Ex Parte Shahbazi et al

Patent Trial and Appeal Board

Nov 8, 2017

12234551 (P.T.A.B. Nov. 8, 2017)

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.
12/234,551 09/19/2008 Hamed Shahbazi 116004USP 4332
16275 7590
HolzerlPLaw, PC
dba Holzer Patel Drennan
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
CRAWLEY, TALIA F
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/13/2017 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):
hiplaw@blackhillsip.com
docket @ hpdlaw .com
rholzer @ hpdlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAMED SHAHBAZI and LAURENT MAY
Appeal 2015-006632
Application 12/234,5511
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—41. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants identify TIO Networks, Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2015-006632
Application 12/234,551
ILLUSTRATIVE CLAIM
1. A method of originating a financial transaction, the
method comprising:
accessing a user account via a publicly accessible self-
service terminal, the user account identifying payment
obligations of a user to a plurality of payees and the user
account configured to be unassociated with a banking account;
detecting selection of an identified payment obligation to
a payee via the publicly accessible self service terminal;
receiving an originating instruction via the publicly
accessible self-service terminal to originate payment associated
with the selected payment obligation;
receiving at the publicly accessible self-service terminal,
via a payment input device to read at least one financial
instrument, funds designated for the payment being specified;
transmitting a payment instruction from the publicly
accessible self-service terminal specifying the payment for
application against the selected payment obligation.
REJECTIONS
I. Claims 1—22, 31—33, and 38-402 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dent et al. (US 6,128,603, iss. Oct. 3, 2000)
(hereinafter “Dent”) and Crowell et al. (US 2006/0167794 Al, pub. July 27,
2006) (hereinafter “Crowell”).
II. Claims 23—30 and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dent, Crowell, and Official Notice.
2 We regard as inadvertent the inclusion of dependent claim 41 in Rejection I
(see Final Action 4, 11) and the omission of that claim from Rejection II (see
id. at 11), because claim 41 depends from independent claim 23, which is
addressed in Rejection II.
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III. Claims 34 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dent, Crowell, Goodwin et al. (US 7,437,324 Bl, iss. Oct.
14, 2008) (hereinafter “Goodwin”), and Official Notice.3
IV. Claims 36 and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dent, Crowell, and Official Notice.
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 2—16, the Advisory Action (July 14, 2014), and the
Answer at pages 3—5, except as stated otherwise in the Analysis below.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
Claims 1—22, 31—33, and 38—40
The Appellants present four arguments alleging error in the rejection
of independent claim 1. Appeal Br. 8—14. In view of the following analysis,
which addresses each of these arguments, the Appellants do not persuade us
of error in the rejection of claim 1.
The Appellants rely upon the same arguments for the assertions of
error in the rejections of the claims depending from claim 1 (claims 2—15,
31, and 38), independent claim 15 (along with its dependent claims 14—21
and 32), and independent claim 22 (along with its dependent claims 33 and
40). See id. at 14—27. Accordingly, we are not persuaded of error in the
rejection of claims 1—22, 31—33, and 38—40 under 35 U.S.C. § 103(a).
3 We regard as inadvertent, the omission of reliance upon Official Notice, in
regard to the rejection of claims 34 and 35 (Rejection III), because the Final
Office Action relies upon the respective analyses advanced for independent
claims 23 and 27 — each of which relies upon Official Notice. See Final
Action 12—14.
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Application 12/234,551
1. Claim Limitations Reciting a “publicly accessible self-
service terminal ”
The Appellants argue that the Examiner erred in rejecting independent
claim 1, because the cited prior art does not teach certain claim limitations
relating to the recited “publicly accessible self-service terminal.” Appeal Br.
8—9; Reply Br. 3^4.
Initially, according to the Appeal Brief, independent claim 1 was
rejected erroneously, because Dent does not teach certain claimed
limitations relating to the recited “publicly accessible self-service terminal.”
Appeal Br. 8—9.
The “publicly accessible” feature was added to claim 1, by an
amendment dated June 24, 2014 — i.e., after the Final Office Action, which
is dated February, 24, 2014.
The Advisory Action (July 14, 2014), in addition to entering the
amendment, states that Crowell (not Dent, as the Appellants argue in the
Appeal Brief) teaches the “publicly accessible self-service terminal” feature.
