Gardner/Wyatt Ventures, LLC

Patent Trials and Appeals BoardOct 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 Appeal 2020-003056 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 Appeal 2020-003056 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)). Appeal 2020-003056 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 Appeal 2020-003056 Application 15/142,545 6 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