Ex Parte NaamanDownload PDFPatent Trial and Appeal BoardMay 20, 201612976404 (P.T.A.B. May. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/976,404 12/22/2010 132906 7590 Haynes & Boone, LLP 2323 Victory Ave. #700 Dallas, TX 75219 05/24/2016 FIRST NAMED INVENTOR Nadav Naaman 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 70481.262 (Pll22US1) 7410 EXAMINER SEE, CAROLA ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 05/24/2016 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): ipdocketing@haynesboone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NADA V NAAMAN Appeal2014-002015 1 Application 12/976,404 Technology Center 3600 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify eBay Inc. as the real party in interest. (Appeal Br. 1 ). Appeal2014-002015 Application 12/976,404 Appellant's invention is directed to a bill splitting system for use with mobile payments. (Spec. para. 1 ). Claim 1 is illustrative: 1. A method for splitting a bill, comprising: displaying a primary bill on a display of a first payer device, wherein the primary bill includes a plurality of items that each are associated with a payment to a payee; receiving a plurality of inputs from an input device on the first payer device, prior to any payment made to the payee for any of the plurality of items, that are directed to the displayed primary bill, wherein the plurality of inputs are processed by the first payer device to assign the plurality of items to a first payer and a second payer such that a first secondary bill is generated by the first payer device that includes a first subset of the plurality of items and a second secondary bill is generated by the first payer device that includes a second subset of the plurality of items; sending the second secondary bill from the first payer device to the second payer device; and sending a payment instruction for only the first secondary bill from the first payer device over a network to provide the payment to the payee for only the first subset of the plurality of items. Appellants appeal the following rejections: Claims 1-5, 9-13, 17, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lin et al. (US 2010/0082481 Al, pub. Apr. 1, 2010). Claims 6-8, 14--16, 18, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lin and King (US 2011/0035662 Al, pub. Feb. 10, 2011). 2 Appeal2014-002015 Application 12/976,404 ANALYSIS Claims 1-5, 9-13, 17, and 20 Appellant argues independent claims 1, 9, and 17 together as a group. Appeal Br. 5. We select claim 1 as representative. See, 37 C.F.R. § 41.37( c )(1 )(vii). We are not persuaded by Appellant's arguments that, because Lin discloses only assigning items on a bill to other payers after full payment of the billed amount by a first payer, and not before payment as claimed, the only motivation to modify Lin comes from impermissible hindsight. Appeal Br. 5-10, Reply Br. 4--5. The Examiner finds that Lin discloses assigning items on a bill to other payers, but only after the first payer pays the amount due for the entire bill. Answer 3. However, the Examiner reasons that it would have been obvious to modify Lin to arrive at the claimed invention, because a first payer may not wish to pay the entire bill alone. Id. The Examiner finds the ordinary artisan would be motivated to make this modification "in order for payer 1 first be relieved of having the responsibility and risk of having other individuals required to pay him in addition to ensuring that a correct amount is apportioned to payerl and paid to the payee." Id. The ordinary artisan need only refer to the common experience of sharing a meal in a restaurant with other people, where the bill will be divided among the other guests. It is common experience, one likely to have been undertaken by the ordinary skilled artisan, to have divided a bill among friends at a restaurant. For simplicity or fairness, either the bill is divided equally, or it is divided based on how much each person ordered. There are thus, few choices for dividing the bill. Minor differences between the prior 3 Appeal2014-002015 Application 12/976,404 art and a claimed device may be a matter of design choice absent evidence to the contrary. See In re Rice, 341 F .2d 309, 314 (CCP A 1965). In addition, either one person pays the entire bill and is, hopefully, reimbursed by the other people, or each person pays their own share of the bill, if the establishment is open to this option. Id. The artisan, thus, need not consult with Appellant's claimed method for motivation to make the alteration to Lin, because the modification is suggested by the common experience of the ordinary artisan. In addition, because it is common practice to divide a bill based on each person's share as a result of what each ordered, than having each person pay their share directly, substituting the use of a pair of "payer devices" for the printed bill and manual bill markup, is merely the automation of a well-known, manual business process, already in existence at the time of the instant application. See Leapfrog Enters., Inc. v. Fisher Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) ("[O]ne of ordinary skill in the art ... would have found it obvious to combine the Bevan device with the SSR to update it using modem electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost."). We are also not persuaded by the additional argument directed to the use of a "second payer device" for the second payer to pay their portion of the bill, as recited in claims 3 and 11 (Appeal Br. 3). The result for these claims is consistent with the analysis above, and does not lead to a different result. 4 Appeal2014-002015 Application 12/976,404 We have considered the remainder of Appellant's arguments, but find them unpersuasive, largely for the same reasons as set forth above. Reply Br. 5-7. For these reasons, we sustain the rejection of claims 1, 9, and 1 7 under 35 U.S.C. § 103(a). We also sustain the rejection of dependent claims 2-5, 10-13, and 20, that are not argued separately. Appeal Br. 10. Claims 6--8, 14-16, 18, and 19 Appellant does not argue dependent claims 6-8, 14--16, 18, and 19 separately. Id. We sustain the rejection of these claims for the same reasons as for claim 1, above. DECISION We affirm the rejections of claims 1-20 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation