Ex Parte Fravel

Board of Patent Appeals and Interferences

Dec 14, 2009

10041959 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte KEVIN D. FRAVEL
____________________
Appeal 2009-005459
Application 10/041,959
Technology Center 3600
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Decided: December 14, 2009
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL
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The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM1.

THE INVENTION
The Appellant’s claimed invention relates to a method for generating,
clipping and redeeming coupons over the Internet. (Spec. p. 4, ll. 1-6).
Independent claim 1, which is deemed to be representative, reads as
follows:
1. A method, comprising the steps of:
providing a database;
registering manufacturers who provide electronic
coupons for their manufactured goods in said database,
wherein each registered manufacturer is provided with a
manufacturer's account;
registering retailers who sell said manufactured
goods in said database, wherein each registered retailer is
provided with a retailer's account;
registering consumers who may buy said
manufactured goods in said database, wherein each
registered consumer is provided with a numbered
consumer account and an account card that contains said
numbered consumer account;
providing a website where said registered
manufacturers post electronic coupons and said
registered consumers select from said electronic coupons,

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Jun. 10, 2008) and the Examiner’s Answer (“Ans.,” mailed Sep. 3,
2008).
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wherein said electronic coupons selected by said
registered consumers are assigned to consumer accounts
for those consumers in said database;
establishing a telecommunications link between a
registered retailer and said database when a registered
consumer purchases a product at a registered retailer and
submits said account card at checkout, wherein data is
exchanged through said link that determines if the
consumer has previously selected an electronic coupon
for said product at said website; and
discounting said product at the registered retailer if
said electronic coupon for said product is present in the
consumer account for that consumer.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fajkowski 5,905,246 May 18, 1999
The Examiner rejected claims 1-3, 5-10, and 12-15 under 35 U.S.C.
§ 102(b) as anticipated by Fajkowski. Additionally, the Examiner rejected
claims 4 and 11 under 35 U.S.C. § 103(a) as unpatentable over Fajkowski.
Rather than repeat the arguments of the Appellant or the Examiner,
we make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by the Appellant have been considered
in this decision. Arguments that the Appellant did not make in the Brief
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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ISSUES
1. Has the Appellant shown that the Examiner erred in finding that
Fajkowski discloses a website where manufacturers post electronic coupons
and consumers select from said electronic coupons, as recited in independent
claims 1 and 6?
2. Has the Appellant shown that the Examiner erred in concluding that
it would have been obvious to one of ordinary skill in the art to charge a
manufacturer for posting electronic coupons on a database, as recited in
claims 4 and 11?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence:
1. Fajkowski is directed to a system for the electronic management
and redemption of electronic coupons received from the Internet. The
background of the invention addresses the problems and inefficiencies with
traditional paper coupons and presents a system for electronically collecting,
carrying and redeeming electronic coupons received from the Internet.
(Abs., col. 2, ll. 26-28, col. 3, ll. 51-53, and col. 6, ll. 35-37).
2. Fajkowski discloses, “[t]he adapter of the present invention avoids
any need for paper by transmitting the coupon directly to the coupon card.”
(col. 6, ll. 27-29).
3. Fajkowski describes an electronic clearinghouse which acts as a
remote database for the use and benefit of retailers, manufacturers and
consumers. (col. 5, ll. 20-22).
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4. The system of Fajkowski allows users to select and download
electronic coupons to a disk drive. (col. 6, ll. 35-39).
5. The electronic coupons of Fajkowski are distributed to users via the
Internet. (col. 6, ll. 20-23).
6. Fajkowski describes that to redeem the electronic coupon, a
consumer inserts the coupon card 1 into a periphery device 100 which
electronically transmits the coupon to a cash a cash register 150. (col. 28, ll.
39-44).
7. Fajkowski discloses that, “[s]oftware may also be readily adapted to
render receiving coupons over the Internet more user friendly by allowing
the coupon card owner to navigate the coupon card Internet service.” (col.
29, ll. 52-55).
8. Additionally, Fajkowski discloses,“[t]he software will also allow
users to browse the coupons available on the internet site and categorize and
store the coupons retrieved from the Internet in coupon card 1 in the same
categories as exist on coupon card 1.” (col. 29, ll. 59-62).
9. Fajkowski describes that manufacturers supply future coupons to
the clearinghouse for consumers. (col. 5, ll. 22-30).

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented 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 to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407.
In KSR, the Supreme Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417.
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In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). If this initial burden is met, the burden of
coming forward with evidence or argument shifts to the Appellants. In re
Oetiker, 977 F.2d at 1445. See also In re Piasecki, 745 F.2d at 1472.

