Ex Parte 5761648 et al

Board of Patent Appeals and Interferences

Feb 24, 2009

90005773 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte COOLSAVINGS, INC.1
____________________

Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,6482
Technology Center 3900
____________________

Decided:3 February 24, 2009
____________________

Before ANTON W. FETTING, SCOTT R. BOALICK and DANIEL S.
SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Coolsavings, Inc. is the real party in interest (App. Br. 2).
2 Issued June 2, 1998 to Golden et al.
3 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

2
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. §§ 134(b) and 306 (2002)
from a Final Rejection of claims 1-18. Claims 17 and 18 were added during
the reexamination proceedings. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306 (2002).
The 5,761,648 patent was involved in numerous litigation proceedings
which have been settled (App. 3). According to the Appellant, none of the
prior litigation proceedings resulted in entry of a decision or an order
relative to the validity or interpretation of the claims of the ‘648 patent (App.
Br. 3).
The Appellant claims a method for issuing and processing electronic
coupons where specified coupons are selectively transmitted to remote user
stations based on correlation data which categorizes the users of the remote
user stations.
Independent claim 1 reads as follows (App. Br. 18, Claims Appx.;
emphasis added):
1. A method for issuing and processing electronic
certificates having both transaction data and identification data,
comprising the steps of:
(a) establishing an electrical communication between a
service system and a plurality of issuer systems;
(b) establishing an electrical communication between the
service system and a plurality of remote user stations;
(c) transmitting to the service system from the plurality
of issuer systems instructions for issuing a predetermined type
and number of the electronic certificates;
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

3
(d) the service system receiving remote user profile data,
including information sufficient to specifically identify the
remote user, from the plurality of remote user stations and
developing correlation data which categorizes the remote user
profile data;
(e) selectively transmitting to the plurality of issuer
systems from the service system the correlation data without
also transmitting the specific remote user identification
information; and
(f) selectively transmitting to the plurality of remote user
stations specified electronic certificates based upon the
correlation data developed by the service system.

Independent claims 10, 11, 14 and 16-18 are directed to similar
methods for issuing and processing electronic certificates, and each of these
claims also recite the step of “selectively transmitting to the plurality of
remote user stations specified electronic certificates based upon the
correlation data developed by the service system” (App. Br. 19-24, Claims
Appx.).
The prior art relied upon by the Examiner in rejecting the claims is:
Lemon US 4,674,041 Jun. 16, 1987
Von Kohorn US 5,227,874 Jul. 13, 1993

The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Von Kohorn and Lemon4.
We REVERSE.

4 The Examiner has withdrawn the alternative 35 U.S.C. § 103(a) rejections
of claims 1-18 based on:
1. U.S. Patent No. 4,554,446 and U.S. Patent No. 5,285,278; or
2. Von Kohorn, U.S. Patent No. 5,285,278 and U.S. Patent No.
4,544,446 (Ans. 2 and 3).
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

4

ISSUE
The sole issue raised in the present appeal is whether the Appellant
has shown that the Examiner failed to establish a prima facie case of
obviousness because the Examiner did not show that Von Kohorn and/or
Lemon describes the limitation “selectively transmitting to the plurality of
remote user stations specified electronic certificates based upon the
correlation data developed by the service system” recited in all of the
rejected claims.

FINDINGS OF FACT
Our findings of fact are limited to those pertinent to resolving the sole
issue in the present appeal. In this regard, the record supports the following
findings of fact (FF) by a preponderance of the evidence.
1. The portions of Von Kohorn relied upon by the Examiner as
describing the pertinent limitation of claim 1 state:
A. Column 8, lines 44-48:
The records created pursuant to the present invention
may be used as tokens, coupons, certificates and general
proof of participation in the broadcast transmission
program.

B. Column 105, lines 1-5:
The electronic signals controlling the dispenser units also
can control inhibiting or blocking means which prevent
the receipt of certain electronic signals not intended for
the owners of such dispensers.

Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

5
2. The portions of Lemon relied upon by the Examiner as
describing the pertinent limitation of claim 1 state:
A. Column 5, lines 59-61:
As will be described hereinafter, terminal T displays only
those coupons currently available to the particular
customer.

B. Column 10, lines 24-30:
Upon receipt of a card reader interrupt (step 110), control
of microcomputer 22 is transferred to command sub-
sequence 112 (BPSTSK (FIG. 5.)) which causes
microcomputer 22 to search memory 58, 60 to locate the
coupon transaction history, if any, corresponding to the
customer credit account number presently provided via
card reader 36.

3. Lemon further states:
A. Column 5, lines 1-3:
Terminals T also include a central processing unit such as
a microcomputer 22 and the associated peripheral
circuitry illustrated schematically in FIG. 4.

B. Column 5, lines 61-68:
Upon activation, terminal T determines whether the same
credit card account number has been used within the last
week or other predesignated period by comparing the
present credit card number with those stored in the
memory in microcomputer 22. If so, microcomputer 22
permits only those coupons still available for selection by
that particular customer account number to be displayed.
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

6

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S.Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966).
The Court explained, “[o]ften, it will be necessary for a court to look
to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” KSR Int’l Co. at
1740-41. The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). However, “the analysis need not seek out precise teachings
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

7
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. at 1741.
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met, does the
burden of coming forward with evidence or argument shift to the Appellant.
Id. at 1445. Obviousness is then determined on the basis of the evidence as
a whole and the relative persuasiveness of the arguments. See Oetiker, 977
F.2d at 1445; Piasecki, 745 F.2d at 1472.

ANALYSIS
Initially, it is noted that the Appellant argues all of the pending claims
1-18 together as a group in the Appeal Brief, stating that all of the rejected
claims recite the step of “selectively transmitting to the plurality of remote
user stations specified electronic certificates based upon the correlation data
developed by the service system” which is the limitation at issue in the
present appeal (App. Br. 6). Thus, we select representative claim 1 to decide
the appeal of all of the claims, claims 2-18 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner contends that claims 1-18 are unpatentable, stating that
both of the cited prior art references describe issuing and processing of
electronic certificates or coupons, including the step of “selectively
transmitting to the plurality of remote user stations specified electronic
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

8
certificates based upon the correlation data developed by the service system”
recited in all of the rejected claims (Ans. 4).
In particular, the Examiner contends that Von Kohorn describes
“selective transmission of coupons based upon data provided by the remote
user,” citing column 8, lines 44-48 and column 105, lines 1-5 of Von
Kohorn (Ans. 4; Final Office Action, 2 and 3). The Examiner also contends
that Lemon also discloses “selective transmission of coupons based on data
provided by the user,” citing column 5, lines 59-61 and column 10, lines 24-
30 of Lemon (Ans. 4; Final Office Action 7). The cited portions of Von
Kohorn and Lemon relied upon by the Examiner as describing the limitation
at issue are reproduced in the Findings of Facts supra (FF 1A, 1B, 2A, 2B).
The Appellant contends that the cited portions of the Von Kohorn and
Lemon references relied upon fail to describe the step of “selectively
transmitting to the plurality of remote user stations specified electronic
certificates based upon the correlation data developed by the service system”
recited in all of the rejected claims, and thus, contend that the Examiner has
failed to establish a prima facie case of obviousness (App. Br. 6). We
consider infra, the Appellant’s numerous arguments as to why the Von
Kohorn and Lemon references both fail to disclose the recited step at issue.
In addressing Lemon first, the Appellant states that Lemon “teaches
that the same coupons are universally available to all stand alone terminals
(which are the only ‘remote user stations’ found in Lemon), limited only by
each user's prior selection of a particular coupon,” citing numerous passages
of Lemon in support (App. Br. 8-10; emphasis in original). Thus, the
Appellant contends that such universal availability of the same coupons is
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

9
not “selective transmission” as recited in claim 1 (App. Br. 10). However,
we note that these universally available coupons must still be selected for
transmission, and thus, satisfies the recited limitation “selectively
transmitting.” In this regard, we note that, during prosecution, claims are to
be given their broadest reasonable construction in light of the specification
unless express disclaimer is provided. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004); In re Bigio, 381 F.3d 1320, 1325 (Fed Cir.
2004). The Appellant has not directed us to such specific definition or
disclaimer associated with the limitation “selective transmission.”
The Appellant also argues that Lemon “does not teach or suggest the
type of selective transmission recited in claim 1 of the '648 patent, in which
the service system selectively transmits different specified electronic
certificates to different individual remote users based upon correlation data
developed” (App. Br. 10). However, in addition to giving broad
construction as explained above, this argument is not persuasive because
claim 1 does not recite that the selective transmission is from the service
system, or recite that “different” specified electronic certificates are
transmitted to “different” individual remote users as asserted. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Nonetheless, Appellant’s further argument that any selective
transmission that occurs in Lemon “takes place by way of filtering
performed at the remote user station, as opposed to selective transmission
. . . based upon correlation data developed by the service system as required
by claim 1” is persuasive (App. Br. 10). In this regard, the Examiner has
failed to show that the portions of Lemon relied upon describe “selectively
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

