Ex Parte Lewis et al

Patent Trial and Appeal Board

Jan 4, 2018

13408924 (P.T.A.B. Jan. 4, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/408,924 02/29/2012 Jon K. Lewis 82832862 3196
22879
HP Tnr
7590 01/08/2018 EXAMINER
3390 E. Harmony Road
Mail Stop 35
DAGNEW, SABA
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
01/08/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON K. LEWIS, ROBERT DONG YEE,
ARON E. TREMBLE, and ADAM L. HORNSTEIN
Appeal 2016-005405
Application 13/408,924
Technology Center 3600
Before ST. JOHN COURTENAY III, NORMAN BEAMER, and
MATTHEW J. McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 8-11, 13, 14, 16, and 21-28, which are all the claims pending in
this application. Claims 7, 12, 15, and 17-20 are cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants’ invention is directed to a method to deliver a coupon. “A
list of coupon options is provided via a coupon application. A coupon
selection is determined from the list of coupon options based on the list of
Appeal 2016-005405
Application 13/408,924
coupon options with at least one coupon option selected. The coupon is
obtained based on the coupon selection.” (Spec. ^ 62; Abstract).
Exemplary Claim
1. A method comprising:
[LI] printing a list of coupon options on at least a first
sheet of media via a coupon application to yield a printed list of
coupon options;
[L2] marking the printed list of coupon options by
placing, on the first sheet of media, selection marks next to
selected coupon options from among the printed list of coupon
options, the marking yielding a marked list of coupon options;
[L3] scanning, by a scanner, the marked list of coupon
options including the selection marks next to the selected
coupon options, to produce a scanned list of coupon options;
[L4] determining, by a coupon device, a coupon based
upon the scanned list of coupon options; and
printing the determined coupon on a second sheet of
media to yield a printed coupon.
(Contested limitations L1-L4 are bracketed and emphasized).
Rejections1
A. Claims 1-6, 8-11, 13, 14, 16, and 21-28 are rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Ans. 2.
1 We note the heading of the Examiner’s § 102(b) rejection (listing claims
1-20) in the Final Action (6) appears to be a typographical error, because the
Examiner provides a detailed statement of rejection for claims 1-6, 8-11,
13, 14, 16, and 21-28 on pages 7-15, which follow under the § 102(b)
rejection heading. Similarly, the Examiner omits claim 6 from the § 101
rejection heading in the Final Action (2). However, the Examiner clarifies
in the Answer (2) that claims 1-6, 8-11, 13, 14, 16, and 21-28 stand rejected
on appeal under 35 U.S.C. § 102(b) and 35 U.S.C. § 101.
2
Appeal 2016-005405
Application 13/408,924
B. Claims 1-6, 8-11, 13, 14, 16, and 21-28 are rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Barkan et al. (US Patent
Publication No., 2004/0056101 Al, Published: March 25, 2004)
(hereinafter “Barkan”). Ans. 2.
Issues on Appeal
Did the Examiner err in rejecting claims 1-6, 8-11, 13, 14, 16, and
21-28 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter?
Did the Examiner err in rejecting claims 1-6, 8-11, 13, 14, 16, and
21-28 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Barkan?
ANALYSIS
We have considered ah of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Rejection A of Claims / 6, 8—11, 13, 14, 16, and 21—28
Under 35 U.S.C. §101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
3
Appeal 2016-005405
Application 13/408,924
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298, 1297).
We, therefore, decide: (1) whether the claims focus on a specific
means or method that improves the relevant technology, or (2) are directed
to a result or effect that itself is the abstract idea, in which the claims merely
invoke generic processes and machinery. See Enflsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Mayo/Alice Analysis — Step 1
Regarding the first part of the Mayo/Alice analysis, the Examiner
concludes the claims are “directed to presenting the printed coupon based on
4
Appeal 2016-005405
Application 13/408,924
the coupon selection which is considered to be an abstract idea inasmuch as
such activity is considered by the Examiner as both a fundamental
economic practice and a method of organizing human activity by
providing an opportunity for parties to enter into a specified agreement.”
(Final Act. 3). (emphasis added). In the Answer (3), the Examiner further
concludes:
The combination of clamed steps recites printing, marking,
scanning, determining and printing the determined coupons on
the paper for distributing the selected coupon to the targeted
individual based on the individual interest. This is simply the
organization and comparison of (coupon) data which can be
performed mentally and it is an idea of itself.
