Curtis Evans

Patent Trials and Appeals Board

Jan 29, 2021

2020003660 (P.T.A.B. Jan. 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.
14/700,290 04/30/2015 Curtis A. Evans 1187-017 3567
103200 7590 01/29/2021
CURTIS A. EVANS
9304 CASTLE HILL ROAD
SPRINGFIELD, VA 22153
EXAMINER
SNIDER, SCOTT
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
01/29/2021 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 CURTIS A. EVANS
____________

Appeal 2020-003660
Application 14/700,290
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellant claims methods, systems and account settings for payment
with a transponder for both electronic toll collection and electronic entry into
games, contests, sweepstakes and/or lotteries (Spec. ¶ 19, Title).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies inventor Curtis A Evans as the real
party in interest (Appeal Br. 1).
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Claim 1 is representative of the subject matter on appeal.
1. A practical application of an electronic toll collection
system configured for paying tolls and electronically initiating
participation in a lottery, contest, game, or sweepstakes, said
practical application of an electronic toll collection system
comprising:
a vehicle-mounted RFID electronic toll collection system
transponder, said transponder configured to wirelessly initiate a
payment in said electronic toll collection system;
an electronic toll collection system transponder reader,
said transponder reader configured to wirelessly read data from
said transponder while said transponder is located in, attached
to, or integrated into a moving vehicle and as said transponder
passes through a reading vicinity of said transponder reader,
wherein said transponder reader is configured to communicate
with a computer or network of computers to facilitate toll
collection;
a pre-funded electronic toll collection system account
associated with said transponder and configured to pay a toll
transaction and a non-toll transaction, wherein said account is
maintained on said computer or network of computers;
first executable program code configured on non-
transitory computer readable medium that functions to facilitate
a first payment, from said account, to a toll-collecting authority
for a toll associated with said electronic toll collection system,
said payment being caused when said transponder is read by
said transponder reader in a first transponder reading event;
second executable program code configured on non-
transitory computer readable medium that functions to facilitate
a second payment, from said account, to a gameplay authority
to facilitate purchase of electronic entry into said lottery,
contest, game, or sweepstakes, said payment being caused when
said transponder is read by said transponder reader in said first
transponder reading event;
third executable program code configured on non-
transitory computer readable medium that functions to
substantially simultaneously authorize the debit of said account
for said first payment and said second payment;
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wherein said account is other than a gaming authority
account and other than a financial institution account; and
wherein said toll-collecting authority is distinct from said
gameplay authority.

THE REJECTIONS
Claims 1–5, 8, and 15–18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Nyman (US 2010/0222125 A1, Sept. 2, 2010) and
Grinvald (US 2013/0032635 A1, Feb. 7, 2013).
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Nyman, Grinvald, and Lewis (US 2015/0095169 A1, Apr. 2, 2015).
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over
Nyman, Grinvald, Lewis, and Kleinhans (US 2008/0109320 A1, May 8,
2008).
Claims 9, 10, and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Cage (US 2014/0274314 A1, Sept. 18, 2014) and
Grinvald.
Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Cage, Grinvald, and Walker (US 2004/0039645 A1,
Feb. 26, 2004).
Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over
Cage, Grinvald, Walker, and Wells Fargo (“Keep the Change Savings
Program” archived Mar. 15, 2014).
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Nyman, Grinvald, and Guziel (US 2012/0089468 A1,
Apr. 12, 2012).

