Ex Parte Randall et al

Board of Patent Appeals and Interferences

Jun 16, 2010

10356368 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte STEVE RANDALL, COLLEEN GEORGE, and 8
KENNETH ALGIENE 9
___________ 10
11
Appeal 2009-013548 12
Application 10/356,368 13
Technology Center 3600 14
___________ 15
16
Decided: June 17, 2010 17
___________ 18
19
Before HUBERT C. LORIN, ANTON W. FETTING, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
and 24
REMAND TO EXAMINER 25
26
Appeal 2009-013548
Application 10/356,368

2
STATEMENT OF THE CASE 1
Steve Randall, Colleen George, and Kenneth Algiene (Appellants) seek 2
review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-18 and 3
34-44, the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM and REMAND. 8
THE INVENTION 9
The Appellants invented a method and system for reconciliation of 10
discount certificates (Specification ¶ 0002). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A method for processing a plurality of coupons, the method 15
comprising: 16
[1] receiving at a host computer transaction information for 17
each of the plurality of coupons, the transaction information 18
identifying a discount amount applied to a sale of an item by a 19
retailer on behalf of an issuer of a corresponding discount, 20

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 17, 2008) , the Examiner’s Answer (“Ans.,” mailed
February 10, 2009), and the Final Rejection (“Final Rej.,” mailed July 18,
2008).
Appeal 2009-013548
Application 10/356,368

3
wherein the plurality of coupons are configured to allow the 1
item to be purchased at the discounted amount when the sale of 2
the item occurs; 3
[2] determining an amount due from each issuer in 4
accordance with the transaction information for the plurality of 5
coupons; 6
[3] determining an amount due to each retailer in accordance 7
with the transaction information for the plurality of coupons; 8
and 9
[4] transmitting requests to one or more financial institutions 10
to transfer funds in accordance with the determined amounts 11
due from each issuer and to each retailer. 12
13
THE REJECTIONS 14
The Examiner relies upon the following prior art: 15
Packes, Jr. et al US 7,006,983 B1 Feb. 28, 2006
Cohen US 2003/0097331 A1 May 22, 2003
Myers US 2005/0033639 A1 Feb. 10, 2005
16
Claims 1-9, 13-15, 17, 34-38, 42, and 44 stand provisionally rejected 17
under the doctrine of obviousness-type double patenting. 18
Claims 1-9, 13-15, 17, 34-38, 42, and 44 stand rejected under 35 U.S.C. 19
§ 102(e) as being anticipated by Packes. 20
Claims 16, 18, and 43 stand rejected under 35 U.S.C. § 103(a) as being 21
unpatentable over Packes. 22
Claims 10 and 39 stand rejected under 35 U.S.C. § 103(a) as 23
unpatentable over Packes and Myers. 24
Appeal 2009-013548
Application 10/356,368

4
Claims 11, 12, 40, and 41 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Packes and Cohen. 2
3
ISSUES 4
The issue of whether the Examiner erred in rejecting claims 1-9, 13-15, 5
17, 34-38, 42, and 44 under the doctrine of obviousness-type double 6
patenting turns on whether the Examiner has responded to the terminal 7
disclaimer filed by the Appellants. 8
The issue of whether the Examiner erred in rejecting claims 1-9, 13-15, 9
17, 34-38, 42, and 44 under 35 U.S.C. § 102(e) as being anticipated by 10
Packes turns on whether Packes describes requesting a financial institution 11
to transfer funds. 12
The issue of whether the Examiner erred in rejecting claims 16, 18, and 13
43 under 35 U.S.C. § 103(a) as unpatentable over Packes turns on whether 14
the Appellants’ arguments in support of claim 1 are found persuasive. 15
The issue of whether the Examiner erred in rejecting claims 10 and 39 16
under 35 U.S.C. § 103(a) as unpatentable over Packes and Myers turns on 17
whether the Appellants’ arguments in support of claim 1 are found 18
persuasive. 19
The issue of whether the Examiner erred in rejecting claims 11, 12, 40, 20
and 41 under 35 U.S.C. § 103(a) as unpatentable over Packes and Cohen 21
turns on whether the Appellants’ arguments in support of claim 1 are found 22
persuasive. 23
Appeal 2009-013548
Application 10/356,368

5
FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Packes 5
01. Packes is directed to a method and apparatus for processing 6
rebates (Packes 1:6-8). 7
02. Packes specifically describes the issuance of a point of sale 8
(POS) rebate, where a POS rebate is a manufacturer mail-in rebate 9
to redeem at the POS (Packes 2:5-8). The method begins by 10
identifying a product for purchase, by scanning a universal 11
product code or any other way to identify a product (Packes 8:15-12
33). Once the product is identified, the system determines 13
whether the product has an associated manufacturer rebate 14
(Packes 8:49-56). This can be done by a POS terminal accessing a 15
server (Packes 9:2-7). If the product has a rebate, the terms and 16
conditions, including the value of the rebate, are determined by 17
the system (Packes 8:56-60). A retailer can retain the ability to 18
adjust the rebate value during check out to make the rebate offer 19
more attractive for a customer (Packes 10:52-65). Additionally, a 20
manufacturer rebate coupon may discount a certain product by 21
$10 and the retailer may present the consumer with an option to 22
take a product in lieu of the $10 rebate (Packes 11:6-11). Another 23
condition that may be applied is that a consumer may be required 24
to surrender the mail-in rebate and proof of purchase to redeem a 25
Appeal 2009-013548
Application 10/356,368

6
POS rebate (Packes 10:14-18). This is done to prevent a 1
consumer from redeeming both a mail-in and POS rebate and also 2
prevents a manufacturer from issuing a manufacturer rebate check 3
to that individual (Packes 10:22-27). 4
03. The system further determines a retailer reimbursement value 5
(Packes 17:17-19). The redemption database can be queried 6
periodically to determine the value of all issued POS rebates per 7
manufacturer and based on the total value, each manufacturer 8
would then determine the retailer reimbursement value to be 9
credited to the retailer (Packes 17:27-34). Alternatively, the 10
retailer is only reimbursed for the value of the POS rebates that 11
are actually redeemed by consumers (Packes 17:35-38). The 12
retailer informs the manufacturer of the value of the rebates the 13
consumers redeemed and the manufacturer credits the retailer this 14
amount (Packes 17:38-44). 15
Cohen 16
04. Cohen is directed to a system for banking and electronic 17
commerce and e-finance products and services (Cohen ¶ 0003). 18
Myers 19
05. Myers is directed to a method and system involving monitoring 20
and making multi-vendor transactions based on near-immediate 21
rebate detection (Myers ¶ 0018). 22
Appeal 2009-013548
Application 10/356,368

7
ANALYSIS 1
Claims 1-9, 13-15, 17, 34-38, 42, and 44 rejected under 35 U.S.C. § 2
102(e) as being anticipated by Packes 3
The Appellants contend that Packes fails to describe limitation [4] of 4
claim 1 (App. Br. 7-10). We disagree with the Appellants. Limitation [4] of 5
claim 1 requires transmitting requests to a financial institution to transfer 6
funds in accordance with the amounts due from each issuer and to each 7
retailer. As such, limitation [4] specifically requires the fund transferring 8
step to be performed by a financial institution. 9
Packes describes a method for issuing point of sale (POS) rebates for 10
products that have an associated rebate (FF 02). Packes describes several 11
terms and conditions that can be applied to the POS rebates to protect 12
manufacturers from unnecessarily issuing rebate checks (FF 02). Packes 13
further describes the reimbursement of retailers by manufacturers for rebates 14
the retailer has honored to consumers (FF 03). Packes proposes several 15
schemes that can be employed to reimburse the retailers (FF 03). That is, 16
Packes describes transferring funds in accordance with the amount due to the 17
retailer based on the value of redeemed rebates and further describes the use 18
of a manufacturer check. The use of a manufacturer check indicates the 19
practice of use of a financial institution in the transfer of funds. Since 20
Packes explicitly describes the transfer of funds to a retailer and the practice 21
of using a financial institution for funds transfer, the use of such an 22
institution for transfers to the retailer must be within the scope of Packes 23
disclosure, and the Appellants’ argument is not found persuasive. 24
Appeal 2009-013548
Application 10/356,368

8
The Appellants further contend that the description of a rebate coupon in 1
Packes fails to describe the claimed coupon (App. Br. 10). The Appellants 2
specifically argue that Packes requires “redeeming” a rebate, whereas the 3
coupon in the claimed invention only needs to be presented (App. Br. 10). 4
We disagree with the Appellants. Packes describes that a consumer may be 5
offered a manufacturer rebate coupon by a retailer if the consumer purchases 6
an item that has a rebate associated with it (FF 02). The retailer is further 7
enabled to adjust the associated value of the rebate coupon or offer the 8
customer another product in lieu of the rebate coupon (FF 02). All of these 9
steps occur at the time of check out or at the point of sale (FF 02). That is, a 10
customer merely presents items for purchase, is issued a rebate coupon, and 11
can redeem the coupon or offer during check out. Because all of these steps 12
occur during check out, there is no functional difference between presenting 13
a coupon in the claimed invention and redeeming a rebate coupon as 14
described by Packes. In other words, all of the same steps are taken in 15
presenting a coupon as are taken in redeeming a rebate coupon in Packes. 16
As such, the Appellants’ argument is not found persuasive. 17
The Examiner did not err in rejecting claims 1-9, 13-15, 17, 34-38, 42, 18
and 44 under 35 U.S.C. § 102(e) as being anticipated by Packes. 19
Claims 16, 18, and 43 rejected under 35 U.S.C. § 103(a) as being 20
unpatentable over Packes 21
The Appellants contend that Packes fails to describe limitation [4] and a 22
coupon of claim 1, as argued supra, and fails to describe dependent claims 23
16, 18, and 43 because these dependent claims incorporate this same 24
limitation from independent claims 1 and 34 (App. Br. 11). We disagree 25
Appeal 2009-013548
Application 10/356,368

9
with the Appellants. The Appellants’ arguments were not found persuasive 1
supra and are not found persuasive here for the same reasons. 2
Claims 10 and 39 rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Packes and Myers 4
The Appellants contend that Packes fails to describe limitation [4] and a 5
coupon of claim 1, as argued supra, and fails to describe dependent claims 6
10 and 39 because these dependent claims incorporate this same limitation 7
from independent claims 1 and 34 (App. Br. 11). We disagree with the 8
Appellants. The Appellants’ arguments were not found persuasive supra 9
and are not found persuasive here for the same reasons. 10
Claims 11, 12, 40, and 41 rejected under 35 U.S.C. § 103(a) as 11
unpatentable over Packs and Cohen 12
The Appellants contend that Packes fails to describe limitation [4] and a 13
coupon of claim 1, as argued supra, and fails to describe dependent claims 14
11, 12, 40, and 41 because these dependent claims incorporate this same 15
limitation from independent claims 1 and 34 (App. Br. 11). We disagree 16
with the Appellants. The Appellants’ arguments were not found persuasive 17
supra and are not found persuasive here for the same reasons. 18
The Examiner did not err in rejecting claims 11, 12, 40, and 41 under 35 19
U.S.C. § 103(a) as unpatentable over Packes and Cohen. 20
21
CONCLUSIONS OF LAW 22
The Examiner did not err in rejecting claims 1-9, 13-15, 17, 34-38, 42, 23
and 44 under 35 U.S.C. § 102(e) as being anticipated by Packes. 24
Appeal 2009-013548
Application 10/356,368

10
The Examiner did not err in rejecting claims 16, 18, and 43 under 35 1
U.S.C. § 103(a) as unpatentable over Packes. 2
The Examiner did not err in rejecting claims 10 and 39 under 35 U.S.C. 3
§ 103(a) as unpatentable over Packes and Myers. 4
The Examiner did not err in rejecting claims 11, 12, 40, and 41 under 35 5
U.S.C. § 103(a) as unpatentable over Packes and Cohen. 6
7
REMAND 8
The Examiner provisionally rejected claims 13-15, 17, 34-38, 42, and 44 9
under the doctrine of obviousness-type double patenting in view of 10
copending application 10/238,044. The Appellants subsequently filed a 11
terminal disclaimer on September 25, 2008. The Examiner has not 12
responded to the submission of the terminal disclaimer. As such, we remand 13
to the Examiner to consider whether the filing of the terminal disclaimer 14
overcomes the provisional nonstatutory obviousness-type double patenting 15
rejection. 16
17
DECISION 18
To summarize, our decision is as follows: 19
• The obviousness-type double patenting rejection is remanded to the 20
Examiner to consider whether the terminal disclaimer overcomes the 21
provisional rejection of claims 1-9, 13-15, 17, 34-38, 42, and 44 under 22
the doctrine of obviousness-type double patenting. 23
Appeal 2009-013548
Application 10/356,368

11
• The rejection of claims 1-9, 13-15, 17, 34-38, 42, and 44 under 35 1
U.S.C. § 102(e) as being anticipated by Packes is sustained. 2
• The rejection of claims 16, 18, and 43 under 35 U.S.C. § 103(a) as 3
unpatentable over Packes is sustained. 4
• The rejection of claims 10 and 39 under 35 U.S.C. § 103(a) as 5
unpatentable over Packes and Myers is sustained. 6
• The rejection of claims 11, 12, 40, and 41 under 35 U.S.C. § 103(a) as 7
unpatentable over Packes and Cohen is sustained. 8
9
No time period for taking any subsequent action in connection with this 10
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 11
12
AFFIRMED and REMANDED 13
14
15
16
mls 17
18
TOWNSEND AND TOWNSEND AND CREW, LLP 19
TWO EMBARCADERO CENTER 20
EIGHTH FLOOR 21
SAN FRANCISCO, CA 94111-3834 22