(emphasis added).
Regarding Alice Step 1, Appellants contend:
It is respectfully submitted that claim 1 clearly is not
directed to a fundamental economic practice “long prevalent in
our system of commerce,” contrary to the Examiner’s assertion
on page 3 of the Final Office Action. In fact, claim 1 relates
specifically to tasks that are tied to physical items. For
example, the printing tasks in claim 1 include “printing a list of
coupon options on at least a first sheet of media” and “printing
the determined coupon on a second sheet of media.”
Moreover, claim 1 further recites “scanning, by a scanner, the
marked list of coupon options to produce a scanned list of
coupon options,” and “determining, by a coupon device, a
coupon based upon the scanned list of coupon options.”
The interactions of the various tasks of claim 1 with
specific physical items, including a first sheet of media, a
second sheet of media, a scanner, and a coupon device,
clearly establish that claim 1 is not an abstract idea. Also, it
is inaccurate to characterize claim 1 as a fundamental
economic practice long prevalent in our system of commerce,
since, as explained below in connection with the § 102
5
Appeal 2016-005405
Application 13/408,924
rejection of the claims, the subject matter of claim 1 is
inventive over the cited art.
(App. Br. 6) (emphasis added).
Appellants further urge: “It is clear that the elements of claim 1 are
neither routine nor conventional, contrary to the Examiner’s assertion,
since such elements are clearly not present in the art.” (App. Br. 7). In
support, however, we find Appellants merely recite the marking, scanning,
and determining steps or acts of claim 1. {Id.) (emphasis added).
Regarding Appellants’ assertion that “the subject matter of claim 1 is
inventive over the cited art” (App. Br. 6), because “the elements of claim 1
are neither routine nor conventional” (App. Br. 7), the Supreme Court
guides: “[t]he ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter
of a claim falls within the § 101 categories of possibly patentable subject
matter.” Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) (emphasis added).
Our reviewing court further guides that “[eligibility and novelty are
separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc ’ns,
LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs of Tex.,
LLCv. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that
“even assuming” that a particular claimed feature was novel does not “avoid
the problem of abstractness”).
However, we note Appellants’ independent method claim 1 is tied to
various machines, such as “a scanner” and “a coupon device.” Similarly,
independent “system” claim 8 comprises, inter alia: “a coupon device
comprising a processor,” that causes “a printing device to print” and
causes “a scanning device to scan.” (emphasis added). Independent claim
16 recites “[a] non-transitory computer-readable storage medium storing
6
Appeal 2016-005405
Application 13/408,924
instructions that upon execution cause a system to:” inter alia, further “cause
printing” and “cause scanning.”2
Turning to Appellants’ Specification for context, we note the
supporting description for the claimed machine elements:
The coupon device 12 represents generally any computing
device or combination of computing devices configured to
communicate with a peripheral device 14, such as a printing
device, a scanning device, a wireless device, and/or a mobile
device over a link 10, such as an internet connection. For
example, the coupon device 12 includes a memory to store a
set of instructions and a processor coupled to the memory to
execute the set of instructions.
(Spec. ^ 18) (emphasis added).
Given this context, which describes the coupon device as representing
“generally any computing device or combination of computing devices”
{id. (emphasis added)), we find nothing in the claims on appeal that focuses
on a specific means or method that improves the relevant generic
computing device technology. In particular, we find the claims on appeal
are silent regarding specific limitations directed to an improved scanner,
printer, or processor. The recited “coupon device” is merely described in
terms of generic computer components and/or peripheral devices. {See
Spec. ^ 18). The Supreme Court guides: “the mere recitation of a generic
computer cannot transform a patent ineligible abstract idea into a patent-
eligible invention.” See Alice, 134 S. Ct. at 2358.
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
7
Appeal 2016-005405
Application 13/408,924
Applying this reasoning here, and considering each claim on appeal as
a whole in light of the Specification, we conclude all claims on appeal are
merely directed to a result or effect that itself is the abstract idea, and merely
invoke generic processes and machinery, such as generic computer
processors, scanners, and printers. See Enflsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016).
