Ex Parte Waxman et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201612042176 (P.T.A.B. Feb. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/042,176 7590 Michael W, Tieff FILING DATE 03/04/2008 02/25/2016 763 S. Warnock Street Philadelphia, PA 19147 FIRST NAMED INVENTOR DAVID WAXMAN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. VITAOOOl -100 2852 EXAMINER DASS, BARISH T ART UNIT PAPER NUMBER 3695 MAILDATE DELIVERY MODE 02/25/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte DAVID WAXMAN and JASON BROWN Appeal2013-009389 1 Application 12/042,1762 Technology Center 3600 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1, 2, 4--7, 11-14, 16, 18, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed Mar. 21, 2013), the Examiner's Answer ("Ans.," mailed Apr. 29, 2013), the Final Action ("Final Act.," mailed Nov. 2, 2012), and the Specification ("Spec.," filed Mar. 4, 2008). 2 According to the Appellants, the real party in interest is "JBDW HOLDINGS, INC." Appeal Br. 2. Appeal2013-009389 Application 12/042,176 STATEMENT OF THE CASE The Appellants' invention is directed to "identification systems in general and in particular to [a] medical information system, which integrates contactless payment and targeted advertising." Spec. 2. Claims 1, 11, and 21 are the independent claims on appeal. Claim 11 is exemplary of the subject matter on appeal and is reproduced below: 11. A method for payment for goods or services and access to medical information comprising: (a) providing a band that includes a removable card inserted into a sleeve within the band, wherein the band has an associated unique identifier and the removable card includes a means to transmit the unique identifier to a wireless transaction terminal, wherein the unique identifier is printed on the band and identifies a consumer; (b) receiving the unique identifier at a computing device from the consumer via a website through the internet, wherein the unique identifier is manually entered by the consumer through the website; ( c) receiving financial information associated with the user at the computing device from the user via the website through the internet, wherein the financial information includes an account number and is manually entered by the consumer through the website, wherein the account number identifies a funding source associated with the consumer; (d) receiving one or more rules for the use of funds associated with the funding source; ( e) receiving medical information associated with the consumer at the computing device from the user via the website; (f) associating the unique identifier with the received financial information and the received medical information at the computing device; (g) enabling the band by the computing device such that the device may be presented to a vendor to pay for goods and services using the financial information and to cause an amount equal to a cost of the goods and services to be drawn from the identified funding source according to the one or more rules, 2 Appeal2013-009389 Application 12/042,176 wherein the band facilitates the payment for goods and services by transmitting the unique identifier to a wireless transaction terminal associated with the vendor using the means to transmit the unique identifier; and (h) enabling the band by the computing device such that the device may be used by a medical professional to request the medical information, wherein the band facilitates the requesting of medical information by transmitting the unique identifier to a wireless reader associated with the medical professional using the means to transmit the unique identifier. Appeal Br. 24--25, Claims App. REJECTIONS Claims 1, 2, 4--6, 11-14, 16, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dorf (US 6,000,608, iss. Dec. 14, 1999), Chaco (US 5,465,082, iss. Nov. 7, 1995), Calvano (US 7,041,032 Bl, iss. May 9, 2006), De La Huerga (US 2002/0084904 Al, pub. July 4, 2002), Williams (US 2005/0011945 Al, pub. Jan. 20, 2005), and Mulry (US 2008/0147523 Al, pub. June 19, 2008). Claims 7 and 18 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Dorf, Chaco, Calvano, De La Huerga, Williams, Mulry, and Zhou (US 6,847,892 B2, iss. Jan. 25, 2005). 