Ex Parte Dworkin

Board of Patent Appeals and Interferences

Feb 28, 2006

09589266 (B.P.A.I. Feb. 28, 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The opinion in support of the decision being entered today was not written for publication and is not binding
precedent of the Board.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
____________

Ex parte BARRY DWORKIN

____________

Appeal No. 2005-1499
Application No. 09/589,266
____________

ON BRIEF
____________

Before FRANKFORT, McQUADE, and NAPPI, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.

DECISION ON APPEAL
Barry Dworkin appeals from the final rejection (mailed November 26, 2003) of
claims 4-13, all of the claims pending in the application.
THE INVENTION
The invention relates to business and greeting cards bearing web-site
promotional indicia, and to a method of using such cards to receive on-line vendor
discounts. Representative claims 4, 7 and 9 read as follows:1

1 The preamble of claim 11, “[t]he multi-purpose card of claim 10,” lacks a proper
antecedent basis as claim 10 is drawn to “[t]he method of claim 9.” This informality
should be corrected in the event of further prosecution before the examiner.
Appeal No. 2005-1499
Application No. 09/589,266

2
4. A multi-purpose card, comprising:
a business card having issuing business or individual identifying indica thereon;
multiple participating vendor web-site addresses printed on the business card;
vendor promotion discount indicia printed on the business card to be redeemed
at the respective web-site addresses; and
a promotion code printed on the business card, whereby a holder of the business
card is able to access a participating vendor web-site address printed on the business
card, enter the promotion code at the web-site and receive the vendor promotion
discount.

7. A multi-purpose card, comprising:
a greeting card having artwork and message indicia printed
thereon;
multiple participating vendor web-site addresses printed on the greeting card;
vendor promotion discount indicia printed on the greeting card to be redeemed at
the respective web-site addresses; and
a promotion code printed on the greeting card, whereby a holder of the greeting
card is able to access the at least one web-site address of the at least one participating
vendor, enter the promotion code at the web-site and receive the vendor promotion
discount.

9. A method for encouraging retention of business or
greeting cards and simultaneously increasing visits to participating web-sites, the
method comprising the steps of:
providing a multi-purpose card in the form of business or a greeting card;
printing a list of participating vendor web-site addresses and associated
promotional discount indicia on the business or greeting card;
printing a promotional code on the business of greeting card;
using a computer network to access a participating vendor web-site using the
vendor web-site address printed on the business or greeting card; and
entering the promotional code on the business or greeting card at the web-site to
obtain the promotional discount.

THE PRIOR ART

The references relied on by the examiner as evidence of obviousness are:

King 5,922,427 Jul. 13, 1999

Rodriguez et al. 2003/0050961 Mar. 13, 2003
Appeal No. 2005-1499
Application No. 09/589,266

3
(Rodriguez)

Rubstein et al. 2003/0061566 Mar. 27, 2003
(Rubstein)

THE REJECTIONS

Claims 4-8 stand rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Claims 4-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Rodriguez in view of King and Rubstein.
Attention is directed to the brief (filed June 17, 2004)
and answer (mailed September 9, 2004) for the respective positions of the appellant
and examiner regarding the merits of these rejections.

DISCUSSION
I. The 35 U.S.C. § 101 rejection of claims 4-8
The examiner considers claims 4-8 to recite non-statutory subject matter
because “[t]he claimed invention is directed to nonfunctional descriptive matter”
(answer, page 3). By way of further explanation, the examiner adds that “[c]laims 4-8 . .
. describe printed matter that is not functionally related to a computing process”
(answer, page 5) and that “the subject card invention defined by claims 4-8 . . . merely
Appeal No. 2005-1499
Application No. 09/589,266

