Ex Parte 6721743 et al

Board of Patent Appeals and Interferences

Sep 28, 2010

95000043 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,043 05/26/2004 6721743 370-031 5307
7590 09/29/2010
Staas and Halsey LLP
Suite 700 1201 New York Avenue NW
Washington, DC 20005
EXAMINER
WASSUM, LUKE S
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________________ ___

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________ ___

SIGNATURE SYSTEMS, LLC1
Requester, Respondent

v.

AD. KEN CORP.2
Patent Owner, Appellant
_________________ ___

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Technology Center 2100
_________________ ___

Before ANTON W. FETTING, KEVIN F. TURNER, and
DANIEL S. SONG, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL3

1 SIGNATURE SYSTEMS, LLC is the Third Party Requestor and a real
party the in interest (Resp. Br. 2).
2 AD. KEN CORP. is the Patent Owner and a real party in interest (App. Br.
2).
3 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. § 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.
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STATEMENT OF THE CASE4
The Patent Owner (“Appellant”) appeals from the decision of the
Examiner to finally reject claims 1, 3-7, and 9-21 (Right of Appeal Notice5
18-53). We have jurisdiction under 35 U.S.C. §§ 134 and 315.
The Third Party Requester (“Respondent”) filed a Request for Inter
Partes Reexamination on May 26, 2004 against the subject patent, U.S.
Patent no. 6,721,743 B1 (“the '743 Patent”), entitled “Value Points
Exchanging Managing Method Among First and Second Business Entities
Where Value Points Available to On-Line Customer Obtaining Goods or
Services,” issuing April 13, 2004, listing Hisashi Sakakibara as the sole
inventor. The subject patent was assigned to the Patent Owner AD. Ken
Corp.
The '743 Patent relates generally to methods of managing points used
for receiving on-line services, such as airline points, where such points can
expire or not be sufficient for exchange for products and/or services (col. 1,
ll. 11-16, 23-35). The system allows for the value points to be exchanged
for communication points, where the value points can be derived from
multiple providers (col. 1, l. 57 – col. 2, l. 5). As shown in Figs. 1, 2 and 4,
preset exchange rates are provided between the providers’ (300) value points
and the system’s (100) communication points using an exchange database
(102) (col. 6, ll. 25-29, 43-53; col. 6, l. 66 – col. 7, l. 10: Figs. 1, 2, 4).

4 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 12, 2008) and Rebuttal Brief (“Rebut. Br.,” filed January 21,
2009), the Third Party Requestor’s Respondent’s Brief (“Resp. Br.,” filed
June 12, 2008), and the Examiner’s Answer (“Ans.,” mailed December 17,
2008).
5 Hereinafter “RAN”.
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The '743 Patent issued with claims 1-10, and during the course of the
instant reexamination, claims 2 and 8 were cancelled, claims 1, 3-7, 9, and
10 were amended, and claims 11-21 were added. We take independent
claim 1 and dependent claim 16 as representative, which read as follows
(where we have omitted amendment indicia):
1. A point managing method for managing points among
a first business entity, plural second business entities that
manage value points given to customers as a reward for
consumption activity with the second business entities, and
customers of the first and second business entities, said
method comprising:
managing by the first business entity communication
points used by customers for on-line obtaining of goods or
services solely provided by the first business entity or by the
first business entity and a plurality of providers cooperative
with the first business entity;
contracting between each second business entity and
the first business entity for exchange rates between the value
points of each second business entity and the
communications points of the first business entity used for
on-line goods or services solely provided by the first
business entity or by the first business entity and the
cooperative providers, providing for the value points of each
second business entity an exchange rate into the
communication points of the first business entity according
to the contracting;
interactively instructing by a customer said first
business entity to exchange value points of a second
business entity for communication points of the first
business entity;
responsive to and in accordance with the instructing,
the first business entity automatically requesting said second
business entity to send the value points already given to the
customer;
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responsive to the requesting, the second business
entity automatically sending the requested already given
value points from said second business entity to said first
business entity; and
responsive to receiving the value points, the first
business entity exchanging the received value points of said
second business entity for communication points of the first
business entity according to the contracting for preset
exchange rates of the value points of each second business
entity into the communication points of the first business
entity, whereby the exchanged-for communication points
become available to the customer for on-line obtaining of
goods or services solely provided by the first business entity
or the first business entity and the cooperative providers.

