Ex Parte Vu et al

Patent Trial and Appeal Board

May 8, 2013

10484498 (P.T.A.B. May. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAI DUC VU, CHRISTIAN PHO DUC, and
TSCHANGIZ SCHEYBANI
___________

Appeal 2011-001862
Application 10/484,498
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK Administrative Patent Judges

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001862
Application 10/484,498

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STATEMENT OF THE CASE
Tai Duc Vu et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1-14 and 18-23. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE1 and pursuant to our authority under 37 C.F.R.
§ 41.50(b), enter NEW GROUNDS OF REJECTION.

THE INVENTION
Claims 1, 18, and 22, reproduced below, are illustrative of the subject
matter on appeal.
1. A method for acquiring a service offered by a
service provider over a data network on
presentation of a cash card having data stored
thereon, said data corresponding to money in
electronic form, by carrying out first a
prenegotiation phase to order the service and
subsequently a transaction phase including a
compensation phase to make a contribution for
delivery of the service, the service being ordered
by means of a user end system that includes the
cash card, from the service provider, the service
provider thereupon calls a clearing center which
subsequently enters into a data exchange with the
user end system, to call for there from a necessary

1 Our decision will make reference to the Appeal Brief (“App. Br.,” filed
Jun. 7, 2010), Reply Brief (“Reply Br.,” filed Oct. 20, 2010), the Examiner’s
Answer (“Ans.,” mailed Aug. 20, 2010), and the Final Rejection (mailed
Jan. 6, 2010).

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contribution in the form of certain data required for
acquisition of the service, the method comprising
steps in the prenegotiation phase of:
at the user end system, determining an
individual identifier of the cash card, for use in the
transaction phase that includes the data exchange
that calls for the contribution in order to
homogenously link the ordering process with the
following compensation process;
at the user end system, sending a first
prenegotiation message including the identifier to
the clearing center; and
at the user end system, receiving the
identifier back there from the clearing center with
a second prenegotiation message for
acknowledgement;
wherein the compensation phase further
comprises using the identifier to effect a data
exchange in which the money in electronic form
stored on the cash card is reduced by the amount to
be paid and a corresponding amount is credited to
the clearing center.

18. An assembly for executing a method for
acquiring a service offered by a service provider
over a data network on presentation of a cash card
having data stored thereon, said data
corresponding to money in electronic form, by
carrying out a first prenegotiation phase to order
the service and subsequently a transaction phase
including a compensation phase to make a
contribution for delivery of the service, the
assembly comprising:
a user end system, connected to the data
network, to order the service in a prenegotiation
phase using an individual identifier of the cash
card; and
a clearing center, connected to the data
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network, to request a contribution from the cash
card in a transaction phase using the identifier
associated with the cash card, the clearing center
including a transaction module to communicate
with the user end system, and a compensation
module to request the contribution to be made by
the cash card and to communicate with a
background system in which a cash account
associated with the cash card is stored;
wherein the identifier is used to effect a data
exchange in which the money in electronic form
stored on the cash card is reduced by the amount to
be paid and a corresponding amount is credited to
the clearing center.

22. A security terminal for use in acquiring a
service offered by a service provider over a data
network on presentation of a cash card having data
stored thereon, said data corresponding to money
in electronic form, by carrying out a first
prenegotiation phase to order the service and
subsequently a transaction phase including a
compensation phase to make a contribution for
delivery of the service, the security terminal
comprising:
an access device for accessing the cash card;
a user network interface to connect to a data
network; and
a memory device in which information
about the contribution, to be made by the cash card
during the transaction phase, and an individual
identifier of the cash card used during both the
transaction phase and a prenegotiation phase, are
stored;
wherein the identifier is used to effect a data
exchange in which the money in electronic form
stored on the cash card is reduced by the amount to
be paid.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Krueger
Laage
Gravelle
Nordlicht
US 2002/0077837 A1
US 2002/0138445 A1
US 2002/0178063 A1
US 2008/0189216 A1
Jun. 20, 2002
Sep. 26, 2002
Nov. 28, 2002
Aug. 7, 2008
The following rejections are before us for review:
1. Claims 18-22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Nordlicht and Gravelle.
2. Claims 1-3, 7-14, and 232 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Nordlicht, Gravelle, and Krueger.
3. Claims 4-6 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Nordlicht, Gravelle, Krueger, and Laage.

ANALYSIS
Claims 18-22 are rejected under 35 U.S.C. §103(a) as being unpatentable
over Nordlicht and Gravelle
Claims 18-21
The Appellants argue claims 18-21 as a group. See App. Br. 13. We
select claim 18 as the representative claim for this group, and the remaining
claims 20-21 stand or fall with claim 18. 37 C.F.R. § 41.37(c)(1)(vii).

