Ex Parte Icho

Board of Patent Appeals and Interferences

Feb 19, 2009

09815838 (B.P.A.I. Feb. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte ROBERT ICHO 8
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10
Appeal 2008-5181 11
Application 09/815,838 12
Technology Center 3600 13
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Decided:1 February 19, 2009 16
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE27

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 09/815,838

2
Robert Icho (Appellant) seeks review under 35 U.S.C. § 134 of a final 1
rejection of claims 1-3 and 7-14, the only claims pending in the application 2
on appeal. 3
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 4
(2002). 5
We AFFIRM. 6
7
The Appellant invented a system and method for providing a purchase 8
award program that may be applied to any purchases carried out through the 9
Internet (Specification Page 3, lines 3-5). 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 1, which is reproduced below [bracketed matter and some 12
paragraphing added]. 13
1. A method for providing an on-line purchase award incentive 14
program, including the steps of: 15
[1] providing a program web site; 16
[2] accepting user registration with said program and storing 17
the name and e-mail address of each registered user in 18
association with a respective program account; 19
[3] providing a web page listing a plurality of vendors, all of 20
said vendors participating in said program, said web page 21
enabling click-through connection to the web sites of any of 22
said participating vendors; 23
[4] establishing an e-mail address for said program web site; 24
[5] each registered user electively transacting at least one 25
purchase directly with the web site of one of said participating 26
vendors; 27
[6] each registered user using said e-mail address of said 28
program web site during each purchase transaction with a web 29
site of one of said participating vendors; 30
[7] reporting said at least one purchase to said program web 31
site via e-mail after the purchase is completed; 32
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Application 09/815,838

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[8] crediting the account of the respective registered user 1
with purchase award points according to the dollar amount of 2
said at least one purchase; 3
[9] reiterating said steps of purchasing, reporting, and 4
crediting to accumulate purchase award points in the 5
respective account of each registered user; and, 6
[10] each registered user electively redeeming purchase award 7
points in the respective account for goods and/or services. 8
9
This appeal arises from the Examiner’s Final Rejection, mailed May 10
23, 2005. The Appellant filed an Appeal Brief in support of the appeal on 11
May 1, 2006. An Examiner’s Answer to the Appeal Brief was mailed on 12
November 1, 2007. 13
PRIOR ART 14
The Examiner relies upon the following prior art: 15
Ikeda US 5,937,391 Aug. 10, 1999 16
17
REJECTION 18
Claims 1-3 and 7-14 stand rejected under 35 U.S.C. § 103(a) as 19
unpatentable over Ikeda. 20
ISSUE 21
The issue pertinent to this appeal is whether the Appellant has 22
sustained its burden of showing that the Examiner erred in rejecting claims 23
1-3 and 7-14 under 35 U.S.C. § 103(a) as unpatentable over Ikeda. This 24
issue turns on whether the Examiner’s taking of Official Notice on the 25
feature of confirming a purchase transaction via email is proper and whether 26
the Appellant challenged the Examiner’s taking of Official Notice. 27
28
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FACTS PERTINENT TO THE ISSUE 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Ikeda 4
01. Ikeda is directed towards a point service system for sales 5
promotion and marketing (column 1, lines 6-9). 6
02. A points issuing unit determines the number of points to 7
allocate for purchase. For example, the points issuing unit 8
determines the number of points to allocate for the purchase of 9
100 yen (column 3, lines 52-57). A flag is set to determine 10
whether payment has been made and once payment has been 11
completed, points are added to the customer’s total (column 10, 12
lines 47-54). This can be accomplished by a shop or a financial 13
company transmitting a payment notification to the online 14
shopping mall server (column 12, lines 36-51). 15
03. A points management device stores the number of points 16
accumulated by each customer for each points issuing shop 17
(column 3, lines 58-60). A points management table maintains 18
information regarding the number of points issued for each 19
transaction with each shop and the total number of accumulated 20
