Junger, Peter J. et al.

Patent Trials and Appeals Board

May 15, 2020

12314150 - (D) (P.T.A.B. May. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/314,150 12/04/2008 Peter J. Junger 62941.2698 5099
94551 7590 05/15/2020
Landmark Intellectual Property Law, PLLC
21515 HAWTHORNE BLVD
SUITE 200
TORRANCE, CA 90503
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
05/15/2020 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 PETER J. JUNGER and KRISTIN SECRETO
____________

Appeal 2019-001133
Application 12/314,150
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals the Examiner’s rejections of claims 1–7
and 10–26. We sustain the Examiner’s rejection of these claims under
35 U.S.C. § 101 (Rejection I); we do not sustain the Examiner’s rejection of
these claims under 35 U.S.C. § 103 (Rejection II). As we sustain at least one
rejection for each claim on appeal, we AFFIRM.2

1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint
inventors”) as defined in 37 C.F.R. § 1.42. “The real party in interest is
e2interactive, Inc.” (Appeal Br. 1.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134 and
35 U.S.C. § 6(b).
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BACKGROUND
The Appellant’s invention “relates to fraud prevention and recovery”
in the context of “registering product transactions.” (Spec. ¶ 2.)
In a typical supply chain, a manufacturer ships a particular product to
a retail store, the product arrives at the retail store, and the retail store offers
the product for sale. (See, e.g., Spec. ¶ 68.) In one scenario, someone buys
the delivered product from the retail store, and, thus, the product is
“legitimately acquired” during a “first sale.” (Id. ¶ 112.) In another
scenario, someone steals the delivered product from the retail store, and,
thus, the product is acquired, but it is not legitimately acquired. (See id.)
Under either of these two scenarios, there may be an ensuing attempt
to resell the previously-acquired product to an entity that specializes in the
resale of preowned products (e.g., a pawnshop). (See Spec. ¶ 5.)
The problem addressed by the Appellant is that, when a person (e.g., a
pawnshop employee) is contemplating the purchase of a previously-acquired
product, he/she has no way of knowing whether or not this product was
legitimately acquired. (See id. Spec. ¶¶ 3–7.) The Appellant solves this
problem with a system that records and updates data about a product’s status
as it is processed through different points in the supply chain. (See id.
¶¶ 24–26, 43, 45, 62–64, 75, 78, Figs. 1, 5.)
In a brick-and-mortar world, data about a product’s status could be
recorded on a data table organized to store this information. (Cf. Spec.
¶¶ 24, 109, 110, Fig. 5.) For example, as shown below, a data table could be
organized so that each row corresponds to a particular product entry, and
columns correspond to information pertaining to this particular product and
its process through plural points in the supply chain.
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PRODUCT 
IDENTIFIER 
CURRENT 
STATUS 
SHIPPED TO 
LOCATION
DELIVERED TO 
LOCATION
FIRST 
SALE DATE

As shown above, the data table could include a column for a product’s
“unique identifier” (id. ¶ 49), a column (field) for a product’s “status” (id.
¶ 24), a column (field) for a product’s anticipated (shipped to) “location” (id.
¶ 110), a column (field) for the product’s actual (delivered to) “location”
(id.), and a column (field) for the “first sale date” a product is sold (id.).
As shown below, when products are introduced into the supply chain,
their unique identifiers can be recorded on the data table, and, as products
are processed through plural points in the supply chain, their fields can be
updated. (See Spec. ¶¶ 77–80, Figs. 6, 7.)
PRODUCT 
IDENTIFIER 
CURRENT 
STATUS 
SHIPPED TO 
LOCATION
DELIVERED TO 
LOCATION
FIRST 
SALE DATE
ProductA
ProductB

PRODUCT 
IDENTIFIER 
CURRENT 
STATUS 
SHIPPED TO 
LOCATION
DELIVERED TO 
LOCATION
FIRST 
SALE DATE
ProductA Shipped StoreX
ProductB Shipped StoreY

PRODUCT 
IDENTIFIER 
CURRENT 
STATUS 
SHIPPED TO 
LOCATION
DELIVERED TO 
LOCATION
FIRST 
SALE DATE
ProductA Delivered StoreX StoreX
ProductB Delivered StoreY StoreY

