Gardner/Wyatt Ventures, LLC

Patent Trials and Appeals Board

Oct 29, 2021

2020003056 (P.T.A.B. Oct. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/142,545 04/29/2016 John Gardner 10744-002US1 4053
96039 7590 10/29/2021
Meunier Carlin & Curfman LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
JOISIL, BERTEAU
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
10/29/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN GARDNER and EDWARD WYATT
____________

Appeal 2020-003056
Application 15/142,545
Technology Center 2400
____________

Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
PHILLIP A. BENNETT, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. Claim 20 is canceled. See
Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
GARDNER/WYATT VENTURES, LLC. Appeal Br. 3.
Appeal 2020-003056
Application 15/142,545

2
The present invention relates generally to validating a check at
presentment for payment. See Spec. Abstr.
Claim 1, reproduced below with disputed limitations emphasized, is
representative:
1. A system for determining if a negotiable instrument
bearing an encoded indicia has been previously presented for
payment, the system comprising:
a computer comprising:
memory;
a processor executing imaging software and decoding
software stored in said memory;
a camera comprising an image reader assembly
configured to generate pixel data from the encoded indicia on the
instrument,
wherein the imaging software processes said pixel data to
generate digital pixel data and stores the digital pixel data in said
memory,
wherein said processor executes said decoding software
by receiving said digital pixel data from said memory and generates a
data set from the encoded indicia;
a transceiver in bi-directional communication with a
server on a network, said server comprising a database and validation
software, said transceiver transmitting said data set to said server over
the network;
wherein said server is configured to execute said
validation software to determine if the negotiable instrument has been
previously presented for payment.

REFERENCES
The references relied upon by the Examiner are:
Name Reference Date
Sgambati US 2005/0211763 A1 Sept. 29, 2005
Anderson US 8,639,017 B1 Jan. 28, 2014

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Application 15/142,545

3
REJECTION
Claims 1–19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Anderson and Sgambati. Final Act. 5–
14.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Issue: Did the Examiner err in finding that Anderson and Sgambati
collectively teach or suggest generating pixel data from an encoded indicia,
and processing the pixel data to generate digital pixel data, as set forth in
claim 1?
Appellant makes the following arguments: (1) “Anderson’s use of the
paper [“Image Replacement Document”] and magnetic ink recognition
techniques have nothing to do with the digital pixel data and transmission of
the same” (Appeal Br. 13); (2) “Anderson teaches against using any data
other than numeric characters for duplicate presentation prevention.” (id.);
and (3) “Anderson . . . has no disclosure related to [Appellant’s] recited
‘encoded indicia’ within pixel data.” Id.
Appellant further contends that Anderson teaches away from using an
encoded indicia because Anderson avoids “using any data other than
numeric characters for duplicate presentation prevention” (Appeal Br. 13)
and “the Anderson document only utilizes string data in its processes.” Id.
Appellant also contends that “the Sgambati ‘763 publication fails to make up
for the deficiencies noted in the Anderson primary reference.” Id. at 14; see
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Application 15/142,545

4
also id. at 14–15. In essence, Appellant contends that neither Anderson nor
Sgambati teaches or suggests generating pixel data using an encoded indicia
on the instrument.
In the Answer, the Examiner fails to rebut Appellant’s specific
argument regarding Sgambati. See generally Ans. (wherein the Examiner
merely cuts and pastes the findings from the Final); see also Appeal Br. 14–
15. Instead, the Examiner merely addresses Appellant’s arguments
regarding Anderson. Specifically, the Examiner finds that Anderson
“teaches ‘an image data’ distinct from the paper IRD [and] [c]ontrary to the
argument presented, the encoded indicia may be numbers as taught by
Anderson, as claim 5 makes [] explicit.” Ans. 7–8. Consequently, the
Examiner is now solely relying on Anderson to disclose the “encoded
indicia” feature. As such, we shall look for error in the Examiner’s
interpretation of Anderson.
Appellant’s Specification indicates that “[e]ncoded indicia, as used
herein, include but are not limited to bar codes, QR codes, or any kind of
printed symbols that relay data in a format that requires decoding to retrieve
underlying data from the indicia.” Spec. ¶ 14. Thus, as a matter of claim
construction, we broadly but reasonably construe the claim term “encoded
indicia” as denoting any printed symbol that requires decoding to retrieve
underlying data. See Claim 1.2

2 During ex parte prosecution, the Patent & Trademark Office (PTO)
determines the scope of the claims by giving the language “their broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
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Application 15/142,545

5
As noted above, the Examiner finds that the claimed “encoded
indicia” may be numbers. See Ans. 7–8. However, the Examiner fails to
illustrate how this interpretation of “encoded indicia” is consistent with
Appellant’s Specification, i.e., how “Anderson’s numbers” represent a
printed symbol that requires decoding to retrieve underlying data. As noted
by Appellant, and we agree, “Anderson requires literal numeric characters
with their original meaning for its hashing operations and indexed value
comparison to work.” Reply Br. 6; see also Anderson 8:53–9:10.
Specifically, in Anderson, “a string of characters may be created in a
form [that] standardizes the data . . . to allow a valid comparison among
checks . . . [and] the string created may be numeric in content.” Anderson
6:28–36. However, Anderson’s string of characters is not decoded, but
rather a function is applied to the string to normalize it into a suitable format
for indexing, sorting, and/or comparing to other strings. See Anderson 8:53–
9:10.
As a result, the Examiner fails to show that Anderson teaches an
instrument bearing an encoded indicia, as set forth in claim 1. Thus, we
disagree with the Examiner’s finding that Anderson teaches an encoded
indicia, as recited in each of the independent claims. The Examiner has not
clearly relied upon any of the other references of record to teach this feature.
Since we agree with at least one of the arguments advanced by Appellant,
we need not reach the merits of Appellant’s other arguments.
Accordingly, we will not sustain the Examiner’s obviousness rejection
of claims 1–19.

CONCLUSION
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Application 15/142,545

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The Examiner’s rejections of claims 1–19 as being unpatentable under
35 U.S.C. § 103 is reversed.
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103 Anderson,
Sgambati
1–19

REVERSED