Ex Parte SlootDownload PDFBoard of Patent Appeals and InterferencesFeb 28, 201110242230 (B.P.A.I. Feb. 28, 2011) Copy Citation 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 Copy with citationCopy as parenthetical citation