Inre: Bookstaff , 606 F. App'x 996 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE BLAKE BOOKSTAFF,
Appellant
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2014-1463
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/392,192.
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Decided: March 26, 2015
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JEREMY COOPER DOERRE, Tillman Wright PLLC,
Charlotte, NC, argued for appellant.
JOSEPH MATAL, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee. Also represented by FARHEENA YASMEEN
RASHEED, NATHAN K. KELLEY, THOMAS W. KRAUSE.
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Before MOORE, SCHALL, and REYNA, Circuit Judges.
MOORE, Circuit Judge.
Blake Bookstaff appeals from the decision of the Pa-
tent Trial and Appeal Board affirming the examiner’s
rejections of all pending claims in Mr. Bookstaff’s U.S.
Patent Application No. 12/392,192 as anticipated by U.S.
2 IN RE: BOOKSTAFF
Patent Publication No. 2005/0071232 (Frater). For the
reasons discussed below, we reverse and remand.
BACKGROUND
The ’192 application is directed to a point-of-sale
(POS) device that can be used by a merchant to complete
an electronic transaction using a customer’s credit or
other card. The specification describes a system that
improves the manner in which gratuities are calculated
and added to the amounts charged. ’192 application ¶ 8.
After a customer presents a card for payment for goods or
services, the merchant utilizes the POS device to transmit
information concerning the pending charge, including the
amount owed, to the entity that issued the customer’s
card. Id. ¶¶ 10, 175. The card issuer then sends back to
the merchant (and ultimately the customer) data that is
indicative of a gratuity. Id. ¶¶ 10, 176–79. The ’192
application touts the advantages of this approach over
prior art processes requiring the customer to calculate a
gratuity and then add the gratuity to the subtotal. It
states that these prior art processes were inefficient and
caused stress to the customer. Id. ¶ 4.
The examiner rejected all pending claims of the ’192
application as anticipated by Frater. Frater discloses a
method and apparatus for establishing payments, includ-
ing gratuity, at the site of restaurant tables or bars.
Frater ¶ 1. A preferred embodiment “includes a financial
card reader and associated display and data input screen
devices.” Id. ¶ 4. The display shows the customer the bill
and allows the customer to input a gratuity and approve
the total charge. Id. ¶ 5. The customer may then pay for
her order, including gratuity, and the screen will display
relevant information such as the total amount owed by
the customer. Id. ¶¶ 6, 31. A receipt may be printed that
includes the total gratuity paid and the total amount
paid. Id. ¶¶ 6, 54.
IN RE: BOOKSTAFF 3
Mr. Bookstaff argued to the Board that Frater does
not disclose “data that is indicative of a gratuity to be
charged” received from a “card issuer,” as is required by
each of the pending claims of the ’192 application. The
Board disagreed and affirmed the examiner’s rejection.
The Board found that Frater discloses transmitting the
total charge to the card issuer, who then transmits that
information back to the merchant. J.A. 7. The Board
concluded that the total charge information sent back
from the card issuer is indicative of a gratuity because it
can be compared to the original bill presumably in the
customer’s possession to determine the gratuity amount.
Id. The Board found that this was within the scope of the
“data that is indicative of a gratuity to be charged” limita-
tion recited in the pending claims. Id. The Board alter-
natively concluded that Frater anticipates the pending
claims because Frater teaches a system that has struc-
tures capable of being operated to perform the function of
transmitting data indicative of a gratuity from a card
issuer. Id. 7–8. Mr. Bookstaff appeals. We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4).
DISCUSSION
The parties’ dispute centers on the construction of
“data that is indicative of a gratuity to be charged.” In
this case, we review the Board’s claim construction de
novo. 1 Mr. Bookstaff argues that no reasonable person
would conclude that a total value (the data returned by
the Frater card issuer), which represents the sum of two
smaller values (the original bill plus gratuity), can be
characterized as indicative of one of those smaller values
(the gratuity) where additional information (the original
1 Nothing in this case implicates the deference to
fact findings contemplated by the recent decision in Teva
Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841–42 (2015).
4 IN RE: BOOKSTAFF
bill amount) is required to determine the two smaller
values. The PTO responds that the Board correctly
construed the term to encompass total charge infor-
mation, which indicates the amount of the gratuity when
compared to the original bill.
We hold that the Board erred in affirming the exam-
iner’s rejection because it incorrectly construed “data that
is indicative of a gratuity to be charged” as a total value
which may or may not include a gratuity and because
there is no way from the data transmitted by the card
issuer to ascertain the amount of the total that is indica-
tive of the gratuity. “Indicative” is a common word with a
well-known meaning. “Indicative” means “serving to
indicate,” and the PTO agrees that “indicate” means “to
be a sign, symptom, or index.” Appellee’s Br. 13. It would
be inconsistent with the plain meaning of the term “indic-
ative” to conclude that a given value is “indicative” of
another value where an entirely separate set of infor-
mation, not transmitted by the card issuer, is necessary to
determine that other value. Mr. Bookstaff used the term
“indicative” consistent with this plain meaning through-
out the specification. Each embodiment describes the
data transmitted from the card issuer as a sign or index of
what the gratuity should be. See, e.g., ’192 application
¶¶ 176–78, 189–90, 203–06. Nothing in the specification
suggests that the term “indicative” is broad enough to
encompass a scenario where the data must be compared
to the original bill amount presumably known by the
patron to determine the gratuity. The Frater card issuer
returns only the total charge.
Anticipation requires every element of the claim to be
present in a single prior art reference. See Am. Calcar,
Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed.
Cir. 2011). There is no dispute that Frater only discloses
transmission of the total charge from the card issuer; thus
one of the claim elements, that “data that is indicative of
a gratuity to be charged” is transmitted by the “card
IN RE: BOOKSTAFF 5
issuer,” is not present in Frater. We must therefore
reverse this anticipation rejection. There was no obvious-
ness rejection here.
We also reverse the Board’s alternative ground that
Frater anticipates because it teaches a system that has
structure capable of being operated to perform the func-
tion of transmitting data indicative of a gratuity from a
card issuer. The Board’s conclusion that Frater teaches a
system that has structures capable of performing the
claimed function depended in part on the Board’s finding
that the Frater card issuer’s transmission of the total bill
information is data indicative of a gratuity. As we have
concluded that the Board erred in finding that Frater
discloses transmitting data indicative of a gratuity from a
card issuer, we reverse on this ground as well.
CONCLUSION
Because the Board incorrectly construed the term at
issue, and its rejections are not supported under the
proper construction, we reverse and remand.
REVERSED AND REMANDED