16. The method of claims 1, further comprising when the
exchanging of the value points of the second business entity
into the communications points of the first business entity us
performed, paying a service charge by the second business
entity to the first business entity.

The Examiner relies upon the following references in the rejections of
the claims:
Jennings 5,659,165 Aug. 19, 1997
Postrel 6,594,640 B1 Jul. 15, 2003
Gutierrez-Sheris 2002/0029190 Mar. 7, 2002

The following rejections were made by the Examiner:
1) claim 12 under 35 U.S.C. § 112, second paragraph for being
indefinite (Ans. 5);
2) claims 1, 3-7, 9, 10, 12, and 16-21 under 35 U.S.C. § 102(e) as
anticipated by Postrel (Ans. 6-35);
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3) claim 11 under 35 U.S.C. § 103(a) as unpatentable over Postrel and
Jennings (Ans. 35-36); and
4) claims 13-15 under 35 U.S.C. § 103(a) as unpatentable over
Postrel, Jennings, and Gutierrez-Sheris (Ans. 36-39).
We AFFIRM-IN-PART.

ISSUES
Appellant has provided a list of issues (App. Br. 16-20), with which
both the Respondent and the Examiner largely agree (Resp. Br. 3-4; Ans. 3-
4). We have adopted those issues for this appeal, with minor modifications
and changes in order. Arguments which Appellant could have made but
chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. §
41.37(c)(1)(vii).
Thus, the following issues have been raised in the present appeal:
1. Did the Examiner err in finding that claim 12 is indefinite under 35
U.S.C. § 112, second paragraph?
2. Did the Examiner err in finding that the effective date of Postrel is
the filing date of the Postrel provisional application: June 23, 1999?
3. Does Postrel expressly or inherently disclose the “contracting” step
of claim 1, and equivalent elements in independent claims 3, 5, 6, and 10,
under 35 U.S.C. § 102(e)?
4. Is Postrel’s disclosure of “consideration” limited to “money
consideration”?
5. Did the Examiner err in finding that claim 4 is anticipated by
Postrel under 35 U.S.C. § 102(e)?
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6. Did the Examiner err in finding that claims 16-21 are anticipated
by Postrel under 35 U.S.C. § 102(e)?
7. Did the Examiner err in finding that claim 11 is obvious over
Postrel and Jennings under 35 U.S.C. § 103?
8. Did the Examiner err in finding that claims 13-15 are obvious over
Postrel, Jennings, and Gutierrez-Sheris under 35 U.S.C. § 103?
9. Did the Examiner meet the burden of proof standard for
establishing a prima facie case of unpatentabilty of the claims?
10. Can the Appellant direct comments to arguments presented by the
Respondent, but not explicitly adopted by the Office?
11. Did positions taken or adopted by the Examiner in the Answer
constitute grounds for the reopening of prosecution? (See Rebut. Br. 2-3)?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The '743 Patent relates generally to methods of
managing points used for receiving on-line services, such as
air line points, where such points can expire or not be
sufficient for exchange for products and/or services (col. 1,
ll. 11-16, 23-35). The system allows for the value points to
be exchanged for communication points, where the value
points can be derived from multiple providers (col. 1, l. 57 –
col. 2, l. 5).

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2. In the '743 Patent, preset exchange rates are provided
between the providers’ (300) value points and the system’s
(100) communication points using an exchange database
(102) (col. 6, ll. 25-29, 43-53; col. 6, l. 66 – col. 7, l. 10:
Figs. 1, 2, 4).

3. In the '743 Patent, the recorded exchange rates are
values set according to the contents of the contracts made
between the first and second business entities (col. 7, ll. 7-
10).

4. In the '743 Patent, in the exchange process, a
settlement process is performed, wherein the second
business entity pays the first business entity a charge for
using services which is calculated based on the exchanged
valuable points and the exchange rate (col. 9, ll. 28-33).

5. Postrel is directed to a system for electronic barter,
which allows for trading and redemption of points from
frequent use reward programs. The user may earn points
from a plurality of independent entities, and a trading server
accumulates some or all of those points into a reward
exchange account associated with the user (Abs.).

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6. In Postrel, the trading server (20) communicates with
users (40) and merchants (30) and provides reward server
conversion rates as a part of a database (54) (col. 6, ll. 37-
52; Fig. 5). The exchange rate is established for the relative
consideration received by the companies involved in the
transaction (col. 3, ll. 33-35).

7. In Postrel:
The reward server computer decreases the user’s
award point account by the requested number of
reward points. The reward server computer
conveys consideration to the trading server
computer, where the consideration corresponds
to the number of reward points decreased in the
account of the reward server. The trading server
computer increases the reward exchange account
on the trading server associated with the user by
the requested number of points.
(col. 4, ll. 11-18).

8. In Postrel:
The reward server computer 10 conveys
consideration to the trading server computer 20
where the consideration corresponds to the
number of reward points decreased in the user's
account 52 on the reward server 10 (step 616).
For example, the consideration may be in the
form of a monetary credit to an account that
exists between the trading server and the reward
server, that gets paid at the end of a predefined
billing cycle (i.e. every month).
(col. 6, ll. 37-47).
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9. Jennings discloses an automated process for
transferring funds between accounts and provides for a user
confirmation process, which provides an amount to be
transferred, the current exchange rate, and the amount to be
provided to a recipient (col. 2, ll. 31-44).

10. Gutierrez-Sheris discloses money-transfer techniques
and provides a confirmation web page to the customer as an
HTML document, which includes a transferred amount, the
exchange rate, the pick-up amount, and allowing the user the
opportunity to change the quantity of currency to be
exchanged (¶¶ [0134]-[0136]).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. The properly interpreted claim must then be compared with the
prior art.
"[A]nticipation by inherent disclosure is appropriate only when the
reference discloses prior art that must necessarily include the unstated
limitation . . . ." Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d
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1364, 1373 (Fed. Cir. 2002). "Inherency, however, may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." Cont'l Can Co. USA,
Inc. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir. 1991) (quoting In
re Oelrich, 666 F.2d 578, 581 (CCPA 1981)); see also Trintec Indus., Inc. v.
Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) ("Inherent
anticipation requires that the missing descriptive material is 'necessarily
present,' not merely probably or possibly present, in the prior art.’" (quoting
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999))).
“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, 406
(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). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

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ANALYSIS
1. Indefiniteness of Claim 12 under 35 U.S.C. § 112, Second
Paragraph
Appellant argues that one of ordinary skill in the art would be
apprised of the scope of claim 12 because it would be clear that “second
identification information” and “indicia of a quantity of communication
points” are separately input (App. Br. 42). Respondent argues that
Appellant does not address how the quantity of communication points may
be part of, i.e., included in, the second identification information (Resp. Br.
22), the Examiner adopts that position (Ans. 85), and finds that since the
indicia of quantity of points is not identification information, it is not clear
what information is input. Appellant responds that claim 12 makes clear that
all the information recited in the contested section of that claim can be input
into the second input area (Rebut. Br. 15). We agree with Appellant.
We find through an examination of claim 12, that multiple types of
information are intended to be input through the second input area, and that
the claim does not seek to delineate the “indicia of a quantity of
communication points” as a type of second identification information.
While claim 12 could be interpreted as the Respondent and the Examiner
allege, the more reasonable interpretation is that the “including” provides for
other types of information that can be input through the second input area.
As such, we do not find claim 12 to be indefinite, and we find the Examiner
erred in rejecting claim 12 under 35 U.S.C. § 112, second paragraph.

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2. Effective date of Postrel
Appellant argues that the Examiner has applied an incorrect standard
in determining that Postrel is entitled to the filing date of the earlier
provisional filing date of June 23, 1999 (App. Br. 43). Respondent argues
that the Examiner for the 09/602,222 patent application, which matured into
the Postrel patent, was in the best position to determine the nature of the
amendments made in that application and did not raise any new matter
issues (Resp. Br. 24-25). Respondent also argues that the amendments made
in the application are fully supported by the provisional application for the
same (id.). The Examiner made specific findings, as discussed below.
To facilitate the consideration of the instant issue, the Examiner
provided a copy of the issued Postrel patent, annotated to show portions
which differ from the provisional application, which we adopt in this
proceedings to show the changes made (Ans. 88). We find no error in the
Examiner’s comparison (Ans. 90-99), and thus now only consider whether
the Examiner applied the correct standard in making the determination that
Postrel is entitled to the filing date of the provisional.
The Examiner acknowledges that there were additions that were made
to the provisional application for Postrel that resulted in the 09/602,222
patent application, but finds these additions expanded on material already
disclosed in the provisional application (Ans. 90). The Examiner also
acknowledges that aspects first disclosed in the initially filed specification of
the 09/602,222 patent application are only entitled to the latter’s filing date
of June 23, 2000 (id.). The Examiner also finds that the provisional
application’s disclosure conveys with reasonable clarity to those skilled in
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the art that, as of the filing date of the provisional application, the applicant
was in possession of the invention claimed in Postrel (Ans. 89-90).
To satisfy the written description requirement, an applicant must
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention, and that the
invention, in that context, is whatever is now claimed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The test for
sufficiency of support in a parent application is whether the disclosure of the
application relied upon "reasonably conveys to the artisan that the inventor
had possession at that time of the later claimed subject matter." Ralston
Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)
(quoting In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)).
As such, we find that the Examiner has shown that the inventor in
Postrel had possession of the invention claimed in Postrel as of the filing of
the provisional application, with the exception noted by the Examiner (Ans.
99). Thus, we find no error in the Examiner’s application of the proper
standard and we do not find Appellant’s arguments to be compelling.

3. Express or Inherent Disclosure of Postrel under 35 U.S.C. § 102(e)
Independent Claim 1
Appellant argues that Postrel fails to disclose by who, or into what, or
how the reward server exchange rates are established, either expressly or
inherently (App. Br. 25-26). As such, Appellant argues, there can be no pre-
existing contractual relationship between the entities as required by claim 1
(id.). Appellant also argues that the lack of disclosure with respect to the
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development of the exchange rates make Postrel too vague to serve as an
anticipatory reference (App. Br. 27), and that the exchange rates are
established by the reward server only (App. Br. 28), where the latter is
supported by Postrel’s Fig. 9 and supporting description (App. Br. 29).
Respondent argues that Postrel provides for users, holding points from
multiple reward accounts, to trade those points to a single exchange account
based on reward server exchange rates located in a database (Resp. Br. 14).
The Examiner finds that Postrel discloses that specific exchange rates are
established between specific pairs of companies and these rates are
established before the transaction takes place (Ans. 43-44). The Examiner
also finds that based on existence of conversion rates in Postrel, the
existence of a pre-arranged/ contracted-for agreement between the parties is
inherent in Postrel (Ans. 46). The Examiner also finds that a reference must
be considered not only for what it expressly teaches, but also for what is
fairly suggests (Ans. 50). We generally agree with the Examiner.
A review of the contents of the '743 Patent provides little support for
what is recited in claim 1 as the “contracting” step. The Specification of the
'743 Patent merely provides that contracts are made between the first and
second business entities (FF 3). As such, the broadest reasonable
interpretation of claim 1 allows for many types of contracts to fall with the
scope of contested step of claim 1. As generally understood, a contract
requires an offer and acceptance of that offer, usually with the transfer of
some type of consideration (See Restatement (Second) of Contracts § 71
(1979).).
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We find that such a contract could be formed by the virtue of the
actual exchange of points according to a rate set by only one of the parties,
such that the exchange rates need not be negotiated by the parties. In other
words, the acceptance of an exchange rate, set by only one party, and the
production of such an exchange would be sufficient for there to be
contracting between the parties, since both parties have agreed to the
exchange. Although this is not expressly provided for in Postrel, we agree
with the Examiner that since the exchange rate is set prior to the exchange
(Ans. 46; FF 6), the parties have inherently contracted, at least to the extent
required by claim 1.
As such, we do not find the “who” or the “how” of the manner in
which the exchange rate is determined to be dispositive in view of the
language of claim 1, as argued by Appellant (App. Br. 28-29). As to
Appellant’s query of “into what,” Postrel provides for the transfer of points
from one type into an increase in the reward exchange account based on
points (FF 7). We also find that even if the exchange rate is set by a single
party in Postrel, that would anticipate the subject matter of the contested
contracting step of claim 1.
In addition, we do not find Postrel to be too vague to anticipate claim
1. Postrel clearly provides for exchange rates to be used (FF 6), where those
points can be exchanged from one type of points into another type (FF 7),
and that contracting is inherently performed through the exchange itself, as
discussed supra. As such, we do not find Appellant’s arguments to be
compelling and we find no error in this aspect of the Examiner’s rejection of
claim 1.
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4. Postrel’s Disclosure of “consideration”
Appellant argues that in the disclosure of Postel, “consideration” is
limited to money that a user would be owed by the reward server for the
redemption of reward server points, and that Postrel is silent with respect to
other ways of achieving consideration (App. Br. 30-31). Appellant also
suggests that Postrel could just as easily convert one set of points into cash
and then transfer that cash into another set of points (App. Br. 31).
Appellant also argues that Postrel’s Fig. 6 precludes the direct exchange of
reward points into exchange points (App. Br. 33).
Respondent argues that nowhere in Postrel is there a teaching that
consideration, in the form of a money payment, must be made to shift
liability (Resp. Br. 15), and there is no support therein that cash must be
used as the medium of exchange (id.). The Examiner finds that Postrel
makes clear that the user’s transaction is limited to an exchange and that the
conveyance of consideration is strictly between proprietors of the reward
and trading servers (Ans. 58). The Examiner also notes that Postrel fails to
disclose the conversion of reward points into cash, and that even if the points
were known to have a cash equivalent, that does not imply such a conversion
is required in Postrel (Ans. 58-62). The Examiner also finds that it would be
logical for the proprietor of the trading server to receive compensation
concurrently with the exchange of points (Ans. 65-66). We agree with the
Examiner.
While Postrel certainly discusses that consideration may be in the
form of monetary credit (FF 8), we do not find Postrel to apply that
disclosure as a limiting condition. Postrel also provides that the
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consideration “corresponds to the number of reward points” (FF 8), such that
we do not find conversion into cash or monetary credit to be a requirement.
Given the disclosure of exchange rates (FF 6) and our discussion supra, we
do not find that Postrel would require cash to be a medium of exchange
between points. We further agree with the Examiner (Ans. 65-66) that Fig.
6 of Postrel does not preclude the direct point-to-point exchange, given that
the totality of the disclosure of Postrel provides that user account on the
trading server is enumerated in points (FF 7). As such, we do not find
Appellant’s arguments to be compelling and we find no error in the
Examiner’s rejection of claim 1.

Independent Claims 3, 5, 6, and 10
We note that while Appellant’s arguments explicitly utilize the
limitations found in claim 1, independent claims 3, 5, 6, and 10 all recite
similar limitations providing for the contracting between the second business
entities and the first business entity. As applied to these additional claims,
we do not find Appellant’s arguments to be compelling and find no error in
the Examiner’s rejection of independent claims 3, 5, 6, and 10.

5. Dependent Claim 4
With respect to claim 4, Appellant argues that the cited portion of
Postrel does not disclose two identifications communicated and used as
recited in that claim (App. Br. 37). Respondent argues that, in Postrel, first
identification information is supplied to authenticate the terminal and a
second is used to find the corresponding stored value points (Resp. Br. 19).
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The Examiner adopts that position (Ans. 67), and finds that without the use
of a second user identification, the trading server would have no way in
which to locate and access the user’s account (Ans. 70-71). We agree with
the Examiner.
We concur with the Examiner that without a second identifier, a user
in Postrel would not be able to locate their account. Such a second identifier
would necessarily be different from a first identifier, used to log into the
trading computer (Ans. 27), and would provide the same functions as recited
for the first and second identification information within the point managing
system of claim 4. As such, we do not find Appellant’s arguments to be
compelling and we find no error in the Examiner’s rejection of claim 4.

Dependent Claims 7, 9, 12
With respect to claims 7 and 9, because Appellant does not argue
these claims separately, we affirm their rejection based on finding no error in
the rejection of independent claim 6, from which they both depend.
Appellant separately argues claim 12 in their Appeal Brief, but argues
that it is not rendered obvious by the combination of Postrel and Jennings
(App. Br. 38-39). As the Examiner points out (Ans. 77), claim 12 was
rejected under 35 U.S.C. § 102(e) as being anticipated by Postrel, and
Appellant’s arguments against the non-existent rejection are moot.
Appellant makes a new argument against the rejection of claim 12 in the
Rebuttal Brief (Rebut. Br. 13), but this argument is not commensurate with
arguments made in the Appeal Brief, nor with issues raised in the Answer or
Respondent’s Brief. See M.P.E.P. 2679. As such, we do not consider this
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new argument and affirm the rejection of claim 12 based on its dependence
on claim 4, discussed supra.

