Ex Parte KingsboroughDownload PDFPatent Trial and Appeal BoardJan 25, 201713518367 (P.T.A.B. Jan. 25, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/518,367 06/21/2012 Donald Kingsborough 4556.11702 2019 15608 7590 01/25/2017 Blackhawk Network, Inc. C/O Wick Phillips Gould & Martin, LLP 3131 McKinney Avenue, Suite 100 Dallas, TX 75204 EXAMINER ULLAH MASUD, MOHAMMAD R ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 01/25/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex Parte DONALD KINGSBOROUGH Appeal 2015-0015481 Application 13/518,3672 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—26 and 28—37. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed May 12, 2014) and Reply Br. (“Reply Br.,” filed October 28, 2014), and the Examiner’s Answer (“Ans.,” mailed August 28, 2014) and Final Office Action (“Final Act.,” mailed October 8, 2013). 2 Appellant identifies Blackhawk Network, Inc. as the real party in interest. App. Br. 3. Appeal 2015-001548 Application 13/518,367 CLAIMED INVENTION Appellant’s claimed invention “relates to packaging and processing of bundled greeting and stored-value cards” (Spec. 11). Claims 1, 2, 12—15, 24, and 34 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A greeting card stored-value card combination product comprising: a greeting card; a stored-value card; a means for affixing the stored-value card to the greeting card; a card identifier uniquely identifying the stored-value card, wherein the card identifier provides a means for activating the stored-value card; and an identifier encoded on at least one of the greeting card and the stored-value card; wherein the identifier identifies the greeting card stored-value card combination product, the greeting card of the combination product, and the stored-value card of the combination product, thereby differentiating the greeting card stored-value card combination product from other combinations of greeting cards and stored-value cards. REJECTIONS Claims 1—26 and 28—37 are rejected under 35U.S.C. § 101 as directed to non-statutory subject matter. Claims 1—5, 7—15, 22—26, and 34—37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Street (US 7,024,807 B2, iss. Apr. 11, 2006) and Dwyre (US 2007/0278296 Al, pub. Dec. 6, 2007). Claims 16—21 and 28—33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Street, Dwyre, and Olliphant (US 2009/0327128 Al, pub. Dec. 31, 2009). 2 Appeal 2015-001548 Application 13/518,367 Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Street, Dwyre, and Official Notice. ANALYSIS Non-Statutory Subject Matter Independent Claims 1 and 2 and Dependent Claims 3—11 In rejecting claims 1 and 2 under 35 U.S.C. § 101, the Examiner finds that the claims are directed to “a method of identifying stored value card and identifying by an identifier encoded on at least one of the greeting card and the stored value card and differentiating with other greeting card and stored value card combination product” (claim 1) and to “identifying greeting card and stored value card combination product and activating the stored value card” (claim 2) (Ans. 3). The Examiner concludes that the claimed subject matter “amounts to nothing more than a method of identifying and activating cards,” which is considered to be an abstract idea (id. at 3—4). We disagree. As an initial matter, we note that neither claim 1 nor claim 2 is directed to a method. Instead, both claims 1 and 2 are directed to a greeting card stored-value card combination product, and recite that the product comprises, inter alia, a greeting card and a stored-value card, i.e., physical objects, and a means for affixing the stored-value card to the greeting card, i.e., a mechanism for affixing one physical object to another physical object. The Examiner does not explain how, and we fail to see how a product comprising two physical, tangible objects and a mechanism for affixing one of the objects to the other constitutes an abstract idea. Independent claims 1 and 2 are admittedly broad, and, if issued, could have broad exclusionary effect. But the mere fact that the claims are broad does not mean that the claims are directed to an abstract idea. 3 Appeal 2015-001548 Application 13/518,367 In view of the foregoing, we do not sustain the Examiner’s rejection of independent claims 1 and 2 under 35 U.S.C. § 101. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 3—11. Independent Claims 12—15, 24, and 34 and Dependent Claims 16—23, 25, 26, 28—33, and 35—37 Appellant takes the position that each of claims 12—26 and 28—37 depend from one of claims 1 and 2, and Appellant maintains that because claims 1 and 2 are patent-eligible, claims 12—26 and 28—37 are likewise patent eligible (Reply Br. 11). As an initial matter, we do not agree that claims 12—15, 24, and 34 are dependent claims. Each of these claims admittedly refers to one of claims 1 and 2. For example, claim 12 recites “[a] computer implemented method for processing a sale of the greeting card stored-value card combination product of claim 1.” Claims 13—15, 24, and 34 make similar references to claim 1 or claim 2. Yet claims that refer to other claims are not necessarily dependent claims. 35 U.S.C. § 112, fourth paragraph, provides that a claim in dependent form shall (1) contain a reference to a claim previously set forth and (2) specify a further limitation of the subject matter claimed. A claim in dependent form also “shall be construed to incorporate by reference all the limitations of the claim to which it refers.” Id. Notably, the statute does not say that a dependent claim is one that contains a reference to another claim, merely that a dependent claim shall have a reference to another claim. Here, claim 12 refers to claim 1 as “shorthand” for the product to use in the claimed method. In other words, claim 12 is drafted in a “shorthand” format to avoid rewriting the particulars of the greeting card stored-value 4 Appeal 2015-001548 Application 13/518,367 card combination product of claim 1, not to further define the product of claim 1 — an indication that claim 12 is independent, not dependent. The remaining claims 13—15, 24, and 34 similarly refer to claim 1 or claim 2 as shorthand for the greeting card stored-value card combination product, and do not further limit the product