Ex Parte Veeneman et al

Board of Patent Appeals and Interferences

Aug 20, 2010

10940094 (B.P.A.I. Aug. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. VEENEMAN, BARBARA C. THOMAS, and
DEBRA J. REMINGTON
____________

Appeal 2010-010507
Application 10/940,094
Patent 5,774,874
Technology Center 3600
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and LINDA E. HORNER and KEN B. BARRETT, Administrative Patent
Judges.

HORNER, 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.
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Patent 5,774,874
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STATEMENT OF THE CASE
William J. Veeneman et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s final rejection of July 10, 2008 in reissue
application 10/940,094.2 The reissue application seeks to reissue U.S. Patent
5,774,874 (“the ‘874 patent”), issued June 30, 1998, based on Application
08/562,014 (“the ‘014 application”), filed November 22, 1995.3
The reissue application contains claims 1-8 and 15-29. Claims 9-14
have been canceled. The Examiner has rejected claims 1-8 and 15-29,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b) (2006). We AFFIRM.
THE INVENTION
Appellants’ claimed invention is a multi-merchant gift registry system
and method. ‘874 patent, col. 1, ll. 17-19. Claim 1, reproduced below, is
representative of the subject matter on appeal.4
1. A multi-merchant gift registry system for enabling a
registrant to input gift information into a gift registry that is
maintained for the stores of a plurality of merchants that are
located in an area, the gift registry system comprising:

2 The ‘094 reissue application is a continuation of reissue application
09/610,168, which is also before the Board as Appeal 2010-006606.
3 The ‘014 application is a continuation-in-part of Application 08/132,604,
filed October 6, 1993, now abandoned, which is a continuation-in-part of
Application 08/062,470, filed May 14, 1993, now abandoned.
4 This claim shows by underlining and bracketing additions and deletions
made to patented claim 1 in the reissue application.
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[a gift registry kiosk disposed proximate the stores of a
plurality of merchants in a shopping area, each of said
merchants participating in the gift registry, the gift
registry kiosk having;] at least one data terminal
comprising:
a first data entry system through which first
information and inquiries about registrants in the gift
registry are entered into the [computer] gift registry
system, the first information for each registrant
including at least [one name for the registrant] the
registrant’s name;
a second data entry system capable of receiving
second information, the second information including
a list of potential gifts which the registrant has
identified and a unique identifier associated with the
particular merchant having each of the desired gifts;
a database storage system that stores and
retrieves the first and second information about the
registrant and the unique identifier associated with the
particular merchant having each of the desired gifts;
and
a display system that displays the list of
potential gifts for a particular registrant and
information about the particular merchants the desired
gifts are from, including the unique identifier
associated with the particular merchant having each
of the desired gifts, in response to an inquiry from a
prospective purchaser.
THE EVIDENCE
The Examiner relies upon the following evidence:
McCalley US 5,113,496 May 12, 1992
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Here Comes The (New) Bridal Registry, CHAIN STORE AGE
EXECUTIVE, October 1992 (hereinafter “Chain Store Age”).
Nancy Brumback & Jeff Malester, Electronic Shopping Makes the
Retail Connection, 57 RETAIL HOME FURNISHINGS October 31, 1983 at 8
(hereinafter “Brumback”).
THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 1-8 and 15-29 under 35 U.S.C. § 251 as
being improper recapture of broadened subject matter surrendered in
the application for patent upon which the present reissue is based.
Ans. 4.
2. The Examiner rejected claims 1-8 and 15-29 under 35 U.S.C. § 103(a)
as being unpatentable over Chain Store Age and McCalley. Ans. 5-9.
3. The Examiner rejected claims 1-8, 15-17, 20-22, 24-29 under 35
U.S.C. § 103(a) as being unpatentable over Chain Store Age and
Brumback. Ans. 9.
4. The Examiner rejected claims 18, 19, and 23 under 35 U.S.C. § 103(a)
as being unpatentable over Chain Store Age, Brumback and
McCalley. Ans. 13.
Additionally, the Examiner rejected claims 1-8 and 15-29 on the
ground of statutory (35 U.S.C. § 101) double patenting as being in conflict
with claims 9-14 of co-pending reissue Application 09/610,158. Ans. 5.
Appellants present no arguments against this rejection, and as such,
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Appellants have waived any argument of error regarding the rejection. We
summarily sustain this rejection.
ISSUES
The issues presented by this appeal are:
1. Do claims 1-8 and 15-29 impermissibly recapture subject
matter surrendered during prosecution of the ‘874 patent?
2. Would the proposed combination of Chain Store Age and either
McCalley or Brumback, or both, have rendered obvious a system including a
data entry system capable of receiving a unique identifier associated with a
particular merchant having each of the desired gifts, a database storage
system that stores and retrieves the unique identifier, and a display system
that displays the unique identifier to a prospective purchaser?
I. RECAPTURE REJECTION
A. FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Appellants filed the ‘014 application containing original
prosecution claims 1-14.
2. The Examiner rejected claims 1-14 under 35 U.S.C. § 103 as
being unpatentable over Chain Store Age and Appellants’ Admitted Prior
Art. Office Action dated June 20, 1997.
3. Appellants filed an Amendment in response to the Office
Action in which Appellants amended claim 1 as set forth below:
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1. (Amended) A multi-merchant gift registry comprising:
a gift registry kiosk disposed proximate the stores
of a plurality of merchants in a shopping area, each of
said merchants participating in the gift registry, the gift
registry kiosk having;
a first data entry system through which first
information and inquiries about registrants in the
gift registry are entered into the computer system,
the first information for each registrant including at
least [one name for the registrant] the registrant's
name;
a second data entry system capable of receiving
second information, the second information
including a list of potential gifts which the
registrant has identified and [information about] a
unique identifier associated with the particular
merchant[s] having each of the desired gifts [are
from];
a database storage system that stores and retrieves
the first and second information about the registrant[s]
and the unique identifier associated with the particular
merchant having each of the desired gifts; and
a display system that displays the list of potential
gifts for a particular registrant and information about the
particular merchants the desired gifts are from, including
the unique identifier associated with the particular
merchant having each of the desired gifts, in response to
an inquiry from a prospective purchaser.
Amendment dated September 12, 1997, pp. 1-2.
4. Appellants traversed the rejection of claims 1-14 and argued:
The claims as amended are drawn to a gift registry
that serves a plurality of merchants each having a
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store in a shopping area. Neither Applicants’
admitted prior art nor the publication article is drawn
to a registry serving a plurality of merchants, each
merchant having a store in a shopping area. In fact,
the publication article inferentially teaches away from
the registry serving a number of stores in a shopping
area. The registry in the publication article serves a
number of stores under common ownership in a chain
of stores. Typically the individual stores making up
the chain of stores are located distant from one
another in order to attract customers from a number of
spatially distant areas, as distinct from the present
invention in which the registry serves a number of
different stores in a shopping area.
Amendment dated September 12, 1997, p. 5.
B. PRINCIPLES OF LAW
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
surrendered in an effort to obtain allowance of claims in the patent sought to
be reissued. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
“deliberate withdrawal or amendment … cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an
error of the kind which will justify the granting of a reissue patent which
includes the [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995 (Fed. Cir. 1993) (quoting Haliczer v. United States, 356
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F.2d 541, 545 (Ct. Cl. 1966)); see also Hester Indus., Inc. v. Stein, Inc., 142
F.3d 1472, 1480 (Fed. Cir. 1998).
The Federal Circuit’s opinion in Clement discusses a three-step test
for analyzing recapture.
Step 1 involves a determination of “whether and in what ‘aspect’ any
claims sought to be reissued are broader than the patent claims.” 131 F.3d at
1468.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. Id. at 1468-
69. In this respect, review of arguments and/or amendments during the
prosecution history of the application, which matured into the patent sought
to be reissued, is appropriate. In reviewing the prosecution history, the
Federal Circuit observed that “[d]eliberately canceling or amending a claim
in an effort to overcome a [prior art] reference strongly suggests that the
applicant admits that the scope of the claim before cancellation or
amendment is unpatentable.” Id. at 1469. See also Hester Indus., 142 F.3d
at 1481 (“an amendment to overcome a prior art rejection evidences an
admission that the claim was not patentable” (citations omitted)).
Step 3 of the Clement test is applied when the broadening relates to
surrendered subject matter and involves a determination of “whether the
surrendered subject matter has crept into the reissue application claim.” 131
F.3d at 1469 (citations omitted).
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C. ANALYSIS
Appellants argue claims 1-8 and 15-29 as a group. App. Br. 10-13.
We select claim 1 as representative, and claims 2-8 and 15-29 stand or fall
with claim 1 for this ground of rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
As to the first step of the Clement test, reissue claim 1 seeks to delete
the claim limitation of “a gift registry kiosk disposed proximate the stores of
a plurality of merchants in a shopping area, each of said merchants
participating in the gift registry” from patented claim 1. Reissue claim 1
adds to the preamble the following: “system for enabling a registrant to
input gift information into a gift registry that is maintained for the stores of a
plurality of merchants that are located in an area.” Thus, reissue claim 1 is
broader than patented claim 1 in at least two aspects. First, reissue claim 1
does not call for a “gift registry kiosk” that is to be “disposed proximate the
stores of a plurality of merchants.” Second, reissue claim 9 does not call for
the plurality of merchants participating in the gift registry to be “in a
shopping area.”
Appellants argue that reissue claim 1 is not broader than patented
claim 1 in this second aspect because reissue claim 1 recites in the preamble
that the system is for a gift registry that is maintained for the stores of a
plurality of merchants “that are located in an area.” App. Br. 10-11. We
disagree.
“A claim of a reissue application is broader in scope than the original
claims if it contains within its scope any conceivable apparatus or process
which would not have infringed the original patent.” Tillotson, Ltd. v.
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Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987) (citing In re Self,
671 F.2d 1344 (CCPA 1982) and In re Ruth, 278 F.2d 729 (1960)). The
requirement of patented claim 1 that the merchants are located “in a
shopping area” calls for the merchants to be located in proximate spatial
relation to one another, such as in a mall or shopping center. The
requirement of reissue claim 1, however, that the merchants are located “in
an area” is broader, and reasonably could encompass merchants located in
spatially distant locations that are still within “an area” such as merchants
located in the same town or county. In other words, the unmodified “area”
limitation is broader from a geographical perspective than the “shopping
area” limitation of the patented claim 1. As such, we find that reissue claim
1 is broader than patented claim 1 because reissue claim 1 does not require
the merchants participating in the gift registry to be located “in a shopping
area.”
As to the next step of the Clement test, this second broadened aspect
of reissue claim 1 relates to surrendered subject matter, because
(1) Appellants amended original prosecution claim 1 to add the limitation
that the plurality of merchants participating in the gift registry are located in
a shopping area (Fact 3), and (2) Appellants argued that the requirement that
the merchants are located in a shopping area, as opposed to being located in
spatially distant areas, such as stores in a group of chain stores, distinguished
the invention of amended original prosecution claim 9 from the prior art
(Fact 4).
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Appellants contend that the arguments made during prosecution of the
‘874 patent to overcome the prior art were “directed to the distinguishing
factor of a gift registry system that serves many merchants, each having a
unique identifier, where the gift information is correlated with the selected
merchant via the unique merchant identifier.” App. Br. 13. We find no such
argument in the Amendment dated September 12, 1997 referred to by the
Examiner and Appellants. Rather, the arguments in this Amendment
