Ex Parte Hoersten

Patent Trial and Appeal Board

Mar 25, 2013

11408610 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIC HOERSTEN
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Appeal 2011-000609
Application 11/408,610
Technology Center 3600
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Before JAMES P. CALVE, WILLIAM A. CAPP, and
BEVERLY M. BUNTING, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-22. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Claims 1, 12, and 20 are independent. Claim 1 is reproduced below:
1. A method for selling a rental media product having
entertainment content therein, comprising the steps of:
receiving transaction data from a user interface, wherein
the transaction data comprises an electronic mail address for a
user;
vending the rental product from a vending apparatus to
the user;
transmitting an electronic mail message to the electronic
mail address, wherein the electronic mail message comprises an
invitation to purchase the vended rental media product;
receiving a purchase signal from a device remote from
the vending apparatus in response to the electronic mail
message at a central controller; and
processing the purchase signal comprising the steps of
receiving financial information for purchasing the rental media
product and removing a rented designation for the rental media
product from a database of rented rental media products.

REJECTIONS
Claims 1-9, 12-16, 19, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barber (US 2002/0046122 A1; pub. Apr. 18, 2002)
and Blust (US 2004/0254676 A1; pub. Dec. 16, 2004).
Claims 10, 11, 17, 18, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Barber, Blust, and Moradi (US 2005/0033855 A1;
pub. Feb. 10, 2005).
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Barber, Moradi, and Blust.

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ANALYSIS
Claims 1-9, 12-16, 19, and 22 unpatentable over Barber and Blust
Appellant argues claims 1-9 and 22 as a group and claims 12-16 and
19 as a group. App. Br. 7-11. We select claims 1 and 12 as representative
of each respective group. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 1-9 and 22
The Examiner found that Barber discloses a rental system receiving
first transaction data comprising a user email address, URL, and financial
data from a user interface, vending products from a vending apparatus 101,
and transmitting an email message with advertisements and promotions to a
remote user interface at the user email address as an offer to purchase from a
central controller to solicit second purchase request transaction data from the
user. Ans. 4 (citing paras. 0003, 0008, 0009, 0010, 0020, 0064; fig. 1), 8.
The Examiner also found that Barber targets specific advertisements and
promotions to customers based on user profile data, and the advertisements
have enough details to constitute an offer to purchase an item to a customer
rather than a general advertisement to the public, and thus these targeted
advertisements are an offer to purchase. Ans. 8. The Examiner found that
Barber fails to disclose a rental/purchase option for rental products, but Blust
teaches a rental system that receives a purchase signal from a device (remote
user 70) remote from a vending apparatus and removes a rented designation
of products from a database for maintaining accurate inventory records of
products processed by the system. Ans. 5. The Examiner found that Barber
and Blust are directed to networked kiosks configured to allow customers to
rent and/or purchase articles and determined that it would have been obvious
“to incorporate the database configuration of Blust into the system of Barber
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for the purpose of maintaining accurate inventory records of products
processed by said system.” Ans. 5, 9.
Appellant argues that Barber merely discloses emailing transaction
information to customers such as email receipts as well as advertising and
promotional information and web links, but does not send an email message
that allows a customer to effectuate a sales transaction of a vended item and
nothing in Blust or Moradi discloses this feature. App. Br. 7-8. Appellant
also argues that Barber targets advertisements and promotions to customers
based on characteristics of those customers but is silent as to the specifics of
the advertisement language. Reply Br. 1-2. Appellant further argues that
contract law traditionally recognizes that mere advertising and promotion of
a product may be nothing more than invitations for offers while responding
to such an invitation may itself be an offer. App. Br. 8 (citing Group One,
Ltd. v. Hallmark Cards, Inc. 254 F.3d 1041, 1048 (Fed. Cir. 2001) (citing
Restatement (Second) of Contracts § 28 (1981)).
The Examiner’s findings that the combination of Barber and Blust
discloses transmitting an email that is an invitation to purchase a product are
supported by a preponderance of evidence. Barber discloses a system that
allows purchase or rental of products and may send an email to a customer
with offers, such as discount rentals of a DVD, and a customer may accept
the offer by interacting with a central database server over the Internet or
enter a coupon code at a kiosk to receive discounts for the product.1 Barber,
paras. [0010-0011, 0020, 0059]. This finding is consistent with the holding