claims — an indication again that these claims are properly considered to be independent. The claims involved here are similar to those the Board considered in Ex parte Porter, 25 USPQ2d 1144 (BPAI 1992). There, claim 7 was directed to “[a] nozzle suitable for use in discharging a controlled stream of fluid into a reactor tube of a catalyst unloading apparatus”; claim 6 recited “[a] method for unloading non-packed, non-bridging and packed, bridging flowable particle catalyst and bead material from the opened end of a reactor tube which comprises utilizing the nozzle of claim 7.” Id. at 1145. The Board noted that the manner in which claim 6 is drafted “has been an acceptable format for years” and suggested that such a claim “could be construed as an independent claim, drafted in a short-hand format.” Id. at 1147 (citing In re Kuehl, 475 F.2d 658 (CCPA 1973). It also is significant here that the Manual of Patent Examining Procedure (“MPEP”) instructs Examiners that “[a] claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing” under 35 U.S.C. § 112, second paragraph. See MPEP § 2173.05(f) (citing Ex parte Porter). It would make little sense to include this section of the MPEP if every claim referencing another claim was considered to be a dependent claim. Perhaps most tellingly, the MPEP 5 Appeal 2015-001548 Application 13/518,367 acknowledges, “there is no set statutory form for claims.” MPEP § 608.01(m). Claims 12—15, 24, and 34, in our view, are properly considered to be independent claims, with claims 16—23, 25, 26, 28—33, and 35—37, depending, directly or indirectly, from one of claims 12—15, 24, and 34. Appellant does not present any arguments in support of the patent- eligibility of claims 12—26 and 28—37 beyond alleging that the claims are patent-eligible based on their dependence from claims 1 and 2. Therefore, in absence of further arguments specifically addressing claims 12—26 and 28— 37, we sustain the Examiner’s rejection of these claims under 35 U.S.C. §101. Obviousness Independent Claims 1 and 2 and Dependent Claims 3—5 and 7—11 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claims 1 and 2 under 35 U.S.C. § 103(a) because the combination of Street and Dwyre fails to disclose or suggest a single identifier that “identifies the greeting card stored-value card combination product, the greeting card of the combination product, and the stored-value card of the combination product, thereby differentiating the greeting card stored-value card combination product from other combinations of greeting cards and stored-value cards,” as recited in claim 1, and similarly recited in claim 2 (App. Br. 6—12). The Examiner cites Street as disclosing a single identifier that “identifies the greeting card stored-value card combination product, the greeting card of the combination product, and the stored-value card of the combination product” (Final Act. 3 (citing Street, Figures 1—4; col. 3,11. 56—60; col. 4,11. 30-48); see also Ans. 4—5 (additionally citing 6 Appeal 2015-001548 Application 13/518,367 Street, col. 4,11. 22—29)). However, we agree with Appellant that although Street discloses various identifiers, including preprinted indicia 3 8 on the front or back panel of the greeting card, including text, photographs, artwork, or imagery suitable for the occasion (see Street, col. 3,11. 56—60), and other indicia printed on the surface of the gift card (i.e., indicia 50 identifying the account holder who carries the credit from which the recipient may obtain goods or services, a PIN number 52 for accessing an account corresponding to the gift card, and a coded portion 46 for activating the account (see id. at col. 4,11. 22-48)), none of these indicia is a single identifier, as called for in claims 1 and 2, that identifies all of “the greeting card stored-value card combination product, the greeting card of the combination product, and the stored-value card of the combination product.” The Examiner ostensibly takes the position that the combination of Street’s disclosed indicia constitutes a single identifier that identifies the combination card, greeting card, and stored-value card, and that Street inherently discloses a single identifier, as called for in the claims (Final Act. 2-4; see also Ans. 4—5). Yet more than speculation is required to establish inherency. “Inherency. . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed.Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Instead, the Examiner must provide evidence and/or technical reasoning that make “clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” 7 Appeal 2015-001548 Application 13/518,367 Id. at 1268. The Examiner has presented no such evidence and/or technical reasoning here. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claims 1 and 2 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 3—5 and 7— 11. Cf.In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonob vious”). Dependent Claim 6 Claim 6 ultimately depends from claim 1. The rejection of claim 6 based on Official Notice, in combination with Street and Dwyre, does not cure the deficiency in the Examiner’s rejection of claim 1. Therefore, we do not sustain the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to claim 1. Independent Claims 12—15, 24, and 34 and Dependent Claims 16—23, 25, 26, 28—33, and 35—37 Appellant does not present any arguments in support of the patentability of claims 12—26 and 28—37 beyond alleging that the claims are allowable based on their dependence from claims 1 and 2 (App. Br. 17—18). We conclude, for the reasons set forth above, claims 12—26 and 28—37 do not depend from claims 1 and 2. Therefore, in absence of further arguments specifically addressing claims 12—26 and 28—37, we sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103(a). 8 Appeal 2015-001548 Application 13/518,367 DECISION The Examiner’s rejection of claims 1—11 under 35 U.S.C. § 101 is reversed. The Examiner’s rejection of claims 12—26 and 28—37 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejections of claims 1—11 under 35 U.S.C. § 103(a) are reversed. The Examiner’s rejections of claims 12—26 and 28—37 under 35 U.S.C. § 103(a) are 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)(l)(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation