Ex Parte Barber et al

Patent Trial and Appeal Board

Mar 21, 2013

09903444 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM H. BARBER and PHILIP J. TOMASI
____________________

Appeal 2010-007450
Application 09/903,444
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellants seek our review under 35 U.S.C. § 134 of twice-rejected
claims 1, 3-7, 9-21, 23-41, 63-68, 70, and 71. We affirm.

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THE CLAIMED INVENTION
Appellants claim a freestanding distribution and retrieval system for
recorded optical disks, which is linked to a central server computer using the
Internet (Specification 1:12-14). Claim 1 is illustrative of the claimed
subject matter:
1. A method for distributing optical
recorded media to and from users, comprising the
steps of:
coupling one or more kiosks to a central
server via the Internet, each of the kiosks
containing a plurality of optical recorded media;
determining, at the server, inventory of the
optical recorded media of each of the kiosks;
routinely obtaining, at the server,
operational status of each of the kiosks;
automatically interfacing with a first user via
a touch screen at a first kiosk in a first transaction
for first local optical recorded media, the touch
screen providing a touch-selectable listing of
optical recorded media, including the first local
optical recorded media, contained within the first
kiosk, the first kiosk being one of the kiosks, the
first user being one of the users;
automatically communicating between the
first kiosk and the server to authorize the first
transaction;
dispensing the first local optical media from
the first kiosk to the first user if the first
transaction is approved; and
accepting return of the first local optical
media into rentable inventory of a second kiosk,
the second kiosk being another one of the kiosks.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rudy
Harman
Newell
Bernstein
Peters
Smith
Kanoh
Maloney
McCall
Ogasawara
Koenck
Crapo
DeLapa
Tomita
US 4,608,679
US 5,095,195
US 5,159,560
US 5,761,071
US 5,769,269
US 5,860,362
US 5,934,439
US 6,119,932
US 6,321,984 B1
US 6,513,015 B2
US 6,688,523 B1
US 2004/0064371 A1
US 6,954,732 B1
US 6,965,869 B1
Aug. 26, 1986
Mar. 10, 1992
Oct. 27, 1992
Jun. 2, 1998
Jun. 23, 1998
Jan. 19, 1999
Aug. 10, 1999
Sep. 19, 2000
Nov. 27, 2001
Jan. 28, 2003
Feb. 10, 2004
Apr. 1, 2004
Oct. 11, 2005
Nov. 15, 2005

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1, 12, 18, 19, 23, 26, 28, 29, 31, 63, and
66 under 35 U.S.C. § 103(a) over Newell, Kanoh, Harman, and Smith.
The Examiner rejected claims 3-7, 64, and 65 under 35 U.S.C.
§ 103(a) over Newell, Kanoh, Harman, Smith, and Koenck.
The Examiner rejected claims 9-11 under 35 U.S.C. § 103(a) over
Newell, Kanoh, Harman, Smith and Rudy.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) over
Newell, Kanoh, Harman, Smith, and Maloney.
The Examiner rejected claims 14-17 under 35 U.S.C. § 103(a) over
Newell, Kanoh, Harman, Smith and Ogasawara.
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The Examiner rejected claims 20, 21, 24, 25, 27, and 67-68 under 35
U.S.C. § 103(a) over Newell, Kanoh, Harman, Smith, and Tomita.
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) over
Newell, Kanoh, Harman, Smith, and Crapo.
The Examiner rejected claims 32 and 33 under 35 U.S.C. § 103(a)
over Newell, Kanoh, Harman, Smith, and Peters.
The Examiner rejected claims 34, 38-40, and 70-71 under 35 U.S.C.
§ 103(a) over Newell, Kanoh, Harman, Smith, and DeLapa.
The Examiner rejected claims 35-37 under 35 U.S.C. § 103(a) over
Newell, Kanoh, Harman, Smith, DeLapa, and McCall.
The Examiner rejected claim 41 under 35 U.S.C. § 103(a) over
Newell, Kanoh, Harman, Smith, and Bernstein.

