Ex Parte Zimmerman

Board of Patent Appeals and Interferences

Jun 29, 2012

11068381 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS E. ZIMMERMAN
____________________

Appeal 2010-003141
Application 11/068,381
Technology Center 2800
____________________

Before JAMESON LEE, MAHSHID D. SAADAT, and JUSTIN T. ARBES,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
18-34, the only claims pending in the application on appeal. Claims 1-17 are
cancelled. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).1
We affirm.
The claims are directed to a method and system for completing a
customer’s order, such as a particular coffee beverage, where the customer’s
order has been pre-selected. Claim 18 is exemplary:
18. A method of conducting a transaction comprising:
Providing a data apparatus to a customer for use by said
customer during said customer subsequent transaction(s);
Said data apparatus having said customer’s identification
associated with it;
During said customer’s said subsequent transaction
determining the customer’s pre-selected order by using said
customer identification provide by said data apparatus;
Determining said customer’s payment type based on said
customer’s identification;
Having the cost of said pre-selected order applied to said
customer’s payment method; and
Delivering said pre-selected order to said customer.

1 Our decision will make reference to Appellant’s Amended Appeal Brief
(“App. Br.,” filed June 24, 2009), and the Examiner’s Answer (“Ans.,”
mailed October 2, 2009) and Final Rejection (“Final Rej.,” mailed July 25,
2008).
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Showghi

Lei

Goldthwaite

Likourezos
US 2003/0050854 A1

US 2003/0110097 A1

US 2004/0127256 A1

US 2004/0143549 A1
Mar. 13, 2003

June 12, 2003

July 1, 2004
(filed July 23, 2003)

July 22, 2004
(filed Nov. 19, 2003)

REJECTIONS
Claims 18-22, 25-29, 33, and 34 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Showghi. Ans. 3-6.
Claims 23 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Showghi in view of Lei. Ans. 6.
Claims 24 and 31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Showghi in view of Goldthwaite. Ans. 6-7.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Showghi in view of Likourezos. Ans. 7.

ISSUE
Appellant argues on pages 6-11 of the Appeal Brief that the
Examiner’s rejections of independent claims 18 and 26 are in error. These
arguments present us with the following issue: Did the Examiner err in
finding that Showghi discloses a “pre-selected order,” as recited in claim 18
and similarly recited in claim 26?
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ANALYSIS
I. Anticipation Rejection of Claims 18-22, 25-29, 33, and 34
We select claim 18 as representative of claims 18-22, 25-29, 33, and
34, as Appellant’s arguments are primarily directed to claim 18 and the
dispositive issue with respect to independent claims 18 and 26 is whether
Showghi discloses a “pre-selected” or “pre-determined” order.2 See App.
Br. 6-10; 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that Showghi does not disclose determining a
customer’s “pre-selected order” during a subsequent transaction by using
customer identification provided by a data apparatus, and having the cost of
the “pre-selected order” applied to the customer’s payment method, as
recited in claim 18. App. Br. 6-10. Appellant contends that the “Usual
Order” in Showghi is not “pre-selected” because the user must still choose it
from the menu shown in Figure 12A and then place the order using the menu
shown in Figure 12B. App. Br. 7 (citing Showghi ¶ 86). According to
Appellant, “[i]f selection of the order must still take place during the
subsequent transaction, the order by definition cannot possibly be pre-
selected.” App. Br. 7. We disagree with Appellant.
We begin by interpreting the term “pre-selected order.” Claim 18
recites determining the customer’s pre-selected order “[d]uring said
customer’s said subsequent transaction.” The Specification provides
examples of how “[t]he order that the customer will want to make” can be

