Ex Parte Olson

Patent Trial and Appeal Board

Dec 29, 2015

11710722 (P.T.A.B. Dec. 29, 2015)

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.
11/710,722 02/26/2007 Quentin Olson TY06-001 6631
28112 7590 12/29/2015
SAILE ACKERMAN LLC
28 DAVIS AVENUE
POUGHKEEPSIE, NY 12603
EXAMINER
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
12/29/2015 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 QUENTIN OLSON
____________

Appeal 2013-003322
Application 11/710,7221
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
SCOTT C. MOORE, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a system and apparatus for managing a range of
businesses (Spec. 1, ll. 15–16).

1 Appellant identifies Quentin Olson as the real party in interest. Br. 3.

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Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A point of sale system with a web-based back-office
system, comprising:
one or more point of sale, POS, terminals and
one or more web servers,
wherein said POS terminals and said web servers
communicate via internet protocols,
wherein said POS terminals are implemented with
personal computer hardware and software using one or more
relational databases,
wherein said web server is implemented with web server
hardware and software, using one or more relational databases,
wherein said back-office system can be provided as a
vendor subscription service,
wherein web server software resides and is hosted on said
vendor’s remote servers and wherein subscriber company’s
POS terminals access said web server software from said
vendor’s remote servers, over a network, typically the
Internet[,]
wherein said POS terminals are implemented, changed or
customized for different business applications by modifying
POS screen layouts, price lists, item lists, key functions,
promotions or general POS functions,
wherein said relational databases are used for
implementing different store or business POS installations in
isolated memory spaces, which are scalable for businesses of
different sizes.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kenner US 5,956,716 Sept. 21, 1999
Sullivan US 7,015,945 B1 Mar. 21, 2006

