Ex Parte Lee et al

Patent Trial and Appeal Board

Apr 26, 2016

13244810 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/244,810 09/26/2011 Paul Lee
14925 7590 04/26/2016
Johnson, Marcou & Isaacs, LLC
317 A East Liberty Street
Savannah, GA 31401
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.
GOOG-0066-1 4566
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3687
MAILDATE DELIVERY MODE
04/26/2016 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 PAUL LEE, DAN MOISA, and GENE SOKOLOV
Appeal2013-009733 1
Application 13/244,8102
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 4--12, 14--22, 25-27, and 39--44. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed April
15, 2013) and Reply Brief ("Reply Br.," filed July 29, 2013), and the
Examiner's Answer ("Ans.," mailed May 29, 2013) and Final Office Action
("Final Act.," mailed July 27, 2012).
2 Appellants identify Google Inc. as the real party in interest. App. Br. 3.
Appeal2013-009733
Application 13/244,810
CLAIMED INVENTION
Appellants' claimed invention "relates generally to collecting point of
sale (POS) data and, more particularly, to intercepting POS data as it is sent
from a POS scanner to a POS application running on a POS terminal"
(Spec. ii 2).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A point of sale (POS) data collection system,
compnsmg:
a storage resource;
at least one input/output (I/O) module;
a network module;
a processor communicatively coupled to the storage
resource, the at least one I/O module, and the network module,
wherein the processor executes application code instructions that
are stored in the storage resource and that cause the POS data
collection system to:
receive, via the at least one I/O module and from a
POS scanner, an identifier corresponding to a product
scanned via the POS scanner;
transmit, via the at least one I/O module, the
identifier to a POS terminal;
establish, via the network module, a connection
with a computing device that is remote from a location of
the POS scanner; and
transmit, via the network module, the identifier to
the remote computing device;
wherein the POS data collection system is implemented as
a hardware device configured for disposition between the POS
scanner and the POS terminal.
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Application 13/244,810
REJECTIONS3
Claims 1, 4--12, 14--22, 25, 26, 39, and 42--44 are rejected under
35 U.S.C. § 103(a) as unpatentable over Mollett (US 7,182,255 B2,
iss. Feb. 27, 2007), Besecker (US 2009/0026255 Al, pub. Jan. 29, 2009),
Killian (US 2009/0094125 Al, pub. Apr. 9, 2009), and Zoldi
(US 2008/0077515 Al, pub. Mar. 27, 2008).
Claims 27, 40, and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mollett, Besecker, Killian, Zoldi, and Dai
(US 2011/0191252 Al, pub. Aug. 4, 2011).
ANALYSIS
Independent claim 1 and dependent claims 4-9
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103 because Mollett, on
which the Examiner relies, does not disclose or suggest a POS data
collection system, "implemented as a hardware device configured for
disposition between the POS scanner and the POS terminal," that "receive[ s]
... from a POS scanner, an identifier corresponding to a product scanned
via the POS scanner [and] transmit[s] ... the identifier to a POS terminal,"
as recited in claim 1 (App. Br. 11-15; see also Reply Br. 4--9).
By way of background, Mollett is directed to a system and method for
use in conjunction with the purchase of items at a point of sale where at least
one item is associated with an age-related authorization threshold (Mollett,
3 The provisional rejection of claims 1, 4--12, 14--22, 25-27, and 39--44 on
the ground of non-statutory obviousness-type double patenting has been
withdrawn in view of the abandonment of application Serial No. 13/184,210.
Ans. 3.
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Appeal2013-009733
Application 13/244,810
col. 1, 11. 17-35). In Figure IA, Mollett depicts an embodiment of a point-
of-sale terminal ("POS") 130 with an associated magnetic stripe reading
device 120 and a bar code reader 160, and describes that the embodiment
can be used in conjunction with a point-of-sale purchase of age-controlled
products (id. at col. 6, 11. 39--4 7). Mollett discloses that magnetic stripe
reading device 120 permits the input of personal information regarding an
individual, e.g., the individual birth date, from an appropriately configured
magnetic strip on a driver's license, credit card, or other identification card
(id. at col. 6, 11. 48-56), and that bar code reader 160 allows for the input of
identifying product information, which identifying information allows for
access to additional stored information regarding the products, e.g., whether
the purchase of a product requires verification of the purchaser's age before
the purchase can be completed (id. at col. 7, 11. 13-28).
Mollett discloses a process, with reference to Figure 3, executed by a
point of sale clerk, for conducting a sales transaction comprising an
authorization by age calculation for a minimum authorized age (id.
at col. 14, 11. 53-56). The process begins at step 305 where the items to be
purchased are identified by scanning a bar code affixed to each item; the
process then determines whether to perform an authorization check
depending on whether any of the identified items are among those having
age restrictions; if so, the process determines the authorization threshold
value and compares the authorization threshold to the customer's age or
other authorization measure to determine if the customer is authorized to
make the desired purchase (id. at col. 15, 1. 3---col. 16, 1. 2). If the process
determines that the customer is authorized to purchase the scanned item, the
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Appeal2013-009733
Application 13/244,810
transaction is completed; otherwise, the transaction is aborted (id. at col. 16,
11. 6-14).
Responding to Appellants' argument that Mollett fails to disclose or
suggest positioning a POS data collection system between a POS scanner
and a POS terminal, the Examiner asserts that transaction information in the
Mollett system flows from the scanner to the magnetic stripe reading device
and then to the POS terminal, and that the flow of transaction information is
the same regardless of the actual position of Mollett's magnetic strip reader
(which the Examiner compares to the claimed data collection system)
(Ans. 6). The Examiner further asserts that Appellants' Specification does
not "provide that positioning the hardware device between the POS scanner
and the POS terminal solves any problem in the prior art" (id. at 7). And the
Examiner concludes that positioning Mollett's magnetic strip reader between
the scanner (i.e., bar code scanner 160) and POS terminal 130 would have
been an obvious matter of design choice (id.).
The Examiner's analysis fails at least because the Examiner's
interpretation of Mollett's information flow is factually incorrect. Rather
than flowing from the scanner to the magnetic stripe reading device and then
to the POS terminal, as the Examiner suggests, transaction information
(including product identification information) actually flows in Mollett from
the scanner to the POS terminal and then to the magnetic stripe reading
device. Rather than being a mere design choice, the positioning of the POS
data collection system between the POS scanner and the POS terminal, as
recited in independent claim 1, is a strategic choice in that it allows the
claimed "POS data collection system" to "receive ... from a POS scanner,
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Appeal2013-009733
Application 13/244,810
an identifier corresponding to a product scanned via the POS scanner [and]
transmit ... the identifier to a POS terminal," as called for claim 1.
Referring to Figure 2B of Mollett, the Examiner asserts that in the
Mollett process, if an authorization check is required, i.e., when the product
scanned triggers an age restriction, the product identifier is sent to personal
information input device 265 (which the Examiner compares to the claimed
POS data collection system) and the purchaser is asked to swipe his/her
identification card to verify his/her age (Ans. 5 (citing Mollett, col. 2, 11. 48-
52) ). Still referring to Figure 2B, the Examiner notes that local
computer 270 (which the Examiner compares to the claimed POS terminal)
communicates information received from personal information input
device 265 to remote server 280 (id.). And the Examiner asserts that this is
"equivalent to [Appellants'] 'transmitting the scanned product identifier to a
POS terminal and to a remote computing device"' (id. (citing Mollett, col. 3,
11. 7-11) ). In fact, there is no such equivalence.
Mollett discloses that personal information input device 265 in
Figure 2B, which the Examiner compares to the claimed POS data collection
system, transmits "personal information useful for an authorization
determination" to local computer 270, i.e., to the POS terminal (see, e.g.,
Mollett, col. 12, 11. 48-51 ). But we find nothing in the cited portions of
Mollett that discloses or suggests that personal information device 265
transmits product identification information, i.e., "an identifier
corresponding to a product scanned via the POS scanner," to local computer
270, which the Examiner's claim mapping requires.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we
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Application 13/244,810
also do not sustain the Examiner's rejection of dependent claims 4--9.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
Independent claims 10, 25, and 39, and dependent claims 11, 12, 14-22, 26,
and 42-44
Independent claims 10, 25, and 39 include language substantially
similar to the language of claim 1. Therefore, we do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 10, 25,
and 39, and claims 11, 12, 14--22, 26, and 42--44, which depend therefrom,
for the same reasons set forth above with respect to claim 1.
Dependent claims 27, 40, and 41
Claim 27 and claims 40 and 41 ultimately depend from independent
claims 25 and 39, respectively. The Examiner's rejection of claims 27, 40,
and 41 based on Dai, in combination with Mollett, Besecker, Killian, and
Zoldi, does not cure the deficiency in the Examiner's rejection of
independent claims 25 and 39. Therefore, we do not sustain the Examiner's
rejection of claims 27, 40, and41under35 U.SC. § 103(a) forthe same
reasons set forth above with respect to the independent claims.
DECISION
The Examiner's rejections of claims 1, 4--12, 14--22, 25-27, and 39-
44 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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