Ex Parte Gordon

Board of Patent Appeals and Interferences

Jun 23, 2008

10064264 (B.P.A.I. Jun. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON A. GORDON
____________

Appeal 2008-1489
Application 10/064,264
Technology Center 3600
____________

Decided: June 23, 2008
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jason A. Gordon (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-13 and 16-20. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

Appeal 2008-1489
Application 10/064,264

SUMMARY OF DECISION
We AFFIRM and ENTER A NEW GROUNDS OF REJECTION
UNDER 37 C.F.R. § 41.50(b).1

THE INVENTION
The claimed invention is directed to postal systems and methods for
changing rate schedules. (Spec. ¶¶ 0015-0017.)
Claims 1, 12, and 16, reproduced below, are representative of the
subject matter on appeal.
1. A mailing machine comprising:
a processor;
a first memory portion operatively connected to the processor for
storing a primary rate database;
a second memory portion operatively connected to the processor for
concurrently storing temporary rate data;
a third memory portion operatively connected to the processor for
storing rating instruction data; and
wherein the processor determines a rate applicability determination
using the rating instruction data, the primary rate database and the
temporary rate data.

12. A method for dynamically changing rating information for at least
one customer comprising:
receiving customer usage data for a plurality of customers;
receiving customer data for a plurality of customers;
obtaining logistics data for a mailing logistics system;

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Jan. 16, 2007), Reply Brief (“Reply Br.,” filed July 6, 2007), and the
Examiner’s Answer (“Ans.,” mailed May 7, 2007).
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determining desired volume changes by class;
targeting at least one customer having a mailing machine for a
discount in the class;
creating a temporary rate database; and
sending the temporary rate database to the mailing machine.

16. A method for determining targeted incentives using a carrier
information system having feedback comprising:
obtaining customer usage and customer data;
determining whether offering an incentive is desired;
determining whether a customer is eligible for the incentive;
offering the customer the incentive;
obtaining incentive related usage data; and
analyzing the incentive related usage data to determine effectivity,
determining whether to modify the incentive.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Sansone US 5,072,401 Dec. 10, 1991
Barns-Slavin US 5,995,950 Nov. 30, 1999
Huxter US 2002/0107820 A1 Aug. 8, 2002

THE REJECTIONS
The following rejections are before us for review:
Claim 19 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
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Claims 1, 10, and 14-19 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Barns-Slavin.2
Claims 2-5, 8-9, and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barns-Slavin.
Claims 12, 13 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barns-Slavin and Sansone.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barns-Slavin and Huxter.

ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claim 19 as being indefinite. This issue turns on whether
the phrase “the incentive is a penalty” particularly points out and distinctly
claims the subject matter that Appellant regards as the invention.
The second issue is whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 10, and 16-19 being anticipated. This
issue turns on whether Barns-Slavin describes a second memory operatively
connected to a processor for concurrently storing temporary rate data.
The third issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 2-5, 8-9, and 11 as being obvious. This issue turns
on whether the Appellant has shown that the Examiner erred in rejecting
claims 1 and 10 as being anticipated.

2 We note claims 14 and 15 were canceled in the Amendment of Jun. 9,
2006. As such, claims 14 and 15 are not before us for review.
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The fourth issue is whether the Appellant has shown that the
Examiner erred in rejecting claims 12, 13, and 20 as being obvious. This
issue turns on whether the combination of Barns-Slavin and Sansone
describe receiving customer usage data for a plurality of customers and
creating a temporary rate database.
The fifth issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 6 and 7 as being obvious. This issue turns on
whether the Appellant has shown that the Examiner erred in rejecting claim
1 as being anticipated.

FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. Barns-Slavin describes, in carrier management systems for shipping
(mailing) parcels, discounts for particular classes of service may be
allowed only after a certain cumulative dollar amount, number of
pieces, or weight has been shipped. (Barns-Slavin, col. 2, ll. 7-10.)
2. Barns-Slavin describes a memory 22 includes both single piece rates
and group discount rates and this memory is replaceable or writeable
thereto. (Barns-Slavin, col. 3. ll. 38-49.) Particularly, Barns-Slavin
describes this memory containing data directed to single piece rates,
group discount rates, and the predetermined requirements for a group
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to receive a group discount, and such data may be updated from time
to time in a conventional manner. (Id.)
3. Barns-Slavin describes this memory is updated from time to time by
downloading data to the memory in a conventional manner. (See
Barns-Slavin, col. 3. ll. 45-49.)
4. Barns-Slavin describes the operator has to initiate the group discount
rate and if the operator wishes not to use the group discount rate after
it has been initiated, the operator must abort. (Barns-Slavin, col. 4, ll.
19-25.)

PRINCIPLES OF LAW
The test for compliance with § 112, second paragraph, is whether the
claims set out and circumscribe a particular area with a reasonable degree of
precision and particularity when read in light of the application disclosure as
they would be interpreted by one of ordinary skill in the art. In re Moore,
439 F.2d 1232, 1235 (CCPA 1971).
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). “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). However, “[t]he law of
anticipation does not require that the reference ‘teach’ what the subject
patent teaches. Assuming that a reference is properly ‘prior art,’ it is only
necessary that the claims under attack, as construed by the court, ‘read on’
something disclosed in the reference, i.e., all limitations of the claim are
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found in the reference, or ‘fully met’ by it.” Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). Anticipation is determined by
first construing the claims and then comparing the properly construed claims
to the prior art. In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1346
(Fed. Cir. 2002).
“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., 127 S.Ct. 1727,
1734 (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. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations, such as commercial
success, long felt but unsolved needs, failure of others, etc., “might be
utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 18.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S. at 12
(emphasis added)), and reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is
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likely to be obvious when it does no more than yield predictable results.” Id.
The 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 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
With this as background, we analyze the specific rejections made by
the Examiner of the claims on appeal.

