Ex Parte Crowell et al

Patent Trial and Appeal Board

Nov 30, 2012

11388539 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte DONALD R. CROWELL, PAUL A. BLAIR, KENNETH
ALGIENE, and MARK THOMPSON
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Appeal 2010-009963
Application 11/388,539
Technology Center 3600
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 19 to 41. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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BACKGROUND
Appellants’ invention is directed to systems and methods for sending
and receiving value using unmanned financial transaction kiosks (Spec. 2,
para. [0003]).
Claim 19 is illustrative:
19. A method for paying a bill using a kiosk, the method
comprising:
accessing a kiosk having a display screen, a keypad and a
communication device to permit the kiosk to communicate over
a network;
displaying on the display screen a bill payment option;
selecting the bill payment option;
selecting a method of payment to pay the bill;
entering into the kiosk account information;
transmitting from the kiosk to a host computer system an
electronic file containing transaction data relating to payment of
the bill;
receiving at the kiosk a verification of the transaction
data;
displaying on the display screen a summary of the
transaction data including any services charges;
providing an opportunity to accept or cancel the
transaction and service charges; and
thereafter prompting for a remittance of funds to
consummate payment of the bill.

Appellants appeal the following rejection:
Claims 19 to 41 under 35 U.S.C. § 102(e) as anticipated by Hoyos (US
2002/0082993 A1, pub. Jun. 27, 2002).
FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Ans. 3 to 4.
Additional findings of fact may appear in the Analysis that follows.
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3
ANALYSIS
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Hoyos does not disclose anything about service
charges and thus does not disclose displaying on the display screen a
summary of the transaction data including any service charges and providing
an opportunity to accept or cancel the transaction and service charges as
recited in claim 19.
We note that non-functional descriptive material cannot render non-
obvious an invention that otherwise would have been obvious. In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). The type of data displayed and provided
in the present invention is not functionally related to how the method of
claim 19 is performed.
The recitation of service charges in both the displaying step and the
providing step is a recitation of non-functional descriptive material because
the type of transaction data and type of charges is not functionally related to
how the method of claim 19 is performed. As such, we will sustain the
Examiner’s rejection of claim 19. We will also sustain the Examiner’s
rejection of claims 20 to 40 because the Appellants have not argued the
separate patentability of these claims.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Hoyos does not disclose associating the additional
amount of value with the account as required by claim 41. We agree with
the Examiner that as Hoyos discloses a bank transaction option and since
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bank transactions encompass many transactions such as withdrawing
money/value from an account and transferring funds/value to an account
including depositing/adding value to an account. Therefore, we will sustain
the Examiner’s rejection of claim 41.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 41.

DECISION
The decision of the Examiner is 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). See 37 C.F.R.
§ 1.136(a)(1) (2011).

AFFIRMED

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