Ex Parte Oehlerking et al

Patent Trial and Appeal Board

Aug 9, 2013

11062503 (P.T.A.B. Aug. 9, 2013)

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.
11/062,503 02/22/2005 Mark Charles Oehlerking 17134-US 7377
30689 7590 08/09/2013
DEERE & COMPANY
ONE JOHN DEERE PLACE
MOLINE, IL 61265
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
08/09/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte MARK CHARLES OEHLERKING, 7
GREG ALAN UNRUH, 8
GREG WILLIAM HOOVER, and 9
TIMOTHY WAYNE BOEHLE 10
___________ 11
12
Appeal 2011-009411 13
Application 11/062,503 14
Technology Center 3600 15
___________ 16
17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 19
BIBHU R. MOHANTY, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
Appeal 2011-009411
Application 11/062,503
2

STATEMENT OF THE CASE1 1
Mark Charles Oehlerking, Greg Alan Unruh, Greg William Hoover, 2
and Timothy Wayne Boehle (Appellants) seek review under 35 U.S.C. § 134 3
of a final rejection of claims 1-16, the only claims pending in the application 4
on appeal. We have jurisdiction over the appeal pursuant to 5
35 U.S.C. § 6(b). 6
The Appellants invented a method and system for managing an 7
incentive fund for promoting a transaction associated with one or more 8
products. (Spec., para. [0001]). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below (bracketed matter and some 11
paragraphing added). 12
1. A method for managing a fund via an electronic data 13
processing system capable of communication over a 14
communications network, the method comprising: 15
[1] establishing a pool of incentive funds, 16
via a fund definer of the data processing system, 17
to be used by designated merchants 18
to fund sponsored incentive programs 19
for at least one of a sale and a lease of 20
a product; 21
[2] allocating, 22
via the data processing system, 23
an amount of each incentive fund within the pool 24
for a corresponding designated merchant 25
subject to compliance rules 26
for management of the pool of the 27
funds that support reallocation of the 28
funds 29

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Dec. 7, 2010) and the Examiner’s Answer (“Ans.,” mailed Feb. 15,
2011).
Appeal 2011-009411
Application 11/062,503
3

among other merchants 1
if a violating merchant violates one of 2
the compliance rules; and 3
[3] designating 4
one or more respective credit plans that are associated 5
with or eligible for each incentive fund, 6
the credit plans comprising 7
financing, 8
a credit line, or 9
a loan, 10
each of the credit plans supported by a financial 11
institution; and 12
[4] supporting 13
discretionary distribution, 14
via a discretionary distribution module of the data 15
processing system, 16
of the allocated amount of each incentive fund 17
within the pool 18
by the corresponding merchant 19
to one or more selected customers. 20
21
The Examiner relies upon the following prior art: 22
Surpin US 2003/0163352 A1 Aug. 28, 2003 23
Merkley US 2004/0215556 A1 Oct. 28, 2004 24
Cooley US 2006/0026027 A1 Feb. 2, 2006 25
Claims 8-14 stand rejected under 35 U.S.C. § 101 as directed to non-26
statutory subject matter. 27
Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable 28
over Merkley, Surpin, and Cooley. 29
30
Appeal 2011-009411
Application 11/062,503
4

ISSUES 1
The issue of statutory subject matter turns on whether claim 8 is 2
directed to software per se. The issue of obviousness turns primarily on 3
whether the art applied describes the subject matter of independent claim 1. 4
5
FACTS PERTINENT TO THE ISSUE 6
The following enumerated Findings of Fact (FF) are believed to be 7
supported by a preponderance of the evidence. 8
Facts Related to Claim Construction 9
01. The disclosure states that “[t]he user interface 10 may comprise a 10
display (e.g., a touch screen or touch sensitive display), keyboard, 11
a keypad. a pointing device (e.g., a mouse or trackball). a disc 12
drive, an optical drive, a magnetic drive, a tape drive, or any 13
combination of the foregoing items.” (Spec., para. [0012]). 14
Facts Related to Appellants’ Disclosure 15
02. Appellants’ Specification describes allocating an amount of each 16
fund to a merchant based on factors such as the “available 17
resources of the sponsor, merchant rating criteria, and market 18
information on a customer’s business.” (Spec., para. [0026]). 19
03. Appellants’ Specification describes distributing funds within the 20
pool by a merchant to a customer based on “customer screening 21
data means at least one of historical transactions of individual 22
customers, a credit rating of the individual customers, a credit 23
score of the individual customers.” (Spec., para. [0029]). 24
Facts Related to the Prior Art 25
Merkley 26
Appeal 2011-009411
Application 11/062,503
5

