Ex Parte Smith

Board of Patent Appeals and Interferences

Aug 13, 2010

10703373 (B.P.A.I. Aug. 13, 2010)

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.
10/703,373 11/07/2003 Emmitt J. Smith III 107504.00004 1002
33649 7590 08/13/2010
Mr. Christopher John Rourk
Jackson Walker LLP
901 Main Street, Suite 6000
DALLAS, TX 75202
EXAMINER
WORJLOH, JALATEE
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
08/13/2010 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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMMITT J. SMITH III
____________

Appeal 2009-009596
Application 10/703,373
Technology Center 3600
____________

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

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009596
Application 10/703,373
2

STATEMENT OF THE CASE
Emmitt J. Smith III (Appellant) seeks our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 21, 22, 26-40, and 42-44.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a new ground of rejection pursuant
to 37 C.F.R. 41.50(b).2.

THE INVENTION
The invention is a system and method of using a personal interface
device that has a payment selection system that transmits payment account
data to a point-of-sale system. Specification [0004]-[0006].
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.
21. A system for using a personal device to
complete a purchase transaction comprising:
an RFID system receiving RFID data from a
plurality of products;
a point-of-sales system receiving the RFID
data and generating sales data from the RFID data;
and

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Nov. 21, 2008) and Reply Brief (“Reply Br.,” filed Mar. 26,
2009), and the Examiner’s Answer (“Answer,” mailed Jan. 26, 2009).
Appeal 2009-009596
Application 10/703,373

3
a payment selection system of the personal
device receiving the sales data and transmitting
payment data in response to the sales data.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sehr
Ogasawara
Berquist
Howell
Garver
US 2001/0018660 A1
US 2002/0059147 A1
US 2002/0190862 A1
US 2003/0195818 A1
US 7,114,656 B1
Aug. 30, 2001
May 16, 2002
Dec. 19, 2002
Oct. 16, 2003
Oct. 3, 2006
The following rejections3 are before us for review:
1. Claims 21, 22, 38, 39, 42 and 44 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Garver and Ogasawara.
2. Claims 26, 27, 40, and 43 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Garver, Ogasawara, and Berquist.
3. Claims 22 and 29 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Garver, Osgasawara4 and Sehr.

3 We note that the Appellant includes arguments disputing the
appropriateness of an objection to claim 31. App. Br. 9. However, since
this objection is a petitionable matter and not an appealable matter, we will
not address the Appellant’s argument. See Manual of Patent Examining
Procedure (MPEP) § 1201 (8th ed., Rev. 7, Jul. 2008).
Appeal 2009-009596
Application 10/703,373

4
4. Claim 28 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Garver, Ogasawara, and Howell.
5. Claims 30-37 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Garver, Ogasawara, and Sehr.

ISSUES
The first issue is whether claims 21, 22, 38, 39, 42 and 44 are
unpatentable under 35 U.S.C. §103(a) over Garver and Ogasawara.
Specifically, the major issue is whether there is motivation to combine
Garver and Ogasawara and whether independent claim 21 requires that the
RFID system to be separate from the personal device.
The second issue is whether claims 26, 27, 40, and 43 are
unpatentable under 35 U.S.C. §103(a) over Garver, Ogasawara, and
Berquist.
The third issue is whether claims 22 and 29 are unpatentable under 35
U.S.C. §103(a) over Garver, Ogasawara and Sehr.
The fourth issue is whether claim 28 is rejected under 35
U.S.C. § 103(a) over Garver, Ogasawara, and Howell.
The fifth issue is whether claims 30-37 are unpatentable under 35
U.S.C. §103(a) over Garver, Ogasawara, and Sehr. The major issue is

4 In the statement of the rejection of dependent claims 22 and 29, found on
page 7 of the Answer, the Examiner seems to have mistakenly omitted the
Ogasawara references. However, the Examiner does refer to the rejection of
independent claim 21, which was based on a combination of Garver and
Ogasawara. Answer 7 (“as applied to claim 21 above”). See also Answer 8
(“Garver in combination with Ogasawara disclose the features of claim 29
(see claim 21 above)” and App. Br. 17.
Appeal 2009-009596
Application 10/703,373

5
whether it would have been obvious to one having ordinary skill in the art to
the combination of Garver, Ogasawara, and Sehr to teach receiving first
identification data from a driver’s license associated with an individual at the
personal device.

