Ex Parte Burrows

Board of Patent Appeals and Interferences

Jan 25, 2005

09910654 (B.P.A.I. Jan. 25, 2005)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RODGER BURROWS
_____________
Appeal No. 2004-2110
Application No. 09/910,654
______________
HEARD: DECEMBER 8, 2004
_______________
Before JERRY SMITH, RUGGIERO, and GROSS, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-18, which
constituted all the claims in the application. An amendment
after final rejection was filed on October 17, 2003 and was
entered by the examiner. This amendment cancelled claim 16.
Therefore, this appeal is directed to the rejection of claims 1-
15, 17 and 18.
Appeal No. 2004-2110
Application No. 09/910,654
2
The disclosed invention pertains to a method and
apparatus for electronically generating, storing and retrieving
airline ticket agency coupon data.
Representative claim 1 is reproduced as follows:
1. A method for electronically generating,
storing, and retrieving airline ticket agency coupon data,
comprising the steps of:
generating agent coupon data simultaneously with the
printing of an airline ticket;
transmitting and storing said agent coupon data
electronically to and in data storage apparatus;
providing each agent coupon data with an identifier;
storing said agent coupon data in a
director/directory/image file arrangement; and
retrieving said electronically stored agent coupon data and
printing the same in a format of an agent coupon.
The examiner relies on the following references:
Friedes et al. (Friedes) 5,521,966 May 28, 1996
“Field Investigations and Fraud Prevention Program,” Industry
Agents’ Handbook, pp. 1-2, (Section 70.0, 2000 Ed.) (Hereinafter
referred to as IAH).
Prior art submitted by appellant relating to events involving
Airlines Reporting Corporation (ARC).
Appeal No. 2004-2110
Application No. 09/910,654
3
Claims 1-15, 17 and 18 stand rejected under 35 U.S.C.
§ 102(f) because appellant did not invent the claimed subject
matter. Claims 1-15, 17 and 18 also stand rejected under
35 U.S.C. § 103(a). As evidence of obviousness the examiner
offers Friedes in view of IAH.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
relied upon by the examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellant’s arguments set forth in the
briefs along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the examiner’s
answer.
It is our view, after consideration of the record before
us, that the evidence relied upon does not support the rejection
of the claims under 35 U.S.C. § 102(f). We are also of the view
that the prior art relied upon does not support the examiner’s
Appeal No. 2004-2110
Application No. 09/910,654
4
rejection of the claims under 35 U.S.C. § 103. Accordingly, we
reverse. We enter a new rejection, however, using our authority
under 37 CFR § 41.50(b).
We consider first the rejection of claims 1-15, 17 and
18 based on the examiner’s finding that appellant did not invent
the subject matter of the claimed invention. The examiner’s
finding results from the examiner’s consideration of the prior
art submitted by appellant representing events involving the
Airlines Reporting Corporation (ARC). It is essentially the
examiner’s position that the claimed invention represents nothing
more than the recitation of a new policy proposed by ARC in which
agent coupon data could be stored electronically rather than in
paper form (answer, pages 3-5).
Appellant argues that independent claims 1 and 15 recite
the storage of agent coupon data electronically whereas ARC only
describes the storage of agent coupon data as an actual image of
the agent coupons. Appellant argues that there are several
disclosures within ARC that indicate that ARC was only proposing
the storage of an image of an agent coupon and not the electronic
Appeal No. 2004-2110
Application No. 09/910,654
5
storage of agent coupon data. Appellant also notes that the
rejection is not based on a single document as required, but
instead, is based on a plurality of separate documents by ARC and
the Travel Weekly News (brief, pages 9-15).
The examiner responds that ARC disclosed that agents “can
now print agent coupon[s] on non-accountable stock or capture the
coupon data on an optical media” (answer, page 5, emphasis added
by examiner). The examiner finds that the disclosure of
capturing coupon data indicates that the data is stored
electronically. The examiner also notes that it would have been
obvious to store the data as an image file or a text file. The
examiner notes that it was well known that image data can be
stored in electronic form for reconstruction of the image
(answer, pages 6-11).
Appellant responds that when all of the disclosures of
ARC are considered as a whole, it is clear that ARC did not
contemplate the electronic storage of agent coupon data (reply
brief, pages 2-5, 7-11).
We will not sustain the examiner’s rejection of the
claims on appeal under 35 U.S.C. § 102(f). We agree with
appellant that ARC, when considered in its entirety, only
Appeal No. 2004-2110
Application No. 09/910,654
6
discloses that agent coupon data should be stored in optical
form. The attempt by the examiner to read electronic storage of
coupon data into the ARC disclosure is based on speculation.
Although the examiner has given reasons why the electronic
storage of the coupon data would have been obvious to the artisan
in view of ARC, the rejection before us is based on anticipation
and not on obviousness. We address this question of obviousness
in our new ground of rejection set forth below.
We now consider the rejection of claims 1-15, 17 and 18
under 35 U.S.C. § 103 based on the teachings of Friedes and IAH.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073-
74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
Appeal No. 2004-2110
Application No. 09/910,654
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available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227
USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039-40, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531
F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those
