Ex Parte Wicks et al

Board of Patent Appeals and Interferences

Sep 11, 2003

08802575 (B.P.A.I. Sep. 11, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding
precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES E. WICKS and DAVID FINE
____________
Appeal No. 2002-0410
Application No. 08/802,575
____________
ON BRIEF
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Before RUGGIERO, DIXON, and BLANKENSHIP, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-18,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2002-0410
Application No. 08/802,575
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Appellants’ invention relates to a pricing information pager. An understanding of
the invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A paging system comprising:
a bargain information database;
a processor for accessing said bargain information database; and
a transmitter for transmitting said information to a pager.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Wang et al. (Wang) 5,649,289 Jul. 15, 1997
(Filed July 10, 1995)
Claims 1-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Wang.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejection, we make reference to the examiner's
answer (Paper No. 12, mailed Jan. 8, 1999) and the examiner's supplemental answer
(Paper No. 14, mailed Jun. 23, 1999) for the examiner's reasoning in support of the
Appeal No. 2002-0410
Application No. 08/802,575
3
rejection, and to appellants’ brief (Paper No. 11, filed Sep. 29, 1998) and reply brief
(Paper No. 13, filed Mar. 4, 1999) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellants argue that Wang does not teach or suggest the use of “a bargain
information database” as recited in independent claims 1 and 9. We agree with
appellants.
The examiner maintains throughout the Final Rejection, the Examiner’s Answer
and Supplemental Examiner’s Answer that it would have been obvious to one of
ordinary skill in the art to include any type of message information in the messaging
system of Wang, such as bargain information. We disagree with the examiner’s
conclusion which goes well beyond any level of reasonableness. If we were to find this
argument persuasive, we would have to find that any data is obvious in view of a
teaching of any other type of completely unrelated data. Here, Wang merely teaches
the storage of subscriber information for locating the customers in a customer paging
area and storage of the message to be processed. (Wang at col. 2). From this basic
Appeal No. 2002-0410
Application No. 08/802,575
1 While we do agree with the examiner that the breadth of the method claim is quite broad, and
we do find it quite well know that many shoppers have networked and spread the word of bargains so as
to get the great deals, the examiner has provided no such evidence that the type of methodology or a
similar methodology has been reduced to a tangible technological based system using a database and a
processor whether the mode of notice is phone, page, email or traditional paper mail. The examiner has
cited and expressly stated that the Champion, III et al. patent (4,812,843) has not been applied against the
claims. Therefore, we have not relied upon this teaching. From our review of the abstract of the
Champion, III et al. patent we note that the patent teaches that “[t]he system provides information . . .
which may be of interest to a subscriber including airline flight and related travel and stock information.”
The system “ automatically provides the subscriber with updated information concerning changes in status
or condition.” Additionally, we note that the examiner has not indicated any search in class 705, which is
directed to many of the automated business methods. Upon return of the case to the examiner, the
examiner should consider a search in this area.
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teaching of storing message data and locating data, we find it unreasonable to
extrapolate this operational data to reach the conclusion that any message containing
data from a stored database and communicated to a specific subscriber by a processor
would have been obvious.1 This would require us to speculate, which we decline to do.
Additionally, appellants argue that the message data stored in Wang is not a
database. (See brief at pages 8-9). We agree with appellants and find that the request
for transmission of a page and the associated message data is not a database and
would not in our opinion have fairly suggested the storage and use of or compiling of a
“bargain information database.” Therefore, the examiner has not set forth a prima
facie case of obviousness of the claimed invention, and we cannot sustain the rejection
of independent claims 1 and 9 and their dependent claims 2-8 and 10-18.
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Application No. 08/802,575
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1-18 under 35
U.S.C. § 103(a) is reversed.
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2002-0410
Application No. 08/802,575
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RONALD P KANANEN
RADER, FISHMAN & GRAUER
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