ISSUES
The issues in this case turn on whether the Examiner’s prima facie
case of obviousness is proper, and whether the rebuttal evidence based on
secondary considerations is sufficient to overcome the evidence of
obviousness.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Examiner cites as motivation to combine Newell with Kanoh “in
order to identify and authenticate a user before dispensing a product to
the customer thereby reducing loss of inventory to user[]s who are not
registered or recognized.” Ans. 5.
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2. The Examiner cites as motivation to combine Newell/Kanoh with
Harman “in order users interact with a kiosk in a manner that is user
friendly and easy [] which would simplify the use of the kiosk.” Ans. 6.
3. Newell discloses coupling one or more kiosks to a central server via a
network, in that “[e]ach vending machine 104-109 in system 100
includes means for communicating information to control processing
system 110 ....” (Col. 3, ll. 61-66).
4. Newell discloses that in the network “communication between the
control processing system 110 and the respective vending machines
104-109 is implemented with conventional telephone lines and modems,
although dedicated lines would function satisfactorily.” (Col. 4, ll. 15-
20).
5. Smith discloses communications between self-service newspaper
vending machines and new providing organizations via the public
switched telephone network (PSTN). (Col. 2, ll. 44-50).
6. Smith discloses communications via the PSTN allows access to the
Internet, stating “[c]onnection to the PSTN allows access to the Internet.
The self-service vending machine 2 can have the facility for credit card
transactions to be transacted over the Internet.” (Col. 3, ll. 30-32).
7. Newell discloses kiosk management from a central server, in that:
[A] videotape may be acquired from one machine in the
network and returned to another wherein the system 100 tracks
the actual location of the videotape. This function is provided
by the inventory management system 204 and the
communications system 206 which may communicate with the
respective vending machines via modems 214, 216 or via
dedicated lines 218-222.
(Col. 5, ll. 1-9).
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8. Newell discloses backing up at least part of information stored in the
central server within internal memory within the first kiosk because the
central control processing system 110 “sends the updated hot-card file
to the machine”/kiosks in the network. (Col. 12, ll. 25-26).
9. The term “personal computer” is not defined or described in the
Specification.
10. Newell discloses “control processing system 110 processes this
information in a number of ways.” (Col. 4, ll. 28-30).
11. Newell discloses determining inventory of each of the kiosks via
Internet access through the central server, in that network
communications is used “to update the inventory records of the control
processing system 110 and the vending machine. For example, if an
article is rented in one vending machine and returned to another, it must
be removed from the inventory record of the vending machine from
which it was rented.” (Col. 4, ll. 30-35).
12. Newell discloses bar code strips on cases to uniquely identify inventory
articles. (Col. 4, ll. 49-54).
13. Newell discloses capturing a digital image and scanning the image “as
new items are added to or removed from the system 100, the respective
bar codes corresponding to each article may be scanned by bar code
system 114 for processing ....” (Col. 4, ll. 55-59).
14. Newell discloses that as part of the return process, when the system
“verifies the selected bin is empty, the access doors 314-318 are
unlatched by item 512. (Col. 8, ll. 17-19).
15. Newell discloses that if an article was returned, “the article
identification number is read by item 520.” (Col. 8, ll. 21-24).
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16. Rudy discloses a system for handling optical media in cases, in which a
case’s physical orientation is sensed and the case is handled only when
it matches the orientation characteristics of the handling slot in the
machine, “insure that the cartridge 30 is correctly inserted into the
input/output slot 54 ....” (Col. 7, ll. 28-48).
17. Ogasawara discloses “a digital camera 84 which takes a video graphic
image of the customer and transmits the videographic image, along with
the customer ID, to either a system control unit 86 or a store server 88.”
(Col. 16, ll. 44-49).
18. The Specification does not define or describe the term profiling.
19. The ordinary and customary definition of the term providing, as defined
by Merriam Webster’s Collegiate Dictionary (10th ed.), is: “the act or
process of extrapolating information about a person based on known
traits or tendencies.”
20. Tomita discloses profiling customer transactions, in that “rate manager
10 [] changes the point calculation rate according to transactions and
stores the rate. The point issuer 9 calculates points according to the rate
and transmits the calculated points to the point accumulator 7 for the
customer identified by the customer identifier 4.” (Col. 5, ll. 8-13).
21. Tomita discloses communicating advertising information ... based on
the profiling of user transactions by displaying to a customer “target
guidance for explaining kinds of services which can be received such as
a gift, theater tickets or the like in exchange for offered points.” (Col. 5,
ll. 48-53).
22. Newell discloses automatically identifying the alarm states and
automatically sending information about the alarm states to an
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administration associated with the central server, in that each kiosk
sends periodic reports to a central server that may contain information
about “operational failures” so service personnel may be dispatched to
the kiosk. (Col. 4, ll. 23-40).
23. DeLapa discloses generating automatic, individually-targeted
promotions at one or more of the kiosks, because a “coupon set is
retrieved by the kiosk computer in response to identification of that user
household at the kiosk. Using a kiosk program 270, images of the
coupons in the coupon set are formatted ‘on the fly’ and the coupons are
dispensed by the kiosk to the identified user.” (Col. 15, ll. 25-30).
24. McCall discloses processing unique promotional codes, in that “[a]fter
the customer authorization code is entered the process then compares
(step 408a) the authorization code from server 204 with the code from
the customer and if a match exists then proceeds to step 409 and adjusts
the price of the fuel to be dispensed for this transaction.” (Col. 11, ll. 8-
13).
25. McCall discloses obtaining the promotion codes from the touch screen
at the first kiosk, in that “[d]iscounts may also be offered for purchase of
items other than fuel, such as in the case of a POS 30, discussed above,
located at a convenience store or other retailer.” (Col. 9, ll. 19-22).
26. The Specification does not define or describe the term administering.
27. The ordinary and customary definition of the term administering, as
defined by Merriam Webster’s Collegiate Dictionary (10th ed.), is: “to
manage or supervise the execution, use, or conduct of.”

