Ex Parte Szrek et al

Patent Trial and Appeal BoardApr 30, 2018

12265644 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/265,644 11/05/2008 76656 7590 Patent Docket Department Armstrong Teasdale LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 05/02/2018 FIRST NAMED INVENTOR Irena Szrek 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. 28030-15 2548 EXAMINER COPPOLA, JACOB C ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 05/02/2018 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): USpatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IRENA SZREK and WALTER SZREK Appeal2017-001620 Application 12/265,644 Technology Center 3600 Before JUSTIN BUSCH, JENNIFER L. McKEOWN, and NORMAN H. BEAMER, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1, 3-8, and 10-14. Claims 2 and 9 have been canceled. Claims 15-19 have been withdrawn. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellants state the inventors, Irena Szrek and Walter Szrek, are the real parties in interest. App. Br. 1. Appeal2017-001620 Application 12/265,644 STATEMENT OF THE CASE Appellants' invention relates to "[a] method and system for generation of ticket security codes." Abstract. Claim 1 is illustrative of the claimed invention and reads as follows, with the disputed limitations emphasized: 1. A method for enabling verification of validity of a lottery receipt, said method comprising: generating, by a point of sale device or a point of sale remote system, including a processor coupled to a memory device, a first code that is not accessible by a host computing system, the first code comprising a random number; calculating, by the point of sale device or the point of sale remote system, a one way hash of the first code; receiving, by the host computing system, the one way hash of the first code; generating, by the host computing system, a second code for the lottery transaction, wherein the second code comprises information based on one of a digital signature or a digital time stamp; receiving, by the point of sale device or the point of sale remote system, the second code; generating, by the point of sale device and/or point of sale remote system, a security code as a transformation of the first code and the second code; and including the security code on a lottery receipt. THE REJECTION The Examiner rejected claims 1, 3-8, and 10-14 under 35 U.S.C. Â§ 112, first paragraph, for insufficient written description. Final Act. 3-5. 2 Appeal2017-001620 Application 12/265,644 ANALYSIS Claims 1, 3-8, and 10-14 Based on the record before us, we are persuaded that the Examiner erred in rejecting claims 1, 3-8, and 10-14. The Examiner rejects claim 1 for lack of written description support for the limitations "receiving, by the point of sale device or the point of sale remote system, the second code; [and] generating, by the point of sale device and or point of sale remote system, a security code as a transformation of the first code and the second code." Final Act. 3. In particular, the Examiner explains that "Applicants' disclosure at paragraph [0025] merely reiterates the same language as the claim without further describing how the generating via a transformation is performed. This disclosure is not sufficient." Final Act. 5. Moreover, the Examiner determines that "Appellants do not disclose generating the security code with any particular transformation of the first code and the second code, rather the specification generically states ' [a] transformation of RI and R2 is generated as security code - Rl,R2, one to twenty-four characters."' Ans. 4. According to the Examiner, this generic disclosure of transformation is insufficient written description support for any transformation of the first and second code, which would be covered by the language of the claim. Ans. 6. We disagree. As Appellants explain, paragraphs 1-3, 18 and 24--25 provide sufficient written description support for the recited transformation limitation. See, e.g., App. Br. 5---6; Reply Br. 3--4. Namely, paragraphs 1-3 "describe[] that there are different methods of generating security codes that are known in the art at the time of filing." Spec. ,r,r 1-3. The Specification 3 Appeal2017-001620 Application 12/265,644 also expressly points to U.S. Patent No. 6,934,846 as support for the recited transformation. Spec. ,r 24. Paragraph 18 then identifies that the number generation methods, such as those in U.S. Patent No. 6,934,846, may be applied to the claimed security codes. Spec. ,r 18. Moreover, we agree with Appellants that generating security codes through the recited transformation is known in the art. See, e.g., App. Br. 6. Namely, [ w ]hile detail of how the codes are mathematically generated is not explicitly stated in the application as filed, the Appellant asserts that one skilled in the art of security codes at the time of filing would fully understand many different ways that one may generate the security code described in Claim 1. Reply Br. 3. See Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed.Cir.2012) ("It is well-established ... that a specification need not disclose what is well-known in the art."). As such, we are persuaded by Appellants that the Examiner erred in finding insufficient written description support for the recited transformation. Accordingly, we reverse the Examiner's rejection of claims 1, 3-8, and 10-14 for lack of written description support. DECISION We reverse the Examiner's decision to reject claims 1, 3-8, and 10- 14. REVERSED 4