Although we agree with Appellants that printing and scanning cannot
reasonably be performed as mental steps (Reply Br. 3), our reviewing court
nevertheless guides that fundamental economic and conventional business
practices are often found to be abstract ideas, even if performed on a
computer. See, e.g., OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362-63 (Fed. Cir. 2015).
Thus, under a broad but reasonable interpretation, we conclude each
of Appellants’ claims on appeal is directed to an economic or business
practice, i.e., to the post-solution result of “a printed coupon” that is
intended to be used in a purchase transaction according to the preferences
indicated in a scanned marked list of (user) selected coupon options. (Claim
1; see similar language of commensurate scope, as recited in independent
claims 8 and 16). Our reviewing court guides that “[t]he abstract idea
exception prevents patenting a result where ‘it matters not by what process
or machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (2016) (quoting O’Reilly v. Morse, 56
U.S. 62, 113 (1854)) (emphasis added).
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s legal conclusion that all claims on appeal are directed to the
patent-ineligible “abstract idea” of performing a fundamental economic
8
Appeal 2016-005405
Application 13/408,924
practice (i.e., consumer business transactions) using printed coupons.
(Final Act. 3).
Mayo/Alice Analysis — Step 2
Because we conclude the claims are directed to an abstract idea, we
turn to the second part of the Mayo/Alice analysis. We analyze the claims to
determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 134 S. Ct. at 2357.
Regarding the second part of the Alice!Mayo analysis, the Examiner
concludes:
The elements of the instant method, when taken in combination,
together do not offer substantially more than the sum of the
functions of the elements when each is taken alone. That
is, the elements involved in the recited method to deliver
coupon (descriptive material) undertake their roles in
performance of their activities according to their generic
functionalities which are well-understood, routine and
conventional. The elements together execute in routinely and
conventionally accepted coordinated manners and interact with
their partner elements to achieve an overall outcome which,
similarly, is merely the combined and coordinated execution of
generic application functionalities which are well-
understood, routine and conventional activities previously
known to the industry.
(Final Act. 4).
Regarding Alice Step 2, Appellants urge, inter alia: “It is clear that
the elements of claim 1 are neither routine nor conventional, contrary to
the Examiner’s assertion, since such elements are clearly not present in the
art.” (App. Br. 7) (emphasis added). In support, however, Appellants
merely enumerate the marking, scanning, and determining steps or acts of
9
Appeal 2016-005405
Application 13/408,924
claim 1 and conclude: “The foregoing elements of claim 1 cannot be
properly characterized as merely ‘printing a list of coupon[s].’” (Id.).
Appellants’ arguments do not persuade us the Examiner erred,
because Appellants essentially recite the claim limitations without any
persuasive explanation of how the limitations either individually, or as an
ordered combination, amount to an inventive concept that converts the
abstract idea into patent-eligible subject matter.
Appellants further urge:
The Examiner further incorrectly stated that claim 1 recites “a
method of organizing human activity by providing an
opportunity for parties to enter into a specified agreement.”
Office Action at 3. There is no reference to any entry into an
agreement in claim 1. Since the Examiner has erred in
asserting that claim 1 relates to a method of organizing human
activity by providing an opportunity for parties to enter into
a specified agreement, Appellant respectfully submits that the
assertion by the Examiner that claim 1 is directed to an abstract
idea on this alternative basis is clearly incorrect.
(App. Br. 7-8) (emphasis added).
However, we find a mutually-agreed business transaction using
coupons is a method of organizing human activity consistent with the
common practice of discounting the retail price of merchandise as being “on
sale” (i.e., a fundamental economic and business practice), in which
potential buyers are offered a discounted purchase price. Such discounts can
alternatively be realized by coupons printed according to user selection
and/or preferences.
The Supreme Court guides the category of abstract ideas embraces
“fundamental economic practice[s] long prevalent in our system of
commerce.” Alice, 134 S. Ct. at 2356. Further, “simply appending
10
Appeal 2016-005405
Application 13/408,924
conventional steps, specified at a high level of generality, to laws of nature,
natural phenomena, and abstract ideas cannot make those laws, phenomena,
and ideas patentable.” Mayo, 132 S. Ct. at 1300.
Nevertheless Appellants’ (App. Br. 8; Reply Br. 7) cite to DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), and
urge: “claim 1 is inventive over references cited by the Examiner. The
presence of this inventive subject matter is sufficient to transform the
process of claim 1 into a patent-eligible application, consistent with the
guidance provided by the Supreme Court in Alice.” (Reply. Br. 7).