1 Appellant discloses that a message transmitted by email to a user-provided
email address can comprise instructions that instruct the user to physically
visit a vending apparatus 30 to purchase the vendible media rental product.
Spec. 48, para. [0188].
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in Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir.
2001) that a communication rises to the level of commercial offer for sale if
a party can make it into a binding contract by simple acceptance (assuming
consideration).2 Blust discloses remote purchases of rental products.
Appellant also argues that Barber integrates one or more kiosks with a
server system over a virtual network over the internet but does not receive a
purchase signal from a location other than proximate to a vending apparatus
and thus does not disclose “receiving a purchase signal from a device remote
from the vending apparatus.” Reply Br. 3. Appellant asserts that Blust has
point of sale software at vending kiosks that can be accessed over a network
or the Internet to allow a vending kiosk to send and receive data to and from
external systems for authentication of payment transactions, but Blust and
Barber do not disclose receiving a purchase signal somewhere other than the
vending apparatus. App. Br. 9-10. These arguments are individual attacks
on the references where the Examiner found that Barber emails offers to a
remote user email address and the offers can be accepted by interacting with
a database server over the Internet, Blust teaches remote purchasing of
vended products, and the combined teachings render claim 1 obvious. Ans.
4-5, 7-8; Barber, paras. [0010-0011, 0020]; Blust, para. [0074]; figs. 3.
Appellant asserts that the reason for combining Barber and Blust is
conclusory and devoid of findings as to what a skilled artisan knew at the
time of the subject application. App. Br. 13-16. Appellant contends that the

2 Although Group One addressed what constitutes an offer for sale under
35 U.S.C. § 102(b), the Court addressed what constitutes a commercial offer
for sale, which is relevant to our interpretation of “invitation to purchase” in
claim 1. See App. Br. 7-9; Reply Br. 1-2; see also Spec. 47-48, paras.
[0182-0187]; fig. 29.
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Examiner does not identify why a skilled artisan would combine references
to make any of claims 1-22 obvious. Reply Br. 4-5. These arguments do
not persuade us of error in the Examiner’s finding that Blust removes rented
designations of purchased products from a database for maintaining accurate
inventory records of products processed by the system, or determination that
it would have been obvious to incorporate Blust’s database configuration
into Barber to maintain an accurate inventory of products processed by the
system for a consumer to browse. Ans. 5, 8; see Blust, paras. [0074-0080].
We sustain the rejection of claims 1-9 and 22.
Claims 12-16 and 19
Appellant argues that claim 12 requires an electronic mail message
that “comprises an invitation to purchase the rental media product” and “a
purchase application located at the central controller for receiving second
transaction data from a device remote from the vending controller, wherein
the second transaction data comprises a signal to purchase the rented rental
media product” and the cited references do not disclose these elements for
the reasons set forth for claim 1. App. Br. 11. These arguments are not
persuasive for the reasons discussed supra for claim 1. We sustain the
rejection of claims 12-16 and 19.
Claims 10, 11, 17, 18, and 21 unpatentable over Barber, Blust, and Moradi
Appellant argues that claims 17 and 18 depend from claim 12 and are
allowable for the same reasons as claim 12. App. Br. 11-12. This argument
is not persuasive for the reasons discussed supra for claim 12. Appellant’s
argument that the Examiner does not identify a reason to combine the cited
references does not apprise us of error in the Examiner’s determination that
it would have been obvious to incorporate Moradi’s time-based email
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transmission system that transmits messages based upon a determination that
a predetermined period of time has elapsed, into the system of Barber/Blust
to regulate the amount of messages that a user of the system receives within
a particular time period. Ans. 5-6 (citing Moradi, paras. 0023, 0091). We
sustain the rejection of claims 10, 11, 17, 18 and 21.
Claim 20 unpatentable over Barber, Moradi, and Blust
Appellant argues that claim 20 recites an electronic mail message that
“comprises a uniform resource location specifying an Internet website
through which the rental digital video disc can be purchased” and “receiving
a purchase signal from a device remote from the vending apparatus in
response to the electronic mail message at a central controller” and the cited
references do not disclose these elements. App. Br. 12. This argument is
not persuasive for the reasons discussed supra for claim 1. Appellant’s
argument that the Examiner does not identify a reason to combine references
(App. Br. 14; Reply Br. 3-5) does not apprise us of error in the Examiner’s
determination that it would have been obvious to incorporate Moradi’s email
transmission system into Barber to regulate the amount of messages a user
receives and Blust’s rental system into Barber to maintain accurate inventory
records of products. See Ans. 7. We sustain the rejection of claim 20.
DECISION
We AFFIRM the rejection of claims 1-22.
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
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Application 11/408,610

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