04. Merkley is directed to a method and system for electronically 1
marketing an agricultural product based on retailer information 2
and product information through the use of a financial incentive 3
program associated with a transaction or purchase of the product. 4
(Merkley, paras. [0005], [0011], [0022]). 5
05. Merkley describes various financial incentives such as “loans, 6
rebates, discounts, promotional interest rates, zero percent interest 7
rate financing plans, credit extensions, financing plans, and other 8
lending or financial transactions” these with a corresponding 9
retailer. (Merkley, paras. [0011]; [0022]). 10
06. Merkley describes that program module 42 establishes available 11
programs for the retailer based on at least one of the retailer 12
information and product information. (Merkley, para. [0015]). 13
07. Merkley discloses an enrollment form with terms and conditions 14
which a retailer must agree to in order to become eligible and 15
participate as an offeror of financial incentive programs, in 16
accordance with a contractual agreement. (Merkley, para. 17
[0048]). 18
08. Merkley describes “the retailer may be distributor of a particular 19
line or brand of agricultural inputs or a retailer may have the 20
greatest sales volume for a particular line or brand of agricultural 21
inputs that effectively limits the available programs that the 22
retailer promotes.” (Merkley, para. [0026]). 23
24
Appeal 2011-009411
Application 11/062,503
6

Surpin 1
09. Surpin is directed to “a method for gainsharing of physician 2
services using a surplus allocation methodology for rewarding 3
physicians in relation to their performance.” (Surpin, Abs.). 4
10. Surpin discloses “best practice norms can be used in the surplus 5
allocation method for determining physician performance. The 6
incentive is established proportional to the relationship between a 7
physician’s individual performance and the best practice norm.” 8
(Surpin, para. [0020]). 9
10
ANALYSIS 11
Claims 8-14 stand rejected under 35 U.S.C. § 101 as directed to non-12
statutory subject matter. 13
We are persuaded by the Appellants’ arguments that claim 8 is 14
directed to statutory subject matter. Appellants contend that claim 8 recites 15
the fund definer, allocator, and designator in the electronic data processing 16
system, consistent with the system depicted by Figure 1. (Br. 10). 17
Appellants further contend that claim 8 recites a user interface which is 18
hardware and supports interaction with the data processing system 8. (Br. 19
11). We agree with the Appellants that the Specification describes hardware 20
as part of the user interface. (FF 1). Additionally, we agree with the 21
Appellants that claim 8 recites the fund definer, allocator, and designator are 22
in the data system of claim 1, and as such, instantiated within the data 23
processing hardware depicted in Figure 1. Accordingly, claim 8 recites 24
more than software per se. 25
26
Appeal 2011-009411
Application 11/062,503
7

Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Merkley, Surpin, and Cooley. 2
We are not persuaded by the Appellants’ argument that the references 3
fail to describe limitation [1] of establishing a pool of incentive funds that 4
are to be used by designated merchants to fund sponsored incentive 5
programs for the sale of a product. (Br. 12). Specifically, Appellants 6
contend that Surpin discloses the distribution of funds to physicians based 7
on physician performance, which is not the same as the discretionary 8
distribution of incentive funds from merchants to customers, as recited by 9
limitation [4] of claim 1. (Br. 13). The Appellants’ contention does not 10
persuade us of error on the part of the Examiner because the Appellants 11
respond to the rejection by attacking the references separately, even though 12
the rejection is based on the combined teachings of the references. 13
Nonobviousness cannot be established by attacking the references 14
individually when the rejection is predicated upon a combination of prior art 15
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 16
1986). 17
As the Examiner found, Merkley discloses each of the limitations of 18
claim 1 (FF 4-8), with the exception of establishing a pool and allocating 19
within the pool of limitation. (Ans. 5). While Surpin may disclose 20
distributing funds to physicians and not customers, the Examiner does not 21
rely on Surpin for such a teaching, but rather relies on Surpin to teach a 22
surplus allocation methodology for rewarding physicians in relation to their 23
performance. (Ans. 5; FF 9, 10). 24
Appellants next argue that Surpin is non-analogous art because it is in 25
the “unrelated field of providing incentives to medical professionals, which 26
is not relevant to the applicant’s field of providing incentive funds to 27
Appeal 2011-009411
Application 11/062,503
8

facilitate merchant transactions.” (Br. 13). We disagree with the 1
Appellants. 2
The analogous-art test requires that the Board show that a 3
reference is either in the field of the applicant’s endeavor or is 4
reasonably pertinent to the problem with which the inventor 5
was concerned in order to rely on that reference as a basis for 6
rejection. References are selected as being reasonably pertinent 7
to the problem based on the judgment of a person having 8
ordinary skill in the art. 9
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). As the Appellants have 10
pointed out, both Surpin and the claimed invention relate to incentives. 11
Given this similar subject matter, we find Surpin is solving problems not so 12
different than that of the claimed invention such that one of ordinary skill in 13
the art would not be led to combine the references and reach the claimed 14
invention. 15
We are also not persuaded of error by the Appellants’ argument that 16
there is no teaching, suggestion, or motivation to combine the prior art 17
references. (Br. 13). Contrary to the Appellants’ argument, we find that the 18
Examiner has provided an articulated reasoning with some rational 19
underpinning to support the legal conclusion of obviousness (see KSR Int’l 20
Co. v. Teleflex, Inc., 550 US 398, 418 (2007) (citing In re Kahn, 441 F.3d at 21
988). Specifically, the Examiner’s rationale is based on allowing both 22
customers and merchants to participate in an incentive program without 23
requiring addition registration. (Ans. 6). We note that the Appellants’ 24
arguments do not specifically mention or contest the substance of the 25
Examiner’s rationale. 26
Appellants next argue that Merkley fails to disclose allocating an 27
amount of each incentive fund within the pool for a corresponding 28
designated merchant subject to compliance rules of limitation [2] because 29
Appeal 2011-009411
Application 11/062,503
9

“Merkley makes no reference to the ‘pool’ of funds, and; hence, cannot 1
allocate any funds from a nonexistent pool.” (Br. 14). However, 2
Appellants’ contention does not persuade us of error on the part of the 3
Examiner because Merkley is not cited for a “‘pool’ of funds.” Surpin is 4
cited for disclosing the allocation of surplus funds. See In re Merck & Co., 5
Inc., 800 F.2d at 1097. Equally unpersuasive is Appellants’ argument that 6
Surpin fails to disclose “violating compliance rules or any associated 7
reallocation of funds for noncompliance,” as the Examiner relies on Merkley 8
such a teaching. (Ans. 5; FF 7). 9
Lastly, we are not persuaded by the Appellants’ argument that the 10
references fail to disclose “discretionary distribution of the allocated 11
amount of each incentive fund within the pool to customers of 12
merchants,” as recited by claim 1. (Br. 15). Specifically, Appellants 13
contend that Surpin merely distributes funds without any merchant 14
discretion. (Br. 15). Initially, we note that claim 1 recites “supporting 15
discretionary distribution,” and as such, does not necessarily require there to 16
be discretionary distribution. Even so, Surpin describes allocating funds 17
based on performance (FF 10), which we find corresponds to a discretionary 18
distribution, under a broadest reasonable interpretation commensurate with 19
the Specification. That is, the distribution from the surplus pool in Surpin is 20
based on criteria similar to the to the “customer screening data” utilized by 21
the “discretionary distribution module” of claim 1. (FF 3). 22
The remaining claims 2-16 are argued on the basis of the patentability of 23
claim 1. 24
CONCLUSIONS OF LAW 25
The rejection of claims 8-14 under 35 U.S.C. § 101 as directed to non-26
statutory subject matter is improper. 27
Appeal 2011-009411
Application 11/062,503
10

The rejection of claims 1-16 under 35 U.S.C. § 103(a) as unpatentable 1
over Merkley, Surpin, and Cooley is proper. 2
3
DECISION 4
The rejection of claims 1-16 is affirmed. 5
No time period for taking any subsequent action in connection with 6
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 7
§ 1.136(a)(1)(iv). 8
9
AFFIRMED 10
11
12
13
14
hh 15