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28. The Specification describes by example that:
Both kiosk 200 and server computer 300 may request and
receive data using the html protocol, allowing a two-way data-
exchange system. The use of the html protocol allows an
Internet browser to be a system interface, and additionally
allows system 100, FIG. 1, to be administered by an
Application Service Provider (ASP) using the Internet.
(Spec. 15, ll. 9-12).
29. Bernstein discloses kiosk business data, as “GUI control software
settings, the security control software settings and the browser settings
of the kiosk system 20 [that] may be remotely modified.” (Col. 6, ll.
65-67).
30. Bernstein discloses administering data through a remote web-interface
in that “if the kiosk system 20 is connected to a Transmission Control
Protoco1/Internet Protocol or TCPIIP network, remote modification can
be performed using file transfer protocol (FTP).”

ANALYSIS
Claims 1 and 63
Initially, we note that the Appellants argue independent claims 1 and
63 together as a group. (App. Br. 16). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claim 63 standing or falling with claim 1. Appellant does not provide a
substantive argument as to the separate patentability of claims 12, 18, 31,
and 66 that depend from claims 1 and 63. Thus 12, 18, 31, 63, and 66 stand
or fall with claim 1. See, 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue the “combination does not teach coupling kiosks to
the single central server via the Internet.” App. Br. 16-18, Rep. Br. 2-3.
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This argument is repeated throughout the Appeal and Reply Briefs with
respect to several of the rejections. App. Br. 19, 20, 30, 31, 32, 33, 36, 40,
Rep. Br. 4-5. Inasmuch as Appellant raises the same issue with respect to
several claims, we discuss this common argument as to all rejections
together, addressing each of Appellant’s arguments in turn.
We are not persuaded by Appellants' argument that “coupling kiosks
to the single central server via the Internet” constitutes a patentable
distinction. We broadly construe the undefined claim term “Internet” to be a
collection of networked computers and the wide-area-networks
interconnecting them1. We find Newell discloses an interconnected, wide-
area network of kiosk computers communicating with a central server (FF 3,
4). Although Newell discloses a vendor-specific network implementation
using IBM SNA communications2, the ordinary artisan would recognize this
is but one implementation of a wide-area network, and that other wide-area
network suppliers are available. Broadly interpreted, the “Internet” is an
interconnection of many wide-area networks from many suppliers, both
public and private. One typically does not connect directly to “the Internet”,
but instead one connects to a private or public network operated by an
Internet Service Provider, which is part of “the Internet” by being connected
to other networks. Therefore, we find one of ordinary skill reading Newell
would understand computer network communications to include connection
“via the Internet,” since interconnected wide-area networks were available at

1 The ordinary and customary definition of the term Internet, as defined by
Merriam Webster’s Collegiate Dictionary (10th ed.), is: “an electronic
communications network that connects computer networks and
organizational computer facilities around the world.”
2 Including ACF/VTAM, ACF/NCP, and IBM 3725 communications
controllers (Newell, columns 75-76).
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least as early as the time of Smith (FF 5, 6). Thus, we interpret “the
Internet” to encompass wide-area networks such as that of Newell.
Appellants also argue error because the “references themselves do not
suggest the combination of” references. App. Br. 13-15, Rep. Br. 3-4. This
argument is repeated throughout the Appeal and Reply Briefs with respect to
several of the rejections. App. Br. 13-15, 16, 29-30, 37, and 38, Rep. Br. 3-
4, 5, and 12. Inasmuch as Appellants raise the same issue with respect to
several rejections, we discuss this common argument as to all claims
together, addressing each of Appellants’ other arguments in turn.
To the extent Appellants seek an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court’s
recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
We find the Examiner cited reasonable motivations to combine (see, for
example, FF 1, 2), so we are not persuaded of error because the Examiner
has set forth reasonable rationales for combinations.
Therefore, we affirm the rejection under 35 U.S.C. § 103(a) of claims
1, 12, 18, 31, 63, and 66.
Claim 19
Dependent claim 19 recites “the step of managing the first and second
kiosks from the central server.”
Appellants argue the combination fails to disclose “management of
kiosks via an Internet-coupled server, as required....” App. Br. 18. We are
not persuaded by Appellants' argument, because we construe the Internet
broadly, to encompass the networks of Newell and Smith, as set forth above,
and because Newell discloses managing kiosks from the central server.
(FF 7).
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Claim 23
Dependent claim 23 recites “the step of backing up at least part of
information stored in the central server within internal memory within the
first kiosk.”
Appellants argue “Kanoh could at most only suggest backing up
information from a vending machine on[to] a server, but not the reverse.”
App. Br. 18-19.
We are not persuaded by Appellants' argument, because we find
Newell discloses the central control processing system 110 sends an updated
copy of the “hot-card file” to each vending kiosk, thus meeting the claim
language. (FF 8).
Claims 26 and 28
Dependent claim 26 recites “the step of managing a group of kiosks
through the central server via a personal computer connected to the Internet,
the group of kiosks being a subset of all the kiosks.”
Appellants argue Newell and Kanoh don’t disclose a personal
computer because Kanoh’s “host computer 50 of a control center, [] is very
different from a personal computer which, according to the present
Application, can access a web page supported by a server.” App. Br. 19.
This argument fails at least in part because “access[ing] a web page
from a server” is not required by the claim. Appellants must be careful not
to read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
(“Though understanding the claim language may be aided by explanations
contained in the written description, it is important not to import into a claim
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limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”)
We are not persuaded by the remaining portion of the argument
because the undefined term “personal computer” is not described in the
Specification. (FF 9). We thus interpret the term to be a general purpose
computer, which is disclosed in Newell at the central control processing
system 110. (FF 10). In addition, we find one of ordinary skill would
recognize a personal computer and a host computer are merely
implementations of a general-purpose computer such that Newell’s control
processing system 110 performs the same functions as the claimed “personal
computer” so that the computer being “personal” is not deemed a significant
distinction.
Therefore, we affirm the rejection under 35 U.S.C. § 103(a) of claim
26 and of claim 28 that was not separately argued.
Claim 29
Dependent claim 29 recites “determining inventory of each of the
kiosks via Internet access through the central server.”
Appellants argue the references do not meet the claim language
because the rejection cites to credit card transactions over the Internet, which
“are not management or determinations of inventory levels.” App. Br. 20.
We are not persuaded by Appellants' argument, because Newell
discloses managing kiosk inventory over a network from a central server (FF
11), which meets the claim language because we broadly construe the
“Internet” to encompass the network of Newell.