We note DDR was the first Federal Circuit decision to uphold the
validity of e-commerce (business methods and software-based) patent claims
after the Supreme Court’s decision in Alice. In DDR, the Federal Circuit
applied the Supreme Court’s Alice two-step framework, and upheld the
validity of DDR’s patent on its web-page display technology. DDR, 773
F.3d at 1248.
However, we find the problem addressed by Appellants’ claims is not
similar or otherwise analogous to the specific technical problem addressed
by the subject claims in DDR. In DDR, the claimed feature was directed to
retaining a website visitor when the visitor clicked on a third-party
merchant’s advertisement on the host website. Instead of taking the
visitor to the third-party merchant’s website (and thus losing the visitor to
the third-party merchant), DDR's claimed system generated a hybrid web
page that: (1) displayed product information from the third party merchant,
but also, (2) retained the host website’s “look and feel.”
Here, we note Appellants’ claims are silent regarding any mention of
websites or solutions to technical problems, such as “serving] to the visitor
11
Appeal 2016-005405
Application 13/408,924
a new, hybrid web page that merges content associated with the products of
the third-party merchant with the stored ‘visually perceptible elements’ from
the identified host website,” as was the case considered by the court in DDR,
773 F.3d at 1257.
Moreover, to the extent that Appellants’ recited steps or acts (or
functions) may be performed faster or more efficiently using a computer, or
“processor” (claim 8), our reviewing court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that
the required calculations could be performed more efficiently
via a computer does not materially alter the patent eligibility of
the claimed subject matter.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphases added).
Further regarding the use of a generic “processor” (claim 8) see Alice,
134 S. Ct. at 2358 (holding that “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention”); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet
computer network’ or on a generic computer is still an abstract idea.”); Elec.
Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“We
have repeatedly held that such invocations of computers and networks that
are not even arguably inventive are ‘insufficient to pass the test of an
inventive concept in the application’ of an abstract idea.”) (quotations
12
Appeal 2016-005405
Application 13/408,924
omitted); Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a generic
computer element—a processor—and a series of generic computer
‘components’ that merely restate their individual functions . . . That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.”), (emphasis
added).
Applying the aforementioned guidance here, we conclude Appellants’
claims on appeal are not directed to an improvement in computer,
processor, printer, or scanner functionality. Therefore, we conclude that
none of the claim limitations, viewed “both individually and as an ordered
combination,” amount to significantly more than the judicial exception in
order to sufficiently transform the nature of the claims into patent-eligible
subject matter. See Alice, 134 S. Ct. at 2355 (internal quotations omitted)
(quoting Mayo, 132 S. Ct. at 1297).
For at least the aforementioned reasons, and on this record, Appellants
have not persuaded us the Examiner erred regarding rejection A of all claims
on appeal. Accordingly, we sustain the Examiner’s rejection A of
representative claim 1, and grouped claims 2-6, 8-11, 13, 14, 16, and 21-28
under 35 U.S.C. § 101.3
3 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
13
Appeal 2016-005405
Application 13/408,924
Rejection B of Independent Claims 1, 8 and 16 under § 102(b)
Based upon our review of the record, we find the following issue is
dispositive regarding all claims rejected under anticipation rejection B:
Issue: Under pre-AIA 35 U.S.C. § 102(b), did the Examiner err by
finding that Barkan expressly or inherently discloses contested limitations
LI and L2:
[LI] printing a list of coupon options on at least a first sheet of
media via a coupon application to yield a printed list of coupon
options;
[L2] marking the printed list of coupon options by placing, on
the first sheet of media, selection marks next to selected coupon
options from among the printed list of coupon options, the marking
yielding a marked list of coupon options[,]within the meaning of
representative claim l?4 (emphasis added).
Regarding contested limitation LI, the Examiner finds the contested
step or act of “printing a list of coupon options” (claim 1) is disclosed by
Barkan at paragraphs 120, 121, 185, and 187:
printing a list of coupon options on at least a first sheet of
media to yield a printed list of coupon options (paragraph
[0120], discloses a coupon will be printed out along with the
list, paragraph [0121], discloses special paper for printing
coupon, paragraph [0185],discloses shopping list is printed out,
items which coupon which also printed and paragraph [0187],
discloses printing coupon in single page);
(final Act. 7) (emphasis omitted).
