Ex Parte Prorock

Board of Patent Appeals and Interferences

Feb 23, 2006

09943941 (B.P.A.I. Feb. 23, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Thomas Joseph Prorock
____________
Appeal No. 2005-2468
Application No. 09/943,941
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ON BRIEF
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Before BARRETT, DIXON, and NAPPI, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4 and
9-14, which are all of the claims pending in this application.
We AFFIRM.
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BACKGROUND
Appellant's invention relates to a method and system for providing incentive
award information to a customer. A copy of the representative claim 1 under appeal is
reproduced below.
1. A method for providing incentive award information to a customer,
said method comprising:
obtaining customer information of a customer from an input device;
transmitting said customer information to a remotely located host
computer, wherein said host computer locates incentive award information
associated with said customer information;
in response to the receipt of a scanned product code at said input device,
transmitting said scanned product code from said input device to said host
computer;
determining within said host computer whether or not immediate purchase
of a product associated with said scanned product code qualifies said customer
for an award based on said located incentive award information;
in a determination that an immediate purchase of a product associated
with said scanned product code qualifies said customer for an award,
transmitting information related to an opportunity for receiving said award from
said host computer to said input device and displaying said information related to
said opportunity for receiving said award on said input device.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Sloane 5,918, 211 Jun. 29, 1999
Harms et al. (Harms) 6,070,147 May 30, 2000
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Claims 1-4 and 9-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sloane in view of Harms.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the answer
(mailed Jul. 1, 2005) for the examiner's reasoning in support of the rejections, and to the
brief (filed Apr. 13, 2005) and reply brief (filed Jul. 13, 2005) for appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Only those arguments actually made by appellants have been considered in this
decision. Arguments that appellants could have made but chose not to make in the
brief have not been considered. We deem such arguments to be waived by appellants
[see 37 CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing 37 CFR §
1.192(a)].
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35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge generally available to
one of ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103
must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against
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employing hindsight by using the appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988).
When determining obviousness, “the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in
the prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’” In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). “Mere denials and conclusory statements, however, are not sufficient to establish
a genuine issue of material fact.” Dembiczak, 175 F.3d at 999-1000,
50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d
1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations as recited in independent claim 1. We find that appellant argues the
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limitations of independent claims 1 and 10 together maintaining that Sloane does not
teach or suggest the claimed determining step. (Brief at page 5.) Since appellant does
not set forth any separate arguments for patentability, we will group all of the claims as
standing or falling together with independent claim 1.
Appellant argues that in contrast to the teachings of Sloane, the claimed
determining step determines whether or not an immediate purchase of a product will
qualify the customer for an award based on the located incentive award information and
that the determining step determines whether to send an alert to a customer or not by
associating the customer’s scanned product with the located incentive award
information of the consumer wherein the determining step is not based on the
consumer’s scanned product alone. (Brief at page 5.) Here, we do not find that
appellant’s argument is commensurate in scope with the language of independent claim
1. From the express limitations of independent claim 1, we find that Sloane teaches
the recited determining step and transmitting information relating to an opportunity for
receiving an award and display of the information to the consumer. (See Sloane at
column 8 and Figures 8(a)-(c).) From our review of the instant claim language and the
corresponding disclosure, we find no express or implied limitation concerning the
content incentive award or the incentive award information. Therefore,
we give this limitation it’s broadest reasonable interpretation and find this to read on the
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various incentives stored and transmitted to the user of the scanner in Sloane. Sloane
discloses various embodiments including an initial disclosure of incentives depending on
the consumer’s history. (See Sloane at column 9 and Figure 10.) Sloane discloses
various embodiments including transmission of additional promotional messages to the
consumer based upon the product bar code information just received, messages that a
competitive product of other products in the same product category as the scanned
product, or a message that a discount is offered if a certain quantity of that product is
purchased or a message that a discount is offered on a complimentary or related
product. Moreover Sloane also discloses that the consumer may receive an immediate
discount, or electronic credits or other promotional discounts that can be redeemed in
subsequent visits to the store. (See Sloane at column 8 and Figures 8(a)-(c) and 9.)
While we agree with appellant that Sloane is related to the incentive awards generally
related to a specific product being scanned, we find that the instant claim language is
broad enough to read on the determination and transmission taught by Sloane.
Therefore, we do not find the argument persuasive.
Appellant argues that the determining step is not taught by Harms. (Brief at page
6.) We agree with appellant, but find that the examiner relies upon the teachings of
Sloane for the determining and relies upon the teachings of Harms for the loyalty
points and awards at a particular plateau. (Answer at pages 3-4.) We find that Sloane
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alone teaches the invention recited in independent claim 1 as discussed above and that
the teachings of Harms further teaches variations in awards and incentives that may be
used to increase purchases.
Appellant argues that the examiner has not provided support for the examiner’s
assertion at page 5 of the answer that Sloane presents the user with status information
regarding current purchases plus previous store purchases. (Reply Brief at page 2.)
We find that at page 5 of the answer that the examiner maintains that Harms is relied
upon to teach customer account information. While we agree that Harms does teach
maintaining account information, we find that Sloane similarly teaches maintaining a
history of purchases for the year to date at column 6, line 64 - column 7, line 3 and
suggests the well known use of frequent shopping cards to identify the customer at
column 5, lines 49-51. Therefore, we do not find the argument persuasive and cannot
agree with appellant that the examiner’s assertion is beyond the scope of Sloane’s
invention. Appellant again argues that Sloane does not teach or suggest the last two
steps of the claimed method. (Reply Brief at page 2.) As discussed above, we
disagree with appellant and find that Sloane teaches and fairly suggests these
limitations. Therefore, we do not find the argument persuasive.
Appellant argues that there is no motivation to combine the teachings of Sloane
and Harms. (Brief at page 6.) The examiner disagrees and maintains that both
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teachings are directed to “loyalty programs and are strongly related.” (Answer at page
6.) We agree with the examiner that both references are related to aspects of
marketing and influencing and potentially altering a consumer’s purchasing and that it
would have been obvious to one of ordinary skill in the art to have looked to combine
the two teachings. Appellant argues that Harms is related to different aspects of retail
sales and there is no motivation for the combination. (Reply Brief at page 2.) We
disagree and find that Harms discloses the use of real-time inter-activity at column 9,
lines 16-17 and printing a balance on a receipt, issuing a reward at the point of sale by
the retailer and use of prior purchases and purchase patterns at column 11, lines 8-60.
As discussed above, we do not find this argument persuasive, and we will sustain the
rejection of independent claim 1 and its dependent claims. Similarly, we will sustain the
rejection of independent claim 10 and its dependent claims since no separate argument
for patentability as been set forth.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-4 and 9-14 under
35 U.S.C. § 103 is AFFIRMED.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
Appeal No. 2005-2468
Application No. 09/943,941
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