Ex Parte Soliman

Board of Patent Appeals and Interferences

Jan 23, 2008

10064270 (B.P.A.I. Jan. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MAHMOUD SOLIMAN
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Appeal 2007-3508
Application 10/064,270
Technology Center 2100
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Decided: January 23, 2008
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-7, 10, 11, and 16-18.1 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 Claims 1-20 are pending. The Examiner has allowed claims 12-15 and
indicated that claims 8, 9, 19, and 20 would be allowable if rewritten in
independent form (Final Action 10).
Appeal 2007-3508
Application 10/064,270

THE INVENTION
The disclosed invention relates generally to calculators. More
particularly, Appellant’s invention relates to a dedicated tip calculator used
to compute the amount of a tip that the user desires to leave after being
served with food, getting a cab fare, or in any other circumstance when it is
customary to leave a gratuity tip (Spec. 1).

Independent claim 1 is illustrative:
1. A tips calculator, comprising:

a base member having a face side, wherein the face side has:

at least one display screen having a main display area; a
plurality of groupings of buttons, wherein:

a first grouping of buttons includes buttons designating
whole numbers from 0 to 9 and buttons designating at least
mathematical functions of a decimal point, addition,
subtraction, multiplication, division, and sum total, whereby the
first grouping of buttons is used to at least enter a bill amount,
wherein the bill amount is displayed on the main display area;

a second grouping of buttons includes buttons
designating tip amounts as percentages of the bill amount and
includes a button for a total amount, whereby buttons
designating tip amounts are used to enter a choice of a tip
amount as a percentage of the bill amount with subsequent
display of the tip amount on the main display area, and whereby
the button for the total amount is used to obtain a total amount,
which is a sum of the bill amount and the tip amount, wherein
the total amount is displayed on the main display area;

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a third grouping of buttons includes buttons designating
numbers of members in a group as whole sequential numbers,
whereby buttons designating numbers of members in a group
are used to select a number of members in a group and to obtain
a display on the main display area of an individual share,
wherein the individual share is a product of a division of the
total amount by the number of members in a group;

means for performing functions and calculations
designated by buttons in the plurality of groupings of buttons;
and

means for display on the display screen of values,
functions, and results of calculations designated by buttons in
the plurality of groupings of buttons.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Lipton US 4,988,025 Jan. 29, 1991
Terriss US 5,964,823 Oct. 12, 1999
Boston US 6,076,079 Jun. 13, 2000
Ilium Software, “Tipster,” website available at:
http://www.iliumsoft.com/tipster.htm (“Ilium”).

THE REJECTIONS
Claims 1-7, 10, and 17-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the teachings of Boston in view of Terriss, and
further in view of Ilium.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Boston in view of Terriss.
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Application 10/064,270

Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Boston in view of Terriss, and further in
view of Ilium and Lipton.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief and the Answer for the respective details thereof.

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellant has the burden on appeal to
the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] 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)). Therefore, we look to
Appellant’s Brief to show error in the proffered prima facie case.

ISSUE(S)
We decide the question of whether Appellant has shown the Examiner
erred in holding that the cited combination of prior art would have rendered
the claimed subject matter obvious to an artisan having ordinary skill and
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common sense at the time of the invention.2 More particularly, we have
determined the following issues are dispositive in this appeal:
(1) Whether Appellant has shown the Examiner has
failed to articulate an adequate reasoning with a
rational underpinning to support the proffered
combinability of Boston and Terriss.
(2) Whether Appellant has shown the Examiner erred in
finding that the combination of Boston, Terriss, and
Ilium teaches and/or suggests the following
limitations:
a button for a total amount . . . whereby the button
for the total amount is used to obtain a total amount,
which is a sum of the bill amount and the tip amount,
wherein the total amount is displayed on the main
display area; (Claim 1).

2 “[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Moreover, “‘there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness’ . . . . [H]owever, 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, 127 S. Ct. at 1741
(quoting In re Kahn, 441 F.3d at 988).

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Claims 1-7 and 10
We consider the Examiner’s rejection of claims 1-7 and 10 as being
unpatentable over the teachings of Boston in view of Terriss, and further in
view of Ilium. Since Appellant’s arguments with respect to this rejection
have treated these claims as a single group which stand or fall together, we
will select independent claim 1 as the representative claim for this rejection.
See 37 C.F.R. § 41.37(c)(1)(vii)(2006).