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).
The Specification
1. The Specification describes that a personal device can be a
combination of software and hardware systems and states:
A software system can include one or more
objects, agents, threads, lines of code, subroutines,
separate software applications, user-readable
(source code, machine-readable (object) code, two
or more lines of code in two or more
corresponding software applications, databases, or
other suitable software architectures. In one
exemplary embodiment, a software system can
include one or more lines of code in a general
purpose software application, such as an operating
system, and one or more lines of code in a specific
purpose software application.
Specification [0019].
2. The Specification describes that the personal device comprises
multiple systems, including an identification verification system
208, a payment selection system 212, and an identification device
slot. Specification [0021]-[0022] and Fig. 2.
Appeal 2009-009596
Application 10/703,373

6
3. The Specification does not contain an express definition of
“portal.”
4. A definition of “portal” is “1. A large and imposing doorway,
entrance, or gate. 2. An entrance or means of entrance .” (See Webster’s II New Riverside University
Dictionary 917 (1984) (Entry for “portal.”)

Ogasawara
5. Ogasawara describes an electronic shopping system that uses a
customer’s wireless telephone as a personal shopping terminal to
obtain product information and price and perform self payment.
Ogasawara [0033].
6. Ogasawara describe that a customer begins by contacting a store’s
server to download a purchase transaction program to their
wireless phone, which facilitates selection of desired products and
payment. Ogasawara [0013].
7. Ogasawara states: “Thus, the purchase transaction program
converts the wireless telephone into a point of purchase electronic
shopping terminal.” Ogasawara [0016].
8. Ogasawara describes verifying a customer by requesting a
password or authorization number in order for the customer to use
the purchase transaction program. Ogasawara [0035]. See also
Ogasawara [0074] and [0117] – [0120].
9. Ogasawara describes providing guidance for a user to manually
enter an authorization number or password. Ogasawara [0117].
Appeal 2009-009596
Application 10/703,373

7
10. Ogasawara describes that an IC-card read/writer on the wireless
phone can be uses to read and write to an IC card that contains user
account information. Ogasawara [0083].
11. Ogasawara describes that authentication of the password can
alternatively be performed by the purchase transaction program,
the store server, or by the IC card. Ogasawara [0120]. See also
Ogasawara [0135].
12. Ogasawara describes connecting a bar code scanner 20 to the
wireless telephone to scan UPC bar codes, but suggests that other
scanning systems could be used. Ogasawara [0125].
13. Ogasawara describes that the wireless telephone has an input/ouput
port 36 (See Ogasawara [0080] and [0082]) and that the “[t]he
input/ouput port 36 facilitates electrical communication between
the microprocessor 38 and the bar code scanner 20 via . . . or any
other suitable interface 19” (Ogasawara [0082]).
14. Ogasawara describes that, as each bar code is scanned, the
purchase transaction program sends the barcode data to the store
server, which then responds with a description and price for the
product. Ogasawara [0078]. See also Ogasawara [0127].
15. Ogasawara describes that a purchase list, with the product and the
price, is displayed to a purchaser in order to give the purchase an
opportunity to either confirm or delete the item from a purchase
list after each selection and once all of the purchase selections have
been made. Ogasawara [0127] - [0128].
Appeal 2009-009596
Application 10/703,373

8
16. Ogasawara describes that the customer indicates all of items have
been scanned by pressing a predetermined key on a keypad and
that a total price is then displayed. Ogasawara [0129].
17. Ogasawara describes that the customer may pay for the purchases
with an IC card, credit card, check card or other from using the
wireless telephone. Ogasawara [0130] and [0132].
18. Ogasawara states: “Optionally, server personal shopping
application 54 performs billing functions, such as performing the
necessary communications and transactions with credit card
companies in order to facilitate the billing of purchasers by the
credit card companies.” Ogasawara [0103].
19. Ogasawara describes that an electronic receipt can be stored on the
IC card so that it can later be downloaded to a customer’s
computer. Ogasawara [0135].
20. Ogasawara discloses the purchase transaction program has
portions. See Ogasawara [0100].