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PRODUCT 
IDENTIFIER 
CURRENT 
STATUS 
SHIPPED TO 
LOCATION
DELIVERED TO 
LOCATION
FIRST 
SALE DATE
ProductA Sold StoreX StoreX June 5, 2006
ProductB Delivered StoreY StoreY -------------
As shown above, ProductA was shipped to StoreX, ProductA was delivered
to StoreX, and ProductA was sold by StoreX on June 5, 2006.3 As also
shown above, ProductB was shipped to StoreY, ProductB was delivered to
StoreY, and ProductB was not sold by StoreY.4 This information allows a
contemplated financial transaction involving the purchase of a previously-
acquired product to be vetted for the fraudulent sale of stolen property.
For example, when a pawnshop employee is contemplating
purchasing ProductA on July 5, 2006, the pawnshop employee calls
someone having access to the data table, and tells him/her about this
contemplated purchase and the date thereof. (See Spec. ¶ 85, Fig. 8A.) The
data table shows that ProductA was previously legitimately acquired on
June 5, 2006 (which is prior to July 5, 2006), and so the pawnshop employee
is told that ProductA appears to be a legitimate candidate for resale. (See id.
¶ 90, Fig. 8A.)
Likewise, when a pawnshop employee is contemplating purchasing
ProductB on July 5, 2006, the pawnshop employee contacts someone having
access to the data table about this contemplated purchase and the date