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The following rejection is before us for review.
Claims 1–30 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sullivan and Kenner.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3–6 of the
Answer and on pages 3–8 of the Final Action.
2. Sullivan discloses
Particular components of client 12 may
operate on one or more computers, shown
generally as computer 90. Computer 90 maintains
and executes the instructions to implement
converter 70, controller 76, codec 86, and interface
88, and includes any suitable combination of
hardware and software to provide the described
function or operation of these components.
Sullivan, col. 4, ll. 27–33.
3. Sullivan discloses a “[d]atabase management system 114 [that]
supports any suitable fiat file, hierarchical, relational, object-oriented, or
parallel database operation.” Sullivan, col. 6, ll. 9–11.
4. Sullivan discloses
Controller 76 is coupled to database 16
which stores digital files 14 and exception
condition 84. Exception condition 84 comprises
information that directs client 12 when to store
video and optional audio for particular financial
transactions. For example, exception condition 84
may represent one or more activities, such as
keystrokes at ATM 78 or POS 80, that when
detected in data 82 triggers the capture of video 72
and/or audio 74 for the financial transaction.
Sullivan, col. 4, ll. 13–21.
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ANALYSIS
35 U.S.C. § 103(a) REJECTION
The Appellant argued claim 1 as representative for the group of
independent claims 1, 6, 11, 16, 21 and 26 (Appeal Br. 12, 16), and the
remaining independent claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant argues,
Applicant maintains that the instant claim 1 clause
which states “wherein said POS terminals are
implemented, changed or customized for different
business applications by modifying POS screen
layouts, price lists, item lists, key functions,
promotions or general POS functions,” is not
suggested by Sullivan’s column 2 line 62 to
column 3 line 2 as stated by the examiner.
Sullivan’s client 12 refers to various devices such
as cash registers, ATMs or other financial
transaction devices. On the other hand, the POS
terminals in the instant claim 1 clause refer to POS
terminals of different appearances all generated by
software on a PC screen. Sullivan works with and
connects existing client terminals. Sullivan is a
hardware connection scheme, not a software
implementation of POS clients as in the instant
application.
(Appeal Br. 12–13).
The Examiner, however found, that Sullivan discloses,
wherein said POS terminals are
implemented, changed or customized for different
business applications by modifying general POS
functions (in column 2 line 62-column 3 line 2
Sullivan discloses that client 12 that include POS
terminal can be arranged in any appropriate
manner for different business applications and the
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functions can be modified based on the particular
business requirements as described in column 5
lines 16-21)
(Final Act. 3).
We find no error with the Examiner’s findings above concerning
Sullivan and this claim limitation. Claim 1 requires, in the alternative, that
“said POS terminals are implemented, changed or customized for different
business applications by modifying POS screen layouts, price lists, item
lists, key functions, promotions or general POS functions.” We construe the
claim limitation broadly as only requiring the POS terminals be customized
for different business applications by modifying a general POS function.
During prosecution, the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). We thus find no error with the Examiner citing to
column 5, lines 16–21 (Final Act. 3) to meet this claim limitation because
the disclosed process of arranging digital files at off peak hours customizes a
general POS function of data maintenance.
Appellant further argues that “[i]nstant claim 1 refers to the
implementation, customization and changing of POS terminal
implementations on a generic PC screen based on various business
requirements.” (Appeal Br. 13).
We disagree with Appellant because claim 1 does not use the term
“generic PC screen.” Moreover, Sullivan discloses the control of
applications, such as with interface 88, may be controlled by both software
and hardware to achieve the desired function of the component. (FF. 2).
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Appellant next argues that:
Sullivan implies or mentions general “databases”,
with no suggestion of relational databases which
store different business POS installations and
implementations in isolated memory spaces, which
are scalable for businesses of different sizes. The
key word in the above sentence is
implementations. In the instant application, the
relational databases actually store the
implementations of different business POS
installations. Unlike Sullivan, which according to
column 2 line 62 to column 3 line 11, “provides
traditional database features to store, retrieve and
manipulate information stored in digital files for
monitoring, analyzing and reporting on financial
transactions occurring at clients 12.”
(Appeal Br. 14)
We disagree with Appellant because the Examiner found, and we
agree, that Sullivan at column 6, lines 4–11 explicitly discloses a relational
database. (Answer 4; FF. 3). We find it inherent to Sullivan that a database
be effectively scaled to meet the required data storage demands of a client in
order for it to properly function. See In re Napier, 55 F.3d 610, 613 (Fed.
Cir. 1995). “It is well settled that a prior art reference may anticipate when
the claim limitation[] not expressly found in that reference [is]…
nonetheless inherent in it. Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002) (citations and internal
quotation marks omitted). Alternatively, we find it obvious to scale or size a
database to the needs of a client to effect economies of scale. This is simply
common sense. Perfect Web Technologies, Inc. v. INFOUSA, Inc. 587 F.3d
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1324, 1329 (Fed. Cir. 2009).
Appellant seeks a definition of “implementing” to mean that “the
relational databases actually store the implementations of different business
POS installations.” (Appeal Br. 14). But, the claim does not use the noun
form of “implementations,” but rather recites the word “implementing,” a
verb. Appellant’s Specification does not specifically define the term
“implement” either as a noun or a verb, nor does it utilize the term contrary
to its customary meaning. The ordinary and customary definition of the
term “implement” is “(vb) to begin to do or use something.”2 Accordingly,
we find no error with the Examiner’s finding that Sullivan discloses
implementing database 16 when it detects or uses data to cause capturing of
video installations.
Appellant argues that
Kenner’s subscription management mechanisms
refer to the managing and charging for the bulk
delivery of video clips. This is completely
different from the Software as a Service limitation
of the instant application. As stated on page 13 of
the instant patent application, “Software as a
Service (SAAS) is a software distribution model
in which applications are hosted by a vendor or
service provider and made available to customers
over a network, typically the Internet.” The key
word above is “hosted”. The actual software
application resides and is hosted on the vendor’s
remote servers. This is not related to the bulk
download of video clips in Kenner et al.
(Appeal Br. 15).
We disagree with Appellant. First, claim 1 recites in pertinent part

2 http://www.merriam-webster.com/dictionary/implement (last visited
Dec. 2, 2015).
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“wherein said back-office system can be provided as a vendor Subscription
service, wherein web server software resides and is hosted on said vendor’s
remote server.” (Emphasis added). Thus, because the term “can be” is used
in the claim, it makes the use of a subscription service optional. Thus, we
construe the claim not to require a vendor subscription, and hence, also not
require web server software residing and hosted on the vendor’s server.
Even if the limitation was positively recited, Appellant’s argument would
fail from the outset because it is not based on limitations appearing in the
claims, which do not require a Service (SAAS) software distribution model.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant also argues that “. . . downloading bulk video clips is not
equivalent to hosting active software which performs intelligent and often
complex POS functions. . . . Kenner’s downloading of static video clips
versus the interactive, dynamic implementation of point of sale terminal
functions via a software by subscription of the instant application.” (Appeal
Br. 15).
We disagree with Appellant because again, the claim makes optional
the use of web server software residing and hosted on said vendor’s remote
servers as discussed, supra. But even still, the claim only requires “web
server software,” which we find is nevertheless met by the applicable
software which causes the clip data to be downloaded to the user’s terminal
as disclosed by Kenner. (Abstract).
We thus affirm the rejection of independent claims 1, 6, 11, 16, 21,
and 26. We also affirm the rejection of dependent claims 2–5, 7–10, 12–15,
17–20, 22–25 and 27–30 because Appellant has not challenged such with
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any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).

CONCLUSION OF LAW
We conclude the Examiner did not err in rejecting claims 1–30 under
35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1–30 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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