Ex Parte WAXMAN et al

Patent Trial and Appeal Board

Feb 25, 2016

12042176 (P.T.A.B. Feb. 25, 2016)

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,
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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).
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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.
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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.
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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
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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
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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).
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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.
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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
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