Ex Parte Barton et al

Board of Patent Appeals and Interferences

Jan 30, 2009

10691806 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN P. BARTON and
PAUL CHIBE
____________

Appeal 2008-2082
Application 10/691,806
Technology Center 3600
____________

Decided: January 30, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stephen P. Barton, et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 44-68, 76, and 102-111. Claims 1-43, 69-75, and
77-97 have been cancelled and claim 98-101 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
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We AFFIRM.1

THE INVENTION
The invention relates to methods of providing products at point of purchase
devices such as “self-scanning checkouts at grocery stores and supermarkets.”
(Specification 3:2-3).
Claim 44 is illustrative of the claimed invention.
44. A method of operating an automated checkout comprising:
allowing a consumer to bring purchasable items to an automated
checkout device;
allowing the consumer to scan the purchasable items and accumulate a
cost for the scanned items on a display;
allowing the consumer to select a product from a dispensing device
located in juxtaposition to the automated checkout;
storing the product to be dispensed in the dispensing device,
automatically dispensing the product from the dispensing device in
response to the consumer’s selection; and
automatically adding a cost of the product to the cost for the scanned
items on the display.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Bustos US 5,816,443 Oct. 6, 1998

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed
Jul. 12, 2007), the Examiner’s Answer (“Answer,” mailed Oct. 16, 2007) and the
Reply Brief (“Reply Br.,” filed Dec. 10, 2007).
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Walter US 5,992,570 Nov. 30, 1999
Terranova US 6,882,900 Apr. 19, 2005

The following rejections are before us for review:
1. Claims 62-64 are rejected under § 102(e) as being anticipated by Terranova.
2. Claims 44-68, 76, and 102-111 are rejected under § 103(a) as unpatentable
over Bustos, Walter, and Terranova.

ISSUES
The first issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 62-64 as being anticipated by Terranova. This
issue turns on whether Terranova explicitly or inherently describes the step of
“obtaining a fee paid from a supplier of the product in exchange for allowing the
product to be dispensed from the point of purchase device” given the broadest
reasonable construction of the claim in light of the Specification as it would be
interpreted by one of ordinary skill in the art.
The second issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 44-68, 76, and 102-111 as unpatentable over
Bustos, Walter, and Terranova. A major question raised is whether the prior art
shows products from a dispensing device located proximate or in juxtaposition to
an automated checkout. This applies to independent claims 44, 76, and 102.
Questions are also raised as to whether the cited prior art would lead one to include
various elements recited in the claims.
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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are supported by
at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
Claim construction
1. Claim 62 uses the term “supplier.”
2. The Specification does not provide a definition for “supplier”.
3. The ordinary and customary meaning of “supplier” is something that
provides. (See Webster’s New World Dictionary 997 (3rd Ed.
1988.)(Entry 1 for verb transitive “supply”: “to give, furnish, or
provide”.))
4. Claim 62 uses the term “fee”.
5. The Specification does not provide a definition for “fee”.
6. The ordinary and customary meaning of “fee” is a charge. (See Webster’s
New World Dictionary 997 (3rd Ed. 1988.)(Entry 2 for “fee”: “payment
asked or given for professional services …; charge.”))
7. Claim 62 provides for a step of “obtaining a fee paid from a supplier of
the product in exchange for allowing the product to be dispensed from
the point of purchase device.” This can be restated as the supplier of a
product paying a fee in exchange for allowing its product to be dispensed
from the point of purchase device.
8. Independents claim 44 and 102 use the term “juxtaposition.”
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9. Juxtaposition means “to put side by side or close together” (See
Webster’s New World Dictionary 997 (3rd Ed. 1988.)(Entry for
“juxtapose.”)
10. Independent claim 76 uses the term “proximate.”
11. Proximate means “next” (See Webster’s New World Dictionary 1083 (3rd
Ed. 1988.)(Entry for “proximate.”).
The scope and content of the prior art
12. Terranova describes a gas station pump for dispensing fuel coupled to a
retail purchasing device. See Fig. 3.
Terranova Figure 3 is reproduced below:
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Terranova Figure 3 is said to depict “a fuel dispenser shown constructed
according to the present invention.” Terranova, col. 2, ll. 63-64.
13. Bustos is directed to a pneumatic dispensing device. See Figs. 5A and
5C.
Bustos Figure 5A is reproduced below:

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Bustos Figure 5A is said to depict “a perspective view of an alternative
embodiment of the system of FIG. 1.” Bustos, col. 7, ll. 4-5.
Bustos Figure 5C is reproduced below:

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Bustos Figure 5C is said to depict “a perspective view of another
alternative embodiment of the system of FIG. 1.” Bustos, col. 7, ll. 8-9.
14. Walter shows a common checkout system whereby a customer may scan
an item. See Fig. 1.
Walter Figure 1 is reproduced below:

Walter Figure 1 is said to depict “a perspective view of a self-service
checkout apparatus constructed in accordance with the invention.”
Walter, col. 2, ll. 27-28.
Any differences between the claimed subject matter and the prior art
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15. The claimed subject matter combines what is separately disclosed in the
prior art.
The level of skill in the art
16. Neither the Examiner nor the Appellants have addressed the level of
ordinary skill in the pertinent art of automated checkouts. We will
therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”)
(“[T]he absence of specific findings on the level of skill in the art does
not give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”) (quoting
Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)).
Secondary considerations
17. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given the
broadest reasonable construction consistent with the specification and should be
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read in light of the specification as it would be interpreted by one of ordinary skill
in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
“[W]e look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation. As this court has discussed, this
methodology produces claims with only justifiable breadth. In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984). Further, as applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no unfairness
to the applicant or patentee. Am. Acad., 367 F.3d at 1364.” In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Limitations appearing in the
specification but not recited in the claim are not read into the claim. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
Cir. 1987).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art to which said subject matter pertains.’”
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KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1734 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, and (3) the level
of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 at ___, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented.” 383 U.S. at 18.

