Ex Parte CairnsDownload PDFPatent Trial and Appeal BoardJul 18, 201713589343 (P.T.A.B. Jul. 18, 2017) Copy Citation 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. 90/012,264 04/24/2012 6,173,267 B1 14500.1001 REX 7509 25099 7590 07/18/2017 DAVID M. QUINLAN, P.C. P.O. Box 8088 22 Monterey Drive PRINCETON, NJ 08543 EXAMINER WORJLOH, JALATEE ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/18/2017 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CAIRNS HOLDINGS LLC, Patent Owner ____________ Appeal 2017-007763 Reexamination Control 90/012,264 and Reissue Application No. 13/589,3431 Patent 6,173,267 B1 Technology Center 3900 ____________ Before JOHN A. JEFFERY, STEPHEN C. SIU, and ERIC B. CHEN, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON APPEAL This proceeding arose out of a request for ex parte reexamination and reissue examination of U.S. Patent No. 6,173,267 B1 (“the ’267 patent”) to Laurie Cairns, entitled METHOD FOR PRODUCT PROMOTION, issued January 9, 2001. 1 Reexamination No. 90/012,264 and Reissue No. 13/589,343 were merged. See Decision Merging Reissue and Reexamination Proceedings, dated January 10, 2013. Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 2 Patent Owner appeals under 35 U.S.C. §§ 134 and 306 from the Examiner’s Final Rejection of claims 1–20, 22, 23, 25–27, and 29–36. App. Br. 1, 5.2 We have jurisdiction under 35 U.S.C. § 6(b). The disclosed invention relates generally to promoting a product by fulfillment of a promotional contest. See Spec. 1:5–9. Claim 22 reads as follows: 22. A method for product promotion, comprising the steps of: providing to a purchaser a product or service for sale at a location including a building where payment is received for said product or service; providing a unique code accompanying said product or service for sale by modification of said product or service, modification of packaging of said product or service, or incorporation of a card or piece into said product or service; providing an electronic address for verifying said unique codes input from a location other than the building where payment was received; and providing a sweepstakes promotion involving the award of prizes to selected purchasers of said product or service who input a verified unique code at said electronic address including informing every said purchaser who inputs a said verified unique code of a status of said sweepstakes promotion while said purchaser is connected at said electronic address to input a said unique code, wherein a prize is forwarded from a first location other than the building where payment was received directly to least one of said purchasers who has won a prize and who is located at a second location different from the first location. 2 Appeal Brief, filed January 21, 2016 (“App. Br.”). Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 3 Patent Owner appeals the Examiner’s rejection of claims 1–20, 22, 23, 25–27, and 29–36 under 35 U.S.C. § 101 as being directed to non-statutory subject matter; claims 1–20, 23, 25–27, and 30–36 under 35 U.S.C. § 103(a) as unpatentable over US Patent 5,883,620 (“Hobbs”), US Patent 6,039,244 (“Finsterwald”), and US Patent 4,669,730 (“Small”); and claim 29 under 35 U.S.C. § 103(a) as unpatentable over Hobbs, Finsterwald, Small, and Official Notice.3 ISSUE Did the Examiner err in rejecting claims 1–20, 22, 23, 25–27, and 29– 36? ANALYSIS 35 U.S.C. § 101 Claim 22 recites a method comprising providing a product/service, a code, an electronic address, a sweepstakes promotion, and a prize. The Examiner finds that claim 22 is unpatentable as being directed to non- statutory subject matter under 35 U.S.C. § 101. Final Act. 2–4; see also 3 Patent Owner provides arguments in support of only claim 22 and states that “[f]or purposes of this appeal all claims will stand or fall with independent claim 22.” App. Br. 1. Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 4 Ans. 2–6. We agree with the Examiner for at least the reasons set forth by the Examiner. For example, following the “framework for distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts” as set forth by the U.S. Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), we first “determine whether the claims at issue are directed to [a] patent-ineligible concept[]” and, “[i]f so, we then ask, ‘[w]hat else is there in the claims before us?’” in order “to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (internal citation omitted). In Alice, claims were directed to a “computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary” including creating “records (i.e., account ledgers),” “updat[ing] the . . . records,” “allowing ‘only those transactions for which . . . updated . . . records indicate sufficient resources . . . [’],” and “instruct[ing] the relevant financial institutions to carry out the ‘permitted’ transactions in accordance with the updated . . . records.” Alice, 134 S. Ct. at 2351– 2353 (internal citation omitted). The Court held that such claims “are drawn to [an] abstract idea” based on similarities between the claimed “intermediated settlement” and claims in other matters previously held to be unpatentable as “abstract ideas.” Alice, 134 S. Ct. at 2355–2356 (concluding that “[i]t follows from our prior cases, and Bilski in particular, that the claims at issue Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 5 here are directed to an abstract idea”).4 In particular, the Court noted sufficient similarity of the “intermediated settlement” claims in Alice to claim features previously determined to be “abstract ideas” of “an algorithm for converting binary-coded decimal numerals into pure binary form” (Alice, 134 S. Ct. at 2355 (citing Gottschalk v. Benson, 409 U.S. at 67, 71–72)), a method for “adjust[ing] alarm limits for certain operating conditions” (Alice, 134 S. Ct. at 2358 (citing Parker v. Flook, 437 U.S. 584, 585–86 (1978)), or a “method for hedging against the financial risk of price fluctuations” including “initiating” transactions, “identifying market participants” and “initiating a series of [other] transactions . . . to balance the risk.” Alice, 134 S. Ct. at 2355–56 (citing Bilski v. Kappos, 561 U.S. 593, 599 (2010)). Hence, based on this guidance, a claim directed to any of converting, adjusting, creating, initiating, or updating data (and any similar such actions on data) constitute an “abstract idea” and, therefore, is to be held to be non- statutory subject matter under 35 U.S.C. § 101. Claim 22 in the present matter recites providing various forms of data – e.g., a “product or service,” a “unique code,” “an electronic address,” and “a sweepstakes promotion.” We agree with the Examiner that the claimed “providing” of data is sufficiently similar to at least one of mitigating, creating, updating (Alice), converting (Benson), adjusting (Flook), hedging, initiating, and/or 4 With respect to this issue, the Court cited Gottschalk v. Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978); and Bilski v. Kappos, 561 U.S. 593 (2010). Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 6 identifying data (Bilski), each of which the Court informs is to constitute an “abstract idea” that is unpatentable under 35 U.S.C. § 101. Subsequent to the decision of the Supreme Court in Alice, the Federal Circuit further instructs that claims reciting various other claim terms pertaining to the manipulation of data constitute “abstract ideas” and are to be considered unpatentable under 35 U.S.C. § 101. These include claims directed to “collecting, displaying, and manipulating data,” “recognizing certain data within [a] set,” “storing . . . data in a memory,” “extracting data . . . , entering the data into . . . fields,” “customizing information,” “presenting [data] to users,” as well as claims that “recit[e] similar data manipulation steps,” even if the claims in question “limit[] the invention to a technological environment”;5 claims drawn to “collect[ing], classify[ing], or otherwise filter[ing] data,” and the “creation of [data] used to search and retrieve information” even if the claims in question recite specific types of data;6 claims drawn to generating and transmitting data, even if such data includes categories and items or if the data is stored on a data storage device, or claims drawn to other actions deemed to be “commonly known”;7 claims drawn to “receiving [data], characterizing [the data] based on [other data], . . . communicating the [data]” or “filtering” data, or any other action deemed 5 Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1339–40 (Fed. Cir. 2017). 6 Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1327 (Fed. Cir 2017). 7 Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–42 (Fed. Cir. 2016). Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 7 to “not ‘improve the functioning of the computer itself’” or constitute “generic computers to perform generic computer functions”;8 claims drawn to “classifying [data] and storing the [data] based on its classification,” or any actions that do not contribute to the “improvement [of] the functioning of a computer” and “simply add[] conventional computer components to well-known business practices”;9 claims drawn to “retaining information” or any claim that “contains no restriction on how the result is accomplished”;10 claims drawn to “collecting,” “recognizing,” or “storing” data even if the claims also “limit[] the abstract idea . . . to a particular technological environment”;11 claims drawn to “receiving,” selecting,” “offering,” “restricting access,” “facilitating display,” or “updating” data, as well as “using [data] as an exchange or currency”;12 claims drawn to “receiving” and/or “processing” data and “creating” a “contractual relationship”;13 and 8 Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313, 1315 (Fed. Cir. 2016) (internal citations omitted). 