Junger, Peter J. et al.Download PDFPatent Trials and Appeals BoardMay 15, 20202019001133 (P.T.A.B. May. 15, 2020) Copy Citation 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). Appeal 2019-001133 Application 12/314,150 2 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. Appeal 2019-001133 Application 12/314,150 3 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 Appeal 2019-001133 Application 12/314,150 4 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.) Appeal 2019-001133 Application 12/314,150 5 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 Appeal 2019-001133 Application 12/314,150 6 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 Appeal 2019-001133 Application 12/314,150 7 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 Appeal 2019-001133 Application 12/314,150 8 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 Appeal 2019-001133 Application 12/314,150 9 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.” Appeal 2019-001133 Application 12/314,150 10 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. Appeal 2019-001133 Application 12/314,150 11 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. Appeal 2019-001133 Application 12/314,150 12 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 Appeal 2019-001133 Application 12/314,150 13 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 Appeal 2019-001133 Application 12/314,150 14 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. Appeal 2019-001133 Application 12/314,150 15 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. Appeal 2019-001133 Application 12/314,150 16 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 Appeal 2019-001133 Application 12/314,150 17 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. Copy with citationCopy as parenthetical citation