Ex Parte Ueno et al

Board of Patent Appeals and Interferences

Dec 16, 2009

09819459 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte TOSHIHIKO UENO and YOSHIHIRO HOSHINO 8
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Appeal 2009-004815 11
Application 09/819,459 12
Technology Center 3600 13
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Decided: December 16, 2009 16
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. 20
FETTING, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL26
Appeal 2009-004815
Application 09/819,459

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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellants invented systems and methods for data transfer using a 4
mobile terminal and a two-dimensional barcode, and more particularly, a 5
processing system, server, processing terminal, and communications 6
terminal that can be used to pay for purchases and manage membership 7
cards and admission tickets, and other services (Spec. 1:5-8). 8
Claim 1 under appeal is further illustrative of the claimed invention as 9
follows: 10
1. A processing system comprising: 11
a data management server for storing registration 12
information about a customer, the registration information 13
linked to a financial account of the customer with an external 14
financial institution; 15
a customer communication terminal adapted for data 16
communication with said data management server and for 17
outputting information for identifying a customer; and 18
a process execution terminal for receiving said 19
information for identifying the customer from said customer 20
communication terminal and executing a process for said 21
customer, wherein: 22
said process execution terminal provides said information 23
to said data management server when receiving said 24
information for identifying the customer; 25
said data management server identifies the customer 26
based on said information provided from said process execution 27
terminal, generates reply information based on said registration 28
information about said customer, the reply information 29
indicating an approval of payment from the financial account, 30
and provides said reply information to said process execution 31
terminal; and 32
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said process execution terminal executes a process for 1
said customer based on said reply information when receiving 2
said reply information; 3
wherein the information for identifying the customer and 4
the registration information about the customer is associated 5
with each other only at the data management server, the data 6
management server being different than the process execution 7
terminal that receives the information for identifying the 8
customer. 9
The prior art relied upon by the Examiner in rejecting the claims on 10
appeal is: 11
Webb US 6,877,661 B2 Apr. 12, 2005 12
Webb US 60/225,805 Aug. 16, 2000 13
(hereinafter “Provisional Application”). 14
The Examiner rejected claims 1-6, 8, 9, 11-18, 20, 21, and 24-28 15
under 35 U.S.C. § 102(b) as being anticipated by Webb; and rejected claims 16
7, 10, 19, 22, and-23 under 35 U.S.C. § 103(a) as being unpatentable over 17
Webb. 18
19
ISSUES 20
Whether “the registration information linked to a financial account of 21
the customer with an external financial institution,” as recited in independent 22
claims 1, 6, 11, 17, 21, and 24-28, is non-functional descriptive material? 23
Did the Appellants show the Examiner erred in asserting that 24
dependent claims 7, 10, 19, and 22-23 are allowable due to their dependence 25
on one of allowable independent claims 6, 17, and 21? 26
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FINDINGS OF FACT 1
Specification 2
Appellants invented systems and methods for data transfer using a 3
mobile terminal and a two-dimensional barcode, and more particularly, a 4
processing system, server, processing terminal, and communications 5
terminal that can be used to pay for purchases and manage membership 6
cards and admission tickets, and other services (Spec. 1:5-8). 7
Registration information may be, for example, the number of 8
customer’s credit card, debit card, or bank account for payment (Spec. 4:13-9
17). 10
Registration information may be customer billing information (e.g., 11
amount billed, billing date, details of billing, etc). provided to the data 12
management server from the online shopping, mail order, or utility company 13
(Spec. 6:1-5). 14
Card information about a card such as a credit card or customer credit 15
card held by a customer is pre-registered in the wallet center along with 16
personal authentication information, portable terminal identification 17
information, and card select information for selecting a particular card 18
(Spec. 13:5-8, 15-18). 19
The server 30 of the management center has a customer DB (database, 20
data storage) 37 for storing pre-registered customer information. The 21
customer DB 27 contains registration information entered online or by mail 22
by a customer beforehand, including the name and address, and personal 23
information of the customer, telephone numbers of a portable 24
communications terminal 10 held by the customer, the name of the credit 25
institution that the customer wants to use, the number of a card for payment 26
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such as a credit card or debit card (hereinafter simply called a “credit card”) 1
of the customer, a bank account number for direct debit and other payment 2
information of the customer. The customer DB 37 also holds status 3
information on the credit card registered by each customer. The status of the 4
credit card registered by the customer is usually “not available” unless 5
access is made by the customer. The status of a credit card selected by the 6
customer and becomes “available” when access is made by the user using a 7
valid password (Spec. 22:8 to 23:1). 8
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PRINCIPLES OF LAW 10
Obviousness 11
Where the printed matter is not functionally related to the substrate, 12
the printed matter will not distinguish the invention from the prior art in 13
terms of patentability. In re Gulack, 703 F.2d 1381, 1385-86 (Fed Cir. 14
1983). 15
During examination, the examiner bears the initial burden of 16
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 17
1443, 1445 (Fed. Cir. 1992). 18
Once a prima facie case of obviousness is established, the burden 19
shifts to Appellant to rebut it. In re Keller, 642 F.2d 413, 426 (CCPA 1981). 20
21
Claim Construction 22
During examination of a patent application, a pending claim is given 23
the broadest reasonable construction consistent with the specification and 24
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should be read in light of the specification as it would be interpreted by one 1
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 2
1364 (Fed. Cir. 2004). 3
4
ANALYSIS 5
Non-Functional Descriptive 6
Appellants argue that the coupons savings accounts of the Provisional 7
Application of Webb does not correspond to “the registration information 8
linked to a financial account of the customer with an external financial 9
institution,” as recited in independent claims 1, 6, 11, 17, 21, and 24-28 10
(App. Br. 9-12). However, even if neither Webb nor the Provisional 11
Application of Webb disclose the aforementioned aspect, it is non-functional 12
descriptive material, and thus cannot distinguish the invention from the prior 13
art in terms of patentability. See In re Gulack, 703 F.2d at 1386-86. 14
Specifically, the aforementioned aspect, when read in view of the 15
Specification, only requires that the registration information include 16
information linking the financial account of the customer with the external 17
financial institution. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 18
1364. An actual link, such as a wire-transfer or Internet link, between the 19
registration information and the financial account is not required. Indeed, as 20
set forth in the Specification, the presence of credit card numbers within the 21
registration information is sufficient to “link” the financial account of the 22
customer with the external financial institution. 23
As the link is merely non-functional descriptive information, it does 24
nothing to alter the underlying operation of either the data management 25
server or the processing system. Accordingly, it cannot distinguish the 26
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invention from the prior art in terms of patentability. See In re Gulack, 703 1
F.2d at 1386-86. 2
As this rationale for rejecting independent claims 1, 6, 11, 17, 21, and 3
24-28 differ from the rationale set forth by the Examiner, we denominate it a 4
new ground of rejection under 37 C.F.R. § 41.50(b). We also apply this new 5
rationale and new rejection to dependent claims 2-5, 8, 9, 12-16, 18, and 20. 6
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Claims 7, 10, 19, 22, and 23 8
We further apply the new rationale to the obviousness rejection of 9
dependent claims 7, 10, 19 and 22-23 while retaining the Examiner’s 10
rationales for rendering the additionally recited aspects of these claims 11
obvious. The Examiner has set forth a proper case of prima facie 12
obviousness with respect to those additional aspects on pages 13-14 of the 13
Examiner’s Answer. See In re Oetiker, 977 F.2d at 1445. The Appellants 14
have not set forth specific arguments as to why the Examiner erred in 15
rendering obvious those additional aspects1. Accordingly, as Appellants 16
have not met the burden of rebutting Examiner’s prima facie case of 17
obviousness, we decline to overturn these rejections as they apply to the 18
additional aspects set forth in dependent claims 7, 10, 19 and 22-23. See In 19
re Keller, 642 F.2d at 426. 20

