IN THE UNITED STATES PATENT AND TRADEMARK OFFICE. In the Inter Partes Review of: Attorney Docket No.:

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In the Inter Partes Review of: Attorney Docket No.: U.S. Patent No. 6,044,382 Filed: June 20, 1997 Trial Number: To Be Assigned Panel: To Be Assigned Issued: March 28, 2000 Inventors: Rocco Martino Assignee: CyberFone Technologies, Inc. For: DATA TRANSACTION ASSEMBLY SERVER Mail Stop Inter Partes Review Commissioner for Patents P.O. Box 1450 Alexandria, VA PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R

2 TABLE OF CONTENTS I. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1))... 1 A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1))... 1 B. Related Matters (37 C.F.R. 42.8(b)(2))... 1 C. Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3))... 1 D. Service Information (37 C.F.R. 42.8(b)(4))... 2 II. PAYMENT OF FEES (37 C.F.R )... 2 III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R ). 2 A. Grounds for Standing (37 C.F.R (a))... 2 B. Identification of Challenge (37 C.F.R (b)) and Relief Requested Claims for Which Inter Partes Review is Requested (37 C.F.R (b)(1)) The Specific Art and Statutory Ground(s) on Which the Challenge Is Based (37 C.F.R (b)(2)) How the Challenged Claim(s) Are to Be Construed (37 C.F.R (b)(3))... 5 a) Form driven operating system... 6 b) Transaction assembly server... 8 IV. SUMMARY OF THE 382 PATENT... 9 A. Description of the Alleged Invention of the 382 Patent... 9 B. Summary of the Prosecution History of the 382 Patent V. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF THE 382 PATENT ARE UNPATENTABLE (37 C.F.R (b)(4)) A. Identification of the References as Prior Art B. Summary of Invalidity Arguments VI. DETAILED EXPLANATION (37 C.F.R (b)) A. Claim 1 (Independent) B. Claim 2 (Dependent) C. Claim 4 (Dependent) D. Claim 5 (Dependent) i-

3 E. Claim 6 (Dependent) F. Claim 7 (Dependent) G. Claim 8 (Dependent) H. Claim 13 (Independent) I. Claim 14 (Dependent) J. Claim 19 (Independent) K. Claim 20 (Dependent) VII. CONCLUSION ii-

4 TABLE OF AUTHORITIES Cases Cyberfone Systems, LLC v. ZTE (USA), Inc., Civ. No SLR (D. Del.)... 5 Federal Statutes 35 U.S.C , 5, U.S.C U.S.C Code of Federal Regulations 37 C.F.R , 2 37 C.F.R C.F.R C.F.R , 5 37 C.F.R C.F.R passim -iii-

5 On behalf of Ricoh Americas Corp. and Ricoh Electronics, Inc. ( Ricoh ) and in accordance with 35 U.S.C. 311 and 37 C.F.R , inter partes review is respectfully requested for claims 1, 2, 4-8, 13, 14, 19 and 20 of U.S. Patent No. 6,044,382 ( the 382 patent ; Exhibit 1001). I. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1)) A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) Ricoh Americas Corp. and Ricoh Electronics, Inc. are the real parties-ininterest for Petitioner. B. Related Matters (37 C.F.R. 42.8(b)(2)) The 382 patent is presently the subject of two related patent infringement lawsuits by the assignee, Cyberfone Systems, LLC, against Ricoh and Lexmark, captioned Cyberfone Systems, LLC v. Ricoh Americas Corp., Case No (SLR) and Cyberfone Systems, LLC v. Lexmark International, Inc., Case No (SLR), both pending in the District of Delaware. C. Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) Pursuant to 37 C.F.R. 42.8(b)(3) and 42.10(a), Petitioner provides the following designation of counsel. Lead Counsel Paul Devinsky (Reg. No. 28,553) pdevinsky@mwe.com McDermott Will & Emery LLP Back-Up Counsel Gregory Yoder (Reg. No. 60,994) gyoder@mwe.com McDermott Will & Emery LLP -1-

6 500 North Capitol Street, N.W. Washington, DC Telephone: (202) Fax: (202) Park Plaza, Suite 1700 Irvine, California Telephone: (949) Fax: (949) Pursuant to 37 C.F.R (b), a Power of Attorney accompanies this Petition. D. Service Information (37 C.F.R. 42.8(b)(4)) Service information for lead and back-up counsel is provided in the designation of lead and back-up counsel, above. Service of any documents via hand-delivery may be made at the postal mailing address of the respective lead or back-up counsel designated above. II. PAYMENT OF FEES (37 C.F.R ) The undersigned authorizes the Office to charge $9,000 to Deposit Account No for the Inter Partes Review request fee set forth in 37 C.F.R (a)(1) for this Petition. Review is sought for eleven claims (1, 2, 4-8, 13, 14, 19 and 20), so no excess claim fees are required. The undersigned further authorizes payment for any additional fees that might be due in connection with this Petition to be charged to the above-referenced Deposit Account, including the $14,000 Inter Partes Review Post-Institution fee set forth in 37 C.F.R (a)(2) should the Board institute a review based on this Petition. III. REQUIREMENTS FOR INTER PARTES REVIEW (37 C.F.R ) A. Grounds for Standing (37 C.F.R (a)) - 2 -

7 Petitioner hereby certifies that the 382 patent is available for inter partes review and that the Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the 382 patent on the grounds identified herein. Petitioner certifies that: Petitioner is not the owner of the 382 patent; Petitioner has not filed a civil action challenging the validity of a claim of the 382 patent; this Petition is filed less than one year after the date on which the Petitioner, the Petitioner s real party-in-interest, or a privy of the Petitioner was served with a complaint alleging infringement of the 382 patent; and the estoppel provisions of 35 U.S.C. 315(e)(1) do not prohibit this inter partes review. B. Identification of Challenge (37 C.F.R (b)) and Relief Requested The precise relief requested by Petitioner is that claims 1, 2, 4-8, 13, 14, 19 and 20 of the 382 patent be found unpatentable. 1. Claims for Which Inter Partes Review is Requested (37 C.F.R (b)(1)) Petitioner requests inter partes review of claims 1, 2, 4-8, 13, 14, 19 and 20 of U.S. Patent No. 6,044, The Specific Art and Statutory Ground(s) on Which the Challenge Is Based (37 C.F.R (b)(2)) Inter partes review of the 382 patent is requested in view of the following references: [1] U.S. Patent No. 5,157,717 ( Hitchcock ; Exhibit 1002); [2] U.S. Patent No. 5,572,572 ( Kawan ; Exhibit 1003); [3] U.S. Patent No. 5,878,

8 ( Bealkowski ; Exhibit 1004); and [4] U.S. Patent No. 5,848,271 ( Caruso ; Exhibit 1005). Each of the references listed above is prior art to the 382 patent under 35 U.S.C. 102(a), (b), and/or (e), as established in Section V(A), below. Claim No. Proposed Statutory Rejections for the 382 Patent 1 Claim 1 is anticipated under 102(b) by Hitchcock 1 Claim 1 is anticipated under 102(e) by Kawan 2 Claim 2 is obvious under 103(a) over Hitchcock in view of Kawan and Bealkowski 2 Claim 2 is obvious under 103(a) over Kawan in view of Bealkowski 2 Claim 2 is anticipated under 102(e) by Kawan 4 Claim 4 is anticipated under 102(b) by Hitchcock 4 Claim 4 is anticipated under 102(e) by Kawan 4 Claim 4 is obvious under 103(a) over Kawan in view of Hitchcock 5 Claim 5 is anticipated under 102(b) by Hitchcock 5 Claim 5 is anticipated under 102(e) by Kawan 5 Claim 5 is obvious under 103(a) over Kawan in view of Hitchcock 6 Claim 6 is anticipated under 102(b) by Hitchcock 6 Claim 6 is anticipated under 102(e) by Kawan 6 Claim 6 is obvious under 103(a) over Kawan in view of Hitchcock 7 Claim 7 is anticipated under 102(b) by Hitchcock 7 Claim 7 is anticipated under 102(e) by Kawan 7 Claim 7 is obvious under 103(a) over Kawan in view of Hitchcock 8 Claim 8 is obvious under 103(a) over Hitchcock in view of Caruso 8 Claim 8 is obvious under 103(a) over Kawan in view of Caruso 8 Claim 8 is obvious under 103(a) over Kawan in view of Hitchcock and Caruso 13 Claim 13 is anticipated under 102(b) by Hitchcock - 4 -