2 Appellant argues that the terms “pre-selected” in claim 18 and “pre-
determined” in claim 26 mean the same thing. App. Br. 6. We agree. Thus,
the analysis set forth herein applies to both terms.
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“setup” in advance by accessing a web site, visiting a store, or calling a toll-
free number. Spec., pg. 2. Appellant also cites a dictionary definition
allegedly indicative of the term’s ordinary meaning as “chosen in advance[,]
the meaning of the term usually on the basis of a particular criterion.” App.
Br. 7. Applying the broadest reasonable interpretation of the claim in light
of the Specification, as we must, see In re Am. Acad. of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004), we agree with Appellant that “pre-
selected” in the context of claim 18 means “selected in advance” of the
subsequent transaction, see App. Br. 7. Further, an “order” in the context of
claim 18 is simply a set of one or more items (e.g., food or beverage) that the
user selects. See Ans. 8; Spec., pg. 2 (“On the card or tag there is a
numerical code or other data that allows the store to determine the item(s)
that the customer had pre-selected as the order.”). Thus, a “pre-selected
order” encompasses one or more items selected in advance of the subsequent
transaction.
Turning to the disclosure of Showghi, we agree with the Examiner
that Showghi discloses the “pre-selected order” features of claim 18.
Showghi allows the user to create a “list of items” as the user’s “Usual
Order” by selecting the items with “an Internet Web page or other means.”
Showghi ¶ 86; Ans. 8. For example, Figure 12B of Showghi depicts a
“Usual Order” comprising five different food and beverage items. Once the
user’s “Usual Order” has been established and the user is at the venue, the
user can make purchases via a wireless ordering device in communication
with a central ordering system. Showghi ¶¶ 24, 65, 86, Fig. 2; Ans. 3-4.
The system determines the “Usual Order” for the particular customer based
on the device identification provided by the wireless device, and allows the
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user to place the “Usual Order” (or request other items). Showghi ¶¶ 24, 83,
86; Ans. 3-4. The cost of the order is then automatically charged to the
user’s preset payment method, such as a credit card. Showghi ¶¶ 24, 53, 56,
83; Ans. 4; App. Br. 8 (acknowledging that paragraph 83 of Showghi
discloses that “payment account information can be automatically associated
with an order”). Thus, Showghi discloses determining a customer’s “pre-
selected order” during a subsequent transaction by using customer
identification provided by a data apparatus, and having the cost of the “pre-
selected order” applied to the customer’s payment method.
Given the claim interpretation set forth above, we are not persuaded
by Appellant’s argument that the “Usual Order” in Showghi is not a “pre-
selected order” because the user must still choose it using the menus shown
in Figures 12A-B. See App. Br. 7-8. A “pre-selected order” encompasses
one or more items that were selected in advance of the subsequent
transaction. The five items shown in Figure 12B (onion rings, polish
sausage, etc.) were selected by the user in advance of the transaction in
which the user is again placing his or her “Usual Order.” Claim 18 does not
preclude any further choice or selection, and Appellant has not pointed to
any language in claim 18 or explicit definition in the Specification
prohibiting such additional functionality. Indeed, claim 18 uses the open-
ended term “comprising,” indicating that other steps may be present. See
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(“‘Comprising’ is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.”). Similarly, Appellant
argues that Showghi describes additional steps, such as verifying the user’s
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identity with a personal identification number (PIN), that are not “required
in the claimed method.” App. Br. 8. Again, however, nothing in open-
ended claim 18 precludes additional steps and Appellant has not explained
why Showghi fails to disclose any of the claimed features in light of its
additional functionality. In any event, even Appellant’s own disclosed
embodiment is not without a step of choosing and placing the pre-selected
order, such as by swiping the data apparatus containing the pre-selected
order. Spec., pg. 2. Note also that the claims do not require choosing and
placing of the pre-selected order simultaneously in a single step. Thus,
Appellant’s arguments are not persuasive of error by the Examiner.
We sustain the anticipation rejection of independent claims 18 and 26,
as well as dependent claims 19-22, 25, 27-29, 33, and 34, which are not
separately argued.

II. Obviousness Rejections of Claims 23, 24, and 30-32
As to the obviousness rejections of claims 23, 24, and 30-32,
Appellant argues that Showghi’s order methodology, which includes such
steps as viewing menus, choosing the “Usual Order,” and entering a PIN to
complete the transaction, “would render the claimed invention less useful for
one of its intended purposes: to expedite order processing for regular
customers with pre-selected regular orders.” App. Br. 10. According to
Appellant, the steps in Showghi “add time and hassle to the transaction.”
App. Br. 10. We do not find anything in the claims, however, requiring a
particular time frame for order processing. Appellant’s position would
require reading in limitations from the Specification, which is prohibited.
See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
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2004) (“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”). Appellant’s argument therefore is not persuasive of error by
the Examiner.
Appellant also refers to the arguments made with respect to
independent claims 18 and 26. App. Br. 9-10. For the reasons previously
discussed, we are not persuaded by these arguments. In addition, Appellant
does not particularly identify errors in the Examiner’s reasoning to
overcome the Examiner’s obviousness conclusion as to claims 23, 24, and
30-32. Accordingly, we sustain the obviousness rejections of claims 23, 24,
and 30-32.

CONCLUSION
Appellant has not persuaded us of error in the Examiner’s decision to
reject claims 18-34 under 35 U.S.C §§ 102(e) and 103(a).

DECISION
For the above reasons, the rejection of claims 18-22, 25-29, 33, and 34
under 35 U.S.C § 102(e) is affirmed and the rejections of claims 23, 24, and
30-32 under 35 U.S.C. § 103(a) are affirmed.
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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

ELD