4 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See Morris, 127 L.3d
at 1054.
14
Appeal 2016-005405
Application 13/408,924
Regarding contested limitation L2, the Examiner finds the contested
step or act of “marking the printed list of coupon options” (claim 1) is
disclosed by Barkan at paragraphs 122 and 185:
marking the printed list of coupon options by placing, on the
first sheet of media, selection marks next to selected coupon
options from among the printed list of coupon options,
the marketing yielding a marked list of coupon options
(paragraph [0122], discloses items on the list which have
coupon available highlighted (marked) on the printed list and
paragraph [0185], discloses coupon which is printed
highlighted on the listed);
(Final Act. 7) (emphasis omitted).
After reviewing the record, and the portions of Barkan cited by the
Examiner (Final Act. 6-15; Ans. 4-9), we find a preponderance of the
evidence supports at least Appellants’ principal contentions, as follows:
Paragraph [0120] of Barkan refers to a user “printing]
out the shopping list on his home printer before going
shopping.” Barkan, [0120]. Paragraph [0121] of Barkan states
that “[s]pecial paper for printing coupons can be made
available.” Id., ^[ [0121], Barkan further states that “[w]hen the
shopping list is printed out, items for which coupons were also
printed will be highlighted on the list, reminding the consumer
that coupons are available.” Id., ^[ [0185].
In Barkan, as part of the printing of a shopping list, items
(to be purchased by a user such as at a grocery store) for which
coupons were also printed will be highlighted. The shopping
list of items is a list of items that the user wishes to purchase.
Items for which coupons are available or have been printed are
also highlighted on the list of items.
What is highlighted on the list of items in Barkan are the
items themselves, i.e. the items that are to be purchased.
Moreover, the highlighting of the items is performed as part of
the printing in Barkan.
In contrast, according to claim 1, “selection marks next to
selected coupon options” are placed on the first sheet of media,
15
Appeal 2016-005405
Application 13/408,924
after a list of coupon options is printed on the first sheet of
media. Highlighting items that are to be purchased as
performed in Barkan is not the same as placing selection marks
next to selected coupon options, as claimed. In Barkan, items to
be purchased are highlighted; in claim 1, selected coupon
options are marked.
Moreover, in claim 1, the marking is performed on the
printed list of coupon options by placing, on the first sheet of
media, selection marks next to selected coupon options. The
printed list of coupons is produced by the “printing [of] the list
of coupon options on at least a first sheet of media.” Thus, in
claim 1, after printing of the list of coupon options on the first
sheet of media to produce the printed list of coupons, the
marking of the printed list of coupons is performed by placing
selection marks next to the selected coupon options among the
printed list of coupon options. In contrast, in Barkan, the
highlighting is already performed as part of the printing, with
no marking performed after the printing.
(App. Br. 12-13).
For at least the aforementioned reasons argued by Appellants {id.), we
find a preponderance of the evidence does not support the Examiner’s
anticipation rejection of independent claim 1. Remaining independent
claims 8 and 16 recite contested limitations LI and L2 (of claim 1) using
similar language of commensurate scope.
Therefore, we are persuaded the Examiner erred regarding all claims
1-6, 8-11, 13, 14, 16, and 21-28 rejected under rejection B under 35 U.S.C.
§102 (b). Accordingly, we reverse the Examiner’s rejection B of all claims
rejected thereunder.
16
Appeal 2016-005405
Application 13/408,924
Reply Brief
As pertaining to rejection A under § 101 (affirmed), to the extent
Appellants advance new arguments in the Reply Brief not in response to a
shift in the Examiner’s position in the Answer, we note arguments raised in
a Reply Brief that were not raised in the Appeal Brief or are not responsive
to arguments raised in the Examiner’s Answer will not be considered except
for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusions
The Examiner did not err in rejecting claims 1-6, 8-11, 13, 14, 16,
and 21-28 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
The Examiner erred in rejecting claims 1-6, 8-11, 13, 14, 16, and
21-28 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Barkan.
DECISION
We affirm the Examiner’s decision rejecting claims 1-6, 8-11, 13, 14,
16, and 21-28 under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1-6, 8-11, 13,
14, 16, and 21-28 under pre-AIA 35 U.S.C. § 102(b).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. §41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
17