Garver
21. Garver describes a self-checkout system for a retail store that uses
a portable terminal to identify and log products. Col. 2, ll. 11-19.
22. Garver describes that the portable terminal has a barcode scanner
but teaches that an RFID scanner can be used as an alternate. Col.
3, lines 10-19 and col. 5, lines 37-42.
23. Garver describes a credit/debit card processor 46 that is
implemented using any of well known techniques and describes
Appeal 2009-009596
Application 10/703,373

9
receiving an indication from the credit card processor that the
credit/debit card transaction has been approved. Col. 9, ll. 14-29.

Sehr
24. Sehr describes an event admission system which uses visitor cards,
to store information such ticket admission, payment information,
and other service related information. See Br. [0024].
25. Sehr describes that a visitor card can include an electronic
representation of a visitor’s driver’s license. Sehr [0074]. See also
Sehr [0078]-[0079], [0088].
26. Seher describes an operator or merchant comparing the date of
birth which is stored on the visitor card to an ID document
presented by the visitor. Sehr [0094] and [0130].
27. Seher describes a merchant verifying a driver’s license number
stored on the visitor card to one on an ID document presented by
the cardholder. Sehr [0126].

Berquist
28. Berquist describes categorizing data that was read with an RFID
scanner. See Berquist [0029] – [0034] and [0039].
29. Berquist discloses that the subject of the data can be retail goods.
Berquist [0007].

Howell
30. Howell’s paragraph [0040] describe Figure 5A and describes that
after scanning an item a digital sales assistant terminal 14 can
Appeal 2009-009596
Application 10/703,373

10
query a product database, which is indexed by a product
identification code, to acquire product identification information.

ANALYSIS
The rejection of claims 21, 22, 38, 39, 42 and 44 under 35 U.S.C. §103(a) as
being unpatentable over Garver and Ogasawara.
Claim 21
The Appellant argues 1) that there is no motivation to combine Garver
and Ogasawara since the result would be unpredictable (App. Br. 10-12 and
Reply Br. 5-6) and 2) that the Examiner has improperly construed the
limitation of “a payment selection system of the personal device receiving
the sales data and transmitting payment data in response to the sales data” as
reading on the teachings of Ogasawara (App. Br. 10-9 and Reply Br. 5).
Turning to the Appellant’s first argument, the Appellant argues that
there is no motivation to combine Graver and Ogasawara, including that the
combination is more than the combining of prior art elements according to
known methods to yield predictable results. App. Br. 10-12. The Appellant
argues that “combining elements from fixed self-checkout station with
elements from a system that uses a customer’s wireless telephone could not
be done according to known method.” App. Br. 10-11. The Appellant
asserts that the result would be unpredictable because it is not known who
the system would operate in different stores and with multiple fixed
checkout stations and could result in the customer being charged multiple
times. App. Br. 11.
We disagree with the Appellant. The Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Appeal 2009-009596
Application 10/703,373

11
Hotchkiss, 11 How. 248” KSR, 550 U.S. 398 , 415 (2007). (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (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 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.
Ogasawara teaches a system where a customer uses a wireless
telephone (i.e. a personal device) that has a UPC scanner attached so that the
customer may scan items for purchase. See FF 5-7 and 12. We note that
Ogasawara expressly teaches that the other types of scanners can be used.
FF 12. Ogasawara teaches that a customer can download a purchase
transaction program, designed for a particular store, to their wireless
telephone and that “[thus, the purchase transaction program converts the
wireless telephone into a point of purchase electronic shopping terminal.”
FF 6 and 7. The purchase transaction program has programming that
generates a list of items, with prices, and calculates a total price (i.e. a point-
of-sale system) (FF 14-16) and has programming that facilitates payment of
the purchase (i.e. a payment selection system) (FF 16-17).
Like Ogasawara, Graver teaches a system where the customer uses a
portable terminal (i.e. a personal device) to scan items for purchase with a
scanner. FF 21 and 22. Graver expressly teaches that an alternate to a UPC
barcode scanner is an RFID scanner (i.e. a RFID system). FF 22.
We find that modifying Ogasawara’s wireless phone system to have
an RFID scanner system instead of a UPC bar code system would be nothing
Appeal 2009-009596
Application 10/703,373

