Ex Parte SilvaDownload PDFPatent Trial and Appeal BoardMar 28, 201712167047 (P.T.A.B. Mar. 28, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/167,047 07/02/2008 John Silva EMN8.012A 4750 20995 7590 03/30/2017 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER GLASS, RUSSELL S ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 03/30/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): jayna.cartee@knobbe.com efiling @ knobbe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN SILVA Appeal 2015-001569 Application 12/167,047 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’ final decision rejecting claims 1—32. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-001569 Application 12/167,047 Claim 1 is illustrative: 1. A computer-implemented method of integrating a customer-operated ordering kiosk system with a point of sale (POS) system, the method comprising: displaying a menu of food items available for ordering by the customer; receiving, at the kiosk system, a customer inputted selection of one of the food items from the menu; determining a kiosk SKU value based on the customer inputted selection; accessing SKU mapping data to determine one or more POS SKU values corresponding to the customer inputted selection; and transmitting the determined one or more POS SKU values to the POS system. Appellant appeals the following rejections: 1. Claims 1—32 under 35U.S.C. § 101 as being directed to non- statutory subject matter (Ans. 2). 2. Claims 1—32 under 35 U.S.C. § 103(a) as unpatentable over Balent (US 2010/0280918 Al, pub. Nov. 4, 2010), Belanger (US 2007/0226056 Al, pub. Sept. 27, 2007), and Schultz (US 2009/0292591 Al, pub. Nov. 26, 2009) (Ans. 3). ISSUE Did the Examiner err in rejecting claims under 35 U.S.C. § 101 because the Examiner failed to establish that the claims were directed to an abstract idea? Did the Examiner err in rejecting claims under 35 U.S.C. § 103 because Balent failed to disclose determining a kiosk stock keeping unit (“SKU”) value based on the customer inputted selection? 2 Appeal 2015-001569 Application 12/167,047 ANALYSIS Rejection under 35 U.S.C. ft101 Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct. 2347, 2354 (2014) (citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,2116(2013)). In judging whether claims fall within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. If so, we then consider the elements of the claim both individually and as “an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application of the abstract idea. Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). This is a search for an “inventive concept” an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. (quoting Mayo, 132 S. Ct. at 1294). The Court also stated that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. The Examiner holds that the claims are directed to the abstract idea of integrating an ordering kiosk with a point of sale system (Ans. 2). The 3 Appeal 2015-001569 Application 12/167,047 Appellant argues that the steps of the invention allow POS (“point of sale”) systems to integrate with customer-operated ordering kiosks which may be manufactured by a different company than the POS vender, by translating the data used in food ordering by a customer operation of the kiosk to data useable by the POS system, improving both kiosks and POS systems, and as such does not relate to an abstract idea (Reply 5). Putting aside whether the Examiner erred in finding that the claims are directed to the abstract idea, we are persuaded that even if the claims are directed to an abstract idea, the Examiner has not adequately explained why the claims fail to recite limitations that are “significantly more” than the abstract idea itself. For example, the Examiner does not explain why Appellant’s claimed invention does not improve the functionality of kiosks and POS systems. Specifically, the Examiner has not explained why mapping kiosk 8KU to determine POS 8KU values that correspond to the customer inputted selection is not substantially more than an abstract idea and thus why the claimed invention would not be considered an improvement in the technical field of kiosk/POS functioning. Instead, the Examiner summarilv concludes, without any analvsis or even mentioning; the kiosk, the POS system or the SKU mapping, that the limitations beyond the abstract idea “per se amount[] to no more than mere instructions for the abstract idea on a computer” (Ans, 2). view of the foregoing, we do not sustain the Examiner’s rejection of claims 1—32 under 35 U.S.C. § 101. Obviousness We will not sustain this rejection because we agree with the Appellant that the prior art does not disclose determining a kiosk stock keeping unit 4 Appeal 2015-001569 Application 12/167,047 (“SKU”) value based on the customer inputted selection. Appellant’s Specification discloses at paragraph 51 that the kiosk SKU is determined by matching the kiosk SKU stored in the kiosk database 104 to the products selected by the customer. The Examiner relies on paragraph 220 of Balent for teaching this subject matter (Non-Final Act. 2). However, this paragraph of Balent does not relate to a kiosk SKU much less determining kiosk SKU from a customer inputted selection. We find that this portion of Balent teaches, in reference to Figure 37,1 a menu for a restaurant in which each of the items has a barcode representation that includes an identifier prefix 38b, which indicates certain information for token routing, a Source ID 38c, which indicates that the item came off of a restaurant menu, and vendor-item identifier 38d, which is translated from the vendor’s UPC (Universal Product Code) for that item. There is no disclosure in this paragraph of a SKU or that the codes disclosed in Figure 37 relate to a SKU much less a kiosk SKU. As there is no disclosure of a kiosk SKU, there is no disclosure of determining a kiosk SKU. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 1 and claims 2—11 dependent therefrom. We will also not sustain the rejection as it is directed to claim 12 and claims 13—21 because claim 12 requires a translation module configured to receive kiosk SKU data from the ordering application, and we have determined that Balent, which is relied on for teaching this subject matter, does not teach a kiosk SKU. We will also 1 Balent incorrectly states that the Restaurant Menu is depicted in Figure 38. However, the restaurant menu is depicted in Figure 37. 5 Appeal 2015-001569 Application 12/167,047 not sustain the rejection as it is directed to claim 22 and claims 23—32 dependent therefrom for the same reasons discussed above in regard to the rejection of claim 1. DECISION The decision of the Examiner is reversed. ORDER REVERSED 6 Copy with citationCopy as parenthetical citation