ANALYSIS
The rejection of claims 62-64 under 35 USC § 102(e) as being anticipated by
Terranova.
Claim 62 reads as follows:
62. A method of generating revenue comprising:
providing a point of purchase device that is coupled to the retail
purchasing device, the point of purchase device designed to dispense a
product at the point of purchase; and
obtaining a fee paid from a supplier of the product in exchange for
allowing the product to be dispensed from the point of purchase device.
“A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, the Board must interpret the claim language,
where necessary. Because the PTO is entitled to give claims their broadest
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reasonable interpretation, our review of the Board’s claim construction is limited to
determining whether it was reasonable. In re Morris, 127 F.3d 1048, 1055 (Fed.
Cir. 1997). Secondly, the Board must compare the construed claim to a prior art
reference and make factual findings that “each and every limitation is found either
expressly or inherently in [that] single prior art reference.” Celeritas Techs. Ltd. v.
Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998).” In re Crish, 393 F.3d
1253, 1256 (Fed. Cir. 2004).
Turning to the first step in the analysis, claim 62 comprises two steps. We
need not focus on the first step of claim 62 as there appears to be no dispute that
Terranova explicitly describes the first step of claim 62. See FF 12. The dispute
lies in the construction to be given the second step.
The Examiner took the position that “an owner of Terranova’s device (18)
can be construed to also be a supplier of the product, i.e., the fuel, that is dispensed
from the point of purchase device, i.e., the fuel dispenser. Such an owner, who is
also the supplier, and who makes profits from the sale of the fuel, is construed to
also be paying himself a fee in the form of profits from the sale of the fuel.”
(Answer 4).
The Appellants argued that Terranova does not describe this second step.
According to the Appellant, the Examiner’s construction of the claim is inaccurate.
“[The claimed second step] is not the same as obtaining profits for selling a
particular item, as allegedly required in Terranova. Rather, a quid pro quo for
some third party for putting the product in the point of purchase device is
providing a fee.” (App. Br. 22). The Appellants conceded that the Specification
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does not define “supplier” but argued that the Examiner’s interpretation of the
claim term “supplier” to include someone owning the Terranova gas pump is
contrary to how the term would be interpreted by one of ordinary skill in the art in
light of how the term is used in the Specification, which the Appellants alleged
restricts the term “supplier” to third party suppliers. (Reply Br. 2-6). Thus, the
Appellants argued that the second step of the claim refers to “a third party supplier
[offering] money “in exchange for the right to” [relying on page 38, ll. 3-13 of the
Specification] sell its product in the point of purchase device owned by another.”
(Reply Br. 4).
We agree with the Examiner’s broad construction of the claim term
“supplier” but we agree with the Appellants that the claim requires the supplier to
pay a fee in exchange for allowing the product to be dispensed.
“Claim construction begins, as it must, with the words of the claims. See
Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d
615, 619-20 (Fed. Cir. 1995).” Vehicular Techs. Corp. v. Titan Wheel Int'l, 141
F.3d 1084, 1088 (Fed. Cir. 1998). But we determine the scope of the claims in
patent applications not solely on the basis of the claim language, but upon giving
claims “their broadest reasonable interpretation consistent with the specification”
and “in light of the specification as it would be interpreted by one of ordinary skill
in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Our interpretation of disputed language must be reasonable in light of all
the evidence before the Board. See In re Morris, 127 F.3d 1048, 1055 (Fed. Cir.
1997) (“The question then is whether the PTO's interpretation of the disputed claim
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language is “reasonable.” … We conclude that the PTO's interpretation is
reasonable in light of all the evidence before the Board.”).
The claim term “supplier” is not defined in the Specification, nor do the
Appellants point us to any definition in the Specification, such that the claim term
“supplier” should be accorded a meaning different than its ordinary and customary
meaning. Accordingly, the term “supplier” is to be given its ordinary and
customary meaning, which is someone or something that provides. FF 3.
We note that the Appellants have argued that one of ordinary skill in the art
reading the Specification would interpret the claim term “supplier” to mean third
party suppliers. However, the Appellants have not pointed to any evidence on the
record to support this view. Though the Appellants urge that one of ordinary skill
in the art would not construe the claim in light of the Specification as broadly as
the Examiner has contended, there is no objective evidence buttressing the
Appellants’ suggestion that one of ordinary skill in the art would construe the
