Ex Parte Kishi

Board of Patent Appeals and Interferences

May 23, 2012

09986026 (B.P.A.I. May. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROYUKI KISHI
____________

Appeal 2010-002229
Application 09/986,026
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002229
Application 09/986,026

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-4, 6-9, 11-12, 16-17, and 20-21 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-IN-PART.

THE INVENTION
The Appellants’ claimed invention is directed to a purchase
information collecting method (Spec. 1:1-10). Claim 1, reproduced below
with the numbering in brackets added, is representative of the subject matter
on appeal.

1. A purchase information collecting method for collecting
information on a purchaser of one or more commodities using a
network with a server apparatus, the method comprising:
receiving a first sales information, which identifies a deal of a
first commodity, from a retail seller of the first commodity, wherein
the first sales information is generated by the retail
seller of the first commodity and identifies the retail seller of the first
commodity and identifies a time and place at which the first
commodity was sold by the retail seller of the first commodity;
storing the received first sales information in a first storing part;
receiving purchase information, which comprises personal
information of a purchaser of a second commodity and a second sales
information, from the purchaser of the second commodity, where the
second sales information is generated by a retail seller of the second
commodity when the second commodity is sold, and where the second
sales information identifies the retail seller of the second commodity
Appeal 2010-002229
Application 09/986,026

3
and identifies a time and place at which the second commodity was
sold by the retail seller of the second commodity;
based on the retail sellers, times and places identified by the
first sales information and the second sales information, determining
whether the second sales information included in the received
purchase information is stored in said first storing part;
storing the received purchase information as valid purchase
information in a second storing part upon the second sales information
being stored in the first storing part;
[1] extracting sales information containing a first information of
the purchase information from said first storing part upon the second
sales information included in the received purchase
information not being stored in the first storing part, including a range
of deal numbers of a second information between a minimum deal
number of the second information to a maximum deal number of the
second information;
[2] storing the purchase information as invalid purchase
information in the second storing part upon the second information of
the purchase information having a deal number that is within
the range of deal numbers between the minimum deal number of the
second information and the maximum deal number of the second
information; [3] and
storing the purchase information as unidentified validity
purchase information in the second storing part upon the second
information of the purchase information not having a deal number
within the range of deal numbers.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Quinlan US 6,748,365 B1 Jun. 8, 2004
Solomon US 6,847,935 B1 Jan. 25, 2005

The following rejections are before us for review:
1. Claims 1-4, 6, and 11-12 are rejected under 35 U.S.C. § 101.
Appeal 2010-002229
Application 09/986,026

4
2. Claims 1-4, 6-9, 11-12, 16-17, and 20-21 are rejected under 35
U.S.C. § 103(a) as unpatentable over Quinlan and Solomon.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1 Additional facts may appear in
the Analysis section below.
FF1. Solomon at col. 5:24-49 discloses that a rebate transaction may not be
completed for bad verification materials such as receipts, UPC symbols,
improper purchase dates or purchase price, or slippage from checks.
FF2. Solomon at col. 6:38-41 discloses that the rebate status is given a
status designation.
FF3. Solomon at col. 5:24-49 and col. 6:38-41 does not disclose storing the
purchase information as invalid purchase information in a second storing
part upon the second information of the purchase information having a deal
number that is within the range of deal numbers between the minimum deal
number of the second information and the maximum deal number of the
second information.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 101 is improper (Reply Br. 4-7). In contrast, the Examiner has determined
that this rejection is proper (Ans. 2-3, 8-9).

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).
Appeal 2010-002229
Application 09/986,026

5
We agree with the Examiner. The claim is directed to an abstract idea
of receiving and extracting various sales information and could be
performed in a series of mental steps. While the claim does recite “using a
network with a server apparatus” this appears in the preamble and is not a
limitation to the claim. Regardless, the recitation to the server apparatus
would be insignificant extra-solution activity as would be the references to
the first and second storing parts. Here, the first and second storing parts
could also be parts of the human mind storing information. For these
reasons the rejection this rejection of claim 1 is sustained. The same
arguments have been presented for the remaining claims rejected under 35
U.S.C. § 101 and the rejection of these claims is sustained for these same
reasons.

Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 103(a) is improper because the cited prior art does not disclose elements of
claim limitation [1] and [2] (Br. 17-21, Reply Br. 7-12). In contrast, the
Examiner has determined that this rejection is proper and that these cited
claim limitations are found at Solomon at col. 5:24-49 and col. 6:38-41
(Ans.4-8).
We agree with the Appellants. Claim limitation [2] requires:

[2] storing the purchase information as invalid purchase information
in the second storing part upon the second information of the purchase
information having a deal number that is within the range of deal
numbers between the minimum deal number of the second
information and the maximum deal number of the second information;
(Claim 1, emphasis added).

Appeal 2010-002229
Application 09/986,026

6
The Examiner has determined that this claim limitation is shown or
suggested by Solomon at col. 5:24-49 and col. 6:38-41 (Ans. 7). While
Solomon at these cited portions does disclose a rebate being denied based on
bad verification materials such as receipts, UPC symbols, improper purchase
dates or purchase price, or slippage from checks (FF1) there is no disclosure
of basing this on any range of deal numbers as claimed (FF3). Further, there
is no articulated reasoning with rational underpinnings to support such a
modification here as the Solomon reference is directed to rebates not sales at
these portions and makes no mention of any range of deal numbers in the
manner claimed in claim limitation [1] and [2]. Likewise, Quinlan is largely
directed to rebates as well. For these reasons the rejection of claim 1 and its
dependent claim under 35 U.S.C. § 103(a) is not sustained. The remaining
claims under this rejection contain a similar claim limitation and the
rejection of these claims is not sustained for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-4, 6, and 11-12 under 35 U.S.C. § 101.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-4, 6-9, 11-12, 16-17, and 20-21 under 35 U.S.C. § 103(a)
as unpatentable over Quinlan and Solomon.

DECISION
The Examiner’s rejection of claims 1-4, 6, and 11-12 is sustained.
The Examiner’s rejection of claims 7-9, 16-17, and 20-21 is reversed

Appeal 2010-002229
Application 09/986,026

7

AFFIRMED-IN-PART

MP