Ex Parte Beery

Board of Patent Appeals and Interferences

Mar 3, 2010

09954823 (B.P.A.I. Mar. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte EDWARD L. BEERY II 8
___________ 9
10
Appeal 2009-014842 11
Application 09/954,823 12
Technology Center 1700 13
___________ 14
15
Decided: March 3, 2010 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and 19
JOSEPH A. FISCHETTI, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
Appeal 2009-014842
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STATEMENT OF THE CASE 1
Edward L. Beery II (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 9-28, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a type of promotional marketing effort aimed at 10
specific consumers based on real-time, consumer entered, planned purchase 11
information. The consumer actively selects the promotions that are of 12
interest, the selected promotions are electronically stored and the promotions 13
are either printed on the consumer's printer or electronically retrieved. 14
(Specification 1: Field of Invention). 15
An understanding of the invention can be derived from a reading of 16
exemplary claim 9, which is reproduced below [bracketed matter and some 17
paragraphing added]. 18

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 12, 2007) and Reply Brief (“Reply Br.,” filed July 17,
2009), and the Examiner’s Answer (“Ans.,” mailed May 19, 2009).
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9. A computer-based method for presenting one or more 1
promotions, comprising: 2
[1] receiving, 3
in a computing system, 4
a signal 5
identifying a first product associated with an order; 6
[2] associating 7
a first product identifier with the first product; 8
[3] presenting, 9
via a user interface, 10
one or more promotions 11
when one or more promotions for at least a second 12
product are associated with the first product 13
identifier. 14
THE REJECTIONS 15
The Examiner relies upon the following prior art: 16
Katz US 6,055,513 Apr. 25, 2000
Claims 9-23, 25, 26, and 28 stand rejected under 35 U.S.C. § 102(b) as 17
anticipated by Katz. 18
Claims 24 and 27 stand rejected under 35 U.S.C. § 103(a) as 19
unpatentable over Katz. 20
ISSUES 21
The Appellant argues several sets of claims, so the claim by claim issues 22
are taken up in the Analysis infra. The issue of whether the Appellant has 23
sustained its burden of showing that the Examiner erred in rejecting claims 24
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9-23, 25, 26, and 28 under 35 U.S.C. § 102(b) as anticipated by Katz turns 1
on whether Katz describes the limitations in the claims. 2
The issue of whether the Appellant has sustained its burden of showing 3
that the Examiner erred in rejecting claims 24 and 27 under 35 U.S.C. 4
§ 103(a) as unpatentable over Katz turns on whether it was predictable to 5
modify Katz to describe the limitations in the claims. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be 8
supported by a preponderance of the evidence. 9
Facts Related to the Prior Art 10
Katz 11
01. Katz is directed to effecting commercial transactions at remote 12
locations over communication networks, especially telephonic and 13
electronic commerce transactions. More specifically, using 14
telemarketing and electronic commerce systems, and especially 15
the intelligent product and service selection for proffer to a 16
customer, Katz describes the selection and offering of an upsell 17
transaction, where the product or service offered differs materially 18
from the product or service for which the contact was made. Katz 19
1:8-17. 20
02. The term "upsell" means an offer or provision of a good or 21
service which is selected for offer to the customer and differs from 22
the good or service for which the primary contact was made. Katz 23
13:38-41. 24
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03. In a typical telemarketing application, the item for which the 1
caller makes initial contact is the item which is ordered by the 2
customer. In certain instances, attempts are made to sell other 3
goods or services directly related to the product for which contact 4
was made. Katz 1:43-47. 5
04. In one implementation of the invention, the system and 6
methods obtain input information for the system from a primary 7
transaction, identify one or more goods or services for possible 8
proffer and upsell to the customer based at least in part upon the 9
primary transaction data information provided to the system, and 10
thereafter, offer the user or customer one or more items 11
determined to be among the optimum upsells. Katz 8:38-45. This 12
requires obtaining primary transaction data with respect to the 13
transaction. Katz 8:53-55. This primary transaction data is an 14
input for determining the upsell. Katz 8:64-65. 15
05. The primary transaction may be a purchase of a product, which 16
may be consummated. Katz 9:8-11. 17
06. Upon receipt of indication that the primary transaction is to be 18
consummated, the system may so designate the product. Katz 19
11:59-60. 20
07. A telemarketing operator may take the order entry data for the 21
primary transaction. Upon completion of the primary transaction, 22
order data is compared to one or more databases for analysis. 23
Katz 13:58-64. 24
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08. Upon generating the potential upsells, that information is 1
provided to the system for presentation to the operator. Multiple 2
options may be presented for selection by the operator. Katz 3
18:27-32. 4
09. The primary transaction order data is entered into Katz’s 5
system. Katz 19:24-27. 6
10. If the upsell serves to obviate the purpose for the primary 7
transaction, such as when the primary transaction is for customer 8
service or repair, and the upsell is successful in providing the 9
customer with a new product in replacement thereof, then the 10
primary transaction is not consummated. Katz 19:32-37. 11
11. The primary transaction may be completed, such as through 12
consummation of a sale, or it may not be if another product is 13
substituted. Katz 22:32-45. 14
12. Katz uses a multiple input, dynamic, preferably real-time search 15
system to identify the items for potential upsell from the various 16
inputs. Katz 22:62 – 63:3. 17
13. The system may use prior purchases in determining the upsell 18
for offer, for example seeing whether a customer previously called 19
to buy product X, and was successfully upsold product Y. Katz 20
24:7-20. 21
14. Katz’s system includes product information which is provided 22
to a customer. Katz 25:13-16. 23
15. Katz’s claim 1 reads as follows: 24