9 In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). 10 The court also considered “retaining information” to constitute “well- understood, routine, conventional activities previously known.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (internal quotation and citation omitted). 11 Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Assoc., 776 F.3d 1343, 1347, 1348 (Fed. Cir. 2014). 12 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714–16 (Fed. Cir. 2014) 13 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014). Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 8 claims drawn to “generating” data and/or “combining” data are to be deemed “so abstract and sweeping” as to be “not patent eligible under section 101.”14 In summary, the Federal Circuit instructs us that claims are to be deemed ineligible as directed to “abstract ideas” under 35 U.S.C. § 101 if the claims recite no more than manipulating data that may include any of classifying, collecting, combining, communicating, creating, customizing, displaying, extracting, facilitating display of, filtering, generating, manipulating, offering, presenting, processing, receiving, recognizing, restricting access to, retaining, retrieving, searching, selecting, storing, transmitting, updating, or using as an exchange or currency (or any other similar action taken with respect to data). In the present matter, as previously discussed, claim 22 is directed to a method comprising “providing” various types of data. We agree with the Examiner that “providing” data, according to our reviewing court(s), is to be considered to be unpatentable under 35 U.S.C. § 101 as an “abstract idea.” For example, “providing” data is sufficiently similar to at least any of “presenting,” “offering,” “communicating,” “displaying,” “facilitating display of,” or “transmitting” data, each action of which has been held by our reviewing court(s) to constitute an “abstract idea” for purposes of 35 U.S.C. § 101 (see previous discussion). Therefore, we agree with the Examiner, in accordance with guidance from our reviewing courts, that the 14 Digitech Image Tech, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (2014) (internal quotation and citation omitted). Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 9 claims in the present matter recite an “abstract idea” in the context of 35 U.S.C. § 101 and are, therefore, ineligible as being directed to non-statutory subject matter. The Supreme Court in Alice further cautions that we must “tread carefully in construing this exclusionary principle lest it swallow all of patent law” because “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply . . . abstract ideas.’” Alice, 134 S. Ct. at 2354 (citing Mayo Collaborative Svcs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1293–94). In order to prevent “swallow[ing] all of patent law,” we must “distinguish between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those that integrate the building blocks into something more . . . thereby ‘transform[ing]’ them into a patent-eligible invention.” Alice, 134 S. Ct. at 2354 (internal citation omitted). In this regard, the Supreme Court in Alice informs us that a claimed invention that is deemed to constitute an “abstract idea” may be determined to be patent eligible if that “abstract idea” is “used . . . in a process designed to solve a technological problem in ‘conventional industry practice’” and “improve[s] an existing technological process.” Alice, 134 S. Ct. at 2358 (citing Diamond v. Diehr, 450 U.S. 175 (1981)). The Supreme Court further informs us that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358. Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 10 In the present matter, as previously discussed, the claims are directed to a method that is performed by a computer, the method comprising “providing” various types of data by a computer. In other words, the claims merely recite a generic computer for performing the “abstract idea” of providing data. Because the Supreme Court has held that recitation of a generic computer is insufficient to transform a claimed invention deemed to be directed to an “abstract idea” into a patent-eligible invention, we must conclude that the claimed invention in the present matter is unpatentable under 35 U.S.C. § 101 as an “abstract idea” and execution of the “abstract idea” using a generic computer is insufficient to transform the “abstract idea” into a patent-eligible invention under 35 U.S.C. § 101. Patent Owner argues that “claim 22 is not directed to an abstract idea” because “merely referring in a claim to something that could be called an ‘abstract idea’ is [not] enough to satisfy Alice part one.” App. Br. 