12
more than the simple substitution of one scanning system for another. As to
the Appellant’s assertion that the results of such a combination would be
unpredictable (App. Br. 10-12), the Appellant provides no evidence either in
the references or otherwise to support their assertion.
Accordingly, we are not persuaded by the Appellant’s argument that
combining Ogasawara and Garver would not be obvious.
Turning to the Appellant’s second argument, the Appellant argues that
the Examiner has improperly construed the limitation of “a payment
selection system of the personal device receiving the sales data and
transmitting payment data in response to the sales data” so that Ogasawara’s
paragraphs [0033] and [0130]-[0132] teach this limitation. The Appellant’s
assertion that: “Under the Examiner’s implicit construction, the RFID
system and the personal device are therefore the same thing.” App Br. 10.
The Appellant seems to be based on claim 21 requiring that the RFID system
and the personal device are separate devices in order for the payment
selection system of the personal device to receive the sales data. See App.
Br. 9-10.
However, we find that claim 21 does not require the RFID system and
the personal device to be separate devices. While claim 21 does require the
payment selection system to be part of the personal device, claim 21 is silent
as to whether the RFID system is also part of the personal device or separate
from the personal device and, therefore, claim 21 encompasses both. Claim
21 does not preclude the claimed personal device from being a combination
of different systems. Claim 21 does not preclude the payment selection
system from receiving sales data from another system of the personal device.
Further, to construe claim 21 as the Appellant argues, would be inconsistent
Appeal 2009-009596
Application 10/703,373

13
with Appellant’s Specification, which describes the personal device as a
combination of several software or hardware systems. FF 1-2. The
Appellant’s argument is based on a limitation that is not required by claim
21. “Many of appellant’s arguments fail from the outset because, . . . they
are not based on limitations appearing in the claims . . . .” In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
Accordingly, we find that the Appellant has not overcome the
rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
Garver and Ogasawara. Since our rationale in affirming the rejection above
differs from that of the Examiner, we designate our affirmance as a new
ground of rejection pursuant to 37 C.F.R 41.50(b).

Claim 22
The Appellant argues that neither Garver nor Ogasawara teach the
limitations of claim 22 because “it is improper to construe the customer’s
wireless telephone of Ogasawara as each of the RIFD system, the payment
selection system of the personal device, and the physical identification
device. App. Br. 12-13 and Reply Br. 6.
As discussed above with regards to claim 21, we find no requirement
that the RIFD system and the payment selection system be separate from or
not a part of the personal device. Further, we find no requirement that the
physical identification device be separate or not a part of the personal
device. Claim 22 is again silent as to whether or not physical identification
device is separate or a part of the personal device and therefore encompasses
both. The Appellant’s argument is based on a limitation that is not required
by claim 21. “Many of appellant’s arguments fail from the outset because, .
Appeal 2009-009596
Application 10/703,373

14
. . they are not based on limitations appearing in the claims . . . .” In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
However, we note that Ogasawara describes comparing a customer
entered password or pin (i.e. second identification data) again data (i.e. first
identification data) from an IC card (i.e. a physical identification device).
FF 8-11. The IC card is separate from the wireless phone (i.e. the personal
device). See FF 10. Accordingly, we find that the Appellant has not
overcome the rejection of claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Graver and Ogasawara. Since our rationale in affirming
the rejection above differs from that of the Examiner, we designate our
affirmance as a new ground of rejection pursuant to 37 C.F.R 41.50(b).

Claim 38
The Appellant argues: 1) that the Examiner improperly rejected claim
38 since the Examiner relied upon the rationale of the rejection of claim 21
instead of separately addressing each limitation of claim 38 (App. Br. 13 and
Reply Br. 6) and 2) that neither Garver nor Ogasawara disclose “a payment
system of the personal device generating payment authorization data
corresponding to the sales data” (App. Br. 13).
Turning to the Appellant’s first argument, the Appellant argues that
the Examiner has not examined claim 38 because the Examiner relies upon
the rejection of claim 21 to address the rejection of claim 38. Reply Br. 6.
In the rejection, the Examiner states: “Claims 38 and 39 are rejected on the
same rationale as claim 21 above.” Answer 4.
We find that the Examiner has established a prima facie showing of
obviousness in rejecting claim 38. We note that, contrary to the Appellant’s
Appeal 2009-009596
Application 10/703,373

