Ex Parte Simon

Board of Patent Appeals and Interferences

Mar 17, 2010

09954182 (B.P.A.I. Mar. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL P. SIMON
___________

Appeal 2009-006254
Application 09/954,182
Technology Center 3600
____________

Decided: March 17, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Michael P. Simon (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-21. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 1

THE INVENTION
This invention is a system and method “for receipt of payment and
delivery of codes for a system which disables equipment in response to the
failure of a user to enter a code that corresponds with a stored code in the
vehicle.” Specification [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for obtaining a code and preventing
disablement of a device comprising the steps of:
providing a payment to a payment center;
forwarding the payment from the payment
center to a finance company, wherein the finance
company has an interest in the device;
receiving at the payment center a request for
a code which corresponds to the payment;
requesting, by the payment center, a code
from a code delivery computer;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Aug. 11, 2008) and Reply Brief (“Reply Br.,” filed Nov. 25,
2008), and the Examiner’s Answer (“Answer,” mailed Sep. 30, 2008).

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determining by the code delivery computer
whether a payment verification has been received
from the finance company;
releasing a code subsequent to the previous
code released for the device if
a payment verification for the subsequent
code has been received by the code delivery
computer; and
entering the code into the device thereby
preventing disablement of the device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Norris
Demers
Bishop
US 5,510,780
US 6,021,399
US 2001/0040503 A1
Apr. 23, 1996
Feb. 1, 2000
Nov. 15, 2001

The following rejections are before us for review:
1. Claims 19, 20, and 21 are rejected under 35 U.S.C. §102(e) as
being anticipated by Bishop.
2. Claims 1-6, 8-14, and 17-18 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Bishop and Demers.
3. Claims 7, 15, and 16 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Bishop, Demers, and Norris.

ARGUMENTS
The rejection of claims 19, 20 and 21 under §102(e) as being anticipated by
Bishop.

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Claim 19
The Appellant argues that, under the Examiner’s interpretation,
Bishop does not describe a single code delivery computer that has 1) a
storage device for storing the received indications and 2) a processor
configured to determine whether a request for a code has been received and
to provide a code if the storage device contains an indication that a payment
has been received. App. Br. 7-13 and Reply Br. 1-4.
The Examiner responds by maintaining the rejection. Answer 10-14.

Claims 20 and 21
The Appellant argues that the Examiner has not established that the
communication device in Bishop is inherently a network access card or a
modem, but only that it can be a network access card or a modem. App. Br.
13 and Reply Br. 7-8.
The Examiner states that Bishop teaches that the communications
device is “whatever type of communication is most convenient” and
therefore, concludes that the communication device can be a network access
card and a modem. Answer 4. The Examiner states “[i]n Bishop’s system a
network access card and a modem are devices that are convenient; thus,
these devices are necessarily present. Answer 14.

The rejection of claims 1-6, 8-14, and 17-18 under §103(a) as being
unpatentable over Bishop and Demers.
The Appellant argues, with respect to method claim 1, : 1) that
Bishop’s NDC 16, which the Examiner corresponds to the claimed code
deliver computer (Answer 4), does not determine whether a payment
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verification has been received from the finance company (App. Br. 14-16);
2) that Bishop fails to disclose the NDC “determining by code delivery
computer a previous code released for the device, and releasing a code
subsequent to the previous code released for the device if payment
verification for the subsequent code has been received by the code delivery
computer” (App. Br. 16-17); 3) that Demers does not disclose forwarding
the payment from the payment center to a finance company (App. Br. 19-
20).
The Examiner responds by maintaining the rejection. See Answer 14-
16.

The rejection of claims 7, 15, and 16 under §103(a) as being unpatentable
over Bishop, Demers, and Norris.
The Appellant relies upon their arguments with respect to independent
claims 1, 9, and 17 to traverse the rejection of dependent claims 7, 15, and
16. See App. Br. 21. Further, the Appellant argues that Norris does not
disclose the features discussed with regards to the rejection of claims 1, 9,
and 17. Id.
The Examiner relies upon their response to the Appellant’s arguments
with regards to the rejection of claims 1-6, 8-14, and 17-18. Answer 16.