9 Claim No. Proposed Statutory Rejections for the 382 Patent 13 Claim 13 is anticipated under 102(e) by Kawan 13 Claim 13 is obvious under 103(a) over Kawan in view of Hitchcock 14 Claim 14 is obvious under 103(a) over Hitchcock in view of Caruso 14 Claim 14 is obvious under 103(a) over Kawan in view of Caruso 14 Claim 14 is obvious under 103(a) over Kawan in view of Hitchcock and Caruso 19 Claim 19 is anticipated under 102(b) by Hitchcock 19 Claim 19 is anticipated under 102(e) by Kawan 20 Claim 20 is anticipated under 102(b) by Hitchcock 20 Claim 20 is anticipated under 102(e) by Kawan 3. How the Challenged Claim(s) Are to Be Construed (37 C.F.R (b)(3)) A claim subject to inter partes review receives the broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). Petitioner submits, for the purposes of the inter partes review only, that the claim terms (other than form driven operating system and transaction assembly server ) are presumed to take on their ordinary and customary meaning that the terms would have to one of ordinary skill in the art in view of the specification of the 382 patent. The terms form driven operating system and transaction assembly server have previously been construed by Judge Robinson of the District of Delaware in Cyberfone Systems, LLC v. ZTE (USA), Inc., Civ. No SLR (D. Del.) and related cases. Judge Robinson s - 5 -

10 claim construction order regarding construction of these terms is attached as Exhibit Although these constructions are made under Philips, and therefore may be narrower than the broadest reasonable construction, petitioner is willing to use them as the basis upon which the patentability issues should be predicated for this petition. The following claim constructions have been applied in the claim charts in Section VI of this Petition below. a) Form driven operating system The limitation form driven operating system means firmware - a set of instructions programmed on a hardware device - that, together with forms, operates to control a microprocessor without the need for a conventional operating system (such as DOS or Windows). The specification of the 382 patent defines a form driven operating system in two locations. First, The microcode of the TAS PROM 95 and the parameter streams from the form/menu memory 96 thus operate together as a simple form driven operating system for microprocessor 94 for all applications and is the sole code used to control microprocessor 94 for any and all applications (i.e., no conventional application programs and no fullscale operating system such as DOS or Windows needs to be provided). 382 patent at 16: In a preferred embodiment, the form driven operating system is described as follows: - 6 -

11 [T]he transaction assembly (application) server (TAS) 18 is a data stream stored in TAS PROM 95 which together with the forms from form/menu memory 96 create a simple form driven operating system which provides the necessary control data (firmware) to microprocessor 94 so that no conventional operating system is necessary. Id. at 19: The specification further explains that the TAS firmware from TAS PROM 95 and menus and forms from form/menu memory 96 of the invention together replace a conventional operating system and individual application programs. Id. at 17: Additionally, since the data transactions are created without the use of an operating system or application programs, the transaction entry device is quite simple and inexpensive... Id. at 3: The prosecution histories of two related patents also support this construction, as applicant repeatedly argued that [t]he microcode of the TAS PROM 95 and the parameter streams from the form/menu memory 96 instead operate together as a simple form driven operating system for microprocessor 94 for all applications and is the sole code used to control microprocessor 94. Exh ( 676 patent file history) at Jan. 3, 1997 Response at 16, March 18, 1997 Response at 22; Exh ( 103 patent file history) at Feb. 18, 1998 Response at 24. Additionally, applicant amended the claims of the 676 patent to add the form driven operating system limitation to distinguish the claims from prior art that - 7 -

12 contained operating systems running application programs. See id., Exh at March 18, 1997 Response at Applicant s March 18, 1997 response is further indicative as to what the inventor believed his invention to be as he argued that the prior art did not teach a system which uses one or more low cost terminal devices using form driven operating systems instead of conventional application programs running on a standard operating system to facilitate the entry of data into one or more remote databases. Id. at 33. b) Transaction assembly server The limitation transaction assembly server means firmware - the set of instructions programmed on a hardware device. This is consistent with the construction of form driven operating system, of which the TAS is a part, and the specification, which explains that: The TAS is absolutely self-contained in its relationship to the hardware of the transaction entry device and in general performs the two basic functions of (1) generating a template or form from a data stream and (2) developing a data transaction as the user inputs data in response to prompts in the template or form. 382 patent at 3: [T]he TAS firmware from TAS PROM 95 and menus and forms from form/menu memory 96 of the invention together replace a conventional operating system and individual application programs. Id. at 17:

13 4. The Construed Claim(s) Are Unpatentable (37 C.F.R (b)(4)) An explanation of how construed claims 1, 2, 4-8, 13, 14, 19 and 20 of the 382 patent are unpatentable under the statutory grounds identified above, including the identification of where each element of the claim is found in the prior art patents, is provided in Section VI, below, in the form of claims charts. 5. Supporting Evidence (37 C.F.R (b)(5)) The exhibit numbers of the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge, are provided in Section VI, below, in the form of claim charts. An Appendix of Exhibits identifying the exhibits is also attached. IV. SUMMARY OF THE 382 PATENT A. Description of the Alleged Invention of the 382 Patent The 382 patent purports to describe a system wherein a transaction entry device (e.g., a telephone with a display and microprocessor) has a form-driven operating system that (1) replaces a conventional operating system and individual application programs; (2) displays a form (or a menu of forms from which a form is first selected) on the transaction entry device; (3) prompts a user to input data into fields of the form displayed on the transaction entry device; (4) formats the data entered by the user; and (5) transmits the formatted data over a network (e.g., - 9 -

14 telephone network, data network, Internet, etc.) to a remote database server. The received data is processed at the remote database server. The remote database server then either stores information sent from the transaction entry device, passes the information to another remote database server for further processing, or returns responses (processed data, responses to form prompts, or additional forms) to the transaction entry device. B. Summary of the Prosecution History of the 382 Patent The 382 patent was filed on June 20, 1997, and issued on March 28, 2000, with 36 claims, of which claims 1, 13, 19, 22, 30, 34 and 36 are independent. The 382 patent as filed included 36 original claims, of which claims 1, 13, 19, 22, 30, 34 and 36 were independent. The 382 patent is a continuation-in-part of, and claims priority to, U.S. Patent No. 5,805,676, filed on May 19, The original claims of the 382 patent were all rejected by the Examiner in a September 30, 1999 Office Action under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 5,805,676. In response, Applicant filed a terminal disclaimer and the claims were subsequently allowed. V. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF THE 382 PATENT ARE UNPATENTABLE (37 C.F.R (b)(4)) A. Identification of the References as Prior Art