ANALYSIS
The Appellant argues claim 19 that has been rejected under 35 U.S.C.
§ 112, second paragraph, separately. The Appellant argues claims 1 and 10
as a group. As such, we select claim 1 as the representative claim of this
group. Accordingly, claim 10 stands or falls with claim 1. The Appellant
argues claims 16 and 19 as a group. As such, we select claim 16 as the
representative claim of this group. Accordingly, claim 19 (with respect to
the prior art rejection) stands or falls with 16. The Appellant argues claim
17 separately. The Appellant argues claim 18 separately. The Appellant
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argues claims 2-5, 8, 9, and 11 as a group. As such, we select claim 8 as the
representative claim of this group. Accordingly, claims 2-5, 9, and 11 stand
or fall with claim 8. The Appellant argues claims 12, 13, and 20 as a group.
As such, we select claim 12 as the representative claim of this group.
Accordingly, claims 13 and 20 stand or fall with claim 12. The Appellant
argues claims 6 and 7 as a group. As such, we select claim 6 as the
representative claim. Accordingly, claim 7 stands or falls with claim 6.
35 U.S.C. § 112, second paragraph, rejection
The Examiner has found that claim 19 is vague and indefinite because
of the recitation “the incentive is a penalty.” (Ans. 3.) The Examiner has
stated this phrase is unclear as to what the Appellant means by incentive. Id.
The Appellant contends that the phrase would be clear to one skilled in the
art when viewing the Specification and the Appellant cites to portions of the
Specification to be viewed by one skilled in the art when interpreting the
phrase in light of the Specification. (App. Br. 10.)
We agree with the Appellant. The phrase “the incentive is a penalty”
sets out and circumscribes a particular area with a reasonable degree of
precision and particularity when read in light of the application’s disclosure
as it would be interpreted by one of ordinary skill in the art. In this case, the
phrase denotes dissuading customers from using the mail channels when the
phrase is read in light of the Specification. (Spec. ¶ 0042, 0121, and 0125.)
The Examiner urges if special meanings of claim terms are to be given, then
those meanings “must be clearly written” in the Specification. (Ans. 13.)
However, what is required is that the Appellant provide sufficient clarity to a
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person of ordinary skill in the art with clear and precise notice in the
Specification. In this case, we find the Appellant has done so.
Accordingly, we will not sustain the Examiner’s rejection of claim 19
under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 102 rejections
Claims 1 and 10 (claim 1 is representative)
The Appellant contends the Examiner erred for failing to appreciate
the Appellant’s invention teaches a mailing machine that has the flexibility
to store concurrently primary and temporary rates and that separate and
distinct portions of memory are used to store rate data or update at different
times. (App. Br. 11-12 and Reply Br. 3.) The Examiner found Barns-Slavin
describes a second memory portion for storing temporary rate data. (Ans.
4.) The Examiner’s responds to the Appellant’s contentions with claim 1
fails to recite “separate” memory portions, two rates are described in Barns-
Slavin (singe piece rate and group discount rate), and because Barns-Slavin
describes multiple types of memory (disks, PROM) and databases may have
numerous memory portions, the limitation of storing a temporary data rate is
met. (Ans. 14.)
Claim 1 recites “a second memory portion operatively connected to
the processor for concurrently storing temporary rate data.” Claim 1 does
not require the second memory portion be separate and distinct from the first
memory portion. Likewise, the claim does not require updating data at
different times. Claim 1 does require a portion of memory to store
temporary rate data concurrently with a primary rate database.
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Barns-Slavin describes a memory that includes both single piece rates
and group discount rates and this memory is replaceable or writeable thereto.
(Fact 2.) Barns-Slavin describes the operator has to initiate the group
discount rate and if the operator wishes not to use the group discount rate
after it has been initiated, the operator must abort. (Fact 4.) As such, the
group discount rate is the temporary rate as compared to the single piece rate
because the operator must toggle in or out of the temporary rate. Because
the single piece rates and the group piece rates are stored in same memory
and the operator has to toggle between the two, the rates are stored
concurrently. Accordingly, we find Barns-Slavin’s description of memory
including single piece rates and group discounts rates satisfies the limitation
of a memory storing a temporary rate concurrently with a primary rate.
The Appellant has not shown that the Examiner erred in rejecting
claim 1. Accordingly, we will sustain the Examiner’s rejection of claims 1
and 10 under 35 U.S.C. § 102(b).
Claims 16 and 19 (claim 16 is representative)
The Appellant contends that the Examiner erred by failing to
