Ex Parte Francis

Board of Patent Appeals and Interferences

Jun 16, 2010

10327612 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte MITCHELL J. FRANCIS
____________________

Appeal 2009-013797
Application 10/327,612
Technology Center 3600
____________________
Decided: June 17, 2010
____________________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejections of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.1

THE INVENTION
Appellant’s claimed invention relates to a system and method for
marketing restaurant reservations during non-peak periods by offering
promotions through a central distribution system. (Abs.).
Independent claim 6, which is deemed to be representative, reads as
follows:
6. A method for marketing restaurant reservations
through a central distribution system, comprising the
following steps:
establishing a central distribution processor which
stores information concerning availability of restaurant
reservations;
installing interface software compatible with the
central distribution processor at a plurality of remote
restaurants, the interface software-installed at each of the
restaurants facilitates uploading of relevant restaurant
reservations information to the central distribution
processor wherein the interface software provides the
restaurants with the ability to release reservations
throughout a given day;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 26, 2009) and Reply Brief (“Reply Br.,” filed Jun. 24, 2009),
and the Examiner’s Answer (“Ans.,” mailed Apr. 28, 2009).
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entering available restaurant reservation
information at the remote restaurant throughout a given
day via a user interface associated with the interface
software, the user interface permitting the plurality of
remote restaurants to selectively enter available
reservations information for uploading to the central
distribution processor for access, wherein the interface
software provides menus for selecting time slots,
associated discounts, and number of reservations offered
by the restaurants for specific reservations providing
restaurants with control over when to release discounted
reservations via the interface software;
uploading the restaurant reservations information
to the central distribution processor; and
providing consumers with access to the central
distribution processor for determining the availability of
restaurant reservations and purchasing discounted
restaurant reservations.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rose et al. 7,069,228 B1 Jun. 27, 2006
Coupland et al. 7,076,451 B1 Jul. 11, 2006
Sardy US 2002/0156749 A1 Oct. 24, 2002
Chen et al. US 2004/0215517 A1 Oct. 28, 2004
Zirngibl et al. US 2005/0220278 A1 Oct. 6, 2005

Appellant relied upon the following in rebuttal to the Examiner’s
rejection:
Declaration under 37 C.F.R. § 1.132 of Mitchell J. Francis, filed Dec.
24, 2002. (Hereinafter referred to as “Decl.”).
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The Examiner rejected claims 1, 3-6, 8-11 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Rose, Chen and Coupland. Additionally, the
Examiner rejected claims 2, 7, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Rose, Chen, Coupland, and Sardy. Further, the Examiner
rejected claims 16-18 under 35 U.S.C. § 103(a) as unpatentable over Rose,
Chen, Coupland, and Zirngibl.
Rather than repeat the arguments of Appellant or 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 that Appellant did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ISSUES
1. Has Appellant shown that that the combination of Rose, Chen, and
Coupland fails to teach or suggest the steps of allowing restaurants to
designate and control the offering of specific time slots, associated
discounts, and the number of reservations and an interface software capable
of providing restaurants with the ability to release reservations throughout a
given day, as generally recited by independent claims 1, 6, and 11 under 35
U.S.C. § 103(a)?
2. Has Appellant shown reversible error in that Sardy, as applied to
claims 2, 7, and 12, fails to cure the deficiencies in the combination of Rose,
Chen, and Coupland under 35 U.S.C. § 103(a), as recited in claims 1, 3-6, 8-
11 and 13?
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3. Has Appellant shown reversible error in that Zirngibl, as applied to
claims 16-18, fails to cure the deficiencies in the combination of Rose, Chen,
and Coupland under 35 U.S.C. § 103(a), as recited in claims 1, 3-6, 8-11 and
13?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
Rose
1. Rose is directed to a web-based reservation booking system for
merchants which allows customers to make real-time reservations online.
(Abs.).
2. Rose describes that its system simplifies the merchant's booking
process by providing a central web-based reservation management system
that can be used for all reservations regardless of whether a customer does so
by telephone, walk-in, or via the Internet. (Abs.).
3. Rose describes that its system allows a restaurant to selectively
block-out time-slots in the reservation booking database so that the blocked-
out time-slots cannot be booked. (col. 13, ll. 31-35, col. 26, ll. 42-45) (See
also Fig. 17).
4. Rose describes that its reservation system may be used for any
industry where advanced bookings by customers is commonplace such as
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restaurants, golf, bed & breakfasts, salons, spas, cinemas, sports, performing
arts, medical industries, etc. (col. 7, 11-17).
Chen
5. Chen is directed to a system and method for reducing excess
capacity for restaurants and other industries during off-peak and other times.
(¶ [0002]).
6. Chen describes that its system includes at least a registration
module, a restaurant guide module, a restaurant management module, and a
reservation system. (¶ [0066])
7. Chen’s system describes that its users may receive targeted
marketing strategies, promotions, and special offers based on their
registration and demographic information. (Abs.).
8. Chen describes one embodiment which allows restaurants to make
discount offers to users based upon rules specified by the restaurant. (¶¶
[0093], [0122], and [0128]) (See also Fig. 9).
9. Chen describes that a restaurant may automatically accept or reject
a user’s request for a reservation based on customized rules defined by the
restaurant. (¶¶ [0124], [0125]).
10. Figure 9 depicts that the restaurant’s rules 940 are processed 930
based on user inputted variables 920 such as their anticipated dining time
and date. (¶ [0122]) (See also Fig. 9).
11. Chen describes that the customized rules are applied to each
incentive request (i.e., reservation) to target a specific audience or type of
customer. (¶ [0128]).
Coupland
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12. Coupland is directed to a system and method for providing
lodging reservation data such as room availability and rate for a plurality of
hotels. (Abs.).
13. Coupland describes that its system allows reservation availability
and rate data for a plurality of lodging facilities to be maintained in a
centralized location to facilitate searching, travel planning and reservation
activities and other suitable activities. (col. 12, ll. 34-39).
14. Coupland describes that its master reservation system receives
reservation data from the reservation data interface and stores the reservation
data in a database thereby updating the central database with the update data.
(col. 2, ll. 11-18).
15. Coupland describes that reservation data can be released after it
has been reviewed, in batches at predetermined times, or by any other
suitable reservation data release mechanism. (col. 13, ll. 23-29).
Zirngibl
16. Zirngibl is directed to system and method that enables the delivery
of, and changes to travel-related information, via a natural language voice
communication system which is in communication with at least a reservation
database. (Abs., ¶ [0071]).
Sardy
17. Sardy is directed to a reservation system which allows users to pay
a premium (i.e., fee) for a guaranteed restaurant reservation.
(Abs., ¶ [0020]).
Facts Related To Secondary Considerations
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18. There was one declaration submitted during prosecution of the
instant case on July, 18, 2008. (Decl. 1).
19. The declaration was submitted by Mitchell J. Francis, sole
inventor and CEO of TIX Corporation. (Decl. 1).
20. TIX Corporation owns and operates a reservation system which is
asserted to be embodied and claimed by the present application on appeal.
(Decl. 1).
21. Mr. Francis declares that restaurant reservations have increased
more than fourfold during the period from January 2007 to May 2008.
(Decl. 2).

PRINCIPLES OF LAW
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
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(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, 550 U.S. at 407 (“While the sequence of these questions might be
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reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court held that “[the] combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 401. 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 417.
Secondary Considerations
Objective evidence of nonobviousness, including commercial success,
must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791,
791 (CCPA 1971). In order to be commensurate in scope with the claims,
the commercial success must be due to claimed features, and not due to
unclaimed features. Joy Techs. Inc. v. Manbeck, 751 F. Supp. 225, 229
(D.D.C. 1990), aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992) (Features
responsible for commercial success were only recited in allowed dependent
claims, and therefore the evidence of commercial success was not
commensurate in scope with the broad claims at issue.) An inventor’s
opinion as to the purchaser’s reason for buying the product is insufficient to
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demonstrate a nexus between the sales and the claimed invention. In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).

ANALYSIS
ISSUE 1
Claims 1, 3-6, 8-11 and 13 rejected under 35 U.S.C. § 103(a) as being
obvious over Rose, Chen and Coupland.
Independent claims 1, 6, and 11
Appellant argues that the combination of Rose, Chen and Coupland
fails to teach or suggest the step of allowing restaurants to designate and
control the offering of specific time slots, associated discounts, and the
number of reservations, as generally recited by independent claims 1, 6 and
11. (App. Br. 12). We are not persuaded by Appellant’s argument and
agree with the Examiner that Rose discloses a web-based reservation system
for merchants which allows customers to make reservations online for
restaurants. (FF 1, 4). Rose’s system allows participating restaurants to
designate and control the offering of specific time slots and the number of
tables (i.e., reservations) available through a central web-based reservation
management system. (FF 2, 3). However, Rose does not explicitly disclose
allowing restaurants to designate and control discounts associated with these
reservations. (Ans. 5). To address this limitation, the Examiner relied upon
Chen which teaches a system and method for reducing excess capacity for
restaurants which offers users’ discounts to encourage off-peak dining at
restaurants. (FF 5, 7). Additionally, Chen teaches a restaurant management
module, and a reservation system. (FF 6). Thus, the combination of Rose,
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Chen and Coupland makes obvious the step of allowing restaurants to
designate and control the offering of specific time slots, associated
discounts, and the number of reservations, as generally recited by
independent claims 1, 6 and 11. Therefore, Appellant’s argument is not
persuasive as to error in the rejection.
Additionally, Appellant argues that “Rose at best provides the
restaurant with the ability to determine which discounted reservations will
be released, not when the discounted reservations will be released.” (Reply
Br. 3). We are not persuaded by Appellant’s argument and find that Chen’s
system teaches customized rules which are applied to each customer’s
reservation request, thus allowing a restaurant to target a specific audience
or type of customer, which we interpret to be the same as allowing the
restaurant to determine when the discounted reservation will be released.
(FF 10, 11). Through Chen’s rule-based system, a restaurant can
automatically accept or reject a discounted reservation after it has been
processed according to the restaurant’s customized rules based on the user
entered variables such as dining time and date. (FF 9). For example, if a
restaurant is trying to fill tables before 3pm, a user who enters variables for a
dining time after 3pm would have their incentive (i.e., reservation) request
rejected since it would not meet the restaurant’s customized rules. (FF 11).
Thus, we find that the combination of Rose, Chen and Coupland makes
obvious the step of allowing restaurants to designate and control the offering
of specific time slots, associated discounts, and the number of reservations,
as generally recited by independent claims 1, 6 and 11.
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Additionally, Appellant argues that “Chen's system requires a
restaurant to continuously monitor offers coming in and cost them employee
time whereas Appellant's system and method allow a restaurant to maximize
its capacity and during slow times automatically upload offers to the public
at large.” [sic] (App. Br. 13). We are not persuaded by Appellant’s
argument and find that as discussed supra, Chen’s system allows a
restaurant to offer users discounts to encourage off-peak dining at a
restaurant. (FF 8). Chen’s system allows a restaurant to automatically
accept or reject a user’s request for a reservation and/or incentive based
upon customized rules defined by the restaurant. (FF 9). These rules are
processed based on specific variables such as a potential customer’s
anticipated dining time and date. (FF 10). Thus, contrary to Appellant’s
contention that Chen’s system requires continuous monitoring, we find that
Chen’s rule-based system automatically accepts or rejects a reservation
offered by a restaurant based on the needs of the restaurant in order to
reduce excess restaurants capacity during off-peak and other times.
Therefore, Appellant’s argument is not persuasive as to error in the rejection.
Moreover, Appellant argues that “Chen does not directly entice
customers to come to the restaurant by offering discounted restaurant
reservations but relies upon an initial offer by the consumer to initiate the
process of offering incentives.” (App. Br. 14). We are not persuaded by
Appellant’s argument and find that while one embodiment of Chen may
allow the consumer to initiate the process of offering incentives, at least
another embodiment of Chen teaches that a restaurant offers users discounts
to encourage off-peak dining at that restaurant. (FF 8). Specifically, as
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discussed supra, Chen’s system allows a restaurant to offer a discount based
on specific variables entered by a user. (FF 10). Based on these variables,
through a rules-based system, Chen’s system allows the restaurant to
automatically accept or reject their initial discount offer. (FF 9, 11).
Further, Chen teaches another embodiment that distributes targeted
marketing strategies, promotions, and special offers based on a customer’s
registration and demographic information. (FF 7). Thus, contrary to
Appellant’s contention that Chen’s system relies on an initial offer by the
consumer, we find that the restaurant is indeed the party that makes the offer
and the consumer the party who accepts the offer based upon their variables
being originally accepted by the restaurants customized rules. Therefore,
Appellant’s argument is not persuasive as to error in the rejection.
Additionally, Appellant argues that the combination of Rose, Chen
and Coupland fails to teach or suggest interface software capable of
providing restaurants with the ability to release reservations throughout a
given day, as generally claimed by independent claims 1, 6, and 11. (App.
Br. 15). Specifically, Appellant argues that Coupland is directed to a system
for the distribution of lodging reservations and is not concerned with
restaurant reservations. (App. Br. 18). We are not persuaded by Appellant’s
arguments and agree with the Examiner that Coupland teaches interface
software capable of providing a hotel with the ability to release reservations
throughout a given day. (FF 12, 14). Coupland’s system allows reservation
availability and rate data for a plurality of hotels to be updated and
maintained in a centralized location. (FF 13, 14). Additionally, Coupland’s
system teaches that this reservation data can be released after it has been
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reviewed, in batches at predetermined times, or by any other suitable
reservation data release mechanism. (FF 15).
While we agree with the Appellant that Coupland is not concerned
with restaurant reservations, we agree with the Examiner that it would have
been obvious to one of ordinary skill in the art to modify the reservation
system of Rose and Chen with the ability to release reservations as taught by
Coupland in order to allow restaurants control over their own reservations.
(Ans. 7). Additionally, we find that Rose’s reservation system contemplates
being used in any industry where advanced bookings by customers is
commonplace such as restaurants, bed & breakfasts, salons, spas, cinemas,
sports, performing arts, medical industries, etc. (FF 4). Thus, the
modification proposed by the Examiner is nothing more than the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement. See
KSR, 550 U.S. at 417. Therefore, the combination of Rose, Chen and
Coupland makes obvious the limitations recited by independent claims 1, 6,
and 11. Accordingly, Appellant’s argument is not persuasive as to error in
the rejection.
Additionally, Appellant generally argues the combination Rose, Chen
and Coupland is improper since one of ordinary skill in the art looking to
develop a system for distributing restaurant reservations would most likely
not look to the lodging industry. (App. Br. 17). We are not persuaded by
Appellant’s argument and find that the “hypothetical ‘person having
ordinary skill in the art’ to which the claimed subject matter pertains would,
of necessity, have the capability of understanding the scientific and
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engineering principles applicable to the pertinent art.” Ex parte Hiyamizu,
10 USPQ2d 1393, 1394 (BPAI 1988). Thus, since neither the Examiner nor
the Appellant has made any findings as to the level of skill in the art, we find
the level of ordinary skill in the art to be measured by that of a computer
programmer or system designer since the claims are drawn to a system and
the method steps of a computer program. Furthermore, as discussed supra,
Chen is directed to a restaurant reservation system (FF 5, 6), Coupland is
directed to a hotel reservation system (FF 12), and Rose is directed to
reservation system (FF 1). However, as discussed supra, Rose’s reservation
system explicitly contemplates being applicable in both the restaurant and
hotel industry (FF 4), and thus would commend the attention of this person
of ordinary skill in the art to appreciate the teachings as set forth in the
combination of Rose, Chen and Coupland. Therefore, Appellant’s argument
is not persuasive as to error in the rejection.
Lastly, Appellant asserts that the invention as claimed is nonobvious
as evidenced by a declaration showing the commercial success of the present
invention. (App. Br. 18). However, we note that Appellant has not provided
any arguments to support this declaration. Nevertheless, we recognize that
evidence of secondary considerations, such as that presented by the
Appellant must be considered in route to a determination of obviousness
under 35 U.S.C. § 103. Accordingly, we find that Mr. Francis’s opinions of
commercial success based on the sale and use of the present invention
insufficient to show any nexus between any sales and the claimed invention.
(FF 21). Further, Mr. Francis’s opinions as to the purchaser’s reason for
using the reservation system appear to be speculative and are insufficient to
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demonstrate a nexus between the sales and the claimed invention. In re
Huang, 100 F.3d at 140. Based on the Declaration, we cannot say that other
factors may not have spurred sales, unrelated to the claimed subject matter.
Therefore, for these reasons, the Appellant has failed to show a nexus
between the claimed invention and commercial success. Accordingly,
Appellant’s assertions regarding nonobviousness are not persuasive as to
error in the rejection.
Dependent claims 3-5, 8-10, and 13-15
Appellant does not separately argue claims 3-5, 8-10, and 13-15
which depend from claims 1, 6, and 11, respectively, and so has not
shown that the Examiner erred in rejecting claims 3-5, 8-10, and 13-
15 under 35 U.S.C. § 103(a) as unpatentable over Rose, Chen and
Coupland for the same reasons we found as to claims 1, 6, and 11,
supra.

ISSUE 2
Claims 2, 7, and 12 rejected under 35 U.S.C. § 103(a) as being obvious over
Rose, Chen, Coupland, and Sardy.
Appellant does not separately argue claims 2, 7, and 11, which depend
from claims 1, 6, and 11, respectively, and so has not shown that the
Examiner erred in rejecting claims 2, 7, and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Rose, Chen, Coupland, and Sardy for the same
reasons we found as to claims 1, 6, and 11, supra.
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ISSUE 3
Claims 16-18 rejected under 35 U.S.C. § 103(a) as being obvious over Rose,
Chen, Coupland, and Zirngibl.
Appellant does not separately argue claims 16-18, which depend from
claims 1, 6, and 11, respectively, and so has not shown that the Examiner
erred in rejecting claims 16-18 under 35 U.S.C. § 103(a) as being
unpatentable over Rose, Chen, Coupland, and Zirngibl for the same reasons
we found as to claims 1, 6, and 11, supra.

CONCLUSION OF LAW
1. We conclude that the Appellant has not shown that the combination
of Rose, Chen, and Coupland fails to teach or suggest the steps of allowing
restaurants to designate and control the offering of specific time slots,
associated discounts, and the number of reservations and an interface
software capable of providing restaurants with the ability to release
reservations throughout a given day, as generally recited by independent
claims 1, 6, and 11 under 35 U.S.C. § 103(a).
2. We conclude that the Appellant has not shown reversible error in
that Sardy, as applied to claims 2, 7, and 12, fails to cure the deficiencies in
the combination of Rose, Chen, and Coupland under 35 U.S.C. § 103(a), as
recited in claims 1, 3-6, 8-11 and 13.
3. We conclude that the Appellant has not shown reversible error in
that Zirngibl, as applied to claims 16-18, fails to cure the deficiencies in the
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combination of Rose, Chen, and Coupland under 35 U.S.C. § 103(a), as
recited in claims 1, 3-6, 8-11 and 13.

DECISION
The decision of the Examiner to reject claims 1-18 under 35 U.S.C. §
103(a) is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).

AFFIRMED

ack

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