Ex Parte De Souza et al

Board of Patent Appeals and Interferences

Jun 14, 2009

09992363 (B.P.A.I. Jun. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH G. DE SOUZA,
SEAN WOODWARD,
and
JAMES W.D. FARE
____________

Appeal 2008-004036
Application 09/992,363
Technology Center 3600
____________

Decided:1 June 15, 2009
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-004036
Application 09/992,363

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-31 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellants’ claimed invention is directed to issuing rewards to
patrons of retail establishments. Upon detection of entry or departure from a
retail establishment, a customer can be given award “points” analogous to
frequent flyer-miles. (Specification 1:3-4 and 1:24-27). Claim 9,
reproduced below, is representative of the subject matter of appeal.
9. A method, comprising:
a) maintaining a score of bonus points for a customer;
b) detecting entry of the customer through a portal; and
c) in response to the entry, increasing the score.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Biffar US 5,903,880 May 11, 1999
Ogasawara US 6,513,015 B2 Jan. 28, 2003
Hardesty US 2003/0078864 A1 Apr. 24, 2003

Appeal 2008-004036
Application 09/992,363
3
The following rejections are before us for review:2
1. Claims 9, 10, 22-23, and 28 are rejected under 35 U.S.C. §
102(e) as anticipated by Hardesty.
2. Claims 1-8, 11, 13-21, 24, 26, and 29-31 are rejected under 35
U.S.C. § 103(a) as unpatentable over Ogasawara and Hardesty.
3. Claims 12, 25, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogasawara, Hardesty, and Biffar.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regards to claims 9, 10, 22-23, and 28 this issue turns on whether
Hardesty reference shows a “portal” and that points are issued as a reward
for visiting a website.
With regards to claims 1-8, 11-12, 13-21, 24-27, and 29-31 this issue
turns on whether Ogasawra and Hardesty disclose bonus points awarded in
the absence of a transaction and that there is a rationale to combine the
references (Br. 12).

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:3

2 We note that the rejection under 35 U.S.C. § 101 has been withdrawn by
the Examiner (Ans. 7).
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF1. Hardesty discloses a rebate program for individuals where a rebate is
transferred to a trust account (Abstract, Figure 1).
FF2. Hardesty discloses that it is known that incentives are provided to
consumers to purchase goods or services either on or-off-line to “visit”
certain web sites [0007].
FF3. Hardesty discloses that the incentives may be “points” or “airlines
miles” [0007].
FF4. Ogasawara discloses a system for customer recognition using wireless
identification and visual data transmission (Title).
FF5. Ogasawara discloses that the customer’s image or identification card
is identified when they enter the store. The customer’s profile data,
transaction history, and loyalty points are then forwarded to the stores
workstations for the staff (Abstract).
FF6. Ogasawara discloses that a customer carrying a customer ID card
enters an establishment, traverses a gate, and has the customer ID card
interact with an interrogator antenna (Col. 8:55-63).
FF7. The American Heritage® Dictionary of the English Language, Fourth
Edition (2009) lists the definition of “portal” to include: 1) A doorway,
entrance, or gate, especially one that is large and imposing. 2) An entrance
or a means of entrance: the local library, a portal of knowledge. 3) The
portal vein. 4) A website considered as an entry point to other websites,
often by being or providing access to a search engine. (Obtained from:
http://dictionary.classic.reference.com/browse/portal) (last visited May 28,
2009).

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PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
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6
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415 (citing Graham, 383 U.S. at
12), and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 416. The Court
also stated “[i]f a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417. The operative
question in this “functional approach” is thus “whether the improvement is
more than the predictable use of prior art elements according to their
established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (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”). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
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ANALYSIS
Claims 9-10, 22-23, and 28
The Appellants have argued that the rejection of claim 9 under 35
U.S.C. § 102(e) as anticipated by Hardesty is improper because the reference
is a faulty reference since it was published subsequent to the Appellants’
filing date (Br. 10). The Appellants also argue that the term “portal” is not
shown by the Hardesty reference (Br. 10-11, 18-20, 23-24 and Reply Br. 1-
8). The Appellants also argue that the Hardesty reference does not show that
points are issued as a reward for visiting a website (Br. 11-12, 15-17 and
Reply Br. 19-20).
The Examiner has determined that the Hardesty reference is a proper
reference to be applied under 35 U.S.C. § 102(e) (Ans. 8). The Examiner
has also determined that the broadest reasonable interpretation of the term
“portal” is broad enough to cover a “portal” in an Internet shopping
environment (Ans. 8-9). The Examiner has also determined that Hardesty
does show that points are rewarded for simply visiting a website (Ans. 9).
We agree with the Examiner. We note initially that Hardesty is a
proper reference to be applied in this application as a reference under 35
U.S.C. § 102(e) since it has a filing date prior to that of this application.4
We first construe the meaning of the word “portal” as used by the
Appellants in the claims. We determine the scope of the claims in patent
applications “not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as

