Ex Parte DeMaranville et al

Patent Trial and Appeal Board

Mar 11, 2014

11069049 (P.T.A.B. Mar. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALBIA A. DEMARANVILLE III,
NORMAN G. HAUN,
MICHAEL K. HUTCHESON,
RICHARD A. WYATT, and
WILLIAM E. REEVES
____________

Appeal 2011-009315
Application 11/069,049
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
JAMES A. TARTAL, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-30 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is directed “to a system and
method for facilitating the management of a retail marketing program in a
networked environment by utilization of interactive, dynamic retail
marketing program forms” (Spec. 1:15-17). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A computer-readable medium tangibly embodying a
program of instructions having computer-executable
components for managing a retail marketing program in which
at least one retailer earns credit from another entity to promote
sale of the another entity’s products, the computer-executable
components comprising:
a product identification component for identifying
products included in the retail marketing program in which the
retailer earns credit from the another entity to promote the sale
of another entity’s products; and
a scenario calculations component for facilitating user
input of data relating to each of the products identified by the
product identification component;
wherein the product identification component and the
scenario calculations component are executable so as to form
and be included in at least a part of a single page view, the
single page view identifying an amount of credit earned or
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projected to be earned by the retailer to promote the sale of the
another entity’s products.

THE REJECTIONS
The following rejections are before us for review:1
1. Claims 11-22 and 27-30 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2. Claims 11, 13, and 28 are rejected under 35 U.S.C. § 102(e) as
anticipated by Yanagisawa (US 6,961,710 B1, iss. Nov. 1,
2005).
3. Claims 1-10 and 23-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Acer Channel Forum Website pages (March
2000) (hereinafter “Acer”) and Official Notice.2
4. Claims 12, 14-22, 27, 29, and 30 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yanagisawa and Official Notice.

FINDINGS OF FACT
We find the findings of fact in the Analysis section below are
supported at least by a preponderance of the evidence.3

1 The Examiner withdrew a rejection of claims 11-20 and 27-30 under 35
U.S.C. § 112, second paragraph, dealing with overlapping statutory classes
and a rejection of claims 11-22 and 27-30 under 35 U.S.C. § 101 (see Ans.
3).
2 As discussed in detail below, the Examiner clarified the statement of
rejections under 35 U.S.C. § 103(a) in the Examiner’s Answer (Ans. 5).
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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ANALYSIS
Rejections under 35 U.S.C. § 112, second paragraph
The Examiner has determined that the rejection of independent claims
11 and 21, and their dependent claims 12-20, 22, and 27-30 is proper
because the term “sale of the another entity’s products” lacks antecedent
basis (Ans. 5 and 21). In contrast, the Appellants have argued that this
rejection is improper (App. Br. 11-12; Reply Br. 2).
We agree with the Appellants. Here, claims 11 and 21 recite in the
preamble that “at least one retailer earns credit from another entity to
promote sale of the another entity’s products” (emphasis added). Based on
this language, one of ordinary skill in the art would understand “the another
entity[]”refers to “another entity,” and as such, provides the requisite
antecedent basis. For this reason the rejection is not sustained.
The Examiner has determined that the rejection of independent claim
11, and its dependent claims 12-20 and 27-30 is proper because “the body of
the claim does not do any aiding management of a retail marketing program
as it is set forth to do in the preamble” (Ans. 5-6 and 21-22). The Examiner
has determined that “[t]he recited steps of obtaining current retail marketing
program information, generating a retail marketing program form, and
transmitting the retail marketing program form do not amount to managing a
retail marketing program” (Ans. 6).
In contrast, the Appellants have argued that this rejection is improper
(App. Br. 11-12; Reply Br. 2-3).
We agree with the Appellants’ arguments made at pages 11-12 of the
Appeal Brief and pages 2-3 of the Reply Brief. Here, claim breadth is not
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indefiniteness, and it is clear what is being claimed in the body of
independent claim 11. For this reason the rejection is not sustained.

Rejection under 35 U.S.C. § 102(e)
The Appellants argue that Yanagisawa fails to disclose the subject
matter of independent claim 11 because
Yanagisawa fails to disclose at least a method for managing a
retail marketing program in which at least one retailer earns
credit from another entity to promote sale of the another
entity’s products, including a form identifying an amount of
credit earned or projected to be earned by the retailer to
promote the sale of the another entity’s products
(App. Br. 14-17; Reply Br. 3-5). In contrast, the Examiner has determined
that the rejection of record is proper (Ans. 6-7 and 22-23).
We agree with the Examiner (see Ans. 22-23). Here, Yanagisawa
describes a billing method for advertisements printed on check-out receipts
(Abs.). Yanagisawa discloses at column 1, lines 9-18 that a retailer charges
a user wishing to advertise (i.e., another entity). The Appellants argue that
the “billing/charging” of Yanagisawa is not the same as claim 11 which
requires that “the retailer is rewarded with credits” (App. Br. 15; Reply Br.
4-5). However, claim 11 does not recite that a “retailer is rewarded with
credits” and the Specification provides no definition of the term “credit” that
specifically excludes the term from reading on the money earned or received
by the retailer in Yanagisawa for promoting sale of the another entity’s
products. In that regard, we note that claim 11 broadly recites that the “at
least one retailer earns credit from another entity to promote [the] sale of the
another entity’s products” (emphasis added), which does not require the
retailer to actually sell the another entity’s product in order to earn credit,
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but merely requires the retailer to promote the another entity’s product, and
as such, reads on the advertising method disclosed in Yanagisawa, under a
broadest reasonable interpretation.
Appellants also argue that Yanagisawa fails to disclose the subject
matter of claim 1 because it only describes printing advertisements on
receipts and “[s]uch limited exposure through limited means can hardly be
considered a retail marketing program as required by the claims” (App. Br.
15). We disagree. Initially, we note that claim 1 makes no recitation related
to a threshold amount of exposure necessary for a retail marketing program,
such as the advertisements printed on check-out receipts in Yanagisawa, to
read on the claimed “retail marketing program.” The Specification provides
no definition of the term “retail marketing program” that specifically
excludes the term from reading on Yanagisawa’s check-out receipts, and as
such, the cited claim limitation has been shown in Yanagisawa, under a
broadest reasonable interpretation.
For the above reasons the rejection of claim 11 and its dependent
claims 13 and 28 is sustained.

Rejection of claims 1-10 and 23-26 under 35 U.S.C. § 103(a) as obvious
over Acer and Official Notice.
The Appellants argue that a combination of Acer and Official Notice
fails to disclose or suggest “the product identification component and the
scenario calculations component -- which are executed so as to form and are
included in at least a part of the single page view,” as generally recited by
claim 1 (App. Br. 17-23; Reply Br. 5-6). In contrast, the Examiner has
determined that the rejection of record is proper (Ans. 8-9 and 23-27).
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We agree with the Appellants. Claim 1 requires a product
identification component and a scenario calculations component “wherein
the product identification component and the scenario calculations
component are executable so as to form and be included in at least a part of a
single page view.” To address the product identification component of
claim 1, the Examiner relies on the quarterly statement mailed to a reseller to
indicate the amount of credits earned by a retailer described on page 3 of
Acer (Ans. 8 and 23). The Examiner cites to the “Acerfund Prior Approval
Form,” depicted on page 14 of Acer, to disclose the scenario calculations
component of claim 1 (Ans. 8). The Examiner acknowledges that neither of
these portions of Acer disclose computer-executable components, however,
the Examiner takes Official Notice on page 9 of the Examiner’s Answer:
that [it] is well known for major companies such as GE
Consumer and Industrial to automate reseller programs using
programs such as Excel and e-mail to track sales and credits
earned as a result of those sales to keep resellers apprised of
marketing dollars available to them for holding product
promotions.
While we do not disagree that it is well known in the art to use Excel
and e-mail to track sales, the claimed combination here requires more than
just using applying a computer program to automate the portions of Acer
relied on by the Examiner. Here, when considering the cited prior art and
rejection as a whole, there is no articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness as the prior art
reference in conjunction with the Examiner’s taking of Official Notice does
not show or suggest the disparate portions of Acer, relied on by the
Examiner, “form[ing] and be[ing] included in at least a part of a single page
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view,” as claim 1 requires. Therefore, even with the Examiner’s taking of
Official Notice, the Examiner has still failed to show the product
identification component and the scenario calculations component are
executable so as to form and be included in at least a part of a single page
view because the Examiner has failed to show the quarterly statement mailed
to a reseller and the “Acerfund Prior Approval Form” forming or being
included in at least a part of a single page view.4 For this reason the
rejection of claim 1 and its dependent claims 2-10 and 23-26 is not
sustained.

Rejection of claims 12, 14-22, 27, 29, and 30 under 35 U.S.C. § 103(a) as
unpatentable over Yanagisawa and Official Notice.
The Appellants have provided no arguments for the rejection of
claims 12, 14-22, 27, 29, and 30 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yanagisawa and Official Notice. Claims 12, 14-20, 27,
and 29 depend on independent claim 11 rejected above under 35 U.S.C.
§ 102(e) as anticipated by Yanagisawa. The rejection of independent claim
21 and its dependent claims 22 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Yanagisawa and Official Notice, however, is not

4 While the contents displayed (i.e., identified) on the single page view of
claim 1 may be directed to non-functional descriptive material, inasmuch as
it is merely displayed, the claim does require the contents of the single page
view to be formed from and include content from both the product
identification component and the scenario calculations component, as the
source of content affects how the underlying computer substrate operates to
form the single page view.
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addressed by the Appellants,5 and as such, the rejection of these claims is
summarily affirmed, as the Appellants have provided no arguments for these
rejected claims. Only those arguments actually made by Appellants have
been considered in this decision. Arguments which Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 11, 13, and 28 under 35 U.S.C. § 102(e) and claims 12,
14-22, 27, 29, and 30 under 35 U.S.C. § 103(a) as listed in the Rejections
section above.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 11-22 and 27-30 under 35 U.S.C. § 112, second paragraph,
and claims 1-10 and 23-26 under 35 U.S.C. § 103(a) as listed in the
Rejections section above.

5 Appellants’ Appeal Brief indicates that there was some confusion as to
what references the Examiner relied on in the Final Office Action to reject
claims 12, 14-27, 29, and 30 (App. Br. 17). Appellants state “[t]he Final
Office Action at page 6 first suggests that each of claims 1-10, 12, 14-27,
and 29-30 is rejected based on the alleged combination of Acer and Official
Notice. Pages 14-20, however, suggest that claims 12, 14-27, and 29-30 are
rejected based on the alleged combination of Yanagisawa and Official
Notice” (App Br. 17). The Examiner clarified this confusion in the
Examiner’s Answer (Ans. 5); however, the Appellants’ Reply Brief still fails
to address the rejection of these claims under 35 U.S.C. § 103(a) as
unpatentable over Yanagisawa and Official Notice.
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DECISION
The Examiner’s rejection of claims 1-10 and 23-26 is reversed. The
Examiner’s rejection of claims 11-22 and 27-30 is sustained.

AFFIRMED-IN-PART

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