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1. A method for providing offers in real time of an item 1
constituting a good or a service in the form of offers for 2
purchase of the item to prospective customers as users of 3
the system, utilizing an electronic communications 4
device, comprising the steps of: 5
establishing a communication via the electronic 6
communications device between the user and the system 7
for purpose of a user initiated primary transaction for 8
purchase of a specific good or service, 9
obtaining primary transaction data with respect to the 10
primary transaction, including the identity of the 11
prospective customer and of the good or service for 12
purchase in the primary transaction, 13
generating an upsell offer as a result of the user initiated 14
primary transaction by: 15
utilizing the identity of the prospective customer to 16
obtain at least a second data element relating to the user, 17
utilizing at least in part the primary transaction data 18
including the identity of the good or service of the 19
primary transaction and the second data element and 20
determining at least one item for a prospective upsell 21
transaction with the prospective customer, and 22
offering the item to the prospective customer and 23
receiving an acceptance of the offer from at least one 24
user in real time during the course of the user initiated 25
communication. 26
Facts Related To Knowledge of Ordinary Skill in the Art 27
16. One of ordinary skill in the art of online purchasing systems 28
knew that it was required that all items offered for sale have 29
descriptions and product identifiers in the database of such 30
products for the sale transaction to index product information and 31
identify the contents of the sale. 32
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PRINCIPLES OF LAW 1
Anticipation 2
"A claim is anticipated only if each and every element as set forth in the 3
claim is found, either expressly or inherently described, in a single prior art 4
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 5
631 (Fed. Cir. 1987). "When a claim covers several structures or 6
compositions, either generically or as alternatives, the claim is deemed 7
anticipated if any of the structures or compositions within the scope of the 8
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 9
Cir. 2001). "The identical invention must be shown in as complete detail as 10
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 11
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 12
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 13
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 14
Obviousness 15
A claimed invention is unpatentable if the differences between it and 16
the prior art are “such that the subject matter as a whole would have been 17
obvious at the time the invention was made to a person having ordinary skill 18
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 19
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 20
In Graham, the Court held that that the obviousness analysis is 21
bottomed on several basic factual inquiries: “[(1)] the scope and content of 22
the prior art are to be determined; [(2)] differences between the prior art and 23
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 24
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 25
U.S. at 406. “The combination of familiar elements according to known 26
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methods is likely to be obvious when it does no more than yield predictable 1
results.” KSR, 550 U.S. at 416. 2
ANALYSIS 3
Independent claims 9, 17, 23, and 26 4
The Appellant argues that none of the limitations are described by Katz. 5
Appeal Br. 7-13 and 20-23. We disagree. The Appellant’s argument 6
appears to take issue with the broad swath of Katz referred to by the 7
Examiner by inviting a more detailed and particular analysis. Appeal Br. 13 8
and 22. We will therefore detail more precisely for the benefit of the 9
Appellant where the limitations are described. 10
Limitations [1] and [2] require receiving a signal identifying a product 11
associated with an order in a computing system and associating a first 12
product identifier with the that product. In Katz’s system a signal 13
identifying a product is initially made by a customer. FF 01, FF 09. This 14
product is associated with the customer’s primary purchase transaction, in 15
other words purchase order. FF 03, FF 10. Katz’s system may also rely on 16
products identified in prior purchase orders. FF 12. Katz’s system includes 17
product information which is provided to a customer. FF 14. Such 18
information would necessarily include an identifier to properly index and 19
identify the products. FF 16. Katz’s claim 1 explicitly recites obtaining the 20
identity of the product a customer wants to purchase. FF 15. Thus, Katz 21
describes limitations [1] and [2]. 22
Limitation [3] requires presenting promotions associated with first 23
product identifier on a user interface. Katz describes using the primary 24
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transaction data as input to a query for identifying goods for upsell.2 FF 04. 1
The primary transaction data necessarily includes the product identifier in a 2
purchase transaction, given that the products purchased form the subject of 3
the transaction. Katz’s claim 1 also explicitly recites using the product 4
identifier to identify an upsell offer. FF 15. An upsell offer is a promotion 5
since it is an offer that is being promoted by the seller. These offers are 6
presented on a user interface to the seller. FF 08. 7
Thus, Katz describes all the limitations of independent claim 9. Claims 8
17, 23, and 26 are for essentially the same limitations and Katz describes 9
those limitations accordingly. 10
Dependent claims 10 and 18 11
Dependent claims 10 and 18 require determining, based on the first 12
product identifier, whether one or more promotions for at least a second 13
product are associated with the first product identifier. The Appellant argues 14
that Katz fails to describe this. Appeal Br. 14-17. We disagree. 15
Katz’s system includes product information which is provided to a 16
customer. FF 14. Such information would necessarily include an identifier 17
to properly index and identify the products. FF 16. Katz’s claim 1 explicitly 18
recites obtaining the identity of the product a customer wants to purchase. 19
FF 15. Katz describes using the primary transaction data as input to a query 20
for identifying goods for upsell. FF 04. The primary transaction data 21
necessarily includes the product identifier in a purchase transaction, given 22

