Ex Parte Allgeier et al

Board of Patent Appeals and Interferences

Jun 28, 2001

07575096 (B.P.A.I. Jun. 28, 2001)

1 Application for patent filed August 30, 1990
1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID M. ALLGEIER, FLOYD JONES,
ROBERT L. PROTHEROE and JOHN F. CROOKS
_____________
Appeal No. 99-0890
Application 07/575,0961
______________
ON BRIEF
_______________
Before FLEMING, HAIRSTON and DIXON, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 17, 19-24, 26, 27, 53-60, 70-123, all of the claims
pending in the present application. Claims 1-16, 18, 25 28-52,
and 61-69 have been canceled.
Appeal No. 1999-0890
Application 07/575,096
2
The invention relates to a method and system for processing
signature-based payment transactions in which merchant's records
of payment can be generated and maintained electronically without
generation of paper records, while providing paper records to
customers (specification, page 1, lines 3-9). The system
includes a cashier-operated point of sale terminal (figure 5,
numeral 62) on which data relating to transactions for items can
be entered (specification, page 9, lines 33-34), and a card
reader (figure 5, numeral 32) for entry of customer account
information (figure 7A, numeral 88). A write input device
(figure 5, numeral 20) having a touch sensitive display screen
(figure 2, numeral 46), includes a digitizer (figure 5, numeral
26) for entry of handwritten transaction signature data
(specification, page 7, lines 16-25), and a display (figure 5,
numeral 48) for displaying the signature and business form
(specification, page 2, lines 7-12; page 7, lines 16-25).
A printer (figure 5, numeral 22) prints a receipt of the
transaction, including a description of the purchased items,
customer account information, and a representation of the
signature (figure 6). A storage medium (figure 5, numeral 64)
stores the signature data and receipt data for later retrieval
Appeal No. 1999-0890
Application 07/575,096
3
(specification, page 13, lines 33-35). Circuitry couples the
point of sale terminal to the digitizer, display, printer, card
reader and storage medium (figure 5).
Independent claim 17 is reproduced as follows:
17. A method for processing customer charge transactions in
an establishment using apparatus which includes a cashier-
operated point of sale (POS) terminal, a printer and a customer-
operated write input device having a touch-sensitive display
screen and a card reader, comprising the following steps:
(a) initiating the start of a transaction by the cashier;
(b) entering data concerning items of the transaction
including a last item into the POS terminal by the cashier;
(c) indicating entry of the last item of the transaction by
the cashier;
(d) entering customer account data by the cashier;
(e) displaying a business form which includes transaction
item data and customer account data on the touch-sensitive
display screen of the write input device;
(f) signing a signature by the customer on the touch-
sensitive display screen of the business form displayed there;
(g) communicating combined business form and signature
information to a storage medium for later retrieval; and
(h) printing at least a portion of the business form
displayed.
The Examiner relies on the following reference:
Dunkley et al (Dunkley) 4,752,965 Jun. 21, 1988
Johnston et al (Johnston) 4,814,760 Mar. 21, 1989
Iggulden et al (Iggulden) 4,918,723 Apr. 17, 1990
Appeal No. 1999-0890
Application 07/575,096
2The Brief was received June 28, 1996.
3The Supplemental Brief was received May 11, 2001.
4The Examiner's Answer was mailed March 3, 1998. Contrary
to the requirements of MPEP 1208 the Examiner incorporates in his
Answer (page 3, section 9) the statements of the grounds of
rejection by referencing two prior actions (paper numbers 27 and
23). As the final rejection (paper number 27) incorporates by
reference the rejections set forth in the preceding Office action
(paper number 23), and the basis of the Examiner's rejections are
clear, this case was not remanded to the Examiner to take
corrective action.
4
Claims 17, 19-24, 26, 27, 53-60 and 70-118 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Dunkley when
taken with Iggulden.
Claims 119-123 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dunkley when taken with Iggulden and Johnston.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief2 and Supplemental Appeal
Brief3, and the Examiner's Answer4 for the respective details
thereof.
OPINION
We will not sustain the rejections of claims 17, 19-24, 26,
27, 53-60, and 70-123 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case. It
is the burden of the Examiner to establish why one having
Appeal No. 1999-0890
Application 07/575,096
5
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found
in the prior art, or by implications contained in such teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
no legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
On page 7 of the Supplemental Appeal Brief (hereinafter
"brief"), Appellants argue that Dunkley fails to teach
Appellant's claim limitations. In particular, Appellants argue
that Dunkley teaches signature verification rather than
reproduction of a signature on a receipt and does not show or
suggest the method steps called for in the claims.
Appellants further argue that neither Dunkley nor Iggulden
discloses steps (e), (f) and (g) of claim 17, which Appellants
assert are "the heart of the claim". Appellants state (brief,
Appeal No. 1999-0890
Application 07/575,096
5Paper No. 23, at pages 5-8.
6See also the answer at page 4.
6
pages 9-11) that independent claims 27, 78, 91, 93, 102 and 112
are allowable as the same reasons associated with claim 17 are
applicable to these latter claims.
As to claim 70, Appellants specifically argue that Dunkley
fails to disclose the controller means for controlling a display
and for printing a copy of the receipt with the signature.
Lastly, Appellants assert that neither Dunkley nor Iggulden
is directed to similar purposes as those of Appellants' invention
and accordingly any suggestion for the combination of the
references in the manner suggested by the Examiner comes from the
instant patent application and not from any suggestion in the
references.
In the rejection5 the Examiner asserts that claim 17 and its
dependent claims are obvious over Dunkley in view of Iggulden,
noting that sections (e) and (g) of claim 17 are not disclosed by
Dunkley, but asserts that section (f) of claim 17 is disclosed at
column 3, lines 57-59 of Dunkley.
As regards section (e) of claim 17 the Examiner also
asserts6 that it was unnecessary for Dunkley to display the
Appeal No. 1999-0890
Application 07/575,096
7In re Venner and Bowser, 262 F.2d 91, 46 CCPA 754, 120 USPQ
192 (CCPA 1958).
7
business form on the touch sensitive display as it affixed a
paper charge form to the surface of a touch sensitive screen, and
customer account data, merchant data and charges are printed on
the charge slip. He further states that Iggulden teaches that
pre-established forms can be displayed for data insertion by a
user. The Examiner then applies In re Venner7, quoting "it is
well settled that it is not "invention" to broadly provide a
mechanical or automatic means to replace manual activity which
has accomplished the same result" to obviate the replacement of
the charge slip on a digitizing pad with automatic means of
displaying the form on a touch sensitive pad.
As to section (g) of claim 17, the Examiner asserts that it
is a well known fact in computer science education and training,
as well as database design and usage, that the practice of
repeating information which never changes is unnecessary, and
this also applies to repeated information that is transmitted to
remote data bases. Based thereon the Examiner finds it obvious
to communicate the combined business form and signature
information to a storage medium for later retrieval.
Appeal No. 1999-0890
Application 07/575,096
8At page 4
8
In the answer8 the Examiner argues that the motivation for
modifying Dunkley with the teachings of Iggulden is to reduce the
potential for improper placement or inadvertent movement of the
credit slip on the Dunkley device, thereby preventing incomplete
signatures and digitization. The entry of data on a
pre-established displayed form directly on the screen as taught
by Iggulden thus prevents this inherent design problem of
Dunkley.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). "Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor." Para-Ordnance, 73 F.3d at 1087, 37 USPQ2d at 1239,
citing W. L. Gore & Assocs., 721 F.2d at 1551, 1553, 220 USPQ at
311, 312-13. In addition, our reviewing court requires the PTO
Appeal No. 1999-0890
Application 07/575,096
9
to make specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
1614, 1617-19 (Fed. Cir. 1999).