15
statement that claim 38 contains “entirely different limitations” (Reply Br.
6), the subject matter of claim 38 is very similar to the subject matter of
claim 21. Both recite systems that comprise an RFID system, a point-of-sale
system, and a payment selection system. Cf. Claim 21 and 38. The
Examiner addressed each of these elements in the rejection of claim 21,
provided citations to where the elements could be found in the references,
and provided a rationale for making the proposed combination. Answer 3-4.
Given the similarity of the subject matter in claims 21 and 38, we are not
persuaded by the Appellant’s argument that claim 38 contains “entirely
different limitations” and that claim 38 remains “unexamined” (Reply Br. 6).
Turning to the Appellant’s second argument, the Appellant argues that
Garver and Ogasawara fail to the disclose the claimed payment system
because the references
instead disclose a self check station 40 that is used to
tender payment or a customer’s wireless telephone that reads
bar codes and not RFID tags and that only interacts with a store
checkout terminal but which does not receive sales data
generated by a point-of-sale system that receives the RFID data.
App. Br. 13. The Appellant’s argument, though not entirely clear, seems to
be that neither Garver nor Ogasawara describes the claimed invention.
However, as discussed above with regards to claim 21, we find that the
combination of Garver and Ogasawara teaches the claimed payment system.
The Appellant’s argument fails to address the combination of Garver and
Ogasawara.
Accordingly, we find that the Appellant has not overcome the
rejection of claim 38 under 35 U.S.C. § 103(a) as being unpatentable over
Garver and Ogasawara. Since our rationale in affirming the rejection above
Appeal 2009-009596
Application 10/703,373

16
differs from that of the Examiner, we designate our affirmance as a new
ground of rejection pursuant to 37 C.F.R 41.50(b).

Claim 39
The Appellant argues neither Garver nor Ogasawara teach a
transaction tracking system that generates a user-readable list. App. Br. 13
and Reply Br. 6. The Appellant argues that“[t]he list of Garver is not a user-
readable list” and that Ogasawara does not disclose generating the claimed
user readable list. App. Br. 13.
However, we find that Ogasawara expressly teaches that a purchases
list is displayed to a purchaser in order to give the purchase an opportunity
to either confirm or delete the item from a purchase list after each selection
and once all of the purchase selections have been made. FF 15.
Accordingly, the Appellant has not overcome the rejection of claim 39 under
35 U.S.C. § 103(a) as being unpatentable over Garver and Ogasawara.
Since our rationale in affirming the rejection above differs from that of the
Examiner, we designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R 41.50(b).

Claim 42
The Appellant argues that neither Garver nor Ogasawara teaches an
RFID system that comprises a portal receiving the RFID data as recited in
claim 42. App. Br. 13-14 and Reply Br. 6-7. The Examiner responds that:
“Although Ogasawara does not use the term “portal”, the telephone of
Ogasawara acts as a portal. That is, it is a gateway for receiving the
Appeal 2009-009596
Application 10/703,373

17
information about the products.” Answer 14. The Appellant replies that that
the Examiner has construed “portal” unreasonably broad. Reply Br. 6-7.
However, we agree with the Examiner and find that the Examiner has
not unreasonably construed the term “portal.” We note that the Examiner‘s
construction of “portal” as a gateway (Answer 14) is consistent with
dictionary definitions of the term (see FF 4). We note that the Appellant’s
Specification does not contain an express definition of portal or include the
word “portal.” FF 3. Further, we note that Ogasawara describes that the
wireless telephone has an input/ouput port 36 (See Ogasawara [0080] and
[0082]) and that the “[t]he input/ouput port 36 facilitates electrical
communication between the microprocessor 38 and the bar code scanner 20
via . . . or any other suitable interface 19.” FF 13. We do not find it
unreasonable to construe “portal” to encompass an input/output port of the
wireless telephone 18 in Ogasawara and the Appellant has not presented any
evidence to the contrary.
Accordingly, we find that the Appellant has not overcome the
rejection of claim 42 under 35 U.S.C. § 103(a) over Graver and Ogasawara.
Since our rationale in affirming the rejection above differs from that of the
Examiner, we designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R 41.50(b).