claim so as to limit the scope of the term “supplier” to third-party suppliers. The
Appellants’ attorney’s arguments are insufficient. They alone can not take the
place of objective evidence in the record. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
However, the term “supplier” must be construed in the context of the claim;
that is, in the context of the claim phrase “a fee paid from a supplier of the product
in exchange for allowing the product to be dispensed from the point of purchase
device.” Claims are to be construed as a whole. See General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272 (Fed. Cir. 1992). Accordingly,
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notwithstanding that the term “supplier” in claim 62 broadly encompasses anyone
or anything that provides a product, nevertheless, the claim further requires that the
person or entity pay a fee “in exchange for allowing the product to be dispensed
from the point of purchase device.” The ordinary and customary meaning of “fee”
is a charge. FF 6. Accordingly, claim 62 requires a “supplier” of a product to pay a
charge in exchange for allowing the product to be dispensed.
Given the ordinary and customary meanings of the terms “supplier” and
“fee”, in the context within which these terms are used in claim 62, we find that the
broadest reasonable construction of the claim as it would be interpreted by one of
ordinary skill in the art in light of the Specification is such that claim 62 requires
someone or something providing a product to pay a charge in exchange for
allowing its product to be dispensed.
Turning now to the second step of the anticipation analysis.
Given that we have found no dispute that Terranova explicitly describes the
subject matter of the first step of the claimed method, we take as undisputed that
Terranova describes, per the first step of claim 62, “providing a point of purchase
device that is coupled to the retail purchasing device, the point of purchase device
designed to dispense a product at the point of purchase.”
As to the second step of claim 62, the question is whether Terranova
describes, explicitly or inherently, (in light of the broadest reasonable construction
of the claim) someone or something providing a product to pay a charge in
exchange for allowing its product to be dispensed.
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The Examiner took the position that an owner of Terranova’s device could
be construed to be a supplier of a product, i.e., the fuel, that is dispensed from the
point of purchase device, i.e., the fuel dispenser. We agree with that view given the
breadth of the claim term “supplier.” However, we do not see that Terranova
expressly describes such an owner paying a charge in exchange for allowing its
product to be dispensed, as required by the second step of the claim.
Since Terranova does not expressly describe an owner paying a charge in
exchange for allowing its product to be dispensed, Terranova must inherently
describe the paying of this charge in exchange for allowing its product to be
dispensed for Terranova to anticipate the claim.
In that regard, the Examiner argues that “[s]uch an owner, who is also the
supplier, and who makes profits from the sale of the fuel, is construed to also be
paying himself a fee in the form of profits from the sale of the fuel.” (Answer 4).
The difficulty with this argument is two-fold. First, the argument presumes that a
profit is synonymous to a charge even though profits are normally considered to be
gains or benefits rather than charges. Second, and more importantly, the claim
requires, and Terranova does not disclose, paying the charge in exchange for
allowing its product to be dispensed. Even if, assuming arguendo, a profit could be
construed as a charge, there is nothing in Terranova to suggest that a profit is
necessarily paid to an owner in exchange for allowing its product to be dispensed.
While it is possible that an owner of Terranova’s device might expect a profit as a
precondition to allowing a product to be dispensed and thus require a profit in
exchange for allowing a product to be dispensed, “[i]nherent anticipation requires
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that the missing descriptive material is ‘necessarily present,’ not merely probably
or possibly present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295
F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999)). While it may be well known that owner/suppliers expect profits
in exchange for supplying their products, and that such common knowledge might
lead one of ordinary skill in the art to substitute the required profit for a fee in
exchange for supplying the product, this sort of rationale requires going beyond
what Terranova describes. “If it is necessary to reach beyond the boundaries of a
single reference to provide missing disclosure of the claimed invention, the proper
ground is not § 102 anticipation, but § 103 obviousness.” Scripps Clinic &
Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991).
For the foregoing reasons, we find that the Appellants have shown error in
the rejection because Terranova does not expressly or inherently describe all the
limitations in claim 62. Accordingly, we reverse the rejection under §102 as to
claim 62 and claims 63 and 64 that depend from it.