distinguish the claimed invention from the prior art by focusing on the
distinction between the claimed location of the plurality of merchants’ stores
“in a shopping area” and the location of the stores in the prior art, which
were, according to Appellants, located in spatially distant areas.
As to the third step of the Clement test, Appellants have not added any
amendments to reissue claim 1 that are narrower in an aspect germane to a
prior art rejection. As such, we find that the recapture rule bars reissue
claim 1. Claims 2-8 and 15-29 fall with claim 1.
II. OBVIOUSNESS REJECTIONS
A. FINDINGS OF FACT
We find that the following additional findings are supported by at
least a preponderance of the evidence.
5. Chain Store Age describes a computerized gift registry system
running on an IBM 3090 mainframe and PC workstations.
Chain Store Age, cover page, ll. 31-39.
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6. Chain Store Age describes that the bride walks the store with a
consultant and picks out items, the consultant scans the SKU
number with a handheld, portable laser scanner, and the
consultant then downloads the scanner information by batch to
the registry computer. Chain Store Age 62, col. 1, ll. 1-10 and
ll. 41-43.
7. Customers wishing to purchase items from the registry list use a
touch-screen kiosk located in the store. Chain Store Age 62,
col. 3, ll. 14-28.
8. Chain Store Age describes that “with the new system, the
registries of Dayton’s, Hudson’s and Marshall Field’s are
integrated centrally for the first time” and that “[b]etween
Dayton’s, Hudson’s and Marshall Field’s, the registry boasts
some 62,000 registrants annually, accounting for about $110
million in sales.” Chain Store Age 62, col. 1, ll. 63-66; id. at
cover page, ll. 12-16.
9. As such, Chain Store Age discloses a computerized gift registry
system that is used in multiple different stores.
10. Chain Store Age does not specifically disclose using a unique
merchant identifier to keep track of which selected gifts on the
registry come from which store.
11. McCalley describes customized services for use in an electronic
shopping system that simulates many aspects of “live” shopping
in a mall and may include: “a personal directory for keeping
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customized list of items which cross store boundaries”; “a bridal
registry server, maintained on a mall-wide basis”; and “a
product search server to provide subscribes with the ability to
easily find products in a store based upon various input
information, e.g. price, sex, age, etc.” McCalley, col. 10, ll. 17-
20; id. at col. 22, ll. 1-14.
12. Brumback discloses an electronic merchandising system in
Toronto’s Eaton Centre mall in which shoppers, by touching a
TV screen in a kiosk in the mall, can ask a computerized
directory for a list of gifts for a particular intended recipient
(e.g., a small boy who likes sports). The system provides gift
suggestions from several stores in the mall on the kiosk screen.
Once the customer selects a gift, the system can map and
provide directions, via the kiosk screen, to the store in which the
selected gift is sold. Brumback 4, ll. 4-14.
13. Brumback discloses that “[t[here seems to be little question
among the current experimenters that electronic communication
with customers at the point of sale is here to stay.” Brumback 4,
ll. 4-6.
14. Brumback further states, “A retail service that adapts easily to
the electronic age is bridal and gift registry. Filene’s Jordan
Marsch, Hudson’s and Dayton’s are upgrading their
computerized registries.” Brumback 3, ll. 23-25.
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B. PRINCIPLES OF LAW
In many fields it may be that there is little discussion of obvious
techniques or combinations, and it often may be the case that
market demand, rather than scientific literature, will drive
design trends. Granting patent protection to advances that
would occur in the ordinary course without real innovation
retards progress and may, in the case of patents combining
previously known elements, deprive prior inventions of their
value or utility.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR, 550 U.S. at 421.
C. ANALYSIS
Chain Store Age and either McCalley or Brumback
For the first ground of rejection based on obviousness (Chain Store
Age and McCalley), Appellants argue claims 1-8 and 15-29 as a group. See
App. Br. 14-23. We select claim 1 as a representative claim, and claims 2-8
and 15-29 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
For the second ground of rejection based on obviousness (Chain Store
Age and Brumback), Appellants argue claims 1-8, 15-17, 20-22, and 24-29
as a group. See App. Br. 30-37. We select claim 1 as a representative claim,
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and claims 2-8, 15-17, 20-22, and 24-29 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Chain Store Age discloses a gift registry
system, including a data terminal comprising a first data entry system, a
second data entry system, a database storage system, and a display system
substantially as called for in claim 1, except that Chain Store Age does not
specifically disclose that the unique identifier for each gift, i.e. the collection
of SKU numbers, includes a unique merchant identifier.5 Ans. 6, 10. The
Examiner found that McCalley discloses providing a personal directory for
keeping a customized list of gifts which cross store boundaries and
providing a bridal registry server maintained on a mall-wide basis. Ans. 6.
The Examiner found that this disclosure in McCalley would have suggested
associating gifts with a corresponding store on a mall-wide basis and
providing a unique merchant identifier. Id.
The Examiner further found that Brumback discloses a system that
allows shoppers, using a kiosk in the mall, to ask a computerized directory
for a list of gift ideas. Ans. 10. The directory provides a list of suggested
gifts from several stores, and once the customer selects a gift, the computer
can map directions from the kiosk to the store having the selected gift. Ans.
10-11. The Examiner found that this disclosure in Brumback indicates that
the computerized directory associates the gifts with a corresponding store in