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Claims 3-7, 64, and 65
Dependent claims 3 and 64 recite, in pertinent part, “capturing a
digital image of the first optical media.” Dependent claim 65 recites
“electronically scanning the image to decode one or more bar codes on the
first optical media to determine an identifier of the first optical media.”
Appellants argue the Examiner’s reliance on the hand-held bar code
scanner in Koenck is misplaced because “[c]ombining the hand-held scanner
of Koenck with the apparatus of Newell would therefore directly interfere
with the self-contained automation goals of Newell.” App. Br. 28-30.
We are not persuaded by Appellants' argument, because Newell
discloses bar code strips on items (FF 12) read by an internal bar code
scanner (FF 13), which meets the requirements of claims 3-7, 64, and 65
because bar code scanners capture the digital image of the bar code and
decode it. Since Newell discloses the claim language, Koenck is
cumulative.
Claims 9-11
Dependent claim 9 recites, in pertinent part, “sensing characteristics
of a case housing the first optical media, determining if the characteristics
match predetermined characteristics associated with the second kiosk, and
opening a door to an input/output slot of the second kiosk to accept the case
and optical media when the characteristics match the predetermined
characteristics.”
The Examiner notes that Newell discloses opening a door to an
input/output slot to accept a case and optical media return. Ans. 12. Newell
accepts into the slot a case before identifying it. (FF 14, 15). Rudy
discloses a more sophisticated system for handling optical media in cases, in
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which a case is sensed to determine whether the orientation of the case
matches the predetermined orientation characteristics of the machine. (FF
16).
We agree with the Examiner that one of ordinary skill in the art, upon
reading Newell and Rudy, would be motivated to add the orientation sensing
function of Rudy to the return mechanism of Newell to ensure a case is not
inserted into the kiosk in such a way that its identity is not able to be
determined because it is incorrectly oriented.
Appellants argue Rudy’s system operates within an input/output slot,
and “is therefore significantly different from the method of claim 9, which
requires opening a door responsive to a match.” App. Br. 31. We are not
persuaded of error, because we find the combination of Newell and Rudy
meets the claim requirements, as set forth above.
Appellants further argue Rudy’s system “does not teach determining
if characteristics match a predetermined characteristic associated with a
kiosk,” because the positioning holes in Rudy do not “have anything to do
with identifying a kiosk.” App. Br. 31.
We are not persuaded by Appellants' argument, because the
orientation characteristics of the slot in Rudy are “predetermined
characteristics associated with a kiosk” against which a match in the
orientation of the case is compared before proceeding. (FF 16). The claim,
however, does not require “identifying a kiosk,” but only “determining if the
characteristics match predetermined characteristics associated with the
second kiosk,” which is met by the orientation characteristics of the kiosk
and case.
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Therefore, we affirm the rejection under 35 U.S.C. § 103(a) of claim
9, and of claims 10 and 11 that were not separately argued.
Claim 13
Dependent claim 13 is argued by reference to the arguments at claim
1. App. Br. 31-32. We affirm the rejection under 35 U.S.C. § 103(a) of
claim 13 for the same reasons as claim 1, as set forth above.
Claims 14-17
Dependent claim 17 recites “the step of transmitting the images to the
central server.”
Appellants argue the combination does not disclose the claim features.
App. Br 32. We are not persuaded because Ogasawara discloses “a digital
camera 84 which takes a video graphic image of the customer and transmits
the videographic image, along with the customer ID, to either a system
control unit 86 or a store server 88.” (FF 17). We find the “store server 88”
is a form of “central server” that meets the claim language. Therefore, we
affirm the rejection under 35 U.S.C. § 103(a) of claim 17, and also that of
claims 14-16 that were not separately argued.
Claims 20, 21, 24, 25, 27, 67, and 68
Dependent claims 24 and 25 recite “the steps of profiling user
transactions at the [first or second] kiosk and communicating advertising
information at the [first or second] kiosk based on the profiling of user
transactions.” Dependent claim 68 recites “the steps of profiling user
transactions at one of the kiosks and communicating advertising information
to the kiosk based on the profiling.”
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Appellants argue “Tomita, however, fails to teach that the transaction
data is stored in a customer profile, or is otherwise used for communicating
advertising information that is based on the transaction data.” App. Br. 33.
We are not persuaded by Appellants' argument. First, we find that
the term “profiling user transactions” is not defined (FF 18), so we use the
ordinary and customary meaning of “extrapolating information about a
person based on known traits or tendencies.” (FF 19). We find Tomita
discloses profiling user transactions by extrapolating information about
transactions, in that Tomita discloses using a “point calculation rate
according to transactions” which is then used to “calculate[] points
according to the rate ....” (FF 20). The Appellant’s argument fails as to data
being “stored in a customer profile” because this is not recited by the claim.
Additionally, we find Tomita discloses “communicating advertising
information ... based on the profiling of user transactions” in that Tomita
discloses displaying to a customer “target guidance for explaining kinds of
services which can be received such as a gift, theater tickets or the like in
exchange for offered points.” (FF 21).
Appellants also argue Tomita’s display of information is “not part of a
transaction profile.” App. Br. 33. This argument fails because the claims do
not require a “transaction profile,” only “profiling user transactions,” which
is disclosed by Tomita.
For these reasons, we affirm the rejection under 35 U.S.C. § 103(a) of
claims 24, 25, and 68, as well as claims 20, 21, 27, and 67 that were not
separately argued.

