Ex Parte McKissick et al

Patent Trial and Appeal Board

Feb 25, 2013

11408747 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAMELA L. MCKISSICK, WILLIAM L. THOMAS, MICHAEL
D. ELLIS, MARK A. REGOUBY, and JOEL G. HASSELL
____________

Appeal 2011-001009
Application 11/408,747
Technology Center 2400
____________

Before MAHSHID D. SAADAT, DENISE M. POTHIER, and JEFFREY S.
SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001009
Application 11/408,747

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-30, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Representative Claim
1. A method for purchasing gifts using an interactive application, the
method comprising:

allowing a user to select a program to purchase as a gift for a recipient
using the interactive application, wherein the recipient is different from the
user;

allowing the user to provide information for purchasing the program
as the gift using the interactive application; and

providing the program as the gift to the recipient.

Prior Art
Toga US 6,757,711 B2 Jun. 29, 2004
Storey US 2008/0109308 A1 May 8, 2008
(filed Dec. 14, 1995)

Examiner’s Rejections
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Storey and Toga.

Appeal 2011-001009
Application 11/408,747

3
ANALYSIS
Appellants contend that the term “program” recited in claim 1
includes something more than audio and video data, and that the
combination of Storey and Toga does not teach a program. Reply Br. 5-9.
The Examiner finds that the term “program” encompasses a baseball
program, a computer program, and video data. Ans. 10-11. The Examiner
further finds that Toga teaches video data. Ans. 11. Appellants have not
provided a definition of “program” that excludes the video data taught by
Toga. We agree with the Examiner that the combination of Storey and Toga
teaches a “program1” within the meaning of claim 1.
Appellants contend that neither Storey nor Toga teaches purchasing
and providing a program as a gift. App. Br. 4; Reply Br. 10-11. The
Examiner finds that Storey teaches purchasing and providing a gift
certificate as a gift to a recipient, and Toga teaches providing video data to a
recipient. The Examiner concludes that the combination of Storey and Toga
teaches purchasing and providing a program as a gift to a recipient. Ans. 6,
11. We agree with the Examiner. One cannot show non-obviousness by
attacking references individually, where the rejections are based on

1 The “program” does not affect any steps or structural limitations recited in
the method of claim 1. The method of claim 1 remains the same regardless
of the type of data or item represented by the word “program.” The
“program” is a non-functional description of data provided to a recipient,
such that the scope of claim 1 encompasses “providing [data] as the gift to
the recipient.” See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In
re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte Nehls,
88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential).

Appeal 2011-001009
Application 11/408,747

4
combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants contend that one skilled in the art would not combine the
teachings of Storey and Toga. In particular, Appellants contend that
modifying the purchase of a gift certificate as taught by Storey with the
teaching of a destination address for a requested file as taught by Toga
would render Storey unsatisfactory for its intended purpose of allowing the
recipient to purchase a gift of his or her choice. App. Br. 5. The intended
purpose of Storey is enabling a customer to order a product online (Abstract;
¶ 16), such as a gift sent to another user (¶¶ 46-48). Toga teaches video data
sent to a user. Col. 5, ll. 5-35. Appellants have not provided persuasive
evidence or argument to show that sending the video data taught by Toga as
a gift to a recipient as taught by Storey was “uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)).

DECISION
The rejection of claims 1-30 under 35 U.S.C. § 103(a) as being
unpatentable over Storey and Toga is affirmed.

Appeal 2011-001009
Application 11/408,747

5
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

rwk