Ex Parte Foth et al

Patent Trial and Appeal Board

Feb 13, 2013

11503444 (P.T.A.B. Feb. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS J. FOTH,
CHARLES R. MALANDRA, JR.,
THOMAS H. ROSENKRANZ, and
FREDERICK W. RYAN, JR.
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Appeal 2011-000731
Application 11/503,444
Technology Center 3600
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000731
Application 11/503,444

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-12. We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.

BACKGROUND
Appellants’ invention is directed to a method for handling a rental
article at an end of a rental steam process (Spec., para. [0001]).
Claim 1 is illustrative:
1. A computer-implemented method of offering a rental article
for sale comprising:
determining, on a computer, a number of times the rental
article has been rented; and
establishing, on the computer, a scaled purchase price for
selling the rental article based at least partially upon the number
of times the rental article has been rented.

Appellants appeal the following rejections:
Claims 1-2, 4, and 8-10 rejected under 35 U.S.C. § 103(a) as
unpatentable over Krause (US 2006/0212304 A1; pub. Sep. 21, 2006) and
Agarwal (US 7,447,646 B1; iss. Nov. 4, 2008).
Claims 3, 5-7, and 11-12 rejected under 35 U.S.C. § 103(a) as
unpatentable over Krause, Agarwal, and Ling (US 2002/0002538 A1; pub.
Jan. 3, 2002).

Appeal 2011-000731
Application 11/503,444

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ANALYSIS
Claims 1-2, 4, and 8-10 rejected under 35 U.S.C. § 103(a) as unpatentable
over Krause and Agarwal.
We are persuaded of error by Appellants’ argument that the
combination of Krause and Agarwal fails to teach or suggest the step of
“establishing, on the computer, a scaled purchase price for selling the rental
article based at least partially upon the number of times the rental article has
been rented.” Br. 5. Krause discloses a counter, but describes that the
counter is used to indicate whether a return envelope is being sent to a
customer or whether the rental article is being returned to the renter (paras.
[0033] – [0034]). While the counter may increase in increments of one, the
increases are not indicative of “the number of times the rental article has
been rented,” as recited in independent claim 1. Agarwal does not cure this
deficiency nor has the Examiner shown how Agarwal’s dynamic product
pricing system teaches or suggests scaling the purchase price for selling the
rental article based at least partially upon the number of times the rental
article has been rented, as presently claimed.
While we acknowledge that Agarwal’s dynamic product pricing
system automatically adjusts prices for products (i.e., articles) that are sold
or rented based upon triggers (e.g., number of product units sold, a pricing
history of the product, a sales ranking of the product, an amount of inventory
left, the release of a new edition or version of the product, etc.) (col. 1, l. 59
– col. 2, l. 24), Agarwal does not teach or suggest that these triggers would
adjust a rental product’s price from a rental to an outright sale, much less do
so based at least partially on the number of times the rental article has been
rented. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on
Appeal 2011-000731
Application 11/503,444

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obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”).
Additionally, we agree with Appellants that the Examiner erred by
asserting “that the clause ‘for selling the rental article based at least partially
upon the number of times the rental article has been rented’ can be ignored
as a statement of function.” Br. 5; referring to Ans. 9-10. Claim 1 is a
method claim, and the functions there are considered part of the method and
must be given weight.
Accordingly, we cannot sustain the rejection of independent claim 1,
and claims 2, 4, and 8-10 from which they depend.

Claims 3, 5-7, and 11-12 rejected under 35 U.S.C. § 103(a) as unpatentable
over Krause, Agarwal, and Ling.
This rejection is directed to claims which depend upon independent
claim 1, whose rejection we have reversed above. For the same reason, we
will not sustain the rejection of claims 3, 5-7, and 11-12 over the
combination of Krause, Agarwal, and Ling. Cf. In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.”).

DECISION
We REVERSE the decision of the Examiner.

REVERSED

Appeal 2011-000731
Application 11/503,444

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hh