Ex Parte Black et alDownload PDFPatent Trial and Appeal BoardMay 11, 201612498414 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/498,414 0710712009 107681 7590 05/13/2016 NCR Corporation 3097 Satelite Boulevard Building 700, 2nd Floor, Law Department Duluth, GA 30096 FIRST NAMED INVENTOR Jonathan Simon Black 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. 15086 (500.0416) 8368 EXAMINER YU,ARIELJ ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 05/13/2016 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): PTOMail.Law@ncr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN SIMON BLACK, LUIS EDUARDO BRA VO, and MICHAEL ROBERTSON MCNAMARA Appeal2014-001354 Application 12/498,4141 Technology Center 3600 Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1 and 3-21. Non-Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, the real party in interest is NCR Corporation. Appeal Br. 1. Appeal2014-001354 Application 12/498,414 ILLUSTRATIVE CLAIM 1. A terminal for placing orders with plural vendors, compnsmg: a user interface for displaying information to and receiving inputs from a user; storage for maintaining a transaction record based on vendor information and user inputs and reflecting selections from one or more of the plurality of vendors; a transaction information database storing vendor information including a selection view for each of the plural vendors; and a processor for retrieving stored vendor information, creating a user display based on stored vendor information, the user display including a vendor icon for each of the plural vendors and managing a transaction associated with one or more orders, the processor opening a transaction record for an order upon initiation of an order by a user and to display a selection menu for each vendor upon a user's selection of that vendor, the processor being operative to update the transaction record based on user selections and to present successive displays based on user selections, the processor being further operative to direct order information to each vendor selected for an order for fulfillment of the order, wherein the user interface comprises a touch screen display, a user initiates an order by dragging an order icon representing an order to a desired area on the touch screen display, and the user selects one or more vendors from which selections are to be made by moving a vendor icon representing each of the vendors to the order icon. CITED REFERENCES The Examiner relies upon the following references: Kumar Hoshino et al. (hereinafter "Hoshino") US 2003/0182195 Al US 2005/0259087 Al 2 Sep.25,2003 Nov. 24, 2005 Appeal2014-001354 Application 12/498,414 Lokuge et al. US 2006/0122917 Al June 8, 2006 (hereinafter "Lokuge") Blatstein US 2009/0281903 Al Nov. 12 2009 Fang US 2010/0097343 Al Apr. 22, 2010 REJECTIONS I. Claims 1, 3, 5, and 82-21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kumar, Blatstein, and Hoshino. Non-Final Act. 2-21. II. Claims 4 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kumar, Blatstein, Hoshino, and Fang. Non-Final Act. 21- 23. III. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Kumar, Blatstein, Hoshino, Fang, and Lokuge. Non-Final Act. 23-25. FINDINGS OF FACT We rely upon and adopt the Examiner's findings stated in the Non- Final Action (pages 2---6) and the Answer (pages 3-7). Additional findings of fact may appear in the Analysis below. ANALYSIS3 Rejection I The Appellants argue independent claims 1, 14, and 21 as a group. Appeal Br. 10-12. We select claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv). 2 Although the Examiner and the Appellants included claim 8 in Rejection I, we address claim 8 in the context of Rejection II because claim 8 depends from claim 4. 3 The Appellants' general arguments (Appeal Br. 14--15), which are not directed to any claim on appeal, are not addressed herein. 3 Appeal2014-001354 Application 12/498,414 The Appellants contend (Appeal Br. 11) that the Examiner erred in relying upon Hoshino for teaching the following features of claim 1 (Appeal Br. 16, Claims App.): a user initiates an order by dragging an order icon representing an order to a desired area on the touch screen display, and the user selects one or more vendors from which selections are to be made by moving a vendor icon representing each of the vendors to the order icon. The Examiner finds that Hoshino discloses dragging a touchscreen icon to an area of a screen that denotes a particular function, such as dragging an icon representing an item for sale to a portion of the screen denoting "Purchase" in order to initiate a purchase transaction, such that it would have been obvious to "modify the combination of Kumar and Blatstein references to include" the recited claim limitation. Non-Final Act. 6 (citing Hoshino i-fi-1 4, 111-115). See also Hoshino, Fig. 19. The Appellants contend that Kumar does not disclose "moving" and Blatstein and Hoshino fail to cure the deficiency because Hoshino "does not address and does not make obvious 'dragging a vendor icon' as claimed, nor dragging an 'order icon' as claimed." Appeal Br. 12. The Appellants' arguments are unpersuasive because they are arguments against the references individually when the Examiner relies on the combination to disclose the limitation. See In re Keller, 642 F.2d 413, 425 (CCP A 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.") 4 Appeal2014-001354 Application 12/498,414 Indeed, the Appellants concede that "Hoshino addresses dragging icons generally." Appeal Br. 12. As the Examiner explains: [T]he combination of Kumar, Blatstein, and Hoshino teaches or suggests multiple independent functions e.g., [the] purchase or orders [of Kumar and Blatstein], are initiated by moving (dragging) the icons [of Kumar and Hoshino] to a specific area (e.g., purchase, listen for trial, display comments, etc.) [as taught by Hoshino] on the touch screen panel [of Kumar], which is considered as "a user initiates an order by dragging an order icon representing an order to a desired area on the touch screen display". [As taught by Hoshino] [ t ]he user can move and drag selected icons representing items sold from artists (e.g. different vendors) to the specific area to initiate an order, which is considered as "the user selects one or more vendor icons from which selections are to be made by moving a vendor icon representing each of the vendors to the order icon". Answer 5---6. See also id. at 7 (citing Hoshino i-fi-14, 111-124, Figs. 19-23). For the foregoing reason, the rejection of claim 1 as unpatentable under 35 U.S.C. § 103(a) is sustained, as is the rejection of independent claims 14 and 21 grouped with claim 1 in the Appeal Brief. The Appellant does not present separate arguments against the rejection of dependent claims 3, 5, 9-13, and 15-20, and thus we also sustain the rejection of those claims. Rejections II and III Claim 4 Claim 4 depends from independent claim 1 and further recites: "The terminal of claim 1, wherein the touch screen display responds to multiple simultaneous touches." Appeal Br. 17, Claims App. The Examiner argues that subject matter of claim 4 is obvious and that one of ordinary skill in the art would have combined-with the teachings of 5 Appeal2014-001354 Application 12/498,414 the other identified references-Fang's teaching of a touch screen display responsive to multiple simultaneous touches, "in order to decrease manufacturing cost." Non-Final Act. 23 (citing Fang i-f 5). The Appellants assert that such reliance upon Fang constitutes an "improper hindsight reconstruction" and that the Examiner's purported rationale for the combination should be rejected because it is "inconsistent with technical reality as such an approach would appear to either cost the same or more, but not less." Appeal Br. 13. Indeed, the portion of Fang relied upon by the Examiner does not state that manufacturing costs could be reduced by implementing touch screen displays that respond to multiple simultaneous touches. To the contrary, Fang states that "the cost and complexity" of known systems for designing touch screen displays that detect multiple simultaneous touches "are often prohibitive for these types of portable electronic devices and make their use unattractive even in more expensive electronic equipment.'; Fang ,-r 5. Because the Examiner's articulated basis for combining Fang's multiple-touch feature with the teachings of the other references addressed by the Examiner (see Non-Final Act. 23) is erroneous, the rejection of claim 4 is not sustained. Claims 6--8 Claims 6-8 depend from claim 4. Appeal Br. 17, Claims App. Therefore, the rejections of claims 6-8are not sustained for the same reason that the rejection of claim 4 is not sustained. See In re Fine, 837 F .2d 1071, 1076 (Fed. Cir. 1988) ("Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.") (citations omitted). 6 Appeal2014-001354 Application 12/498,414 DECISION We AFFIRM the Examiner's decision rejecting claims 1, 3, 5, and 9- 21. We REVERSE the Examiner's decision rejecting claims 4 and 6-8. 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 § 1.136(a)(l )(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation