Ex Parte Deaton

Patent Trial and Appeal Board

Jul 30, 2013

08935116 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID W. DEATON
____________

Appeal 2010-002474
Application 08/935,116
Technology Center 3600
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David W. Deaton (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the rejection of claims 8-15 and 17-76. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
The invention relates to “transaction processing and analysis systems,
including check verification systems.” Spec. 1:3-5.
Claim 8, reproduced below, is illustrative of the subject matter on
appeal.
8. A system for accumulating customer transaction data at the
point-of-sale in a retail establishment and for effectuating customer
promotion on the basis thereof, comprising:
a terminal for entering unique customer identification codes
from customer identification presented at the point-of-sale in a retail
transaction;
means for allowing entry of customer transaction data;
a processor and
a memory responsive to said terminal and said means allowing
entry for creating a database for a plurality of the store's customers'
transaction data from prior shopping visits, such that data regarding
individual customer's prior transactions are stored in association with
said individual customer's unique identification code; and
circuitry responsive to said processor, memory, and database
for generating a customer information response signal at the point-of-
sale during said individual customer's transaction in said retail
establishment upon detection of a unique identification code of said
individual customer,

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 26, 2009) and Reply Brief (“Reply Br.,” filed Aug. 14, 2009),
and the Examiner’s Answer (“Ans.,” mailed Jul. 21, 2009).
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said signal being related to said individual customer's
transaction data in shopping visits prior to the current shopping visit,
and
said signal providing information at said point-of-sale terminal
derived from said database and useful for effectuating targeted
customer promotion.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Nichtberger US 4,882,675 Nov. 21, 1989
The Examiner states, with respect to claims 17-41 and 49-76,
“Official Notice is taken that a database of prior purchases would
have been obvious to include the dollar amount of the purchases in
order to allow the system to keep track of the amount spent by the
customers during [a] specified time period and will allow coupons to
be targeted based on the amount spent during [a] specified period. For
example, customer A might [spend] more money during the holidays
and will receive coupons accordingly.” Ans. 4 [hereafter “Official
Notice I”].
The Examiner states, with respect to claims 42-48, that “Official
Notice is taken that it [is] obvious and well known for local stores to
transmit information to a host server in order for the information to be
shared.” Ans. 5 [hereafter “Official Notice II”].
The following rejections are before us for review:
1. Claims 8-15 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Nichtberger.
2. Claims 17-76 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nichtberger and Official Notice I and II.

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ISSUES
Did the Examiner err in rejecting claims 8-15 under 35 U.S.C.
§ 102(b) as being anticipated by Nichtberger and claims 17-76 under 35
U.S.C. § 103(a) as being unpatentable over Nichtberger and Official Notice I
and II?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 8-15 under 35 U.S.C. § 102(b) as being anticipated
by Nichtberger.
Claims 8 and 12
The rejection is reversed for the reasons given in the Appeal Brief.
“Because the hallmark of anticipation is prior invention, the prior art
reference—in order to anticipate under 35 U.S.C. § 102—must not only
disclose all elements of the claim within the four corners of the document,
but must also disclose those elements ‘arranged as in the claim.’ [Citation
omitted.].” Net MoneyIN Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed.
Cir. 2008).
In that regard, we do not find that Nichtberger expressly discloses the
claim limitations
circuitry responsive to said processor, memory, and
database for generating a customer information response signal
at the point-of-sale during said individual customer's transaction
in said retail establishment upon detection of a unique
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identification code of said individual customer,
said signal being related to said individual customer's
transaction data in shopping visits prior to the current shopping
visit, and
said signal providing information at said point-of-sale
terminal derived from said database and useful for effectuating
targeted customer promotion.
Claim 8.
The Examiner relies on Nichtberger passages at column 11, lines 46-
50 and column 17, lines 49-61 as evidence in support of finding that
Nichtberger expressly discloses the subject matter of the claim limitations at
issue. Ans. 3-4.
Column 11 at lines 46-50 describes the reporting of information about
coupons that have been used during store checkout via UPC code scanning.
“This facilitates a subsequent comparison of coupons selected to purchases
made.” Id. at ll. 49-50.
Column 17 at lines 49-61 describes use of a local coupon distribution
and redemption unit (CDR). The Nichtberger CDR
presents an electronic display to the customer of the coupons
which are available for redemption after the customer inserts a
[special] card ... into the unit. The card may include a UPC code
which identifies the user and a magnetic stripe on which
information can be recorded. The customer then selects the
coupons which he or she wishes to redeem. The CDR unit [ ]
records the selection and makes information identifying the
customer and the selected coupons available to each of the
checkout stations which comprise the checkout system [ ] of the
supermarket.
Col. 5, ll. 3-15. During the checkout process, upon recognizing the special
card, the CDR lists the coupons from which a customer makes a selection.
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The cash register compares a customer’s selection of coupons with the
products actually being purchased and applies credit accordingly. Coupons
redeemed by the customer are reported back to the CDR. Col. 17, ll. 49-61.
The claimed system, by contrast, comprises a circuitry generating a
signal during an individual customer’s transaction that is “related to said
individual customer's transaction data in shopping visits prior to the current
shopping visit” (claim 8, emphasis added). We agree with the Appellant that,
with regard to the Nichtberger passages at column 11, lines 46-50 and
column 17, lines 49-61, “Nichtberger discloses that the consumer selects
coupons during the same visit that the customer uses the coupons, and that
Nichtberger's customer's coupon selections are not transactions.” App. Br.
14. Accordingly, Nichtberger does not expressly disclose in these passages a
circuitry generating a signal during an individual customer’s transaction that
is “related to said individual customer's transaction data in shopping visits
prior to the current shopping visit” (claim 8).
The Examiner argues that the special card is updated with buying
transactions which eventually will become prior transactions after the
transaction has taken place/been scanned and this prior information is passed
on to the checkout at the time of purchase. Ans. 6. However, we do not see
any teaching of this in Nichtberger. Although it may be possible to record
past purchases on the special card and use that information in subsequent
transactions at checkout, it is not inherent to the Nichtberger system, a
system that allows a customer to select a coupon at a cash register and, if it
matches a product actually being purchased, to receive a credit. “Inherent
anticipation requires that the missing descriptive material is ‘necessarily
present,’ not merely probably or possibly present, in the prior art.” Trintec
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Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002).
Also, “[i]f it is necessary to reach beyond the boundaries of a single
reference to provide missing disclosure of the claimed invention, the proper
ground is not § 102 anticipation, but § 103 obviousness.” Scripps Clinic &
Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991).
For the foregoing reasons, a prima facie case of anticipation has not
been made out in the first instance. We therefore reverse the rejection of
claims 8 and 12.

Claims 9 and 13
A prima facie case of anticipation of claims 9 and 13 by Nichtberger
has not been made out in the first instance for reasons similar to those given
above in reversing the anticipation rejection of claims 8 and 12.
These claims are also drawn to a system but they define it more
broadly as comprising “circuitry associated with said memory and
responsive to the entry of said individual customer's identification code
during a transaction at the point-of-sale, said circuitry being operable to
generate a customer information response signal at the point-of-sale
representative of said individual customer's transaction history prior to the
current shopping visit.” Claim 9. Nevertheless, the Examiner maintains that
the Nichtberger passages at column 11, lines 46-50 and column 17, lines 49-
61, expressly disclose this claim element. Ans. 4. But as discussed supra,
Nichtberger does not expressly disclose signals corresponding to
transactions and thus fails to expressly disclose a circuitry being operable to
“generate a customer information response signal at the point-of-sale
representative of said individual customer's transaction history prior to the
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current shopping visit” (claim 9). We therefore reverse the rejection of
claims 9 and 13.

Claims 10 and 14
Claim 10 is a method claim, from which claim 14 depends.
Claim 10 parallels claim 8. The Examiner’s position is the same:
Nichtberger’s passages at column 11, lines 46-50 and column 17, lines
49-61, expressly disclose
generating a customer information response at the point-
of-sale during said individual customer's transaction in said
retail establishment upon detection of a unique identification
code of said individual customer,
said response signal being related to said individual
customer's transaction data in shopping visits prior to the
current shopping visit, and
said response providing information at said point-of-sale
derived from said database and useful for effectuating targeted
customer promotion.
Claim 10.
However, as discussed supra, contrary to the Examiner’s finding of
fact, Nichtberger does not expressly disclose in these passages generating a
signal during an individual customer’s transaction, let alone a signal that is
“related to said individual customer's transaction data in shopping visits
prior to the current shopping visit” (claim 10).
For the foregoing reasons, a prima facie case of anticipation has not
been made out in the first instance. We therefore reverse the rejection of
claims 10 and 14.