15 U.S. Patent No. 5,157,717 to Hitchcock ( Hitchcock ) was filed Feb. 20, 1991 and issued Oct. 20, Therefore, Hitchcock is prior art to the 382 patent under 35 U.S.C. 102(b). U.S. Patent No. 5,572,572 to Kawan et al. ( Kawan ) was filed Mar. 16, 1994 and issued Nov. 5, Therefore, Kawan is prior art to the 382 patent under 35 U.S.C. 102(e). U.S. Patent No. 5,878,256 to Bealkowski et al. ( Bealkowski ) was filed Oct. 16, 1991 and issued Mar. 2, Therefore, Bealkowski is prior art to the 382 patent under 35 U.S.C. 102(e). U.S. Patent No. 5,848,271 to Caruso et al. ( Caruso ) was filed Mar. 14, 1994 and issued Dec. 8, Therefore, Caruso is prior art to the 382 patent under 35 U.S.C. 102(e). Hitchcock, Kawan, Bealkowski and Caruso were not of record during prosecution of the 382 patent, and were not relied upon in any rejection of the claims. B. Summary of Invalidity Arguments Claims 1, 2, 4-8, 13, 14, 19 and 20 of the 382 patent include elements that were well known to those skilled in the art prior to the filing date of the 382 patent. For example, Hitchcock discloses a portable automated bank teller machine. This machine used a simple form based operating system and forms to permit a user to easily access his bank accounts and send bill payments using a standard telephone line. Hitchcock s portable automated bank teller machine was a single purpose device that did not contain a conventional operating system. Rather

16 it used a simple form-based graphical user interface to allow a user to connect to remote server to send and receive data transactions. Similarly, Kawan describes a form based telephone-computer device that enables a user to access remote banking servers. The Kawan device does not use a conventional operating system, rather it uses device specific application programs that function as a form driven operating system to present forms and prompts to a user to create messages for transmission to remote servers. Hitchcock and Kawan were not before the Patent Office during examination of the 382 patent. Each of the prior art references cited herein, however, are relevant to the issued claims of the 382 patent. For example, each of the prior art references cited herein disclose a machine that utilize a non-conventional form driven operating system and forms to allow a user to send and receive data transactions to and from a remote server. Further, the prior art cited herein identifies and solves one of the problems allegedly solved by the alleged invention of the 382 patent: eliminating the use of a complicated conventional operating system, and instead using a simple form based operating system. Indeed, both Hitchcock and Kawan use a form-based operating system in lieu of a conventional operating system. Accordingly, each of the claim limitations of claims 1, 2, 4-8, 13, 14, 19 and 20 of the 382 patent are disclosed or taught by prior art cited herein, as demonstrated in Section VI below

17 VI. DETAILED EXPLANATION (37 C.F.R (b)) A. Claim 1 (Independent) As shown in detail in the claim chart below, Hitchcock discloses a portable automated teller machine that includes firmware that controls a microprocessor to create and receive data transactions. Further, Hitchcock does not disclose using a conventional operating system to run the portable automated teller machine. Thus Hitchcock discloses a form based operating system. Figures 7 and 11, reproduced in the chart below, provide examples of screen-forms: a menu (e.g. Fig. 7) that a user can navigate to be presented with a form (e.g. Fig. 11), both of which are displayed on the device and prompt a user to enter in information. Thus, the form driven operating system controls the microprocessor to accept data input using forms. The forms can be used to enter data indicating a desired transaction type, such as checking an account balance. Hitchcock discloses that the portable automated teller machine formats the inputted data into a data transaction for processing in at least the following ways: it encrypts the data, it transmits the data in a block format, and it supplies additional information such as action codes and machine identification numbers to be transmitted with the inputted data. The data sent to the host computer is processed, the host computer completes the intended transaction, and the host computer sends data back to the portable automated teller machine

18 Claim 1 1a. A data transaction assembly server (TAS), which controls a microprocessor to create and receive data transactions, Anticipation By Hitchcock Hitchcock discloses a portable automated teller machine in the form of a low-cost, pocket-size data terminal which can securely exchange information with a host bank computer via the telephone handset of any public or private telephone station. Abstract, 1:8-11, and 2:45-3:13. The Hitchcock machine is shown in its open position and shown coupled to a telephone handset in Figure 3 below. 4:6-14. The Hitchcock machine includes a single-chip integrated circuit carried by the housing has a processor and at least three memories cooperative to provide formbased screen displays. 2:64-67 and 5: The memory 50 is connected to the processor 34 [of the single-chip integrated circuit] as a read only memory (ROM) and contains the code that implements the several screen-forms to be described with which the processor 34 drives the display screen 36, as well as the code that configures the touchscreen 38 in formats that respectively conform to the several screen-forms to allow data and command entry. 5: [T]he portable automated banking machine is placed in its on-line mode for communication with the bank through its host computer, such as for account balance inquiries and electronic funds transfer between accounts, and among others, bill payments, and for valid MIN security authorization. Upon completion of one or more transactions, the 1 Emphasis added unless noted otherwise

19 1b. said TAS comprising a computer readable medium which stores therein a form driven operating system communication link is disconnected and the portable automated teller machine is again placed in its off-line mode. 3: Hitchcock discloses that the portable automated teller machine includes [a] single-chip integrated circuit carried by the housing [that] has a processor and at least three memories cooperative to provide form-based screen displays. 2: Hitchcock further explains that the device contains a first memory 50 [that] is resident in the single-chip integrated circuit 32. 5: The memory 50 is connected to the processor 34 [of the single-chip integrated circuit] as a read only memory (ROM) and contains the code that implements the several screen-forms to be described with which the processor 34 drives the display screen 36, as well as the code that configures the touchscreen 38 in formats that respectively conform to the several screen-forms to allow data and command entry. 5: The initial prompt screen is shown in FIG. 7 and requests the user to select a calculator function, an account inquiry, or a bill payment. 8: After entry of a valid PIN number, the screen of FIG. 11 is shown requesting selection of checking account, savings account or "other" banking service. 8: Fig. 7. Fig. 11. The memory 50 is connected to the processor 34 thereof as a read only memory (ROM), and the memory locations thereof contain the code that implements operation in an on-line mode and an off-line mode, both to be described, of the portable automated teller machine

20 of the invention, contain the code that implements the several screen-forms to be described with which the processor 34 drives the display screen 36, as well as the code that configures the touchscreen 38 in formats that respectively conform to the several screen-forms to allow data and command entry. 5: A third ROM memory 54 configured as masked ROM is resident in the single-chip integrated circuit 32 and operatively coupled to the microprocessor 34 thereof. The masked ROM 54 memory locations have stored therein the code that implements encrypted data transfer whenever the portable automated teller machine is selected for operation in its on-line mode. 6:1-6. 1c. which controls said microprocessor to accept input data of a desired transaction type using control data comprising at least one form presented to a user by said form driven operating system for eliciting data input of said desired transaction type from said user, Hitchcock explains that [t]he memory 50 is connected to the processor 34 [of the single-chip integrated circuit] as a read only memory (ROM) and contains the code that implements the several screen-forms to be described with which the processor 34 drives the display screen 36, as well as the code that configures the touchscreen 38 in formats that respectively conform to the several screen-forms to allow data and command entry. 5: Hitchcock further explains [a]fter entry of a valid PIN number, the screen of FIG. 11 is shown requesting selection of checking account, savings account or other banking service. 8:

21 Fig. 11. Hitchcock also discloses the portable automated teller machine of the present invention can also provide a bill payment function whenever the "bill payment" box of the FIG. 7 screen is activated. [U]pon selection of a prestored payee, the screen of FIG. 21 appears to provide entry of the amount to be paid. Upon data entry, the display is as shown in FIG. 22, where the amount entered and the name of the payee are shown. 9: d. said at least one form including at least one prompt customized to said desired transaction type, Fig. 21. [T]he screen of FIG. 11 is shown requesting selection of checking account, savings account or other banking service. 8: Fig. 11. Hitchcock also discloses the portable automated teller machine of the present invention can also provide a bill payment function whenever the "bill payment" box of the FIG. 7 screen is activated. [U]pon selection of a prestored payee, the screen of FIG. 21 appears to provide entry of the amount to be paid. Upon data entry, the