2 We note that the statement of the rejection in the Final Rejection fails to
include claim 23. Final Rejection 5. However, this appears to be a
typographical error as the Examiner includes a discussion of claim 23 in the
rejection. Final Rejection 11.
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We find that the Examiner erred in rejecting claims 18-21 under 35
U.S.C. § 103(a) as being unpatentable over Nordlicht and Gravelle. Claim
18 recites “a clearing center to request contribution from the cash card in a
transaction phase using the identifier associated with the cash card, the
clearing center including . . . a compensation module to request the
contribution to be made by the cash card.” In rejecting this limitation, the
Examiner cites Nordlicht’s clearinghouse 104 (Final Rejection 3). We fail
to see how Nordlicht teaches that the clearing center has a compensation
module that has a structure that is capable of “requesting the contribution to
made by the cash card.” As the Appellants argue (see App. Br. 11-12),
Nordlicht does not teach a cash card, particularly, one that has electronic
money data stored thereon. Gravelle does not cure this deficiency as
Gravelle does not describe either the card reader 107, PC 109 or
clearinghouse 101 has a structure that is capable of sending a request to a
cash card. Again, as the Appellant’s argue (see App. Br. 13), Gravelle’s
card does not have electronic money data stored thereon.
Accordingly, we reverse the rejection of claims 18-21 under 35 U.S.C.
§ 103(a) as being unpatentable over Nordlicht and Gravelle.

Claim 22
We are persuaded by the Appellants’ argument (App. Br. 14) that the
Examiner erred in rejecting claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Nordlicht and Gravelle.
In rejecting claim 22, the Examiner relies only upon Nordlicht’s
paragraph [0022], which describes clearinghouse 104, and does not rely
upon Gravelle. Final Rejection 4. We agree with the Appellants that
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Nordlicht’s clearinghouse 104 does not include an access device for
accessing a cash card, and the Examiner has not provided any other
explanation as to why this limitation would be obvious (see Ans. 6).
Accordingly, we reverse the rejection of claim 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Nordlicht and Gravelle.

Claims 1-3, 7-14, and 23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Nordlicht, Gravelle, and Krueger
We are persuaded by the Appellants’ argument (App. Br. 17-18 and
Reply Br. 6) that the Examiner erred in rejecting claims 1-3, 7-14, and 23 as
being unpatentable over Nordlicht, Gravelle, and Krueger. Claim 1 recites
“using the identifier to [a]ffect a data exchange in which the money in
electronic form stored on the cash card is reduced by the amount to be paid.”
The Examiner relies upon Gravelle’s paragraphs [0030] - [0041]’s
description of a “debit card/prepaid account” to teach this limitation. Final
Rejection 6 and Ans. 6. We fail to see how Gravelle’s description of
debiting a pre-paid account that is held with a clearinghouse (Gravelle
[0035]) or using a credit card or debit card as payment in a transaction
(Gravelle [0030]-[00411) teaches the claimed reducing of electronic money
stored on a cash card, as Gravelle does not stored money on the transponder
itself.
We note that the Examiner admits the Nordlicht does not teach this
limitation (Final Rejection 6) and does not rely upon Krueger to cure this
deficiency (see Final Rejection 7).
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Accordingly, we reverse the rejection of claim 1, and claims 2-3, 7-
14, and 23, dependent thereon, under 35 U.S.C. § 103(a) as being
unpatentable over Nordlicht, Gravelle, and Krueger.

Claims 4-6 are rejected under 35 U.S.C. §103(a) as being unpatentable over
Nordlicht, Gravelle, Krueger, and Laage
Claims 4-6 depend on claim 1, whose rejection we have reversed
above. For the same reasons, we find that the Examiner has failed to
establish a prima facie showing of obviousness in rejecting claims 4-6 under
35 U.S.C. 103(a) as being unpatentable over Nordlicht, Gravelle, Krueger,
and Laage. 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.”) We note that Laage was not relied upon to
cure the deficiency discussed above.
Accordingly, we reverse the rejection of claims 4-6 under 35 U.S.C.
§ 103(a) over Nordlicht, Gravelle, Krueger, and Laage.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. 41.50(b) we enter a new ground of rejection on
claim 22. Claim 22 is rejected under 35 U.S.C. § 102(e) as being anticipated
by Gravelle. Gravelle discloses a security terminal (PC 109) having: an
access device for accessing the cash card (card reader 107); a user network
interface to connect to a data network (Fig. 2), and memory device (memory
of PC 109). Gravelle describes that PC 109 could include subscriber
database having identification numbers (para. [0030]), and since PC 109
receives transaction information (i.e. price) (see para. [0039] and (0041), the
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memory would store contribution information. We note that claim 22’s
“wherein clause”, which describes the use of the information stored in the
memory, fails to limit the structure of the memory or other elements of the
security terminal.

DECISION
The decision of the Examiner to reject claims 1-14 and 18-23 is
reversed. We enter a new ground of rejection on claim 22.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance will be deferred until the prosecution
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before the Examiner concludes unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.

REVERSED; 37 C.F.R. 41.50(b)

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