11552894 (P.T.A.B. Apr. 1, 2013)

Ex Parte Shuster

Patent Trial and Appeal BoardApr 1, 2013

11552894 (P.T.A.B. Apr. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte GARY S. SHUSTER ___________ Appeal 2011-007382 Application 11/552,894 Technology Center 3600 ___________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007382 Application 11/552,894 2 STATEMENT OF THE CASE1 Gary S. Shuster (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-3, 6-11, 13-22 and 25. Appellant has not sought review of the final rejection of claims 12 and 23. However, we have jurisdiction over claims 1-3, 6-23 and 25 on appeal pursuant to 35 U.S.C. § 6(b). Appellant’s invention provides retail consumers with a mechanism for hedging against increases in the price of price-volatile commodities, such as gasoline. An understanding of the invention can be derived from a reading of exemplary claim 1 reproduced below. 1. A method for providing price insurance for retail consumers of a product, the method configured for execution on a computing device, the method comprising: defining one or more price insurance policies comprising account information for respective retail consumers of a product and insurance policy limits comprising a defined product, a defined price ceiling for the product, and a defined limit on quantity of product covered; receiving at a computing device from a point-of-sale terminal in communication with a product distribution device purchase information concerning a retail purchase transaction for the product by an insured one of a plurality of retail consumers, the purchase information comprising an account identifier, a measurement of 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed December 20, 2010) and Reply Brief (“Reply Br.,” filed March 10, 2011) and the Examiner’s Answer (“Ans.,” mailed January 24, 2011). Appeal 2011-007382 Application 11/552,894 3 product quantity purchased or to be purchased and a retail price for the product; determining by the computing device whether the retail price exceeds the price ceiling of the insurance policy associated with the one of the plurality of retail customers; and in response to determining that the retail price for the product information exceeds the price ceiling of the insurance policy associated with the one of the plurality of retail consumers, transmitting from the computing device to the point-of-sale terminal a signal configured to cause he point-of-sale to adjust the retail price to an adjusted price not greater than the price ceiling. REFERENCES The Examiner relies upon the following prior art: Coyner US2003/0197060 A1 Oct. 23, 2003 Shkedy US2006/0036530 A1 Feb. 16, 2006 REJECTIONS Appeal 2011-007382 Application 11/552,894 4 The following grounds of rejection were included in the final rejection and are before us for review2: I. Claims 12 and 23 stand rejected under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. II. Claims 14-23 stand rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. III. Claim 25 stands rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. IV. Claims 1-3, 6-11, 13-22 and 25 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Coyner. ISSUES Appellant does not argue for reversal of grounds of rejection I, II and III. Therefore, we affirm the Examiner as to each of these grounds of rejection. The remaining issue is whether the Examiner failed to substantiate the unpatentability of claims 1-3, 6-11 and 13 over Coyner. ANALYSIS We are persuaded by the Appellant’s arguments (App. Br. 9-11and Reply Br. 2-4) that the Examiner failed to establish a prima facie showing of 2 At page 2 of the final rejection dated July 22, 2010, the Examiner withdrew claim 24, further explaining at page 3 of the final rejection that the claim was “directed to an invention that is independent or distinct from the invention originally claimed” (Ans. 2). Appeal 2011-007382 Application 11/552,894 5 obviousness in rejecting claims 1-3, 6-11 and 13 over Coyner. Thus, we agree that Coyner fails to teach or suggest the steps of “determining by the computing device whether the retail price exceeds the price ceiling of the insurance policy associated with one of the plurality of retail consumers; and in response to determining that the retail price for the product information exceeds the price ceiling of the insurance policy associated with the one of the plurality of retail consumers, transmitting from the computing device to the point-of-sale terminal a signal configured to cause the point-of-sale terminal to adjust the retail price to an adjusted price not greater than the price ceiling.” While the Examiner concedes that Coyner does not directly disclose such a teaching or suggestion (Ans. 9-10), the Examiner misreads the claim in asserting “the predetermined set price feature disclosed in Coyner to be functionally equivalent to determining that the retail price exceeds a price ceiling”. While Coyner describes a receipt showing the point-of-sale terminal adjusted the retail price to an adjusted price not greater than the price ceiling, Coyner does not cause the price to be adjusted by “determining that the retail price for the product information exceeds the price ceiling.” Instead, the causation is the other way, viz. the calculation of the price adjustment is caused by determining that the terminal must accept the price on Coyner’s card, without making any determination that the price differs either way. While we agree with the Examiner that the claim does not recite adjusting the price per se (Ans. 20), the claim does recite “transmitting from the computing device to the point-of-sale terminal a signal configured to Appeal 2011-007382 Application 11/552,894 6 cause the point-of-sale to adjust the retail price” in response to this determination. As Coyner does not adjust the price in response to this determination, it follows Coyner does not transmit a signal configured to do so. This is not a case of transmitting some non-functional signal, as the signal is explicitly configured to functionally alter the price. Therefore, we reverse the Examiner’s rejection of claims 1-3, 6-11 and 13 as being unpatentable over Coyner. Because we have affirmed the Examiner with respect to the rejection of claims 12, 14-23 and 25 under one or more of rejections I, II and III, we do not reach the issue of whether claims 12, 14-23 and 25 are unpatentable over Coyner under 35 U.S.C § 103(a). DECISION The decision of the Examiner to reject claims 1-3, 6-11 and 13 is reversed. The decision of the Examiner to reject claims 12, 14-23 and 25 is affirmed. 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) (2011). AFFIRMED-IN-PART Appeal 2011-007382 Application 11/552,894 7 tj