Ex Parte 6014634 et al

Board of Patent Appeals and Interferences

Apr 23, 2008

90005888 (B.P.A.I. Apr. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Catalina Marketing Corporation,
APPELLANT

____________

Appeal 2007-2809
Reexamination Control 90/005,8881
Patent 6,014,6342
Technology Center 3600
____________

Decided: 23 April 2008
____________

Before TEDDY S. GRON, LEE E. BARRETT, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Request for Reexamination filed 12 December 2000, by third-party
requester coolsavings.com, inc., Chicago, IL.
2 Michael C. Scroggie, et al., System and Method for Providing Shopping
Aids and Incentives to Customers through a Computer Network, based on
application 08/905,501 filed on 4 August 1997.
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A. Introduction
The patent owner, Catalina Marketing Corporation (“Catalina”)
appeals3 under 35 U.S.C. § 134(b) from the final rejection4 of claims 1–49,
which are all of the pending claims in Reexamination Control 90/005,888 of
U.S. Patent 6,014,634 issued to Michael C. Scroggie, Michael E. Kacaba,
David A. Rochon, and David M. Diamond (“634 patent”)5. We have
jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a method of providing
purchasing incentives (coupons) implemented on a computer network.
Claims 1 and 49 are representative of the issues on appeal and read as
follows.
Claim 1:
A computer implemented method for determining purchasing
incentives for consumers, comprising the steps of:
storing in a purchase history database product data for
products purchased in association with a unique
identifier;

3 “37 CFR 41.37 FOURTH BRIEF” (“Br.”), filed 6 October 2007.
4 Final Rejection mailed 28 August 2006 (“FR”). As recognized by Catalina
(“37 CRF 41.41 REPLY BRIEF” (“Reply Br.”)) filed 16 February 2007) at
3, second paragraph), much, but not all, of the Final Rejection and the
Answer are substantially the same.
5 All citations are to the patent, the disclosure of which has not been
amended.
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[a] transmitting a prompt for personal information from a
main computer to a personal computer over a computer
network;
[b] transmitting personal information data from said personal
computer to said main computer over said computer
network in response to said prompt, said personal
information data including an identity code;
[c] generating page data defining a personal web page that is
accessible over said computer network, said personal
web page based at least in part on said personal
information data transmitted from said personal computer
to said main computer,
[d] assigning a web page address to said personal web page
based upon said personal information data,
storing said page data defining said personal web page in
a personal page database;
determining a purchase incentive depending on
(1) said product data stored in said purchase
history database or
(2) said page data stored in said personal page
database; and
updating said page data so that said personal web page
will display said purchase incentive.
(Br., Claims App. at 32; bracketed labels and underscore added.)
Claim 49:
A computer implemented method for generating a web page,
said method comprising the steps of:
[a] transmitting a prompt for personal information from a
main computer to a personal computer over a computer
network;
[b] transmitting personal preference information data from
said personal computer to said main computer over said
computer network in response to said prompt;
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[c] generating page data defining a web page based upon
said personal preference information data;
assigning a web page address to said web page based
upon said personal information data;
determining a purchase incentive depending on said
personal information; and
changing said page data so that said web page having
said web page address displays said purchase incentive.
(Br., Claims App. at 45; bracketed labels and underscore added.)
The Examiner has maintained the following rejections6:
1. Claims 1-49 are rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Barnett7 and Shane8.
2. Claims 48 and 49 are rejected under 35 U.S.C. § 112(2).

6 Examiner’s Answer (“Ans.”) mailed 24 January 2007. A “double
patenting” rejection was withdrawn in the Office Action mailed 28 August
2006, at 18. The fact of withdrawal may have been obscured by the
statement of the rejection in that office action at 5. As the rejection has been
replaced by a standard objection that claims 40 and 41 are substantial
duplicates of claims 42 and 43, respectively, we have no occasion to
comment on this matter further, despite Catalina’s request (Br. at 11 and
at 13-18), as our jurisdiction only encompasses rejections: it does not extend
to objections.
7 Craig W. Barnett et al., Method and System for Electronic Distribution of
Product Redemption Coupons, U.S. Patent 6,321, 208 B1, 20 Nov 2001,
based on application 08/425,185, filed 19 April 1995.
8 Terence Martin Shane, System and Method Providing an Interactive
Response to Direct Mail by Creating Personalized Web Page Based on URL
Provided on Mail Piece, U.S. Patent 5,793,972, 11 August 1998, based on
application 08/642,317, filed 3 May 1996.
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B. Findings of Fact (FF)
Findings of fact throughout this Decision are supported by a
preponderance of the evidence of record.
The 634 Patent
1. The 634 patent is based on application 08/905,501, which was filed
4 August 1997 as a continuation of PCT/US96/20497, which was filed
23 December 1996.
2. Provisional application 60/009,244, filed 26 December 1995, is listed
on the face of the 634 patent, but no claim for the benefit under
35 U.S.C. § 119(e) of its filing date has been made in this proceeding.
3. Catalina does not dispute the status of Barnett or Shane as prior art
against the 634 patent.
4. The principal interpretive disputes in this appeal relate to the phrase
“assigning a web page address,” which occurs in claim 1, clause [d], and to
the phrase “said personal web page based upon said personal information
data,” which occurs in claim 1, clauses [c] and [d], supra.
5. Embodiments of the invention that make use of a personal web page
are described in detail at column 14 of the 634 patent, in conjunction with
Figure 16, which is shown on the following page. 9

9 The text in curly braces before and after the Figures is provided to ensure
compliance with section 508 of the U.S. Rehabilitation Act for publication
of this Decision on the USPTO website pursuant to the Freedom of
Information Act. It is not part of the Decision.
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6. Figure 16 of the 634 patent is shown below:

{634 patent Figure 16 is said to show a flow diagram of part of a process of
the claimed invention that uses a web page.}
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7. According to the 634 patent, a “personal page” is set up at the request
of the consumer based on responses to a questionnaire that seeks selected
personal or demographic information. (634 patent at 14:8–15; see also
Figure 16, block 604 (“SET UP PERSONAL PAGE”).)
8. In the words of the 634 patent,
The personal page displays a screen of information that is
consumer-specific in many respects but will, of course, contain
some data that is supplied to all consumers who have personal
pages. The page is preferably personalized with the consumer’s
name and may also contain the shopping list, if any, already
generated by the consumer in the current online session.
Significantly, the personal page will also contain offers and
incentives targeted to the specific consumer.
(634 patent at 14:16–24.)
9. The 634 patent continues, “[w]hen the personal page is first set up, the
system generates an E-mail message to the consumer to advise him or her of
the address for gaining access to the personal page, as indicated at 608
[“EMAIL URL TO COMSUMER”].” (634 patent at 14:25–28; Figure 16.)
10. The 634 patent also describes setting up a personal database, 606.
(634 patent at 14:15–16.)
11. According to the 634 patent, the personal database 606 and the
personal page contents are updated based on consumer purchases and
changes to the personal page. (634 patent at 14:46–65.)
12. According to the 634 patent, “[u]se of the personal page permits
manufacturers and retailers to focus incentives on specific consumers, based
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on demographic data and prior purchasing data in the consumer’s personal
database 606.” (634 patent at 14:66 to 15:2.)
Barnett
13. Barnett describes a method and system that provides packages of
coupon data that can be downloaded on demand to a user’s personal
computer. (Barnett, Abstract.)
14. According to Barnett, “[t]he user’s demographic as well as coupon
selection data is provided back to the online service and coupon distributor
and issuers for subsequent marketing analysis.” (Barnett, Abstract.)
15. The general process is described in the following words (labels to
Barnett Figure 2 omitted for clarity):
The online service provider is connected with the datalink and
is thus accessible by any remote personal computer having a
data communications interface such as a modem. The online
service provider communicates with the personal computer in
order to transmit requested coupon data, and also in order to
receive coupon requests and the user-specific data mentioned
above.
(Barnett at 6:66–7:5.)
16. The “user-specific data mentioned above” is said to include coupons
selected, deleted, printed, and user demographics. (Barnett at 6:58–61.)
17. According to Barnett:
Information related to the coupons selected and printed can be
supplied to the coupon distributors and issuers, which can also
use information obtained from the various retail stores as to
which coupons were actually redeemed in order to more
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intelligently market subsequent coupons and target coupon
issuance in a more cost effective manner.
(Barnett at 5:27–33.)
18. Somewhat more particularly, Barnett indicates that “the coupon
selection, printing and redemption habits may be analyzed over a time
period and used to determine the subsequent targeted packages.” (Barnett
at 12:59–62.)
19. Barnett describes a further alternative embodiment in which the
functions of the online service provider are carried out at a site on the
Internet, such that the user’s identification number is sent to the Internet site
for validation and subsequent fulfillment of the request. (Barnett
at 13:50-63.)
20. Barnett does not describe the preparation of personalized web pages
as such.
21. A relatively detailed flowchart of Barnett’s process is illustrated in
Figure 9, which is shown on the following page.
22. Notably, first time users are prompted to provide demographic data.
(See Figure 9 and Barnett at 7:62–8:2.)
23. In response to a request for coupons, a coupon package can be
generated according to marketing analysis of the demographic information
(Barnett at 9:34-53, esp. 48) as well as “individual coupon selection,
printing, and redemption habits . . . analyzed over a time period . . . to
determine subsequent targeted packages” (id. at 12:48-62, esp. 59-62).
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{Barnett Figure 9 is shown below:}

{Barnett Figure 9 is said to show a flow chart of Barnett’s process}
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24. Barnett describes an alternative embodiment in which the function of
the online provider are carried out at a site on the Internet. (Barnett
at 13:50–62.)
Shane
25. Shane is “directed towards a system for providing an interactive
response to direct marketing programs, which involve the creation of a
personalized computer web page or like computer user interface accessible
by each recipient of the direct mail.” (Shane at 2:23–27.)
26. In an embodiment:
[a] web server computer accessible through the Internet and
capable of serving a plurality of web browsers enables a
responding recipient to access the web server computer by
entering the uniform resource locator displayed on the direct
mail piece received by the responding recipient into a web
browser on a remote computer. The web server computer
retrieves recipient data from the recipient database correlated to
the personal identification code contained in the uniform
resource locator and uses this recipient data to create a unique
interactive web page, and download the web page to responding
recipient’s web browser.
(Shane at 2:59 to 3:3.)
27. According to Shane, the web page may include the user’s name,
interactive elements such as forms to fill in and options to select, or still
more elaborate and unique web pages may be created. (Shane at 5:11–30.)
28. A flow chart of a process is illustrated in Shane Figure 4, which is
reproduced on the following page, and described starting at column 5,
line 63.
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29. Shane Figure 4E is shown below:

{Shane Figure 4E is said to show a flow diagram of part of the Shane direct
mail process.}
30. Following initialization and receipt and validation of a personal
identification code, if the user is a first-time user, the path starting at branch
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point E is followed; if the user has visited before, the path starting at branch
point F is followed.
31. On a first visit, the date, time, and user data are stored, a personalized
first visit web page is generated (Block 152) and the visit counter is set to 1
(Block 153). (Shane at 7:39-45.)
32. According to Shane, a direct mail piece such as the one shown in
Shane Figure 2 is sent to the recipient, which contains, in addition to the
recipient’s name and address, the uniform resource locator (URL), “of which
the last series of characters comprises the unique personal identification
code.” (Shane at 4:66 to 5:4.)
33. Shane explains that the URL, in this example,
www.abc.com/myproject/123-456-789-246
“is entered by the responding recipient into [the] web browser to access the
web server computer which generates a personalized web page.” (Shane
at 5:4-7, labels omitted.)
34. Thus, as Shane explains, the URL serves as the web page’s electronic
return address that contains a unique personal identification code. (Shane
at 2:32–34.)
35. If the user is a repeat customer, the user’s visit counter is incremented
(Block 156) (Shane at 7:53–55) and web page content, “preferably different
from the web page displayed during the respondent’s last visit” is displayed
(id. at 7:55-58.)
36. In either case, additional data may be requested of the user (Shane
at 7:59-63) and stored in the user’s data file (Block 160) (id. at 7:63-65), and
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output, such as e-mail (id. at 7:66-8:4), is triggered relating to appropriate
follow-up (Block 162) at branch point C (not shown).
C. Discussion
On appeal, the procedural burden is on the Appellant to demonstrate
reversible error in the Examiner’s position.
Obviousness
Claimed subject matter is not patentable if the differences between the
claimed subject matter and the prior art are such that one of ordinary skill in
the art, at the time the invention was made, would have deemed the claimed
subject matter obvious. 35 U.S.C. § 103(a). Obviousness is a legal
conclusion based on factual inquiries including the scope and content of the
prior art, the differences between the prior art and the claimed subject
matter, and the level of ordinary skill in the pertinent art. Graham v. John
Deere Co., 383 U.S. 1, 17 (1966). The inquiry is broad, and any secondary
considerations that prove instructive should be considered. KSR Int'l Co. v.
Teleflex Inc., 127 S.Ct. 1727, 1739 (2007). “One of the ways in which a
patent's subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent's claims.” KSR, 127 S.Ct. at 1742.
The Examiner finds that Barnett describes an online coupon
distribution method comprising many of the limitations recited in Catalina’s
claims. (Ans. at 4–9; FR at 8-13.) In particular, the Examiner finds that
Barnett describes [a] transmitting, to non-registered user at a remote
terminal who is seeking coupon information, an electronic prompt for
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information to complete a user profile; [b] receiving and [c'] storing the
response as a user profile; downloading to the user at the remote terminal a
coupon data management software module for managing the printing of
coupons, including unique user identification information; and, for
registered users, viewing coupons selected on the basis of user specific
information that is user profile information or user history information.
(Ans. at 8–9; FR at 12-13: bracketed letters correspond to claim limitations
identified supra. The prime indicates that the limitation is not fully met
because Barnett does not disclose the use of a web page.)
The Examiner also finds that:
Barnett does not expressly disclose the steps of using the user’s
personal data, such as demographic data, to generate a unique
personal web page for the user uniquely identifying the user,
assigning a unique web page address (unique URL) to the
user’s created web page, storing the generated or created web
page data (along with the user’s identifier) in a database,
sending an advisory message concerning the web page to the
user . . . and displaying the user’s personal data, such as the
user’s name, and the targeted generated coupons or purchase
incentives to the user via the personal web page (upon the
occurrence of the visit).
(Ans. at 10; FR at 13-14.)
The Examiner relies on Shane for the missing disclosure (Ans.
at 10-13 and at 17–21; FR at 14-16 and at 25-29), and concludes that the
ordinary worker would have found it obvious to combine the teachings of
Barnett and Shane to arrive at the claimed invention. (Ans. at 13-14 and
at 21-22; FR at 17-18 and at 29-30.)
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In particular, the Examiner finds that Shane describes a system for
providing a personalized web page for interactive response to direct
[electronic] mail. (Ans. at 10-14.) The Examiner finds further that Shane
teaches that a personalized web page containing messages and promotions is
set up for users who respond to an inquiry. (Ans. at 10-11.) Moreover, the
Examiner finds that Shane describes “a system wherein during an identified
user’s visit to a personalized web page, created based on the user’s personal
information, the web server or the main computer requests additional
personal information from the user or allows the user to modify existing
personal information . . . [which] is used to generate or update personal web
page data for the user (col. 7:59-66).” (Ans. at 20; FR at 28.)
The Examiner reasons that the ordinary worker would have been
motivated to incorporate the personalized web page methodology described
by Shane in the targeted coupon distribution system described by Barnett to
take advantage of the personalization, rapid coupon delivery, and
information collection capabilities (such as customer information, coupon
printing and use). (Ans. at 13-14 and 22; FR at 29-30.)
Catalina argues the patentability of the rejected claims in three groups.
The first argument, which applies to all the claims on appeal, is that neither
Barnett nor Shane discloses assigning a web page address based upon the
personal information provided from the personal computer to the main
computer. (Br. at 25, first paragraph.)
Catalina focuses on limitations [a] through [d] of claim 1, which we
reproduce here for convenient reference:
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A computer implemented method for determining purchasing
incentives for consumers, comprising the steps of:
* * *
[a] transmitting a prompt for personal information from a
main computer to a personal computer over a computer
network;
[b] transmitting personal information data from said personal
computer to said main computer over said computer
network in response to said prompt, said personal
information data including an identity code;
[c] generating page data defining a personal web page that is
accessible over said computer network, said personal
web page based at least in part on said personal
information data transmitted from said personal computer
to said main computer,
[d] assigning a web page address to said personal web page based
upon said personal information data.
In particular, Catalina finds that “Shane does not disclose the
prompt/response of personal information between the main and personal
computers and subsequent use of the personal information received from the
personal computer being used for assigning a web page address.” (Br.
at 26.) Although Catalina finds that “Shane does disclose that its system
associates a unique identification code with each recipient record” (id. at 27,
last paragraph), Catalina argues that Shane “does not disclose that the unique
identifier is based upon either personal information or information provided
by a personal computer to Shane’s main computer. Moreover, it does not
even suggest that the unique identifier is based upon information provided
by the intended recipient.” (Id.)
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Catalina’s argument rests on a misinterpretation of limitation [d]. The
phrase “based upon said personal information data” modifies the
immediately preceding phrase, “said personal web page,” not, as Catalina
assumes, the initial phrase, “assigning a web page address.” That is, the
complex phrase “said personal web page based upon said personal
information data” is a unitary term in the context of claim 1. The basis for
this interpretation is found in limitation [c], which contains the phrase, “said
personal web page based at least in part on said personal information data
transmitted from said personal computer to said main computer.” Thus, the
phrase in [d], “personal web page based upon said personal information
data,” merely refers back to the more complex phrase in [c]. The presence
in [c] of the proviso, “at least in part,” does not detract from this analysis, as
the proviso merely and expressly permits the web page to be based on
additional personal information (e.g., information that is already part of a
database). Similarly, the “transmitted from . . . ” phrase merely ties the
personal data to that defined in limitation [b].
Thus, step [d] merely requires that a web page address be assigned to
the personal web page. The address need not have been based on personal
data transmitted from the personal computer to the main computer. The
personal web page, of course, is required by [c] to be based on some of the
transmitted personal data.10 But such data, if in fact missing from the

10 The Examiner’s contention to the contrary (Ans. at 19, “the argued claims,
or at least independent claim 1, never recite or require the presence of a live
user or his real-time input or participation”) is erroneous. The error,
however, is harmless, as the Examiner points out (Ans. at 20, first full
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personalized web page shown in Shane Figure 3, would have been obvious
to display on the personalized web pages taught by Shane, given the intent
and teachings of either Shane or Barnett to provide individualized marketing
services.
Catalina has not directed our attention to any definition or usage of
limitation [d] (or equivalent language) in the specification that might
override the present interpretation that assignment of the web page address is
independent from the personal data that is transmitted. Indeed, the only
support Catalina cites for the address of the personal web page is Block 604,
“SET UP PERSONAL PAGE,” in Figure 16 (FF 6), and claim 1 itself. (See,
Br. at 10, 4th paragraph.) These disclosures, however, are too meager and
too general to carry Catalina’s burden of persuasion that the web address
itself must be based on some of the transmitted personal information.
Moreover, Block 608, “EMAIL URL TO CO[N]SUMER” (Figure 16 and
634 patent at 14:25-28 (FF 8)) does not support Catalina’s contention that
the address is based on the personal information transmitted by the
consumer. Rather, the URL provided as an address by Catalina to the
consumer appears to be no more than the URL address
www.abc.com/myproject/123-456-789-246
provided by Shane in the personalized initial direct mail shown in Shane
Figure 2 (FF 33).
Catalina’s arguments in the Reply Brief have been considered but are
not persuasive. Much of the Reply Brief is devoted to traversing the

paragraph) that Shane discloses modifying the web page in response to user
input.
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Examiner’s findings of admissions by Catalina. As we have not relied on
any such “admissions,” we neither endorse nor reject the Examiner’s
findings—but we note that the Examiner and Catalina often appear to be
talking past one another or are not addressing the same problem.
We conclude that Catalina has not shown reversible error in the
Examiner’s rejection of claims 1–49 for obviousness.
Catalina’s second argument, that Barnett does not determine a
purchase incentive on a basis of frequency of usage of purchase incentives
by the user, applies to dependent claims 9, 22, and 35. (Br. at 30.) This
argument is not persuasive in view of Barnett’s disclosure that “the coupon
selection, printing and redemption habits may be analyzed over a time
period and used to determine the subsequent targeted packages.” (Barnett
at 12:59-62: FF 18.) Although “frequency of usage” of coupons is not
mentioned, it is not credible that the ordinary worker in these arts would fail
to analyze the frequency of coupon use when the aim of the disclosed system
is to improve marketing and targeting of coupons to individual consumers.
Catalina’s third argument, that Barnett does not describe determining
purchase incentives on a basis of frequency of use of the personal page by a
consumer, applies to dependent claims 10, 23, and 36. (Br. at 30-31). This
argument is also not persuasive. Barnett describes, as pointed out by the
Examiner (Ans. at 7, first full paragraph), an embodiment in which the user
accesses the coupon data repository via an Internet site (Barnett at 13:50-52;
FF 25). The ordinary Internet site developer would have routinely tracked
the number of visitors to a given site and, as shown by Shane, the number,
date and time of each visit would also have been of interest. (Shane
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at 7:39-45 (FF 31); 7:53–55 (FF 35.)) That potentially valuable marketing
information, and the readily derived frequency of visits, would have been of
great interest to anyone selling goods and services. Thus, determining the
purchase incentive on the basis of frequency of usage of a web page would
have been obvious to the ordinary web designer and web marketer.
Catalina’s three arguments are largely devoted to attacking the
adequacy of either Barnett or Shane. The rejection, however, is over the
combined teachings of the two references. It is improper to attack references
individually where, as here, the obviousness rejection is based on their
combined teachings. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425-26 (CCPA 1981).
Because Catalina has not raised arguments with respect to the other
limitations of claim 1, or to the limitations of the other independent or
dependent claims, except as noted in the discussion of Catalina’s second and
third arguments, all other arguments against the Examiner’s rejections under
§ 103 have been waived in this proceeding. 37 C.F.R. § 41.37(c)(1)(vii)11.
Indefiniteness
Claims are definite if they “set out and circumscribe a particular area
with a reasonable degree of precision and particularity. It is here where the
definiteness of the language employed must be analyzed—not in a vacuum,
but always in light of the teachings of the prior art and of the particular

11 Board rule 37(c)(1)(vii) reads in relevant part, “Any arguments or
authorities not included in the brief or a reply brief filed pursuant to § 41.41
will be refused consideration by the Board, unless good cause is shown.”
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application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
The Examiner maintains that the presence of the “broad” limitation in
part [a] of claims 48 and 49, “personal information,” and the “narrow”
limitation in part [b], “personal preference information,” render the scope of
these claims indefinite because the metes and bounds of the patent protection
desired are not clearly set forth. (Ans. at 3.) Although the Examiner cites a
non-precedential decision of the Board of Patent Appeals and Interferences
and several non-precedential decisions of its predecessor, the Board of
Patent Appeals, the Examiner does not explain why the rationales of those
decisions apply to the facts of this case.12 The Examiner speculates that the
“Patent owner probably intended” that the personal preference information
be a subset or further limitation of the requested “personal information”
(Ans. at 4), but does not explain what interpretive problem arises. The
Examiner then states that “[t]he Examiner will not interpret, herein,
preference information as defined in the specification.” (Id.) The Examiner
does not, however, indicate where such a definition is presented in the
specification; nor does the Examiner state the substance of the alleged
definition.
This rejection is set out with so little explanation that it is no more
than a per se application of a rule that requires careful analysis. There are,
of course, few, if any, per se rules in patent examination. Cf. KSR

12 Non-precedential decisions have, by definition, only the force of their
reasoning, as applicable to the facts in the case at hand, to recommend them.
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International Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007) (“We begin
by rejecting the rigid approach of the Court of Appeals.”) Moreover, the
Examiner’s arguments are not internally consistent. If the specification
provided an express definition of “personal preference information,” there
would be no need to speculate as to what Catalina “probably intended.”
Such an express definition of a term in the specification would trump any
contrary or inconsistent general definition. The Examiner has not explained
any basis on which an express definition in the specification could be
ignored. Moreover, the Examiner has not directed our attention to express
definitions of the terms “personal information” and “personal preference
information”; nor have we found one in our own review of the specification.
The decisive consideration, in any event, is that the Examiner has not
explained why, in response to the broad request [a] for personal information,
a “narrower” response [b] would be indefinite in the context of claim 1,
taken as a whole, in the light of the 634 specification or the art of record.
As the Examiner has failed to establish a prima facie case that the
claim language is indefinite, we need not consider extrinsic evidence such as
the testimony of Michael C. Scroggie, offered by Catalina. The rejection of
claims 48 and 49 under 35 U.S.C. § 112(2) is REVERSED.
E. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejection of claims 1–49 under
35 U.S.C. § 103(a) in view of the combined disclosures of Barnett and
Shane is AFFIRMED;
Appeal 2007-2809
Reexamination Control 90/005,888
Patent 6,014,634

24
FURTHER ORDERED that that the rejection of claims 48
and 49 under 35 U.S.C. § 112(2) is REVERSED; and
FURTHER ORDERED that no time period for taking any
subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a).
AFFIRMED

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