Ex Parte Mettke

Board of Patent Appeals and Interferences

Sep 30, 2008

09134831 (B.P.A.I. Sep. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD P. METTKE
____________
Appeal 2008-0610
Reissue Application 09/134,831
Patent 5,602,905
Technology Center 2600
____________
Decided: September 30, 2008]
____________
Before LEE E. BARRETT, JAMESON LEE, and SALLY C. MEDLEY,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claim 6. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We affirm.

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REISSUE and PROTESTS
This application was originally filed on August 17, 1998, for reissue
of U.S. Patent No. 5,602,905 (the '905 patent), entitled "On Line
Communication Terminal/Apparatus," by inventor Richard P. Mettke, issued
February 11, 1997, based on Application 08/376,247 ('247 application),
filed January 23, 1995. The reissue declaration by Mr. Mettke states that he
believes the patent to be wholly or partly inoperative or invalid by reason of
claiming less than he had a right to claim, in particular, because he removed
the word "Internet" from the specification and the claims without submitting
additional claims directed to an online communications terminal for
accessing the Internet.
Protests to the reissue were filed under 37 CFR § 1.291(a) by:
(1) TouchNet Information Systems, Inc. on November 4, 1998; (2) North
Communications, Inc. on March 31, 1999; and (3) Griffes Consulting, SA,
on behalf of Landis & Gyr Communications on August 11, 1999.

RELATED LITIGATION
Mettke v. Hewlett Packard, Co. and North Communications, Inc.,
No. CV 97 TMP 3160 E (N.D. Ala. filed December 8, 1997), was dismissed
with prejudice by Order entered December 8, 1999.
Mettke v. TouchNet Information Systems, Inc., No. CV 98 PT 0596 E
(N.D. Ala. filed March 16, 1998), was dismissed with prejudice by Order
entered September 21, 1998.
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PRIOR APPEAL and RCE AMENDMENTS
A prior appeal in this reissue application, Appeal 2006-0625, was
decided August 31, 2006, in which the Board affirmed the rejection of
claims 6-9 over 35 U.S.C. § 103(a), affirmed the rejection of claim 7 under
§ 112, first paragraph, for lack of written description, and entered a new
ground of rejection of claims 6-9 under § 103(a). Appellant was informed
that the new ground of rejection was not considered final for purposes of
judicial review and that Appellant had the choice to reopen prosecution or to
request rehearing (Appeal 2006-0625, p. 59). Appellant elected to file a
request for continued examination (RCE) under 37 C.F.R. § 1.114 on
October 25, 2006, and prosecution on the merits was reopened.
In the RCE, Appellant canceled dependent claims 7-9 and amended
the sole independent claim 6 to delete several limitations. The Examiner
maintains the rejections in Appeal 2006-0625.

BACKGROUND
The original '905 patent application, the '247 application, as filed,
disclosed a public pay-for-use terminal for creating, sending, and receiving
facsimiles; word processing operations; e-mail operations; and accessing
online service providers (such as Prodigy and CompuServe) and Internet
providers. All but three mentions of the Internet were canceled. The '905
patent no longer describes facsimiles, e-mail, word processing, or the growth
of the Internet and use of the Internet for personal and leisure activities. The
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claimed invention and the applied prior art will be better understood in the
context of the original disclosure of a general purpose public terminal.
The background of the invention the '247 Application, as originally
filed, describes (p. 2):
In the past few years there has been a remarkable growth in the
use of commercial on-line service providers (I.E. PRODIGY,
COMPUSERVE, AMERICAN ON-LINE, and DELPHI), Internet
providers and use of FAX machines. The use of the above listed
services are normally conducted in the home or office.

Many businesses use E-mail (through an on line service or the
Internet) to conduct day to day operations . . . . In addition,
businesses constantly draw from the wealth of data bases of
information available from the on-line services and the Internet.

Commercial and Internet on-line members also access the
services for personal and leisure activities . . . . These services are
generally accessed from fixed site locations at home or in the office.
Although, portable terminals (lap top computers) with modems are
available; they are often cumbersome and are not user friendly for a
travelling business people or other users of on-line services or the
Internet on the road.

The current pay as you use FAX machine requires users to have
a hard copy document to send; and virtually none are able to receive
in a user friendly configuration. In many situations, it is impractical
for a user to have a hard copy document in hand to send. This
invention will allow a user to create a document on screen and FAX it
out, as well as provide for a header and print out a copy of the
message sent. A telephone will also be located in the terminal cubicle
to instruct the sender to transmit a FAX to the terminal location.

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An added feature of the terminal would allow for minor word
processing at its terminal. This would be a highly desirable service
for business people/individuals on the go that would require its
service. . . .

The '247 application, as originally filed, described that "(b) Users can
create, send and receive FAX's from the terminal" (p. 4) and "(c) Users can
conduct word processing operations and send the file via e-mail to another
fixed terminal" (p. 4), but these applications were deleted (note the omission
of (b) and (c) in the '905 patent at col. 2, l. 13).
The apparatus is a "[t]erminal device which is comprised of the
monitor, keyboard w/mouse, central processing unit w/internal modem
(14.4-28 BPS), integrating software, laser printer, credit card swiping
device, telephone and telephone lines" ('905 patent, col. 2, ll. 42-46). "Users
will pay for the use of the terminal using a credit card swipe apparatus. The
user will be charged for use of the terminal, telephone line use charges and
additional charges by the commercial on-line service or internet provider."
(Id. at col. 2, ll. 16-20.)

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THE CLAIM
Claim 6, the sole claim, is reproduced below.

6. A public on line Internet terminal comprising:

a central processing unit (CPU);

a video display monitor coupled to the CPU;

a keyboard for providing user interface coupled to the CPU;

a credit card reader swipe device coupled to the CPU for
accepting payment by a user;

means for accessing the Internet and allow for user interaction;

software installed into the CPU to allow interface with the
Internet and credit card service centers; and

a printer coupled to the CPU.

THE REFERENCES

Rawn Shah, Suggestions for Information Kiosk Systems using the
World Wide Web, http://www.rtd.com/people/rawn/kiosk-paper.html
(April 30, 1994), download date 2/3/99, pp. 1-5 (Exhibit I to Protest
by North Communications, Inc.) (hereinafter "Shah").

TOUCHFAX AMERICA, video tape recorded May 14, 1993, and
distributed by TouchFax Information Services as advertising at the
May 1993 Comdex in Atlanta, Georgia, 1993, TouchFax Information
Services, Inc., (Exhibit C to TouchNet Protest) (Artifact No.
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09134831VA), including six printouts of frames from the video tape
(Exhibit C, 1 to Exhibit C, 6) (Artifact No. 09134831CA) (hereinafter
"Exhibit C").

TouchFax Network Topography Diagram, 1991 TouchFax
Information Systems, Inc. (Exhibit D to TouchNet Protest)
(hereinafter "Exhibit D").

Allen Weiner, TouchFax Provides the Ultimate In Place-Based
Interactivity, Interactive World (October 1992), pp. 48-49 (Exhibit E
to TouchNet Protest) (hereinafter "Exhibit E").

VISION . . . POWER . . . VERSATILITY, F700 Public
Communications Terminal brochure, TouchFax Information Systems,
Inc. (1991) (Exhibit F to TouchNet Protest) (hereinafter "Exhibit F").

Landis & Gyr, ISDN console, Public telephone and telematic console,
available in 1988 (Exhibit C to Protest of Griffes Consulting SA)
(hereinafter "L&G ISDN console").

