Ex Parte Sloot

Board of Patent Appeals and Interferences

Feb 28, 2011

10242230 (B.P.A.I. Feb. 28, 2011)

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.
10/242,230 09/12/2002 Alexander Sloot 00995-P0230A 1435
24126 7590 02/28/2011
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
02/28/2011 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 ALEXANDER SLOOT
____________

Appeal 2010-000804
Application 10/242,230
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

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.

STATEMENT OF THE CASE
Alexander Sloot (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-13 and 28-33. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

THE INVENTION
The invention relates to fundraising. Specification [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A fundraising method comprising the steps of:
providing at least one fundraising kit having a predetermined
capacity for holding coins to each of a plurality of volunteers;
allowing time for the plurality of volunteers to collect coins and
to at least partially fill the at least one fundraising kit with collected
coins;
collecting completed ones of the at least one fundraising kit
from the plurality of volunteers and entering each of the plurality of
volunteers in a prize drawing for each completed kit collected from
that volunteer;
collecting all outstanding ones of the at least one fundraising
kit, whether or not completed, from the plurality of volunteers at the
end of a predetermined time period and entering each volunteer in a
prize drawing for each completed kit collected from that volunteer;
and

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Feb. 25, 2009) and Reply Brief (“Reply Br.,” filed Jul. 28, 2009),
and the Examiner’s Answer (“Answer,” mailed May 28, 2009).
Appeal 2010-000804
Application 10/242,230
3
choosing at least one prize winner from the entries for the prize
drawing.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Tolkow
Aubertin
US 1,814,064
US 2002/0069108 A1
Jul. 14, 1931
Jun. 6, 2002
Pennies For Paso Campaign Begins; OUTstanding Amarillo-Newsletter,
http://www.outstandingamarillo.org/newsletter/Nljan1999.html [Paso].
The following rejection is before us for review:
1. Claims 1-13 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Paso, Tolkow, and Aubertin.
2. Claims 28-33 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Paso and Tolkow.

ISSUE
The main issue is whether the cited prior art combination would have
led one of ordinary skill in the art to “enter[ ] each volunteer in a prize
drawing for each completed kit collected from that volunteer; and choosing
at least one prize winner from the entries for the prize drawing” (claim 1).

