Ex Parte Duchow

Board of Patent Appeals and Interferences

Mar 30, 2006

09682876 (B.P.A.I. Mar. 30, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK DUCHOW
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Appeal No. 2006-0597
Application No. 09/682,876
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HEARD: March 23, 2006
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Before WARREN, WALTZ, and FRANKLIN, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 76 through 93, which are all of the
claims pending in this application. We have jurisdiction pursuant
to 35 U.S.C. § 134.
According to appellant, the invention is directed to a method
of distributing incentive vouchers over the Internet to cause
customers to come into participating dealers or “resellers” (Brief,
page 2). Further details of the invention may be gleaned from the
Appeal No. 2006-0597
Application No. 09/682,876
Page 2
preferred embodiment illustrated in Figure 2 and independent claim
76, a copy of which may be found in Appendix A of appellant’s
Brief.
The examiner has relied upon the following references as
evidence of obviousness:
Scroggie et al. (Scroggie) 6,185,541 Feb. 06, 2001
Stewart et al. (Stewart) 6,259,405 Jul. 10, 2001
(filed Nov. 3, 1999)
The claims on appeal stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Stewart in view of Scroggie (Answer, page 3).
This is the only ground of rejection before this merits panel for
review on appeal. The examiner has objected to the amendment dated
August 25, 2004, under 35 U.S.C. § 132 because it introduces “new
matter” into the disclosure (Answer, page 3). However, although
this “objection” is listed under “(9) Grounds of Rejection,” the
examiner has not recited any rejection of any pending claims under
the statutory basis of 35 U.S.C. § 112, first paragraph, for lack
of written description, i.e., as based on a specification which
contains “new matter” (id.). See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Similarly,
for some unexplained reason, the examiner responds to appellant’s
arguments concerning an objection to an amendment that allegedly
introduced “new matter” into ¶[0045] of the specification (Answer,
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Application No. 09/682,876
Page 3
pages 23-24), although no objection or rejection on this basis has
been made in the Answer (see the Answer, pages 1-12). We note that
the examiner has indicated that “this rejection was made in the May
25, 2004 response to the April 5, 2004 amendment” but does not
repeat any such rejection in the Answer (Answer, page 23).
Rejections not repeated by the examiner in the Answer are
considered as dropped or withdrawn. See Paperless Accounting v.
Bay Area Rapid Transit Sys., 804 F.2d 659, 663, 231 USPQ 649, 652
(Fed. Cir. 1986). We also note that appellant expresses his
uncertainty about “this ground of rejection” (Reply Brief, page 1).
These actions by the examiner in the Answer are consistent
with the final Office action dated Nov. 1, 2004, where the examiner
“objected to” the amendment dated Aug. 25, 2004, because it
introduced “new matter” into the disclosure but no ground of
rejection was made (final Office action, page 2). Similarly to the
Answer, the examiner in the final Office action only discusses the
“new matter rejection” involving ¶[0045] of the specification in
the “Response to Arguments” (page 13) section but fails to set
forth or repeat any rejection.
“A rejection of claims is reviewable by the Board of Patent
Appeals and Interferences, whereas an objection and requirement to
delete new matter is subject to supervisory review by petition
Appeal No. 2006-0597
Application No. 09/682,876
Page 4
under 37 CFR 1.181.” Manual of Patent Examining Procedure (MPEP),
§ 2163.06, II, 8 ed., Rev. 3, August 2005, p. 2100-190. Thus itth
is our opinion that there is no accompanying rejection with the
objections stated in the Answer and thus these objections are not
subject to review by this merits panel of the Board. It is our
further opinion that appellant has recourse to petition for
supervisory review of the examiner’s action (i.e., objections)
under 37 CFR § 1.181.
We reverse the examiner’s rejection on appeal essentially for
the reasons stated in appellant’s Brief, Reply Brief, and those
reasons set forth below.
OPINION
With regard to the rejection of claim 76, the examiner finds
that Stewart discloses a method of distributing a voucher
(discount/offer) to a prospective customer who visits a website on
the Internet, which method comprises at least six steps (Answer,
pages 3-4). The examiner further finds that Stewart discloses a
user entering the desired producer, product selection information,
and the user’s personal ID data and location data (such as an
