Ex Parte Gregorin

Board of Patent Appeals and Interferences

Mar 27, 2012

10417774 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ADAM C.GREGORIN
____________

Appeal 2010-007448
Application 10/417,774
Technology Center 3700
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007448
Application 10/417,774

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-16 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 REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to an employee
incentive game established and monitored on a point of sale terminal (Spec.
[001]). Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A system with an employee incentive game overlaid on a point
of sale (POS) terminal system, comprising:
a back office portion which includes first means for setting up
said game on said POS system;
a front office portion which includes second means for an
employee to determine a real-time score of said employee compared
with all other employees participating in said game.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Huffman US 2002/0178048 A1 Nov. 28, 2002
Sullivan, Sales contest basics inspire competitions and profits,
http://www.findarticles.com/p/articles/mi_m3190/is_35_36/ai_91212149/
print (hereafter “Sullivan”).

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Progeny Marketing Innovations, Seven Sensational Sales Contests,
http://web.archive.org/web/20021208011914/http://www.progenymarketi
ng.com/resources/marketing_ b3.htm (hereafter “Progeny”).

The following rejections are before us for review:
1. Claims 1 and 9 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Huffman.
2. Claims 2-4 and 10-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Huffman and Sullivan.
3. Claims 5-8 and 13-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Huffman, Sullivan, and Progeny.

THE ISSUES
With regards to the rejection of claim 1 under 35 U.S.C. § 102(e) the
issue turns on whether the prior art discloses the argued claim limitation for
“means for an employee to determine a real-time score of said employee”.
The remaining claims turn on the same or a similar issue.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence1. Additional facts may appear in
the Analysis section below.

1 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. Huffman shows a system for performance feedback at a cashier POS
terminal. The display includes a performance screen comparing the
cashier’s performance with a performance goal (Abstract).
FF2. Huffman at [0018], [0024], and Fig. 2 does not disclose a display for
an employee to determine a real-time score of said employee compared with
all other employees participating in said game.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
Huffman fails to disclose the claim limitation for “second means for an
employee to determine a real-time score of said employee compared with all
other employees participating in said game” (emphasis added) (App. Br. 10-
12, Reply Br. 5-7). In contrast, the Examiner has determined that the “real-
time” score is shown by Huffman at [0018], [0024] and Fig. 2.
We agree with the Appellant. “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 Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Support for the
term “real-time” is found in the Specification at [005] and [007]. Huffman,
at the portions cited by the Examiner does not disclose a display for an
employee to determine a real-time score of said employee compared with all
other employees participating in said game (FF2) and as this argued claim
limitation has not been shown the rejection under 35 U.S.C. § 102(e) is not
sustained. Huffman at [0024] does disclose that each item is counted in real-
time but this is done by the system and not disclosed as being available to
the cashier until they log off. Thus, while the system maintains counted
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items in real-time, it is not available to the cashier until the end of the work
session. It cannot be established beyond probabilities that the system of
Huffman may allow the cashier to check the scores in real-time at the
portions cited in the rejection. Huffman at least in Figure 6 shows that the
performance screen is displayed after the employee logs off 196 and in Fig.
33 further shows that the results are not done in real-time.
Claim 9 contains a similar claim limitation and the rejection of this
claim is sustained for these same reasons.
The rejections of record made under 35 U.S.C. § 103(a) have also
relied on Huffman at these cited portions for the recited “real-time score”
which has not been shown for the reasons given above. For these same
reasons the rejections made under 35 U.S.C. § 103(a) are not sustained.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 1-16 is reversed.

REVERSED

mls

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