Paul Gilster, The Internet Navigator (2d ed. John Wiley & Sons, Inc.
1994 ), pp. 15 18, 24, 25, 56, 57, 195, 221-225 (hereinafter "Internet
Navigator").

Andrew Cantor, Aliens Among Us, Internet World, Nov/Dec 1994,
pp. cover, index (2 pages), 82-84 (hereinafter "Aliens").

On Haiti, Shooting From the Lip, Washington Post, October 6, 1994,
from Lexis/Nexis (hereinafter "On Haiti").

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THE REJECTIONS
The Examiner maintains the rejections in Appeal 2006-0625.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Exhibit E, Exhibit F, and Shah. This corresponds to the Examiner's ground
of rejection affirmed in Appeal 2006-0625.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Exhibit C, Exhibit D, Exhibit E, Exhibit F, L&G ISDN console, Internet
Navigator, Aliens, and On Haiti. This corresponds to the new ground of
rejection entered by the Board in Appeal 2006-0625.

THE ISSUES
The general issue is whether Appellant has shown reversible error in
the rejections of claim 6. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
Specifically, the argued issues are:
(1) Are Exhibits C, D, E, F, and the L&G ISDN console references
nonanalogous art? See Scope of the art under Findings of Fact.
(2) Does e-mail access to the Internet "allow for user interaction"?
See discussion of Aliens under Content of the references in Findings of Fact.
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(3) Is a reference invalid because it has only 26 words? See
discussion of On Haiti under Content of the references in Findings of Fact.
(4) Does Shah teach a kiosk connected to the Internet? See discussion
of Shah under Content of the references under Findings of Fact.
(5) Is Appellant's "evidence" of nonobviousness entitled to any
weight? See Objective evidence of nonobviousness under Findings of Fact.
(6) Is the fact that Exhibits C-F are all from the same company and
describe variations of the same pay-for-use terminal insufficient motivation
to combine their teachings? See Motivation under Findings of Fact.
(7) Does the fact that Exhibits C-F describes a terminal that was never
actually built require that the references be disregarded? See Exhibits C-F
are good for all they describe under Discussion.
(8) Did the Board have authority to enter a new ground of rejection in
Appeal 2006-0625? See The Board has authority to enter new grounds of
rejection under Discussion.
(9) Does the statement that "'The TouchFax is designed to emulate
exactly what a person will be able to use in their homes,' says Massey"
(Exhibit E) provide a suggestion to add Internet access to a pay-for-use
terminal when Internet access is common in homes? See Rejection over
Exhibit E, Exhibit F, and Shah under Discussion.

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PRINCIPLES OF LAW
"[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art."
In re Keller, 642 F.2d 413, 425 (CCPA 1981). A rejection under 35 U.S.C.
§ 103(a) is based on the following factual determinations: (1) the scope and
content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4) any
objective indicia of non-obviousness. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)
(citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)). Whether there is
motivation to combine or modify the references is a question of fact drawing
on the factors of Graham. See McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1351-52 (Fed. Cir. 2001).
"To facilitate review [of an obviousness determination], this analysis
should be made explicit. See In re Kahn, 441 F.3d 977, 988 (CA Fed. 2006)
('[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness'). As our precedents make clear, however, the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR Int'l Co.
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v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). "A person of ordinary skill is
also a person of ordinary creativity, not an automaton." Id. at 1742.

FINDINGS OF FACT
Scope of the art
References must be within the scope of the prior art, i.e., they must be
from analogous art. See In re Deminski, 796 F.2d 436, 442, 230 USPQ 313,
315 (Fed. Cir. 1986) (the reference must either be in the field of the
applicant's endeavor or, if not, then be reasonably pertinent to the particular
problem with which the inventor was concerned); Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1535, 218 USPQ 871, 876 (Fed. Cir. 1983)
("The scope of the prior art has been defined as that 'reasonably pertinent to
the particular problem with which the inventor was involved'.").
Appellant's disclosed field of endeavor appears to be best defined as
pay-for-use public communication terminals because the '905 patent
discloses a pay-for-use public access terminal for communicating with
commercial online service providers and Internet providers and because the
'905 patent application as originally filed also disclosed that the terminal
would send and receive facsimiles and e-mails. The particular problem with
which Appellant was concerned in claim 6 was a pay-per-use public
communication terminal for providing access to the Internet.
Exhibits C, D, E, F, L&G ISDN console, and On Haiti relate to
pay-for-use public communication terminals and are at least within the
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inventor's field of endeavor. Shah relates to providing Internet access in a
public access kiosk and is in the field of public access communications
terminals and is at least pertinent to the problem of providing Internet access
in a public access terminal. The Internet Navigator and Aliens relate to
online service providers and access to the Internet and are reasonably
pertinent to the problem of providing Internet access. Thus, we find the
references to be within the scope of the prior art.
Appellant argues that Exhibits C, D, E, F, and the L&G ISDN console
are not within the field of endeavor and are not pertinent to the rejection
(Br. 13). It is argued that the definition of the field of endeavor as
"pay-per-use public communication terminals" is too broad because
"[c]ommunications relates to many sub areas, facsimile machines,
telephones, televisions, cellular phone and global positioning systems just to
mention some of the areas. A more narrowed (and correct) field of endeavor
would have been 'Internet.'" (Br. 13.)
These arguments define the field of the inventor's endeavor much too
narrowly. A public pay-for-use terminal having Internet access is within the
broad field of endeavor of pay-for-use public communications terminals.
Moreover, the '905 patent, as originally filed, described a general purpose
pay-for-use public terminal having many of the same functions described in
Exhibits C, D, E, F, and L&G ISDN console, and the similarity in structures
indicates that they are all within the scope of the relevant prior art.

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Content of the references
Exhibit C
Exhibit C is a video tape recorded May 14, 1993, and distributed by
TouchFax Information Services as advertising at the May 1993 Comdex
trade show in Atlanta, Georgia, and Exhibits C, 1 to C, 6 are printouts of
selected video frames. Exhibit C is a prior art "printed publication" under
35 U.S.C. § 102(b), see In re Wyer, 655 F.2d 221, 226 (CCPA 1981) (the
key to a "printed publication" is the "probability of dissemination" rather
than the form), or at least is prior art "known by others in this country" under
§ 102(a). The video tape advertises TouchFax kiosks for a variety of
purposes including pay-per-use access to the Prodigy online computer
service provider and for connection to the Internet. No kiosks had been built
to actually perform these functions.1 Exhibit C, 1 shows the opening title

1 See Deposition of Daniel Toughey, President of TouchFax, in Civil
Action No. 98-PT-596-E, pp. 44-45, indicating that video was a marketing
tool, intended to show possible uses:

Q: (By Mr. Polasek [Attorney for Appellant]) Now that we have been
able to stop the tape, it shows a rectangular gold block labled [sic]
internet. I think it is right at -- I thought it was the 36 second mark.
It may be 34.
MR. STITT [Attorney for Defendant]: It appears to be 34.

Q: (By Mr. Polasek) Did that provide for access to the internet? If the
user was to touch that icon, I guess is what you would call it, that
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and production date of May 14, 1993. Exhibit C, 2 shows a customer
inserting a credit card into the TouchFax unit to activate the unit.
Exhibit C, 3 advertises connection to the Prodigy Information Service, a
well-known commercial online service provider in 1993. Exhibit C, 4
advertises connection to the Internet. Exhibit C, 5 shows a user at a
TouchFax unit using the keyboard and showing the credit card reader
device. Exhibit C, 6 shows a second display of the Prodigy Information
Service being offered as an online connection option.

Exhibit D
Exhibit D is a diagram teaching use of a TF750 Public Terminal as a
data and communications system. Exhibit D teaches a system which
includes a "TouchFax Electronic Library" which serves as a "Gateway to
Fax & Computer Services." The computer services include an "on-line
interactive data base" including "CompuServe, Prodigy" online providers.

portion of the TouchNet screen, does that enable a user to gain
internet access or do you know?

A: Not at that time, no. That was like MCI mail above it. Those are
possible uses for the system. And so the reason we built this video
was to sell our systems. And so, again, the vision of TouchFax,
TouchNet was its multipurpose information communication terminal
that, depending on what our customers, whoever owned these things
wanted to provide, they could provide that type of information.
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Exhibit E
Exhibit E discloses a free-standing pay-for-use TouchFax TF750
public communications terminal (kiosk) for locations such as airports,
hotels, truck stops, and supermarkets (p. 48). Services include phone, fax,
computer, word processing, copying, and information services (p. 48). The
TouchFax terminal has a microprocessor, a touch-screen monitor, a data port
for modem and laptop connections, a full-size keyboard, and a laser printer
(p. 49, left col.). "Payment for services is made by using credit card or other
magnetic card such as a telephone calling card. " (P. 49, left col.) The user
can connect via a modem to the Official Airline Guide (OAG) database and
receive a facsimile report (p. 49, right col.). Exhibit E states that "'The
TouchFax is designed to emulate exactly what a person will be able to use in
their homes,' says Massey" (p. 49).

Exhibit F
Exhibit F discloses a "TF700 Public Communications Terminal from
TouchFax," in a stand-alone housing including a telephone, speaker,
touch-screen monitor, a credit card reader for payment of services, a
full-sized keyboard for "computer database access or word processing," an
option panel, a flatbed scanner, a 386 CPU, and a laser printer. Services
include "telephone, send or receive a fax, photocopying, word processing
and laser printing, and access to a growing number of information databases
from Wall Street news to international sports scores." Exhibits E and F
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essentially describe the same terminal, the differences being that the TF750
had a sloped countertop instead of the flat countertop in the TF700, and the
TF750 had the keyboard in the countertop instead of a motorized retractable
keyboard in the TF700. See Toughey deposition, pp. 55-59 (Exhibits 12 and
7 in Toughey deposition correspond to Exhibits E and F, respectively, in the
TouchFax protest and this appeal).

Internet Navigator
The Internet Navigator describes that the Internet is a network of
networks, which is made from computers and cables (p. 15). The Internet
provides many different applications or services, such as e-mail, file transfer,
and remote login (pp. 24-25). Commercial online services,2 such as

2 "Online service provider" is defined in "http://en.wikipedia.org/-
wiki/Online_service," where the original meaning is what applied in 1994:

An online service provider, in modern usage refers to an entity which
provides a service online. It can include internet service providers and
web sites, such as Wikipedia's or Usenet (commonly accessed through
Google Groups). In its original more limited definition it referred
only to a commercial computer communication service in which paid
members could dial via a computer modem the service's private
computer network and access various services and information
resources such a bulletin boards, downloadable files and programs,
news articles, chat rooms, and electronic mail services. The term
"online service" was also used in references to these dial-up services.
The traditional dial-up online service differed from the modern
Internet service provider in that they provided a large degree of
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CompuServe, were centralized private networks as opposed to distributed
public networks like the Internet (pp. 17-18). "[C]ommercial providers such
as CompuServe, GEnie, and Prodigy have all made Internet mail access
available" (p. 16; see also, pp. 57, 195; e-mail at pp. 221-225). Thus, many
online service providers, such as Prodigy, provided access to the Internet via
e-mail. The World Wide Web (Web) is a collection of documents linked by
hyperlinks and Uniform Resource Locators (URLs) and is a service that runs
on the Internet.3 Claim 6 recites access to the Internet, not to the Web.

Aliens
Aliens describes that online service providers such as America Online
(AOL), CompuServe, GEnie, and Prodigy were providing access to more
features of the Internet in 1994. It is also stated that many of the services
have offered e-mail gateways to the Internet for some time; e.g., "Like the
other on-line services, CompuServe has offered an e-mail gateway to the
content that was only accessible by those who subscribed to the online
service, while ISP mostly serves to provide access to the internet and
generally provides little if any exclusive content of its own.

3 "[T]he Internet and the World Wide Web are not synonymous: the
Internet is a collection of interconnected computer networks, linked by
copper wires, fiber-optic cables, wireless connections etc.; the Web is a
collection of interconnected documents, linked by hyperlinks and URLs, and
is accessible using the Internet. The Internet also provides many other
services including e-mail, file sharing and others . . . ."
"http://en.wikipedia.org/wiki/Internet."
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Internet for some time . . ." (p. 83); "GEnie has been offering an e-mail
gateway to and from the Internet for several years, but nothing more"
(p. 84); "Prodigy already has an e-mail gateway to the Internet . . ." (p. 84).
"E-mail" service over the Internet is "access to the Internet," as recited in
claim 6. Aliens describes that some online services charged hourly fees for
Internet services (p. 84).
Appellant argues that "access to the Internet" using e-mail is not
enough, and asks "What about interface?" (Br. 11). It is argued that
"Claim 6 states 'accessing the Internet', as well as interfacing with the
Internet" (Br. 11). "Clearly the claims in 6 say access and interface with the
Internet. You either have access and interface or not." (Br. 11.)
Appellant ignores that Aliens describes that online service providers
were providing more features of the Internet in 1994 than just e-mail and
that there inherently had to be some program to "allow for user interaction."
For example, Aliens describes that "AOL now offers a Gopher client and
limited access to some WAIS databases" (p. 82), which are both Internet
services, and "[t]he two applications have been combined under a single
interface: a Gopher-like series of menus that present either text files or other
menus" (p. 82). Thus, Aliens expressly describes the claim limitation of
"means for accessing the Internet and allow for user interaction" from a
commercial online service provider in 1994.
In addition, Appellant has not shown why e-mail service on the
Internet does not meet the limitation of "means for accessing the Internet and
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allow for user interaction" in claim 6. The phrase "allow for user
interaction" refers to a function, not an "interface," as argued, and Appellant
does not point out where this limitation is defined in the '905 patent.
Appellant does not dispute that the hardware, program, and service provider
for e-mail service over the Internet were "means for accessing the Internet."
The limitation "means for . . . allow for user interaction" requires no more
than structure for user interaction, for example, a monitor and program to
allow viewing a e-mail on the monitor and a keyboard for sending a
response. Claim 6 recites "accessing the Internet" and the Internet is a
network of networks—claim 6 does not recite accessing any particular
application on the Internet. In any case, Aliens is only one of several
references in the obviousness combination that indicates it was known to
provide access to the Internet.