ISSUES
The first issue is whether claim 19 is anticipated under 35 U.S.C.
§ 102(e) by Bishop. Specifically, the issue is whether Bishop describes a
computer having a storage device for storing the received indications and a
processor configured to determine whether a request for a code has been
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received and to provide a code if the storage device contains an indication
that a payment has been received.
The second issue is whether claims 20 and 21 are anticipated under 35
U.S.C. § 102(e) by Bishop. Specifically, the issue is whether Bishop
inherently describes that the communication device is a network access card
or a modem.
The third issue is whether claims 1-6 and 8 are obvious under 35
U.S.C. § 103(a) over Bishop and Demers. Specifically, the issue is whether
the Examiner’s combination of Bishop and Demers teaches the method of
claim 1, which includes a step of determining by the code delivery computer
whether payment verification has been received from the finance company.
The rejection of claim 7also turns on this issue.
The fourth issue is whether claims 9-14 and 17-18 are obvious under
35 U.S.C. § 103(a) over Bishop and Demers. Specifically, the issue is
whether one of ordinary skill in the art would have been led by Bishop and
Demers to systems recited in independent claims 9 and 17.
The rejection of claims 15 and 16 also turn on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

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The scope and content of the prior art
Bishop
1. Bishop describes a method for enabling and disabling devices or
functions of a vehicle. Bishop [0001].
2. Bishop describes a vehicle having a device with a main receiver 1,
a controller 2, and a wireless digital radio transmitter 3. Bishop
[0021].
3. Bishop describes that the main receiver, controller and wireless
digital radio transmitter may be integrated into one. Bishop
[0039].
4. Bishop describes the main receiver 1 receiving digital signals from
a main transmitter 15. Bishop [0040].
5. Bishop describes the signals including a vehicle identifier and an
instruction to enable or disable functions of a vehicle. Bishop
[0040].
6. Bishop states, “The receiver 1 passes the signal to the controller 12
for interpretation. If the controller recognizes the signal as an
instruction to enable and/or disable one or more functions of the
vehicle, then controller 2 transmits a command through the in-
vehicle transmitter 3 . . . The command may include an address of
the desired rely and an instruction to enable or disable the function
associated with that relay.” Bishop [0040].
7. Bishop describes that the controller 2 is a micrologic controller
such as a micro processor. Bishop [0021].
8. Bishop, in paragraph [0051], states:
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[0051] In operation, the present system can be utilized
for a number of purposes. For example, it can be used by
a lending institution 19 (FIG. 1) to ensure that the
borrower keeps current on his payments to the lending
company. For example, if the borrower becomes behind
in his payments, the lender can, through the transmission
of the appropriate signal to the vehicle, initiate the
warning sequence in the vehicle. If the borrower does not
take the necessary actions to satisfy his account, the
lender 19 can later transmit a signal to disable the starter
of the automobile. In this manner, while the car itself will
not be disabled if it is already running, the car can be
prevented from restarting after the engine has been
turned off. Once the borrower's account is brought
current, the system of the present invention can be used
to re-enable the starter system. In this case, the lender 19
can either directly control the paging system 15 which
transmits the warning and disable signals or, as shown in
FIG. 1, the lender 19 can be in communication through
ISDN, dedicated lines, or whatever type of
communication is most convenient, with a separate entity
such as the National Dispatch Center (NDC) 16 which
transmits such signals using a proprietary nationwide
communication network and a nationwide paging service
provider. The dispatch center 16 preferably has access to
a customer database 18 in order to know which vehicle to
communicate with. The use of a paging system is
advantageous because it allows transmission of the
signals to all geographical regions where the vehicle may
be, simultaneously. It would be very difficult for a user to
successfully escape the geographical reaches of the
lender 19.

Demers
9. Demers describes method of verifying an electronic payments.
Col. 1, ll. 49-50.
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10. Demers teaches a customer sending a electronic payment request
to a seller. Col. 8. ll. 34-65.
11. Demers teaches the seller using the information from the electronic
payment request transmit a redemption request a bank. Col. 9, ll.
25-45.
12. Demers teaches that the bank debits the customer’s account and
credits the seller’s account. Col. 9, ll. 64-66.