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ANALYSIS
REJECTIONS UNDER 35 U.S.C. §103
The Examiner rejects claims 1–5, 8, and 15–18 under 35 U.S.C. § 103
over the teachings of Nyman in view of Grinvald.
“An invention is not obvious just ‘because all of the elements that
comprise the invention were known in the prior art.’” Broadcom Corp. v.
Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One,
Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010)). Instead,
“a finding of obviousness at the time of invention requires a ‘plausible
rational[e] as to why the prior art references would have worked together.’”
Id. (quoting Power-One, 599 F.3d at 1352). The Examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
We find that Nyman discloses a lottery transaction system which uses
a transaction instrument that may include a phone card, gift card, loyalty
card, player card, transaction card, debit card, credit card, smart card, a
human biological identifier or a radio frequency identification (RFID) or
transponder. The Nyman system allows for the incorporation of the
transaction instrument via a POS device (¶¶ 10, 33). The POS device
conducts lottery and non-lottery transactions and may be a traditional retail
counter as well as self-service kiosks (¶ 87). The Nyman system is operable
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to execute instructions for conducting lottery transactions and non-lottery
transactions (¶ 46). Nyman does not disclose that the device may be used
for paying tolls.
We find that Grinvald discloses a platform for extending the use of
transponders and/or transponder accounts which relates to transponders that
are used for paying tolls such as is used in the “EZPass” system. Grinvald
discloses a transponder that can be used for paying non-toll transactions in
addition to paying tolls (¶¶ 2, 57). Payments for non-toll transactions
through the use of a transponder may be automatically deducted from a
linked but separate account (¶ 57).
The Examiner relies on Nyman for teaching much of the invention as
claimed. However, the Examiner recognizes that Nyman does not disclose a
transponder mounted in a vehicle used to pay a road toll and a prefunded
electronic toll collection system required by claim 1. The Examiner relies
on Grinvald for teaching this subject matter by disclosing using a vehicle
mounted transponder for paying a toll and for paying for a variety of non-toll
transactions using an account associated with the tolling (Final Act. 12–13).
The Examiner reasons that:
It would have been obvious to one of ordinary skill in the
art at the time of the invention was filed to modify the RFID-
based payment system of Nyman with the RFID-based toll
payment extensions of Grinvald in order for existing toll
transponders to “be transformed into a full-fledged payment,
identification and transaction system, whereby a user can utilize
his/her transponder and/or transponder account to partake in
one or more non-toll transactions.”
Final Act. 12–13 (quoting Grinvald ¶ 24).
The statement of the rejection is confusing. The Examiner reasons
that a person of ordinary skill in the art would have a reason to modify
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Nyman’s transponder so as to transform an existing toll transponder to one
that can be utilized for more non-toll transactions. This is confusing because
Nyman does not disclose an existing toll transponder system. It is unclear
exactly what modification the Examiner proposes and therefore the rejection
fails on this basis alone.
In any case, if the Examiner proposes to modify the Nyman
transponder, with the transponder of Grinvald, the Examiner has not shown a
reason for a person of ordinary skill in the art to modify the transponder of
Nyman, which is used for transactions at stationary POS stations such as
kiosks, with the transponder of Grinvald which is used to pay tolls and is
mounted in a moving vehicle. The Examiner has not directed our attention
to anything that would suggest that a person of ordinary skill in the art
would have a reason to use the gaming transponder of Nyman to pay tolls.
In addition, Grinvald discloses that the therein disclosed transponder
conducts payments for non-toll related transactions through a linked account
which is separate from the toll account. As such, the Examiner has not
established that even if the Nyman system was modified to include the
Grinvald transponder so as to be capable of transacting tolls, the resulting
system would be capable of debiting one account for both the tolls and the
non-toll transactions as required by claim 1.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 1 and claims 2-5, and 8 dependent therefrom.
Claim 15 recites that the toll collection system account is debited for
purchase “of said electronic entry from a gameplay authority and a payment
of a toll.” As such, claim 15, like claim 1, requires that the same account is
used for toll and non-toll transactions. Therefore, we reverse the rejection of
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claim 15 and claims 16-18 dependent therefrom for the same reasons as
discussed in regard to the rejection of claim 1.
We will also reverse the rejections of claims 6, 7, 19 and 20 for the
same reasons.
The Examiner rejects claims 9, 10 and 13 under 35 U.S.C. §103 as
being unpatentable over the teachings of Cage in view of Grinvald.
We find that Cage discloses a method for integrated game play at
payment-enabled terminals. The Cage invention includes a game play
system for facilitating a game play purchase by a user and a payment-
enabled terminal. The games include lottery wagers, lottery draws, and
second chance games. (¶27). The payment-enabled terminals include swipe
enable point of sale systems, card reader in dispenser terminals, payment-
enabled “smart” device (tablets, netbooks, mobile devices, etc.), payment
kiosks, self-service payment terminals, and automated teller machines, “tap”
payment platforms etc. (¶29). The game system is in communication with a
fuel payment system. (¶44). The fuel payment system includes a fuel pump,
a local point of sale terminal, a point of sale host network, media server and
a financial payment processor. (¶46). The Cage system is operable to
execute instructions for conducting gaming transactions and fuel dispensing
transactions (¶ 46-47). Cage does not disclose that the device may be used
for paying tolls.
The Examiner relies on Cage for teaching much of the invention as
claimed. However, the Examiner recognizes that Cage does not disclose a
vehicle-mounted transponder “configured to function in at least one toll
collecting system and wherein said transponder is associated to a pre-paid
account.” (Final Act. 22). The Examiner relies on Grinvald for teaching this
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subject matter by disclosing using a vehicle mounted transponder for paying
a toll and for paying for a variety of non-toll transactions using an account
associated with the tolling (Final Act. 22-23). The Examiner reasons that:
It would have been obvious to one of ordinary skill in the
art at the time of the invention was filed to modify the RFID-
based gaming-at–a-fuel-dispenser system of Cage with the
RFID-based toll payment extensions of Grinvald in order to for
existing toll transponders to “be transformed into a full-fledged
payment, identification and transaction system, whereby a user
can utilize his/her transponder and/or transponder account to
partake in one or more non-toll transactions.”
Final Act. 23 (quoting Grinvald ¶ 24).
The statement of the rejection is confusing. The Examiner reasons
that a person of ordinary skill in the art would have a reason to modify
Cage’s system so as to transform an existing toll transponder to one that can
be utilized for more non-toll transactions. This is confusing because Cage
does not disclose an existing toll transponder system. It is unclear exactly
what modification the Examiner proposes and therefore the rejection fails on
this basis alone.
In any case, if the Examiner proposes to modify the Cage system,
which does not disclose a toll transponder, by adding the transponder of
Grinvald, the Examiner has not shown a reason for a person of ordinary skill
in the art to modify the system of Cage, which is used for transactions
(gaming and fuel dispensing) at stationary POS stations such as kiosks, with
the transponder of Grinvald which is used to pay tolls and is mounted in a
moving vehicle. The Examiner has not directed our attention to anything
that would suggest that a person of ordinary skill in the art would have a
reason to use the gaming system of Cage to pay tolls.
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In addition, Grinvald discloses that the disclosed transponder conducts
payments for non-toll related transactions through a linked account which is
separate from the toll account. As such, the Examiner has not established
that even if the Cage system was modified to include the Grinvald
transponder so as to be capable of transacting tolls, the resulting system
would be capable of debiting one account for both the tolls and the non-toll
(fuel dispensing and gaming) transactions as required by claim 9.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 9. We will also not sustain the rejections of claims 10, 11,
12, 13, 14 because the rejections of these claims relies on the combined
teachings of Nyman and Grinvald.

CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1–20 under
35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8,
15–18
103 Nyman, Grinvald 1–5, 8,
15–18
6 103 Nyman, Grinvald,
Lewis
6
7 103 Nyman, Grinvald,
Lewis, Kleinhans
7
9, 10, 13 103 Cage, Grinvald 9, 10, 13
11, 12 103 Cage, Grinvald,
Walker
11, 12
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14 103 Cage, Grinvald,
Walker, Wells Fargo
14
19, 20 103 Nyman, Grinvald,
Guziel
19, 20
Overall
Outcome
1–20

REVERSED