Combinability under 35 U.S.C. § 103
We decide the question of whether Appellant has shown the Examiner
erred by failing to articulate an adequate reasoning with a rational
underpinning to support the proffered combinability of Boston and Terriss.
Appellant contends that the Examiner has provided insufficient
evidence of motivation to combine the references (App. Br. 11-12).
In particular, Appellant contends that Boston “teaches away” from Terriss
because Boston discloses that “[a] common calculator, having a wide array
of functions and buttons, suffers from being too complicated for most dining
patrons to master in a short, single use experience.” (Boston, col. 1, ll. 34-
38) (App. Br. 12).
The Examiner disagrees. The Examiner contends that the missing
function buttons, such as decimal point, addition, subtraction, multiplication,
division, and sum total (as found in the secondary Terriss reference), are
very common and standard buttons which existed on most of calculators for
performing basic mathematical operations (Ans. 14).

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Combinability Analysis
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); see KSR, 127 S. Ct. at 1739–40 (explaining that when the
prior art teaches away from a combination, that combination is more likely
to be nonobvious).
Here, we begin our analysis by noting that the portion of Boston relied
on by Appellant (as allegedly “teaching away” from Terriss) appears in the
background section of the patent to Boston (col. 1, ll. 34-40). After
considering the totality of the evidence before us, we find the weight of the
evidence supports the Examiner’s position. Because decimal point, addition,
subtraction, multiplication, division, and sum total buttons are old elements
that are ubiquitous in the calculator art (as taught by Terriss), we do not
agree with Appellant that an artisan would have been discouraged from
following the path set out in the Terriss reference. We note that in KSR, the
Supreme Court reaffirmed that “[w]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740 (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).

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Because we find a similar rearrangement of old elements here (i.e., an
arrangement of calculator buttons), we find unavailing Appellant’s argument
that Boston “teaches away” from the Examiner’s proffered combination with
Terriss.
Elements under 35 U.S.C. § 103
We next decide the question of whether Appellant has shown the
Examiner erred in finding that the combination of Boston, Terriss, and Ilium
teaches and/or suggests the argued limitations of:
a button for a total amount . . . whereby the button
for the total amount is used to obtain a total amount,
which is a sum of the bill amount and the tip amount,
wherein the total amount is displayed on the main
display area;
(Claim 1; see also App. Br. 12-13).
Appellant contends that Boston and Terriss do not show the claimed
feature of a button for calculating a total amount, which is the sum of the bill
amount and the tip amount (App. Br. 12-13).
The Examiner disagrees (Ans. 15-16). The Examiner, as finder of
fact, has determined that all three references teach and/or suggest the
claimed feature of a button for calculating a total amount, which is a sum of
the bill amount and the tip amount, as follows:
Regarding the Boston reference, the Examiner notes that “TOTAL”
display screen 26 (Figure 2) displays the total amount, which is the sum of
the values shown in the “AMOUNT” display screen 20 and the “TIP
AMOUNT” display screen 24. Thus, the Examiner finds that any button
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used to activate “TOTAL” display screen 26 to display the total amount (i.e.,
the bill plus tip) can reasonably be considered as the total amount button
(Ans. 15).
Regarding the secondary Terriss reference, the Examiner finds that the
equal “=” button can be used to generate or calculate a total amount which is
the sum of the bill amount and the tip amount (Ans. 15).
Regarding the tertiary Ilium reference, the Examiner notes that the
total display area (e.g. “32.43 (Total)” on the left figure or “120.00 (Total)”
on the right figure) displays the total amount function, which is the sum of
the bill amount ($28.20) and the tip amount ($4.23). Thus, the Examiner
finds that any virtual button used to activate the total display area to display
the total amount is a total amount button (Ans. 16).
After considering all of the evidence before us, we conclude
Appellant has not shown error in the Examiner’s reasoning. Contrary to
Appellant’s arguments, we agree with the Examiner that each of the Boston,
Terriss, and Ilium references teaches or at least suggests3 “a button for a
total amount . . . whereby the button for the total amount is used to obtain a
total amount, which is a sum of the bill amount and the tip amount, wherein
the total amount is displayed on the main display area,” as claimed (claim 1).