6. Dependent Claims 16-21
Appellant argues that consideration in Postrel cannot reasonably refer
to both transferred points to satisfy liability and a service charge to satisfy
liability as suggested by the Examiner and Respondent (App. Br. 38-40;
Rebut. Br. 14). In other words, if consideration is made up of points and
Postrel teaches a direct exchange in points, there would be no monetary
consideration and thus no service charge (App. Br. 40-42). Respondent
argues that Appellant is merely re-labeling the consideration as a service
charge which does not render the concept patentable (Resp. Br. 21-22). The
Examiner finds that the transfer of consideration in Postrel amounts to a
service charge being imposed on the proprietor of the reward server in
exchange for assuming the debt (Ans. 83-84). We agree with Appellant.
Further to our discussion of Postrel and its disclosed consideration
supra, we found that Postrel provides for point-to-point exchange in view of
this consideration. It is also true that this exchange can be made from points
into cash or other types of currency (FF 6, 8). We agree with Appellant,
however, that Postrel does not disclose both a point-to-point exchange and
exchange for a portion of the points for monetary value in a single
embodiment. It could well be that providing a partial monetary value, such
as a service charge, in addition to a point-for-point exchange would have
been obvious in view of Postrel, but that does not produce a prima facie case
of anticipation. Anticipation may not be established by probabilities or
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possibilities, and a single reference must be shown to disclose each and
every element of a claim. As such, we find that the Examiner erred in
rejecting claims 16-21 as being anticipated by Postrel.

7. Obviousness over Postrel and Jennings under 35 U.S.C. § 103
Claim 11
With respect to claim 11, Appellant argues that “Jennings is silent on
applying its displaying of exchange rate and currency equivalent (column 5,
lines 7-11) to Sakakibara points exchange interface,” and that Postrel’s
silence teaches away from the combination (App. Br. 38). Respondent
argues that teaching away requires an express teaching away and does not
equate silence to the teaching away of a particular limitation (Resp. Br. 19).
The Examiner finds that the disclosures of Postrel and Jennings are
analogous such that incorporating the notification/verification process into
the system of Postrel would have been obvious, and that there is no teaching
away from the combination (Ans. 73-75). We agree with the Examiner.
The option of allowing for a user to accept or reject an exchange, as
disclosed in Jennings (FF 9), would have been an obvious addition to the
system of Postrel. We agree with the Examiner that the transfer and
exchange aspects of both Postrel and Jennings are similar and that the
inclusion of the confirmation process in Postrel would have been well within
the skill of one of ordinary skill in the art. We further agree that nothing in
Postrel or Jennings provides a negative teaching against their combination.
As such, we do not find Appellant’s arguments to be compelling and we find
no error in the Examiner’s rejection of claim 11.
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8. Obviousness over Postrel, Jennings, and Gutierrez-Sheris under 35
U.S.C. § 103
Claims 13-15
Appellant argues that Gutierrez-Sheris relates to money transfer
techniques and not exchange of points and that Gutierrez-Sheris provides no
evidence that it could be applied to Postrel’s system (App. Br. 39-40). The
Examiner disagrees and argues in support of the proffered rejection (Ans.
77-81). We agree with the Examiner.
We agree with the Examiner that there is a degree of similarity
between exchanging points in Postrel and exchanging currency in Gutierrez-
Sheris (FF 10), such that techniques applied in one system would be
applicable to the other system (Ans. 80). We also agree that there is ample
motivation to incorporate features from Gutierrez-Sheris into Postrel based
on the motivation to combine provided in the rejection (Ans. 80-81). We
further note that Gutierrez-Sheris need not contemplate a combination with
Postrel based on its disclosure, as long as one of ordinary skill in the art
would have been motivated to incorporate aspects into Prostrel from
Gutierrez-Sheris. As such, we do not find Appellant’s arguments to be
compelling and we find no error in the Examiner’s rejection of claims 13-15.

9. Burden of Proof Standard
Appellant argues that the correct standard, by the preponderance of
the evidence, has not been met in the rejections of record (App. Br. 46-49).
The Examiner adopted the Respondent’s position (Resp. Br. 26-27), and
finds that Postrel provides evidence sufficient to anticipate claims under the
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preponderance of evidence standard (Ans. 100-101). Appellant responds
that since inherency is at issue in establishing the prima facie case of
anticipation, that Examiner has not met the burden by producing evidence
(Rebut. Br. 16). We agree with the Examiner.
Contrary to Appellant’s arguments, the Examiner need not supply
additional evidence to show that it was more likely than not that elements of
Postrel were parts of its disclosure, although not recited expressly.
Appellant’s arguments with respect to the proper standard of evidence
(Rebut. Br. 17) appear to be based on the arguments presented supra with
respect to inherent disclosures of Postrel, which we do not find to be
compelling. As such, we find that the Examiner did consider that elements
inherently disclosed to be more probable than not to be part of the overall
disclosure of Postrel and we find no error in that aspect of the Examiner’s
decisions.

