Ex Parte Wiram

Board of Patent Appeals and Interferences

May 12, 2010

09777722 (B.P.A.I. May. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GORDON MICHAEL WIRAM
____________

Appeal 2009-004814
Application 09/777,722
Technology Center 3600
____________

Decided: May 12, 2010
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004814
Application 09/777,722

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-29 and 31-52 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a point of sale system
that facilitates the completion of a transaction in the field of rental
equipment (Spec. 4-7). Claim 1, reproduced below, is representative of the
subject matter of appeal.

1. A point of sale system comprising:
at least one computer having a computer readable medium with
instructions stored thereon to provide
a reservation feature having a customer information section and
an equipment information section, wherein the customer information
section and equipment information section display information
pertaining to reservations; and
a payment section having a cash section, check section and a
credit card section, wherein upon entering credit card information in
the credit card section and activating the credit card section, credit
authorization is obtained for a charge;
wherein said computer is operatively coupled to the internet for
communicating to or from one or more retail locations the information
pertaining to reservations.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Francisco US 5,875,433 Feb. 23, 1999

Wiram, G. M., Response to Requirement for Information under 37
C.F.R. 1.105 outlining the U-Haul Reservation system prior to Feb. 5, 2000
and the Budget system.

The following rejections are before us for review:
1. Claims 1-3, 5-20 and 22-29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the U-Haul Reservation System and Francisco.
2. Claims 4 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the U-Haul Reservation System, Francisco, and Budget.
3. Claims 31-32, and 34-41 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the U-Haul Reservation System and Official Notice.
4. Claim 33 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the U-Haul Reservation System and Budget.
5. Claims 42-43 and 45-52 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the U-Haul Reservation System and Official Notice.
6. Claim 44 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the U-Haul Reservation System and Budget.

THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
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This issue turns on whether it would have been obvious to modify the
prior art U-Haul Reservation System to have a computer-server operatively
coupled to the Internet for communicating with one or more retail locations
or remote browsers.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. The Response to Requirement for Information under 37 C.F.R. 1.105
states that in the prior art U-Haul Reservation system U-haul dealers used a
point of sale system on personal computers that was not connected to the
Internet (Paragraph 4).
FF2. The Response to Requirement for Information under 37 C.F.R. 1.105
states that the U-Haul Reservation system has sections for customer
information, payment, and equipment. The system also generated reports
and a printable rental agreement (Paragraph 4). The system was not used
directly by customers, but by dealers who would input the information
(Paragraph 5).
FF3. The Response to Requirement for Information under 37 C.F.R. 1.105
states that Budget and Ryder also used PC-based reservation/rental systems
though it is not known if it was used by the public (Paragraph 7).
FF4. Francisco has disclosed a point of sale tax reporting and collection
system (Abstract).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF5. Francisco discloses that system is for ensuring that substantially all
retail transactions upon which sales tax is collected are reported and
collected by the government authorities (Col. 1:12-20).
FF6. Francisco discloses in Fig. 6 that the tax collection system may be
used for purchases made over the Internet (Heading).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
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at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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”). 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.” Id.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the cited art does not show “a computer-server operatively coupled to the
internet for communicating with one or more retail locations” (Br. 7, Reply
Br. 2).
In contrast, the Examiner has determined that Francisco teaches the
ability to connect to the Internet and that the modification of the prior art U-
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Haul system by Francisco would have been obvious to provide for the
reporting of taxes (Ans. 13-14).
We agree with the Examiner. The prior art U-Haul System provided
customer and rental information (FF2) and was used on personal computers
but was not connected to the Internet (FF1). Francisco has shown a system
used to ensure that sales taxes are reported and collected by governments
(FF5) and in Fig. 6 discloses that the system can be used with the Internet
(FF6). The use of the Internet is also considered to have been well known in
the art at the time the invention was made as a way to increase ease of use
for customers in making purchases remotely and to expand a customer base.
The modification of the prior art U-Haul system with Francisco would have
been an obvious, predictable combination of known elements to one of
ordinary skill in the art at the time the invention was made as a way to better
collect sales taxes and further also to increase ease of use for customers in
making purchases remotely and to expand a customer base. For these
reasons we consider a prima facie case of obviousness to be established with
regards to claim 1. The Appellant has provided the same arguments for
independent claims 2, 13, and 19 and their dependent claims we consider a
prima facie case of obviousness to be established for these claims as well.
With regards to claims 31-52, the Appellants similarly argue that it
would not have been obvious to modify to the U-Haul system to be
connected to the Internet for communicating with the retail locations or with
remote browsers (Br. 12-13). The Examiner has determined that such a
modification would have been obvious again for the reasons listed above
(Ans. 16-23).
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We agree with the Examiner for reasons similar to those given above.
The use of the Internet and remote browsers is considered to have been well
known in the art at the time the invention was made as a way to increase
ease of use for customers in making purchases remotely and to expand a
customer base. The modification of the prior art U-Haul system to be
connected by the Internet to retail locations and remote servers would have
been an obvious, predictable combination of known elements to one of
ordinary skill in the art at the time the invention was made as a way to
increase ease of use for customers in making purchases remotely and to
expand a customer base. For these reasons we consider a prima facie case of
obviousness to be established with regards to claim 31-52 as well.
We recognize that evidence of secondary considerations, such as that
presented by the Appellant must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of nonobviousness provided by the Appellant. “An
applicant may rebut a prima facie case of obviousness by providing a
‘showing of facts supporting the opposite conclusion.’ Such a showing
dissipates the prima facie holding and requires the examiner to ‘consider all
of the evidence anew.’” In re Kumar 418 F.3d 1361, 1368 (Fed. Cir. 2005).
The Declaration filed under 35 U.SC. § 132 by Gordon Michael
Wiram has been fully considered, but is not deemed persuasive to show that
the rejection of record is improper after evaluating and weighing all the
evidence relied upon by the Examiner and provided by the Appellant. Note
that the Declaration of Gordon Michael Wiram provides opinion, and not
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factual evidence as to whether or not the references used in the rejection are
properly combined (See the Declaration at paragraph 5). “While objective
factual evidence going towards a § 103 determination is preferable to
statements of opinion on the issue, the nature of the matter sought to be
established, as well as the strength of the opposing evidence, must be taken
into consideration in assessing the probative value of expert opinion.” In re
Oelrich, 579 F.2d 86, 91 (CCPA 1978). Further, the Declaration addresses
long felt need largely addressing only the need at the U-Haul organization,
without sufficient objective evidence, other than opinion, of a need
throughout the art of relevant competitors. The Declaration also attempts to
show commercial success of the invention without showing any success in
market share relative to the actual competitors in the industry beyond
opinion.
In this case, the Declaration of Gordon Michael Wiram when viewed
anew with all the evidence in the record does not provide sufficient evidence
to reach a conclusion of nonobviousness. The modification of the prior art
U-Haul system with and Francisco would have been an obvious, predictable
combination of known elements to one of ordinary skill in the art at the time
the invention as a way to better collect sales taxes and also further to
increase ease of use for customers in making purchases remotely and to
expand a customer base via the Internet. Similarly, the modification of the
prior art U-Haul system to be connected by the Internet to retail locations
and remote servers would have been an obvious, predictable combination of
known elements to one of ordinary skill in the art at the time the invention
was made as a way to increase ease of use for customers in making
purchases remotely and to expand a customer base. For the above reasons,
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we sustain the rejection of claims 1-29 and 31-52 under made under 35
U.S.C. § 103(a).

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-3, 5-20 and 22-29 under 35 U.S.C. § 103(a) as
unpatentable over the U-Haul Reservation System and Francisco.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 4 and 21 under 35 U.S.C. § 103(a) as unpatentable
over the U-Haul Reservation System, Francisco, and Budget.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 31-32, and 34-41 under 35 U.S.C. § 103(a) as
unpatentable over the U-Haul Reservation System and Official Notice.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 33 under 35 U.S.C. § 103(a) as unpatentable over
the U-Haul Reservation System and Budget.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 42-43 and 45-52 under 35 U.S.C. § 103(a) as
unpatentable over the U-Haul Reservation System and Official Notice.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims under 35 U.S.C. § 103(a) as unpatentable over the
U-Haul Reservation System and Budget.

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Application 09/777,722

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DECISION
The Examiner’s rejection of claims 1-29 and 31-52 is sustained.

AFFIRMED

MP

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