The rejection of claims 44-68, 76, and 102-111 under 35 USC § 103 over Bustos,
Walter, and Terranova.
As to all the rejected claims, the Appellants argued that one of ordinary skill
in the art would have no reason to combine or modify the references to arrive at the
claimed invention because (a) Bustos, the principal reference the Examiner relied
upon in rejecting the claims, “relates to a product vending system utilizing a
pneumatic product delivery … [where] the product dispensed is stored at a remote
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location away from the actual dispensing device, which teaches away from the
claimed invention” (App. Br. 22-23) which “stores products proximate to the point
of purchase” (App. Br. 23); and, (b) “Bustos is not concerned with the problem
solved by Appellants’ claimed invention” (App. Br. 23), that is, “providing a
method for allowing point-of-purchase products to be dispensed and stored at self-
scanning or other self-checkout counters to overcome the problems of limited shelf
space for point-of-purchase products” (App. Br. 23).
(a) On the question of whether Bustos teaches away from the claimed
invention, “[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see KSR,
550 at ___, 127 S. Ct. at 1739–40 (explaining that when the prior art teaches away
from a combination, that combination is more likely to be nonobvious).
Additionally, a reference may teach away from a use when that use would render
the result inoperable. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354
(Fed. Cir. 2001).”
Bustos clearly discloses a product dispenser located proximate to the
automated checkout. FF 9. The issue, according to the Appellants, is whether one
of ordinary skill would be led to store and dispense the dispensed products
proximate to the automated checkout. According to the Appellants, Bustos would
lead one of ordinary skill away from doing so. We disagree.
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Bustos describes vending machines and drive-throughs, both of which place
the stored and dispensed product proximate a checkout. E.g., col. 3, ll. 23-35.
However, according to Bustos, there are problems associated with such an
arrangement (e.g., no protection from environment) which Bustos overcomes by
locating the products at some distance from the automated checkout. “It is one
particular objective of the present invention to provide a vending system with the
ability to automatically deliver and dispense or otherwise present products to
customers at locations remote from the product storage area … .” Col. 3, ll. 51-55.
Accordingly, Bustos views locating the product proximate the checkout as
somewhat inferior to locating it away from the checkout. This does not qualify as
a teaching away from the claimed invention. Cf. Gurley, at 553:
Gurley's position appears to be that a reference that “teaches
away” can not serve to create a prima facie case of obviousness. We
agree that this is a useful general rule. However, such a rule can not be
adopted in the abstract, for it may not be applicable in all factual
circumstances. Although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the nature of
the teaching is highly relevant, and must be weighed in substance. A
known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other
product for the same use.
In the same vein, the Appellants further argue that modifying Bustos in light
of Terranova and Walters would not only teach away from the claimed invention
but would destroy the Bustos apparatus from operating as intended. (App. Br. 23).
We are not persuaded by this argument.
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The Appellants are correct that a reference may teach away from a
combination when using it in that combination would produce an inoperative
result. But we do not see how the placing of, for example, a vending machine
beside Bustos’s automated checkout renders Bustos inoperative. “When a patent
‘simply arranges old elements with each performing the same function it had been
known to perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR at ___, at 1740.
To the extent the Appellants are construing the claim terms “proximate” and
“juxtaposition” to imply a single machine integrating the functions of an automated
checkout, product storage, and product dispenser and to thereby argue that the
claims do not read on combining the use of a vending machine (Bustos) and an
automated checkout (Walter), we agree with the Examiner (Answer 9) that
“juxtaposition” is instead a relative term that does not exclude locating a vending
machine and a checkout close together. We take the same view of the term
“proximate.” The Appellants point to no definition in the Specification, and we can
find none, that would give the terms a meaning different from its ordinary and
customary meaning, which is side by side (“juxtaposition”) (FF 9) or near
(“proximate”) (FF 11). Accordingly, a vending machine placed beside an
automated checkout would place it in “proximate” or in “juxtaposition” to the
checkout.
(b) Regarding the Appellants’ argument that there is no reason to combine
the prior art to reach the claimed invention because Bustos is not concerned with
the same problem that Appellants’ are trying to solve (App. Br. 22-23), “[u]nder
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the correct analysis, any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR at ___, at 1742. “[T]he problem
motivating the patentee may be only one of many addressed by the patent’s subject
matter. The question is not whether the combination was obvious to the patentee
but whether the combination was obvious to a person with ordinary skill in the
art.” In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Accordingly, this
argument is unpersuasive as to error in the rejection.