22 display is as shown in FIG. 22, where the amount entered and the name of the payee are shown. 9: e. said form driven operating system further formatting at least any data input by said user in response to said at least one prompt into a data transaction for processing, Fig. 21. Hitchcock explains that [f]or a given transaction data set-up is provided during operation in its off-line mode, and, based on a predetermined plurality of screen-forms displayed in a preselected sequence on the display screen where a user provides data and command set-up to effect an intended transaction. 7: The block of set-up data stored in the RAM 58 for that transaction includes the machine identification number (MIN), the selected account number, the personal identification number (PIN) of the user, an action code representative of the type of transaction selected, action data representative of any quantitive and other selections relative to the transaction selected, and a range check. 8: f. and which includes a form/menu memory which stores said at least one form. Fig. 6 (partial). Hitchcock explains that [t]he memory 50 is connected to the processor 34 [of the single-chip integrated circuit] as a read only memory (ROM) and contains the code that implements the several screen-forms to be described with which the processor 34 drives the display screen 36, as well as the code that configures the

23 touchscreen 38 in formats that respectively conform to the several screen-forms to allow data and command entry. 5: Kawan discloses a data transaction assembly server embodied in a remotely reconfigurable user terminal in the form of a telephone-computer specifically designed for use in connection with a distributed data processing system. The telephone-computer includes a microprocessor and runs application programs implemented using the Home Access Language (HAL) software language, which meets the form driven operating system limitation as it includes a firmware HAL interpreter stored in ROM and HAL pages/forms downloaded and stored in RAM. In lieu of using a conventional operating system, Kawan describes using HAL software as its operating system. HAL uses forms along with the firmware to control the microprocessor. Kawan discloses forms in that application programs are formatted in logic pages, where each page includes screens to be displayed on the LCD and is associated with specific operations described on the screen. Kawan further explains that the application program pages supply the telephone-computer with sufficient prompts to elicit from the user whatever information--user codes, desired transactions, and the like--is required to access one of a plurality of service computers to which the network host computer is connected

24 Kawan describes, as an example of a data transaction, a scenario where a user desires to access the service computer of particular bank. A user launches the banking application, which then prompts the user for information, and allows the user to access banking services. Generally, the data is formatted into a first protocol by the telephone-computer and sent to a network host computer. Kawan discloses a form/menu memory in that the telephone-computer includes memory associated with the microprocessor. Kawan further discloses that the microprocessor and a programmable gate array are connected to RAM, which is normally used to store application programs (HAL software) downloaded from the remote host computer. Kawan further explains that pages of HAL application software can be downloaded from a network host computer and stored in the telephone-computer s RAM or EPROM. Claim 1 1a. A data transaction assembly server (TAS), which controls a microprocessor to create and receive data transactions, Anticipation By Kawan Kawan discloses a remotely reconfigurable user terminal in the form of a telephone-computer specifically designed for use in connection with a distributed data processing system. More particularly, this invention relates to a user terminal intended for use at the home of a bank customer to allow the customer access to the bank's database and operating software, as well as to access other remote data bases and the like. 1:22-29, Fig. 1 (shown below)

25 1b. said TAS comprising a computer readable medium which stores therein a form driven operating system The telephone-computer of the present invention includes a primary microprocessor and associated memory, and is designed to have a simplified user interface. 9: The application program written in HAL is compiled into pseudo-code on a mainframe computer and is translated into an executable format by a HAL interpreter incorporated in the 256K byte ROM. 6:66-7:3. The HAL software is thus functionally comparable to IBM's Disk Operating System (DOS) software. 13:6-7. The application program, when incorporated in the primary microprocessor, permits it to receive input from the keyboard microprocessor and the modem and to perform certain programmed functions as explained below. More specifically, the program pages supply the telephone-computer with sufficient prompts to elicit from the user whatever information--user codes, desired transactions, and the like--is required to access one of a plurality of service computers to which the network host computer is connected by conventional telephone lines. 7: c. which controls said microprocessor to Kawan discloses that the HAL interpreter [is] incorporated in the 256K byte ROM (7:2-3) and that [t]he microprocessor 30 and the programmable gate array 32 are connected as well to a main memory 36 which comprises random access memory (RAM) 36 as is conventional in the art. Up to 2 megabytes of memory are typically provided. The random access memory 36 will normally be used to store application programs downloaded from a remote host, but also stores reconfiguration code when first received, prior to its being copied into the FLASH-EPROM : One application program usable on the primary microprocessor is implemented using a software

26 accept input data of a desired transaction type using control data comprising at least one form presented to a user by said form driven operating system for eliciting data input of said desired transaction type from said user, 1d. said at least one form including at least one prompt customized to said desired transaction type, language designated Home Access Language (HAL). The application program is formatted in logic pages. A page includes screens to be displayed on the LCD display and logic associated with specific operations described on the screens The application program, when incorporated in the primary microprocessor, permits it to receive input from the keyboard microprocessor and the modem and to perform certain programmed functions as explained below. More specifically, the program pages supply the telephone-computer with sufficient prompts to elicit from the user whatever information--user codes, desired transactions, and the like--is required to access one of a plurality of service computers to which the network host computer is connected by conventional telephone lines. 6:57-7:17. The home telephone-computer will in turn operate using this program and will ask the user various questions required to prompt the user to input the information needed to access his account at the bank - -for example, his account number, his secret access code, the type of transaction desired, the amount of deposit, withdrawal, or transfer required, and so on. 17:58-18:3. Kawan discloses the program pages supply the telephone-computer with sufficient prompts to elicit from the user whatever information--user codes, desired transactions, and the like--is required to access one of a plurality of service computers to which the network host computer is connected by conventional telephone lines. 6:57-7:17. Kawan explains that [t]he home telephone-computer will in turn operate using this program and will ask the user various questions required to prompt the user to input the information needed to access his account at the bank --for example, his account number, his secret access code, the type of transaction desired, the amount of deposit, withdrawal, or transfer required, and so on. 17:58-18:

27 1e. said form driven operating system further formatting at least any data input by said user in response to said at least one prompt into a data transaction for processing, Kawan describes [t]he telephone-computer communicates with the network host computer via a message having a first protocol. The network host computer transforms this information into whatever second protocol is conventionally required to communicate with the service computer. 7:12-17 ; see also 17:64-18:3. Kawan states that: After a communication session has thus been established, a link level protocol, is employed between the home computer and the session controller. In the link level protocol, all communications between the home telephone-computer 2 (or a conventional microcomputer, if used) and the network host computer 68 are formatted into information packets called messages. FIG. 17 shows the basic format of the message 130. This message format is used for the majority of the messages sent between the network host and telephone-computer 2 or computer. [ ] Each message 130 begins with a one-byte start of text (STX) delimiter 132 which consists of the fixed AsCII code "2". The next field of the message, the message text field 134, can contain up to 256 bytes of transaction information. It is within this message text field 134 that the actual transaction information is transferred. The message text field 134 can also contain information concerning the status of the message. 20:

28 Fig f. and which includes a form/menu memory which stores said at least one form. The telephone-computer of the present invention includes a primary microprocessor and associated memory, and is designed to have a simplified user interface. 9: The microprocessor 30 and the programmable gate array 32 are connected as well to a main memory 36 which comprises random access memory (RAM) 36 as is conventional in the art. Up to 2 megabytes of memory are typically provided. The random access memory 36 will normally be used to store application programs downloaded from a remote host. 11: The HAL software is downloaded in pages from a network host computer in response to the user's indication that a particular service is to be accessed after which the network host 68 downloads the appropriate page of HAL software necessary to prompt the user to input his user code and the like. The HAL software when received by the telephonecomputer is stored in random access memory (RAM) 36 and normally is run immediately. Certain commonly used pages of HAL application software may also be stored by the telephone-computer, typically in FLASH-EPROM :48-13:7. B. Claim 2 (Dependent) One of skill in the art would be motivated to combine Hitchcock and Kawan because both references are in the same field of art. Exh. 1007, M. Frappier Declaration at 11. In particular, both Hitchcock and Kawan are directed to small consumer electronics devices that can be used by a consumer to access remote banking servers and obtain information such as bank account information. Id. Further, one of ordinary skill in the art would be motivated to combine Hitchcock