3 See In re Hoeschele, 406 F.2d 1403, 1406-07 (CCPA 1969) (“[I]t is
proper to take into account not only specific teachings of the references but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom . . . .”).

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For at least the aforementioned reasons, we conclude that Appellant
has not established that the Examiner erred with respect to establishing a
prima facie case of obviousness. Therefore, we sustain the Examiner’s
rejection of claim 1 as being unpatentable over the teachings of Boston in
view of Terriss, and further in view of Ilium.
Pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii), we have
decided the appeal with respect to the remaining claims in this group on the
basis of the selected claim alone. Therefore, we sustain the Examiner’s
rejection of claims 2-7 and 10 as being unpatentable over the teachings of
Boston in view of Terriss and Ilium for the same reasons discussed supra
with respect to representative claim 1.

Dependent claim 11
We consider next the Examiner’s rejection of claim 11 as being
unpatentable over the teachings of Boston in view of Terriss, and further in
view of Ilium and Lipton. Appellant contends that claim 11 is not obvious
over the teachings of the cited references for the same reasons previously
argued regarding independent claim 1 (see App. Br. 13-14). Since we have
found supra that Appellant has failed to show error in the Examiner’s
rejection of independent claim 1, we sustain the Examiner’s rejection of
dependent claim 11 for the same reasons previously discussed regarding
claim 1 as being unpatentable over Boston in view of Terriss, and further in
view of Ilium.

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Independent claim 16
We consider next the Examiner’s rejection of independent claim 16 as
being unpatentable over the teachings of Boston in view of Terriss.
Appellant restates the “teaching away” argument previously presented
with respect to claim 1 (App. Br. 14). Appellant further argues that
independent claim 16 is patentable over the cited prior art on the basis of
limitations that are actually recited in dependent claim 17 (App. Br. 14-15).
We have fully addressed Appellant’s “teaching away” argument as
discussed above with respect to independent claim 1. As pointed out by the
Examiner (Ans. 18), the limitations of claim 17 are not found within
independent claim 16. Thus, we find Appellant’s contentions regarding the
limitations of claim 17 to be moot with respect to ascertaining the
patentability of independent claim 16. Therefore, we conclude Appellant
has failed to show error in the Examiner’s rejection of claim 16.
Accordingly, we sustain the Examiner’s rejection of independent claim 16 as
being unpatentable over Boston in view of Terriss.

Dependent claims 17 and 18
We consider next the Examiner’s rejection of claims 17 and 18 as
being unpatentable over the teachings of Boston in view of Terriss, and
further in view of Ilium.
Appellant contends that claims 17 and 18 are nonobvious because
they are dependent upon and incorporate the nonobvious method of claim 16
(App. Br. 16).
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We have found the method of claim 16 to be obvious, as discussed
supra. To the extent that Appellant has argued the limitations of claim 17
separately (i.e., in the arguments presented for claim 16), we agree with the
Examiner that the Ilium reference teaches and/or suggests the features of
claim 17, as described in detail by the Examiner on pages 10, 11, and 19 of
the Answer. In particular, we find the up and down arrow buttons shown in
both figures of the Ilium reference reasonably teach and/or suggest the
claimed “third grouping of buttons” and the function of entering the number
of members in a group, as claimed (claim 17).
Regarding dependent claim 18, Appellant has not presented any
substantive arguments directed to the separate patentability of claim 18.4
For at least the aforementioned reasons, we conclude Appellant has failed to
show error in the Examiner’s rejection of dependent claims 17 and 18.
Therefore, we sustain the Examiner’s rejection of these claims as being
unpatentable over Boston in view of Terriss and Ilium for the same reasons
set forth by the Examiner in the Answer, and as discussed above.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown the Examiner erred in rejecting claims 1-7, 10, 11,
and 16-18 under 35 U.S.C. § 103(a) for obviousness.

4 See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991). See also 37
C.F.R. § 41.37(c)(1)(vii)(2006).

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DECISION
The decision of the Examiner rejecting claims 1-7, 10, 11, and 16-18
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

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