Adv. Act., Continuation Sheet (citing Crowell H 34, 36).
Thus, the Appellants mistakenly allege that, in the Answer, “the
Office . . . changes its analysis” by “stat[ing] that Crowell teaches a
‘publicly accessible self-service terminal.’” Reply Br. 3.
Moreover, the cited portions of Crowell — disclosing kiosks in
various venues open to the public — sufficiently teach the claimed “publicly
accessible self-service terminal.” See Adv. Act., Continuation Sheet (citing
Crowell H34, 36). See also Answer 3 (citing Crowell H 6, 27, 45).
Notably, Crowell’s paragraph 36 refers to “[kjiosks” that “may be located
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wherever customers might obtain access to them” and that “shopping malls,
airports, postal facilities, and the like, would all be ideal locations for such
kiosks.” Thus, Crowell discloses the “publicly accessible self-service
terminal.”
In addition, the Appellants argue that the Examiner erred in rejecting
claim 1, because Dent does not teach the following limitations:
detecting selection of an identified payment obligation to
a payee via the publicly accessible self service terminal; [and]
receiving an originating instruction via the publicly
accessible self-service terminal to originate payment associated
with the selected payment obligation.
See Appeal Br. 9; Reply Br. 4. Recognizing that the rejection relies upon
Crowell for the “publicly accessible” feature, as discussed above, the
Appellants — in the Reply Brief— contend that it is uncertain as to whether
the Examiner relies upon Crowell for teaching the entire limitations
involving the “publicly accessible self-service terminal” feature, such that
the rejection fails to establish a prima facie case of obviousness. Reply
Br. 4.
On the contrary, there is nothing in the rejection indicating any change
in its reliance upon those portions of Dent cited as teaching the “detecting”
and “receiving” limitations (see Final Action 4—5) — except for the
“publicly accessible” feature (added by amendment after the Final Office
Action issued), which is taught by Crowell, as discussed above.
Accordingly, this aspect of the Appellants’ argument is unpersuasive, as it
presupposes that the rejection must posit either Dent or Crowell as teaching
the “detecting” and “receiving” limitations (without articulating any alleged
error in either reference), whereas the rejection instead relies upon a
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Application 12/234,551
combination of Dent and Crowell. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[0]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”) (citation omitted).
Therefore, this argument is not persuasive of error in the rejection of
claim 1.
2. Whether the Combination of Dent and Crowell Requires a
Substantial Reconstruction or Redesign, Changing Dent’s
Principle of Operation
The Appellants also argue that claim 1 stands rejected erroneously,
because the combination of Dent and Crowell, in order to achieve the recited
“user account configured to be unassociated with a banking account” would
involve a substantial reconstruction or redesign, changing Dent’s principle
of operation. Appeal Br. 9-11. According to the Appellants, Dent requires
its user account to be associated with at least one bank account, so that the
user can pay bills from that bank account. Id. at 10 (citing Dent, Fig. 7).
According to the Examiner’s Answer, modifying Dent to allow the
receipt of negotiable instruments, as Crowell (127) teaches, rather than
linking a transaction to a particular deposit account, does not modify Dent
improperly. Answer 4.
Indeed, as the Examiner explains in the Final Office Action (pages 3
and 5—6) and Answer 4, combining Crowell and Dent in the rejection simply
substitutes one source of payment funds (i.e., Dent’s deposit account) for
another (i.e., Crowell’s kiosk with a negotiable instrument acceptor), but
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does not alter the principle of operation of either reference, or require
substantial reconstruction/redesign of either reference.
Therefore, this argument is not persuasive of error in the rejection of
claim 1.
3. Whether the Combination of Dent and Crowell Renders the
Prior Art Unsatisfactory for Its Intended Purpose
The Appellants also argue that the Examiner erred in rejecting claim
1, because the combination of Dent and Crowell, in order to achieve the
recited “user account configured to be unassociated with a banking account,”
would render Dent unsatisfactory for its intended purpose — that is,
according to the Appellants, using a home computer to pay bills with funds
from a selected bank account. Appeal Br. 11—12. In particular, the
Appellants urge that utilizing Crowell’s public kiosk violates Dent’s
emphasis on paying bills and receiving notifications from the privacy of the
consumer’s own computer. Reply Br. 7 (citing Dent, col. 2,1. 65 — col. 3,1.
