Ex Parte Black et al

Patent Trial and Appeal Board

May 11, 2016

12498414 (P.T.A.B. May. 11, 2016)

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.
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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.")
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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
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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).
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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
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