appreciate the Appellant’s invention teaches a method for “(i) analyzing the
incentive related usage data to determine the effectivity of the incentive; and
(ii) determining whether to modify the incentive based on the effectivity.”
(App. Br. 13 and Reply Br. 2.) The Examiner urges Barns-Slavin describes
determining whether a group meets requirements for a discount and obtains
data on the amount of parcels being shipped. (Ans. 15.)
Claim 16 recites “analyzing the incentive related usage data to
determine effectivity, determining whether to modify the incentive.” The
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Appellant has contended the claim recites “(i) analyzing the incentive related
usage data to determine the effectivity of the incentive; and (ii) determining
whether to modify the incentive based on the effectivity.” (App. Br. 13.)
However, determining the effectivity of the incentive is not claimed, yet it is
argued by the Appellant. Also, determining whether to modify the incentive
based on the “effectivity” is not claimed. Accordingly, because the
Appellant’s argument is not commensurate with what is claimed, the
argument as it relates to analyzing the incentive to determine effectivity of
the incentive and further as it relates to determining whether to modify the
incentive based on the effectivity is not persuasive as to error in the
rejection. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Thus, the Appellant has not shown that the Examiner erred in
rejecting claim 1. Accordingly, we will sustain the Examiner’s rejection of
claims 16 and 19 under 35 U.S.C. § 102(b).
Claim 17
The Appellant relies on the arguments raised against the rejection of
claim 16. (App. Br. 14.) Given that we find those arguments unpersuasive
as to error in the rejection of claim 16, we reach the same conclusion with
regard to the arguments as they apply to the rejection of this claim; that is,
we find them unpersuasive as to error in the rejection. Accordingly, we will
sustain the Examiner’s rejection of claim 17 under 35 U.S.C. § 102(b).
Claim 18
The Appellant contends that there is no description in Barns-Slavin of
a “time based discount” as recited in claim 18. (App. Br. 15.) The
Appellant contends what is described are volume based discounts. (Id.) The
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Examiner urges that these volume based discounts are only applied after the
certain cumulative total dollar amounts, number of pieces, or weight have
been shipped using a particular class of service. (Ans. 15.)
Claim 18 requires that “the incentive is a time based discount for at
least one particular class of mail.” As such, the discount is conditioned upon
the occurrence of an event, a particular point in time. Barns-Slavin
describes discounts for particular classes of service maybe allowed only
after a certain cumulative dollar amount, number of pieces, or weight has
been shipped. (Fact 1.) As such, before a discount is applied, one of the
described events in Barns-Slavin has to occur. In order for one of the
described events to occur, a period of time must pass by virtue of processing
the pieces (parcels) in order to reach said events, i.e., it will take a period of
time to reach a certain cumulative dollar amount, to process a number of
pieces, or to reach a certain weight. When the time period has elapsed, a
particular point in time is reached, and at that event, i.e., at that point in time,
the described Barns-Slavin discount applies to at least one particular class of
service. As such, from a practical standpoint, Barns-Slavin’s discount is
based on time. Accordingly, we find Barns-Slavin’s description of
discounting by volume for a class of service satisfies the limitation of a time
based discount for one class of mail.
The Appellant has not shown that the Examiner erred in rejecting
claim 18. Accordingly, we will sustain the Examiner’s rejection of claim 18
under 35 U.S.C. § 102(b).
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35 U.S.C. § 103(a) rejections
Claims 2-5, 8, 9, and 11 (claim 8 is representative)
The Appellant contends that the Examiner has no factual basis to
support the obviousness rejection, has not explained why one skilled in the
art would have modified the applied references, and has provided no
motivation from the prior art itself to make the combination. (App. Br. 16.)
The Examiner finds Barns-Slavin describes its temporary rate data is cleared
periodically. (Ans. 7.)
Claim 8 requires the temporary rate data be cleared periodically.
Barns-Slavin describes the memory is updated from time to time by
downloading data to the memory in a conventional manner. (Fact 3.) By
virtue of updating memory with new data, the previous data has to be
removed in order for the new data to fill the memory addresses. As such, the
old data is cleared from the memory addresses in order for the new data to
be inserted and used by the carrier management system (mailing machine)
described in Barns-Slavin. Because Barns-Slavin describes the memory is
updated from time to time, the data in the memory is being updated
periodically and, it follows, the memory is being cleared periodically. As
such, the data in the memory is cleared periodically. As discussed supra, the
discount data described in Barns-Slavin is found to be temporary rate data,
thus temporary rate data is cleared periodically. Accordingly, we find
Barns-Slavin’s description of data being updated from time to time by virtue
of downloading the data in a conventional manner satisfies the limitation of
the temporary rate data being cleared periodically.
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The Appellant has not shown that the Examiner erred in rejecting
claims 2-5, 8, 9, and 11. Accordingly, we will sustain the Examiner’s
rejection of claims 2-5, 8, 9, and 11 under 35 U.S.C. § 103(a).
Claims 12, 13, and 20 (claim 12 is representative)
The Appellant contends, even if Barns-Slavin and Sansone were
properly combined, the combination fails to describe the step of “receiving
customer data for a plurality of customers” and “creating a temporary
database.” (App. Br. 17 and 18.) The Examiner has found that Barns-Slavin
describes receiving a customer’s usage data and it would have been obvious
to modify Barns-Slavin to receive usage data from a plurality of customers.
(Ans. 8.) In addition, the Examiner found Barns-Slavin describes creating a
temporary rate database. (Id.)
Claim 12 recites “receiving customer usage data for a plurality of
customers” and “creating a temporary rate database.”
Barns-Slavin describes discounts may be allowed only when certain
cumulative total dollar amounts, number of pieces, or weight have been
shipped using a particular service class. (Fact 1.) In addition, Barns-Slavin
describes a memory containing single piece rates, group discount rates, and
the predetermined requirements for a group to receive a group discount, and
such data may be updated from time to time in a conventional manner.
(Fact 2.)
By virtue of Barns-Slavin describing a memory having data directed
to: single piece rates, group discount rates, and requirements for a group to
receive a discount; an existence of a database would so be recognized by
persons of ordinary skill in the art. As discussed supra, the discount data
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described in Barns-Slavin is found to be temporary rate data and the data
described therein is being updated from time to time, the database
recognized by persons of ordinary skill in the art would have temporary data
and, as such, be understood as a temporary database. It would necessarily
flow from the existence of a temporary rate database having been described
in Barns-Slavin that this database was created at some point in time.
Accordingly, we find Barns-Slavin’s description of the data stored in the
memory, and what would necessarily flow from those descriptions as would
be recognized by persons of ordinary skill, satisfies the limitation of creating
a temporary rate database.
Barns-Slavin describes memory containing predetermined
requirements for a group to receive a group discount. (Fact 2.) A group is a
plurality of things. In this case, the “things” would be people or companies
using Barns-Slavin’s system. People or companies that use the Barns-Slavin
system are customers of the system. As such, Barns-Slavin describes a
memory storing the predetermined requirements needed for a plurality of
customers to receive a discount. In order to know which customers have
met the requirements to receive the discount, data with respect to the
customer’s usage has to be collected. Before usage data can be collected,
the data needs to be received. As such, it would necessarily flow from the
existence of having a memory containing predetermined requirements that
need to be met in order for a customer to receive a discount that data
regarding a customer’s usage of the system has to be received prior to
receiving the discount. Accordingly, we find Barns-Slavin’s description of
its memory containing predetermined requirements for a group to receive a
group discount, and what would necessarily flow from that description as
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would be recognized by persons of ordinary in the art, satisfy the limitation
of receiving data from customers regarding the usage.
The Appellant has not shown that the Examiner erred in rejecting
claims 12 and 13. Accordingly, we will sustain the Examiner’s rejection of
claims 12 and 13 under 35 U.S.C. § 103(a).
With respect to claim 20, the Appellant relies on the arguments raised
against the rejection of claim 16. (App. Br. 18.) Given that we find those
arguments unpersuasive as to error in the rejection of claim 16, we reach the
same conclusion with regard to the arguments as they apply to the rejection
of this claim; that is, we find them unpersuasive as to error in the rejection.
Accordingly, we will sustain the Examiner’s rejection of claim 20 under 35
U.S.C. § 103(a).
Claims 6 and 7 (claim 6 is representative)
The Appellant relies on the arguments raised against the rejection of
claim 1. (App. Br. 18-19.) Given that we find those arguments
unpersuasive as to error in the rejection of claim 1, we reach the same
conclusion with regard to the arguments as they apply to the rejection of this
claim; that is, we find them unpersuasive as to error in the rejection.
Accordingly, we will sustain the Examiner’s rejection of claims 6 and 7
under 35 U.S.C. § 103(a).