3 Thus, StoreX is the “anticipated first sale location” and the “actual first sale
location” of ProductA, and ProductA was “legitimately acquired” from
StoreX in a “first sale.” (See Spec. ¶¶ 109, 110, see also Appeal Br. 2.)
4 Thus, StoreY is the “anticipated first sale location” and the “actual first sale
location” of ProductB, but ProductB was not “legitimately acquired” from
StoreY in a “first sale.” (See Spec. ¶¶ 109, 110, see also Appeal Br. 2.)
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thereof. (See Spec. ¶ 85, Fig. 8A.) The data table shows that ProductB was
not legitimately acquired from StoreY, and so the pawnshop employee is
told that ProductB does not appear to be a legitimate candidate for resale.
(See id. ¶ 90, Fig. 8A.) A law enforcement agency could be contacted to
confiscate ProductB, and the law enforcement agency would know, from the
data table, that StoreY is entitled to recover this stolen product. (See id.
¶ 91, Fig. 8A.)
Thus, the data table can be used to reduce fraud and facilitate product
recovery, because it records and updates data about a product’s status as it is
processed through different points in the supply chain.
ILLUSTRATIVE CLAIM
1. A fraud reduction and product recovery system,
comprising:
a database including a plurality of product entries, each
product entry having at least a status field associated therewith;
a first interface to the database configured to enable a
first authorized user to add product entries and change the status
identifiers of the product entries, the first interface being further
configured to automatically update product entries, including
the associated status fields, as individual products are processed
through plural points in the supply chain, where each product
entry includes fields for a first sales date, anticipated first sales
location, and actual first sales location;
a second interface to the database configured to enable a
second authorized user to input information regarding a product
to be checked against the database to determine whether it was
legitimately acquired and provide an indication to the second
authorized use whether the product was legitimately acquired;
and
a product checking program module configured to
determine
(i) whether the product to be checked was
legitimately acquired upon an inquiry from an authorized
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user, wherein whether the product to be checked was
legitimately acquired is based at least in part upon a
determination of whether a date recorded in the first sale
date field is prior to a date of an attempted purchase; and
(ii) automatically when and as the product to be
checked is passed to a different point in the supply chain.
REJECTION I
The Examiner rejects claims 1–7 and 10–26 under 35 U.S.C. § 101 as
being “directed to” a judicial exception (i.e., an abstract idea) “without
significantly more.” (Final Action 8.) We sustain this rejection.
Judicial Exception
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
Yet the Supreme Court has “long held” that this provision contains an
important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013).) These three concerns are
“judicially created exceptions to § 101,” or, more concisely, “judicial
exceptions.” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1311 (Fed. Cir. 2016).) Thus, an “abstract idea” is a judicial exception to
subject matter that seemingly otherwise falls within a statutory category
listed in 35 U.S.C. § 101.
The Alice Test
In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme
Court provided a two-step test to detect when an attempt is being made to
patent an abstract idea in isolation. (Alice, 573 U.S. at 217–18.) In Alice
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step one, a determination is made as to whether the claim at issue is
“directed to” an abstract idea. (Id. at 218.) If the claim at issue is “directed
to” an abstract idea, Alice step two must be performed. (See Alice, 573 U.S.
at 217–18.) In Alice step two, a determination is made as to whether
“additional elements” in the claim, both individually and as an ordered
combination, contribute “significantly more” than the abstract idea. (Id.) If
a claim is directed to an abstract idea, and its additional elements do not add
significantly more to this abstract idea, the claim fails the Alice test for
patent eligibility.
2019 § 101 Guidance
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with specific steps for discerning whether a
claim passes the Alice test for patent eligibility. (See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).) These
steps are “[i]n accordance with judicial precedent” and consist of a
two-pronged Step 2A and a Step 2B. (Id. at 52.)
Analysis
The Examiner concludes that independent claim 1 does not pass the
Alice test for patent eligibility because it is directed to an abstract idea
involving transactions between people, and its additional elements do not
add significantly more to this abstract idea. (See Final Action 8–10.) We
agree with the Examiner.
We begin our analysis with the first prong of Step 2A (Prong One),
where we determine whether the claim “recites” an abstract idea. (2019
§ 101 Guidance, 84 Fed. Reg. at 54.) The 2019 § 101 Guidance “extracts
and synthesizes key concepts identified by the courts as abstract ideas,” and
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these concepts include “[c]ertain methods of organizing human activity,”
and, more particularly, “fundamental economic principles or practices.” (Id.
at 52.) For example, the desire to detect and prevent fraud during financial
transactions is “an abstract idea and is not patent-eligible under § 101.”
(CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011).)
Independent claim 1 recites a database including “a plurality of
product entries.” (Appeal Br., Claims App.) Claim 1 recites that each
product entry has a “status field associated therewith,” and includes “fields
for a first sales date, anticipated first sales location, and actual first sales
location.” (Id.)
Thus, independent claim 1 sets forth a database that is organized in
the same manner as the data table discussed above.
Independent claim 1 recites that a “first authorized user” is enabled to
“to add product entries and change the status identifiers of the product
entries.” (Id.) Claim 1 recites that “product entries, including the associated
status fields,” are “update[d]” as “individual products are processed through
plural points in the supply chain.” (Id.) And claim 1 recites that this
updating occurs “when and as” the product “is passed to a different point in
the supply chain.” (Id.)
Thus, independent claim 1 sets forth that the database that is updated
in the same manner as the data table discussed above.
Independent claim 1 recites that a “second authorized user” is enabled
“to input information regarding a product to be checked against the database
to determine whether it was legitimately acquired.” (Appeal Br., Claims
App.) Claim 1 recites that “upon an inquiry from an authorized user,” a
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determination is made as to “whether the product to be checked was
legitimately acquired.” (Id.) Claim 1 recites that this determination is “based
at least in part upon a determination of whether a date recorded in the first
sale date field is prior to a date of an attempted purchase.” (Id.) And claim 1
recites that the second authorized user is provided with an “indication” as to
“whether the product was legitimately acquired.” (Id.)
Thus, independent claim 1 sets forth that a person (e.g., a pawnshop
