as discussed above, this limitation has also been shown by Slater whether or
not that portion of the claim is accorded patentable weight under 35 U.S.C.
§ 112, sixth paragraph. As the Slater reference discloses the limitation
argued by the Appellant, the rejection of claim 12 under 35 U.S.C. § 102(b)
as being anticipated by Slater is sustained. The Appellant has presented the
same arguments for claim 9 and the rejection of this claim is sustained for
the same reasons given above.

8
Appeal 2009-000446
Application 09/996,023

Claims 18-20
The Appellant argues that Slater fails to disclose the limitation in
claims 18-20 that “wherein the rules limit times-of-day when specific
transactions are allowed” (Br. 34-35). The Examiner has determined that
Slater discloses this limitation in allowing “specific intervals” (Ans. 6).
We agree with the Appellant. The portion of Slater cited by the
Examiner only discloses that Slater discloses that the sponsor may fund the
stored value card at periodic intervals corresponding to the employee’s
payday (FF7). Slater has not disclosed that rules for the individual limit the
times-of-day when specific transactions are allowed. For these reasons the
rejection of claims 18-20 is not sustained.

Claims 21-23
The Appellant argues that Slater fails to disclose the limitation in
claims 21-23 that “a non-authorization message is displayed if the requested
transaction fails to comply with a rule” (Br. 35-36). The Examiner has
determined that Slater discloses this limitation by displaying a message if the
transmission is rejected (Ans. 6).
We agree with the Examiner. Slater discloses that the funds may be
withdrawn at the employee’s discretion through known manners of
withdrawal, e.g. ATM machines and point of sale (POS) purchases (FF3).
ATM machines conventionally display a message of non-authorization if a
transaction cannot be completed for failure to comply with a rule, for
example to withdraw funds in excess of the account balance. For these
reasons the rejection of claims 21-23 is sustained.

9
Appeal 2009-000446
Application 09/996,023

CONCLUSIONS OF LAW
We conclude that Appellant has failed to show that the Examiner
erred in rejecting claims 1-2, 9-14, and 21-23 under 35 U.S.C. § 102(e) as
anticipated by Slater.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 18-20 under 35 U.S.C. § 102(e) as anticipated by Slater.

DECISON
The Examiner’s rejection of claims 1-2, 9-14, and 21-23 is sustained.
The Examiner’s rejection of claims 18-20 is reversed.
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) (2007).

AFFIRMED-IN-PART

JRG

MICHAEL CHAN
NCR CORPORATION
1700 SOUTH PATTERSON BLVD
DAYTON, OH 45479-0001
10