10213955 (B.P.A.I. Sep. 9, 2010)

Ex Parte Sheddan et al

Board of Patent Appeals and InterferencesSep 9, 2010

10213955 (B.P.A.I. Sep. 9, 2010)

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. 10/213,955 08/06/2002 Samuel A. Sheddan 28177.00 4906 22465 7590 09/09/2010 PITTS AND BRITTIAN P C P O BOX 51295 KNOXVILLE, TN 37950-1295 EXAMINER GARG, YOGESH C ART UNIT PAPER NUMBER 3625 MAIL DATE DELIVERY MODE 09/09/2010 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 BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte SAMUEL A. SHEDDAN and 8 MICHAEL S. WARD 9 ___________ 10 11 Appeal 2009-005548 12 Application 10/213,955 13 Technology Center 3600 14 ___________ 15 16 17 Before HUBERT C. LORIN, ANTON W. FETTING, and 18 BIBHU R. MOHANTY, Administrative Patent Judges. 19 FETTING, Administrative Patent Judge. 20 DECISION ON APPEAL1 21 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-005548 Application 10/213,955 2 STATEMENT OF THE CASE 1 Samuel A. Sheddan and Michael S. Ward (Appellants) seek review 2 under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-14, the only 3 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 DECISION2 7 We AFFIRM. 8 THE INVENTION 9 The Appellants invented a way of making coupon books (Specification ¶ 10 0003). 11 An understanding of the invention can be derived from a reading of 12 exemplary claim 1, which is reproduced below. 13 1. A method for customizing and ordering coupon books on-14 line, said method comprising the steps of: 15 a) entering regional information at a client by a participant; 16 b) displaying a plurality of regional specific coupon 17 information at said client; 18 c) at said client, said participant selecting a plurality of coupons 19 to include in a plurality of customized coupon books; 20 2 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed March 17, 2008) and the Examiner’s Answer (“Ans.,” mailed May 28, 2008). Appeal 2009-005548 Application 10/213,955 3 d) at said client, said participant ordering said plurality of 1 customized coupon books; 2 e) printing said plurality of customized coupon books; and 3 f) delivering said plurality of customized coupon books. 4 5 THE REJECTION 6 The Examiner relies upon the following prior art: 7 Simpson US 2001/0049627 A1 Dec. 6, 2001 Entertainment webpage, http://www.entertainment.com (last visited on 8 11/28/99). 9 Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable 10 over Entertainment and Simpson. 11 ISSUES 12 The issue of whether the Examiner erred in rejecting claims 1-14 under 13 35 U.S.C. § 103(a) as unpatentable over Entertainment and Simpson turns 14 on whether it was predictable to have a participant select a plurality of 15 coupons to include in a plurality of customized coupon books. 16 FACTS PERTINENT TO THE ISSUES 17 The following enumerated Findings of Fact (FF) are believed to be 18 supported by a preponderance of the evidence. 19 Facts Related to the Prior Art 20 Entertainment 21 01. Entertainment is directed to describing a coupon book filled 22 with coupons for saving on purchases. Entertainment 4. 23 Appeal 2009-005548 Application 10/213,955 4 02. A user selects a book based on the geographic area the user 1 desires to use coupons in. This is done by entering geographic 2 information upon which coupon information specific to that 3 geographic information is displayed. Entertainment 3-4. 4 03. The customer then orders books of coupons which are printed 5 in coupon books. The coupon books are delivered to the 6 customer. Entertainment 3-4. 7 Simpson 8 04. Simpson is directed to electronic dissemination of consumer 9 coupons, and a control program limiting a user's access to only 10 such coupons as have been authorized. Simpson ¶ 0003. 11 05. Simpson describes a step in its process of disseminating 12 consumer coupons in which a user browses, selects, and prints 13 specific coupons for use at regional retail locations. Simpson Fig. 14 1:140. 15 06. Simpson describes how, in order to provide a customization of 16 a coupon collection, a user may select a "prize category", i.e., a 17 collection of coupons, discount offers, and the like relating to 18 goods or services that share a common theme which may coincide 19 with the theme for a game. Simpson ¶ 0074. 