employee) can inquire about the legitimacy of a product presented for resale,
a determination is made to answer this inquiry, and the person is informed of
this answer.
Consequently, independent 1 recites a “fraud reduction and product
recovery system” that performs financial-transaction-vetting steps. (Appeal
Br., Claims App.) The vetting of financial transactions to reduce fraud is a
fundamental economic principle or practice which is a certain method of
organizing human activity that constitutes an abstract idea. (See 2019 § 101
Guidance, 84 Fed. Reg. at 52.) Thus, under Prong One of Step 2A,
independent claim 1 recites an abstract idea, and we proceed to the second
prong of Step 2A (Prong Two).
In Prong Two, we evaluate whether a claim contains additional
elements that “integrate” the abstract idea “into a practical application.”
(See 2019 § 101 Guidance, 84 Fed. Reg. at 52.) “[A]dditional elements” are
“claim features, limitations, and/or steps that are recited in the claim beyond
the identified judicial exception.” (Id. at 55, n.24) Thus, the “additional
elements” in independent claim 1 are those “beyond” the abstract idea of
vetting a financial transaction to reduce fraud.”
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When an additional element in a claim is a “computer,” the relevant
question is not whether the claim requires the computer to accomplish a
recited function. (Alice, 573 U.S. at 223.) Rather, “the relevant question” is
whether the claim does more than simply “instruct the practitioner to
implement the abstract idea” on a computer. (Id. at 225.) The mere
recitation of a computer in the claim, and/or words simply saying “apply”
the abstract idea “with a computer,” will not transform the abstract idea into
a patent-eligible invention. (Id. at 223.) In short, the sheer introduction of a
computer into the claim is not enough to “impart patent eligibility.” (Id.)
Independent claim 1 recites a “first interface to the database,” a
“second interface to the database,” and a “product checking program
module.” (Appeal Br., Claims App.) These computer components are
configured “to enable” or “automatically” perform the financial-transaction-
vetting steps discussed above. Thus, claim 1 simply instructs the
practitioner to implement abstract-idea-imbedded steps with a computer.
The 2019 § 101 Guidance requires us to look at independent claim 1’s
additional elements not only individually, but also in combination. (See
2019 § 101 Guidance, 84 Fed. Reg. at 54.) Indeed, the Federal Circuit has
held that it is possible for “an inventive concept” to reside in “the non-
conventional and non-generic arrangement of known, conventional pieces,”
such as “a set of generic computer components.” (Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).)
Here, however, claim 1 does not specify any coordination, interaction, or
other ordered arrangement between the two interfaces and/or with the
product checking program module.
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Consequently, under Prong Two of Step 2A, the additional elements
in independent claim 1 do not integrate the recited abstract idea into a
practical application, and we proceed to Step 2B.
In Step 2B, we evaluate whether “additional elements recited in the
claim[] provide[s] ‘significantly more’ than the recited judicial exception.”
(See 2019 § 101 Guidance, 84 Fed. Reg. at 56.) More particularly, we
evaluate whether these additional elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity,” or whether they instead “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
(Id.) If the additional elements consist of a conventional arrangement of
conventional computer components, they will not amount to significantly
more, and the claim fails the Alice test for patent eligibility. (Id.)
Here, the Specification describes the database, the interfaces, and the
product checking programmed logic circuitry as conventional components
performing conventional computer functions. (See, e.g., Spec. ¶¶ 41–47, 68,
Figs. 1, 5.) And, as indicated above, independent claim 1 does not specify
any ordered arrangement of the first interface, the second interface, and/or
the product checking program module.
Consequently, under Step 2B, the additional elements in independent
claim 1 do not provide significantly more than the recited abstract idea (i.e.,
the detection of fraud in financial transactions).
The Appellant’s Arguments
The Appellant advances arguments based upon the Federal Circuit’s
holdings in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
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Cir. 2014), Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016);
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016); and Amdocs (Israel) Limited v. Openet Telecom, Inc. 841 F.3d 1288
(Fed. Cir. 2016).
Specifically, the Appellant argues that, like the claims at issue in
DDR, independent claim 1 address a problem that is particular to the
Internet. (See Appeal Br. 5–6.) In DDR, the claims addressed a problem
that did not arise in “the pre-Internet world,” namely “the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly transported
away from a host’s website after ‘clicking’ on an advertisement and
activating a hyperlink.” (DDR, 773 F.3d at 1257.) In contrast, the problem
addressed by the Appellant’s invention was born the first time a thief
attempted to sell a stolen product to an unsuspecting purchaser. And the
solution to this problem, then and now, is tracking the chain of legal
ownership of the product so that it can be determined whether or not the
merchandise was stolen.
The Appellant argues that independent claim 1 “represents aspects of
Enfish combined with Amodocs,” namely that “processing of various data
stores in a networked environment leads to different authorizations,
increased efficiencies, processing, and other resource-savings.” (Appeal
Br. 8 (emphasis added).) A major flaw in this argument is that claim 1 does
not require “various data stores” and/or a “networked environment.”
Independent claim 1 only requires a single “database,” and, as discussed
above, does not recite any specific arrangement, much less a networked
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arrangement, of the interface(s) and/or the product checking program
module.
The Appellant argues that McRO “supports the proposition that
improvements in computer tools that make them easier to use (e.g., user
interface inventions) or that save users effort or time or otherwise improve
their performance,” are patent-eligible improvements. (Appeal Br. 7.)
However, the Federal Circuit held in Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1084, (Fed. Cir. 2019) and Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1378 (Fed. Cir. 2019) that improving a user’s experience while
using a computer application is not, in and of itself, an improvement in
computer functionality. And, the Federal Circuit held in OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) that using a
computer to perform a task “more quickly or more accurately” is not a ticket
into patent-eligible territory.
Thus, after careful consideration of the Appellant’s arguments, we
still agree with the Examiner’s conclusion that independent claim 1 does not
pass the Alice test for patent eligibility.
Summary
We sustain the Examiner’s rejection of independent claim 1 under
35 U.S.C. § 101. The Appellant argues all of the claims on appeal as a
group (see Appeal Br. 5–9), and so we likewise sustain the Examiner’s
rejection of claims 2–7 and 10–26 under 35 U.S.C. § 101.5