points per customer (column 7, lines 40-42 and column 8, lines 21
48-50). The total accumulated points per customer is stored in the 22
INFORMATION column (figure 8). 23
04. A points redeeming unit determines how much to reduce the 24
purchase price of a product based on the number of accumulated 25
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points by the customer. The points redeeming ratio is determined 1
by the shopping mall or shop (column 3, lines 61-67). 2
05. A webpage is used to display the shopping mall (column 4, 3
lines 1-5). Shops that are part of the online mall may or may not 4
provide a point service system (column 7, lines 5-10). The system 5
makes a determination of whether a shop is a point service vendor 6
during point issuance and point redemption (figures 7 and 14). 7
06. The homepage consists of information regarding the online 8
shopping mall. All of the shops are listed on the homepage. The 9
homepage further presents to the customer the total number of 10
points awarded to the customer and from which shops the awards 11
were issued from (figure 6 and column 6, lines 29-38). All of the 12
vendors and their point system are displayed, including shops that 13
do not participate in the point service program such as Shop E 14
(figure 6). 15
07. The architecture of the system includes a plurality of servers. 16
The system can be run on a server where the shops do not have 17
their own servers or on a system where each shop has their own 18
servers (column 4, lines 55-60). The amount of points awarded 19
from each shop is altered from the server of each shop and 20
maintained on the server of the mall (column 12, lines 53-60). 21
08. Ikeda describes previous systems awards gifts once the number 22
of points break a predetermined threshold (column 1, lines 15-17 23
and column 1, lines 20-22). 24
Facts Related To The Level Of Skill In The Art 25
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09. Neither the Examiner nor the Appellant has addressed the level 1
of ordinary skill in the pertinent art of ecommerce or online sales. 2
We will therefore consider the cited prior art as representative of 3
the level of ordinary skill in the art. See Okajima v. Bourdeau, 4
261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific 5
findings on the level of skill in the art does not give rise to 6
reversible error ‘where the prior art itself reflects an appropriate 7
level and a need for testimony is not shown’”) (quoting Litton 8
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 9
(Fed. Cir. 1985)). 10
Facts Related To Secondary Considerations 11
10. There is no evidence on record of secondary considerations of 12
non-obviousness for our consideration. 13
14
PRINCIPLES OF LAW 15
Obviousness 16
A claimed invention is unpatentable if the differences between it and 17
the prior art are “such that the subject matter as a whole would have been 18
obvious at the time the invention was made to a person having ordinary skill 19
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S. 20
Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 21
(1966). 22
In Graham, the Court held that that the obviousness analysis is 23
bottomed on several basic factual inquiries: “[(1)] the scope and content of 24
the prior art are to be determined; [(2)] differences between the prior art and 25
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 26
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in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 1
Inc., 127 S. Ct. at 1734. “The combination of familiar elements according to 2
known methods is likely to be obvious when it does no more than yield 3
predictable results.” KSR, at 1739. 4
“When a work is available in one field of endeavor, design incentives 5
and other market forces can prompt variations of it, either in the same field 6
or a different one. If a person of ordinary skill can implement a predictable 7
variation, § 103 likely bars its patentability.” Id. at 1740. 8
“For the same reason, if a technique has been used to improve one 9
device, and a person of ordinary skill in the art would recognize that it would 10
improve similar devices in the same way, using the technique is obvious 11
unless its actual application is beyond his or her skill.” Id. 12
“Under the correct analysis, any need or problem known in the field 13
of endeavor at the time of invention and addressed by the patent can provide 14
a reason for combining the elements in the manner claimed.” Id. at 1742. 15
16
ANALYSIS 17
Claims 1-3 and 7-14 stand rejected under 35 U.S.C. § 103(a) as 18
unpatentable over Ikeda 19
