Ex Parte Quinlan et alDownload PDFBoard of Patent Appeals and InterferencesMay 18, 201210098948 (B.P.A.I. May. 18, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/098,948 03/15/2002 Chris Quinlan D&Q-101US 6916 31344 7590 05/18/2012 RATNERPRESTIA P.O. BOX 1596 WILMINGTON, DE 19899 EXAMINER LASTRA, DANIEL ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 05/18/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte CHRIS QUINLAN, EDWARD A. DEVLIN, and JONATHAN W. HAYWARD ___________ Appeal 2011-004499 Application 10/098,948 Technology Center 3600 ____________ Before HUBERT C. LORIN, MEREDITH C. PETRAVICK and MICHAEL W. KIM, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004499 Application 10/098,948 2 STATEMENT OF THE CASE Chris Quinlan et al., (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 37-43. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on May 3, 2012. SUMMARY OF DECISION We AFFIRM-IN-PART. 1 THE INVENTION This invention is a “method for electronically redeeming product marketing rebates.” Spec. 1:9-11. Claim 37, reproduced below, is illustrative of the subject matter on appeal. 37. A method of processing a rebate claim from a purchaser purchasing one or more products from a marketing entity in a single purchase transaction, in which one or more of the products purchased is associated with a promotional offer, comprising the steps of: (a) receiving at a processing site from a supplier of the product information relating to the promotions associated with such products; (b) assigning at the point-of-sale of a purchase transaction, a unique transaction identifier for the transaction and providing the transaction identifier to the customer; 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Jul. 20, 2010) and Reply Brief (“Reply Br.,” filed Dec. 6, 2010), and the Examiner’s Answer (“Ans.,” mailed Oct. 7, 2010). Appeal 2011-004499 Application 10/098,948 3 (c) receiving at the processing site from the marketing entity information including the unique transaction identifier and an identification of the products purchased in that transaction; (d) receiving at the processing site from the purchaser subsequent to the completion of the purchase transaction the unique transaction identifier, such identifier being independent of the identification of the product purchased in such purchase transaction; (e) using at the processing site the unique transaction identifier provided by the purchaser to access the information provided by the supplier and the marketing entity to ascertain the applicability of promotions to the goods in the identified purchase transaction and the value associated therewith; and (f) providing the purchaser with the ascertained value subsequent to the completion of the purchase transaction wherein the product identified by the marketing entity includes a product code for each product purchased; and wherein the unique transaction identifier is assigned by the marketing entity by a point of sale processor. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Jacoves US 2001/0018664 A1 Aug. 30, 2001 The following rejection is before us for review: 1. Claims 37-43 are rejected under 35 U.S.C. §102(e) as being anticipated by Jacoves. Appeal 2011-004499 Application 10/098,948 4 ISSUES The first issue is whether claim 37 is anticipated under 35 U.S.C. §102(e) by Jacoves. Specifically, the issue is whether Jacoves anticipates step (e) recited in claim 37. The rejection of claims 38, 40, 41, and 43 under 35 U.S.C. §102(e) as being anticipated by Jacoves also turns on this issue. The second issue is whether claim 39 is anticipated under 35 U.S.C. §102(e) by Jacoves. Specifically, the issue is whether Jacoves anticipates step (h). The third issue is whether claim 42 is anticipated under 35 U.S.C. §102(e) by Jacoves. Specifically, the issue is whether Jacoves describes that “a plurality of unique transaction identifiers is received from the purchaser in a single electronic submission by the customer.” FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. The Specification does not include lexicographic definition of “aggregate.” 2. A definition of the verb “aggregate” is “to collect or gather into a mass or whole.” See Merriam-Webster’s Collegiate Dictionary (10th Ed. 1996.) Appeal 2011-004499 Application 10/098,948 5 ANALYSIS Claims 37, 40, 41, and 43 The Appellants argue claims 37, 40, 41, and 43 as a group. App. Br. 11-15. We select claim 37 as the representative claim for this group, and the remaining claims 40, 41, and 43 stand or fall with claim 37. 37 C.F.R. § 41.37(c)(1)(vii) (2010). The Appellants and the Examiner dispute whether Jacoves anticipates step (e) recited in claim 37. App. Br. 11-15 and 19-20, Reply Br. 3-5 and Ans. 12-16. Specifically, the Appellants argue that Jacoves does not describe that “this UID [i.e., the claimed unique transaction identifier or UTI] is used to ascertain the applicability of promotions to the products purchased in the purchase transaction” (App. Br. 15) and that “Jacoves does not disclose the use of product information to validate the rebate” (App. Br. 16). The crux of the Appellants argument seems to be that claim 37’s step (e) requires using the UTI in the matching of the information provided by the supplier relating to the promotion (e.g., the promotion requirements) to the information provided by the marketing entity (e.g., the listing of purchased products) to determine if the customer’s purchases meet the promotion’s requirements, and that claim 37’s step (d) requires that the matching occurs after the UID is received from the purchaser. See App. Br. 11-15 and Reply Br. 3-5. We are not persuaded by the Appellants’ argument that the Examiner erred in rejecting claim 37 as anticipated by Jacoves, because the Appellants’ argument is not commensurate with the scope of the claim. Claim 37’s step (e) recites “using at the processing site the unique transaction identifier provided by the purchaser to access the information Appeal 2011-004499 Application 10/098,948 6 provided by the supplier and the marketing entity to ascertain the applicability of promotions to the goods in the identified purchase transaction and the value associated therewith.” (Emphasis added). Claim 37’s step (e) does not require “matching” or “validating,” as the Appellants argue, but more broadly more recites using the UTI to access the claimed information to ascertain the applicability. Claim 37 does not preclude ascertaining applicability by ascertaining the result of a previous matching or validating. Accordingly, we affirm the rejection of claims 37, 40, 41, and 43 under 35 U.S.C. § 102(e) as being anticipated by Jacoves. Claim 38 The Appellants also argue that “there is no disclosure that this UID is used to ascertain the applicability of promotions to the products purchased in the purchase transaction as recited in independent claims . . . 38” (App. Br. 15). However, no such limitation appears in claim 38. Step (e) of claim 38 more broadly recites “accessing the data record at the processing site by the unique transaction identifier provided by the purchaser to identify the promotions associated with the purchase products.” This limitation differs in scope and does not recite ascertaining the applicability of promotions. The Appellants provide no specific arguments directed to step (e) actually recited in claim 38 and, therefore, we are not persuaded by the Appellants’ arguments that the Examiner erred in rejecting claim 38. Further, in as much as the Appellants’ arguments, discussed above with regards to claim 37, apply to the rejection of claim 38, we find them unpersuasive as discussed above. Appeal 2011-004499 Application 10/098,948 7 Accordingly, we affirm the rejection of claim 38 under 35 U.S.C. § 102(e) as being anticipated by Jacoves. Claim 39 The Appellants and the Examiner dispute whether Jacoves anticipates claim 39’s step “(h) aggregating the value associated with the promotions in both purchase transactions prior to the transfer of step (f).” App. Br. 18, Reply Br. 5-7 and Ans. 16-17. We are not persuaded by the Appellants’ argument that the Examiner erred in rejecting claim 39 as anticipated by Jacoves, because the Appellants’ argument is again not commensurate with the scope of the claim. Initially, we note that claim 39 depends from claim 38 and not claim 37, and therefore, does not incorporate claim 37’s requirement of using the transaction identifier to ascertain the applicability of promotions (see supra 6-7) as the Appellants argue (see Reply Br. 5). Further, other than the aggregating being “prior to the transfer of step (f)”, the timing of the aggregating is not limited to when it occurs. For example, the aggregating could occur shortly after the purchase transaction but prior to the UTI being received from the purchaser. Nor does the claim limit how the values associated with the promotions in each purchase are aggregated (e.g., by adding the values) or that it is this aggregated value that is the value transferred in step (f)2. Giving step (h) the broadest reasonable interpretation in light of the Specification, we agree with the Examiner (Ans. 2 We note that claim 38’s step (f) recites “transferring the value associated with all of the promotions in the single purchase transaction.” (Emphasis added). Appeal 2011-004499 Application 10/098,948 8 7) that step (h) reads on Jacoves’s description of the creation of the potential file depicted in Figure 16. The potential file aggregates (i.e. collects, see FF 1-2) the values associated with multiple purchase transaction into the file. See Jacoves para. [0066] and Fig. 16. Accordingly, the rejection of claim 39 under 35 U.S.C. § 102(e) as being anticipated by Jacoves is affirmed. Claim 42 The Appellants and the Examiner dispute whether Jacoves anticipates claim 42’s limitation “wherein a plurality of unique transaction identifiers is received from the purchaser in a single electronic submission by the customer.” App. Br. 18-19, Reply Br. 6-7, and Ans. 17-18. Specifically, the Appellants argue that Jacoves does not disclose “how to scan a plurality of redemption slips at said fuel retailer POPS terminal.” Reply Br. 6. We are persuaded by the Appellants’ argument that the Examiner erred in rejecting claim 39 as anticipated by Jacoves. Citing paragraph [0045] (Ans. 8) and paragraph [0042] (Ans. 17), the Examiner asserts that Jacoves describes a customer scanning a plurality of redemption slips at a fuel retail POS in a purchase transaction and asserts that this reads on claim 42’s limitation. Ans. 17-18. However, we see nothing in Jacoves’ paragraphs [0042] or [0045] which describe a method that includes a customer scanning multiple redemption slips during a purchase transaction. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “If it is necessary to reach beyond the boundaries of a Appeal 2011-004499 Application 10/098,948 9 single reference to provide missing disclosure of the claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousness.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991). Claim 42 was rejected as being anticipated by Jacoves under § 102(e) and not as being rendered obvious by Jacoves under § 103(a). Therefore, we find that the Examiner has not established a prima facie showing of anticipation and, accordingly, the rejection of claim 42 under 35 U.S.C. § 102(e) as being anticipated by Jacoves is reversed. DECISION The decision of the Examiner to reject claims 37-41 and 43 is affirmed and to reject claim 42 is reversed. 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. § 1.136(a)(1)(iv) (2010). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation