Ex Parte Quinlan et al

Board of Patent Appeals and Interferences

May 18, 2012

10098948 (B.P.A.I. May. 18, 2012)

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
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Application 10/098,948

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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).

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(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.
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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.)

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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
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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.
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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).
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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
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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

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