Ex Parte Summer

Board of Patent Appeals and Interferences

Jun 28, 2012

11481984 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUSTIN A. SUMMER
____________

Appeal 2010-007277
Application 11/481,984
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007277
Application 11/481,984

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, 4, 5, 7 to 10, 12, 13, and 15 to 18. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

BACKGROUND
Appellant’s invention is directed to an integrated Point of Sale
(“POS”) computer system (Spec. 1).
Claim 1 is illustrative:
1. A POS CS comprising:
at least one terminal including a scanner reading
transaction data and a printer for printing at least transaction
information;
store controller computer for reading data, performing
logical operations, and storing data;
an additional logical unit for reading data, performing
logical operations, and storing data;
at least one communication link enabling said store
controller computer, said at least one terminal, and said
additional logical unit to communicate with one another;
an item record file controlled by said store
controller computer;
a customer purchase file controlled by said additional
logical unit; and
an incentive offer file including CIDs, and for at least
some of said CIDs, associated marketing information, said
incentive offer file controlled by said additional logical unit.

Appeal 2010-007277
Application 11/481,984

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Appellant appeals the following rejections:
Claims 1, 2, 4, 7 to 10, 12, and 15 to 16 under 35 U.S.C. § 102(b) as
anticipated by Fredregill (US 5,923,016, iss. Jul. 13, 1999).
Claims 5, 13, and 17 to 18 under 35 U.S.C. § 103(a) as unpatentable
over Fredregill.

FACTUAL FINDINGS
We adopt all of the Examiner’s findings on pages 3 to 5 of the Answer
as our own. Additional findings of fact may appear in the Analysis that
follows.

ANALYSIS
Anticipation
We are not persuaded of error by the Examiner by Appellant’s
Arguments that Fredregill does not disclose a customer purchase file and an
incentive offer file controlled by said additional logical unit. We agree with
the Examiner that as the workstation 16 has access to the host system, one
can perform a check balance inquiry, transfer points (incentives), make point
balance adjustments and provide point refunds at the workstation.
Therefore, the workstation 16 in combination with the host computer
controls the customer purchase file. We also agree with the Examiner that
the workstation plus the host computer can be considered the additional
logical unit as broadly recited in claim 1.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Fredregill does not disclose an incentive file
including marketing information associated with a customer ID (“CID”).
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We find that Fredregill discloses that the host database includes information
regarding the customer related to customer transactions at various levels.
We also find that this customer information is marketing information as
broadly claimed. In any case, the recitation of marketing information relates
to a specific type of data that is not functionally related to the database and
as such is non-functional descriptive material. Non-functional descriptive
material cannot render non-obvious an invention that is otherwise obvious
over the prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
In view of the forgoing, we will sustain the Examiner’s rejection
under 35 U.S.C. § 102(b) of claim 1. We will also sustain the Examiner’s
rejection of claims 7, 9, and 15 because the Appellant has not argued the
separate patentability of these claims.
We will not sustain the Examiner’s rejection of claims 4 and 12
because we agree with the Appellant that the Examiner has not established
that Fredregill discloses at least one terminal having a first network address
which is the same address as the additional logical unit. In fact, the
Examiner does not specifically address this language of claims 4 and 12.
We will sustain the rejection as it is directed to claims 2 and 10.
Appellants argue that Fredregill does not disclose a system bus which
connects the additional logical unit and the store controller. We note that
while the Appellant provides several definitions for a system bus in the brief,
the Appellant has not directed our attention to a specific definition for this
term in the Specification. Therefore, we agree with the Examiner that the
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broadest reasonable interpretation of a system bus includes that of the
electronic connection which is disclosed in Fredregill between host system
40, workstation 16, and controller 14.
We will not sustain this rejection as it is directed to claims 8 and 16
because we agree with the Appellant that Fredregill does not disclose that
the computer system (“CS”) is configured to generate a list of CID’s and
associated marketing information. While the portion of Fredregill relied on
by the Examiner discloses that the system allows for the retailer to create a
transaction log file from information about customer transactions, there is no
disclosure therein of creating a lists of CID’s and associated information.

Obviousness
We will sustain this rejection as it is directed to claims 5 and 13
because the Appellant has not offered arguments directed to these claims.
We will not sustain this rejection as it is directed to claims 17 and 18
because we agree with the Appellant that the Examiner has failed to provide
a reason with a rational underpinning for modifying the teachings of
Fredregill. The Examiner states that the modification would have been
obvious “to provide functionality of [a] linked host computer system within
the local In-store System to invoke said invention to meet requirements of
different retailer systems.” (Ans. 6-7). We find that Fredregill teaches that
one advantage of the system therein disclosed is to have a system in which
the user can use the incentive points at multiple retail outlets (col. 2, ll. 12 to
15). To achieve this advantage, the system has a host computer which stores
the consumer incentive points. The Examiner has not explained why a
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person of ordinary skill in the art would modify Fredregill, so as to be a
system limited to a single retail outlet.
The Supreme Court stated that when the claimed subject matter
involves “more than the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement,” then “an apparent reason to combine the known
elements in the fashion claimed” must be shown. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 401 (2007). The Court explained:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
See KSR, 550 U.S. at 418. The Court noted that “[t]o facilitate review, this
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“‘[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’”).
In the instant case, while the result of the modification may achieve
“functionality of a linked host computer system within the local in-store
system, to invoke said invention to meet requirements of different retailer
systems,” as argued by the Examiner, no reason has been given by the
Examiner to do so.

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DECISION
We AFFIRM the Examiner’s rejections of claims 1, 2, 4, 5, 7, 9, 10,
12, 13, and 15.
We REVERSE the Examiner’s rejections of claims 8, 16, 17, and 18.
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) (2011).
AFFIRMED-IN-PART

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