10
transmitting . . . specified electronic certificates based upon the correlation
data developed by the service system.”
In particular, as noted above, the method of Lemon can be considered
as describing selectively transmitting specified electronic certificates
because certificates must be selected prior to transmission. Moreover, we
agree with the Examiner that Lemon describes the recited “correlation data”
in that “each terminal (remote user station) may be monitored and controlled
via the host computer (service system) to obtain data such as the number of
coupons issued and the identification of customers using the terminal” and
“data containing information on those customers (correlation data) who have
selected the issuers coupons” is developed (Ans. 4 citing Lemon, col. 2, ll.
13-16 and col. 3, ll. 43-49). However, while transmission of electronic
certificates occurs in the system and method of Lemon, the cited portions
relied upon by the Examiner do not show that Lemon selectively transmits
the specified electronic certificates “to the plurality of remote user stations
based upon the correlation data developed by the service system” as recited
in claim 1.
The Examiner argues that that fact the system and method of Lemon
checks its database to determine which coupons should be made available to
a particular user satisfies the recited limitation of “selectively transmitting
. . . based upon the correlation data” (Ans. 8-10). However, the limiting of a
user’s choices based on the user’s identity (i.e., correlation data) appears to
occur at the standalone terminals (FF 3A and 3B). Limiting or restricting
user’s choices in the selection of electronic certificates at the respective
standalone terminals based on correlation data is not the same as
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

11
transmitting such electronic certificates to the respective standalone
terminals based on such correlation data. The portions of Lemon relied
upon by the Examiner do not address transmitting of the electronic
certificates to the standalone terminals based on the correlation data (FF 2A
and 2B) as asserted by the Examiner.
Similarly, the Appellant contends that the portions of Von Kohom
relied upon by the Examiner does not describe the recited step of selectively
transmitting electronic certificates, but instead, “describes a method in which
the central station broadcasts signals and the response unit (i.e., remote user
station) blocks portions of these signals sent universally from the central
station (i.e., service system) to all remote users” (App. Br. 11; FF 1A and
1B). Hence, the Appellant’s argument is substantively the same as that
presented relative to Lemon discussed supra. Indeed, the portions of Von
Kohom relied upon by the Examiner relate to blocking the receipt of
transmitted signals, and do not address transmitting of the electronic
certificates to the standalone terminals based on the correlation data (FF 1A
and 1B) as asserted by the Examiner.
We also note that the Examiner has articulated a reason to combine
Von Kohorn and Lemon, stating that “[i]n view of Lemon '041, it would
have been obvious to one of ordinary skill in the art at the time the invention
was made, to have the service system of Von Kohorn's '874 patent develop
correlation data containing information on those customers that have
selected the issuers coupons so that the cumulative record of all coupons
requested by and dispensed to the customers could also be used to select
future marketing strategies” (Ans. 4). However, this articulated reason does
Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

12
not address the deficiencies of the Examiner’s rejection discussed supra.
KSR, 127 S.Ct. at 1741.
In view of the above, we agree with the Appellant that the Examiner
has not established a prima facie case of obviousness in rejecting
independent claim 1. Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d 1472.
Therefore, we find that Appellant has shown that the Examiner erred in
rejecting claim 1, as well as claims 2-18, that all recite the same limitation
“selectively transmitting to the plurality of remote user stations specified
electronic certificates based upon the correlation data developed by the
service system.”

CONCLUSIONS
The Appellant has shown that the Examiner failed to establish a prima
facie case of obviousness because the Examiner did not show that Von
Kohorn and/or Lemon describes the limitation “selectively transmitting to
the plurality of remote user stations specified electronic certificates based
upon the correlation data developed by the service system” recited in all of
the rejected claims.

ORDER
The Examiner’s rejection of claims 1-18 is REVERSED.

REVERSED

Appeal 2009-0826
Reexamination Control 90/005,641 and 90/005,773
Patent 5,761,648

13

ack
cc:
Thomas G. Scavone Esq & Michael P. Mazza Esq
Niro Scavone Haller and Niro
181 West Madison Street Suite 4600
Chicago, IL 60602

cc Third Party Requester:

HAROLD N. WELLS
JENKINS & GILCHRIST
1445 ROSS AVENUE SUITE 3200
DALLAS, TX 75202-2799