The Examiner found that Ikeda described all of the limitations of 20
claim 1-3 and 7-14, except for the features of each registered user using the 21
email address of the program website during each purchase transaction with 22
participating vendors, reporting the purchase to the program website via 23
email after the purchase, and a subsequent confirmation email is sent to the 24
registered user from the program website of claims 1, 7-8, and 13 (Answer 25
Page 6, last paragraph). The Examiner took Official Notice that these 26
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features were old and well-known in the art at the time of the invention 1
(Answer Page 7). The Examiner then found that one of ordinary skill in the 2
art would have found it obvious to modify Ikeda in order to increase the 3
accuracy of the system by properly awarding points to registered users 4
(Answer Page 8). 5
The Appellant contends that: (1) Ikeda counts points for each shop 6
separately, whereas the claimed invention sums the total dollar spent through 7
the web site (Br. Page 11, second paragraph), (2) Ikeda fails to describe that 8
all of the online shops are point providers (Br. Page 11, second paragraph), 9
(3) Ikeda reduces the price of items in exchange for reward points, whereas 10
the claimed invention does not interfere with a customer’s transaction with a 11
vendor (Br. Page 11, last paragraph and Br. 13, first paragraph), (4) Ikeda 12
keeps track of points being accumulated or spent during an ongoing 13
transaction, whereas the claimed invention relies on an email confirmation 14
of a completed transaction after the transaction occurs and miles or points 15
are awarded subsequent to the transaction (Br. Page 11, last paragraph) as 16
per claims 1 (Br. Page 13, first paragraph), 7-8 (Br. Page 13, second 17
paragraph), 12 (Br. Page 13, third paragraph), 13 (Br. Page 13, last 18
paragraph), and 14 (Br. Page 13, last paragraph), and (5) Ikeda uses points or 19
miles to buy goods from participating online shops, whereas the claimed 20
invention acquires miles by purchase (Br. Page 11, last paragraph). 21
The Appellant first contends (1) Ikeda counts points for each shop 22
separately, whereas the claimed invention sums the total dollar spent through 23
the web site (Br. Page 11, second paragraph). We disagree with the 24
Appellant. Ikeda describes displaying the number of points issued by each 25
shop and accumulated total points for each customer (FF 03 and FF 06). 26
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The total accumulated points are listed in the INFORMATION column (FF 1
03). As such, Ikeda explicitly describes maintaining the sum of the total 2
points accumulated as recited by the claimed invention. The Appellant 3
appears to be arguing that Ikeda performs additional steps in recording 4
points at the shop level before summing the point (Br. Page 11, first full 5
paragraph). Claim 1 uses the open ended transition “including” which 6
allows for additional steps beyond those recited in the body of the claim. 7
The Appellant further contends (2) Ikeda fails to describe that all of 8
the online shops are point providers (Br. Page 11, second paragraph). We 9
disagree with the Appellant. We agree that Ikeda enables shops in the online 10
shopping mall to choose to participate or not participate in the point service 11
(FF 05). However, upon a customer entering the online shopping mall the 12
customer is presented with the mall homepage which displays the total 13
amount of points issued from each shop (FF 06). All of the shops that 14
participate in the online mall program are listed, including those that do not 15
award points for purchases (FF 06). The shops that are not participating in 16
the point service are indicated as not participating (FF 06). As such, Ikeda 17
describes listing all vendors in the online mall program. Limitation [3] in 18
claim 1 requires providing a web page listing a plurality of vendors, and that 19
all of those vendors participate in said program. The said program is first set 20
forth in limitation [1] as providing a program web site. Limitation [1] does 21
not further narrow the nature of the program. Therefore, since all of the 22
vendors in Ikeda listed are within the online mall program, limitation [3] is 23
met. But even were the program in limitations [1] and [3] construed to mean 24
an on-line purchase award incentive program, limitation [3] only requires 25
that, of all of the vendors in the plurality that are listed, all of those are in 26
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that program. That is, some plurality of vendors is listed on a web page, and 1
all of those in that plurality participate. Limitation [3] does not preclude the 2
display of an additional plurality of vendors, beyond the list of participating 3
vendors, that are not in the program. 4
The Appellant additionally contends (3) Ikeda reduces the price of 5
items in exchange for reward points, whereas the claimed invention does not 6
interfere with a customer’s transaction with a vendor (Br. Page 11, last 7
paragraph and Br. 13, first paragraph). We disagree with the Appellant. 8
Ikeda describes that the configuration of the points service system can 9
include a plurality of servers from each of the shops (FF 07). Furthermore, 10
each shop can set the server to alter the contents of the points management 11
system (FF 07). As such, the Ikeda system describes an implementation to 12
enable the shops to provide their own servers to be independent of the mall 13
server. This describes limitation [4] of claim 1 of the present invention. 14
The Appellant further contends (4) Ikeda keeps track of points being 15
accumulated or spent during an ongoing transaction, whereas the claimed 16
invention relies on an email confirmation of a completed transaction after 17
the transaction occurs and miles or points are awarded subsequent to the 18
transaction (Br. Page 11, last paragraph) as per claims 1 (Br. Page 13, first 19
paragraph), 7-8 (Br. Page 13, second paragraph), 12 (Br. Page 13, third 20
paragraph), 13 (Br. Page 13, last paragraph), and 14 (Br. Page 13, last 21
paragraph). 22
We disagree with the Appellant. The Examiner has not relied on 23
Ikeda to describe these limitations (Answer Page 7). The Examiner has 24
taken Official Notice that it is old and well-known in the art to transmit a 25
user’s purchase transaction with a shop to the shopping mall via email 26
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(Answer Page 7, last paragraph). The Examiner articulated that it is old and 1
well-known in the art to use email as a vehicle for communication and for a 2
customer to receive a confirmation email regarding a purchase (Answer 3
Page 7, first paragraph). The Examiner also reasoned that it is old and well-4
known in the art to embed identification information while referring a user 5
to another website and to email reports on the referring information for 6
compensation purposes (Answer Page 7, second and third paragraphs). The 7
Examiner’s taking of Official Notice has not been challenged by the 8
Appellant and thus are taken to be admitted prior art. See In re Chevenard, 9
139 F.2d 711, 713 (CCPA 1943). As such, Appellant’s arguments regarding 10
the deficiencies of Ikeda does not persuade us of error on the part of the 11
Examiner because the Appellant responds to the rejection by attacking the 12
references separately, even though the rejection is based on the combined 13
teachings of the references. Nonobviousness cannot be established by 14
attacking the references individually when the rejection is predicated upon a 15
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 16
1091, 1097 (Fed. Cir. 1986). 17
The Appellant additionally contends (5) Ikeda uses points or miles to 18
buy goods from participating online shops, whereas the claimed invention 19
acquires miles by purchase (Br. Page 11, last paragraph). We disagree with 20
the Appellant. The claimed invention recites an incentive award is awarded 21
and ordered from the program website by redeeming points. Ikeda describes 22
the same concept of awarding a discount or an item when the number of 23
accumulated points crosses a threshold (FF 04 and FF 08). As such, Ikeda 24
describes this limitation and the Appellant’s argument is not found 25
persuasive. 26
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The Appellant has not sustained its burden of showing that the 1
Examiner erred in rejecting claims 1-3 and 7-14 under 35 U.S.C. § 103(a) as 2
unpatentable over Ikeda for the above reasons. 3
4
CONCLUSIONS OF LAW 5
The Appellant has not sustained its burden of showing that the 6
Examiner erred in rejecting claims 1-3 and 7-14 under 35 U.S.C. § 103(a) as 7
unpatentable over the prior art. 8
9
DECISION 10
To summarize, our decision is as follows: 11
• The rejection of claims 1-3 and 7-14 under 35 U.S.C. § 103(a) as 12
unpatentable over Ikeda is sustained. 13
No time period for taking any subsequent action in connection with 14
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007). 15
16
AFFIRMED 17
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hh 24
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HARRIS ZIMMERMAN 26
LAW OFFICES OF HARRIS ZIMMERMAN 27
1330 BROADWAY, SUITE 710 28
OAKLAND, CA 94612-2506 29