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Claim 30
Dependent claim 30 recites “the step of emailing discount coupons to
the first user through the Internet and based on the inventory.”
Appellants argue Crapo discloses emailing discount coupons to a user
based on partner inventory, not kiosk inventory, which are “not the same.”
App. Br. 35-36.
We are not persuaded by Appellants' argument, because we find one
of ordinary skill in the art would recognize that emailing discount coupons
based on available inventory may help incent the purchase of items for
which there are inventory levels that are excessive or sufficient to support an
advertising campaign. Both kiosk inventory and partner inventory represent
inventory levels available to sell, so they are only slightly different. See
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (In making the
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)
Claims 32 and 33
Dependent claim 32 recites “the steps of automatically identifying the
alarm states and automatically sending information about the alarm states to
an administration associated with the central server.”
Appellants argue Peters does not adequately disclose the claimed
limitation. App. Br. 36-37.
We are not persuaded by Appellants' argument, because we find
Newell discloses that each kiosk periodically sends reports to the central
server that may contain information about “operational failures” so that
service personnel may be dispatched to the kiosk. (FF 22). Since the
disclosure of Newell meets the claim requirements, Peters is cumulative.
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Claims 34, 38-40, 70, and 71
Dependent claim 34 recites “generating automatic, individually-
targeted promotions at one or more of the kiosks.”
Appellants argue “DeLapa specifically targets its coupons to
households, which is different from targeting a promotion to an individual
user.” App. Br. 37-38.
We are not persuaded by Appellants' argument, because DeLapa
discloses kiosks that a “coupon set is retrieved by the kiosk computer in
response to identification of that user household at the kiosk. Using a kiosk
program 270, images of the coupons in the coupon set are formatted ‘on the
fly’ and the coupons are dispensed by the kiosk to the identified user.” (FF
23). We construe the claimed generating to encompass the disclosed
retrieval, formatting, and dispensing in DeLapa, which therefore meets the
claim language. We construe the claimed “individually-targeted
promotions” to encompass promotions directed to an individual household,
because each household may receive a unique promotion, and may consist of
only one individual. In addition, DeLapa’s promotions are delivered to a
single, “identified user,” making the promotion targeted to an individual to
whom the promotion is delivered.
Claim 35
Dependent claim 35 recites “wherein the step of generating automatic,
individually-targeted promotions comprises the step of processing unique
promotion codes.”
Appellants argue the process of McCall “is not automatic as required”
because McCall’s process includes steps involving manual input of
information by a human. App. Br. 39, Rep. Br. 10.
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We are not persuaded by Appellants' argument, because McCall
discloses that the computer compares codes (FF 24) as part of generating a
promotion, and we find this meets the claim requirement of “processing
unique promotion codes.” In addition, the argument fails in part because the
claim does not prohibit human involvement in other steps of the process,
because of the use of the non-limiting “comprising” terminology.
Claims 36 and 37
Dependent claim 36 recites, in pertinent part, “obtaining the
promotion codes from the touch screen at the first kiosk.” Dependent claim
37 recites, in pertinent part, “obtaining the promotion codes from a magnetic
card swipe through a reader at the first kiosk.”
Appellants argue that in McCall codes are not obtained from the touch
screen at the first kiosk because the cited section of McCall indicates “the
customer enters the code/card/coupon at a separate fuel pump.” Rep. Br. 10-
11.
We are not persuaded by Appellants' argument, because McCall also
discloses that “[d]iscounts may also be offered for purchase of items other
than fuel, such as in the case of a POS 30 ....” (FF 25). Therefore, a
purchase of an item in McCall may generate a code/card that can be
processed at the point-of-sale terminal to which the code/card was delivered,
instead of requiring that the code/card be used only for fuel at a different
point-of-sale device, thus meeting the language of both claims.
Claim 41
Dependent claim 41 recites “the step of administering kiosk business
data through a remote web-interface.”
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The term administering is not defined or described by the
Specification (FF 26), so we use the ordinary and customary definition of “to
manage or supervise the execution, use, or conduct of” (FF 27). The term
business data is not defined or described by the Specification (FF 28), so we
broadly construe it to mean data, because the specific content of the data
does not affect the function of the claim, which is to manage the data. The
content of the data does not receive patentable weight, similar to printed
matter. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Finally, a
remote web-interface is not defined by the Specification, but is described by
example as “allow[ing] an Internet browser to be a system interface ....” (FF
28). Although web browser software is an option for a remote web-
interface, it is not required. Therefore, we broadly interpret the term as
being a computer interface that permits management of a remote computer
over a network.
Appellants argue Bernstein does not disclose administering kiosk
business data because instead “Bernstein merely discusses remotely
modifying ‘[t]he GUI control software settings, the security control software
settings and the browser settings of the kiosk system 20’....” App. Br. 40.
Appellants additionally argue Bernstein’s remote kiosk “software updates
are not the same as kiosk business data.” Rep. Br. 11.
We are not persuaded by Appellants' argument, because we construe
kiosk business data as being any data on a kiosk, which is disclosed by
Bernstein (FF 29). We further find Bernstein discloses use of at least one
interface for administering data on a remote system, using an ftp program
(FF 30). Therefore, we find Bernstein meets the claim language.

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Secondary Considerations
In this case, the Examiner, and now we, have evaluated the evidence
presented through the various references and arguments, and we have
concluded that Appellants have failed to show error in the Examiner’s prima
facie case.
Next, evidence pertaining to secondary considerations must be taken
into account because it is present; however, it does not necessarily control
the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1372 (Fed. Cir. 2007) (“the record establish [ed] such a strong case of
obviousness” that allegedly unexpectedly superior results were ultimately
insufficient to overcome obviousness conclusion). Facts established by
rebuttal evidence must be evaluated along with the facts on which the
conclusion of a prima facie case was reached, not against the conclusion
itself. See In re Eli Lilly, 902 F.2d 943 (Fed. Cir. 1990). “[E]vidence that
has been presented in a timely manner should not be ignored, but rather
should be considered on the record. However, not all evidence need be
accorded the same weight.” Manual of Patent Examining Procedure § 2145
(8th Ed. Rev. 9, 2012).
Appellants argue the Examiner has failed to consider the rebuttal
evidence which is alleged to overcome a prima facie case of obviousness,
because “the Examiner effectively ignored the evidence in its entirety, as a
matter of law.” App. Br. 21. This is based on a lack of evidence “given by
the Examiner for why or how this extensive evidence was itself
‘insufficient.’” Id. See also Rep. Br. 7.
We are not persuaded by Appellants' argument, because we find from
the record that the Examiner did address the evidence by concluding it was
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“insufficient” and that the arguments were “not persuasive.” Ans. 42. The
Examiner essentially restated the evidence of record set forth by the
Examiner, and found that it outweighed the secondary evidence. Ans. 42-
45.
Notwithstanding, we turn to the evidence of secondary consideration,
and consider it ourselves. Lilly at 945. Appellants present arguments that
the evidence of skepticism of experts, commercial success, or copying3 by
others “provides ample secondary considerations ... to fully rebut the Section
103 rejection of claims 1 and 63.” App. Br. 27.
We disagree.
Skepticism of Experts Argument
Appellants present as evidence the statement of Mr. Brad Hackley that
“kiosks came out of nowhere” (App. Br. 24). This appears to be the only
evidence of skepticism of experts to the invention. The evidence, from
“Investor’s Business Daily,” May 31, 20074, however, is as follows:
While industry bigwigs were focused on digital delivery of
movies over the Internet as the next big thing, they missed the
growth of DVD rentals by vending machine.

“Practically no one saw this coming,” said Brad Hackley, vice
president of business development for the home video group at
industry tracker Rentrak. “The kiosks came out of nowhere.”