5 The Examiner found that SKU numbers can be specific to the merchant in
the case of a store brand and therefore identified with the merchant.
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the mall, thus suggesting the use of a unique merchant identifier. Ans. 11.
We agree with the Examiner’s findings (Facts 5-7 and 10-12).
Based on these findings, the Examiner determined that it would have
been obvious to modify the invention of Chain Store Age to store and
display a gift registry including gifts associated with different merchants and
to implement this modification using a unique merchant identifier. Ans. 7,
11. The Examiner stated that the reason for making this modification is to
“provide subscribers with the ability to easily find products in a particular
store, thereby increasing customer satisfaction and convenience.” Ans. 7, see
also Ans. 11.
Chain Store Age discloses a system that provides an integrated,
centralized gift registry for multiple stores, i.e., Hudson’s, Dayton’s, and
Marshall Field’s (Fact 8). While these stores were commonly owned by
Dayton Hudson Corporation at the time of the article, they presumably did
not all carry the exact same products. The system of Chain Store Age had
an integrated central registry for all three stores (Fact 9). As such, when a
customer used the kiosk to retrieve a gift registry from the system, if the
registrant had registered for gifts in more than one store served by the
registry, then the registry would likely have provided the customer with the
name of the store in which the gifts on the registry could be found. While
such a disclosure is not explicit in Chain Store Age (Fact 10), it would
certainly have been obvious in view of the suggestion in McCalley to
provide specialized services in an electronic shopping system, such as a
bridal registry on a mall-wide basis (Fact 11), which of necessity would
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require the use of a way to identify the store in which each registered gift
can be found. As such, we agree with the Examiner’s findings and
reasoning that it would have been obvious, in view of this suggestion in
McCalley, to have modified the system in Chain Store Age to identify the
merchant from which the gifts on the registry can be obtained so as to
provide this information for the convenience of the customer seeking to
purchase a gift on the registry.
Brumback discloses a gift suggestion system, available from a kiosk
in a shopping mall, that provides a list of suggested gifts found in various
stores in the mall, and then provides the customer with the name of the store
and directions to the store in which a selected gift can be found (Fact 12).
This gift suggestion system would, of necessity, require the use of a way to
identify the store in which the suggested gifts can be found. As such, we
also agree with the Examiner’s findings and reasoning that it would have
been obvious, in view of this suggestion in Brumback, to have modified the
system in Chain Store Age to provide a way to identify the merchant from
which the gifts on the registry can be obtained so as to provide this
information for the convenience of the customer seeking to purchase a gift
on the registry.
Further, it appears from the prior art that there was clearly market
demand prior to and at the time of Appellants’ invention to provide
computerized interfaces for gift registries (Facts 13 & 14). The use of a
unique merchant identifier, such as a store number or store name, to identify
the merchant from which gifts may be purchased is the epitome of an
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advance spurred by market demand that would occur in the ordinary course
without real innovation. KSR, 550 U.S. at 419. In other words, the use of a
unique merchant identifier to identify where gifts in a registry can be
purchased is likely not the product of innovation but of ordinary skill and
common sense. Id. at 421. As such, we sustain the Examiner’s rejection of
claim 1 under § 103 as being unpatentable over Chain Store Age and
McCalley. Claims 2-8 and 15-29 fall with claim 1. We also sustain the
Examiner’s rejection under § 103 as being unpatentable over Chain Store
Age and Brumback. Claims 2-8, 15-17, 20-22, and 24-29 fall with claim 1.
Rejection of claims 18, 19, and 23 over Chain Store Age, Brumback, and
McCalley
Appellants do not present any additional arguments for this third
ground of rejection based on obviousness beyond the arguments presented
for independent claims 15 and 20 from which claims 18 and 19 and claim 23
depend, respectively. App. Br. 38. We find these arguments unpersuasive
for the reasons provided supra. Accordingly, we sustain the rejection of
claims 18, 19, and 23 as being unpatentable over Chain Store Age,
Brumback, and McCalley.
CONCLUSIONS
Claims 1-8 and 15-29 impermissibly recapture subject matter
surrendered during prosecution of the ‘874 patent.
The proposed combination of Chain Store Age and either McCalley or
Brumback would have rendered obvious a system including a data entry
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system capable of receiving a unique identifier associated with a particular
merchant having each of the desired gifts, a database storage system that
stores and retrieves the unique identifier, and a display system that displays
the unique identifier to a prospective purchaser.
DECISION
The decision of the Examiner to reject claims 1-8 and 15-29 is
AFFIRMED.

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)(iv) (2007).

AFFIRMED

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