10. Comments Directed to Arguments Presented by the Respondent,
But Not Explicitly Adopted by the Office
Appellant argues that Appellant is entitled to respond to all issues
raised by the Respondent, even if not adopted by the Examiner (App. Br. 49-
50). Respondent disagrees (Resp. Br. 27-28), and the Examiner finds that
whether the Appellant can direct comments to non-adopted arguments is
procedural and not appealable (Ans. 101-102). We agree with the Examiner.
The Examiner’s interpretation and application of the Rules of inter
partes reexamination is a petitionable matter. If Appellant finds that the
procedure applied by the Examiner is incorrect, then Appellant should file a
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petition seeking redress. In addition, while Appellant argues that “patent
protection to which the Patent Owner is entitled might be denied based on
such Third Party Requester comments” (Rebut. Br. 17), we do not find this
sufficient reason to make this a matter for appeal. That basis is equally
applicable to a host of petitionable, as well as appealable issues, and we do
not find it to be dispositive. As such, we do not address whether Appellant
is entitled to direct comments against non-adopted arguments.

11. Causes for Reopening of Prosecution
Appellant argues that arguments or findings made in the Answer are a
new ground of rejection or a shift in the Examiner’s position of reasoning
from the RAN, such that prosecution should be reopened under 37 C.F.R.
§ 41.69 (Rebut. Br. 2). Similarly, Appellant argues that Respondent’s
admissions/declarations represents new evidence not admissible under 37
C.F.R. § 41.68, such that adoption thereof by the Examiner means that
prosecution should be reopened under 37 C.F.R. § 41.63 (Rebut. Br. 2-3).
We disagree.
We do not find the discussions in the Answer to entail that the
Examiner is establishing a prima facie case of obviousness over claims
rejected as being anticipated. As discussed supra, we concur with most of
the Examiner’s findings of anticipation and find no shift in the basis of the
Examiner's rejection as Appellant alleges. Similarly, we do not find the
Examiner to be adopting new evidence that would require the reopening of
prosecution.
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CONCLUSION
We find that the Examiner did not err in determining that:
2. The effective date of Postrel is the filing date of the Postrel
provisional application: June 23, 1999;
3. Postrel expressly or inherently discloses the “contracting” step of
claim 1, and equivalent elements in independent claims 3, 5, 6, and 10,
under 35 U.S.C. § 102(e);
4. Postrel’s disclosure of “consideration” is not limited to “money
consideration;”
5. Claim 4 is anticipated by Postrel under 35 U.S.C. § 102(e);
7. Claim 11 is obvious over Postrel and Jennings under 35 U.S.C. §
103;
8. Claims 13-15 are obvious over Postrel, Jennings, and Gutierrez-
Sheris under 35 U.S.C. § 103;
9. The proper burden of proof standard was utilized and met in
making a prima facie case of unpatentabilty of the claims;
10. Appellant’s request to direct comments to arguments presented by
the Respondent, but not explicitly adopted by the Office, is a petitionable
matter; and
11. Positions taken or adopted by the Examiner in the Answer do not
constitute grounds for the reopening of prosecution.
We further find that the Examiner erred in determining that:
1. Claim 12 is indefinite under 35 U.S.C. § 112, second paragraph;
and
6. Claims 16-21 are anticipated by Postrel under 35 U.S.C. § 102(e).
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ORDER
The decision of the Examiner to reject claims 1-15 is AFFIRMED and
the decision of the Examiner to reject claims 16-21 is REVERSED.

AFFIRMED-IN-PART

ack

cc:
APPELLANT / PATENT OWNER:
STAAS AND HALSEY LLP
1201 NEW YORK AVENUE, NW
SUITE 700
WASHINTON, DC 20005

RESPONDENT / THIRD PARTY REQUESTOR:
BARKUME & ASSOCIATES, P.C.
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MANORVILLE, NY 11949