Claims 44, 48, 49, 50, 56, 62, 65, 76, 102, and 106-111
The Appellants addressed the rejection of each of the independent claims 44,
48, 49, 50, 56, 62, 65, 76, 102, and 106-111 separately, arguing that “[t]he cited
references alone, or in combination, fail to disclose or suggest” (App. Br. 24) a
number of features said to be set forth in these claims. The dependent claims were
not separately argued; accordingly, they stand or fall with the respective
independent claims from which they depend. See In re Dance, 160 F.3d 1339,
1340 n.2 (Fed. Cir. 1998). 37 C.F.R. § 41.37(c)(1)(vii) (2008).

Claim 44
The Appellants argued that the cited references do not describe the method
of claim 44 because they do not describe storing the product in juxtaposition to the
automated check out and requires the automatic adding of a cost of the product to
the cost of scanning it. (App. Br. 24 and Reply Br. 8).
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We addressed supra the argument that the prior art would not have led one
of ordinary skill in the art to store the product in juxtaposition to the automated
check out. We incorporate herein our reasons why we find that argument is
unpersuasive as to error in the rejection.
On the question of whether the cited references describe adding the cost of
the product to the cost of the scanned items on display, the Examiner relies on
Terranova (Answer 6) which, according to the Examiner, “teaches the concept of
adding the cost of the dispensed product to the total cost of the customer’s bill.”
(Answer 10). Appellants do not appear to dispute the Examiner’s position that
Terranova describes the claimed cost limitation. Instead, the Appellants argue that
Terranova teaches away because it describes the product being stored remotely.
(App. Br. 24). Again, we refer to our reasons discussed supra for finding the
argument over that distinction unpersuasive as to error in the rejection.
We also observe that the Appellants’ analysis in the Briefs attacks each
reference individually. The test for obviousness is what the combined teachings
of the references would suggest to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425
(CCPA 1981). Whether or not an individual reference teaches a specific step
of the claimed method is not dispositive of the question of obviousness.
Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of references.
In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d at
425.
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Accordingly, we find that the Appellants have not shown error in the
rejection of claim 44 and claims 45-47 depending therefrom.

Claim 48
The Appellants argued that the references do not show a “touch screen.”
(App. Br. 25 and Reply Br. 9). The Appellants appear to be arguing over a
particular device commonly referred to as “touch screen,” connoting a flat monitor
display with icons that when touched causes certain functions to occur, as opposed
to a key pad. However, claim 48 nowhere calls for a “touch screen.” The claim
calls for “touching a screen.” The Appellants go into some detail about the
functions of a touch screen (see Reply Br. 10) but do not point to where in the
claim these functions are described. Thus, the Appellants’ arguments are not
commensurate in scope with what is claimed. Nevertheless, we see little or no
difference between touching a keypad and touching a screen. That screens have
displaced keypads as data entry machines is well known to those of ordinary skill
in the art. (See e.g., Walter). Substituting Terranova’s keypad with a screen
amounts to an obvious step of modernization. Cf. Leapfrog Enterprises, Inc. v.
Fisher Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007): “one of ordinary skill in
the art . . . would have found it obvious to combine the Bevan device with the SSR
to update it using modern electronic components in order to gain the commonly
understood benefits of such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost.” We see nothing in substituting
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the keypad for a screen as “uniquely challenging or difficult for one of ordinary
skill in the art.” Id. at 1161.
The Appellants also argued that none of the references describe storing the
dispensed product at the point of purchase. (App. Br. 25). We refer the Appellants
to the reasoning we used supra to find the argument that the references would not
lead one to locate the stored and dispensed products proximate the checkout as
unpersuasive as to error in the rejection.
Accordingly, we find that the Appellants have not shown error in the
rejection of claim 48.

Claim 49
The Appellants argued that none of the references describe automatically
adding the cost of the product and prompting the consumer to purchase a product
from the dispensing device. (App. Br. 25). We refer the Appellants to the
reasoning we used supra with respect to claim 44 on the question of whether the
prior art would suggest adding cost. With respect to prompting a consumer to
purchase a product from a dispensing device, claim 49 does not specify what
causes the “prompting.” Anything that would prompt a consumer to purchase a
product would be encompassed by the claim. In that regard, we agree with the
Examiner that media presentations and displays, like those shown in Terranova,
can act as prompts for some consumers. See Examiner’s Answer 10-11.
Accordingly, we find that the Appellants have not shown error in the
rejection of claim 49.
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Claim 50
The Appellants argued that none of the references describe storing the
dispensed product at the point of purchase. (App. Br. 25-26). The Appellants also
argued that the cited prior art does not show making the products available at the
point of purchase. Reply Br. 11. We refer the Appellants to the reasoning we used
supra to find the argument that the references would not lead one to locate the
stored and dispensed products proximate the checkout as unpersuasive as to error
in the rejection. We have pointed out that Bustos describes a product dispenser
located in juxtaposition to the automated checkout and that does not appear to be in
dispute. In operation, the Bustos dispenser makes products available at the point of
purchase.
Accordingly, we find that the Appellants have not shown error in the
rejection of claim 50 and claims 51-55 depending therefrom.

Claim 56
The Appellants argued that none of the references describe stocking the
dispensed product at the point of purchase. (App. Br. 26). We see little difference,
if any, between stocking and storing. Accordingly, we refer the Appellants to the
reasoning we used supra to find the argument that the references would not lead
one to locate the stored and dispensed products proximate the checkout as
unpersuasive as to error in the rejection. The Appellants also argued that, in
contradistinction to Bustos which only shows one product being dispensed, the
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claimed method provides many products from which a consumer may choose.
(Reply Br. 12.) In that regard, Bustos contemplates providing a plurality of
different products to the degree expected of a vending machine.
Accordingly, we find that the Appellants have not shown error in the
rejection of claim 56 and claims 57-59 depending therefrom.

Claim 62
The Examiner found the subject matter of these claims obvious under
§103(a). See Answer 12-13. The Appellants responded by simply arguing that the
prior art does not disclose or suggest obtaining a fee from a supplier of the product
in exchange for allowing the product to be dispensed from the point of purchase
device, i.e., the second step of the method recited in claim 62. (Reply Br. 13.) A
general allegation that the art does not teach any of the claim limitations is no more
than merely pointing out the claim limitations. A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, we find that the Appellants have not shown error in the
rejection of claim 62 and claims 63 and 64 depending therefrom.

Claims 65, 76, 107, and 108
The Appellants argued that none of the references describe storing the
dispensed product at the point of purchase. (App. Br. 26). We refer the Appellants
to the reasoning we used supra to find the argument that the references would not
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lead one to locate the stored and dispensed products proximate the checkout as
unpersuasive as to error in the rejection.
Accordingly, we find that the Appellants have not shown error in the
rejection of claims 65, and claims 66-68 depending therefrom, and claims 76, 107,
and 108.

Claims 102 and 106
The Appellants argued that the references do not show touching a display.
(App. Br. 26-27 and Reply Br. 9). We refer the Appellants to the reasoning we
used supra with respect to the Appellants argument over the rejection of claim 48.
The Appellants also argued that none of the references describe storing the
dispensed product at the point of purchase. (App. Br. 27). We refer the Appellants
to the reasoning we used supra to find the argument that the references would not
lead one to locate the stored and dispensed products proximate the checkout as
unpersuasive as to error in the rejection.
Accordingly, we find that the Appellants have not shown error in the
rejection of claim 102 and claims 103-105 depending thereon and claim 106.

Claims 49, 50, 56, 65, 76, 107- 111
The Appellants have made arguments with respect to these claims which
simply state, in whole or in part, that the references do not disclose or suggest
certain claimed features – without responding to the Examiner’s reasoning in
establishing a prima facie case of obviousness. “It is not the function of this court
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to examine the claims in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art.” In re Baxter Travenol Labs, 952 F.2d
388, 391 (Fed. Cir. 1991). A general allegation that the art does not teach any of
the claim limitations is no more than merely pointing out the claim limitations. A
statement which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, we find that the Appellants have not shown error by these
arguments in the rejection of claim 50, and claims 51-55 depending thereon, claim
56, and claims 57-59 depending thereon, claim 65, and claims 66-68 depending
thereon, and claims 49 , 76, and 107- 111.

CONCLUSIONS OF LAW
We conclude:
The rejection of claims 62-64 under 35 U.S.C. § 102(e) as being anticipated
by Terranova is reversed.
The rejection of claims 44-68, 76, and 102-111 under 35 U.S.C. § 103 over
Bustos, Walter, and Terranova is affirmed.

DECISION
The decision of the Examiner finally rejecting claims 44-68, 76, and 102-
111 is affirmed.

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AFFIRMED

JRG

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