Claim 44
The Appellant seems to argue that, when properly construed, claim 44
requires that the recited price data and product description data be received
from the point of sale system of claim 21 and that the system in Ogasawara
Appeal 2009-009596
Application 10/703,373

18
obtains product and price information from a server and not from a point of
sale system. App. Br. 14 and Reply Br. 7.
However, we find no such requirement in claim 44. Claim 44 recites
“wherein the payment selection system of the personal device receiving the
sales data and transmitting the payment data in response to the sales data
receives price data and product description data for each of the products and
stores the price data and the product description data for future retrieval.”
Claim 44 is silent as to who the price data and product description data is
received from. Claim 44 only requires that the payment selection system
receives this data and does not include any limitations as to which system
transmits this data. Further, we see nothing in independent claim 21 that
requires the point-of-sale system to transmit price data and product
description data. The Appellant’s argument is based on limitations that are
not recited in claim 44. Accordingly, we find that the Appellant has not
overcome the rejection of claim 44 under 35 U.S.C. § 103(a) as being
unpatentable over Graver and Ogasawara. Since our rationale in affirming
the rejection above differs from that of the Examiner, we designate our
affirmance as a new ground of rejection pursuant to 37 C.F.R 41.50(b).

The rejection of claims 26, 27, 40, and 43 under 35 U.S.C. §103(a) as being
unpatentable over Garver, Ogasawara, and Berquist.
Claim 26
Claim 26 recites “a transaction tracking system receiving the RFID
data and storing product data corresponding to each of the plurality of
products in one or more predetermined categories.” The Appellant argues
that not Garver, Ogasawara, or Berquist disclose this limitation and that
Appeal 2009-009596
Application 10/703,373

19
“there would have been no motivation to modify those systems to organize
data for easy retrieval, as Garver and Ogasawara only use the data for
conducting a transaction, and Berquist only addresses methods of managing
the transfer, use, and importation of data.” App. Br. 14. See also Reply Br.
7.
Contrary to the Appellant’s argument, Ogasawara does teach
transferring and importing data in order to conduct the transaction.
Ogasawara, as discussed above with regards to claim 21, teaches a wireless
phone that includes a purchase transaction program that generates a list of
items and prices from the scanner RFID data. FF 15. The programming
generates the list by sending the received RFID data to a stored server (i.e. a
remote source) which has stored product data and using the RFID data
returns the product name and price (i.e. product data). FF 14. Berquist
teaches that it is known to categorize data, including data about retail goods
(FF 29), collected from an RFID. FF 28. We note that the Appellant states:
“Berquist disclose at best that RFID data can be categorized.” Reply Br. 7.
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR
Intl. v Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)). We note that the Appellant does not
provide any evidence that the combination would have unexpected results.
Accordingly, we find that the Appellant has not overcome the
rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Garver,
Ogasawara, and Berquist. Since our rationale in affirming the rejection
Appeal 2009-009596
Application 10/703,373

20
above differs from that of the Examiner, we designate our affirmance as a
new ground of rejection pursuant to 37 C.F.R 41.50(b).

Claim 27
The Appellant argues that neither Garver nor Ogasawara describes a
remote transaction tracking data system receiving transaction data from a
remote source, where the remote source receives the RFID data and
generates data that includes the product data. App. Br. 15 and Reply Br. 7-8.
However, we note that Ogasawara describes that, as each bar code is
scanned, a portion of the purchase transaction program sends the barcode
data to the store server (i.e. remote source), which then responds with a
description and price for the product. FF 14.
Accordingly, we find that the Appellant has not overcome the
rejection of claim 27 under 35 U.S.C. § 103(a) as unpatentable over Garver,
Ogasawara, and Berquist. Since our rationale in affirming the rejection
above differs from that of the Examiner, we designate our affirmance as a
new ground of rejection pursuant to 37 C.F.R 41.50(b).