7. We are not persuaded by Patent Owner’s arguments for at least the previously discussed reasons, which are not based solely on “merely referring in a claim to something that could be called an ‘abstract idea’”. Patent Owner argues that claim 22 “is not directed to an abstract idea” because “[u]nder the precedents . . . neither the use of the word ‘sweepstakes’ in claim 22, nor the fact that the claim refers to aspects of a sweepstakes contest to which the claimed method is applied, renders the claim ‘directed to an abstract idea’”. App. Br. 8. We are not persuaded by Patent Owner’s arguments at least because, as previously discussed, our Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 11 affirmance of the Examiner’s rejection of claim 22 under 35 U.S.C. § 101 is not based solely on “the use of the word ‘sweepstakes’ in claim 22” or “the fact that the claim refers to aspects of a sweepstakes contest.” Patent Owner argues that claim 22 “is not directed to an abstract idea” because “not all methods of organizing human activity are abstract ideas.” App. Br. 8. We are not persuaded by Patent Owner’s argument at least because, as previously discussed, our reviewing court has held that specific actions performed on data are to be deemed an “abstract idea,” at least one of the specifically identified actions being similar to the claimed “providing” of data. Patent Owner does not explain sufficiently the difference between the claimed “providing” of data and any of the similar actions performed on data held by our reviewing court(s) to constitute an “abstract idea” for purposes of 35 U.S.C. § 101. Patent Owner argues that claim 22 “is not directed to an abstract idea” because claim 22 “passes the test when compared to . . . DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) . . . [and] Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010).” App. Br. 9. We are not persuaded by Patent Owner’s argument at least because, other than merely citing generalized conclusory statements from each of these cited cases, Patent Owner does not explain how either of these cases pertain to the claimed invention in the ’267 patent, much less that claim 22 of the ’267 patent somehow recites statutory subject matter under 35 U.S.C. § 101 under either Alice or any of the other cited precedential cases from our Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 12 reviewing courts, including any of DDR Holdings and/or Research Corp. Techs (see above discussion). Patent Owner argues that claim 22 “is not directed to an abstract idea” because claim 22 “includes substantially more than a sweepstakes contest.” App. Br. 10. In particular, Patent Owner argues that claim 22 “tak[es] advantage of modern technology . . . [and] overcomes problems with implementing a sweepstakes contest specifically arising in that context” such as “[c]laim 22’s requirement that ‘a prize is forwarded from a first location other than the building where payment was received directly to at least one of said purchasers who has won a prize and who is located at a second location different from the first location.’” App. Br. 11. Hence, Patent Owner argues that claim 22 is not directed merely to an “abstract idea” of providing data because claim 22 also recites that data (i.e., “payment”) is provided to one location, that other data (i.e., “a prize”) is “provid[ed]” from a second location that differs from the location where payment “data” was received, and that data (i.e., a “prize”) is provided to a recipient that is located at a location other than where the data was originally located.15 Id. In the absence of specific guidance from our reviewing courts, we are not persuaded by Patent Owner’s argument that the mere provision of one 15 Patent Owner argues that the Examiner provides “a new construction of ‘prize’” and newly relies on “the wherein clause [as] not being a limitation on the claimed method” in the Examiner’s Answer. Reply Br. 6. Patent Owner does not indicate that a petition pertaining to these allegations was filed. In any event, we do not decide petitionable matters on appeal. Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 13 form of data to a first location, and provision of another form of data from a second location (different from the first location) to a recipient located at a location that differs from the second location is sufficient to be considered “substantially more” so as to remove the so-called “abstract idea” of “providing data” from the realm of non-statutory subject matter under 35 U.S.C. § 101 as predicated by our reviewing courts (e.g., Alice). Patent Owner does not provide sufficient facts or cite to specific guidance from our reviewing courts to demonstrate persuasively that “providing” data (that is considered by our reviewing courts to be unpatentable under 35 U.S.C. § 101 as an “abstract idea”) is