Ex Parte Katz

Board of Patent Appeals and Interferences

Mar 25, 2011

09828122 (B.P.A.I. Mar. 25, 2011)

The two-month time period for filing an appeal or commencing a civil action,
as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited
in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery
mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown
on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY M. KATZ
____________

Appeal 2010-006083
Application 09/828,122
Technology Center 3600
____________

Before, HUBERT C. LORIN, ANTON W. FETTING and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Appellant has filed a Request for Rehearing under 37 C.F.R.
§ 41.50(b)(2) (2007) and 37 C.F.R. § 41.52(a)(1) (2007) for reconsideration of our
Decision of January 31, 2011.
In the Decision:
1. We concluded the Examiner erred in rejecting claims 1-3, 11-19, 23, 27,
36, 44, and 48 under 35 USC 112, first paragraph.
2. We concluded the Examiner erred in rejecting claims 1-3, 11-19, 23, 27,
36, 44, and 48 under 35 USC 112, second paragraph.
3. We concluded the Examiner did not err in rejecting claims 1-3, 11-19, 23,
27, 36, 44, and 48 under 35 USC 102(b) as being anticipated by Deaton.
4. We concluded the Examiner did not err in rejecting claims 1-3, 27 and 36
under 35 USC 102(e) as being anticipated by Aggarwal; we concluded the
Examiner did err in rejecting claims 23, 27 and 36 under 35 USC 102(e) as being
anticipated by Aggarwal.
I. Appellant’s Claim Construction Challenge
Appellant’s Request for Reconsideration makes central the following
recitation from claim 1:
only if said promotion qualification indicates that both
said first product item and said second product item were
received via said at least one input device at said POS
during said purchase transaction, with said at least one
processor, deducting from a charge for said purchase
transaction a value of promotion associated with said
second promotion and a value of promotion associated
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with said first promotion.
In our decision we found that:
1. The Examiner however maintains that:
… if it is indicated that both first product item and
second product item were not received during the
transaction, and if it is determined that there is no first
promotion therefore there is no first promotion value thus
the step of deducting is not performed. Therefore the
claim does not recite requiring both the first promotion
for a product of a category for which the consumer has
not previously purchased, and a second high relevance
promotion for a product the consumer is likely to
purchase, be exercised together.
(Answer 13).
2. We also found that:
[w]e agree with the Examiner that the “if condition” as
employed in the method claim 1 is not a limitation
against which prior art must be found because the step of
deducting from a charge for the purchase transaction a
value is conditioned on only if said promotion
qualification indicates that both said first product item
and said second product item were received via said at
least one input device at said POS during said purchase
transaction. During examination, claims are given their
broadest reasonable interpretation. See In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
As under the broadest scenario, the steps dependent on
the “if” conditional would not be invoked, the Examiner
was not required to find these limitations in the prior art
in order to render the claims obvious.
(Decision 8).
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Appellant in turn traverses our interpretation of claim 1 stating that, “[y]our
analysis is similar to the district court's decision commented on in 02 Micro
International Limited v. Beyond Innovation Technology Co., Ltd., regarding
construing "only if” recitations. (Request 4).
We are not persuaded by Appellant’s arguments here because: (1) the
involved claim in 02 Micro International Limited was drawn to a device1 and not to
a method as is the case with claim 1; and (2) the issue before the district court was
presented in the context of a Markman hearing for purposes of determining
infringement, and not for determining claim scope in the context of ex parte
prosecution. The rules of claim construction in infringement actions differ from
the rules for claim interpretation during prosecution in the PTO. See, Cybor Corp.
v. FAS Technologies, Inc., 138 F.3d 1448, 1467-68 (Fed. Cir. 1998).
Appellant’s Request seemingly ignores the distinction taken in our Decision
to treat separately independent claim 1 drawn to a method, and claims 23, 44 and
48 drawn to the system. In the case of the system claims 23, 44, and 48, we
reversed the Examiner’s rejection using Aggarwal because we found that the
device in Aggarwal was not capable of performing the “if conditional” function at
issue here. (Decision 11). This is because we find that with system claims, the “if

1 “Claim 1 of the ′615 patent is representative of the asserted claims for the issues presented by
this appeal. As issued, it requires, in relevant part, a DC/AC converter circuit comprising:
a feedback control loop circuit receiving a feedback signal indicative of power being supplied to
said load, and adapted to generate a second signal pulse signal for controlling the conduction
state of said second plurality of switches only if said feedback signal is above a predetermined
threshold; ′615 patent col.10 l.67—col.11 l.5.” 02 Micro International Limited v. Beyond
Innovation Technology Co., Ltd.,.521 F.3d 1351, 1361 (Fed. Cir. 2008).

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conditional” function is resident on the system regardless of whether it is executed
or not, and thus must be given weight at least to the extent that the prior art device
is capable of functioning as claimed.
We further disagree that the treatment by the Examiner of the “if condition”
recitation was “less than transparent” from the record (Request 3), because as
found supra, the Examiner recognized this issue and found that “if it is determined
that there is no first promotion therefore there is no first promotion value thus the
step of deducting is not performed.” (Answer 13).
Appellant also asserts that the preamble requires the “if conditional”
recitation found in the body of the claim. (Request 3). We disagree with
Appellant because the preamble statement, like the “if conditional” recitation in the
claim body, is also a conditional statement reciting only a “likelihood” and not
with certainty that the first promotion is exercised.
Finally, we decline to make an explicit statement in our Decision on
Rehearing on how claims 1 and 23 can be amended to overcome the Deaton and
Aggarwal rejections, as we are not in a position to anticipate the Examiner’s
findings within the domain of the Examiner.
For the reasons above, we are not convinced that Appellant has shown with
particularity points believed to have been misapprehended or overlooked by the
Board in rendering its earlier decision. See 37 C.F.R. § 41.52(a)(1) (2007).
Accordingly, Appellant’s Request for Rehearing is DENIED.
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).

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REHEARING DENIED

MP

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