4
records information, and does not produce a ‘useful, concrete and tangible result.’”
(answer, page 5).
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” Congress intended statutory subject matter under § 101 to
include anything under the sun that is made by man. Diamond v. Chakrabarty, 447 U.S.
303, 309 (1980). Nonetheless, § 101 has limits and does not embrace every discovery
within its statutory terms. Excluded from patent protection are laws of nature, physical
phenomena and abstract ideas. Diamond v. Diehr, 450 U.S. 175, 185 (1981). In
applying these principles to determine the eligibility of a claim under § 101, the claim
must be considered as a whole. Id., 450 U.S. at 188.
Appealed claims 4-8, considered as a whole, recite a multi-purpose card, not
nonfunctional descriptive matter, printed matter or recorded information as alleged by
the examiner. The claimed multi-purpose card is an article of manufacture which, on its
face, falls within the “manufacture” category of § 101 and avoids the laws of nature,
physical phenomena and abstract ideas exceptions. Hence, the examiner’s position
that claims 4-8 are drawn to non-statutory subject matter is unpersuasive.
Accordingly, we shall not sustain the standing 35 U.S.C. § 101 rejection of
claims 4-8.
Appeal No. 2005-1499
Application No. 09/589,266

5

II. The 35 U.S.C. § 103(a) rejection of claims 4-13
Rodriguez, the examiner’s primary reference, discloses a business card having
the usual textual information which identifies a principal, address, phone, etc. (see
paragraph 0004). The card also includes steganographically encoded multi-bit binary
data which enables a computer to initiate a link to the principal’s internet site whereby
the recipient of the card can access the principal’s schedule and other information that
may change over time (see paragraph 0006). This other information can comprise
promotional offers or advertisements relating to the principal’s business or other
businesses to whom the principal has rented screen space (see paragraph 0019). The
encoded data on the card may embody authentication data necessary to gain access to
an otherwise restricted site (see paragraph 0020). Rodriguez also teaches that the
foregoing concepts may be applied to other printed documents such as calling cards
(see paragraph 0022).
The examiner, apparently according patentable weight to the printed matter
recitations in the appealed claims, concedes (see page 4 in the answer) that Rodriguez
lacks response to the limitations in independent claims 4 and 7 requiring multiple
participating vendor web-site addresses to be printed on the card, the limitation in
independent claim 9 requiring a list of participating vendor web-site addresses to be
printed on the card, and the limitations in claims 4, 7 and 9 requiring a promotion code
Appeal No. 2005-1499
Application No. 09/589,266

6
to be printed on the card. To account for these shortcomings in Rodriguez, the
examiner turns to King and Rubstein.
King discloses a packet for removing particulate matter such as lint, dandruff and
hair from clothing. The packet comprises a pad 34 of adhesive backed leaves 32
mounted within a protective cardboard cover 12. In use, one opens the cover, peels an
adhesive leaf from the pad and applies it to clothing to take hold of and remove
unwanted matter. King teaches that the protective cover may bear advertising
messages to serve as a promotional tool and that the packet can be distributed as a
complimentary token by hotels and other businesses (see, for example, column 2, lines
21, 22 and 48-60).
Rubstein discloses a process for dynamically integrating
two or more digital files for on-line electronic delivery. The following passage from the
reference fairly summarizes the teachings focused on by the examiner:
[0014] The present invention is directed to a process for
dynamically integrating two or more digital files (that may be
of different types, including but not limited to executable and
non-executable files). In one embodiment of the present
invention, an advertisement is dynamically integrated with a
digital file. More specifically, an animated advertisement file
is dynamically integrated with a self-contained executable file
for an animated greeting card. The animation file for the
advertisement may include graphics, video, audio and/or
provisions for user interactivity. In another embodiment, a
redeemable gift is dynamically attached to the digital file.

[0015] In another aspect of the present invention, a control
feature is provided to control the usage of the distributed
Appeal No. 2005-1499
Application No. 09/589,266

7
digital file. In one embodiment, a unique code is generated
and assigned to the distributed digital file. The unique code
prevents the user from, for example, executing the digital file
more than a predefined number of times. In a further aspect
of the present invention, the control feature may be used for
awarding prizes in connection with the distributed digital file.