somehow patentable under 35 U.S.C. § 101 based on the relative location from which the data is “provided” and/or the relative location to which the data is provided. In the absence of such guidance from our reviewing court, we must conclude that the so-called “abstract idea” of providing data is not transformed into patent-eligible subject matter under 35 U.S.C. § 101 based merely on the relative location(s) from/to which the data is provided. Patent Owner does not provide additional arguments in support of the eligibility of claims 1–20, 23, 25–27, and 29–36. Based on guidance from our reviewing court(s) and the evidence of record, the Examiner did not err in rejecting claims 1–20, 22, 23, 25–27, and 29–36 under 35 U.S.C. § 101. Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 14 35 U.S.C. § 103 Claim 22 recites a location including a building where payment is received for said product or service and that a prize is forwarded from a first location other than the building where payment was received directly to at least one of said purchasers who has won a prize and who is located at a second location different from the first location. The Examiner finds that Hobbs discloses “providing to a purchaser a product or service for sale at a location including a building where payment is received from said product or service.” Final Act. 6 (citing Hobbs 7:28-46). As the Examiner explains, Hobbs discloses an example in which a “cup is purchased” by a “consumer.” Hobbs 7:45. The purchased product includes “a code printed thereon which is entered into” an apparatus to verify if the purchaser has won a prize. Hobbs 7:28-30. “In the event that a winning code is entered, the consumer can receive the indicated prize by presenting the winning consumer product at an appropriate location, preferably co-located with the electronic verification system.” Hobbs 9:37–39. The code number is “verified” at a “prize distribution location where the prize award is verified and the prize awarded to the consumer.” Hobbs 10:8–9. The Examiner also explains that Small discloses that a “prize may be provided to the purchaser . . . from a location other than the building where payment was received . . . [in which] a . . . purchaser may receive . . . information . . . while conducting a transaction at an automatic teller machine . . .” Final Act. 10–11 (citing Small 8:34–43). As the Examiner Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 15 indicates, Small discloses a user at a “remote computer terminal such as an automated teller machine (ATM) . . . [that is] in electronic communication with the subject financial institution . . . computer.” Small 5:29–34. “[I]f a winning correlation exists [between a “user indicia” and a “game indicia”], a “processor . . . determines a prize . . . to be awarded a user as well as a manner of awarding the prize to the user.” Small 5:43–4, 49–52. “In the event the prize is a material good or service, . . . the user [is instructed] to go to his or her financial institution to receive the prize.” 8:37–40. In other words, Small discloses a user performing a financial transaction at one location (i.e., at an ATM) and, based on the financial transaction at the one location, receiving a “prize” at a different location (i.e., at a “financial institution”). Hence, Small demonstrates that one of ordinary skill in the art would have known the practice of performing an action at one location and receiving a resulting prize from a different location. The Examiner also explains that “it would have been obvious to one having ordinary skill in the art . . . to direct the winning purchaser [of Hobbs] . . . to a location other than the building where the payment was received [of Small] . . . [such as] other retailers who carry these items.” Final Act. 11, see also Final Act. 12. In other words, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to direct a recipient of an item to a location at which the item is located. We agree with the Examiner that one of skill in the art, having ordinary creativity and not being an automaton, would have understood the generally Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 16 known practice of receiving an item at a location where the item is located, and the individual receiving the item potentially relocating to the location where the item is located if the individual receiving the item is not currently located at the location where the item is located. For example, one of skill in the art would have understood that, if an individual is to receive an item but is situated at a location remote from the item, a finite number of options would be available to the individual – i.e., either the individual relocates to the location at which the item is located or the item is relocated to the location at which the individual is located. Choosing between this finite number of predictable choices (i.e., 2 known choices) would have been well within the purview of one of ordinary skill in the art at least because, as previously discussed, one of ordinary skill in the art possesses ordinary creativity and is not an automaton. In any event, as previously discussed, we note that Hobbs discloses a user purchasing a product (e.g., a cup) with a code and checking the code to determine if the code is a “winning code . . . by presenting the winning consumer product at an appropriate location, preferably co-located with the electronic verification system.” Hobbs 9:37–40. While Hobbs discloses that the location where payment is made for the product is “preferably co- located” with an “electronic verification system,” Hobbs does not disclose that this is required. Rather Hobbs not only discloses this feature merely to be “preferable,” but also discloses that “the invention may be practiced otherwise than as specifically described herein without departing from the Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 17 spirit and scope of the invention.” Hobbs 10:36–38. One of skill in the art would have understood that if co-location of payment and code verification is merely “preferable” but not “required,” as disclosed by Hobbs, payment and code verification not being co-located would be another option (albeit not “preferable”) “without departing from the spirit and scope of the [Hobbs] invention.” In addition, Hobbs explicitly discloses another location (i.e., the “prize distribution location”) “where the prize award is verified and the prize awarded to the consumer.” Hobbs 10:8–9. Hence, in Hobbs, the product is purchased (and paid for) at one location and the code is “verified” and the prize is distributed from a different location (i.e., the “prize distribution location”). Patent Owner argues that “nothing in Hobbs suggests that a code would be placed on any product not meant to be consumed right at the store,” that Hobbs discloses “that the prize verification apparatus 1 is at the store where the cup was purchased,” which, according to Patent Owner, is “only at locations ‘where consumer products are distributed,’” but fails to disclose “that its prize verification apparatus can be located elsewhere.” App. Br. 16–17, 21. As discussed above, we disagree with Patent Owner’s characterization of Hobbs because Hobbs discloses that the location where payment is received is merely “preferably co-located with the electronic verification system” but does not disclose that co-location is required. Given the plain and customary meaning of the term “preferably,” one of skill Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 18 in the art would not have understood such co-location to be required. Also as previously discussed, Hobbs discloses an embodiment in which the product is purchased (and paid for) at one location and the code is “verified” and the prize is distributed from a different location. In any event, the Examiner relies on the combination of Hobbs, Finsterwald, and Small, rather than Hobbs in isolation, for the disputed claim feature. Hence, we are not persuaded by Patent Owner’s arguments, even assuming Hobbs fails to disclose this claim feature. Patent Owner argues that the combination of Hobbs, Finsterwald, and Small fails to disclose or suggest this claim feature because, according to Patent Owner, Hobbs is “limited to . . . a promotion in which the codes accompanying the products are input from the same location as the building where payment was received,” that the Examiner’s prima facie showing of obviousness over the combination of Hobbs with Finsterwald is “muddled,” and that “[t]here is simply no suggestion [in Small] that its promotion involves prizes that by their nature would have to be delivered to a prize winner.” App. Br. 20–23. For at least the reasons previously discussed, we are not persuaded by Patent Owner’s arguments. Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined the cited references because, according to Patent Owner, “over 200 licenses under the ’267 patent have been granted,” “licensing revenue . . . is well in excess of $1,000,000,” and “the promotions for which licenses under the patent were taken included all Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 19 of the steps of the method of claim 22.” App. Br. 27 (citing “Second Declaration of Laurie Cairns,” dated February 12, 2014, “Second Cairns Decl.,” ¶¶ 2–6 and “Third Declaration of Laurie Cairns,” dated March 13, 2015, “Third Cairns Decl.,” ¶¶ 4–6). Patent Owner also asserts that “[w]hen the proponent has established a prima facie case of nexus, ‘the burden of coming forward with evidence in rebuttal shifts to the challenger, as in any civil litigation.’” App. Br. 28 (citing Demaco Corp. v. F. Von Langsdorff Licensing, Ltd., 851 F.2d 1387, 1393 (Fed. Cir 1988)). Even assuming Patent Owner’s contention to be correct that “[w]hen the proponent [i.e., Patent Owner] has established a prima facie case of nexus, ‘the burden of . . . rebuttal shifts to the challenger [i.e., Examiner],” we are not persuaded by Patent Owner’s argument at least because Patent Owner (or the “proponent”) in this matter has failed to persuasively establish “a prima facie case of nexus.” Therefore, in accordance with Patent Owner’s assertion, when the “proponent” fails to establish “a prima facie case of nexus,” the “burden of rebuttal” does not “shift[] to the challenger,” as in the present matter. As an initial matter, Patent Owner’s expert (Laurie Cairns) testifies “I do not have records on all of the . . . licenses . . . and therefore I have not been able to make a detailed review of the technology . . .,” but, nevertheless, proceeds to state a series of “belief[s]” of various aspects of the licenses and technology. Second Cairns Dec. ¶¶ 4–6. Patent Owner’s expert does not explain sufficiently how such “belief[s]” were acquired in view of Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 20 the failure to review the relevant records that, according to Patent Owner’s expert, are not even in possession of Patent Owner’s expert. In addition, Patent Owner’s expert states various “belief[s],” but fails to assert or to provide sufficient evidence to support the implication that the stated “belief[s]” are statements of actual facts. In view of the lack of substantiating records or review of such (missing) records, the lack of testimony or explanation as to how resulting conclusions or “belief[s]” were obtained when records were not available for review, and the lack of testimony, assertions, or evidence to support that such “belief[s]” are statements of actual facts, Patent Owner’s expert’s testimony constitute mere conjecture without evidentiary support and, therefore, has little probative value. Patent Owner’s expert also testifies that there is a “belief” that “all of the sweepstakes promotions for which these licenses were granted involved the sale of a product or service to a purchaser, and that the product or service was accompanied by a unique code.” Second Cairns Decl. ¶ 5. Patent Owner’s expert does not explain sufficiently how this statement of a “belief,” even if assumed to be true, demonstrates a nexus between the alleged licenses and the claimed invention. For example, Patent Owner’s expert merely alleges a personal “belief,” but does not testify that sales of a product that is accompanied by a code constitutes the required nexus between the alleged licenses and the claimed invention. Nor does Patent Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 21 Owner testify that any of the alleged licenses were the result of the stated feature. To the extent that Patent Owner’s expert relies on selling of a product accompanied by a code as the required nexus between the alleged licenses and the claimed invention, we are still not persuaded by Patent Owner’s expert’s testimony at least because Patent Owner’s expert fails to demonstrate sufficiently that any of the alleged licenses were the result of the claimed feature of selling a product that is accompanied by a code. Indeed, as previously discussed, Hobbs discloses the sale of a product with an accompanying code (e.g., “a code printed on a consumer product” – Hobbs 6:6). Given that Hobbs discloses that this feature of selling a product accompanied by a code was known and practiced in the art, Patent Owner does not demonstrate sufficiently that one of skill in the art or any of the alleged licensees would have taken out a license on a product based on a feature that was known and practiced in the art. Patent Owner does not explain persuasively why one of skill in the art (or licensee) would have taken out a license on a claimed method because the claimed method performs the known step of selling a product that is accompanied by a code. On the contrary, given that selling a product with an accompanying code was a known practice, one of skill in the art would have not taken out a license on such a claimed process, the claimed process already being performed by those of skill in the art who have not taken out licenses (e.g., Hobbs). When secondary considerations “stem[] from what was known in Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 22 the prior art so that there can be no nexus. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Patent Owner’s expert further testifies that “it is my recollection that the licenses of all of the sweepstakes promotions provided an electronic address for verifying the contest codes from a location other than the building where payment was received.” Second Cairns Decl. 5. Here, as before, Patent Owner’s expert merely testifies to a potential “recollection” (or “belief”), without the benefit of review of relevant (missing) “records,” as opposed to testimony of actual fact supported by evidence. Therefore, Patent Owner’s expert’s testimony lacks sufficient reliability and has little probative value. Even assuming that Patent Owner’s expert’s recollection that licensees verified codes from a location other than the building where payment was received is accurate (despite the absence of evidence to suggest any accuracy) and assuming that Patent Owner’s expert is implying that this step in the process constitutes the required “nexus” between the licenses and the claimed invention (Patent Owner’s expert does not provide this testimony, however), we are still not persuaded by Patent Owner’s expert’s (presumed) testimony to conclude that any alleged licenses were obtained as a result of a claim feature that pertains to “verifying the contest codes from a location other than the building where payment was received.” As discussed above, Hobbs discloses that an individual purchases a product with an accompanying code at one location (e.g., purchases a cup Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 23 with a code) but that “the prize award is verified” at another location (i.e., a “prize distribution location” – Hobbs 10:8–9). Hence, Hobbs demonstrates that one of skill in the art would have known and would have practiced the step of verifying a code at a location that is different from the location where payment for the accompanying product is made/received. Patent Owner’s expert merely implies (but does not explicitly state) that the alleged licensees took out licenses based on the step of verifying a code from a location other than the building where payment was received but fails to explain sufficiently why any licensee would have taken out (and paid for) a license on a method that performs a step that those of ordinary skill in the art who had not taken out licenses (e.g., Hobbs) were already practicing. Nor would it have made logical sense for one of skill in the art (or licensee) to do so. Thus, it is far more likely that any alleged licensee would have taken out licenses for reasons other than those implied by Patent Owner’s expert (e.g., expediency). When secondary considerations “stem[] from what was known in the prior art so that there can be no nexus. Tokai, 632 F.3d at 1369. In summary, while Patent Owner’s expert implies that specific claim limitations might serve as the required “nexus” between the alleged licenses and the claimed invention, as discussed above, we are not persuaded at least because 1) Patent Owner’s expert’s testimony constitute mere “belief[s]” but are not sufficiently demonstrated or alleged to state actual facts, 2) Patent Owner’s expert admits to failure to review relevant documents (that are allegedly missing) pertaining to the claimed invention and alleged licenses Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 24 thus casting doubt on the accuracy of any of Patent Owner’s expert’s “belief[s]” regarding the reason licensees took out licenses in the first place, and 3) it would be illogical for one of skill in the art (or any licensee) to take out (and pay for) a license based on claimed steps of a method (presumably relied upon by Patent Owner’s expert) that are already performed by those of skill in the art who have not taken out licenses on the (known) claimed steps. When alleged secondary considerations “stem[] from what was known in the prior art . . . there can be no nexus.” Tokai, 632 F.3d at1369. Patent Owner’s expert further testifies to a personal “recollection” of various features “that the claim does not require.” Second Cairns Decl. ¶ 5. We need not consider Patent Owner’s expert’s “recollections” pertaining to these non-claimed features, even assuming Patent Owner’s expert’s “recollections” to be accurate, because non-claimed features cannot constitute a “nexus” between any alleged licenses and the claimed invention, the features not being claimed in the first place. Patent Owner does not provide additional arguments in support of claims 1–20, 23, 25–27, and 29–36 or additional arguments pertaining to Official Notice. The Examiner did not err in rejecting claims 1–20, 22, 23, 25–27, and 30–36 as obvious over Hobbs, Finsterwald, and Small or claim 29 as obvious over Hobbs, Finsterwald, Small, and Official Notice. Appeal 2017-007763 Patent 6,173,267 B1 Reexamination Control 90/012,264 and Reissue Application 13/589,343 25 SUMMARY We affirm the Examiner’s rejections of claims 1–20, 22, 23, 25–27, and 29–36 under 35 U.S.C. § 101 and claims 1–20, 22, 23, 25–27, and 29– 36 under 35 U.S.C. § 103. AFFIRMED PATENT OWNER: DAVID M. QUINLAN, P.C. P.O. BOX 8088 22 MONTEREY DRIVE PRINCETON, NJ 08543 THIRD PARTY REQUESTER: LOEB & LOEB, LLP 321 NORTH CLARK SUITE 2300 CHICAGO, IL 60654-4746 lb Copy with citationCopy as parenthetical citation