Claim 40
The Appellant argues that Garver, Ogasawara, and Berquist do not
describe a spreadsheet interface system assigning each of the plurality of
product data to one or more categories as recited in claim 40. App. Br. 15
and Reply Br. 8. The Appellant states: ‘A “database” is not a “spreadsheet,”
and the term “spreadsheet” is not even used in Garver, Ogasawara or
Berquist.” App. Br. 15.
Appeal 2009-009596
Application 10/703,373

21
The Appellant’s argument is based on a limitation that does not
appear in the claim. “Many of appellant’s arguments fail from the outset
because, . . . they are not based on limitations appearing in the claims . . . .”
In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Claim 40 does not require a
spreadsheet, but a “spreadsheet interface system.” Claim 40 recites “a
spreadsheet interface system assigning each of the plurality of product data
to one or more categories.”
Accordingly, we find that the Appellant has not overcome the
rejection of claim 40 under 35 U.S.C. § 103(a) as unpatentable over Garver,
Ogasawara, and Berquist.

Claim 43
The Appellant argues that neither Garver nor Berquist describes the
point of sale system receiving the RFID data and generating sales data from
the RFID data generates an electronic file having two or more associated
fields in a predetermined data structure form each of the products selected
from the group comprising an associated price for each of the products,
associated source data for each of the products, an associated use code for
each of the products, and an associated tax category for each of the product
as recited in claim 43. App. Br. 15 and Reply Br. 8. Further, the Appellant
traverses the Examiner’s assertion that the limitation that requires the data to
be in the form of a price, source data, an associated use code, or an
associated tax category is non-function descriptive material. Id.
However, we note that Ogasawara describes that a purchase list, with
the product and the price, is displayed to a purchaser in order to give the
purchase an opportunity to either confirm or delete the item from a purchase
Appeal 2009-009596
Application 10/703,373

22
list after each selection and once all of the purchase selections have been
made. FF 15. The description of the displayed purchase list, teaches an
electronic file having two or more two or more associated field, since a
listing that includes a product, for example, Oreos TM, (i.e. associated source
data) and prices (i.e. associated price) would have a field for the product and
the price.
As to the Appellant’s argument regarding non-functional descriptive
matter, we find it unnecessary to reach this argument, since as discussed
above Ogasawara teaches the claimed data fields. Accordingly, we find that
the Appellant has not overcome the rejection of claim 43 under 35
U.S.C. § 103(a) as unpatentable over Garver, Ogasawara, and Berquist.
Since our rationale in affirming the rejection above differs from that of the
Examiner, we designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R 41.50(b).

The rejection of claims 22 and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Garver, Ogasawara and Sehr.
Claim 22
The Appellant argues that neither Garver nor Sehr teaches the
limitation of claim 22. App. Br. 16-17 and Reply Br. 8. However, as
discussed above (see supra n. 2), we found that the combination of Garver
and Ogasawara taught the limitations of claim 22. Accordingly, for the
same reasons as above, we find that the Appellant has not overcome the
rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable over Garver,
Ogasawara, and Sehr.

Appeal 2009-009596
Application 10/703,373

23
Claim 29
The Appellant argues that none of Garver, Sehr, or Ogasawara teaches
a transaction processing system that receives payment account data after the
selection of one of the payment accounts and wherein the point-of-sale
system receives the payment account data from the transaction processing
system and provides transaction data to the transaction processing system.
App. Br. 17 and Reply Br. 8.
However, we find that the combination of Garver and Ogasawara
teaches this limitation. Ogasawara describes that the server personal
shopping application 54 (i.e. a transaction processing system) can perform
billing functions, such as transactions with credit card companies. FF 18. In
order to process the transaction with credit card companies, the personal
shopping application would have to receive payment account data (e.g. the
selected account number, etc.) and transaction data (e.g. the amount) from
the point of sale system on the wireless phone and an approval (e.g. payment
account data) would have to be sent back to the point of sale system. Note,
Garver describes a credit/debit card processor 46 that is implemented using
any of well known techniques and describes receiving an indication from the
credit card processor that the credit/debit card transaction has been
approved. FF 23. Given these teachings, we find that one of ordinary skill
in the art would have been led to the steps recited in claim 29. Accordingly,
we find that the Appellant has not overcome the rejection of claim 29 under
35 U.S.C. 103(a) as unpatentable over Garver, Ogasawara, and Sehr. Since
our rationale in affirming the rejection above differs from that of the
Examiner, we designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R 41.50(b).
Appeal 2009-009596
Application 10/703,373