5 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
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REJECTION II
The Examiner rejects claims 1–7 and 10–26 under 35 U.S.C. § 103 as
unpatentable over Swan6 and Woodward.7 (Final Action 12.) We do not
sustain this rejection.
Obviousness
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
(KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).) However, when
relying upon this rationale to establish the obviousness of a claim, the
proposed combination of the prior art elements, “even if supported by a
motivation to combine,” must possess “all limitations in [the] claim.”
(CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).)
Analysis
The Examiner concludes that independent claim 1 would have been
obvious over the combined teachings of Swan and Woodward. (See Final
Action 12–14.) We agree with the Appellant that the Examiner’s conclusion
in this regard is not sufficiently supported by the record. (See Appeal
Br. 9–11.)
Swan discloses a system in which RF tag information is collected and
stored so as to track products as they move from “manufacturers,” to
“warehouses,” to “distributors,” to “retailers.” (Swan 4:24–35; see also

rejection with respect to the group or subgroup on the basis of the selected
claim alone.” (37 C.F.R. § 41.37(c)(1)(iv).)
6 US 7,850,081 B2, issued December 14, 2010.
7 US 2007/0136149 A1, published June 14, 2007.
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Fig. 2.) Swan is particularly concerned with the undetected insertion of
counterfeit products into the supply chain, as they can, and often are, later
sold to customers who assume the products to be authentic. (See id.
1:28–2:67, 15:2–16:39, Fig. 1.) Swan discloses that, for example, “[a] retail
pharmacy may use the system to confirm that the drug that they are selling
to a customer is authentic.” (Swan 16:28–30.)
Woodward discloses a system which determines whether an online
merchant’s sale of a product (e.g., an alcoholic product) conforms with
government-imposed regulations. (See Woodward ¶¶ 42, 47.) And
Woodward discloses that this determination can include a comparison of an
attempted-purchase date of the product (e.g., the day of the week) with an
applicable regulation (e.g., no alcohol sales on Sunday). (See id.) The
Examiner finds that, in Woodward’s system, an “attempted purchase” occurs
when a customer tries to purchase an alcoholic product on Sunday, and a
“first sale” occurs the following Monday because the sale of the product
“rolls forward one day.” (Answer 8.)8
The Examiner determines that it would have been obvious “to modify
Swan to include product sales/purchase date information with regulatory
parameters as taught by Woodward in the product authentication operations
disclosed by Swan.” (Final Action 14.) And the Examiner explains that the
motivation for this modification would be to ensure that a retailer conforms

8 For example, if a customer attempts to purchase an alcoholic product on
June 4, 2006 (a Sunday), and an applicable regulation does not allow alcohol
sales on Sunday, the customer must wait until June 5, 2006 (the following
Monday) to purchase this alcoholic product. According to the Examiner,
June 4, 2006 is the attempted-purchase date of the product and June 5, 2006
is the first-sale date of the product.
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with applicable regulations when the retailer is selling products to customers
residing in different states. (See Final Action 14.)
Independent claim 1 requires a determination of “whether the product
to be checked was legitimately acquired upon an inquiry from an authorized
user,” which “is based at least in part upon a determination of whether a date
recorded in the first sale date field is prior to a date of an attempted
purchase.” (Appeal Br., Claims App.) The Examiner addresses how and
why Swan’s modified system would make a determination based upon a
comparison between an attempted-purchase date and a first-sale date.
However, the Examiner does not adequately address how or why the
determination made by Swan’s modified system would be a determination of
whether the product was legitimately acquired upon an inquiry from an
authorized user.
The Appellant contends that Woodward’s system is a “preemptive”
system that determines whether a sale can “even occur” (Appeal Br. 10), and
the Examiner does not try to convince us otherwise (see Answer 7–8). Thus,
with Swan’s modified system, a customer would attempt to purchase a
product from a retailer, and, upon an inquiry from the retailer, Swan’s
modified system would determine whether this product may be purchased
(legitimately acquired) by this customer on the attempted-purchase date.
Logic dictates that a determination of whether a product was legitimately
acquired cannot be made prior to the product being acquired. 9

9 Insofar as Woodward even teaches that another inquiry could be made after
the actual sale of the product to determine whether the product was
legitimately acquired during in this first sale (e.g., to determine whether its
purchase conformed with applicable regulations), the Examiner does not
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Thus, we agree with the Appellant that the Examiner does not
sufficiently establish, on the record before us, why the proposed combination
of the prior art would result in a system that possesses all of the limitations
required by independent claim 1.
Summary
We do not sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103. The Examiner’s further findings and determinations
with respect to the rest of the claims on appeal do not compensate for the
shortcomings in the rejection of independent claim 1 (see Final Action 5–9),
and so we likewise do not sustain the Examiner’s rejection of claims 2–7
and 10–26 under 35 U.S.C. § 103.
CONCLUSION
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–7, 10–26 101  Eligibility 1–7, 10–26
1–7, 10–26 103  Swan, Woodward 1–7, 10–26
Overall
Outcome
1–7, 10–26

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

address why this determination would involve a comparison of the
attempted-purchase date and the first-sale date.