Ex Parte Siegel

Board of Patent Appeals and Interferences

Jan 17, 2007

09650034 (B.P.A.I. Jan. 17, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte BRIAN SIEGEL
___________

Appeal 2006-2537
Application 09/650,034
Technology Center 1700
___________

ON BRIEF
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Decided: January 17, 2007
___________

Before OWENS, LEVY, and FETTING, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

This appeal involves claims 1 through 15, 17 through 28, 30 and 39 through
44, the only claims pending and under consideration in this application. Claims
16, 29, 31 through 38 and 45 through 57 have been withdrawn from consideration.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 134.

We REVERSE.

Appeal Number: 2006-2537
Application Number: 09/650,034

BACKGROUND

The appellant's invention relates to a method to electronically track personal
credit information accumulated by automatically capturing information from
online transactions. (Spec 1). An understanding of the invention can be derived
from a reading of exemplary claim 1, which is reproduced below.
1. A computer-implemented method of tracking online credit card
usage by a user of a general purpose personal computing device
operating as an Internet communication device, comprising:
monitoring entries made on personal computing device using a
computer program that operates as a background process running on
the personal computing device while a foreground process is also
carried out on the personal computing device;
wherein the foreground process comprises an Internet
communication process in which an online credit card transaction is
being carried out by entry of information into a web page;
the computer program recognizing instances of the credit card
transaction in the entries made on the personal computing device by
recognition of a credit card number in the entries made into the web
page; and
upon recognizing an instance of a credit card transaction and
receiving verification of the instance of the credit card transaction, the
background process automatically populating the web page with data
stored in a user profile, and storing information describing the credit
card transaction in a database accessible and controlled by the
personal computing device.
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Appeal Number: 2006-2537
Application Number: 09/650,034

PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Boesch US 6,092,053 Jul. 18, 2000
(Oct. 7, 1998)
Wong US 6,119,933 Sep. 19, 2000
(Jul. 16, 1998)
REJECTION
Claims 1 through 15, 17 through 28, 30 and 39 through 44 stand rejected under
35 U.S.C. § 103(a) as obvious over Boesch and Wong.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the
examiner's answer (mailed Dec. 13, 2005) for the reasoning in support of the
rejection, and to appellant’s brief (filed Jun. 27, 2005) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant’s specification and claims, to the applied prior art references, and to
the respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations that follow.

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Appeal Number: 2006-2537
Application Number: 09/650,034
Claims 1 through 15, 17 through 28, 30 and 39 through 44 rejected under 35
U.S.C. § 103(a) as obvious over Boesch and Wong.
We note that the appellant argue these claims as a group. Accordingly, we
select claim 1 as representative of the group.
The examiner applies Wong to the claim limitations pertaining to tracking on-
line credit card usage with a background process while some other program is
operating in the foreground. The examiner applies Boesch to the claim limitations
pertaining to a point-of-sale computing device. (Answer 3-5).
The appellant argues primarily that Wong does not describe or suggest a
background process that both recognizes an instance of a credit card transaction
and receives verification of the instance of the credit card transaction by
recognizing a credit card number within data entry. (Br. 9-10). The examiner
responds that both recognition and verification are inherent in the authorization
described by Wong.
We find this argument rather curious given that no instance of the word
“authorize” and indeed, no word beginning with the prefix “authoriz-,” appears in
Wong. The examiner elaborates that he has construed the terms “detection” and
“monitoring” broadly. But we again find the argument curious in that it fails to
respond to the appellant’s argument that Wong does not recognize a credit card
transaction by recognizing a credit card number in the entries within a background
process.
While Wong clearly describes a credit card reader, “[t]his POS device may
include a magnetic card reader for reading a magnetic stripe on a credit card or
other customer loyalty card” (col. 1 lines 23-24), and a person of ordinary skill in
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Appeal Number: 2006-2537
Application Number: 09/650,034
the art would recognize that a magnetic card reader operates in background, the
same person of ordinary skill in the art would know that such a reader would detect
any input string coming from the reader, and would not ascribe any further
intelligence for discerning meaning within the string within the background
process absent a specific teaching to that effect. Essentially, a credit card reader is
an input device that receives a data string from a magnetic bar code and stuffs that
string into the keyboard buffer, and therefore discerns no more meaning to an input
string than does a keyboard.
The claimed subject matter specifies that the background process executes the
step of “recognizing instances of the credit card transaction [] by recognition of a
credit card number in the entries made into the web page.” (Claim 1). There is no
description or suggestion in Wong of a background process that parses the string of
data entered to discern a credit card number and that also interprets the finding of
such a number as a signal that a credit card transaction is occurring. To the
contrary, the degree of management of the process performed by the foreground in
Wong would suggest that such interpretation of credit card data strings would also
be part of the foreground process. (see, e.g., “Member Transactions”, col. 5-6).
While it is imaginable that additional intelligence could be added to a background
process to do everything in the claimed subject matter, there is no suggestion in the
record, other than the appellant’s own specification, to do so. Certainly, the
examiner has provided no evidence to support his argument that these features are
inherent. Therefore, we find the examiner's arguments to be unpersuasive and that
he has failed to provide a prima facie case.
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Appeal Number: 2006-2537
Application Number: 09/650,034
Accordingly we do not sustain the examiner's rejection of claims 1 through 15,
17 through 28, 30 and 39 through 44 under 35 U.S.C. § 103(a) as obvious over
Boesch and Wong.

CONCLUSION
To summarize,
• The rejection of claims 1 through 15, 17 through 28, 30 and 39 through 44
under 35 U.S.C. § 103(a) as obvious over Boesch and Wong is not sustained.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal Number: 2006-2537
Application Number: 09/650,034
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