Ex Parte Francis

Board of Patent Appeals and Interferences

Mar 25, 2009

10327611 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MITCHELL J. FRANCIS
____________

Appeal 2008-5667
Application 10/327,611
Technology Center 3600
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Decided:1 March 25, 2009
____________

Before HUBERT C. LORIN, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5667
Application 10/327,611

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-15 which are all the pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to a system for
facilitating the distribution of unused theater tickets. The system includes a
central distribution processor to which theater patrons are provided access
for determining the availability of theater tickets and purchasing them at a
discounted rate (Spec. 3:1-5). Claim 1, reproduced below, is representative
of the subject matter on appeal:

1. A system for facilitating the distribution
of unused theater tickets, comprising:

a central distribution processor to which
theater patrons are provided access for determining
the availability of theater tickets and purchasing
available theater tickets at a discounted rate;

a plurality of remote ticket offices of distinct
theaters linked to the central distribution processor,
the remote ticket offices including interface
software compatible with the central distribution
processor for facilitating the uploading of relevant
ticket information to the central distribution
processor, wherein the interface software
facilitating the uploading of relevant ticket
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information is under the control of the remote
ticket offices; and

wherein the interface software further
provides a user interface through which the
plurality of remote ticket offices selectively enter
available theater ticket information which is
subsequently uploaded under the control of the
remote ticket offices to the central distribution
processor for access and purchase by theater
patrons.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Stein US 5,459,306 Oct. 17, 1995

The following rejections are before us for review:
1. Claims 1-2, 5-7, 10-12, and 15 are rejected under 35 U.S.C. §
102(b) as anticipated by Stein
2. Claims 3-4, 8-9, and 13-14 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Stein.

THE ISSUE
The issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regards to claims 1-2, 5, 11-12, and 15 this issue turns on
whether Stein discloses that “interface software further provides a user
interface through which the plurality of remote ticket offices selectively
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Application 10/327,611
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enter available ticket information which is subsequently uploaded under the
control of the remote ticket offices to the central distribution processor.”
With regards to claims 3-4 and 13-14 this issue turns on whether it
would have been obvious to modify Stein to meet this same claimed
limitation that is present in claims 1 and 11.
With regards to claims 6-7 and 10 this issue turns on whether Stein
discloses a “user interface permitting the plurality of remote ticket offices to
selectively enter available ticket information for uploading to the central
distribution processor.” With regards to claims 8-9 this issue turns on
whether it would have been obvious to modify Stein to meet this same
claimed limitation that is present in claim 6.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Stein is directed to a system with the real-time production of
coupons for delivering on demand promotions and coupons (Col. 1:9-12,
Col. 5:59-63).
FF2. Stein is directed to solving problems in the movie rental and
sale business (Col. 1:25-29).
FF3. Stein discloses that a host system 13 dials up a point of sale
computer 11 once per day and polls the point-of-sale computer for current
information and inventory (Col. 5:2-5, Col. 5:20-26, and Col. 8:29-30).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF4. Stein references generally that the system can be used in other
industries that print tickets or coupons such as sports, concerts halls, and
movie theaters (Col. 8:61-65).
FF5. Stein does not disclose that the interface software provides a
user interface through which the plurality of remote ticket offices selectively
enter available ticket information which is subsequently uploaded under the
control of the remote ticket offices to the central distribution processor.

PRINCIPLES OF LAW
Principles of Law Relating to 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. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987). Analysis of whether a claim is patentable over the prior art
under 35 U.S.C. § 102 begins with a determination of the scope of the claim.
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
construction 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). The properly interpreted claim must then be
compared with the prior art.

Principles of Law Relating to 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
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subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 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, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 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.”) In KSR, the Supreme Court
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 1739.

ANALYSIS
Claims 1-2, 5, 11-12, and 15
The Appellant argues as a group the rejection of claims 1-2, 5, 11-12,
and 15 under 35 U.S.C. § 102(b) as anticipated by Stein. We select claim 1
as representative of this group, and the remaining claims stand or fall with
claim 1. See 37 C.F. R. § 41.37 (c)(1)(vii) (2007).
The Appellant argues that the rejection of claim 1 under 35 U.S.C. §
102(b) as anticipated by Stein is improper because Stein fails to disclose
a plurality of remote ticket offices of distinct
venues linked to a central distribution processor
wherein the remote ticket offices include interface
software compatible with the central distribution
processor for facilitating the uploading of relevant
ticket information to the central distribution
processor under the control of the remote ticket
offices…..wherein interface software provides a
user interface through which the plurality of
remote ticket offices selectively enter available
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Application 10/327,611
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ticket information which is subsequently uploaded
under the control of the remote ticket offices to the
central distribution processor for access and
purchase by patrons.

(Br. 7, emphasis added).
The Appellant argues that the presently claimed invention uploads
information to the central distribution processor under the control and
guidance of the remote ticket offices via the utilization of the claimed
interface software whereas Stein instead discloses a point of sale computer
11 having no control over the information that is provided to the host
computer 13. The Appellant argues that the host computer 13 of Stein
contacts the point of sale computer to get what it wants and not vice versa
(Br. 7). The Appellant further argues that Stein fails to disclose a user
interface to which the plurality of ticket offices selectively enter ticket
information which is uploaded under the control of the remote ticket offices
to the central distribution processor (Br. 7-8). The Appellant argues that
Stein makes only a general statement to the distribution of tickets and that
the Examiner has used impermissible hindsight in filling in the blanks (Ans.
8).
In contrast the Examiner has determined that Stein does disclose a
plurality of remote ticket offices with which the user would interact with
(Ans. 6). The Examiner has determined that the point of sale computer 11
would control the information sent and inherently facilitate uploading to the
central processor (Ans. 6).
We agree with the Appellant. Claim 1 requires that “interface
software further provides a user interface through which the plurality of
remote ticket offices selectively enter available theater ticket information
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which is subsequently uploaded under the control of the remote ticket offices
to the central distribution processor.” Stein is directed to a system with the
real-time production of coupons for delivering on demand promotions and
coupons (FF1). Stein discloses that a host system 13 dials up a point of sale
computer 11 once per day and polls the point-of-sale computer for current
information and inventory (FF2). As the host system 13 dials up and polls
the point of sale computer 11, the point of sale computer does not have
control of the uploads to the central distribution processor. Further, Stein
does not disclose the use of interface software that provides a user interface
through which the plurality of remote ticket offices selectively enter
available ticket information which is subsequently uploaded under the
control of the remote ticket offices to the central distribution processor
(FF5).
The Examiner has also taken the position that the claimed user
interface operation is inherent in Stein (Ans. 6-7).
To establish inherency, the extrinsic evidence must
make clear that the missing descriptive matter is
necessarily present in the thing described in the
reference, and that it would be so recognized by
persons of ordinary skill. Inherency, however,
may not be established by probabilities or
possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not
sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted)
(internal quotation marks omitted). Here, Stein is directed primarily to a
system of real-time production of coupons for delivering on demand
promotions and coupons (FF1). Stein references only generally that the
system can be used in other industries that print tickets or coupons such as
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Application 10/327,611
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sports, concerts halls, and movie theaters (FF4). There is no extrinsic
evidence that in any theater ticket system of Stein that the user interface
would operate inherently as claimed except through the use of possibilities
and conjecture. For these reasons the rejection of claim 1 under 35 U.S.C. §
102(b) as anticipated by Stein is not sustained. The rejection of claims 3-4
and 13-14, which depend from claim 1 or 11, under 35 U.S.C. § 103(a) as
unpatentable over Stein is not sustained for the same reasons as claims 1 and
11 above.

Claims 6 and 8-9
The Appellant argues that the rejection of claim 6 under 35 U.S.C.
§ 102(b) as unpatentable over Stein is improper because Stein in no way
discloses installing interface software compatible with the central
distribution processor at a plurality of remote ticket offices, uploading the
relevant ticket information, and entering the available ticket information at
the remote ticket offices via a user interface associated with the interface
software (Br. 12-13).
In contrast, the Examiner has determined that Stein discloses all these
claimed features inherently (Ans. 6).
We agree with the Appellants. Like claim 1 addressed above, claim 6
includes a similar limitation requiring that a “user interface permitting the
plurality of remote ticket offices to selectively enter available ticket
information for uploading to the central distribution processor.” Stein does
not disclose that the use of interface software provides a user interface
through which the plurality of remote ticket offices selectively enter
available ticket information which is subsequently uploaded to the central
distribution processor (FF5). For the same reasons addressed above in
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addressing this similar limitation in claim 1, the rejection of claim 6 is not
sustained. The rejection of dependent claims 8-9, which depend from claim
6, under 35 U.S.C. § 103(a) as unpatentable over Stein is not sustained for
these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-2, 5-7, 10-12, and 15 under 35 U.S.C. § 102(b) as
anticipated by Stein.
We conclude that Appellant has shown to show that the Examiner
erred in rejecting claims 3-4, 8-9, and 13-14 under 35 U.S.C. § 103(a) as
unpatentable over Stein.

DECISON
The Examiner’s rejection of claims 1-15 is reversed.

REVERSED

hh

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