29 with Bealkowski because the form driven operating system of Hitchcock is comprised of firmware in ROM and Bealkowski teaches that it is advantageous to easily modify firmware by using flash PROM in lieu of ROM. Bealkowski at 3:56:64; Exh. 1007, M. Frappier Decl. at 19. Claim 2 2a. A TAS as in claim 1, wherein 2b. said computer readable medium comprises a flash PROM which stores said form driven operating system 2c. and said form/menu memory comprises a RAM. Hitchcock in view of Kawan and Bealkowski Hitchcock meets the elements of claim 1 as described above. Hitchcock discloses the memory 50 is connected to the processor 34 [of the single-chip integrated circuit] as a read only memory (ROM) and contains the code that implements the several screen-forms to be described with which the processor 34 drives the display screen 36, as well as the code that configures the touchscreen 38 in formats that respectively conform to the several screen-forms to allow data and command entry. Hitchcock at 5: Bealkowski discloses [i]t is known to replace the ROM with an electrically erasable and reprogrammable (i.e., alterable) nonvolatile random access memory (e.g., Flash memory), and to store POST and/or BIOS therein. See, for example, the publication from Intel Corporation, entitled Memory Products 1991, Intel Order No , ISBN , and particularly Chapter 6 (Flash Memories, pgs. 6-1 through 6-420), which chapter is hereby incorporated by reference. This permits the firmware to be modified easily. Bealkowski at 3: Kawan explains that HAL software is downloaded in pages from a network host computer in response to the user's indication that a particular service is to be accessed after which the network host 68 downloads the appropriate page of HAL software necessary to prompt the user to input his user code and the like. The HAL software when received by the telephone-computer is stored in random access memory (RAM) 36 and normally is run immediately. Kawan at 12:

30 One of ordinary skill in the art would be motivated to combine Kawan with Bealkowski because it is advantageous to easily modify firmware by using flash PROM in lieu of ROM. Bealkowski at 3:56:64; Exh. 1007, M. Frappier Decl. at 19. Claim 2 2a. A TAS as in claim 1, wherein 2b. said computer readable medium comprises a flash PROM which stores said form driven operating system 2c. and said form/menu memory comprises a RAM. Kawan in view of Bealkowski Kawan meets the elements of claim 1 as described above. Kawan discloses the application program written in HAL is compiled into pseudo-code on a mainframe computer and is translated into an executable format by a HAL interpreter incorporated in the 256K byte ROM. Kawan at 6:66-7:3. Bealkowski discloses [i]t is known to replace the ROM with an electrically erasable and reprogrammable (i.e., alterable) nonvolatile random access memory (e.g., Flash memory), and to store POST and/or BIOS therein. See, for example, the publication from Intel Corporation, entitled Memory Products 1991, Intel Order No , ISBN , and particularly Chapter 6 (Flash Memories, pgs. 6-1 through 6-420), which chapter is hereby incorporated by reference. This permits the firmware to be modified easily. Bealkowski at 3: Kawan explains that HAL software is downloaded in pages from a network host computer in response to the user's indication that a particular service is to be accessed after which the network host 68 downloads the appropriate page of HAL software necessary to prompt the user to input his user code and the like. The HAL software when received by the telephone-computer is stored in random access memory (RAM) 36 and normally is run immediately. Kawan at 12:

31 As shown in the chart below, Kawan discloses some of its pages/forms being stored in ROM and some in RAM. Kawan also discloses the pages including some logic, therefore the pages comprise a portion of the form driven operating system. Claim 2 2a. A TAS as in claim 1, wherein 2b. said computer readable medium comprises a flash PROM which stores said form driven operating system 2c. and said form/menu memory comprises a RAM. Anticipation by Kawan Kawan meets the elements of claim 1 as described above. Kawan discloses [o]ne application program usable on the primary microprocessor is implemented using a software language designated Home Access Language (HAL). The application program is formatted in logic pages. A page includes screens to be displayed on the LCD display and logic associated with specific operations described on the screens. 6: Kawan further discloses [c]ertain commonly used pages of HAL application software may also be stored by the telephone-computer, typically in FLASH-EPROM 34, in order to reduce the number of communications required to access the network host where this would appear useful. 12: Kawan explains that HAL software is downloaded in pages from a network host computer in response to the user's indication that a particular service is to be accessed after which the network host 68 downloads the appropriate page of HAL software necessary to prompt the user to input his user code and the like. The HAL software when received by the telephone-computer is stored in random access memory (RAM) 36 and normally is run immediately. 12: C. Claim 4 (Dependent) Hitchcock discloses that data is entered into the device during off-line mode and stored in the device s random access memory (RAM) until the user initiates the on-line mode wherein data previously entered in the off-line mode

32 is transmitted to and data is received back from the host bank computer in an encrypted format, which further enhances transmission security. Hitchcock at 3: Claim 4 4a. A TAS as in claim 1, further comprising 4b. a transaction buffer which stores at least one data transaction to be transmitted until said at least one data transaction is ready for transmission Anticipation by Hitchcock Hitchcock meets the elements of claim 1 as described above. Hitchcock discloses the RAM 58 provides the memory locations where the transaction data is temporarily stored during set-up in the off-line mode, and where data is transferred blockwise to the host computer during operation in the on-line mode. The memory 58 memory locations also receive any data supplied in response back from the host computer which data is representative of status of the transaction transacted by the individual user. 6: "The protocol of communication between the portable terminal and a remote computer illustrating the off-line and on-line operational modes of the portable automated teller machine of the instant invention is shown at 80 in FIG. 6. For a given transaction, as shown by a block 80, data set-up is provided during operation in its off-line mode, and, based on a predetermined plurality of screenforms displayed in a preselected sequence on the display screen in a manner to be described, a user provides data and command set-up to effect an intended transaction." 7: Fig. 6. (partial)

33 4c. and which stores at least one received data transaction until said at least one received data transaction is ready for processing. As shown by a block 86, the data set-up in memory during operation in the off-line mode is transmitted blockwise to the bank host computer via the modem over the telephone communication link. The block of set-up data stored in the RAM 58 for that transaction includes the machine identification number (MIN), the selected account number, the personal identification number (PIN) of the user, an action code representative of the type of transaction selected, action data representative of any quantitive and other elections relative to the transaction selected, and a range check. 7:68-8:14. Hitchcock discloses the RAM 58 provides the memory locations where the transaction data is temporarily stored during set-up in the off-line mode, and where data is transferred blockwise to the host computer during operation in the on-line mode. The memory 58 memory locations also receive any data supplied in response back from the host computer which data is representative of status of the transaction transacted by the individual user. 6: The data previously entered in the off-line mode is transmitted to and data is received back from the host bank computer in an encrypted format, which further enhances transmission security. 3: To the extent Kawan does not explicitly disclose a transaction buffer, it was well known to one of skill in the art at the time of the invention that Kawan inherently discloses a transaction assembly server (terminal) which includes a transaction buffer that stores at least one data transaction to be transmitted and which stores at least one received data transaction. Exh. 1007, M. Frappier Decl. at 13. As shown in the claim chart below, Kawan discloses a basic format for the message as shown in Fig. 17, and further discloses a particular format used with

