Ex Parte Sobecks et al

Patent Trial and Appeal Board

Aug 23, 2018

14006410 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/006,410 11/05/2013
109813 7590 08/24/2018
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Brian J. Sobecks
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
9610-102005-US 8005
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
08/24/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN J. SOBECKS,
JEFFREY MICHAEL DEUTCH, and
THOMAS MICHAEL O'KEEFE
Appeal2017-006395
Application 14/006,410
Technology Center 3600
Before JOSEPH L. DIXON, SCOTT B. HOW ARD, and
JOHN D. HAMANN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-12 and 16-20. Claims 13-15 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants indicate that Intercontinental Great Brands LLC is the real party
in interest. (App. Br. 3).
Appeal2017-006395
Application 14/006,410
The claims are directed to a method and apparatus pertaining to an
automated consumer-interaction experience. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A consumer-interaction kiosk comprising:
a display;
a vendible-commodities storage area configured to store
vendible edible items;
a vending interface configured to vend one of the vendible
edible items to a user of the kiosk;
a control circuit operably coupled to the display and the
vending interface, the control circuit being configured to, during
a face-to-face interaction with a consumer at the consumer-
interaction kiosk;
prompting the consumer to engage in a particular social
network action, wherein the particular social network action
comprises at least one of friending a particular social network
entity and following a particular social-network entity;
confirming that the consumer engaged in the particular
social network action;
upon confirming that the consumer engaged in the
particular social network action, automatically taking an action
with respect to the consumer comprising vending, for free, at
least one of the vendible edible items to the consumer.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kolls
Muni
US 6,604,087 B 1
US 2005/0125301 Al
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Aug. 5, 2003
June 9, 2005
Appeal2017-006395
Application 14/006,410
Fajkowski
Juds et al.
Carlson
Bonat et al.
US 6,932,270 B 1
US 2007 /0027576 Al
US 2008/0154735 Al
US 2010/0218128 Al
REJECTIONS
The Examiner made the following rejections:
Aug. 23, 2005
Feb. 1, 2007
June 26, 2008
Aug.26,2010
Claims 1-7, 16, 17, and 20 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Carlson in view of Bonat further in view
of Juds.
Claims 8-12 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Carlson in view of Bonat further in view of Juds
further in view of Kolls further in view of Fajkowski.
Claims 18 and 19 stand rejected underpre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Carlson in view of Bonat further in view of Juds
further in view of Muni.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 2-15) and (ii) the Answer (Ans. 2--4) to the extent
they are consistent with our analysis below.
With respect to claims 1-12 and 16-20, Appellants set forth separate
arguments for patentability of independent claim 1. (App. Br. 7).
Appellants do not set forth separate arguments for patentability of dependent
claims 2-12 and 16-20. (App. Br. 12). Therefore, we select independent
claim 1 as the representative claim for the group and dependent claims 2-12
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Application 14/006,410
and 16-20 will stand or fall with representative claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
The Examiner rejects independent claim 1 over the combination of
Carlson in view of Bonat further in view of Juds and provides a convincing
reasoning for making the combination. (Final Act. 2).
Appellants contend that "prior art references, when combined per the
Examiner's suggestion, fail to meet all of the requirements of claim 1."
(App. Br. 7) ( emphasis omitted). With regards to the combination of prior
art teachings, Appellants argue that "it is necessary that the technical
contributions of at least Juds must be significantly modified to work as
described in the proposed combination." (App. Br. 8). Appellants argue
that the Juds reference requires using physical promotional tokens which are
physically distributed other than during face-to-face interaction with the
vending machine. (App. Br. 8-9). Appellants further contend that the
teachings of the Juds reference cannot be fairly parsed and segregated.
(App. Br. 11 ). Appellants finally contend that the Juds reference teaches
away from the proposed combination. (App. Br. 11-12).
The Examiner maintains that the Carlson reference teaches and
suggests the face-to-face process with respect to the vending machine and
that the tokens of the Juds reference could be located with the vending
machine and that the skilled artisans could combine the Bonat rewards for
the social media activities for the tokens in the Juds reference. The
Examiner finds "any event Bonat's rewards, which are provided in exchange
for desired social media activities, could easily be combined with Juds by
simply replacing Bonat's discount with Juds' token, and as the computer
inside the claimed kiosk is a general purpose computer, it is capable of
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Appeal2017-006395
Application 14/006,410
performing all of the steps." (Ans. 3--4). We agree with the Examiner
regarding the teachings of the combination of the three references.
In the Reply Brief, Appellants contend that the teachings of the Juds
reference do not mix and match in a useful way with the teachings of either
of the other references and certainly not with the Bonat reference.
Appellants further argue
the Examiner's own example well highlights the technical
difficulty of combining Juds with these other references, in that
trying to do such a thing completely robs the other references of
their raison d'etre by permitting the consumer to have the
reward (i.e., a free vend) without meeting Bonat's quid pro quo
(i.e., engaging in a particular action).
(Reply Br. 2-3). The Appellants further argue:
making the combination proposed by the Examiner will lead to
a wholesale frustration and avoidance of that which Bonat is
trying to achieve ( that is, encouraging the consumer to engage
in a particular behavior in exchange for a reward) by making
the reward readily available without needing to observe the
desired behavior[,]
[b ]ecause the Examiner's proposed combination will, in fact,
render Bonat's purpose wholly subverted, we respectfully
continue to submit that the proposed combination fails to meet
the requirements of a fair rejection based on obviousness."
(Reply Br. 3).
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of [those]
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413,425 (CCPA 1981); see also In re Sneed, 710 F.2d
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Application 14/006,410
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the
teachings of references does not involve an ability to combine their specific
structures."). Rather, "if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
We find Appellants' arguments are directed to a bodily incorporation
of the prior art teachings. Moreover, we find the teachings of the Bonat
reference of providing a discount for the social media information sufficient
to teach and suggest a free product because a free product is merely a 100%
discount. We find that whether the discount is 10% or 100%, the Bonat
reference teaches and suggests the quid pro quo which Appellants
emphasize. We further find the level of discount would be a variable which
those skilled in the art would readily appreciate may be any value necessary
to incentivize the desired behavior. If 10% was not a sufficient incentive,
then skilled artisans would have readily appreciated that the value could be
raised up to 100%, which would be a free product, as taught and suggested
by the Juds reference.
Therefore, Appellants' arguments do not show error in the Examiner's
reasoned, combination of the Carlson, Bonat, and Juds references based
upon obviousness under 35 U.S.C. § 103.
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CONCLUSION
The Examiner did not err in rejecting representative independent
claim 1 based upon obviousness under 35 U.S.C. § 103 and dependent
claims 2-12 and 16-20 not separately argued.
DECISION
For the above reasons, we sustain the Examiner's obviousness
rejections of claims 1-12 and 16-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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