address or geographic location)(Answer, page 4). The examiner
notes that in the United States the address is required to contain
a postal code (zip code)(id.). The examiner further notes that
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Application No. 09/682,876
Page 5
Stewart teaches many methods for determining the user’s location
(Answer, pages 4-5). The examiner applies Scroggie for the
disclosure of a similar method to that of Stewart of distributing a
voucher in which the user is required to enter his or her zip code,
since many features of the system are location-dependent (Answer,
page 5). From these findings, the examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time
of appellant’s invention to use a postal code or zip code if the
general location of the user was desired information, as taught by
Scroggie, in order to provide a “quick method of targeting general
area advertisements or promotions” in the method of Stewart (id.).
The initial burden of establishing a prima facie case of
obviousness rests with the examiner. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
finds that Stewart discloses a method which generates a voucher
redeemable only at a reseller selected by the system (Answer,
page 4, citing col. 27, ll. 26-37). However, as correctly argued
by appellant (Brief, pages 19-20), the generation of a voucher by
the method of Stewart is an unsolicited offer by a seller (see col.
26, l. 42-col. 27, l. 37). The examiner has failed to establish
how this voucher system of Stewart meets the limitation of claim 76
on appeal, where the website generates a voucher having a time
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Application No. 09/682,876
Page 6
limit for redemption and having a producer’s purchase incentive on
the purchase of the “only one selected product at the only one
selected reseller.” In other words, the voucher system taught by
Stewart offers unsolicited offers to the user while the website of
the claimed method ties in the voucher to the originally selected
product desired by the user.
The examiner finds that, in the method of Stewart, the system
“will then select one reseller (local hotel) which can provide the
desired product or service based on the user’s location and/or
demographic information” (Answer, page 4). As also correctly
argued by appellant (Brief, page 24), the customer or user in
Stewart directly selects the reseller through preferences or a
mouse click while in the claimed invention the website selects the
reseller from a plurality of resellers based on the selection of
the product and the postal address code. See Stewart, Figure 9A;
col. 13, ll. 22-25; and col. 22, ll. 37-56).
We note that the examiner states that “Official Notice could
be taken” that it is “old and well known” to receive the producer
and product selections from the customer before requesting the
customer’s personal contact information and postal address code
(Answer, page 14, italics added). Despite the statement that
official notice “could be taken,” the examiner lists four
Appeal No. 2006-0597
Application No. 09/682,876
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references as support for this “Official Notice” (id.). However,
since these references are not listed in the prior art of record or
the statement of the rejection (Answer, page 2, ¶(8), and page 3,
¶(9)(b)), we will not consider these references as part of the
examiner’s evidence of obviousness. See In re Hoch, 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
Finally, although appellant admits that zip codes would
inherently have been part of the mailing address required by
Stewart (Reply Brief, page 10), the examiner has not established
why one of ordinary skill in this art would have based the
selection of a reseller on the postal address code to determine the
closest marketing territory when the system of Stewart depends only
on “mobile” users (Brief, page 23; Reply Brief, page 10). The
examiner’s citations from Stewart (Answer, page 4) do not establish
any correlation of a reseller with the postal address code and a
marketing territory.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not established a
prima facie case of obviousness in view of the reference evidence.
Accordingly, we need not consider the Declaration under 37 CFR
§ 1.132 filed by Mark R. Duchow (Reply Brief, pages 8-9). See In
re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
Appeal No. 2006-0597
Application No. 09/682,876
Page 8
Therefore we do not sustain the examiner’s rejection of the claims
on appeal under § 103(a) over Stewart in view of Scroggie.
The decision of the examiner is reversed.
REVERSED

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )
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