Appeal No. 2004-2110
Application No. 09/910,654
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arguments actually made by appellant have been considered in this
decision. Arguments which appellant could have made but chose
not to make in the brief have not been considered and are deemed
to be waived (see 37 CFR § 41.37(c)(1)(vii)(2004)).
With respect to independent claims 1 and 15, the
examiner’s rejection is set forth on pages 5-6 of the answer.
The examiner essentially finds that since Friedes teaches the
electronic sale of an airline ticket, and since IAH allowed the
electronic storage of an agent’s coupon, then it would have been
obvious to the artisan to maintain the agent coupon data in
Friedes as an electronic file, available for retrieval and
printing.
Appellant argues that Friedes is not analogous art
because Friedes relates to the paperless storage of images of a
smart card whereas the claimed invention relates to the storage
of data associated with agent coupons from which an actual
facsimile of the agent coupons can be created on demand.
Appellant notes that there is no mention of an agent coupon in
Friedes. Appellant also argues that there is no suggestion in
either reference to combine their teachings in the manner
proposed by the examiner. Appellant asserts that the teachings
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Application No. 09/910,654
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of the two references would lead the artisan in opposite
directions. Appellant also argues that IAH relates to optical
storage of coupon data and not to electronic storage of such data
(brief, pages 18-23).
The examiner responds that it is inherent that when
Friedes generates and stores the electronic ticket information it
must also generate and store the agent coupon data as per the ARC
regulations. The examiner also argues that ARC and IAH teach
that the agent coupon data must be electronically stored (answer,
pages 11-14).
Appellant responds that Friedes does not once mention
agent coupon data, and that it was error for the examiner to
extrapolate the teachings of Friedes to include agent coupon
data. Appellant also notes that Friedes does not involve a
travel agent so that no agent coupons are necessary and the
regulations of the ARC are irrelevant (reply brief, pages 5-7,
11-13).
We will not sustain the examiner’s rejection of
independent claims 1 and 15. We agree with appellant that there
is no reasonable basis for combining the teachings of Friedes and
IAH. The entire premise of the examiner’s rejection is that an
Appeal No. 2004-2110
Application No. 09/910,654
10
agent coupon must be generated in Friedes which is governed by
regulations established by ARC. There is no mention, however, of
a travel agent or agent coupon in Friedes. Friedes appears to be
a smart card system for use directly with the airlines
themselves. Friedes specifically discloses that “[t]he traveler
need not go to a travel agency or airline office in order to
obtain the ticket” (column 7, lines 12-13). Friedes also
discloses that the smart card is verified by the flight
attendant, who presumably works for the airlines, and that the
smart card system eliminates the need for a separate document or
piece of paper at the conclusion of the transaction (column 7,
lines 7-12). Thus, the suggestion that Friedes somehow requires
an agent coupon is contrary to the very teachings set forth
within the reference. The premise for the examiner’s rejection
could only come from an improper attempt to reconstruct the
claimed invention in hindsight.
Since we have not sustained the examiner’s rejection with
respect to independent claims 1 and 15, we also do not sustain
the rejection with respect to any of the dependent claims.
Appeal No. 2004-2110
Application No. 09/910,654
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In summary, we have not sustained either of the
rejections as formulated by the examiner. Therefore, the
decision of the examiner rejecting claims 1-15, 17 and 18 is
reversed. We make the following new ground of rejection using
our authority under 37 CFR § 41.50(b).
We reject claims 1-15, 17 and 18 under 35 U.S.C. § 103(a)
as being unpatentable over the prior art submitted by appellant
which has collectively been labeled ARC. We incorporate the
findings made by the examiner in rejecting these claims under
35 U.S.C. § 102(f) except for the finding that ARC discloses the
electronic storage of coupon data. Even though we found above
that ARC does not disclose the electronic storage of coupon data
as asserted by the examiner, we agree with the examiner’s
position that the storage of coupon data electronically would
have been obvious to the artisan in view of the teachings in ARC
that coupon data should be stored in optical form. At the time
this application was filed, it was well known in the art to store
image data in electronic form so that it could be transmitted
over a communications channel such as a facsimile transmission or
a multimedia network transmission. Thus, although ARC in its
entirety seems to suggest an optical storage of image data, the
Appeal No. 2004-2110
Application No. 09/910,654
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artisan would have found it obvious to also store the image data
in electronic form for subsequent reconstruction of the image.
This decision contains a new ground of rejection pursuant
to 37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg.
49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September
7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered
final for judicial review."
37 CFR § 41.50(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record . . . .
Appeal No. 2004-2110
Application No. 09/910,654
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

REVERSED - 37 CFR § 41.50(b)

JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JS:hh
Appeal No. 2004-2110
Application No. 09/910,654
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RICHARD M. SACCOCIO
RICHARD M. SACCOCIO, P.A.
100 SOUTHEAST 12TH STREET
FT. LAUDERDALE, FL 33316