ANALYSIS
ISSUE 1
Claims 1-3, 5-10, and 12-15 rejected under 35 U.S.C. § 102(b) as
anticipated by Fajkowski.
The Appellant generally argues that Fajkowski fails to disclose,
“providing a website where said registered manufacturers post electronic
coupons and said registered consumers select from said electronic coupons,
wherein said electronic coupons selected by said registered consumers are
assigned to consumer accounts for those consumers in said database” as
recited in claim 1. (Br. 5). Specifically, the Appellant argues “. . . it clearly
states in the Fajkowski patent that printed coupons (paper coupons) are
scanned into the coupon card assemblies.” (Br. 5). We are not persuaded by
the Appellant’s argument that Fajkowski’s system only discloses printed
coupons, and we agree with the Examiner’s findings that Fajkowski
discloses electronic coupons. (FF 3, 4, 5, 7, 8).
While Appellant may be correct that Fajkowski’s system
accommodates traditional paper coupons in certain embodiments, Fajkowski
also explicitly discloses other embodiments that use an electronic coupon
which avoids paper by transmitting the electronic coupon directly to a
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coupon card. (FF 2, 4). This electronic coupon is distributed to consumers
through an electronic clearinghouse. (FF 3, 5). In other words, Fajkowski’s
system distributes electronic coupons directly to users allowing them to
redeem the electronic coupons without the need of a traditional paper
coupon. (FF 6). It is also evident that the Fajkowski disclosure is directed
to addressing the problems and inefficiencies with traditional paper coupons
through the use of an electronic coupon system. (FF 1). Thus, in view of
the above, the Appellant’s argument that Fajkowski does not disclose
electronic coupons is not persuasive.
Additionally, the Appellant argues, “[i]n the Fajkowski patent, there is
no disclosure of the use of a website where manufactures [sic] post
electronic coupons.” (Br. 5; see also Br. 6). We are not persuaded by
Appellant’s argument because Fajkowski discloses software that allows a
consumer to navigate a service at an Internet site referred to as an “electronic
clearinghouse” which is accessible to retailers, manufacturers and consumers
via the Internet. (FF 3, 7, 8). Further, Fajkowski discloses that
manufacturers supply their future coupons to the clearinghouse in order to
reach consumers. (FF 9). In disputing the rejection, the Appellant further
misquotes Fajkowski contending that Column 29, lines 45-67 of Fajkowski
relied upon by the Examiner discusses paper coupons by reproducing
Column 23 (Br. 7), whereas the actual portion of Fajkowski relied upon by
the Examiner discusses electronic coupons, and browsing of coupons
available on the Internet site. Therefore, in view of the above, the
Appellant’s argument that Fajkowski does not disclose a website where
manufacturers post electronic coupons is unpersuasive.
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Regarding independent claim 6, the Appellant makes arguments
substantially similar to those discussed supra with respect to claim 1. The
Appellant argues that “. . . since the printed coupons [of Fajkowski] are
scanned into electronic form, the Fajkowski patent makes no disclosure of
customers selecting electronic coupons through an internet website.” (Br.
7). We are not persuaded by the Appellant’s argument and find that the
Appellant has again, not fully appreciated the disclosure of Fajkowski. As
discussed supra, Fajkowski discloses a website where manufacturers post
electronic coupons. Additionally, contrary to the Appellant’s assertion,
Fajkowski discloses software which allows customers to navigate, select,
and download electronic coupons from an electronic clearinghouse. (FF 2-
8). Thus, the Appellant’s argument that Fajkowski fails to disclose
“customers selecting electronic coupons through an internet website” is not
persuasive.

Claims 2-3, 5, 7-10, and 12-15
The Appellant does not separately argue claims 2-3, 5, 7-10, and 12-
15, which depend from claims 1 and 6 respectively, and so, has not sustained
its burden of showing that the Examiner erred in rejecting claims 2-3, 5, 7-
10, and 12-15 as anticipated by Fajkowski for the same reasons we found as
to claims 1 and 6 discussed supra.

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ISSUE 2
Claims 4 and 11 rejected under 35 U.S.C. § 103(a) as unpatentable over
Fajkowski.
Appellant argues that Fajkowski does not disclose charging a
manufacturer for posting electronic coupons on a database, “. . . because in
the Fajkowski system, manufactures do not post electronic coupons. All
coupons are standard printed coupons that are later scanned into a computer,
as has previously been explained.” (Br. 8). However, as discussed supra
with respect to claims 1 and 6, we are not persuaded by Appellant’s
arguments that Fajkowski does not disclose electronic coupons or a website
for posting such coupons. The Appellant has made no arguments as to the
specific limitations of claims 4 and 11, which depend from claims 1 and 6
respectively. Therefore, the Appellant has not sustained its burden of
showing that the Examiner erred in rejecting claims 4 and 11 under 35
U.S.C. § 103(a) as unpatentable over Fajkowski for the same reasons we
found as to claims 1 and 6 discussed supra.

CONCLUSIONS
1. The Appellant has not shown that the Examiner erred in finding
that Fajkowski discloses a website where manufacturers post electronic
coupons and consumers select from the electronic coupons, as recited in
claims 1 and 6.
2. The Appellant has not shown that the Examiner erred in
concluding that it would have been obvious to one of ordinary skill in the art
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to charge a manufacturer for posting electronic coupons on a database, as
recited in claims 4 and 11.

DECISION
1. The decision of the Examiner to reject claims 1-3, 5-10, and 12-
15 under 35 U.S.C. § 102(b) as anticipated by Fajkowski is AFFIRMED.
2. The decision of the Examiner to reject claims 4 and 11 under 35
U.S.C. § 103(a) as being obvious over Fajkowski is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ack

cc:

Eric Lamorte
LAMORTE & ASSOCIATES
P.O. Box 434
Yardley Pa 19067