4 See the Manual of Patent Examining Procedure (MPEP) § 2136 and 35
U.S.C. § 102(e). Here the Hardesty reference is an application for patent for
patent, published under section 122(b), by another filed in the United States
before the invention by the applicant for patent and thus meets the
requirements of 35 U.S.C. § 102(e).
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Application 09/992,363
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it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). The
Specification at page 7 does recite that “[t]he discussion above was framed
in terms of a customer entering a door in a building. In the more general
case, any type of portal to an enclosure is contemplated, such as a sports
arena or stadium, or even a fenced area, such as fairground” (Spec. 7:1-4).
However, the portion of the Specification to which this citation references
states, “[t]he preceding example illustrates a specific embodiment of the
invention” (Spec. 6:21). The Appellants’ Specification also references a
server 27 and the Internet 30 (Fig. 1) which would imply that the Internet,
and inherently an Internet portal, are accessed in the invention. We must be
careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004):
Though understanding the claim language may be
aided by explanations contained in the written
description, it is important not to import into a
claim limitations that are not a part of the claim.
For example, a particular embodiment appearing in
the written description may not be read into a
claim when the claim language is broader than the
embodiment.
The challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). Thus given that the conventional definition for “portal” is broad
enough to include simply an “entrance” or “a point of entry to other
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Application 09/992,363
9
websites” (FF7) we decline to limit the scope of the claim here to be limited
to a building portal of some kind since the Specification has provided only
specific embodiments and does reference the Internet where a “portal”
would be present. We remind appellants that it is their burden to precisely
define the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997). Appellants always have the opportunity to amend the
claims during prosecution, and broad interpretation by the examiner reduces
the possibility that the claim, once issued, will be interpreted more broadly
than is justified. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
The Appellants have also argued that the Hardesty reference does not
show that points are issued as a reward for simply visiting a website (Br. 11-
12). We disagree with this assertion. Hardesty has disclosed that it is
known that incentives are provided to consumers to “visit” certain web sites
(FF2). Hardesty also discloses that the incentives may be “points” or
“airlines miles” (FF3). Thus, Hardesty has disclosed that points may be
given for simply “visiting” certain web sites. For these reasons the rejection
of claim 1 under 35 U.S.C. § 102(e) as anticipated by Hardesty is sustained.
The rejection of claims 10 and 22-23 have not been separately argued and is
sustained for these same reasons. The Appellants’ arguments for claim 28
are the same as presented for claim 1 and the rejection of the claim is
sustained for the same reasons as claim 1.

Claims 1-8, 11-12, 13-21, 24-27, and 29-31
The Appellants argue that the rejection of claim 1 under 35 U.S.C. §
103(a) under Ogasawra and Hardesty is improper because there is no
teaching that the references disclose bonus points awarded in the absence of
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Application 09/992,363
10
a transaction. (Br. 12-13, 32-33, 38-39, and Reply Br. 23). The Appellants
also argue that the no rationale to combine the references (Br. 12, 39-40, and
Reply Br. 20-22).
The Examiner has determined that Hardesty does shows that points
are rewarded for simply visiting a website (Ans. 11). The Examiner has also
determined that there is a rationale for combing the references to attract
more customers by providing an incentive to merely visit the store (Ans. 10).
We agree with the Examiner. Hardesty has disclosed that it is known
that incentives are provided to consumers to “visit” certain web sites (FF2).
Hardesty also discloses that the incentives may be “points” or “airlines
miles” (FF3). Thus, Hardesty has disclosed that points may be given for
simply “visiting” certain web sites. Ogasawara discloses a system for
customer recognition using wireless identification and visual data
transmission (FF4). Ogasawara also discloses that a customer carrying a
customer ID card can enter an establishment, traverses a gate, and have the
customer ID card interact with an interrogator antenna (FF6). A transponder
would be inherent between the customer ID card and interrogator antenna.
The modification of the system of Ogasawara to have award points given for
simply visiting the store as taught by Hardesty is considered an obvious,
predictable use of prior art elements according to their established functions
which would bring more customers to the store by providing loyalty points.
For these reasons the rejection of claim 1 under 35 U.S.C. § 103(a) under
Ogasawra and Hardesty is sustained. The rejection of claims 2-8, 11, 13,
and 29-31 is sustained for these same reasons as well.
With regards to claims 14-21, 24, and 26 the Appellants have further
argued that these claims include a “means-type” recitation for “detecting
entry of the customer through a portal” which covers structure material, or
Appeal 2008-004036
Application 09/992,363
11
acts in the Specification and equivalents thereof (Br. 13). The Appellants
further argues that the Appellants’ Specification shows no identifying of
visitors to a web site. The Appellants “means-type” claim language is
directed to a “means for detecting entry of the customer through a portal”
and shown in the Specification to be “known smart cards . . . known non-
contact readers of smart cards . . . found in cellular telephones. . . and . . .
PDAs” (Spec. 2:12-14).
Here such a “means” has been shown by Ogasawara in the customer
ID card and interrogator antenna (FF6). The teaching of Hardesty was not
used in the rejection to show “means for detecting entry of the customer
through a portal” but only to show that that points may be given for simply
“visiting” certain web sites. For these reasons, as well as those addressed
above regarding claim 1, the rejection of claims 14-21, 24, and 26 under 35
U.S.C. § 103(a) under Ogasawra and Hardesty is sustained.
The Appellants have presented the same arguments for claims 12, 25,
and 27 as addressed above. For these same above reasons the rejection of
claims 12, 25, and 27 under 35 U.S.C. § 103(a) as unpatentable over
Ogasawara, Hardesty, and Biffar is sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have failed to show that the Examiner
erred in rejecting claims 9-10, 22-23, and 28 under 35 U.S.C. § 102(e) as
anticipated by Hardesty.
We conclude that Appellants have failed to show that the Examiner
erred in rejecting claims 1-8, 11, 13-21, 24, 26, and 29-31 under 35 U.S.C.
§ 103(a) as unpatentable over Ogasawara and Hardesty.
Appeal 2008-004036
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12
We conclude that Appellants have failed to show that the Examiner
erred in rejecting claims 12, 25, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Ogasawara, Hardesty, and Biffar.

DECISON
The Examiner’s rejection of claims 1-31 is sustained.
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) (2007).

AFFIRMED

hh

MICHAEL CHAN
NCR CORPORATION
1700 SOUTH PATTERSON BLVD.
DAYTON, OH 45479-0001