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998).
Turning first to Appellants' claim 17, we note that the
Examiner admits that sections (e) and (g) are not disclosed by
Dunkley. As to section (g) the Examiner asserts that it is a
well known fact in computer science education and training, as
well as database design and usage, that the practice of repeating
information which never changes is unnecessary, and this also
applies to repeated information that is transmitted to remote
databases. Based thereon, the Examiner found it obvious to one
of ordinary skill in this art to communicate the combined
business form and signature information to a storage medium for
later retrieval. This is not well taken.
The premise that as a general rule one skilled in the
computer science art would not repeat information which is
repetitive is contrary to general practice. With relatively
Appeal No. 1999-0890
Application 07/575,096
9Id. at 6.
10
inexpensive substantial amounts of memory available for computers
such as those disclosed by Appellants and the applied references,
it was the norm to record complete separate records.
One important indicium of non-obviousness is "teaching away"
from the claimed invention by the prior art. In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1532 (Fed. Cir. 1988),
In re Bell, 991 F.2d 781, 784, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993). Here, Iggulden teaches away from communicating
and storing the combined form and signature data for later
retrieval as it separately transmits each document through the
transmission line to a “FAX” after completion of the individual
transaction.
Furthermore, the Examiner's contention that replacing the
charge slip on a digitizing pad of Dunkley by the touch sensitive
form display screen is obvious because it merely provides an
automatic means to replace a manual activity (the paper sales-
docket) used in the prior art to accomplish the same result is
not supported in this case. Without deciding the validity of the
proposition for which the Examiner cites Venner9, the
incorporation of the write input device with a touch sensitive
Appeal No. 1999-0890
Application 07/575,096
11
display screen which displays both the form and signature, and
stores the combination for later retrieval, operates in a manner
substantially different from the activity of an operator who
manually processes the paper system of Dunkley.
These findings regarding section (g) of claim 17 apply
equally to section (k) of claim 27, section (h) of claim 78, the
fifth subparagraph of claim 84, subsection (d) of claim 91,
subsection (e) of claim 93, and the last subparagraphs of claims
102 and 112. Except for claim 70, these are all of the
independent claims before us.
As to claim 70, Appellants argue and the Examiner agrees
that Dunkley fails to disclose the controller means for
controlling a display and for printing a copy of the receipt,
including the signature. The Examiner contends that such
disclosure by Dunkley is unnecessary since a paper charge form is
attached to the upper surface of the touch sensitive screen and
the customer receives at least a portion of it. The Examiner
notes that Iggulden teaches printing the transaction and
signature via a printer.
The claim limitation "controller means for controlling a
display of a receipt . . . and for printing a copy of the
receipt" is written in means-plus-function language because it
Appeal No. 1999-0890
Application 07/575,096
12
recites a means for performing a specified function without the
recital of structure to perform the claimed function. See
35 U.S.C. Section 112, Para. 6 (1994); Cole v. Kimberly Clark
Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (Fed. Cir. 1996)
("To involve [Section 112, Para. 6], the alleged
means-plus-function claim element must not recite a definite
structure which performs the described function.") The proper
construction of a means-plus-function claim limitation requires
interpreting the limitation in light of the corresponding
structure, material, or acts described in the written
description, and equivalents thereof, to the extent that the
written description provides such disclosure. See In re
Donaldson Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed.
Cir. 1994) (in banc). Structure disclosed in the written
description is "corresponding" to the claimed means under Section
112, Para. 6 if the structure is linked by the written
description or the prosecution history to the function recited in
the claim. See B. Braun Medical, Inc. v. Abbott Labs., 124 F.3d
1419, 1424, 43 USPQ2d 1896, 1990 (Fed. Cir. 1997); see also
Chiuminatta Concrete Concepts v. Cardinal Indus., Inc., 145 F.3d
1303, 1308, 46 USPQ2d 1752, 1755-56 (Fed. Cir. 1998).