18).
Yet, the portion of Dent (col. 2,1. 65 — col. 3,1. 18) that the
Appellants rely upon does not mention such privacy concerns. Further, the
Examiner’s Answer submits that combining, with Dent’s payment
functionality, the capacity to receive negotiable instruments does not offend
Dent’s intended purpose, which is to enable a consumer to control the
payment remittance process every time a payment is made. Answer 5 (citing
Dent, col. 3,11. 60—63).
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Accordingly, we are not persuaded of error in the rejection of claim 1,
based upon the argument that combining Dent and Crowell might render
Dent unsatisfactory for its intended purpose.
4. Whether the Combination of Dent and Crowell Relies Upon
Improper Hindsight
The Appellants also argue that claim 1 was rejected erroneously,
because the combination of Dent and Crowell relies upon improper
hindsight. Appeal Br. 12—14. The Appellants liken the error alleged here to
the situation in In reNTP, Inc., 654 F.3d 1279, 1298—99 (Fed. Cir. 2011),
which the Federal Circuit characterized as a “piecemeal analysis.” In
support, the Appellants allege that the combination of Dent and Crowell
“produces superfluous terminals” (Appeal Br. 14) and that the supposed
“shifting reliance” from Dent to Crowell as teaching the claimed “publicly
accessible self-service terminal” (Reply Br. 8) provide evidence of a
hindsight approach.
Yet, as discussed above, the Appellants mistakenly alleged that the
rejection “shift[ed]” positions, as to the teaching for the “publicly
accessible” feature. Further, the Appellants do not address, let alone
question, the Examiner’s stated reasons for combining Dent with Crowell —
i.e., in order to permit real-time payment of bills with funds provided to a
kiosk (see Final Action 5) — in order to evaluate whether the reasoning
might have been driven by hindsight. Therefore, we are not persuaded by
the Appellants’ argument that the rejection is erroneous on account of the
alleged impermissible hindsight.
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Application 12/234,551
Claims 23—30, 34—37, and 41
In addition to the arguments (advanced for independent claim 1)
regarding the “publicly accessible” limitations and the combination of Dent
and Crowell requiring reconstruction/redesign, or rendering the prior art
unsatisfactory for its intended purpose (Appeal Br. 28—29, 31—34), the
Appellants argue that independent claim 23 was rejected erroneously,
because the prior art does not teach “the payment instruction identifying a
location identifier associated with the publicly accessible self-service
terminal” (see id. at 29—31). The Appellants contend that the rejection fails
to establish a prima facie case of obviousness, because the Examiner relies
improperly on the doctrine of inherency, in order to supply this feature. Id.
at 29-31.
However, the Final Office Action takes Official Notice of the finding
that it is well-known within the art for self-service terminals to provide
associated location information — a finding that the rejection supports with
reference to Tramontano et al. (US 7,577,613 B2, iss. Aug. 18, 2009)
(hereinafter “Tramontano”). See Final Action 12. According to Tramontano
(see col. 1,11. 11—35), self-service terminals typically transmit location
information to a host for storage and use by the related institution.
Because the Appellants do not address the propriety of the Official
Notice, or the supporting disclosure of Tramontano, we are not persuaded of
error in the rejection of independent claim 23 or claims 24—26, 34, 36, and
41 depending therefrom (for which no separate arguments are advanced).
In regard to independent claim 27, the Appellants rely upon
arguments presented for independent claim 1 — concerning the “publicly
accessible” limitations and the combination of Dent and Crowell requiring
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Application 12/234,551
reconstruction/redesign, or rendering the prior art unsatisfactory for its
intended purpose — as well as the “location identifier” argument provided
for independent claim 23. Appeal Br. 34-40. As discussed above, these
arguments are not persuasive of error in the rejection of independent claim
27 or claims 28—30, 35, and 37 depending therefrom.
Accordingly, we sustain the rejections of claims 23—30, 34—37, and 41
under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—41 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).
AFFIRMED
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