CONCLUSIONS OF LAW
The Appellant has proven that the Examiner erred in rejecting claim
19 as being indefinite.
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The Appellant has not proven that the Examiner erred in rejecting
claims 1, 10, and 16-19 as being anticipated.
The Appellant has not proven that the Examiner erred in rejecting
claims 2-9, 11-13, and 20 as being obvious.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R § 41.50(b) we enter a new ground of rejection.
Claim 16-20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Claimed Invention
The claimed invention is directed to a methodology for determining
how to target incentives. In other words, the claimed invention is directed to
a method of making a decision to provide and modify incentives.
Independent claim 16 has seven steps: (1) obtaining customer usage
and customer data; (2) determining whether offering an incentive is desired;
(3) determining whether a customer is eligible for the incentive; (4) offering
the customer the incentive; (5) obtaining incentive related usage data; (6)
analyzing the incentive related usage data to determine effectivity, and (7)
determining whether to modify the incentive.
Claim Analysis
The Specification does not appear to define any of the claim terms.
As such, they are to be given their ordinary and customary meaning. In that
regard, claim 16 is a collection of obtaining, determining, offering, and
analyzing steps involving the use of data for reaching a particular decision.
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To one of ordinary skill in the art, steps (2), (3), (6), and (7), (the
“determining” and “analyzing” steps) can be characterized as mental steps or
thoughts for determining whether to provide a targeted incentive and
whether to modify the incentive. To one of ordinary skill in the art, steps
(1), (4) and (5) (the “obtaining” and “offering” steps) can be characterized as
verbal communication to gather information in order to determine whether
to give an incentive and offer the incentive once the incentive has been
determined.
Principles of Law
We adhere to the rule expressed in Diamond v. Diehr, 450 U.S. 175
(1981), that, at least absent the development of some hitherto unknown type
of technology, “[t]ransformation and reduction of an article ‘to a different
state or thing’ is the clue to the patentability of a process claim that does not
include particular machines.” 450 U.S. at 184 (quoting Gottschalk v. Benson,
409 U.S. 63, 70 (1972)), cited with approval in In re Comiskey, 499 F.3d
1365, 1377 (Fed. Cir. 2007).
Analysis
Method claims 16-20 fail to recite transformation of subject matter
into a different state or thing. Claim 16 recites a series of steps needed to
make a decision as to whether to offer an incentive and modify that
incentive. There is no transformation of subject matter occurring in these
series of steps. Rather, the invention being claimed in claim 16 is at best a
type of human to human interaction, i.e., a business transaction or, more
accurately, a business decision to decide whether to offer an incentive.
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We are cognizant that claim 16 includes the generic term “information
carrier system.” The information carrier system is not disclosed as a
particular machine or device in the Specification. As such, the claim is not
limited to a method of using a machine or device, i.e., a method of using the
information carrier system. In addition, the “information carrier system”
does not effect a transformation of any subject matter of the claim and thus
add nothing to the non-statutory status of the claimed method as a whole.
Even if we were to assume arguendo that the “information carrier system” is
a machine, as has been stated informatively, “[n]ominal recitations of
structure in an otherwise ineligible method fail to make the method a
statutory process.” Ex parte Langemyr, Appeal No. 2008-1495, slip op. at
20 (BPAI May 28, 2008). As the panel in Langemyr stated, “[t]o permit
such a practice would exalt form over substance and permit claim drafters to
file the sort of process claims not contemplated by the case law.” Id.
Conclusion
Because the subject matter of claim 16 does not transform or
otherwise reduce subject matter into a different state or thing, it is not
directed to a statutory “process.”
Dependent method claims 17-20 likewise fail this test for the same
reasons.
Holding
Accordingly, we hold that claims 16-20 are directed to non-statutory
subject matter, and thus we enter a new ground of rejection of these claims
as unpatentable under 35 U.S.C. § 101.

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DECISION
The Examiner’s decision to reject claim 19 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s decision to reject claims 1, 10, and 16-19 under 35
U.S.C. § 102(b) is affirmed.
The Examiner’s decision to reject claims 2-9, 11-13, and 20 under 35
U.S.C. § 103(a) is affirmed.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

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Appeal 2008-1489
Application 10/064,264

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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) (2007).

AFFIRMED; 41.50(b)

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Appeal 2008-1489
Application 10/064,264

LV:

PITNEY BOWES INC.
35 WATERVIEW DRIVE
P.O. BOX 3000
MSC 26-22
SHELTON, CT 06484-8000
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