3 Appeal2013-009389 Application 12/042,176 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 3 ANALYSIS The Appellants argue claims 1, 2, 4---6, 11-14, 16, and 21 as a group. See Appeal Br. 10. We select claim 11 as representative. Claims 1, 2, 4---6, 12-14, 16, and 21 stand or fall with claim 11. See 37 C.F.R. 41.37 (c)(iv) (2014). The Appellants contend the rejection of claim 11 is in error because "the cited prior art references, alone or in combination, fail to teach or suggest each and every feature" of the claim. Appeal Br. 11. We disagree with the Appellants' contention that the Examiner has erred for the reasons discussed below. The Band- Limitation (a) 4 The Appellants' arguments that "the cited references all fail to teach or suggest providing a band that includes a removable card inserted into a sleeve within the band" (Appeal Br. 11-15, emphasis omitted) are not persuasive, because they are arguments against the references individually when the Examiner relies on the combination of the references to disclose the limitation. The test for obviousness is not what any one reference would 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 4 We address the Appellants' arguments in the same order presented in the Appeal Brief. 4 Appeal2013-009389 Application 12/042,176 have suggested, but rather what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). "[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of the references." Id. (citation omitted). The Examiner does not rely on Dorf to teach either a band or that the removable card can be inserted into a sleeve within the band (see Appeal Br. 12), but finds that Dorf discloses a card, analogous to a band, which is capable of serving as a payment card and which has a unique identifier associated with the user embossed on the surface. See Final Act. 3, 5. The Examiner does not rely on Chaco for teaching or suggesting a band that includes a removable card inserted into a sleeve within the band (Appeal Br. 12), but for disclosing a band with an associated unique identifier printed upon it, and a removable card that includes means to transmit the unique identifier to a wireless terminal and to facilitate payment. See Final Act. 5- 6. The Examiner does not rely on Calvano for teaching that the band has a removable card inserted into a sleeve within a band (see Appeal Br. 12-13), but finds that Calvano discloses a band with a removable card inserted into a sleeve of the band (see Final Act. 6), and that De La Huerga teaches a band with a removable item inserted into the sleeve within the band (see id. at 6- 7). Further, the Examiner does not rely on Calvano or De La Huerga for teaching a card with means to transmit the identification number (see Appeal Br. 13-15), but relies on Chaco for that teaching (as noted above). The Appellants do not provide sufficient evidence or arguments against the relied-upon combination as a whole. 5 Appeal2013-009389 Application 12/042,176 The Appellants' argument that "the Chaco and De La Huerga references teach away from providing a band that includes a removable card inserted into a sleeve within the band" (Appeal Br. 15, emphasis omitted) is unpersuasive, because the references do not criticize, discredit or otherwise discourage a "band that includes a removable card inserted into a sleeve within the band" as recited in the claim. The Appellants' argument that "removing the removable card [of De La Huerga] without also removing the bracelet would be difficult" (Appeal Br. 16) is not supported by evidence. Further, even if true, the card is still capable of being removed. Similarly, the argument that "storing the patient card [of Chaco] in the band [would] make it difficult for the patient to communicate with the nursing station," (id.) is not supported by evidence, but even if true, the card is still capable of being removed. Thus, neither Chaco nor De La Huerga teaches away from a band that includes a removable card inserted into a sleeve within the back. Receiving Rules -Limitation (d) The Appellants' argument that Mulry does not teach or suggest "receiving one or more rules for the use of the funds associated with a funding source entered by the consumer through the website" (Appeal Br. 16), because "the criteria of Mulry are not 'rules for the use of funds' as taught by claim 11," (id. at 17), is unpersuasive. During examination, "claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). The Specification refers to creating "rules for the use of 6 Appeal2013-009389 Application 12/042,176 the funds" (Spec. 6), but provides no specific definition for the rules. The ordinary and customary meaning for "rules" is "a prescribed guide for conduct or action." MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/ dictionary/rule, retrieved Feb. 18, 2016. We find that Mulry's spending management with targets and controls for payment accounts (see Ans. 16, Mulry i-fi-f 13, 20, 63) is a prescribed guide for conduct or action, and agree with the Examiner that Mulry discloses "receiving one or more rules for the use of funds associated with the funding source," as recited. Cause an Amount to be Drawn - Limitation (g) The Appellants' argument that the references do not teach or suggest "to cause an amount equal