In applying Rodriguez, King and Rubstein to reject

independent claims 4, 7 and 9, the examiner submits that:

6. Rodriguez et al. does not teach multiple vendor addresses
printed on the card. King teaches multiple advertisements
printed on the card (col. 2 lines 50-52). Because King also
suggests the use of said card by a hotel, it would have been
obvious to one of ordinary skill in the art, at the time of the
invention, to advertise a host of hotel-related businesses on
the card, such as shops in the hotel building and taxi
companies, which reads on multiple participating vendor
addresses. Further, because such cooperative advertising
would promote all the participating businesses, it would have
been obvious to one of ordinary skill in the art, at the time of
the invention, to add the teachings of King to those of
Rodriguez et al.

7. Rodriguez et al. does not teach a promotion code printed
on the card. Rubstein et al. teaches a game code
(promotion code) printed on the card (para. [0055]).
Because Rubstein et al. teaches that this provides security
(the control feature), it would have been obvious to one of
ordinary skill in the art, at the time of the invention, to add
the teachings of Rubstein et al. to those of Rodriguez et al
[answer, page 4].

In short, the only suggestion for this fanciful combination of the widely disparate
teachings of Rodriguez, King and Rubstein stems from hindsight knowledge
impermissibly derived from the appellant’s disclosure. The rejection formulated by the
Appeal No. 2005-1499
Application No. 09/589,266

8
examiner is further unsound as it rests on an erroneous finding (see pages 4 and 6 in
the answer) that Rodriguez meets the limitations in claims 4, 7 and 9 requiring
promotion discount indicia to be printed on the card. Although the Rodriguez reference
discusses promotional offers which arguably encompass discounts, these offers appear
on the principal’s web-site, not on the business or calling card itself.
Thus, as applied by the examiner, the combined teachings of Rodriguez, King
and Rubstein do not justify a conclusion that the differences between the subject matter
recited in claims 4, 7 and 9 and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
ordinary skill in the art. Consequently, we shall not sustain the standing 35 U.S.C. §
103(a) rejection of
Appeal No. 2005-1499
Application No. 09/589,266

9
independent claims 4, 7 and 9, and dependent claims 5, 6, 8 and 10-13, as being
unpatentable over Rodriguez in view of King and Rubstein.

III. Remand to the examiner
This application is remanded to the examiner under the authority of 37 CFR §
41.50(a)(1) and MPEP 1211 for consideration of the following matter.
As discussed above, claims 4-8 recite a multi-purpose card which is defined by
the matter printed thereon.
It is well settled that differences between an invention and the prior art cannot be
ignored merely because those differences reside in the content of printed matter. In re
Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031, 1034; In re Gulack, 703 F.2d
1381, 1385, 217 USPQ 401, 403 (Fed. Cir. 1983); In re Miller, 418
F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969). Where the printed
matter is not functionally related to the substrate, however, the
printed matter will not distinguish the invention from the prior
art in terms of patentability. Although the printed matter must
be considered, in that situation it may not be entitled to
patentable weight. What is required is the existence of
differences between the claims and the prior art sufficient to
establish patentability. Thus, the bare presence or absence of a
specific functional relationship, without further analysis, is
Appeal No. 2005-1499
Application No. 09/589,266

10
not dispositive of obviousness. Rather, the critical question is
whether there exists any new and unobvious functional
relationship between the printed matter and the substrate. In re
Gulack, supra, 703 F.2d at 1385, 217 USPQ at 404. Also see In re
Miller, supra, 418 F.2d at 1395-96, 164 USPQ at 48-49.
On remand, the examiner should reconsider the patentability
of claims 4-8 over the prior art in light of these principles,
and enter an appropriate rejection if such is deemed to be
warranted.

Appeal No. 2005-1499
Application No. 09/589,266

11
SUMMARY
The decision of the examiner to reject claims 4-13 is
reversed, and the application is remanded to the examiner for
further consideration.
REVERSED AND REMANDED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT NAPPI )
Administrative Patent Judge )

AARON T. BORROWMAN. ESQ. KELLY BAUERSFELD LOA AVENUE WRY & KLELLEY .LLP 6320 CANOGSUITE 1650 OODLAND HILLS, CA 91367 W
JPM/jrg
Comment [jvn1]: Type or Paste
Address