Ex Parte Stout

Board of Patent Appeals and Interferences

Mar 12, 2009

09588037 (B.P.A.I. Mar. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte J. GREGORY STOUT
________________

Appeal 2008-5924
Application 09/588,037
Technology Center 3600
________________

Decided:1 March 12, 2009
________________

Before MURRIEL E. CRAWFORD, DAVID B. WALKER, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) (2002) from the
final rejection of claims 30-49. We reverse.
Representative claim 30 reads as follows:

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5924
Application 09/588,037

2
30. A method, comprising:
identifying a consumer using a data capture
device at a first merchant location where the
consumer presents an instrument during a
processing of a first transaction at the first
merchant, wherein the consumer is identified with
a unique identification stored in a data farm
device;
presenting an offer to the consumer on an
offer display device, the offer based on
information from the first transaction;
receiving an indication of acceptance of the
offer from the consumer at the first merchant
location;
associating the indication of acceptance with
the unique identification of the consumer;
identifying the consumer using a further data
capture device at a second merchant location
where the consumer presents the instrument during
the processing of a second transaction; and
retrieving the offer based on the
identification of the consumer at the second
merchant location, wherein the offer is applied to
the second transaction.

The reference set forth below is relied upon as evidence in support of
the rejections:

Gardenswartz US 6,055,573 Apr. 25, 2000

The Examiner rejected claims 30-49 under 35 U.S.C. § 102(e) as
anticipated by Gardenswartz. The dispositive issue is whether the Appellant
has shown that the Examiner erred in finding that Gardenswartz teaches
Appeal 2008-5924
Application 09/588,037

3
“receiving an indication of acceptance of the offer from the consumer at the
first merchant location” and “retrieving the offer based on the identification
of the consumer at the second merchant location, wherein the offer is applied
to the second transaction.”
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
With respect to claim 30, the Appellant argues that Gardenswartz does
not disclose “receiving an indication of acceptance of the offer from the
consumer at the first merchant location” and “retrieving the offer based on
the identification of the consumer at the second merchant location, wherein
the offer is applied to the second transaction” (Br. 6).
The Examiner found that the Appellant based this argument on three
subsidiary arguments, specifically that Gardenswartz: (1) teaches that the
first retail location and the second retail location are the same, contrary to
the limitations of claim 30; (2) does not specify that the consumer must
accept the offer during a first transaction at a first merchant location; and (3)
does not mention or suggest the step “associating the indication of
acceptance with the unique identification of the consumer” (Answer 5).
With respect to the first argument, the Examiner found that
Gardenswartz teaches that the first merchant location is separate from the
second merchant location (citing Figure 1; col. 5, ll. 36-42 and 61-67; col.
19, ll. 37-48). The Appellant argues that the Examiner mistakenly relies on
computers 10 and 12 as first and second merchants, when they are separate
from retail stores 2-6, and are described as being home or office computers
Appeal 2008-5924
Application 09/588,037

4
connected to the Internet (Reply Br. 3, citing Gardenswartz, col. 5, l. 61 –
col. 6, l. 4 and col. 6, ll. 36-52). This argument is not persuasive as
Gardenswartz shows multiple distinct retail stores, 2, 4, and 6
(Gardenswartz, Figure 1).
With respect to the second argument, the Examiner found that
Gardenswartz teaches that the consumer must accept the offer during a first
transaction at a first merchant location (citing col. 19, ll. 37-48). The
Appellant argues that because Gardenswartz delivers promotional
information to consumers on their home computers in response to past
purchases, there is no possibility of acceptance at a first merchant.
According to the Appellant, Gardenswartz teaches that the consumer may
receive the reward by visiting a specified location (Reply Br. 3, citing
Gardenswartz, col. 16, ll. 39-42). Claim 30 requires “receiving an indication
of acceptance of the offer from the consumer at the first merchant
location,” which is the same first merchant location at which the consumer is
required to present an instrument during a processing of a first transaction.
We agree with the Appellant that Gardenswartz does not teach receiving an
indication of acceptance of the offer at a first merchant location where a first
transaction takes place.
With respect to the third argument, the Examiner found that
Gardenswartz teaches associating the indication of acceptance with the
unique identification of the consumer (citing col. 17, ll. 18-28 and col. 19, ll.
42-48). The Appellant argues that Gardenswartz describes offering the
consumer different value contracts based on whether the consumer complies
with the terms of the contract, which does not indicate acceptance.
According to the Appellant, the consumer in Gardenswartz does not
Appeal 2008-5924
Application 09/588,037

5
announce his intention to redeem the reward and may even trigger the
reward conditions inadvertently (Reply Br. 4, citing Gardenswartz, col. 17,
ll. 19-42 and col. 16, ll. 50-63). The Appellant further argues that, at most,
Gardenswartz describes providing an indication to the consumer that he is
eligible for a reward or that he has satisfied the conditions for a reward, and
the consumer must still decide whether or not to accept the reward by
fulfilling the conditions and then visiting the specified retail location (Reply
Br. 5). We agree with the Appellant. Moreover, based on argument (2)
above, the failure of Gardenswartz to teach the required “receiving an
indication of acceptance . . .” precludes associating the indication of
acceptance with the unique identification of the consumer. The Appellant
thus has shown the Examiner erred in rejecting claim 30, and claims 31-36,
which depend therefrom.
Claim 37 recites
an offer display device which receives the one of
the offers from the data farm, displays the one of
the offers to the consumer, receives an indication
of acceptance of the one of the offers from the
consumer and forwards the indication of
acceptance to the data farm device, wherein the
data farm device stores the indication of
acceptance in the unique identification record of
the consumer.

The Appellant argues that these are substantially the same limitations argued
with respect to claim 30 above (Reply Br. 5). For the reasons discussed
above with respect to claim 30, the Appellant has shown the Examiner erred
in rejecting claim 37, and claims 38-45, which depend therefrom.
Appeal 2008-5924
Application 09/588,037

6
Claim 46 recites “sending the offer to an offer display device at the
merchant location” and “receiving an indication of acceptance of the offer
from the consumer at the merchant location” and “associating the indication
of acceptance with the unique consumer identification record.” The
Appellant argues that claim 46 contains substantially the same limitations as
claim 30, and should be allowable on that basis (Reply Br. 6). For the
reasons discussed above with respect to claim 30, the Appellant has shown
the Examiner erred in rejecting claim 46, and claims 47-49, which depend
therefrom.
The decision of the Examiner is reversed.

REVERSED

hh

Fay Kaplun & Marcin, LLP/ Motorola
150 Broadway Suite 702
New York, NY 10038