Ex Parte Beery

Board of Patent Appeals and Interferences

Sep 29, 2008

09954823 (B.P.A.I. Sep. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD L. BEERY, II
____________

Appeal 2008-0543
Application 09/954,823
Technology Center 1700
____________

Decided: September 29, 2008
____________

Before JENNIFER D. BAHR, ANTON W. FETTING, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

ORDER REMANDING TO THE EXAMINER
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 9-28. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). Because this appeal includes a record that is not ripe for review and
pursuant to 37 C.F.R. § 41.50(a)(1) (2007), we remand this application to the
Examiner to take appropriate action consistent with our comments below.
37 C.F.R. §§ 41.35(b) and 41.50(a)(1) (2007).
Appeal 2008-0543
Application 09/954,823

2
The Examiner must make specific findings as to claim construction.
At present, the Examiner’s position lacks the requisite specificity on the
question of claim construction necessary for us to make a fair review of the
merits of the prima facie cases of anticipation and obviousness. See Gechter
v. Davidson, 116 F.3d 1454, 1457, 1460 n.3 (Fed. Cir. 1997) (“In the present
case, the Board's opinion lacks a claim construction, makes conclusory
findings relating to anticipation, and omits any analysis on several
limitations.”).
The issues are whether Katz (US 6,055,513) anticipates claims 9-23,
25, 26, and 28 and renders obvious claims 24 and 27. These issues turn on
the broadest reasonable construction to be given the claims in light of the
Specification as they would be interpreted by one of ordinary skill in the art.
See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, here, no claim construction analysis has been made.
Rejection of claims 9-23, 25, 26, and 28 under 35 U.S.C. § 102(b)
as anticipated by Katz.
The Appellant argues several of the claims separately, in each case
arguing that nothing in the text cited by the Examiner discloses the disputed
limitation. In each case, Appellant invites the Examiner to point out with
particularity what portions of the cited text correspond to the disputed
limitation as recited in the claim. According to the Appellant, the Examiner
has failed to establish the factual evidence necessary to establish a prima
facie case of anticipation and Katz fails to disclose or suggest elements of
each of the disputed claims, as described more fully below.
With respect to claims 9 and 17, the Appellant argues that the
Examiner has not shown where Katz teaches 1) “receiving, in a computing
Appeal 2008-0543
Application 09/954,823

3
system, a signal identifying a first product associated with an order”; 2)
“associating a first product identifier with the first product”; and 3)
“presenting, via a user interface, one or more promotions when one or more
promotions for at least a second product are associated with the first product
identifier.” The Examiner respectively cites 1) col. 15, ll. 38-65 and col. 22,
ll. 31-45; 2) col. 15, ll. 38-65, col. 22, ll. 31-45, and col. 24, ll. 31-49; and 3)
col. 13, ll. 27-51; col. 17, l. 37 – col. 18, l. 15; col. 23, l. 62 – col. 25, l. 55;
and col. 26, l. 66 – col. 27, l. 21 in support of these limitations. The
Examiner’s response (Answer 7) fails to address where in the cited passages
the disputed claim limitations are explicitly or inherently taught.
With respect to claims 10 and 18, the Appellant argues that the
Examiner has not shown where Katz teaches “determining, based on the first
product identifier, whether one or more promotions for at least a second
product are associated with the first product identifier.” The Examiner cites
col. 23, l. 62 – col. 25, l. 55 in support of this limitation, which is also cited
with respect to the third limitation of claim 9 above. The Examiner’s
response (Answer 8), which additionally cites to col. 22, ll. 31-45, col. 24, ll.
31-49, and Fig. 6, fails to address where in the cited passages the disputed
claim limitations are explicitly or inherently taught.
With respect to claims 11 and 19, the Appellant argues that the
Examiner has not shown where Katz teaches “comparing the first product
identifier with a list of product identifiers associated with promotional
offers.” The Examiner again cites col. 23, l. 62 – col. 25, l. 55 in support of
this limitation. The Examiner’s response (Answer 8) fails to address where
in the cited passages the disputed claim limitations are explicitly or
inherently taught.
Appeal 2008-0543
Application 09/954,823

4
With respect to claim 12, the Appellant argues that the Examiner has
not shown where Katz teaches “wherein a promotion is associated with a
combination of one or more product identifiers.” The Examiner again cites
col. 23, l. 62 – col. 25, l. 55. The Examiner’s response (Answer 9) fails to
address where in the cited passages the disputed claim limitations are
explicitly or inherently taught.
With respect to claims 13 and 20, the Appellant argues that the
Examiner has not shown where Katz teaches “presenting one or more
replacement products in the user interface.” Examiner again cites col. 23, l.
62 – col. 25, l. 55. In response to the Appellant’s argument, the Examiner
correctly found that the feature of offering replacement products in the
upsell telemarketing method is taught by Katz (Answer 9, citing Katz, col.
27, ll. 47-49). However, claims 13 and 20 depend from claims 9 and 17
respectively, and the ambiguity in the Examiner’s analysis of the disputed
limitations of the independent claims must be resolved before the rejection
of claims 13 and 20 can be properly considered.
With respect to claims 23 and 26, the Appellant argues that the
Examiner has not shown where Katz teaches 1) “storing criteria for a
promotional offer in a computer-readable memory”; 2) “receiving, in a
computing system, a signal identifying a first product associated with a
consumer order”; 3) “comparing a first product identifier associated with the
first product with the criteria for a promotional offer”; and 4) “presenting a
promotional offer in a user interface when the first product identifier
corresponds to a criteria for a promotional offer.” The Examiner cites 1) col.
15, ll. 38-65; col. 22, ll. 31-45; and col. 24, ll. 31-49 in support of the first
and second limitations above; and 2) col. 13, ll. 27-51; col. 17, l. 37 to col.
Appeal 2008-0543
Application 09/954,823

5
18, l. 15; col. 23, l. 62 to col. 25, l. 55; and col. 26, l. 66 to col. 27, l. 21 in
support of the third and fourth limitations above. The Examiner’s response
(Answer 10) fails to address where in the cited passages the disputed claim
limitations are explicitly or inherently taught.
After careful review of the extensive passages cited by the Examiner,
it is not clear how the Examiner construes the many claim terms challenged
by the Appellant. The difficulty we have with the Examiner's position is its
failure to specifically point out where in the cited passages there is found a
teaching of each of the disputed claim limitations. Moreover, while we
appreciate that in evaluating prior art references, it is proper to take into
account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom (see In re Preda, 401 F.2d 825, 826 (CCPA 1968)), in the present
instance, we do not view this maxim of patent law as relieving the Examiner
of the initial burden of pointing out where the applied prior art teaches or
suggests Appellant's invention.
In the present application, Appellant has reasonably challenged (Br. 7-
23) the Examiner's findings with respect to the respective claims. In
response, the Examiner has merely reiterated, with minor modifications,
(Answer 3-6 and 7-10) that each of the limitations is described in the cited
portions of Katz, without pointing out where the respective disputed
limitations are explicitly found in the reference.
“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), cert. denied, 484 U.S. 827 (1987). The prior art
Appeal 2008-0543
Application 09/954,823

6
may anticipate a claimed invention, and thereby render it non-novel, either
expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002). Express anticipation occurs when the prior art
expressly discloses each limitation (i.e., each element) of a claim. Id. In
addition, “[i]t is well settled that a prior art reference may anticipate when
the claim limitations not expressly found in that reference are nonetheless
inherent in it.” Id.
“To establish inherency, the extrinsic evidence must make clear that
the missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill. 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.’” In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (citations omitted) (internal quotation marks omitted).
On remand, the Examiner must specifically point to which portions of
Katz are believed to disclose each of the challenged claim limitations. To
the extent that the Examiner believes any of the claim limitations to be
inherent in Katz, the Examiner must present a detailed analysis of why
missing descriptive matter is necessarily present in the thing described in the
reference, and why it would be so recognized by persons of ordinary skill,
without relying on probabilities or possibilities.
Appeal 2008-0543
Application 09/954,823

7
Rejection of claims 24 and 27 under 35 U.S.C. § 103(a) as obvious
over Katz.
Appellant argues that there is no evidence of record whatsoever to
support the assertion in the final Action that claims 24 and 27 are obvious.
According to the Appellant,
The Action acknowledges that Katz fails to
disclose associating a product identifier with one
or more promotional codes, as recited in claim 24.
The Action asserts that it would have been obvious
to modify the method taught by Katz with the use
of promotional codes “since it was known in the
art that promotions are identified by codes to
provide a way of tracking the promotions.”
However, the Action fails to cite any references to
support the assertion of obviousness or to assert
Official Notice. In sum, there is no evidence of
record to support the assertion. Therefore, the
rejection is improper and must be withdrawn. (See
MPEP 2144.03).
(Br. 25).
The Examiner disagreed because
the Katz et al. reference teaches the future of
providing promotional items such as coupons
associated with the primary transaction, “[the
upsell is an] offer of a good or a service, or to a
coupon, ticket, card or other promotional material
having a variable or designated value for the
purchase, lease or other acquisition in the future of
a good or a service” (col. 18, lines 7-11 - also see
col. 27, lines 17-21) and it is well known in the art
to use a code such as a barcode as an identifier. It
would have been obvious to a skilled artisan in the
marketing art to include code as a tracking feature
to ensure proper matching and verification during
redemption of the promotion.
Appeal 2008-0543
Application 09/954,823

8
(Answer 11). Although the Examiner addresses the obviousness of
including promotional codes as tracking features, claims 24 and 27 depend
from claim 23, and the ambiguity in the Examiner’s analysis of disputed
limitations of the independent claim must be resolved before the rejection of
claims 24 and 27 can be properly considered. To the extent that the above
directed analysis affects the Examiner’s position regarding the obviousness
of claims 24 and 27, this analysis should be made explicit to facilitate
review. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”).

ORDER
Accordingly, it is ORDERED that the application is remanded to the
Examiner:
1) to provide a claim construction analysis;
2) to clarify where specifically the prior art teaches each of the
limitations of each of the disputed claims; and
2) for such further action as may be appropriate.

REMANDED

Appeal 2008-0543
Application 09/954,823

9
hh

CAVEN & AGHEVLI, LLC
9249 S. BROADWAY BLVD
UNIT 200-201
HIGHLANDS RANCH, CO 80129