20 07. Simpson’s catalog book is actually produced on a compact disk. 21 The collection of coupons in the book is determined by a control 22 program on the disk. Simpson ¶ 0031. 23 Appeal 2009-005548 Application 10/213,955 5 08. Simpson describes a known problem associated with coupon 1 books, like Entertainment, as being that consumers may find only 2 a limited number of offers particularly suited to their needs. 3 Simpson ¶ 0010. 4 ANALYSIS 5 Claims 1-14 rejected under 35 U.S.C. § 103(a) as unpatentable over 6 Entertainment and Simpson.3 7 The Appellants argue the claims as a group and so we select claim 1 as 8 representative, since that is the claim argued. The Appellants argue 9 Entertainment fails to describe customizing and printing customized 10 coupons, and the selection associated with the customization. Appeal Br. 11 15-25. These are the only limitations under contention. 12 Claim 1 recites steps (a) and (b) for entering and displaying regional 13 information. Steps (d), (e), and (f) recite: ordering, printing and delivering 14 customized coupon books. As the Examiner found at Answer 4-5, 15 Entertainment describes these steps, ignoring the qualifier “customized.” FF 16 02-03. The issue is then whether given Simpson, it would have been 17 predictable to use customized books in Entertainment. Step (c) would be 18 required by any form of customization, as this step is the selection for such 19 customization. 20 Like Entertainment, Simpson is directed to the electronic dissemination 21 of consumer coupons. FF 04. Unlike Entertainment, Simpson describes a 22 step in its process of disseminating consumer coupons in which a user 23 3 The Appellants’ substantive response begins at Appeal Br. 15. Appeal 2009-005548 Application 10/213,955 6 browses, selects, and prints specific coupons for use at regional retail 1 locations. FF 05. Also, Simpson publishes its coupons on a compact disk. 2 FF 07. 3 The Examiner found that one of ordinary skill would have found it 4 predictable to customize Entertainment’s selection of coupons using a 5 selection process as in Simpson because it would increase the number of 6 suitable discount offers. We agree as Simpson describes a known problem 7 associated with coupon books such as those in Entertainment as being that 8 consumers may find only a limited number of offers particularly suited to 9 their needs. FF 08. Thus, affording a selection from a wider universe than 10 that printed by default in Entertainment, as suggested by Simpson, would 11 allow a customer to potentially find more discounts of use to that customer. 12 The Appellants argue each of the references separately even though the 13 rejection is based on the combined teachings of the references. 14 Nonobviousness cannot be established by attacking the references 15 individually when the rejection is predicated upon a combination of prior art 16 disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097(Fed. Cir. 17 1986). 18 They then argue that one would not combine Entertainment’s paper book 19 with Simpson’s compact disk. Appeal Br. 18-25. But Simpson does more 20 than just describe a particular compact disk product. Simpson explains the 21 problem with not affording a selection of discount offers, and describes a 22 selection mechanism for allowing selection. One of ordinary skill would 23 thus find a reason for customizing Entertainment’s books. The Appellants 24 then argue that their selection allows a greater scope of selection than in 25 Appeal 2009-005548 Application 10/213,955 7 Simpson. Id. As step (c) recites selecting and does not further narrow the 1 manner of selecting, this argument is not commensurate with the scope of 2 the claim. 3 CONCLUSIONS OF LAW 4 The Examiner did not err in rejecting claims 1-14 under 35 U.S.C. 5 § 103(a) as unpatentable over Entertainment and Simpson. 6 DECISION 7 The rejection of claims 1-14 under 35 U.S.C. § 103(a) as unpatentable 8 over Entertainment and Simpson is sustained. 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 13 14 15 16 mev 17 18 Address 19 PITTS AND BRITTIAN P C 20 P O BOX 51295 21 KNOXVILLE TN 37950-1295 22