L&G ISDN console
L&G ISDN console describes a free-standing ISDN (Integrated
Services Digital Network, an international standard for switched, digital
dial-up telephone service for voice and data) payphone capable of accessing
Videotex services available to the general public. Videotex was the first
attempt at interactive information delivery for shopping, banking, news, etc.
Videotex uses a box and keyboard associated with a video display. Data are
delivered by phone line and stored in the box as predefined frames with
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limited graphics that are retrieved by menu.4 The payphone has a telephone
access node (required in a payphone); a credit card reader; a video display
monitor; a keyboard; a modem (inherently required to connect to the
Videotex service); means (software and hardware) to access commercial
online Videotex services; and must contain a microprocessor. "The
Landis & Gyr ISDN console enables the public to obtain access to the usual
services and sources of information and to new services, all via the same
terminal." "For administration of calls made on credit, the Landis & Gyr
console connects itself to a specific centralized system, in particular for the
phases of authorization and, at the end of the session, for the collection of
the relevant data." "[Videotex] services are selected by means of
instructions entered via the keyboard using a syntax determined by well
defined rules and the requested data are presented in the form of full pages
in colour." No printer is disclosed.
Landis & Gyr is an exclusive European distributor of the TouchFax
terminals (Exhibit F). Thus, we find that the teachings of Exhibits C-F are
related to the teachings of the L&G ISDN console.
Appellant agrees (Br. 12) with a statement by the Examiner that the
L&G ISDN console "lack certain elements in the claims, such as a printer,
touch screen interface and Internet access" (Office Action August 24, 1999).

4 See "http://en.wikipedia.org/wiki/Videotex."
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To the extent this statement can be construed as an argument that
L&G ISDN console is not relevant, it does not address the rejection as a
whole and does not address the fact that L&G ISDN console teaches,
inter alia, connection to a centralized credit card center.

On Haiti
On Haiti describes that "'Cyberia' -- a 'cyberspace cafe' -- has opened
recently in central London offering coffee, cakes and connection to the
Internet. Connect charge: 1.95 British pounds per half-hour." The
computers for this cafe inherently must have a CPU, monitor, keyboard,
modem, means for accessing the Internet and allowing user interaction, and
software installed into the CPU to allow interface with the Internet. Thus,
On Haiti discloses payment for use of a terminal to access the Internet, but
does not describe payment using a credit card reader swipe device connected
to a credit card service center, and does not describe a printer.
Appellant argues that On Haiti has only 26 words which is not enough
information to assess this prior art (Br. 12).
Appellant cites no authority for the proposition that prior art has to
have a certain minimum length. On Haiti expressly discloses charging for
access to the Internet from a public computer and Appellant has not shown
how these words are meaningless to one of ordinary skill in the art.

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Shah
Shah discloses a kiosk based information system using the World
Wide Web on the Internet as an interface (abstract). Shah discloses that the
advantages of using the Web are: its popularity, it is already a multimedia
tool, the user will have access to the many services on the Internet, and it is
an accepted standard as opposed to a proprietary system (pp. 1-2). The
kiosk includes input, output, processing, and network connection hardware,
and Web browser software (p. 2 under "The Access Interface"). Shah states
(p. 5): "Commercial organizations may also wish to charge customers for
access to specific documents or services. The concept of registered users
and billing may be built into the server."
We stated in Appeal 2006-0625 that "Shah discloses a kiosk-based
information system using the World Wide Web on the Internet as an
interface (abstract)" (op. 27). Appellant argues that "Shah teaches away
from accessing the Internet" (Br. 17) because Shah only wants to use a
World Wide Web (Web) "interface" or browser and that when Shah refers to
a "kiosk-based" system, he means a system which is not connected to the
Internet (Br. 17-24).
Appellant misapprehends "Web" in Shah to mean "Web browser."
The title of Shah, "Suggestions for Information Kiosk Systems using the
World Wide Web," describes an information kiosk for providing information
using the Web, not just a Web user interface as argued by Appellant.
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Shah specifically describes the advantages of using the Web for an
information kiosk system. Shah states:
The first question that should be asked is why one would use the
World Wide Web as a design for a kiosk-based information system.
We have identified the reasons why the Web is ideally suited for this
application:

• the Web has proven itself as a successful networked information
system through its popularity on the Internet.
• a multimedia tool is the primary type of program used by
information systems because of the combination of text,
graphics and sound are more appealing. The many different
Web browsers have these capabilities already.
• the Web is part of the Internet. This allows users access to the
many services on the Internet.
• the ability of the Web to access other programs and services
allows programmers to extend the capabilities of the server.
• the Web is a widely accepted standard as opposed to proprietary
commercial multimedia systems which holds promise for its
growth and development.

(Shah, "The Effectiveness of the World Wide Web as Kiosk-based
Information System," pp. 1-2) When Shah asks "why would one use the
Web as a design for a kiosk-based information system," he refers to the
"Web," not a "Web browser." Shah states that one of "the reasons why the
Web is ideally suited for this application [of a kiosk-based information
system]" (p. 1.) is because "the Web is part of the Internet. This allows
users access to the many services on the Internet" (p. 2). Appellant does not
explain how this can be construed to mean anything other than the kiosk
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users having access to the Web and Internet. Shah summarizes that "[t]he
Web naturally lends itself to a distributed kiosk-based information system
. . ." (Shah, "Abstract," p. 1), which indicates that the Web is being used for
a "distributed" information system, not just a Web browser as argued.
Shah discloses that a "Kiosk-based Information system has many
requirements to create the most user-friendly interface while maintaining
security and functionality" (Shah, "Introduction," p. 1), and describes
requirements for a user-friendly interface (Shah, "The Access Interface,"
p. 2-3, including "Physical Requirements" and "User Interface Program")
and other requirements (Shah, "The Server," "Functionality," "Storage and
Transfer," "Security," and "Control," pp. 3-5). Shah describes a Web
browser as part of the overall kiosk design. However, Shah never indicates
that the Web browser is not connected to the Web or Internet.
Shah indicates that kiosks may store information special to that
information kiosk (Shah, "Who will use these systems?," p. 2), but this does
not teach away from access to the Internet. Shah states that "[t]here has
been varied interest by commercial and non-commercial organizations in the
World Wide Web" (Shah, "Who will use these systems?"), further indicating
that the kiosks will use the Web. Shah states that each kiosk is connected to
a network (Shah, "The Server," p. 3), which indicates that the kiosk is not a
self-contained information system. Shah states that "[t]he server should be
able to access foreign databases which act as storehouses of raw data" (Shah,
"Functionality," p. 4), which, taken in conjunction with the description of the
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use of the Web, indicates that the data is accessed over the Internet. Shah
also states that "data managers may wish to restrict certain areas of their
Webspace dependent upon their own criteria" (Shah, "Security," p. 5) and
Appellant has not said what "Webspace" can refer to other than a Web site
on the Internet. Finally, Shah states: "Each installation should be able to
decide which URI's are accessible through their server. Some installations
may decide that they do not wish to provide their kiosks with access to the
'news' or 'mailto' services." (Shah, "Control," p. 5) The reference to URIs
(Uniform Resource Identifiers) indicates access to the Web on the Internet.
Appellant apparently interprets "kiosk-based" to mean that there is no
Internet access, i.e., that all the information is stored locally or on a network
connected to the kiosk with no connection to the Internet. However, a
"kiosk-based information system" just refers to an information system
located in a kiosk (an interactive computer terminal available for public use
usually contained in a housing) as opposed at home. Nothing in "kiosk-
based information system" expressly or impliedly suggests that the
information system excludes connection to the Web or Internet. Shah's
discussion of "The Effectiveness of the World Wide Web as Kiosk-based
Information System" indicates that there is access to the Web or Internet.
Appellant interprets "interface" in the statement "[t]he World Wide
Web has provided the Internet with an easy interface" (Shah, second para. of
abstract), to refer to a "user interface" or "Web browser." However, the
sentence actually says that the Web, not a Web browser, is an interface to
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the Internet. Although Shah's kiosk design includes a Web browser, the
browser is not limited to information stored on a private network.
Appellant argues that when Shah describes "The Effectiveness of the
World Wide Web as Kiosk-based Information System," "he clearly is talking
about the Web and it's user interface" (emphasis omitted) (Br. 19) and "it is
only in the context of the Web (Browser) and its success on the Internet, not
accessing the Internet" (Br. 19). We disagree. Shaw discusses "the reasons
why the Web is ideally suited for this application [of a kiosk-based
information system]" (Shah, "The Effectiveness of the World Wide Web as
Kiosk-based Information System"), which clearly indicates that the Web
(Internet) is being used, not just a system that is accessed by a Web browser.
As noted by the Examiner (Final Rejection 6), Shah states that one reason
why the Web is ideally suited for a kiosk-based information system is
because "the Web is part of the Internet. This allows users access to the
many services on the Internet" (id.). Appellant fails to explain how this can
be interpreted in any other way than using the kiosk to access the Internet.
Therefore, Shah teaches a public kiosk connected to the Web/Internet.