3 Appellants also argue their claimed invention is “a unique combination of
steps” that is not completely disclosed in any of the “fourteen cited
references.” App. Br. 23. The rejection, however, is not one of anticipated
because it is an obviousness rejection. Therefore this argument fails to be
relevant to the issues at hand.
4 We note this is several years after the priority date of this application.
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We find this does not offer evidence of the skepticism of the claimed
invention itself, such as whether or not it would work. Instead, it offers
evidence that there was skepticism that DVD rental kiosks, in general, would
fare better than delivery over the Internet. There is no nexus between this
evidence and the scope of the claims that are the subject of the appeal,
because the evidence appears to apply to all DVD rental kiosks. In addition,
the opinion of one industry tracker does not provide overwhelming evidence
of widespread skepticism.
Commercial Success
Appellants argue commercial success by the Assignee “that directly
stems from implementing a kiosk system according to the present method
claims ....” App. Br. 23. The evidence includes the statement that the
Assignee holds “16-20% of the movie rental kiosk market” at the time of
writing. Id. Additionally, Appellants assert that prior to the current
invention “there was very little market,” but that the market in general has
grown significantly. App. Br. 23-24. There is also the affidavit evidence of
Mr. Horstmann, who offers numerous examples of market success of
DVDPlay in his six-page Declaration dated Oct. 30, 2007.
In order to be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed features.
Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990),
aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992). Starting on page 25 of the
Appeal Brief are numerous references to various Exhibits are made in
support of commercial success. However, for the most part, the Exhibits
supplied are related to press releases of the Assignee or partners, and
announce features of products and services, and thus we find them self-
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serving. Moreover, they do not themselves provide much in the way of
tying market share, as evidence of commercial success, to the specific
claimed invention, only that the products offered in the market have the
claimed features. One item of hearsay evidence5 is the Tejas Video CEO
letter, which is alleged to show “the ‘huge benefit’ of DVDPlay, Inc.’s
Internet connectivity.” App. Br. 25. This reference, however, states the
following:
Another technological feature that the DVDPlay kiosks provide
is the network capability via the internet. I.e. A customer can
rent from one kiosk and return to any other kiosk in my control.
This feature is a huge benefit due to my customer base being
the military and they are very transient population.

(Letter of Von Shows, CEO of Tejas Videos). Mr. Show’s opinion relates
not to Internet connectivity specifically, but instead to the ability to “return
to any other kiosk.” This is supported by Appellants’ own statement to that
effect on the next page. App. Br. 26.
Even assuming the asserted evidence of market success of 16-20%
share, such evidence of commercial success must be taken into consideration
as a whole. The proposed evidence does not show that other unclaimed
factors could not account for the degree of commercial success achieved.
For example, the evidence submitted also indicates the following:
 “When you’re first, it’s usually an advantage.” (John. T. Slania,
“Domick’s, Jewel touting DVD vending; Rental kiosks to feature
per-night fee on movies. (News),” Crain’s Chicago Business, Mar.
19, 2007.)

5 Hearsay evidence is entitled to little weight. In re Mageli, 470 F.2d 1380,
1384 (CCPA 1972).
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 Franchising agreements need to be finalized and may include
concepts like a “designated franchiser” that affect results.
(“DVDINSIDER: DVDPlay Debuts First U.S. Automated
Entertainment Machine –AEM-,” DVD News, Apr. 10, 2003.)
 Factors include “creating an easy user interface, putting the kiosks
in convenient locations, giving the customers value and keeping
the kiosks stocked with new releases.” (Patrick Avery, “Superstar
Deployments,” Self Service World, date unknown.)
 Supply may play a part, in that “[w]e can’t product these machines
fast enough.” (Id.)
Based on the evidence of record, we find an insufficient evidence of
commercial success achieved by DVDPlay in nexus with the scope of the
claims, and absent other external factors such as those above.
Copying
Appellants present evidence of copying of the claimed invention by
others. (Dec. of Horstmann, 4-5). But, according to these facts, Redbox
also had “several attempts to break into the movie vending market with
machines by companies such as Tik Tok and YAK.” (Dec. of Horstmann 4).
Mr. Horstmann states that “DVDPlay, Inc. believes that Solectron copied
claimed features of the DVDPlay systems (which were in the possession of
Redbox/McDonald’s)…” (Dec. of Horstmann, 5).
The evidence thus shows that prior to Redbox engaging DVDPlay
Inc., it also engaged other companies in the movie vending market, such as
Tik Tok and YAK. Id. We thus find the evidence does not exclude the
possibility the disputed features were the result of the engagements with
other companies which occurred prior in time to Appellants’. Alternatively,
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the Declaration leaves open the possibility that Solectron may have copied
features from Newell. (Decl. of Horstmann, 5).
After considering all the evidence of skepticism of experts, copying,
and commercial success, both of DVDPlay and Redbox, we are not
persuaded that the rebuttal evidence of secondary considerations shows error
in the Examiner’s prima facie case.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 3-7, 9-21, 23-41, 63-
68, 70, and 71 under 35 U.S.C. § 103(a).

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3-7, 9-21,
23-41, 63-68, 70, and 71 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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