Ex Parte Benson

Board of Patent Appeals and Interferences

Oct 29, 2007

10109205 (B.P.A.I. Oct. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER M. BENSON
____________

Appeal 2007-2166
Application 10/109,205
Technology Center 3700
____________

Decided: October 29, 2007
____________

Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
affirm-in-part.
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THE INVENTION
Appellant claims methods and systems for managing restaurant dining
service through meal orders (Specification 1). Claims 1, 7, and 8, reproduced
below, are representative of the subject matter on appeal.
1. A system for synchronizing the display of a course
menu with the progress of a meal comprising:
a patron communicator for displaying course
menus;
an attendant service indicator; and
a server for delivering course menus to the patron
communicator for display at the patron communicator,
the display of the course menus being in response to an
attendant service signal received from the attendant
service indicator.

7. The system of claim 1 further comprising:
a kitchen terminal for receiving food supply data;
and
the server generates menu updates from the food
supply data for delivery to the patron communicator.

8. The system of claim 6 further comprising:
a kitchen terminal for receiving food supply data;
and
the server generates menu updates from the food
supply data for insertion in the advertising database.

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THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
McHale US 2002/0038165 A1 Mar. 28, 2002
Ragsdale-Elliot US 6,636,835 B2 Oct. 21, 2003

Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Ragsdale-Elliott in view of McHale.

ISSUE
The issue before us is whether Appellant has shown that the Examiner erred
in rejecting claims 1-20 as unpatentable over Ragsdale-Elliott in view of McHale.
The dispositive issue is whether the cited references are properly combined and
whether when combined they yield the claimed invention.
Rather than repeat the arguments of Appellant and the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
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USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. The Specification teaches that
The attendant service indicator may be a data
object displayed on the patron communicator, a data
object displayed at a service terminal, or a wireless
transmitter that may communicator [sic, communicate]
with a receiver coupled to a patron communicator or a
service terminal.
(Specification 6-7). It also states that “Attendant service indicators 28
may be known wireless transmitters having an encoder 34 that encodes a
signal with an identifier for transmission by a transmitter 38.”
(Specification 14).
2. Ragsdale-Elliott teaches a first wireless device that establishes interactive
two-way electronic communication between at least one patron and at
least one restaurant service personnel by a wireless communication link.
The at least one restaurant service personnel directly interacts with the at
least one patron during a restaurant encounter. A second wireless device
engages in the two-way communication (Ragsdale-Elliott, abstract).
3. Ragsdale-Elliott further discloses that the hand-held pager is programmed
to provide a specific restaurant menu which may be accessed by a
customer via a touch screen activation terminal located at a patron’s table
(Ragsdale-Elliott, col. 3, ll. 27-31).
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4. Ragsdale-Elliot discloses a prior art system in which order information is
coupled to an inventory control unit for decrementing the various items
in inventory by the quantity of items ordered by each customer
(Ragsdale-Elliott, col. 2, ll. 1-4). It does not explicitly teach generating
menu updates from the food supply data.
5. McHale discloses an establishment server that provides each patron
station with the data needed for the patron station to display various
menu items and advertisements. The server also makes decisions as to
which advertisements are provided to which patron stations as well as
processes the food and drink orders received by the patron stations
(McHale, 5:[0064]).
6. McHale teaches a supply tracking system linked to menu items that are
ordered. The system maintains a record of the establishment’s supply of
various menu items and can be used to detect whether a new supply of a
menu item is needed (McHale, 10:[0127]). It does not explicitly teach
generating menu updates from the food supply data.

PRINCIPLES OF LAW
“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.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
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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, (3) the level of
ordinary skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
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1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Only if this initial burden
is met does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.

ANALYSIS
Appellant argues that Ragsdale-Elliott does not disclose an attendant service
indicator as recited in claim 1 (Br. 10-13). The Specification teaches that an
attendant service indicator can be a wireless transmitter that may communicate
with a receiver coupled to a patron communicator. It also notes that such wireless
transmitters were known in the art (Finding of Fact 1). The Examiner found that
Ragsdale-Elliott discloses “an attendant service indicator (fig. 1, pager 22), a
display 18 of the course menus being in response to an attendant service signal
received from the attendant service indicator (col. 5, lines 30-41, fig. 1).” (Answer
3). Ragsdale-Elliott teaches a pager that meets the limitation of attendant service
indicator required by claim 1 by providing a specific restaurant menu via two-way
wireless communications link to a patron in response to action from the pager
(Findings of Fact 2 and 3).
Appellant further argues that there is no motivation for the combination of
Ragsdale-Elliott and McHale (Br. 7-10). To the extent the Appellant argues in his
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pre-KSR Brief that there is no explicit teaching, suggestion, or motivation to
combine Ragsdale-Elliott and McHale, that argument is foreclosed by KSR. KSR,
127 S.Ct. at 1740-41, 82 USPQ2d at 1396 (“the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.”) In addition, the combination of the establishment server
of McHale with the wireless maître d’ system for restaurants of Ragsdale-Elliott is
no more than the combination of familiar elements according to known methods,
which is likely to be obvious where, as here, it does no more than yield predictable
results. KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391.
Neither Appellant’s Specification nor Appellant’s arguments present any
evidence that addition of the server of McHale to the system of Ragsdale-Elliott as
suggested by the Examiner is uniquely challenging or difficult for one of ordinary
skill in the art. Under those circumstances, the Examiner did not err in holding that
it would have been obvious to one of ordinary skill in the art at the time the
invention was made to utilize the server for delivering course menus as taught by
McHale into the system of Ragsdale-Elliott because it would coordinate the
operation of each patron station connected thereto and receive and process order
input received by a patron station to thereby enable fulfillment of the order
(Answer 4). Because this is a case where the improvement is no more than the
predictable use of prior art elements according to their established functions, no
further analysis was required by the Examiner. KSR, 127 S.Ct. at 1740, 82
USPQ2d at 1396. Claims 2-6, 9-16, and 19-20 were not argued separately, and fall
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with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d
588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991).
With respect to claims 7 and 17, Appellant argues that McHale does not
teach menu updates based upon the supply of food (Br. 16). The Examiner found
that McHale teaches that “the server generates menu updates from the food supply
data for delivery to the patron communicator (page 8, [0099], lines 1-16)” (Answer
4). Appellant correctly argues that the cited passage of McHale teaches the
customization of an order by the customer by selecting extra items such as
condiments, not generating menu updates based on food supply data (Br. 16-17).
As noted by Appellant (Br. 17), McHale does teach a supply tracking system
linked to menu items that are ordered, which provides an indication of when a new
supply of a menu item is needed (Finding of Fact 6). Neither reference explicitly
teaches updating a menu item based on food supply data (Findings of Fact 4 and
6). The Examiner has provided no reference showing the missing limitation, nor
has he made a prima facie case of obviousness over Ragsdale-Elliott and McHale
with respect to claims 7 and 17.
Claims 8 and 18 add a limitation related to generating menu updates from
the food supply data for insertion in an advertising database. As discussed in
connection with claims 7 and 17, neither of the cited references provides an
explicit teaching of generating menu updates from food supply data. As a result,
they also provide no teaching of generating such updates for inclusion in an
advertising database. The Examiner has provided no reference showing the
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missing limitation, nor has he made a prima facie case of obviousness over
Ragsdale-Elliott and McHale with respect to claims 8 and 18.

CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-6, 9-16 and 19-20 under 35 U.S.C. § 103(a). We conclude that
Appellant has shown that the Examiner erred in rejecting claims 7, 8, 17, and 18
under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-6, 9-16, and 19-20 under 35
U.S.C. § 103(a) is affirmed. The decision of the Examiner to reject claims 7, 8, 17,
and 18 under 35 U.S.C. § 103(a) is reversed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART

hh

PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
1700 S. PATTERSON BLVD.
DAYTON, OH 45479-0001