34 the message field as shown in Fig.21. It is inherent that a buffer in RAM 36 must exist to hold a message exhibiting these particular formats and fields. Id. at Claim 4 4a. A TAS as in claim 1, further comprising 4b. a transaction buffer which stores at least one data transaction to be transmitted until said at least one data transaction is ready for transmission and which stores at least one received data transaction until said at least one received data transaction is ready for processing. Anticipation by Kawan Kawan meets the elements of claim 1 as described above. Kawan discloses After a communication session has thus been established, a link level protocol, is employed between the home computer and the session controller. In the link level protocol, all communications between the home telephone-computer 2 (or a conventional microcomputer, if used) and the network host computer 68 are formatted into information packets called messages. FIG. 17 shows the basic format of the message 130. This message format is used for the majority of the messages sent between the network host and telephone-computer 2 or computer. Each message 130 begins with a one-byte start of text (STX) delimiter 132 which consists of the fixed ASCII code 2. The next field of the message, the message text field 134, can contain up to 256 bytes of transaction information. It is within this message text field 134 that the actual transaction information is transferred. 20: Kawan further discloses FIGS. 21 and 22 illustrate, the different formats used within the message text field 134 with respect to conventional transaction messages and page downloading messages, respectively. As shown in FIG. 21, the transaction message includes a transaction type code field 162. All transaction type codes are three characters in length

35 The subsequent message elements 162, 164, 168, 160 are identified by their positions in the text field rather than by element ID fields. More particularly, as shown in FIG. 21, the message text field 134 includes at least four sub-fields when used for sending transaction message text. The first field of the message text field 134 is a transaction type code 162, which is normally numeric. This is followed by one or more groups of three fields. Each group of three fields includes an element identification field 164, an element length field 168 and the actual element data field :46-25:9. Fig. 21. To the extent it is not inherent that Kawan discloses a transaction buffer, it would be obvious to one of skill in the art to combine Hitchcock and Kawan to render claim 4 obvious. One of skill in the art would be motivated to combine Hitchcock and Kawan because both references are in the same field of art. Exh. 1007, M. Frappier Decl. at 11. In particular, both Hitchcock and Kawan are directed to small electronic devices that can be used by a consumer to access remote servers and obtain information such as bank account information. Id. Claim 4 4a. A TAS as in claim 1, further comprising 4b. a transaction buffer which stores at least one data Kawan in view of Hitchcock Kawan meets the elements of claim 1 as described above. Hitchcock discloses the RAM 58 provides the memory locations where the transaction data is temporarily stored during set-up in the off-line mode, and where data is

36 transaction to be transmitted until said at least one data transaction is ready for transmission 4c. and which stores at least one received data transaction until said at least one received data transaction is ready for processing. transferred blockwise to the host computer during operation in the on-line mode. The memory 58 memory locations also receive any data supplied in response back from the host computer which data is representative of status of the transaction transacted by the individual user. Hitchcock at 6: Hitchcock discloses the memory 58 memory locations also receive any data supplied in response back from the host computer which data is representative of status of the transaction transacted by the individual user. Hitchcock at 6: Hitchcock further discloses the data previously entered in the off-line mode is transmitted to and data is received back from the host bank computer in an encrypted format, which further enhances transmission security. Hitchcock at 3: D. Claim 5 (Dependent) Hitchcock discloses that the microprocessor fetches a menu from memory, wherein the menu lists multiple forms and permits a user to navigate to one form that is stored in memory. For example, the microprocessor displays an initial prompt screen (menu) as shown in Figure 7 that requests the user to select a calculator function, an account inquiry, or a bill payment. 8: This menu lists all of the available functions (via forms) available for the user to navigate to. Hitchcock discloses that once a user makes a selection on the menu of Figure 7, a screen form requesting a PIN is displayed a shown in Fig. 9. 8: Thus, Hitchcock discloses fetching the form requested by the user from memory. Claim 5 Anticipation By Hitchcock 5a. A TAS as in claim 4, Hitchcock meets the elements of claim 4 as described

37 wherein 5b. said control data controls said microprocessor to fetch a menu from said form/menu memory for navigating to said at least one form, said menu listing certain forms of all available forms which are resident in said form/menu memory or which may be downloaded from a remote server to said form/menu memory upon user selection, 5c. and to fetch a form selected from said menu by said user. above. The initial prompt screen is shown in FIG. 7 and requests the user to select a calculator function, an account inquiry, or a bill payment. 8: Fig. 7. Upon selection to the display by touching the same of the account inquiry option the displayed 45 question mark is replaced by a check mark as shown in FIG. 8, following which the prompt screen of FIG. 9 is displayed, requesting entry of a PIN. In these and subsequent screen displays the home prompt can be actuated to return to the initial prompt screen of FIG. 7. Entry is accomplished via the touch sensitive keypad displayed on the screen. 8: Fig. 9. Kawan discloses that the microprocessor fetches a menu from memory, wherein the menu lists multiple forms and permits a user to navigate to one form that is stored in memory. In the example shown in the charts below, the form is

38 downloaded to form/menu memory from a remote server, and the form is then fetched from memory for the user to navigate. Claim 5 5a. A TAS as in claim 4, wherein 5b. said control data controls said microprocessor to fetch a menu from said form/menu memory for navigating to said at least one form, said menu listing certain forms of all available forms which are resident in said form/menu memory or which may be downloaded from a remote server to said form/menu memory upon user selection, and to fetch a form selected from said menu by said user. Claim 5 5a. A TAS as in claim 4, wherein 5b. said control data controls said microprocessor to fetch a menu from said form/menu memory for navigating to said at least one form, said menu listing certain forms of all available forms which are resident in said form/menu memory or Anticipation by Kawan Kawan meets the elements of claim 4 as described above. Kawan describes a scenario where the user desires to access the service computer 80a of a particular bank A. When he activates his home telephone-computer 2, there will appear on a display screen 4 a menu allowing him to select Access Bank Services by pressing, for example, the 3 button on the keypad 3. If he does so, the telephone-computer 2 will send a message to the network host computer 68. This will in turn consult its internal memory to locate the application program required to access the service computer 80a of bank A and will download this to the home telephone-computer 2. The home telephonecomputer will in turn operate using this program and will ask the user various questions required to prompt the user to input the information needed to access his account at the bank --for example, his account number, his secret access code, the type of transaction desired, the amount of deposit, withdrawal, or transfer required, and so on. Kawan at 17: Kawan in view of Hitchcock Kawan in view of Hitchcock meets the elements of claim 4 as described above. Kawan describes a scenario where the user desires to access the service computer 80a of a particular bank A. When he activates his home telephone-computer 2, there will appear on a display screen 4 a menu allowing him to select Access Bank Services by pressing, for example, the 3 button on the keypad 3. If he does so, the telephone-computer 2 will send a message to the network host computer 68. This will in turn consult its internal memory to locate the application program required to access the service computer 80a of bank A and will download this to the

39 which may be downloaded from a remote server to said form/menu memory upon user selection, and to fetch a form selected from said menu by said user. home telephone-computer 2. The home telephonecomputer will in turn operate using this program and will ask the user various questions required to prompt the user to input the information needed to access his account at the bank --for example, his account number, his secret access code, the type of transaction desired, the amount of deposit, withdrawal, or transfer required, and so on. Kawan at 17: E. Claim 6 (Dependent) Claim 6 6a. A TAS as in claim 5, wherein 6b. said control data further controls said microprocessor to process said selected form by initializing said transaction buffer to accept said data input of said desired transaction type in response to prompts in said selected form and, upon completion of a data transaction including responses to said prompts in said selected form, saving said data transaction to said transaction buffer until said data transaction is to be transmitted. Anticipation By Hitchcock Hitchcock meets the elements of claim 5 as described above. Hitchcock discloses a first memory 50 is resident in the single-chip integrated circuit 32. The memory 50 is connected to the processor 34 thereof as a read only memory (ROM), and the memory locations thereof contain the code that implements operation in an on-line mode and an off-line mode, both to be described, of the portable automated teller machine of the invention, contain the code that implements the several screen-forms to be described with which the processor 34 drives the display screen 36, as well as the code that configures the touchscreen 38 in formats that respectively conform to the several screen-forms to allow data and command entry. 5: Hitchcock discloses RAM 58 provides the memory locations where the transaction data is temporarily stored during set-up in the off-line mode. 6: Hitchcock discloses the protocol of communication between the portable terminal and a remote computer illustrating the off-line and on-line operational modes of the portable automated teller machine of the instant invention is shown at 80 in FIG. 6. For a given transaction, as shown by a block 80, data set-up is provided during operation in its off-line mode, and, based on a predetermined plurality of screen-forms displayed in a