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Claims 11 and 15
Notwithstanding that these claims were not separately addressed in
the Final Rejection, we are nevertheless in agreement with the Appellant that
“Nichtberger does not disclose [the claim 11 step] of ‘generating a customer
information response at the point-of-sale representative of said individual
customer’s transaction history prior to the current shopping visit, said
response providing information at said point-of-sale derived from said
database’” (App. Br. 25) and “[the claim 15 step of] ‘including data in said
database from prior transactions, ... to generate a response which is a
function of said data in said database from prior transactions, and by
supplying said response to said terminal during said current transaction in
which said unique identification code is entered’” (App. Br. 28). We
therefore reverse the rejection of claims 11 and 15.

The rejection of claims 17-76 under 35 U.S.C. §103(a) as being
unpatentable over Nichtberger and Official Notice I and II.
Claims 17-26, 35-39, 41-48, and 66-76
Each of these claims provides for a “customer information response
signal.” In the case of the system of independent claim 17, circuitry is
provided which is responsive to the entry of a unique customer identification
at a terminal during a transaction for transmitting to a point-of-sale during
said transaction a customer information response signal that depends upon
data stored in a database indicating dollar amount of at least one prior
purchase associated with said unique customer identification. In the case of
the process of independent claim 22, the signal is transmitted to a point-of-
sale during a transaction in response to the entry of said unique customer
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identification at said terminal during said transaction and depends upon data
stored in a database indicating dollar amount of at least one prior purchase
associated with said unique customer identification. In the case of
independent claim 66, the claimed system is programmed to respond to
transaction information received from the point of sale terminal including a
first customer identification by identifying the first customer record in a
database and returning to the point of sale terminal a first customer
information response signal wherein a value of the first customer
information response signal depends at least in part upon data stored in said
first customer record, including at least said first customer first dollar
amount.
Neither these claims nor the claims dependent thereon have been
separately treated. With respect to the claim limitation “customer
information response signal,” we understand the Examiner to be relying on
the position taken with respect to claim 8. See Ans. 3-4. In that regard, the
Examiner relies on Nichtberger’s passages at column 11, lines 46-50 and
column 17, lines 49-61 as evidence in support of finding that Nichtberger
expressly discloses the subject matter of the claim limitations at issue. Ans.
3-4. We analyzed these passages above. Based on that analysis, we are led to
conclude that the claim limitations here at issue involving a “customer
information response signal” are not disclosed in Nichtberger. Accordingly,
a prima facie case of obviousness for the subject matter of these claims has
not been made out in the first instance. We reverse the rejection of claims
17-26, 35-39, 41-48, and 66-76.

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Claims 27-34, 40, and 49-65
In contrast to the prior-discussed claims, these claims do not provide
for a “customer information response signal.” Rather they are directed to the
use of databases. In the case of the processes of independent claims 27 and
30, data is stored in a database and updated. In the case of independent
claims 33 and 34, databases with stored data are claimed.
We can discern no difference between the operation of the databases
and the structure of the databases themselves as claimed here and what was
well known in the art at the time of the invention. The Examiner relies on
Nichtberger at column 12, lines 16-32, as evidence in support of finding that
the claimed databases were known at the time of the invention. See Ans. 4.
While there is no mention of databases in column 12, lines 16-32 of
Nichtberger, standard databases are mentioned at column 4, line 58; column
7, line 20; column 8, line 34; and column 29, line 54. At the time of the
invention, standard databases were known to be capable of storing data and
updating data. The Appellant makes various arguments that the claimed
databases are patentably distinguishing based on the content of the
information which is stored in and manipulated by said databases. For
example, the Appellant argues that “[c]laim 34 defines a computer
implemented database in which transaction data stored in association with an
identification of that customer includes ‘total dollar amount of purchases
purchased during a period of time.’” App. Br. 43. But the difference between
a database with data representing, for example, total dollar amount of
purchases purchased during a period of time (i.e., claim 34) and, for
example, “data representing last week's purchases or coupons or any other
variable that is stored in the substantial data base in the operations center”
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(Nichtberger, col. 29, l. 54) is a difference over the content of the
information in a database, rather than a functional or structural difference in
the underlying database. This difference over the content of the information
is best described as nonfunctional descriptive material. In that regard,
nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
For the foregoing reasons, we sustain the rejection of claims 27-34,
40, and 49-65.

DECISION
The rejection of claims 8-15 under 35 U.S.C. § 102(b) as being
anticipated by Nichtberger is reversed.
The rejection of claims 17-26, 35-39, 41-48 and 66-76 under 35
U.S.C. § 103(a) as being unpatentable over Nichtberger and Official Notice I
and II is reversed.
The rejection of claims 27-34, 40, and 49-65 under 35 U.S.C. § 103(a)
as being unpatentable over Nichtberger and Official Notice I and II is
affirmed.

AFFIRMED-IN-PART

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