1 The entirety of Appellants’ argument consists of “the qualified disclosure
of Webb does not suggest a modification of Webb in a manner to teach the
claimed invention as represented in claims 7, 10, 19 and 22-23” (App. Br.
12).
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CONCLUSION OF LAW 1
On the record before us, Appellants have not shown that the Examiner 2
erred in rejecting claims 1-28. 3
We enter a new ground of rejection of claims 1-28. 4
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DECISION 6
The decision of the Examiner to reject claims 1-28 is affirmed. 7
This decision also contains new grounds of rejection pursuant to 37 8
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of 9
rejection pursuant to this paragraph shall not be considered final for judicial 10
review.” This Decision contains a new rejection within the meaning of 37 11
C.F.R. § 41.50(b) (2007). 12
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 13
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 14
the following two options with respect to the new rejection: 15
(1) Reopen prosecution. Submit an 16
appropriate amendment of the claims so rejected or 17
new evidence relating to the claims so rejected, or 18
both, and have the matter reconsidered by the 19
Examiner, in which event the proceeding will be 20
remanded to the Examiner. . . . 21
(2) Request rehearing. Request that the 22
proceeding be reheard under § 41.52 by the Board 23
upon the same record. 24
Should the Appellants elect to prosecute further before the examiner 25
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek 26
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 27
the effective date of the affirmance is deferred until conclusion of the 28
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prosecution before the Examiner unless, as a mere incident to the limited 1
prosecution, the affirmed rejection is overcome. 2
If the Appellants elect prosecution before the Examiner and this does 3
not result in allowance of the application, abandonment or a second appeal, 4
this case should be returned to the Board of Patent Appeals and Interferences 5
for final action on the affirmed rejection, including any timely request for 6
rehearing thereof. 7
No time period for taking any subsequent action in connection with 8
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 9
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AFFIRMED; 37 C.F.R. § 41.50(b) 11
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