Ex Parte Beatty et al

Patent Trial and Appeal Board

Sep 24, 2018

14926363 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/926,363
146691 7590
Daylight Law, P.C.
626 Jefferson A venue
Suite 7
10/29/2015
09/26/2018
Redwood City, CA 94063
FIRST NAMED INVENTOR
John Daniel Beatty
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
CLVRPOlO 7569
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/26/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eric@daylightlaw.com
paralegals© day lightlaw. com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN DANIEL BEATTY,
LEONARD ROBERT SPEISER,
ANGELIQUE JULIE LAUSIER,
TAMER MOHAMED EL CALAMA WY, and
MICHAEL JOSEPH QUINLAN
Appeal2017-004175 1
Application 14/926,363
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-23. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify Clover Network Inc. as the real party in interest.
Appeal Br. 3.
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Application 14/926,363
The invention relates generally to point-of-sale terminal devices,
("POS") where "different user interfaces may be presented by the POS
device depending on who and/or what entity is interacting with the POS
device at a particular time during the transaction." Spec. ,r 15.
Claim 10 is illustrative:
10. A computer-implemented method comprising:
receiving, by a point of sale (POS) device that includes one
or more processors, a first indication of interaction with a
merchant;
presenting, by the POS device in response to the first
indication, a first user interface associated with the merchant;
detecting, by the POS device, an adjustment to an
orientation of the POS device;
determining, by the POS device, based on the adjustment
to the orientation, that the POS device is to interact with a
customer; and
presenting, by the POS device in response to the
determination, a second user interface associated with a customer
interaction;
wherein the first user interface includes a first set of
functionalities, and the second user interface is configured to
prevent the first set of functionalities from being accessible to the
customer.
The Examiner rejected claims 1-23 under 35 U.S.C. § 101 as directed
to ineligible subject matter in the form of abstract ideas.
The Examiner rejected claims 1-23 under 35 U.S.C. § I02(a)(2) as
anticipated by Mocko et al. (US 9,129,274 Bl, iss. Sept. 8, 2015)
(hereinafter "Mocko").
We REVERSE.
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Application 14/926,363
ANALYSIS
Rei ection under 3 5 US. C. § 101
We are persuaded by the Appellants' argument that the "invention
improves the POS system for the very fact that it eliminates the need for an
additional POS device. The claims represent an improvement in computer
technology because the system achieves the same result without requiring
two separate displays." Appeal Br. 14; see also Reply Br. 4.
Each of independent claims 1, 10, and 18 recites language that
essentially presents a user interface based on detecting the orientation of the
display portion of the point-of-sale terminal system. See Spec. ,r,r 42--45.
As noted by the Examiner, the invention is "directed to the concept of
presenting a user interface on a POS based upon the physical orientation of
the device." Final Act. 5. We are persuaded, however, that a "POS," in this
context, is a specialized computer used as a point-of-sale device, which is
more than the "automation of human activity" (id.). More specifically, we
are persuaded that a human does not need to detect a change in physical
orientation to alter a user interface, because a human uses many other inputs
to determine how to interact with the environment, such as visual and
auditory clues. 2 The claims, thus, are directed to an improvement in the
functioning of a computer, because general purpose computers are not
generally considered to alter their logic and user interface display based on a
determination of the orientation of a display terminal. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) ("the self-referential
2 While not required in every instance, we note that the Examiner's lack of
citation to either case law or evidence in support its assertion to the contrary
weighs in favor of the Appellants.
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Application 14/926,363
table recited in the claims on appeal is a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory"); Thales Visionix Inc. v. United States, 850 F.3d 1343, 1348--49
(Fed. Cir. 2017) ("the claims are directed to systems and methods that use
inertial sensors in a non-conventional manner to reduce errors in measuring
the relative position and orientation of a moving object on a moving
reference frame."); Trading Techs. Int'!, Inc. v. CQG, INC, 675 F. App'x
1001, 1004 (Fed. Cir. 201 7) ("The claims require a specific, structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface's structure that is addressed to and
resolves a specifically identified problem in the prior state of the art.").
The claims are, thus, not directed to an abstract idea. As such, we
need not examine the claims further for an "inventive concept" or
"something more" that may transform the claims into eligible subject matter.
For these reasons, we do not sustain the rejection of claims 1-23 under
35 U.S.C. § 101.
Reiection under 35 USC § 102(a)(2)
We are persuaded by the Appellants' arguments that Mocko is not
properly considered to be a prior art publication, under the exclusion
provided in 35 U.S.C. § 102(b )(2)(B), as evidenced by the Appellants'
declaration under 37 C.F.R § 1.130(b) filed March 17, 2016. Appeal Br. 9.
The Appellants argue that the Examiner erred in finding that the Declaration
is insufficient, because "the Declaration stands as evidence of prior use on
its own and includes a specific statement by the Declarant that the public use
involved a change in orientation." Id. at 10; see also Reply Br. 2.
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Application 14/926,363
The law of novelty under the America Invents Act, codified at
35 U.S.C. § 102, provides an exception for written disclosures made before
the effective filing date of an application, where a disclosure is not
considered to be prior art to a claimed invention under subsection (a)(2) if
"the subject matter disclosed had, before such subject matter was effectively
filed under subsection (a)(2), been publicly disclosed by the inventor or a
joint inventor or another who obtained the subject matter disclosed directly
or indirectly from the inventor or a joint inventor." 35 U.S.C.
§ 102(b)(2)(B).
Although the concept of "swearing behind a reference" is no longer
available under the First Inventor to File provisions of the America Invents
Act, in one specific situation, a prior art reference may be disqualified as
prior art. See Manual of Patent Examining Procedure§ 2154.02(b):
Specifically, AIA 35 U.S.C. 102(b )(2)(B) provides that a
disclosure which would otherwise qualify as prior art under AIA
35 U.S.C. 102(a)(2) (a U.S. patent, U.S. patent application
publication, or WIPO published application ("U.S. patent
document")) may be disqualified as prior art if the subject matter
disclosed had been previously publicly disclosed by the inventor,
a joint inventor, or another who obtained the subject matter
directly or indirectly from the inventor or joint inventor.
The Appellants' Declaration asserts a prior public use of the claimed
invention approximately six months prior to the filing date of Mocko.
Deel. 2--4. The Declaration, thus, is argued as disqualifying Mocko as prior
art under 35 U.S.C. § 102, based on the exception in 35 U.S.C.
§ 102(b)(2)(B). Appeal Br. 9. The Appellants assert a public use of the
invention on November 26, 2013. Deel. 2. Mocko was filed June 11, 2014,
and does not claim priority to a previous date. The Appellants' application
claims benefit of US Provisional Application 62/074,064, filed November 2,
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Application 14/926,363
2014. The Appellants, thus, assert a prior public use less than a year before
filing, and approximately six months before the priority date of Mocko.
In considering the Appellants' argument and Declaration, the
Examiner finds "the declaration is insufficient because the evidence
referencing the video recording in the remarks was not included in the
declaration." Final Act. 4; see also Answer 2. The evidence to which the
Examiner is referring we discern to be two screenshots from the video
showing two orientations of the point of sale terminal during the first
installation. See Appeal Br. 11.
In response, the Appellants assert:
As explained previously, images of the video evidence were
provided to facilitate the Examiner's review. However, all
references to the video could be removed from the record, and
the Declaration and accompanying remarks in the Response filed
on March 18, 2016 alone would be sufficient to disqualify the art
of record from serving as prior art to the Present Application.
Reply Br. 2. Specifically, the Appellants argue:
The Declaration provided a detailed description of the
prior public use that disqualifies Mocko as prior art, and a
description of how that prior public disclosure is the same as the
disclosure of Mocko relied upon by the Examiner. The
Declaration includes a specific date, address, model number,
design ID, detailed history of how the disclosure is from the
inventor of the Present Application, and a detailed point by point
description of how the prior public use disclosed every aspect of
the disclosure relied upon by the Examiner from Mocko. In
particular, statements 19--27 of the Declaration align on a point-
by-point basis with the Abstract of Mocko (which was the only
portion of text relied upon by the Examiner to support the
rejection of each of claims 1, 10, and 18).
Appeal Br. 9.
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We agree with the Appellants, because the Examiner is ostensibly
arguing that unless all available evidence is in the Declaration, the
Declaration is somehow deficient. There is no such requirement, however,
as pointed out by the Appellants.
The Examiner addresses the additionally-supplied video tape image
evidence anyway, finding:
the images of the video recording fail to show a change in
orientation as argued on page 13 of the remarks. On page 13, the
caption on the first image notes that the customer UI is in portrait
presentation, however the images all show the UI in landscape
presentation. There never appears to be a change in orientation
as argued.
Answer 2 ( emphasis added). The Appellants argue:
In the Appeal Brief, the Applicants explained how the term
"orientation" is used in US Pat. No. 9,129,274 ("Mocko") to
describe a relative physical position of a point of sale terminal
with respect to a merchant and a customer, not a screen change
between landscape and portrait view. As such, the Examiner's
only substantive objection to the Applicants' disqualification of
Mocko is based on a clear misinterpretation of the prior art and
what features the disqualifying public use must therefore exhibit.
Reply Br. 3.
More importantly, the Specification describes that
the one or more device sensors 212 may be configured to
determine a change and/or adjustment to an orientation and/or
position of the client device 120. For instance, the one or more
device sensors 212 may be configured to determine whether the
client device 120 (e.g., and/or its display 218) has been rotated,
flipped, moved, and/or otherwise physically adjusted, such as by
a user ( e.g., a merchant, merchant employee, and/or customer) of
the client device 120.
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Application 14/926,363
Spec. ,r 28. The Appellants use of "orientation" corresponds to the physical
orientation of the display: whether it is pointed toward the merchant or the
customer, not to the layout of the viewable display.
The Examiner has not established that the Declaration is deficient.
The Declaration operates to disqualify Mocko as prior art under
35 U.S.C. § 102(b)(2)(B). As a result, the Examiner has failed to establish
that the claimed subject matter is anticipated. For these reasons, the
Appellants have shown error in the Examiner's rejection of claims 1-23 as
anticipated by Mocko. Therefore, we do not sustain the rejection of
claims 1-23 under 35 U.S.C. § 102(a)(2).
DECISION
We REVERSE the rejection of claims 1-23 as directed to abstract
ideas under 35 U.S.C. § 101.
We REVERSE the rejection of claims 1-23 as anticipated under
35 U.S.C. § 102(a)(2).
REVERSED
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