2 The term "upsell" means an offer or provision of a good or service which is
selected for offer to the customer and differs from the good or service for
which the primary contact was made. FF 02.
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that the products purchased form the subject of the transaction. Katz’s claim 1
1 also explicitly recites using the product identifier to identify an upsell 2
offer. FF 15. An upsell offer is a promotion since it is an offer that is being 3
promoted by the seller. These offers are presented on a user interface to the 4
seller. FF 08. Thus, Katz describes determining, based on the first product 5
identifier, whether one or more promotions for at least a second product are 6
associated with the first product identifier. 7
Dependent claims 11 and 19 8
Dependent claims 11 and 19 require comparing the first product 9
identifier with a list of product identifiers associated with promotional 10
offers. The Appellant argues that Katz fails to describe this. Appeal Br. 17-11
18. We disagree. Katz describes using the primary transaction data as input 12
to a query for identifying goods for upsell. FF 04. The primary transaction 13
data necessarily includes the product identifier in a purchase transaction. 14
Katz uses a multiple input, dynamic, preferably real-time search system to 15
identify the items for potential upsell from the various inputs. FF 12. Katz’s 16
claim 1 describes comparing the first product identifier with a list of product 17
identifiers associated with promotional offers. FF 15. Thus, Katz describes 18
comparing the first product identifier with a list of product identifiers 19
associated with promotional offers. 20
Dependent claim 12 21
Dependent claim 12 requires the promotion be associated with a 22
combination of one or more product identifiers. The Appellant argues that 23
Katz fails to describe this. Appeal Br. 18-19. We disagree. Katz uses a 24
multiple input, dynamic, preferably real-time search system to identify the 25
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plural items for potential upsell from the various inputs. FF 12. Katz’s 1
claim 1 describes comparing the first product identifier with a list of plural 2
product identifiers associated with promotional offers. FF 15. To the extent 3
the Appellant is arguing the absence of the specific phrase “product 4
identifier” in Katz, Katz uses the equivalent phrase “identity of the good or 5
service.” FF 15. Thus, Katz describes the promotion be associated with a 6
combination of one or more product identifiers. 7
Dependent claims 13 and 20 8
Dependent claims 13 and 20 require presenting one or more replacement 9
products in the user interface. The Appellant argues that Katz fails to 10
describe this. Appeal Br. 19-20. We disagree. Katz describes the upsell 11
having been for replacements. FF 10. Thus, Katz describes presenting one 12
or more replacement products in the user interface. 13
Dependent claims 24 and 27 14
Dependent claims 24 and 27 require associating the first product 15
identifier with one or more promotional codes. These claims were rejected 16
as obvious over Katz. Ans. 6. The Appellant argues that Katz fails to 17
describe this. Appeal Br. 25. We disagree. As we found above, Katz 18
describes associating the first product identifier with one or more 19
promotions. This is particularly so in Katz’s claim 1. FF 15. The Examiner 20
found it was notoriously well known and therefore predictable to identify 21
promotions with identifiers. Ans. 6. The Appellant argues that no evidence 22
for this is presented. Appeal Br. 25. 23
This argument does not rebut the Examiner’s findings as to predictability 24
of a notoriously well known technique. More to the point, in database 25
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systems such as in Katz, some form of index is necessary to retrieve data. 1
So some index is necessary to retrieve Katz’s promotional information. 2
Such an index identifies the associated promotions. Thus, it was not only 3
predictable, but necessary and therefore inherent to associate Katz’s first 4
product identifier with one or more promotional codes. 5
The Appellant presents no separate arguments in support of patentability 6
for claims 14-16, 21, 22, 25, and 28. Thus the rejections of these claims 7
stand for the same reasons as their parent claims 9, 17, 23, and 26. 8
CONCLUSIONS OF LAW 9
The Appellant has not sustained its burden of showing that the Examiner 10
erred in rejecting claims 9-23, 25, 26, and 28 under 35 U.S.C. § 102(b) as 11
anticipated by Katz. 12
The Appellant has not sustained its burden of showing that the Examiner 13
erred in rejecting claims 24 and 27 under 35 U.S.C. § 103(a) as unpatentable 14
over Katz. 15
DECISION 16
To summarize, our decision is as follows. 17
• The rejection of claims 9-23, 25, 26, and 28 under 35 U.S.C. § 102(b) 18
as anticipated by Katz is sustained. 19
• The rejection of claims 24 and 27 under 35 U.S.C. § 103(a) as 20
unpatentable over Katz is sustained. 21
No time period for taking any subsequent action in connection with this 22
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 23
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AFFIRMED 2
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