Ex parte Ziarno

Board of Patent Appeals and Interferences

Jul 12, 2000

08318914 (B.P.A.I. Jul. 12, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WITOLD A. ZIARNO
__________
Appeal No. 1997-3968
Application 08/318,914
__________
ON BRIEF
__________
Before HAIRSTON, KRASS, and TORCZON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 13 and 28 through 37. In an Amendment After Final
(paper number 13), claim 8 was amended. According to the
examiner (paper number 14), the amendment had the effect of
Appeal No. 1997-3968
Application No. 08/318,914
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overcoming the indefiniteness rejection of claims 8 through
13.
The disclosed invention relates to a method and apparatus
for accepting a plurality of successive contributions via a
portable, hand-held contributions management terminal.
Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A method of simplifying and inducing the giving of
monetary contributions by contributors, receiving and
immediately recording thereof upon receipt comprising,
providing the contributors making monetary contributions
with a portable, hand-held terminal having a routine for
accepting a plurality of successive contributions having
voluntary numerical amount inputs for making of record
informationof respective contributions, said terminal having
its own source of electric power and a plurality of entry keys
manually operable for entering anumerical amount of the
monetary contribution given, a reader on said terminal for
reading a card record having indicia thereon identifying the
contributor making the monetary contribution, the terminal
having means for visual display of the monetary amount entered
by manual operation of entry keys, and the terminal having
means for recording the numerical amount of the contribution
including means for storing numerical information of the
monetary amount given correlated to theindicia read on said
card record of the corresponding contributor, and said
correlated amount and indicia read by said reader for eventual
off-loading thereof by off-loading means.
The references relied on by the examiner are:
Teicher 5,206,488 Apr. 27,
1993
Kumar 5,294,782 Mar. 15,
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Application No. 08/318,914
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1994
The following additional evidence was relied on by the
examiner:
A “conventional offering plate,” and “commonly known prior art
procedures” (Answer, page 5).
Claims 1 through 13 and 28 through 37 stand rejected
under 35 U.S.C. § 103 as being unpatentable over the
conventional offering plate, commonly known prior art
procedures, Teicher and Kumar.
Reference is made to the briefs and the answers for the
respective positions of the appellant and the examiner.
OPINION
The obviousness rejection of claims 1 through 13 and 28
through 37 is reversed.
The examiner indicates (Answer, page 6) that it is known
to manually pass a conventional offering plate between
successive contributors, and that it is known to accept a
donation by means of a credit card “without pre-authorization
or authorization at the time the donation/pledge is made.” In
view of Teicher’s teaching that a debit/credit card is more
Appeal No. 1997-3968
Application No. 08/318,914
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advantageous than cash because it “minimizes costs and hazards
associated with cash usage” (column 8, line 57 through column
9, line 1), and the commonly known prior art, the examiner is
of the opinion that “it would have been obvious to modernize
and update the conventional offering plate so as to be able to
process debit/credit cards as well as receive cash
contributions as taught by Teicher” (Answer, page 6). Kumar
discloses a portable, battery-powered, hand-held terminal
device 10 that can read credit cards (Figure 1; column 3,
lines 39 through 47). In view of Kumar’s teachings, the
examiner contends that (Answer, pages 7 and 8):
[I]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to integrate such an old and well known portable
electronic device/terminal to a conventional
offering plate as modified by commonly known prior
art procedures in view of the teachings of Teicher,
due to the fact that Kumar’s electronic
device/terminal is portable, feasible, compact, and
mostly to provide the conventional offering plate
with the latest technology which accepts both credit
cards as well as cash contributions. Clearly, one
of ordinary skill would recognize the convenience
and benefits of using credit cards instead of cash
in any application. As noted above, the
conventional offering plate is employed to accept a
plurality of successive contribution transactions.
The routine controlling the terminal of Kumar
accepts successive transactions as well.
Notwithstanding our agreement with the examiner that it
Appeal No. 1997-3968
Application No. 08/318,914
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would have been obvious to the skilled artisan to substitute a
debit/credit card for cash, we must nevertheless agree with
the appellant (Brief, page 30) that:
The Examiner concedes that the conventional
offering plate does not have a card reader. The
Examiner must also concede that the conventional
offering plate is not electronic, nor is it self-
powered, nor does it have applicant’s routine as
recited. The Examiner further admits that even if
unrelated, diverse, and non-analogous art sources
are combined (the conventional offering plate art .
. . and the vending machine, toll booth, train
ticket art (Teicher)), Applicant’s claimed method
and the device which enables the method are not
taught or suggested. The Examiner looks to yet
another unrelated and non-analogous source of art,
Kumar (the portable supermarket cash register art),
for alleged teachings therefrom. This still does
not make out a prima facie case of obviousness
because all of the elements of the device, including
Applicant’s routines, which enable the Applicant’s
method are not in the alleged combination of
teachings from unrelated and non-analogous sources
of art.
In summary, the obviousness rejection is reversed because
we agree with appellant’s argument (Reply Brief, page 4) that
“[t]he Examiner has conducted a text book case of hindsight
reconstruction of the Applicant’s method and apparatus using
alleged teachings of at least two of three unrelated, diverse,
non-analogous sources of art.”
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Application No. 08/318,914
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DECISION
The decision of the examiner rejecting claims 1 through
13 and 28 through 37 under 35 U.S.C. § 103 is reversed.
REVERSED
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Richard Torczon )
Administrative Patent Judge )
Appeal No. 1997-3968
Application No. 08/318,914
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Witold A. Ziarno
4519 South Saint Louis Avenue
Chicago, IL 60632