Ex Parte Bigus

Patent Trial and Appeal BoardMar 13, 2017

09238821 (P.T.A.B. Mar. 13, 2017)

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. R0998-238 5818 EXAMINER AKINTOLA, OLABODE ART UNIT PAPER NUMBER 3691 MAIL DATE DELIVERY MODE 09/238,821 01/28/1999 7590 03 STEVEN W ROTH IBM CORPORATION DEPARTMENT 917 3605 HIGHWAY 52 NORTH ROCHESTER, MN 559017829 JOSEPH PHILLIP BIGUS 03/14/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH PHILLIP BIGUS Appeal 2014-008084 Application 09/238,821 Technology Center 3600 Before ANTON W. FETTING, BIBHU R. MOHANTY, MATTHEW S. MEYERS, and Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3—12, 14, 15, 17—19, 24, 28—35, 37, 38, 40-42 and 51— 54 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. Appeal 2014-008084 Application 09/238,821 THE INVENTION The Appellant’s claimed invention is directed to a remote order entry and processing system (Spec. 1:4—5). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for servicing a customer of a restaurant, said method being carried out by a first computer system and comprising the steps of: transmitting, from said first computer system, a restaurant menu of said restaurant, said restaurant menu specifying a plurality of available items, each available item of said plurality of available items comprising at least one respective food item or drink item offered for sale by said restaurant for purchase by customers thereof, said restaurant menu being transmitted as a first wireless transmission without being requested by a customer device associated with said customer; retransmitting, from said first computer system, said restaurant menu specifying said plurality of available items, said restaurant menu being retransmitted as a second wireless transmission without being requested by said customer device; and receiving at said first computer system order information from said customer device, said order information specifying at least one available item selected by said customer for purchase from among said plurality of available items responsive to receiving said restaurant menu in said customer device via said second wireless transmission, said customer device being moved by said customer from a first position to a second position, wherein said first position is not within range of said first wireless transmission and wherein said second position is within range of said second wireless transmission, said order information being received from said customer device as a third wireless transmission after said customer device is moved to said second position, said order information not being received as a result of a request from said customer device; and responsive to receiving at said first computer system said order information, displaying, by said first computer system, information to staff of said restaurant to cause the at least one available item selected by said customer for purchase to be prepared by the staff. 2 Appeal 2014-008084 Application 09/238,821 THE REJECTIONS The following rejections are before us for review: 1. Claims 1, 3-12, 14, 15, 17-19, 24, 28-35, 37, 38, 40-A2 and 51—54 are rejected under 35 U.S.C. § 101 as being drawn to ineligible subject matter. 2. Claims 1, 3-12, 14, 15, 17-19, 24, 28-35, 37, 38, 40-A2 and 51—54 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dowling et al.(US 6,522,875 Bl, iss. Feb. 18, 2003) in view of Kinebuchi et al. (US 5,912,743, iss. June 15, 1999). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANAFYSIS Rejection under 35 U.S.C. §101 The Examiner has rejected claim 1 under 35 U.S.C. § 101 as encompassing human organisms by causing the staff (humans) to prepare items selected by a customer (Final Act. 3, Ans. 3). In contrast, the Appellant argues that the rejection is improper (App. Br. 13—15). The Appellant has argued at page 14 of the Appeal Brief that what is recited is an action performed by the machine which has an effect on the restaurant staff rather than to encompass the staff. 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). 3 Appeal 2014-008084 Application 09/238,821 We agree with the Appellant. Here, the claim limitation in question requires that: responsive to receiving at said first computer system said order information, displaying, by said first computer system, information to staff of said restaurant to cause the at least one available item selected by said customer for purchase to be prepared by the staff (Claim 1, emphasis added). Here, in this method the computer system performs a “displaying” step which acts as a signal for instance, of some kind, for the staff to prepare the food rather than to encompass human organisms. For these reasons this rejection of claim 1 is not sustained. The other rejected claims contain the same or similar language which does not encompass human organisms and the rejection of these claims is not sustained for these same reasons as well. Rejection under 35 U.S.C. § 103(a) The Examiner has rejected claim 1 under 35 U.S.C. § 103(a) (Final Act. 4—7, Ans. 4—5). In contrast, the Appellant argues that the rejection is improper (App. Br. 15—23). The Appellant also argues that the cited combination of references would not have been obvious (App. Br. 22). We agree with the Appellant. Dowling is directed to a geographical web browser that allows a user to navigate a network application such as the World Wide Web by physically navigating in geographical coordinates (Abstract). Kinebuchi is directed to an order-taking terminal device that enables customers to order food from tables (Abstract, col. 1:25-30). Here, claim 1 is directed to transmitting “a restaurant menu” in a first and second wireless transmission both “without being requested” by a customer device. 4 Appeal 2014-008084 Application 09/238,821 In contrast, in Dowling at col. 10:14—30, it is disclosed that the user input- output module is manipulated by the user to navigate to a web page for restaurants first. Thus, any menu received by the user in this step for instance, was first requested by the user in some manner in navigating to the web page for restaurants. In Dowling the abstract sets forth a similar request being made for house information by setting a browser to a real estate web page. Further, the order-taking device in Kinebuchi is a terminal device on the tables and not the customer device. Here, even taking the argued claim limitations to be in the prior art, we find that the combination of references lacks articulated reasoning with rational underpinnings without impermissible hindsight. For this reason, the rejection of claim 1 and its dependent claims is not sustained. The remaining claims contain a similar limitation and the rejection of these claims is not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that the Appellant has shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 101. We conclude that the Appellant has shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 103(a). 5 Appeal 2014-008084 Application 09/238,821 DECISION The Examiner’s rejections of claims 1, 3—12, 14, 15, 17—19, 24, 28— 35, 37, 38, 40-42 and 51—54 are reversed. REVERSED 6