Differences
Rejection over Exhibit E, Exhibit F, and Shah
The Examiner found that the difference between the subject matter of
claim 6 and Exhibit E is that Exhibit E does not expressly disclose
connecting the credit card reader to a credit card center.
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The Examiner found that the difference between the subject matter of
claim 6 and the combination of Exhibits E and F is that Exhibits E and F do
not describe accessing and interfacing with the Internet.

Rejection over Exhibits C, D, E, F, L&G ISDN console, Internet
Navigator, Aliens, and On Haiti
In the new ground of rejection in Appeal 2006-0625, we found the
differences between the subject matter of claim 6 and the pay-for-use public
TouchFax terminal of Exhibits E and F are that Exhibits E and F: (1) do not
expressly disclose connecting the credit card reader to a credit card center;
(2) do not disclose providing access to the Internet; and, so, (3) do not
disclose charging for using the computer terminal to access to the Internet.
We also found in the new ground of rejection that the differences
between the subject matter of claim 6 and On Haiti are that On Haiti does
not describe: (1) payment using a credit card via a credit card reader swipe
device connected to a credit card service center; and (2) a printer.

Level of ordinary skill in the art
The level of ordinary skill in the art is best evidenced by the
references. See In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) ("the PTO
usually must evaluate both the scope and content of the prior art and the
level of ordinary skill solely on the cold words of the literature");
In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the Board did not err
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in adopting the approach that the level of skill in the art was best determined
by the references of record).
The references of record demonstrate that those of ordinary skill in the
relevant arts at the time of the filing of the '905 patent knew: (1) pay-for-use
public communications terminals providing for pay-for-use telephone,
facsimile, computer, word processing, databases, and communication
services were well known, as evidenced by Exhibits C-F and L&G ISDN
console; (2) access to the Internet was common in 1994 as evidenced by
Internet Navigator, Aliens, On Haiti, and the background of the '905 patent;
(3) commercial online service providers, such as CompuServe, AOL, and
Prodigy, provided access to e-mail and other Internet services prior to
Appellant's filing date, as evidenced by Internet Navigator and Aliens; and
(4) charging for use of a public computer terminal to access the Internet was
known as evidenced by On Haiti and Shah.
In addition, the level of ordinary skill in the art is evidenced by a letter
by Mr. Gregory W. Adank submitted and relied upon by Appellant in his
previous appeal (Appendix E to Appeal Brief in Appeal 2006-0625).
Mr. Adank stated (p. 1):
Upon complete review of your original patent application
(8/376247) and patent number 5,602,905, reissue amendment filed on
DEC 11, 2001, and USPTO Office Action dated MAR 12, 2002
(Examiner Woo), I would submit to you the following observations as
someone skilled in the art.

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General Observations: The patent application articulates well
a multitude of automation capabilities that one should considered
"commonplace" in 1994. Typical home and business computers (Intel
based 286/386 and other compatible class processors) were capable of
performing all tasks and features described in your background
description of prior art. Specifically, those systems were capable of
sending and receiving faxes via internal or external modem,
generating electronic documents and printing or faxing them to a
remote terminal, communicate with on-line service providers
(Prodigy, Compuserve, AOL), as well as to be used to communicate
on the Internet via Internet service provider (ISP). The ability to
couple a credit card reading device to a computer terminal was also
common place during this time as many point-of-sale devices (i.e.
cash registers) were in fact systems built from the core components
found inside a computer terminal.

Thus, Appellant's own expert has stated that operation of the individual
claim elements were known to those of ordinary skill in the art.

Objective evidence of nonobviousness
Objective evidence of nonobviousness (also called "secondary
considerations") must always be considered in making an obviousness
decision, Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed.
Cir. 1983), although it need not be necessarily conclusive, Ashland Oil, Inc.
v. Delta Resins & Refrac., Inc., 776 F.2d 281, 306, 227 USPQ 657, 674
(Fed. Cir. 1985). A "nexus" is required between the merits of the claimed
invention and the evidence of secondary considerations in order for the
evidence to be given substantial weight in an obviousness decision.
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Stratoflex, 713 F.2d at 1539. A "nexus" is a legally and factually sufficient
connection between the objective evidence and the claimed invention, such
that the objective evidence should be considered in the determination of
nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1392 (Fed. Cir. 1988). The burden of proving a nexus is on
the applicant. See Ex parte Remark, 15 USPQ2d 1498, 1503 (BPAI 1990)
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) ("In the ex parte process of
examining a patent application, however, the PTO lacks the means or
resources to gather evidence which supports or refutes the applicant's
assertion that the sales constitute commercial success.").
The scope of the "[o]bjective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support." In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). The objective
evidence is not commensurate in scope (coextensive) with the claimed
subject matter if the claims are broader in scope than the scope of the
objective evidence, e.g., if the product included elements or features not
recited in the claims which may be responsible for the commercial success
or praise. See Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229-30
(D.D.C. 1990) (and cases cited therein), aff'd, 459 F.2d 226 (Fed. Cir. 1992).

Appellant's "evidence" of nonobviousness is not entitled to any weight
Appellant argues that the "the results achieved by this invention are
new (at the time of the original disclosure), unexpected, superior,
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unsuggested by any of the relied on prior art. Specifically, a public access
terminal allowing interface and access to the Internet and allowing for use a
credit card for use of the terminal or other activity." (Br. 25.)
Mere allegations of "unexpected results" are not sufficient to show
nonobviousness. An "unexpected result" exists where the claimed invention
achieves a different or greater result than the combination of prior art
references would have suggested to the artisan, and is seldom a factor in the
predictable mechanical and electrical technologies. Here, accessing the
Internet, paying for use of a public communications terminal, and even
paying for access to the Internet were known. The addition of access to the
Internet to a known pay-for-use public terminal produces a completely
predictable result and is not evidence of nonobviousness.
Appellant argues that the invention solves a different problem than the
references, citing In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed. Cir.
1988). "Specifically, a public access terminal allowing interface and access
to the Internet and allowing for use a credit card for use of the terminal or
other activity. No prior art reference implicitly or explicitly had the
capabilities described in the appellant's claims at the time of the appellant's
disclosure in January 1995." (Br. 25-26.)
Appellant does not state what different problem was solved.
Nevertheless, an invention may be obvious for reasons the inventor did not
contemplate. See In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc)
(overruling-in-part In re Wright). As stated in KSR, obviousness is not
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limited only to consideration of the problem the patentee was trying to solve,
and "[u]nder the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed," KSR,
127 S. Ct. at 1742. Thus, the problem that was solved is not conclusive
evidence of nonobviousness. Appellant's argument that no single prior art
reference met the limitations of claim 6 is an anticipation argument and does
not address the obviousness ground of rejection.
Appellant argues that "[t]he prior art references do not contain any
suggestion (express or implied) that they be combined, or that they be
combined as the examiner and the BPAI suggests" and "[i]t would be
necessary to make modifications, not taught in the prior art, in order to
combine the references in the manner suggested by the examiner" (Br. 26).
These arguments relate to the obviousness rejection and are not
separate evidence of nonobviousness. The obviousness conclusion is fully
supported by motivation in the prior art as will be discussed.
Appellant argues that "[t]he fact that ~ eight references must be
combined in two different methods (eleven counting the examiner) to meet
the claims invention is unequivocal evidence of nonobviousness" (Br. 26).
"The criterion, however, is not the number of references, but what
they would have meant to a person of ordinary skill in the field of the
invention." In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). As
discussed in the analysis, more than the minimum number of references
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were cited to evidence the level of skill in the art and to provide cumulative
evidence of what was known in the art.
Appellant argues:

The Patent (5,602,905) that the applicant is prosecuting for reissue is
referenced as prior art in 81 issued patents. A typical patent is
mentioned as prior art ~ 6-12 times in issued patents. A patent that is
mentioned ~12-30 times as prior art in issued patents is usually
considered a technology leading patent and has a high rating factor for
commercial success. So, I guess a patent that is mentioned 81 times
as prior art in issued patents is a home run technology wise and
commercial wise. This definitely points to nonobviousness.

(Br. 26.)
Appellant cites to no case law or other authority for the proposition
that the number of citations of a patent is evidence of nonobviousness.
Appellant argues failure of others because "[p]rior to the applicant's
January 1995 disclosure, no entity had produced a terminal that contained all
of the elements of the applicant's claims" (Br. 27).
Appellant provides no evidence that others had tried to solve the
problem of a pay-as-you-use terminal for providing Internet access. The
argument is only that no anticipatory reference has been cited, but this is not
persuasive because the rejection is based on obviousness. Allegation of an
unsolved problem is not evidence of unobviousness unless it is shown that
the widespread efforts of skilled workers having knowledge of the prior art
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had failed to find a solution to the problem. In re Allen, 324 F.2d 993, 997
(CCPA 1963).
Appellant argues commercial success based on charts of worldwide
kiosk growth from Summit Research Consulting web site in April 2005.
"Summit Research are considered experts in the Kiosk field. At Appendix D
is an overview of an Internet Kiosk report in 2002 by Summit Research. The
majority of these kiosk employ elements of the appellant's claims." (Br. 27)
The bar charts reproduced in the Summit Research Web page in
Appendix D do not correspond to the charts in the revised appeal brief.
Appellant does not provide any evidence to backup his statement that "[t]he
majority of these kiosk employ elements of the appellant's claims." In any
case, however, even pay-per-use Internet kiosks were commercially
successful. Appellant has not provided the necessary nexus between the
commercial success and the merits of the claimed invention. The scope of
the "[o]bjective evidence of non-obviousness must be commensurate in
scope with the claims which the evidence is offered to support." Tiffin,
448 F.2d at 792. Claim 6 recites only a pay-as-you-use Internet terminal
with a list of elements. Appellant fails to show that any commercial success
was not due to unclaimed elements and features of commercial kiosks, such
as the fact that the elements were in a kiosk housing, the physical
construction of the kiosk and its elements, location of the unit, ease of
operation and use, speed of the Internet connection, price of the kiosk to own
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and operate, price to the customer of using the kiosk, and a multitude of
other factors that go into a successful commercial product.
For the reasons stated above, Appellant's "evidence" of
nonobviousness is not entitled to substantial weight in the obviousness
determination.

Motivation
Rejection over Exhibit E, Exhibit F, and Shah
The Examiner found that the communication software in Exhibit F
would have suggested the use of communication software to communicate
between the credit card reader device in Exhibit E and a credit card center.
The Examiner found that Shah teaches the desirability of providing
access to the Internet in a kiosk-based information system in order to
provide users with the many services on the Internet.

Rejection over Exhibits C, D, E, F, L&G ISDN console, Internet
Navigator, Aliens, and On Haiti
The motivation to combine any of the teachings of TouchFax
Exhibits C, D, E, and F is that all exhibits are from the same corporation,
TouchFax, and expressly teach modifications, variations, and improvements
to a pay-for-use public communications terminal. Thus, the teaching of
Internet access in Exhibit C suggests modifying Exhibits E and F to provide
Internet access, and the teaching on providing access to online service
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providers in Exhibit D suggests modifying Exhibits E and F to provide
access to online service providers.
Since Exhibit C to Exhibit F disclose pay-for-use public terminals,
this suggests payment for use of any service provided by the terminal,
including services that may be added later.
The previous two paragraphs are unchanged from the Board's opinion
in Appeal 2006-0625 (pp. 50-51). Appellant argues in this appeal:

The applicant respectfully disagrees that there is motivation to
combine Exhibits C, D, E, and F and that they expressly teach the
modifications to add Internet access and interface on a point-of-sale
basis. The BPAI does not "show" objectively how the references
teach this modification other than seeing the applicant's disclosure in
January 1995.

(Br. 10.)
Appellant provides no reasons for his disagreement. Exhibits C, D, E,
and F are all from the same corporation and all relate to versions of the same
pay-for-use terminal. One skilled in the art would have been motivated to
combine the teachings in one reference with teaching in another reference
because they are all related to the same terminal apparatus, i.e., there is not
the usual obviousness problem of explaining why one skilled in the art
would have sought to combine two references from unrelated sources. The
rejection discusses the motivation. As note above, we stated that "the
teaching of Internet access in Exhibit C suggests modifying Exhibits E and F
to provide Internet access"; i.e., Exhibit C, 4 expressly teaches providing
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Internet access on a pay-for-use terminal. We also stated that "[s]ince
Exhibit C to Exhibit F disclose pay for use public terminals, this suggests
payment for use of any service provided by the terminal, including services
that may be added later," such as the Internet taught by Exhibit C, 4. To the
extent Appellant's real argument is that there can be no teaching in these
exhibits because there was no working embodiment, this is irrelevant, as
discussed in "Exhibits C-F are good for all they describe," infra. The issue
is what the references would have taught to one skilled in the art.
L&G ISDN console teaches connection of a credit card reader to a
credit card center for authorization and collection of credit card charges,
which expressly provides motivation for connecting credit card readers to a
credit card center, if proof of this common fact is needed. Landis & Gyr is
an exclusive European distributor of the TouchFax terminals (Exhibit F), so
one of ordinary skill in the art would have been aware of the relationship
between the TouchFax terminal of Exhibits C-F and the L&G ISDN console
and have been motivated to combine their respective teachings.
Exhibit E states that "'The TouchFax is designed to emulate exactly
what a person will be able to use in their homes,' says Massey" (p. 49),
which suggests modification of the terminal to provide services on a public
terminal as those services become common at home and business.
On Haiti discloses payment for use of a public terminal to access the
Internet, which expressly provides motivation for charging for Internet
access in other public terminals.
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The Internet Navigator and Aliens teach that online service providers
provided access to e-mail and other services on the Internet in 1994, which
expressly suggests that any access to commercial online service providers in
1994 would have provided access to the Internet.