Appeal No. 1999-0890
Application 07/575,096
10Paper number 23, at page 4.
11Specification, page 8, lines 15-37 and page 9, lines 1-2.
13
Although the Examiner noted10 that he performed the
requisite 35 U.S.C. § 112, sixth paragraph analysis wherever
means-plus-function language appears in the claim, no specific
analysis is provided for this claim or this limitation in any
other claim. Appellants have not addressed this issue.
The specific function associated with the means limitation
is controlling a display of a receipt for a transaction on said
display of said write input device and for printing a copy of the
receipt including a signature.
The only structure disclosed11 for implementing the
aforesaid function of the "controller means” is a personal
computer with a graphics adapter and an adapter board for
additional serial ports for communications.
The means-plus-function clause is construed as limited to
the corresponding structure disclosed in the specification and
equivalents thereof. As admitted by the Examiner, the Dunkley
controller is not capable of performing the claimed function and
thus cannot be corresponding structure or an equivalent thereof.
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 4 USPQ2d
Appeal No. 1999-0890
Application 07/575,096
12See figures 14-17.
14
1737 (Fed. Cir.1987), cert. denied, 484 U.S. 961 (1988). The
controller of Iggulden does not control a display of a receipt
for a transaction on the display, as it only displays the
prompting text and input data on a three line display, and not
the receipt. Therefore the controller of Iggulden does not
perform the same function as the “controller means” as claimed by
Appellants.
Furthermore, the controller of Iggulden is in his Key-Fax
device and is not disclosed to be a PC with a graphics adapter
and an adapter board with serial communication ports. In fact,
as the processor of Iggulden drives the limited display function
required by Iggulden12 and communicates with few devices, it does
not require the graphics adapter and additional communication
ports of Appellants' "controller means".
In addition to the aforesaid analysis under 35 U.S.C.
§ 112, sixth paragraph, the Examiner's position fails to account
for the further claim limitations that the controller is coupled
to the point of sale terminal, the display of the write input
device, to the digitizer of the write input device, and to the
storing means. The references simply fail to provide for a
Appeal No. 1999-0890
Application 07/575,096
15
controller coupled to all these claimed devices.
We are not inclined to dispense with proof by evidence when
the proposition at issue is not supported by a teaching in a
prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984); In re Knapp-Monarch Co., 296 F.2d 230, 232, 132
USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ
268, 271-72 (CCPA 1966). Furthermore, our reviewing court states
in In re Piasecki, 745 F.2d 1468, 223 USPQ 785, 788 (Fed. Cir.
1984) the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S.
1 (1966), focused on the procedural and evidentiary
processes in reaching a conclusion under Section 103.
As adapted to ex parte procedure, Graham is interpreted
as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual
basis for its rejection of an application under section
102 and 103". Citing In re Warner, 379 F.2d 1011,
1020, 154 USPQ 173, 177 (CCPA 1967).
Therefore, we will not sustain the rejection of claims 17,
19-24, 26, 27, 53-60 and 70-118 under 35 U.S.C. § 103 as being
unpatentable over Dunkley when taken with Iggulden. In addition,
Appeal No. 1999-0890
Application 07/575,096
16
we will not sustain the rejection of claims 119-123 under
35 U.S.C. § 103 as being unpatentable over Dunkley when taken
with Iggulden and Johnston, as Johnston does not provide the
claim limitations found absent in the above analysis of their
respective parent claims 17, 27, 78, 84 and 91, and the Examiner
has only applied Johnston to the specific limitations added by
these dependent claims.
We have not sustained the rejection of claims 17, 19-24, 26,
27, 53-60 and 70-123 under 35 U.S.C. § 103. Accordingly, the
Examiner's decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1999-0890
Application 07/575,096
17
MRF:pgg
Paul W. Martin
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