APPLICATION OF WARMUS
| Decision Date | 17 November 1977 |
| Docket Number | Patent Appeal No. 76-680. |
| Citation | 561 F.2d 816 |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
| Parties | Application of Thomas A. WARMUS. |
Thomas N. Young, Krass & Young, Troy, Mich., attorneys of record, for appellant.
Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Thomas E. Lynch, Washington, D.C., of counsel.
Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and HERBERT N. MALETZ, Associate Judge, United States Customs Court.
Appeal from a decision of the Patent and Trademark Office (PTO) Board of Appeals, affirming single rejections under 35 U.S.C. §§ 100, 101, and 102, and two rejections under 35 U.S.C. § 103 of claims 1-18 in applicant's application serial No. 34,174, filed May 4, 1970, entitled "Computer Prepared Contract Plan." We affirm the decision on one of the 35 U.S.C. § 103 rejections.
Warmus' invention is a method for computer-assisted preparation of motor vehicle sales documents. The invention is said to relieve the tedious and error-prone task of preparing a number of different documents, some of which involve difficult mathematical calculations.
As reflected in the drawing below, the method employs a commercially available (preferably a Burroughs L 2000) typing/computer unit (12, 14) programmed to assist document preparation. The sequence of steps includes: (a) placing a preorganized worksheet (25) into the typing unit (14); (b) instructing the machine (keys 24) to perform the preprogrammed step of automatically moving the type carriage from field-to-field on the worksheet as the operator manually enters data; (c) simultaneously storing data in an electronic memory (13) as those data are entered by the operator; (d) removing the worksheet (25); (e) placing a blank document form into the typing unit carriage; and (f) directing the machine (keys 24) to retrieve some of the data previously stored i. e., those needed for that particular form, and to enter such data on the form.
Claim 1 is representative:
1. A method for preparing a series of documents incident to the sale of a motor vehicle using a digital computer having a memory and a keyboard-typewriter input-output unit for entering and outputting alphanumeric symbols and means for inputting instructions, carriage index signals, and document identification signals, said computer being programmed to move a typewriter carriage unit between data locations of each of several document types in response to document identification signals comprising the steps of: placing into the input-output unit a work sheet having predetermined locations for the typewritten entry of all data concerning the sale; generating via the instruction input means a work sheet document identification signal to select a portion of said program to cause the carriage to move between said locations thereof after data is inserted and a carriage index signal is generated by the operator via the keyboard-typewriter; manually inserting via the keyboard-typewriter the data indicated at said locations; simultaneously storing said data in memory; operating the keyboard-typewriter to index the carriage after each data entry; removing the complete work sheet; placing into the input-output unit at least one additional sale document having spaces for some but not all of said data; and generating via said instruction input means an additional document identification signal to select another portion of the program and to cause the carriage to move between selected locations on said additional documents and to automatically retrieve from memory and enter data concerning the transaction in the locations therefor.
Perkins et al. No. 3,533,076 (Perkins) discloses the structure and functional features of a Burroughs L 2000 computer. The Burroughs brochure (Burroughs) discloses features and capabilities of an L 2000 computer.
In applying Perkins under § 102, the examiner stated:
The Perkins reference clearly shows the program keys (Fig. 1 elements 15) and the alpha-numeric keys (Fig. 1 elements 12, 13) for performing the operator-controlled or operator-guided steps of document identification, data entry and automatic retreival sic of data from memory for formatting individual documents (See Col. 2, lines 45-72 and Col. 3, lines 1-29). Display lights and legend strips are disclosed in Fig. 1 elements 17, 19, 21 and Col. 3, lines 8-29. The reference discloses a printer (Col. 3, lines 65-67) binary driven by the computer which prepares documents.
In applying Perkins and Burroughs under § 103, the examiner incorporated the above description of Perkins, stating:
Claims 1-18 are rejected as being obviously unpatentable over Perkins et al (of record) in view of Burroughs brochure No. 1037157 under 35 U.S.C. 103. The Perkins et al reference has been described in the previous Office Action which is incorporated herein. The brochure 1037157 is cited to illustrate operator control and the flexibility of printing various forms. Applicant's method is an obvious utilization of applications shown old by the brochure in the apparatus and method taught by Perkins et al.
The board affirmed the foregoing rejection under § 103, adopting the quoted language of the examiner. Though the board intermixed with this rejection its view that the claims were nonstatutory under §§ 100 and 101, it is not necessary on this appeal to consider the claims in the light of §§ 100, 101, 102, or to consider a second rejection under § 103, based on Emerson No. 3,341,819 and Boehnke No. 3,360,781 in view of Perkins. We express no opinion respecting these other rejections.
Warmus admits that Perkins and Burroughs disclose the particular apparatus (L 2000) and the capabilities thereof preferred by Warmus in the practice of his invention. The only issue is whether Perkins and Burroughs establish that the claimed method would have been obvious.
OPINIONWarmus emphasizes his data inputting procedure, arguing:
The principal area of distinction between the claimed invention and the suggested function of the billing computer as disclosed by Perkins and Burroughs lies in the data input mode; this has been consistently argued as a point of novelty but has been brushed off by the Examiner and the Board throughout the prosecution history. * * * No such inputting mode is disclosed in the Perkins et al patent or in the Burroughs brochure. Perkins et al makes a general statement that data may be loaded into computer memory through the typewriter, presumably in some conventional fashion. There is, however, not an inkling of the computer driven control of the typewriter carriage to appropriate locations on an input data sheet of predetermined format. This is viewed as an important part of Appellant's invention, has been clearly set forth in the claims, and has been ignored in its content throughout the prosecution history. The work sheet also results in a hard copy of all data utilized in the sale transaction; there is no equivalent function in the Perkins et al patent or in the Burroughs brochure. Brief for Appellant at 16-17.
The solicitor's brief contains:
Although appellant places great emphasis on the preparation of the work sheet, it appears that a blank sheet of typing paper would provide the same function since the carriage and type ball positions are already determined by the program loaded into the system. * * * All that appellant would appear to have done is to preprint on the work sheet the identification of the input data to be entered by the operator at each carriage and type ball position, in lieu of computer generation of such identification prior to each data entry. Brief for the Commissioner of Patents and...
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