40 preselected sequence on the display screen in a manner to be described, a user provides data and command set-up to effect an intended transaction. 7: Hitchcock discloses [a]s shown by a block 86, the data set-up in memory during operation in the off-line mode is transmitted blockwise to the bank host computer via the modem over the telephone communication link. The block of set-up data stored in the RAM 58 for that transaction includes the machine identification number (MIN), the selected account number, the personal identification number (PIN) of the user, an action code representative of the type of transaction selected, action data representative of any quantitive and other elections relative to the transaction selected, and a range check. 7:68-8:14. As described above with respect to claim 4, Kawan discloses a transaction buffer as the messages must take the format as shown in Figures 17 and 21. Exh. 1007, M. Frappier Decl. at Similarly, it was well known to one of skill in the art at the time of the invention for the transaction buffer to initalize by forming the fields as shown in Figures 17 and 21. Id. Claim 6 6a. A TAS as in claim 5, wherein 6b. said control data further controls said microprocessor to process said selected form by initializing said transaction buffer to accept said data input of Anticipation by Kawan Kawan meets the elements of claim 5 as described above. Kawan discloses [a]fter a communication session has thus been established, a link level protocol, is employed between the home computer and the session controller. In the link level protocol, all communications between the home telephonecomputer 2 (or a conventional microcomputer, if used) and the network host computer 68 are formatted into information packets called messages. FIG. 17 shows the basic format of the message 130. This message format is used for the majority of the messages sent between the network host and telephonecomputer 2 or computer. Each message 130 begins with a

41 said desired transaction type in response to prompts in said selected form and, upon completion of a data transaction including responses to said prompts in said selected form, saving said data transaction to said transaction buffer until said data transaction is to be transmitted. one-byte start of text (STX) delimiter 132 which consists of the fixed ASCII code 2. The next field of the message, the message text field 134, can contain up to 256 bytes of transaction information. It is within this message text field 134 that the actual transaction information is transferred. 20: Kawan further discloses FIGS. 21 and 22 illustrate, the different formats used within the message text field 134 with respect to conventional transaction messages and page downloading messages, respectively. As shown in FIG. 21, the transaction message includes a transaction type code field 162. All transaction type codes are three characters in length. The subsequent message elements 162, 164, 168, 160 are identified by their positions in the text field rather than by element ID fields. More particularly, as shown in FIG. 21, the message text field 134 includes at least four sub-fields when used for sending transaction message text. The first field of the message text field 134 is a transaction type code 162, which is normally numeric. This is followed by one or more groups of three fields. Each group of three fields includes an element identification field 164, an element length field 168 and the actual element data field 160. For example, when the service computer 80a-d selected requires a user identification number, and a request to this effect has been sent to the home telephone-computer 2 by the network host computer 8, the home telephone-computer generates a message including a code in the element ID field 164 indicating that the subsequent element data field 160 includes the user identification number. The element length field 168 then simply includes the actual length in bits of the data element 160. Additional data, such as the user account number, can be included in the same message; again, the account number would be located in an element data field 160, and would be preceded by an element ID indicating that the

42 subsequent data field includes the account number, and an element length field :46-25:9. Claim 6 6a. A TAS as in claim 5, wherein 6b. said control data further controls said microprocessor to process said selected form by initializing said transaction buffer to accept said data input of said desired transaction type in response to prompts in said selected form and, upon completion of a data transaction including responses to said prompts in said selected form, saving said data transaction to said transaction buffer until said data transaction is to be Fig. 21. Kawan in view of Hitchcock Kawan in view of Hitchcock meets the elements of claim 5 as described above. Kawan discloses After a communication session has thus been established, a link level protocol, is employed between the home computer and the session controller. In the link level protocol, all communications between the home telephonecomputer 2 (or a conventional microcomputer, if used) and the network host computer 68 are formatted into information packets called messages. FIG. 17 shows the basic format of the message 130. This message format is used for the majority of the messages sent between the network host and telephonecomputer 2 or computer. Each message 130 begins with a one-byte start of text (STX) delimiter 132 which consists of the fixed AsCII code 2. The next field of the message, the message text field 134, can contain up to 256 bytes of transaction information. It is within this message text field 134 that the actual transaction information is transferred. 20: Kawan further discloses FIGS. 21 and 22 illustrate, the different formats used within the message text field 134 with respect to conventional transaction messages and page downloading messages, respectively. As shown in FIG. 21, the transaction message includes a transaction type code field 162. All transaction type codes are three characters in length. The

43 transmitted. subsequent message elements 162, 164, 168, 160 are identified by their positions in the text field rather than by element ID fields. More particularly, as shown in FIG. 21, the message text field 134 includes at least four sub-fields when used for sending transaction message text. The first field of the message text field 134 is a transaction type code 162, which is normally numeric. This is followed by one or more groups of three fields. Each group of three fields includes an element identification field 164, an element length field 168 and the actual element data field :46-25:9. Fig. 21. F. Claim 7 (Dependent) Hitchcock discloses that the microprocessor permits the user to navigate through the prompts of the form. For example, the user can navigate through the various prompts shown in Figure 11 (below) by requesting selection of checking account, savings account or other banking service. Claim 7 7a. A TAS as in claim 6, wherein 7b. said control data controls said microprocessor to navigate said user through respective prompts of said selected form and Anticipation By Hitchcock Hitchcock meets the elements of claim 6 as described above. Hitchcock discloses a typical operating sequence where the initial prompt screen is shown in FIG. 7 and requests the user to select a calculator function, an account inquiry, or a bill payment. Upon selection to the display by touching the same of the account inquiry option the displayed question mark is replaced by a check mark as shown in FIG. 8, following which the prompt screen of FIG. 9 is displayed, requesting entry of a PIN.... After entry of a valid PIN number, the screen of FIG. 11 is shown requesting selection of checking account, savings account or other banking service. Upon

44 selection of the checking account, for example, the screen display of FIG. 12 is shown, and the screen of FIG. 13 then appears. 8:36-9:8. Fig. 11. The portable automated teller machine of the present invention can also provide a bill payment function whenever the bill payment box of the FIG. 7 screen is activated. The screen of FIGS. 8, 9 and 10 are then displayed in sequence to confirm PIN authority. Upon selection of the bill payment function and valid PIN entry, the screen of FIG. 19 is shown, which indicates the prestored payees which can be selected, or other category by which additional payees can be entered. As shown by the screen of FIG. 20, upon selection of a prestored payee, the screen of FIG. 21 appears to provide entry of the amount to be paid. Upon data entry, the display is as shown in FIG. 22, where the amount entered and the name of the payee are shown. 9: c. to transmit said data transaction to said remote server for processing upon completion of at least one said data transaction. Fig. 21. Hitchcock discloses the RAM 58 provides the memory locations where the transaction data is temporarily stored during set-up in the off-line mode, and where data is transferred blockwise to the host computer during operation in the on-line mode. 6: As shown by blocks 72, 74, in the on-line mode, the processor transmits via modem 48 (FIG. 4) the block of transaction data stored in the RAM 58 during operation in its off-line mode to the host bank computer over the public

45 telephone network, and receives back from the host bank computer data representative of the completed transaction and stores it back in the RAM 58 (FIG. 4). 7: Kawan discloses that the microprocessor permits the user to navigate through the prompts of the form. For example, Kawan discloses forms that include multiple prompts customized to a desired transaction type. Thus, to access the input forms, the program navigates the user through the multiple prompts. Kawan further discloses transmitting a data transaction to a remote server after navigating through the form s prompts. Claim 7 7a. A TAS as in claim 6, wherein 7b. said control data controls said microprocessor to navigate said user through respective prompts of said selected form and 7c. to transmit said data transaction to said remote server for processing upon completion of at least one said data transaction. Anticipation by Kawan Kawan meets the elements of claim 6 as described above. Kawan discloses the program pages supply the telephone-computer with sufficient prompts to elicit from the user whatever information--user codes, desired transactions, and the like--is required to access one of a plurality of service computers to which the network host computer is connected by conventional telephone lines. 6:57-7:17. Kawan discloses the home telephone-computer will in turn operate using this program and will ask the user various questions required to prompt the user to input the information needed to access his account at the bank --for example, his account number, his secret access code, the type of transaction desired, the amount of deposit, withdrawal, or transfer required, and so on. This information is then transferred from the home telephone-computer 2 to the network host computer 68 in a message having a first protocol. The network host computer transforms this information into whatever second protocol is conventionally required to communicate with the service computer 80a, for example, in the precise manner according to which automatic

46 teller machines communicate with it. 17:58-18:3. Claim 7 7a. A TAS as in claim 6, wherein 7b. said control data controls said microprocessor to navigate said user through respective prompts of said selected form and 7c. to transmit said data transaction to said remote server for processing upon completion of at least one said data transaction. Kawan in view of Hitchcock Kawan in view of Hitchcock meets the elements of claim 6 as described above. Kawan discloses the program pages supply the telephone-computer with sufficient prompts to elicit from the user whatever information--user codes, desired transactions, and the like--is required to access one of a plurality of service computers to which the network host computer is connected by conventional telephone lines. 6:57-7:17. Kawan discloses the home telephone-computer will in turn operate using this program and will ask the user various questions required to prompt the user to input the information needed to access his account at the bank --for example, his account number, his secret access code, the type of transaction desired, the amount of deposit, withdrawal, or transfer required, and so on. This information is then transferred from the home telephone-computer 2 to the network host computer 68 in a message having a first protocol. The network host computer transforms this information into whatever second protocol is conventionally required to communicate with the service computer 80a, for example, in the precise manner according to which automatic teller machines communicate with it. 17:58-18:3. Kawan further discloses [e]ach message 130 begins with a one-byte start of text (STX) delimiter 132 which consists of the fixed AsCII code 2. The next field of the message, the message text field 134, can contain up to 256 bytes of transaction information. It is within this message text field 134 that the actual transaction information is transferred. The message text field 134 can also contain information concerning the status of the message. 20:

47 G. Claim 8 (Dependent) Caruso is directed to a method and apparatus for contolling the work flow in a multi-user computing system. Caruso discloses a user indicating that the information requested (activities that the user has access to) is unknown by entering the Browser Mode. Caruso runs user interface code on a client computer, and uses stored procedures and a database that are located on a server. A request to run a stored procedure is sent from the user s workstation to the database server. The information requested by the user (activities to which the user has access) is received by the client computer and displayed in a list for user selection of which activity(ies) they would like to add to their activity list. One of ordinary skill in the art would be motivated to combine Hitchcock or Kawan with Caruso because Caruso describes improvements in automatically routing information through a predefined sequence of activities to users who need the information. Caruso at 3: This would be advantageous to a user of the Hitchcock or Kawan systems because the forms of Hitchcock and Kawan are a predefined sequence and the user may request unknown information from a remote server. Exh. 1007, M. Frappier Decl. at 22. Claim 8 8a. A TAS as in claim 7, wherein 8b. said control data controls said microprocessor to Hitchcock in view of Caruso Hitchcock meets the elements of claim 7 as described above. Caruso discloses the computer system 100 of the present invention is preferably implemented on a client/server network 100 as shown in FIG. 1. The client/server network

48 cause an inquiry data transaction to be created in response to predetermined data inputs from said user indicating that the information requested by a particular prompt is unknown, to cause said inquiry data transaction to be transmitted to said remote server for retrieval of the information requested by said particular prompt, and, includes a server 110, such as an HP/UX, Data General DG- UX, Microsoft NT, IBM RS/6000, or an OS/2 server, connected to a plurality of clients 120, also known as enduser workstations. Caruso at 9: Referring to FIG. 1, application programs are created using PowerBuilder code (application development software available from Powersoft, of Burlington, Mass.) and are stored on the client side 120 of the client/server network 100. Tables and stored procedures are created using SQL (Structured Query Language) code and are stored on the server side 110. Caruso at 13: Referring to FIG. 16C, the user may add activities to an activity list by accessing, the Browser mode. The Browser mode window 310 reveals all folders 1670 and the activity lists 1680 or To Do Lists (not shown) contained within the folders 1670 for a particular drawer 305 of the user. The user may then select an activity list 1680 in which to add activities. Caruso at 14:64-15:3. A user may add activities to an activity list by selecting, for example, the "Activities I do a lot" list 1680 in which to add one or more activities. Next, referring to FIG. 16D, the user selects the Browser list window 382 and chooses the Customize Activity List command from the Browser list window 382. Caruso at 15:9-14. Fig. 16D

49 8c. if the information requested by said particular prompt is found and returned by said remote server, to cause said requested information to be stored in said transaction buffer as a response to said particular prompt or to be displayed to the user for menu selection. Referring to FIG. 16E, in response to the above actions of the user, the main application program displays a list of activities that the user may access in a Customize Activity List window 383. (The access is preferably based on security privileges predefined by an administrator of the system which is discussed further below). In determining which activities the user may access, the main application program sends the user's identifier (USER-- ID) to a stored procedure. In one embodiment, the name of the stored procedure is psp-- sel-- avail-- user-- acts-- 1. This stored procedure then accesses the USER-- SECURITY table 1125 (see FIG. 11) to determine which user specific activities, represented as activity identifiers (ACTIVITY-- Ids), the user has security privileges. Caruso at 15: Caruso discloses [n]ext, the stored procedure accesses the USER-- MASTER table 1110 (see FIG. 11) to obtain group security identifiers (SEC-- GROUP-- Ids) associated with the user's USER-- ID. The stored procedure then accesses the GROUP-- SECURITY table 1155 (see FIG. 11) to determine which activities (ACTIVITY-- Ids) the user, as a member of a group of users (work group), may access. Next, the stored procedure accesses the ACTIVITY-- MASTER table 1210 (see FIG. 12) and uses the ACTIVITY-- Ids to obtain a description of each activity (ACTIVITY-- DESC) that the user may access. Finally, the stored procedure sends the ACTIVITY-- Ids and each activity's corresponding activity description (ACTIVITY-- DESC) back to the main application program at the client. Caruso at 15: The main application program then displays each of the activities 1690 in the Customized Activity List window 383. The user may then decide which activities he or she will choose to put in an activity list by selecting specific activities from the display. In this way, a list may be created, where the list may include user specific and/or work group specific activities. Caruso at 15:

50 Fig. 16E. Claim 8 Kawan in view of Caruso 8a. A TAS as in claim 7, wherein Kawan meets the elements of claim 7 as described above. 8b. said control data controls said See claim 8b. microprocessor to cause an inquiry data transaction to be created in response to predetermined data inputs from said user indicating that the information requested by a particular prompt is unknown, to cause said inquiry data transaction to be transmitted to said remote server for retrieval of the information requested by said particular prompt, and, 8c. if the information requested by said particular See claim 8c. prompt is found and returned by said remote server, to cause said requested information to be stored in said transaction buffer as a response to said particular prompt or to be displayed to the user for menu selection. Claim 8 Kawan in view of Hitchcock and Caruso 8a. A TAS as in claim 7, wherein Kawan in view of Hitchcock meets the elements of claim 7 8b. said control data controls said microprocessor to cause an inquiry data transaction to be created in response to predetermined data inputs from said user indicating that the information requested by a particular prompt is unknown, to cause said inquiry data transaction to be transmitted to said remote server for retrieval of the information as described above. See claim 8b.