24

The rejection of claim 28 under 35 U.S.C. §103(a) as being unpatentable
over Garver, Ogasawara, and Howell.
The Appellant argues that Howell does not teach a classification query
system receiving product data, determining the product data has not been
assigned to a classification, and generating a classification query to allow a
user to assign the product data to a classification as recited in claim 28.
App. Br. 18-19 and Reply Br. 8-9. In the rejection, the Examiner cited
paragraph [0040] and Figure 5A of Howell to teach this limitation. The
Examiner responds that the Howell’s “product identification code” can be
considered a classification and that the functional recitations have been
given little patentable weight. Answer 18-19.
Paragraph [0040] of Howell describes that after scanning an item a
digital sales assistant terminal 14 can query a product database, which is
indexed by a product identification code, to acquire product identification
information. FF 30. However, we find that this passage of Howell does
not describe a classification query system that functions are recited in
claim 28 nor has the Examiner established that the passage describes 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).
Accordingly, we find that the Appellant has overcome the rejection of
claim 28 under 35 U.S.C. 103(a) as unpatentable over Garver, Ogasawara,
and Howell.

Appeal 2009-009596
Application 10/703,373

25
The rejection of claims 30-37 under 35 U.S.C. §103(a) as being
unpatentable over Garver, Ogasawara, and Sehr.
Claim 30
The Appellant argues that the combination of Garver and Sehr does
not teach the steps of receiving first identification data or second
identification data as recited in claim 30 because “as there would need to be
a little human operator inside of the personal device that performs the step of
receiving second identification data from a source other than the personal
device, such as by looking out through a window in the casing of the
personal device.” App. Br. 18.
In the rejection, the Examiner relies upon paragraphs [0130], [0118],
and [0119] of Ogasawara to teach the steps of receiving first and second
identification data. Answer 9. Paragraphs [0118] and [0119] describe that
the customer authentication process that requires that customer to enter a
password or authorization number which can be authenticated by an IC card,
server, or the purchase transaction program. See FF 8-11. Paragraph [0130]
describes the customer supplying credit card information. FF 17. The
Examiner cited Sehr’s paragraph [0126] to teach receiving the first
identification data from a driver’s license associated with an individual at the
personal device. FF 28. Paragraph [0126] of Sehr describes adult having
their date of birth stored on a card, after an operator verified their date of
birth with an ID document, which then can be presented to a point of sale
terminal to purchase alcohol. Id. Sehr implies that the ID document could be
a driver’s license. See FF 25. We note that Sehr includes other descriptions
of merchants or operators comparing information stored on a card to a
driver’s license or ID document. FF 24-27.
Appeal 2009-009596
Application 10/703,373

26
However, neither Ogasawara nor Sehr teaches that a driver’s license
has any means of communicating with an automated system, like the IC card
communicates with the wireless phone in Ogasawara or the visitor card with
the point of sale system in Sehr. Sehr only describes a human operator or
merchant using the driver’s license for identification. Given this, we find
that the Examiner has not established that the above teachings of Ogasawara
and Sehr would have led one of ordinary skill in the art to receive the first
identification data from a driver’s license associated with an individual at the
personal device instead of the IC card in Ogasawara, and the Examiner
provides no other explanation (see Answer 20). Accordingly, we find that
the Appellant has overcome the rejection of claim 30, and claims 31-37
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Garver,
Ogasawara, and Sehr.

DECISION
The decision of the Examiner to reject claims 21, 22, 26, 27, 29, 38-
40, and 42-44 is affirmed.
The decision of the Examiner to reject claims 28 and 30-37 is
reversed.
We designate our affirmance of claims 21, 22, 26, 27, 29, 38-40 and
42-44 as a new ground of rejection since our rationale differs from that of
the Examiner.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
Appeal 2009-009596
Application 10/703,373

27
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mev

MR. CHRISTOPHER JOHN ROURK
JACKSON WALKER LLP
901 MAIN STREET, SUITE 6000
DALLAS TX 75202