to a cost of the goods and services to be drawn from the identified funding source according to the one or more rules" (Appeal Br. 17), because Mulry does not teach or suggest that "the criteria are involved in any way with respect to causing payment to be drawn from a finding source" (id.), is unpersuasive. As noted above, claims are given their broadest reasonable interpretation consistent with the Specification. The Specification does not define how the amount is drawn "according to the one or more rules." Mulry discloses an amount to be drawn from an identified funding source for goods (see Fig. 1, i-fi-1 26-28), and that an alert can be triggered according to the rules set (see ff 20, 51 ). Thus, the rules are involved in some way with the funding. The claim does not recite that the rules must proscribe the funding, dictate or influence the funding source, or that the transaction may not occur if the rule is violated (see Appeal 7 Appeal2013-009389 Application 12/042,176 Br. 1 7). Thus, we agree with the Examiner that the references disclose limitation (g), as recited. Receiving Financial Information Including Account Number - Limitation (c) The Appellants' arguments that the references fail to teach or suggest limitation (c) (Appeal Br. 17-19) are unpersuasive. The Appellants argue that Dorf does not teach or suggest "the financial information includes an account number and is manually entered by the consumer through the website as claimed [or] that the account number identifies a funding source associated with the consumer." Id. at 18. The Appellants further argue that Williams does not teach or suggest "receiving financial information associated with the consumer at the computing device from the consumer via the website through the internet." Id. at 19. The Examiner finds that Dorf discloses receiving financial information associated with the user via the terminal, wherein the information includes an account number that identifies a funding source associated with the customer and which is manually entered by the user through the terminal. See Final Act. 3--4. The Examiner finds Williams discloses "use of smart card, and wherein the unique identifier and financial information includes an account number are manually entered by the user (customer) through the website through the Internet" (id. at 7-9) and the account number identifying a funding source of a credit card associated with the customer (see Ans. 17). 8 Appeal2013-009389 Application 12/042,176 Dorf discloses a system that allows for activation and linking of payment and information cards. Dorf col. 4, 11. 14--19. The system includes point of sale (POS) terminals that can be used to access the banking system and accept manual entry of the multi-function card identification data (account number) that links to the bank. Id. at col. 4, 11. 25--46. Thus, we agree with the Examiner's finding that Dorf discloses receiving financial information including an account number that identifies a funding source (bank) associated with the customer and which can be entered by the customer manually through the terminal. The Appellants' argument that the number must be entered by the operator who is not a consumer (Appeal Br. 18) is not supported by the evidence. Williams discloses that customers, through a graphical user interface on a web site, can enter and save information for multiple credit cards, including a card number (account number) that identifies a funding source ("VISA" credit card). See Williams, i-fl9, Figs. 3, 3.1. Thus, we agree with the Examiner's finding that Williams discloses receiving financial information including an account number identifying a funding source manually by the customer through a website on the internet. The Appellants' argument that Williams does not teach actually transmitting and receiving the credit card number through the website (Appeal Br. 19) is not persuasive, because, as discussed above, we find Williams discloses receiving the credit card number through the website. For the foregoing reasons, we sustain the Examiner's rejection of claim 11 under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection of claims 1, 2, 4--6, 12-14, 16, and 21, which fall with claim 11. 9 Appeal2013-009389 Application 12/042,176 The Appellants provide no additional arguments against the rejection of claims 7 and 18, but submit that the claims are allowable based on their dependence from claims 1 and 11. Appeal Br. 20. Thus, for the reasons we sustain the rejection of claims 1 and 11, we also sustain the rejection of claim 7 and 18. DECISION The Examiner's rejections of claims 1, 2, 4--7, 11-14, 16, 18, and 21 under 35 U.S.C. § 103(a) are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation