Ex Parte Mattson

Board of Patent Appeals and Interferences

Jan 18, 2006

10234305 (B.P.A.I. Jan. 18, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN M. MATTSON
____________

Appeal No. 2006-0277
Application No. 10/234,305
____________

ON BRIEF
____________

Before KRASS, BARRETT, and LEVY, Administrative Patent Judges.

KRASS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1 and 3-
7. Claims 9-14 have been withdrawn from consideration and claims 2
and 8 have been canceled.
The invention is directed to a system for providing real-time
restaurant reviews, best illustrated by reference to independent
claim 1, reproduced as follows:
1. A system for transmitting information regarding a
restaurant, the system comprising:

an apparatus having a transmission means in the restaurant
wherein information regarding the restaurant is input into the
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apparatus and transmitted remotely from the restaurant by the
transmission means and further wherein the apparatus is wireless;

a display means connected to the apparatus that displays the
information regarding the restaurant; and

a network remotely receiving the information from the
apparatus.

The examiner relies on the following reference:

CyberDiner® Internet Cafe Systems (October 30, 1998)

Claims 1 and 3-7 stand rejected under 35 U.S.C. §103 as
unpatenatable over CyberDiner.
Reference is made to the brief and answer for the respective
positions of appellant and the examiner.

OPINION
The examiner cites the CyberDiner system as comprising a
restaurant with personal computers connected to the Internet for
providing Internet access to restaurant patrons, with the
restaurant “inherently” having within it, at each patron’s
computer, an apparatus as claimed, but for the apparatus being
“wireless.” However, the examiner finds that wireless transmission
means are well known, and “an obvious type of connection to use in
connecting a computer to a network” (answer-page 5).

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In rejecting claims under 35 U.S.C. §103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is
expected to make the factual determinations set forth in Graham v,
John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to
provide a reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason must
stem from some teachings, suggestions or implications in the prior
art as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied,
488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc. , 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys.,
Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie case
of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden
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then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1040, 228
USPQ 685, 687 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
F.2d 1048, 1051, 189 USPQ 143, 146-147 (CCPA 1976). 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 brief have not been considered and are deemed to be
waived [see 37 CFR §41.67(c)(1)(vii)].
It appears to us that the examiner has presented a prima facie
case of obviousness with regard to the subject matter of instant
claim 1 by pointing out the disclosure of the prior art
(CyberDiner), the differences between the prior art and the instant
claimed subject matter (lack of a “wireless” device) and why it
would have been obvious to modify the prior art (CyberDiner) to
arrive at the claimed invention (because it was “well known” to use
either wired or wireless connections, a wireless connection being
but one of the obvious ways to connect a computer to a network).
Thus, the burden has been shifted to appellant to overcome the
prima facie case with argument and/or evidence.
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Appellant argues that whereas claim 1 requires a system for
transmitting information regarding a restaurant, CyberDiner merely
teaches a system for providing terminals with Internet access
within a business, such as a café, i.e., a “Cyber Café.” The
present apparatus is not a cyber café, as disclosed by CyberDiner,
which merely allows users to access personal electronic mail boxes
and the Internet. Moreover, appellant argues, CyberDiner does not
teach an apparatus having a transmission means in the restaurant
wherein information regarding the restaurant is input into the
apparatus, as required by claim 1.
We do not find appellant’s argument convincing. If one has
access to e-mail and the Internet, which appellant admits a user of
CyberDiner’s apparatus does, we find no patentability in the
specific content of the messages the user inputs. That is, what
does it matter, in terms of patentability of the apparatus, whether
the user/patron of the apparatus in CyberDiner e-mails a message to
a friend regarding the weather or regarding the restaurant, or
café, in which he/she is sitting. Once the apparatus and the
capabilities are taught, as in CyberDiner, it matters not whether
the text message sent to an e-mail box or over the Internet
concerns a review of the restaurant/café or any other topic. The
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only difference is in the content of the message, not in the
structure of the apparatus permitting such communication. See In
re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983), where the
critical question was whether there exists any new and unobvious
functional relationship between the printed matter and a substrate.
In the instant case, there is clearly no unobvious functional
relationship between the content of the message (printed matter)
and the apparatus (substrate) which permits the sending of the
message. One type of textual content (e.g., a restaurant review)
would have been equally obvious over any other type of textual
content, as far as the structure is concerned, because the content
in no way changes the apparatus structure and/or function.
Appellant also argues that the apparatus in CyberDiner is not
“wireless,” as required by claim 1, because the apparatus of
CyberDiner must be plugged in (referring to paragraph 3 of
CyberDiner).
We remain unconvinced of unobviousness. The examiner has
acknowledged this difference from CyberDiner and reasonably
explains that because such connections are “well known,” it would
have been obvious to connect a computer to a network in a
“wireless” manner. We note that appellant never disputes the
examiner’s assertion that such “wireless” connections are “well
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known” nor does appellant offer any argument showing any error in
the examiner’s position as to why it would have been obvious to
artisans to modify the teachings of CyberDiner to provide for
wireless connections. Appellant’s mere recitation of a difference,
without a patentable distinction, does not constitute a convincing
argument for unobviousness.
Further, appellant argues that the system of CyberDiner is
“structurally different” from the system of claim 1 (brief-page 9).
However, appellant never points out what those “structural
differences” are. Clearly, the nature of the information being
entered into the apparatus does not constitute a “structural
difference.”
Having considered each and every one of appellant’s arguments,
but finding none convincing of patentability, we will sustain the
rejection of claim 1 under 35 U.S.C. §103.
We also will sustain the rejection of claims 3-7 under 35
U.S.C. §103.
Claim 3 calls for the network being the Internet. Clearly,
CyberDiner discloses the network as being the Internet (second
paragraph). As for appellant’s argument that the information
remotely received in CyberDiner not being information regarding a
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restaurant, as we found supra, the specific information sent is
immaterial to the functioning of the apparatus.
Claim 4 recites that information is displayed on the display
means simultaneously as the information is input to the apparatus.
Appellant argues that CyberDiner merely teaches a system where
patrons may view Internet pages and send e-mail. However, it is
clear to us that even in merely sending e-mail, as the information
comprising the written message is input, via a keyboard, this
information is simultaneously displayed on the display screen.
Appellant also argues the type of information again. Again, the
type of information input/sent is immaterial and/or obvious.
Claim 5 calls for a receiving means for receiving the
information transmitted by the apparatus in the restaurant.
Clearly, any information sent by the apparatus of CyberDiner, e.g.,
an e-mail message, is received by someone somewhere. There is a
receiving means at whatever location the message is received.
Claim 6 calls for an input means for inputting the information
into the apparatus. Clearly, a keyboard, for example, inputting
the information into the apparatus of CyberDiner is such an “input
means.”
Claim 7 recites that the information is posted on an Internet
website. Appellant argues that CyberDiner does not teach or
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suggest posting restaurant information on an Internet website.
However, as the examiner explains, CyberDiner’s apparatus is
“capable” of performing this function as it posts other information
on the Internet. Note, since the apparatus in CyberDiner clearly
“provides full Internet access” (paragraph 2), then it is capable
of reaching any Internet website, including websites wherein
posting is permitted. The posting of “restaurant information” does
not patentably distinguish over the posting of any other type of
information on the Internet via the CyberDiner apparatus.
The examiner’s decision rejecting claims 1 and 3-7 under 35
U.S.C. §103 is affirmed.

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No time period for taking any subsequent action in connection

with this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

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