Norris
13. The Examiner cited Norris to teach weekly, bi-weekly, semi-
monthly, or monthly payments. Answer 8-9.
Any differences between the claimed subject matter and the prior art
14. The Examiner’s combination of the Bishop and Demers does not
teach all of the limitations of method claim 1.
The level of skill in the art
15. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of systems and method for receipt
of payment and delivery of codes for disabling equipment. We
will therefore consider the cited prior art as representative of the
level of ordinary skill in the art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (Quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)).
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Secondary considerations
16. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Anticipation
“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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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, and (3) the level of skill
in the art. 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.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
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circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 19, 20 and 21 under §102(e) as being anticipated by
Bishop.
Claim 19
We find that the Appellant has not overcome the Examiner’s prima
facie showing of anticipation. We find that the device (FF 3) containing
controller 2, main receiver 1, and transmitter 3 in Bishop (FF 2) anticipates
the claimed code delivery computer. Initially, we note that claim 19 is
directed to the structure of claimed code delivery computer and not to a
method of using the claimed code delivery computer. “[A]pparatus claims
cover what a device is, not what a device does.” Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, the
communication device, storage device, and process must have a structure
that is capable of performing the recited functions. Cf. In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional language does not confer
patentability if prior art structure has capability of functioning in the same
manner).
Claim 19 recites that the code delivery computer includes “a
communication device for receiving indications from a finance company of
whether a payment has been made for the device.” The claimed
communication device reads on Bishop’s main receiver 1. FF 2. Main
receiver 1 receives a signal that can include an instruction to enable a
function of a vehicle. FF 5. In the situation where a lender is sending the
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signal after a borrower has brought their account current (FF 8), the signal
with an enable instruction is an indication that a payment has been received.
We note that the claim 19 does not require the indication to have any
particular the form or structure. For example, claim 19 does not require that
the indication state “payment received.”
Claim 19 also recites that the code delivery computer includes “a
storage device for storing the received indications.” We find that the device
of Bishop inherently has a storage device that has a structure that is capable
of storing the received information. Under principles of inherency, when a
reference is silent about an asserted inherent characteristic, it must be clear
that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991). Bishop describes that the controller 2 is a microprocessor
and that the main receiver 1 passes the signal to the controller 2 for
processing. FF 6 and 7. We find that in order to receive the signal from the
receiver and process the signal, the controller 2 must necessarily have a
storage device that is structure to at least temporarily store the signal.
Finally, claim 19 recites “a processor configured to determine whether
a request for a code has been received and to provide a code if the storage
device contains an indication that a payment has been received.” We find
that the claimed processor reads on Bishop’s controller 2. FF 2. Bishop
describes controller 2 transmitting a command via transmitter 3, if the
controller 2 recognizes the signal as having an instruction to enable a
function of the attached vehicle. FF 6. Controller 2 recognizes the signal
(i.e., determines whether a request for a code has been received.) Id.
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Controller 2 transmit a command if the received signal includes an
instruction to enable a function of the vehicle (i.e., provide a code if the
storage device contains an indication that a payment has been received.) Id.
Accordingly, we find that the Appellant has not overcome the prima
facie showing of anticipation, and we sustain the rejection of claim 19 under
35 U.S.C. §102(e) as anticipated by Bishop.

Claims 20 and 21
Claims 20 and 21 recite that the communication device of the code
delivery computer is a network access card or a modem, respectively.
We find that the Examiner has not established that the communication
device of the code delivery computer in Bishop is inherently a network
access card or a modem. “Inherent anticipation requires that the missing
descriptive material is ‘necessarily present,’ not merely probably or possibly
present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d
1292, 1295, 63 USPQ2d 1597, 1599 (Fed. Cir. 2002) (quoting In re
Robertson, 169 F.3d 743, 745,49 USPQ2d 1949, 1950-5 1 (Fed. Cir. 1999)).
As the Examiner asserts, a modem and a network access card are two
types of convenient communication devices for Bishop’s system. Answer
14. They are both possibilities for the communication device and therefore,
neither one is necessarily present. Accordingly, we find that the Appellant
has overcome the prima facie showing of anticipation, and we reverse the
rejection of claims 20 and 21 under 35 U.S.C. §102(e) as anticipated by
Bishop.

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The rejection of claims 1-6, 8-14, and 17-18 under §103(a) as being
unpatentable over Bishop and Demers.
We note that the Appellant argues claims 1-6, 8-14, and 17-18 as a
group. Answer 14-21. However, given that independent claims 1, 9, and 17
are drawn to methods and apparatus of various scopes, we will address the
claims in the groups below. We note that the Appellant does not provide
separate arguments to address the dependent claims. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2009).

Claims 1-6 and 8
Unlike claims 9 and 17 below, claim 1 recites a method. We note in
the rejection for claim 1, the Examiner interpreted the claimed payment
center as corresponding to Demers’ seller (Answer 5) and Bishop’s lender
(Answer 4) and the claimed finance company as Demers’ bank (Answer 5).
We note that this is different then the interpretations given for the apparatus
claims 9 and 17 below. Further, we note that the Examiner has interpreted
the claimed code delivery computer as the National Dispatch Center (NDC)
16 of Bishop. Answer 4.
We find that the Examiner’s combination of Bishop and Demers does
not teach the step of “determining by the code delivery computer whether a
payment verification has been received from the finance company.” Given
the Examiner’s interpretation this step requires that the NDC 16 of Bishop
determines whether a payment verification has been received from the bank
in Demers. In the rejection, the Examiner points to paragraphs [0021] and
[0051] of Bishop to teach this limitation. Answer 4-5. However, those
paragraphs describe the vehicle controller 2 or the NDC 16 receiving a
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signal from the lending company in Bishop. FF 7-8. The Examiner equated
the lending company in Bishop to the claimed payment center. Answer 4.
Therefore, in the Examiner’s combination, the code delivery computer
determines whether a payment verification has been received by the
payment center and not by the finance company as claimed.
Accordingly, we find that the Appellant has overcome the prima facie
showing of obviousness, and we reverse the rejection of claims 9-14 and 17-
18 under 35 U.S.C. §103(a) as unpatentable over Bishop and Demers.

Apparatus Claims 9-14 and 17-18
Unlike independent claim 1, independent claims 9 and 17 recite an
apparatus and are therefore drawn to the structure of the system.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990).
We find that one of ordinary skill in the art would have been led by
Bishop and Demers to the system of claims 9 and 17. Initially, we note that
the interpretation of Bishop discussed below is different than the
interpretation of Bishop as it pertains to claim 19. We will take claim 9 as
representative, since claim 9 includes all of the limitations recited in claim
17.
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 (emphasis added)),
and reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
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it does no more than yield predictable results.” KSR, 550 U.S. at 416. The
operative question in this “functional approach” is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 415.
Bishop teaches the claimed device (i.e., vehicle, See FF 1) and finance
company (i.e., lending company, See FF 8.). Further, we find that the
claimed code delivery computer reads on the computers of the National
Dispatch Center (NDC) 16 in Bishop (FF 8).
However, Bishop does not teach the claimed payment center. Demers
teaches that the customer can make a payment to a seller electronically, and
that a bank will debit the customer’s account and credit the seller’s account.
FF 9-12. We find that the claimed payment center reads on Demers’ bank.
We find that one of ordinary skill in the art would have been led by
Bishop and Demers to provide the system of making electronic payments in
Demers in Bishop for making payments between the borrower (i.e.,
customer) and lending company (i.e., seller). This would be nothing more
than the predictable use of prior art elements according to their established
functions.
We note that the Appellant argues that the NDC of Bishop is not a
code delivery computer that forwards codes to the payment center. App.
Br. 20-21. Claim 9 recites “a code delivery computer which receives an
indication from the finance company of whether a payment has been made
and for forwarding codes to the payment center.” The “for forwarding
codes to the payment center” is a functional limitation and therefore, we
construe claim 9 to require that the NDC have a structure that is capable of
forwarding codes to the payment center. Cf. In re Schreiber, 128 F.3d
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1473, 1477-78 (Fed. Cir. 1997) (functional language does not confer
patentability if prior art structure has capability of functioning in the same
manner). This limitation is drawn to the structure of the NDC. Bishop
describes that the NDC has a structure that is capable of forwarding codes
to a vehicle and a structure that can communicate through “ISDN,
dedicated lines, or whatever type of communication is most convenient.”
See FF 8. Therefore, we find that the structure of the NDC is capable of
forwarding the code to the payment center.
Accordingly, we find that the Appellant has not overcome the prima
facie showing of obviousness, and we sustain the rejection of claims 9-14
and 17-18 under 35 U.S.C. §103(a) as unpatentable over Bishop and
Demers.

The rejection of claims 7, 15, and 16 under §103(a) as being unpatentable
over Bishop, Demers, and Norris.
As to claim 7, this rejection is directed to a claim dependent on claim
1, whose rejection we have reversed above. For the same reasons, we will
not sustain the rejections of claims 7, 15, and 16 over the cited prior art. Cf.
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.").
As to claims 15 and 16, we shall sustain the standing 35 U.S.C.
§ 103(a) rejection of dependent claims 15 and 16 as being unpatentable over
Bishop and Demers since the Appellant argued against the rejection of
claims 15 and 16 for the same reasons used to argue against the rejection of
claim 9. App. Br. 21. Accordingly, because we found them unpersuasive as
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to that rejection, we find them equally unpersuasive as to error in the
rejection of claims 15 and 16.

CONCLUSIONS OF LAW
We conclude that the Appellant has not overcome the prima facie
showing of anticipation as to the rejection of claim 19 under 35 U.S.C. §
102(e) as anticipated by Bishop.
We conclude that the Appellant has overcome the prima facie
showing of anticipation as to the rejection of claims 20 and 21 under 35
U.S.C. § 102(e) as anticipated by Bishop.
We conclude that the Appellant has overcome the prima facie
showing of obviousness as to the rejection of claims 1-6 and 8 under 35
U.S.C. § 103(a) as unpatentable by Bishop and Demers and as to the
rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable by Bishop,
Demers, and Norris.
We conclude that the Appellant has not overcome the prima facie
showing of obviousness as to the rejection of claims 9-14 and 17-18 under
35 U.S.C. § 103(a) as unpatentable by Bishop and Demers and as to the
rejection of claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable by
Bishop, Demers, and Norris.

DECISION
The decision of the Examiner to reject claims 9-19 is affirmed and to
reject claims 1-8, 20, and 21 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).
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AFFIRMED-IN-PART

mev

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