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

Appeal 2010-000804
Application 10/242,230
4
ANALYSIS
The rejection of claims 1-13 under 35 U.S.C. §103(a) as being unpatentable
over Paso, Tolkow, and Aubertin.
The Appellant argued claims 1-13 as a group (App. Br. 7-12). We
select claim 1 (see supra) as the representative claim for this group, and the
remaining claims 2-13 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
The Appellant argues that “none of the cited references teach
collecting completed fundraising kits from the volunteers, entering each
volunteer in a prize drawing for each completed kit collected from that
volunteer, and then choosing a potential prize winner from the entries for the
prize drawing.” App. Br. 7 (emphasis original). See also Reply Br. 2-5. As
the Appellant indicates (App. Br. 8-9), the Examiner found that
[i]t would have been obvious to modify the teachings of PAS0
Campaign/TOLKOW by including well known steps for
motivating fundraising participants such as entering each
participant/volunteer in a prize drawing contest and providing
awarding the participants (volunteers) with a prize for achieving
certain goals such as top sellers associated with each campaign,
or participant with the most sales, or prize for every participant
who reaches a certain threshold of sales, etc, as taught by
AUBERTIN et al above.
Answer 8 (emphasis original). The Appellant disagrees because (1)
“Aubertin et al. DO NOT teach or suggest entering each volunteer in a prize
drawing as a reward or motivation for returning completed fundraising kits.”
(App. Br. 9) and (2) the Examiner has used hindsight in reaching the claimed
subject matter. Also, (3) the Appellant argues that the “limitation is
significant because it provides incentive for each and every volunteer to
continue to participate throughout the duration of the fundraising period”
(App. Br. 10).
Appeal 2010-000804
Application 10/242,230
5
The arguments are unpersuasive as to error in the rejection.
The Examiner found that Paso discloses a fundraising technique
involving soliciting for pennies to be collected in cans. Answer 5. While
Paso does not expressly mention “volunteers” (as the Examiner conceded
(Answer 6)), one of ordinary skill in the art of fundraising would know that
volunteers are often used in all manner of fundraising activities, including to
fill fundraising kits, like those Tolkow describes. The Appellant’s argument
(App. Br. 12-14) that “volunteers” per se are not disclosed is not a
persuasive argument as to error in the rejection. In evaluating a reference it
is proper to take into account not only the specific teachings of the reference,
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Paso describes a community organization soliciting pennies. Given that
volunteers are often used in all manner of fundraising activities, one of
ordinary skill in the art would expect volunteers to be performing many of
the Paso campaign activities, including the well known use of kits to fill the
cans with pennies.
The Examiner further found that Aubertin discloses the use of prizes
in fundraising. Answer 8. The Examiner never stated, as the Appellant
argues, that Aubertin teaches entering each volunteer in a prize drawing as a
reward or motivation for returning completed fundraising kits. The
Examiner relied on Aubertin for its disclosure of using prizes as a
motivation for achieving certain goals. [0158] of Aubertin supports this:
“the Administrator may provide rewards for the top sellers associated with
each Campaign. These rewards may alternatively be provided by the
Fundraising Organization directly. Rewards may include: [prizes].” See also
Appeal 2010-000804
Application 10/242,230
6
[0163]. Nevertheless, it is generally well known to use prizes as a way to
motivate people. Although Aubertin discloses awarding prizes when one
reaches certain goals, doing so via a prize drawing is well known technique.
We agree with the Examiner’s statement: “well known steps for motivating
fundraising participants such as entering each participant/volunteer in a prize
drawing contest and providing awarding the participants (volunteers) with a
prize for achieving certain goals” (Answer 8, emphasis original). The
Appellant does not dispute this. One of ordinary skill in the art reading
Aubertin would understand that prizes could be used to motivate participants
to increase fundraising activities and that, prizes could be awarded via a
prize drawing.
We find that the Examiner’s characterization of the scope and content
of the cited prior art is accurate. The difference between the claimed subject
matter and that of the prior art is that the claims call for “entering each
volunteer in a prize drawing for each completed kit collected from that
volunteer; and choosing at least one prize winner from the entries for the
prize drawing.” But the mere existence of differences between the prior art
and the claim does not establish nonobviousness. Dann v. Johnston, 425
U.S. 219, 230, (1976). The issue is “whether the difference between the
prior art and the subject matter in question 'is a difference sufficient to
render the claimed subject matter unobvious to one skilled in the applicable
art.'" Dann, 425 U.S. at 228-29.”
In that regard, the Examiner reasoned that the use of a prize drawing
for each volunteer for each completed kit collected would have been obvious
to one of ordinary skill in the art as motivation for volunteers to complete
Paso’s fundraising kits. The Appellant argues that the Examiner reached
Appeal 2010-000804
Application 10/242,230
7
this conclusion via hindsight. App. Br. 10. “A factfinder should be aware,
of course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” KSR Int'l v. Teleflex, Inc., 550
US 398, 418 (2007). But the Examiner did not use ex post reasoning to
reach the legal conclusion of obviousness. Rather the Examiner’s reasoning
is based on what the references disclose to one of ordinary skill in the art.
Paso certainly benefits from having more fundraising kits completed by
volunteers. Encouraging the completion of the kits by volunteers via a prize
drawing for each volunteer for each completed kit collected is logically
underpinned, given what Paso, Tolkow, and Aubertin disclose and what
would have been well known to one of ordinary skill in the art of
fundraising. Accordingly, we find the Examiner has met the initial burden
of establishing a prima facie case of obviousness.
The Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). In that regard, the Appellant argues that the claim limitation
collecting completed ones of the at least one fundraising kit
from the plurality of volunteers and entering each of the
plurality of volunteers in a prize drawing for each completed kit
collected from that volunteer ... choosing at least one prize
winner from the entries for the prize drawing
(claim 1) “provides incentive for each and every volunteer to continue to
participate throughout the duration of the fundraising period.” App. Br. 10.
The Appellant argues that the prizes described in Aubertin yield different
Appeal 2010-000804
Application 10/242,230
8
results. “The Examiner cited references in which the fundraising prize is
automatically given to the highest fundraiser or a select few fundraisers who
reach a certain goal.” App. Br. 12.
We are not persuaded that the claimed method yields unexpected
results from employing the well known prize drawing technique as an
alternative to awarding prizes automatically when goals are reached. The
Appellant argues that
[b]y awarding volunteers who submit completed fundraising
kits with a mere raffle or prize drawing entry, there is no
certainty that only the top fundraiser will be awarded the prize.
This uncertainty is what motivates all of the volunteers to
continue to collect coins because they know that, so long as
they complete at least one kit, there will always be a chance that
they could be drawn as the prize winner. Furthermore, the
volunteers know that if they complete additional kits, they will
increase that chance.
App. Br. 11. However, we find no evidence supporting appellants'
contentions elsewhere in the record. Attorney argument cannot take the
place of record evidence. See also In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
If the Appellant means to argue unexpected results, an applicant cannot
prove unexpected results with attorney argument and bare statements
without objective evidentiary support. See In re Lindner, 457 F.2d 506, 508
(CCPA 1972); In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997)
(“attorney argument [is] not the kind of factual evidence that is required to
rebut a prima facie case of obviousness”); In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995) (“It is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements … [do] not
suffice.” (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
Appeal 2010-000804
Application 10/242,230
9

The rejection of claims 28-33 under 35 U.S.C. §103(a) as being
unpatentable over Paso and Tolkow.
The Appellant argued claims 28-33 as a group (App. Br. 12-14). We
select claim 28 as the representative claim for this group, and the remaining
claims 29-33 stand or fall with claim 28. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Appellant’s argument is that the prior art references use stationary
communal collection boxes, not fundraising kits given to each volunteer.
App. Br. 13 and Reply Br. 5-7. We addressed that argument above. No
other arguments remaining, we will sustain the rejection for the reasons
stated.

DECISION
The decision of the Examiner to reject claims 1-13 and 28-33 is
affirmed.

AFFIRMED

mev

ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD CT 06905-5619