DISCUSSION
Exhibits C-F are good for all they describe
Appellant argues throughout the brief that the TouchFax terminal
described in Exhibits C, D, E, and F did not actually access the Internet or
commercial online service providers, such as CompuServe and Prodigy, as
of the publication dates, so statements therein are speculative and do not
render claim 6 obvious (Br. 8; Br. 9; Br. 9-10; Br. 10; Br. 13-14; Br. 14;
Br. 15; Br. 16). Appellant notes that the TouchFax terminal was not capable
of accessing the Internet or commercial online service providers as of the
date of the deposition of Daniel J. Toughey, President of TouchNet, on
June 16, 1998, three and one-half years after the '905 patent was filed and
these exhibits merely represent "a concept, experimental, an idea and
marketing tool" (Br. 8; Br. 9). It is apparently Appellant's position that
Exhibits C-F should be disregarded because they do not describe an actual
commercial terminal for accessing the Internet or online service providers.
These arguments are not persuasive of error. There is no requirement
that prior art under 35 U.S.C. § 102 describes an actual working
embodiment. See In re Blake, 352 F.2d 309, 312 (CCPA 1965) ("patents are
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valid as references for whatever they disclose; the statute does not require
commercial use of the invention disclosed therein to qualify the disclosure
for use as a reference"). "Even if a reference discloses an inoperative
device, it is prior art for all that it teaches." Beckman Instruments, Inc. v.
LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Exhibits C-F are
good for all they would have taught or suggested to a person of ordinary
skill in the art at the time of the invention. For example, Exhibit C, 4 shows
a printout of a video frame which advertises connection to the Internet,
which would have taught one skilled in the art to provide access to the
Internet from a pay-per-use terminal. Appellant's arguments regarding
Exhibits C-F are not entitled to substantial weight.
In order to render a claimed apparatus or method obvious, the prior art
must enable one skilled in the art to make and use the apparatus or method.
See In re Payne, 606 F.2d 303, 314 (CCPA 1979). Appellant does not argue
that the references were not enabling to one of ordinary skill in the art, i.e.,
that it was not within the level of ordinary skill in the art to add access to the
Internet as taught by Exhibit C, 4 or access to online service providers as
taught by Exhibit D. Indeed, if Appellant argued that the references were
not enabling, his own disclosure would have to be rejected as nonenabling
because it provides no more detail than the references. See In re Epstein,
32 F.3d 1559, 1568 (Fed. Cir. 1994) ("Rather, the Board's observation that
appellant did not provide the type of detail in his specification that he now
argues is necessary in prior art references supports the Board's finding that
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one skilled in the art would have known how to implement the features of
the references and would have concluded that the reference disclosures
would have been enabling."); In re Fox, 471 F.2d 1405, 1407 (CCPA 1973)
(appellant's specification "assumes anyone desiring to carry out the process
would know of the equipment and techniques to be used, none being
specifically described"); Constant v. Advanced Micro-Devices, Inc.,
848 F.2d 1560, 1569 (Fed. Cir. 1988) ("The disclosure in Exhibit 5 is at least
at the same level of technical detail as the disclosure in the '491 patent. If
disclosure of a computer program is essential for an anticipating reference,
then the disclosure in the '491 patent would fail to satisfy the enablement
requirement of 35 U.S.C. § 112, First ¶.").

The Board has authority to enter new grounds of rejection
Appellant argues that the Board should have limited its review to the
four corners of the record and not have entered a new ground of rejection
based on new prior art and that the Board should remove any mention of the
newly cited references and any decision should be based on the record
created by the Examiner (Br. 7, 28).
It is long settled that the Board has the authority to enter a new ground
of rejection. See In re Loehr, 500 F.2d 1390, 1391 (CCPA 1974) ("The
main issue in this appeal is whether the Board of Appeals has statutory
administrative jurisdiction to reject appealed claims on new grounds. We
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affirm on this issue."); 37 C.F.R. § 41.50(b) (previously § 1.196(b)). Thus,
the new ground of rejection will not be removed.
Appellant argues that the previous appeal was improperly given more
scrutiny than other cases because the patent had been involved in litigation
and because protests had been filed (Br. 7).
There is no error in giving some cases more attention than others.
Each case demands a level of attention based on its own set of facts, issues
and circumstances.

Obviousness
Rejection over Exhibit E, Exhibit F, and Shah
Appellant does not re-argue the Examiner's rejection based on
Exhibit E, Exhibit F, and Shah. For purposes of judicial review, we
summarize the rejection and the response to the main arguments from
Appeal 2006-0625.
The Examiner found that Exhibit E did not "explicitly" describe
software to interact with credit card centers (Final Rejection,
March 12, 2002, p. 6). The Examiner found that Exhibit F discloses that
"TouchNet network management software collects usage and billing data"
and discloses a credit card reader allowing payment by major credit cards,
and concluded that "it would have been obvious to an artisan of ordinary
skill to use such installed software, as described in Exhibit F within the
TouchFax terminal of Exhibit E to carry out communications functions with
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the credit card centers in order to authorize payments made via the credit
card reader" (id.). The Examiner also found that Exhibits E and F did not
describe accessing and interfacing with the Internet, but did allow for
accessing a remote service provider (id.). The Examiner found that Shah
teaches the desirability of providing access and interaction with the Internet
in a kiosk-based information system, and concluded that "it would have been
obvious to an artisan of ordinary skill to incorporate such means for
accessing and software for interfacing with the Internet in a kiosk
information system, as taught by the Shah article, within the combination of
Exhibits E and F in order to provide users with access to the many services
available on the Internet" (id. at p. 7).
Appellant argued that Exhibits E and F fail to disclose or suggest
"means for accessing the Internet." The Examiner responded that Shah is
relied upon for its teaching of Internet access via a kiosk. Appellant argued
that Shah does not teach the use of any software for interfacing with credit
card service centers and there is no discussion regarding how a user would
pay for the use of the kiosks. The Examiner responded that Exhibit E
provides a credit card reader to allow payment for services on the terminal.
We noted in Appeal 2006-0625 that nonobviousness cannot be
established by attacking the references individually where the rejection is
based upon the teachings of a combination of references. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). That is, it was not persuasive for
Appellant to argue that Exhibits E and F do not teach Internet access when
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the rejection relied on Shah for this feature, or to argue that Shah does not
teach charging for use of the terminal services when Exhibits E and F are
relied upon for this feature. Shah teaches, in 1994, providing Internet access
from a public kiosk in order to give users access to the many services on the
Internet. One of ordinary skill in the art would have been motivated to
provide Internet access as an additional pay-for-use service in the public
kiosks of Exhibit E and F to achieve this advantage. Since Exhibits E and F
have dates of 1992 and 1991, respectively, before the Internet became
widely accessible, it is not surprising that they do not mention the Internet.
However, technology is not static and it would be expected that the kiosks
would be updated to incorporate improvements in technology, such as access
to the Internet, that may not have been foreseen at the time. Exhibit E states
that "'The TouchFax is designed to emulate exactly what a person will be
able to use in their homes,' says Massey" (p. 49) and the background of the
'905 patent, as originally filed, admits that is was known to provide access to
the Internet from home. Thus, there is a suggestion to modify the TouchFax
to provide public Internet access to emulate the Internet access at home.
Appellant argues in the present appeal that he does not see how
Exhibit E's statement that "'The TouchFax is designed to emulate exactly
what a person will be able to use in their homes,' says Massey" (p. 49) "is a
'suggestion to modify' a TouchFax terminal to include Internet access and
interface" (Br. 9) and it would only be a suggestion if "they (TouchFax) saw
the applicant's disclosure and added this capability to their terminal" (Br. 9).
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We note that the principal reason for the obviousness modification is
based on Shah. In addition, however, Exhibit E's statement suggests
designing the TouchFax terminal to emulate whatever communication
services persons have in their homes. Since Internet access was common at
home and business at the time of filing of the '905 patent, as evidenced by
the background of the '905 patent, and by Internet Navigator and Aliens, it
would have been obvious to add Internet access to the terminal of Exhibits E
and F because this is a service that persons would expect.
Appellant argued that "Exhibit F fails to disclose, teach or suggest
software installed into the CPU to allow interface with the internet and credit
card service centers" (Br. 15 in Appeal 2006-0625). The Examiner states
that Exhibit F discloses that "TouchNet network management software
collects usage and billing data."
It was not clear if Appellant was seriously arguing that the credit card
reader in Exhibit F was not in communication with a credit card service
center since no specific arguments were presented, or if he was merely
arguing again the lack of Internet access. Internet access is taught by Shah.
Exhibit F states that "TouchNetâ„¢ network management software collects
usage and billing data, monitors equipment status and uploads documents,
software and video screens." We noted that collecting usage and billing data
does not precisely describe communication with credit card centers, but
found that one of ordinary skill in the art of credit-card-based point-of-sale
terminals at the time of the invention would have understood that connection
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of the credit card reader to a credit card center for authorization and charging
is implied in Exhibits E and F (Appeal 2006-0625, p. 33).
The rejection of claim 6 is affirmed.

Rejection over Exhibits C, D, E, F, L&G ISDN console, Internet
Navigator, Aliens, and On Haiti
This rejection applies more than the minimum number of references
needed to meet claim 6 in order to provide cumulative evidence of the level
of ordinary skill in the art and motivation, and to provide different ways to
approach the obviousness question.
We analyze the obviousness issue two ways. First, Exhibits E and F
are used as the main references because they describe a general pay-for-use
public terminal, and we then show why it would have been obvious to
modify the terminal to provide for pay-for-use access to the Internet.
Second, On Haiti is selected as the main reference because it describes
payment for use of a computer terminal to access the Internet, but does not
disclose payment using a credit card reader or a printer, and we then explain
why it would have been obvious to add a credit card reader and printer.

(1)
Exhibits E and F describe essentially the same pay-for-use public
communications terminal providing services of receiving and sending
facsimiles, word processing, copying, and printing. Although Exhibits E
and F do not expressly teach that the terminal connects the disclosed credit
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card reader to a credit card service, one of ordinary skill in the art of credit-
card-based point-of-sale terminals at the time of the invention would have
understood that connection of the credit card reader to a credit card center
for authorization and charging is implied. Nevertheless, in the interest of
addressing every possible arguable difference, L&G ISDN console teaches a
credit card reader in a public communications terminal, which
communicates with a credit card service center ("For administration of calls
made on credit, the Landis & Gyr console connects itself to a specific
centralized system, in particular for the phases of authorization and, at the
end of the session, for the collection of the relevant data."). One skilled in
the art would have been motivated to add a connection to the credit card
center in Exhibits E and F to provide authorization of cards and collect
amounts charged for communication services in view of L&G ISDN console.
There are at least three reasons why it would have been obvious to
add access to the Internet as a pay-for-use feature on Exhibits E and F.

(1)(a)
Exhibit C, 4 expressly shows that the TouchFax terminal can be built
to provide access to the Internet. The fact that Exhibit C is a later version of
the TouchFax terminal of Exhibits E and F, and is by the same corporation,
provides the express suggestion to modify Exhibits E and F to provide
access to the Internet because this feature later became desirable. The fact
that the terminal described in Exhibit C was not a working model is
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irrelevant—it is sufficient that it teaches one skilled in the art that the
terminal can connect to the Internet. Because Exhibits C, E, and F are
pay-for-use public terminals, one skilled in the art would have been
motivated to charge for access to all telephone, facsimile, and computer
services, including an added computer service of access to the Internet.
For this reason, we affirm the rejection over Exhibits C, D, E, F,
L&G ISDN console, Internet Navigator, Aliens, and On Haiti.

(1)(b)
Exhibit D describes that the TouchFax pay-for-user terminal can be
connected to commercial online service providers, such as CompuServe and
Prodigy, in 1991. Because Exhibits D, E, and F all relate to a TouchFax
terminal, one or ordinary skill in the art would have been motivated to
combine their individual teaching and, in particular, to modify Exhibits E
and F to provide access to commercial online service providers as taught by
Exhibit D. The fact that Exhibit D is not based on a working terminal is
irrelevant. Because Exhibits D, E, and F are pay-for-use public terminals,
one skilled in the art would have been motivated to charge for access to all
telephone, facsimile, and computer services, including an added computer
service of access to an online service provider.
The Internet Navigator and Aliens describe that online service
providers had been providing access to the Internet via e-mail services for
several years before 1994, which suggests that providing access to online
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service providers as taught by Exhibit D would inherently have provided
access to the Internet. In addition, Aliens describes that the trend among
online service providers in 1994 was to provide access to more Internet
features than just e-mail, so one of ordinary skill in the art would have been
motivated to provide access to the Internet from the online service providers
in Exhibit D. Therefore, Exhibit D, Internet Navigator, and Aliens would
have suggested adding access to e-mail and other Internet services to the
terminals of Exhibits E and F.
In addition, Exhibit E states that "'The TouchFax is designed to
emulate exactly what a person will be able to use in their homes,' says
Massey" (p. 49). The background of the '905 patent admits that is was
known to provide access to the Internet from home and both Internet
Navigator and Aliens also discuss that home access to the Internet was
common. A person of ordinary skill in the pay-for-use communications
terminal art would have been motivated to modify the TouchFax terminal to
provide public access to the Internet to emulate the Internet access at home
and to provide the common communication services expected by users.
For these reasons, we affirm the rejection over Exhibits C, D, E, F,
L&G ISDN console, Internet Navigator, Aliens, and On Haiti.

(1)(c)
On Haiti expressly discloses charging for use of a public computer
terminal to access to the Internet. One of ordinary skill in the art would have
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been motivated to add pay-for-use Internet access to the pay-for-use public
terminals of Exhibits E and F because it merely adds an additional
pay-for-use service.
For this reason, we affirm the rejection over Exhibits C, D, E, F,
L&G ISDN console, Internet Navigator, Aliens, and On Haiti.

(2)
On Haiti discloses charging for use of a public computer terminal
which provides access to the Internet, but does not describe payment using a
credit card, or using a credit card reader swipe device connected to a credit
card service center, and does not describe a printer. One skilled in the art of
credit card transactions would have been motivated to provide a credit card
reader to allow users to charge their credit cards for the convenience of the
service provider as well as the user in view of Exhibits E and F and the
L&G ISDN console. Connection to a credit card center was so well known
that its use is considered to be implied in Exhibits E and F, but, nevertheless,
the L&G ISDN console expressly discloses connection to a credit card center
for authorization and charging. One of ordinary skill in the art would have
been motivated to provide a printer to the computer terminal in On Haiti
because printers were used with computers to provide hard copy records of
what was viewed, such as e-mails, and the use of printers with public
computer terminals was known as evidenced by Exhibits E and F.
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For this reason, we affirm the rejection over Exhibits C, D, E, F,
L&G ISDN console, Internet Navigator, Aliens, and On Haiti.

CONCLUSION
Appellant has shown no reversible error in the rejections of claim 6
and the rejections of claim 6 are 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) (2006).

AFFIRMED

rvb

Richard Mettke
7921 Panary Court
Reynoldsburg, OH 43068