Appeal 2006-2109
Application 10/680,678
1 willing to make a charitable donation. Taken as a whole, the Appellant contends
2 that the entire Helbling system relies on the restaurant's largess, both in offering
3 free beverages to customers as an inducement, and in operating the system by
4 which customer charitable donations are tracked and transferred to the charities.
5 With the low minimum donation amount Helbling suggests - $0.25 – the Appellant
6 argues that it is improbable that the restaurant would retain a processing fee from
7 the donation, particularly considering that the restaurant is providing the beverages
8 free of charge. The Appellant cites In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994),
9 for the proposition that a prior art reference that teaches away from the invention
10 cannot serve to create a prima facie case of obviousness. The Appellant further
11 argues that the mere fact that some businesses charge a fee for work performed - or
12 that it would be possible for a restaurant in Helbling to do so - provides absolutely
13 no motivation making the proposed modification. (Br. 12-14).
14 The Appellant next argues that since Helbling would lead a person of ordinary
15 skill in a direction divergent from the path taken by the Applicant - that is, reliance
16 on the philanthropy of a restaurant owner rather than the customer's healthy self-
17 interest - Helbling, considered as a whole, teaches away from the present invention
18 of claim 1, and thus cannot support a prima facie case of obviousness. (Br. 14-16).
19 The Appellant next contends that Helbling does not describe a reduced-portion
20 meal according the construction defined within the specification at p. 4. (Br. 16-
21 18).
22 In the Answer, the Examiner introduces the argument that, since the Appellant
23 argues these claims as a group, the Examiner selects claim 11 as representative,
24 and that claim 11 is to an apparatus that is capable of performing the process in
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