Ex Parte Fitzpatrick et al

Board of Patent Appeals and Interferences

Jun 26, 2012

09840648 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN FITZPATRICK, ELLEN COX,
MADDY SHEPROW, PEGGY BARTON,
FRANK MUNSCH, MARK HANES,
JENNIE HEI, and ETHAN BLUMENSTRAUCH
____________

Appeal 2010-006342
Application 09/840,648
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006342
Application 09/840,648

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-7, 15, 24, 39, 52-53, 55, and 60-61 which are all
the claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to motivation and
recognition programs (Spec. 1:23-24). Claim 1, reproduced with the
numbering in brackets added below, is representative of the subject matter
on appeal.

Claim 1: A method for allowing a first customer to create an
individual, modified motivation or recognition first program having
first participants, said first program permitting the first participants to
access the first program via first participant processors and to
earn awards through the first program on the basis of the first
participants' performance, said first program of the first customer
operating according to preferences selected by the first customer,
said method for allowing a second customer to create an
individual, modified motivation or recognition second program having
second participants, said second program permitting the
second participants to access the second program via second
participant processors and to earn awards through the second program
on the basis of the second participants' performance, said
second program of the second customer operating according to
preferences selected by the second customer,
said method comprising the steps of:
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allowing the first customer to electronically access via a first
customer processor a browsable catalog of predefined programs stored
in a storage device connected to a program
processor;
allowing the first customer to electronically select via the first
customer processor a first one of the predefined programs stored in
the storage device;
allowing the first customer to electronically modify via the first
customer processor at least one component of the selected first
predefined program;
allowing the first customer to electronically store via the first
customer processor the modified first program in the storage device
for access by the first customer;
said method further comprising the steps of:
allowing the second customer to electronically access via a
second customer processor the browsable catalog of predefined
programs stored in the storage device connected to the
program processor;
allowing the second customer to electronically select via the
second customer processor a second one of the predefined programs
stored in the storage device;
allowing the second customer to electronically modify via the
second customer processor at least one component of the selected
second predefined program;
allowing the second customer to electronically store via the
second customer processor the modified second program in the
storage device for access by the second customer;
said method further comprising the steps of:
[1] allowing the first customer to operate the modified first
program via the program processor, and allowing the second customer
to operate the modified second program via the program processor,
wherein the first and second participant processors and the first and
second customer processors are remote from said program processor
and remote from the storage device connected to the program
processor; and
providing the first customer's participants with access via the
first participant processors to the modified first program stored in the
storage device, and providing the second customer's
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participants with access via the second participant processors to the
modified second program stored in the storage device, said modified first
and second programs executed by the program processor.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Eggleston US 6,061,660 May 9, 2000
Hoffman and Rogelberg, "A guide to team incentive systems", Team
Performance Management, v4n1, 1998, pp. 23.

Symons and Jacobs, "A Total Quality Management-Based Incentive
System Supporting Total Quality Management Implementation",
Production and Operations Management, Vol. 4, No.3, Summer 1995,
pp. 228-241.

The following rejections are before us for review:
1. Claims 1, 3-7, 15, 24, 52-53, 55, 60, and 61 are rejected under
35 U.S.C. § 102(e) as anticipated by Eggleston.
2. Claims 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Eggleston and Rogelberg.
3. Claims 39 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Eggleston, Symons, and Jacobs.

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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1 Additional facts may appear in
the Analysis section below.
FF1. Eggleston at the Abstract, col. 5:46-55, col. 8:13-20, col. 10:3-9, col.
10:28-42, col. 11:20-35, col. 11:66- 12:11, col. 12:21-30, col. 12:37-51, and
col. 14:6-65 does not specifically disclose that a first customer can operate a
modified first motivation program via a program processor which is remote
from the first and second customer processors and also that a second
customer can operate a second motivation program via the program
processor.

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
Eggelston fails to disclose portions of claim limitation [1] directed to
requiring that a first customer can operate a modified first motivation
program via a program processor which is remote from the first and second
customer processors and also that a second customer can operate a second
motivation program via the program processor (Br. 11-17, Reply Br. 4).
In contrast, the Examiner has determined that Eggleston discloses
these argued limitations from claim limitation [1] at the col. 10:28-42, col.
12:38-48 and col. 14:6-65 (Ans. 6). The Appellant also argues that the
argued limitations of claim limitation [1] are found at in the Abstract, col.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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8:13-20, col. 5:46-55, col. 10:3-9, col. 11:66 12:11, col. 12:21-30 and col.
12:37-51 (Ans. 23-26).
We agree with the Appellants. Eggleston at the portions cited by the
Examiner fails to specifically disclose the cited argued elements of claim
limitation [1] and the rejection of record is therefore not sustained.
Eggleston at col. 14:50-54 has been cited by the Examiner as
disclosing the argued claim limitation but this portion of Eggelston discloses
instead that the incentive program is instead downloaded to the web site of
the sponsor and it is not specifically disclosed that the first modified
program is operated as claimed on the program processor. The Abstract
does disclose that incentive programs are provided but it is not specifically
disclosed that they are operated as claimed on the program processor. The
other cited citations to Eggleston made by the Examiner do disclose that
incentive programs are provided and in one instance even managed by the
host (Col. 10:3-9) but fail to disclose that the first modified program is
operated as claimed on the program processor rather than the sponsors web
site beyond probabilities and possibilities. “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). For these reasons the rejection of claim 1 and its
dependent claims is not sustained.
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Independent claims 24, 55, and 61 contain a similar claim limitation
and the rejection of these claims and their dependent claim is not sustained
for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 1-7, 15, 24, 39, 52-53, 55, and 60-
61 is reversed.

REVERSED

MP