Ex Parte Lowe

Patent Trial and Appeal Board

May 22, 2013

11409175 (P.T.A.B. May. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte J. MITCH LOWE
____________

Appeal 2011-004318
Application 11/409,175
Technology Center 3600
____________

Before JAMES P. CALVE, NEIL T. POWELL, 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 1-4 and 7-20. App. Br. 1. Claims 5 and 6 are cancelled. Id. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-004318
Application 11/409,175

2
CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent. Claim 1 is reproduced below:
1. A method for vendible entertainment media
products adapted to be vended from each of a plurality of
vending kiosks, comprising the steps of:
receiving a first user input command comprising an
identification of a first vendible media product at one of the
plurality of vending kiosks by a customer;
determining whether a discount offer notification is
pending for a second vendible media product wherein the
discount offer notification is based on a quantity of the second
vendible media products in a vending inventory and is
generated by querying a database comprising inventory
quantities for the vendible media products;
generating a communication for display on a user
interface at the one of the plurality of vending kiosks which is
structured to communicate an offer for the least one of the
second vendible media products at a discount price to the
customer; and,
receiving a second user input command from the
customer at the one of the plurality of vending kiosks to vend
the second vendible media product at the discount price.

REJECTION1
Claims 1-4 and 7-20 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Barber (US 2002/0046122 A1; pub. Apr. 18, 2002).
ANALYSIS
Appellant argues claims 1-4 and 7-10, claims 11-18, claim 19, and
claim 20 as separate groups. App. Br. 8-17. We select claims 1 and 11 as
representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011).

1 The Examiner has withdrawn the rejection of claims 1-4 and 7-20 under
35 U.S.C. § 103(a) as being unpatentable over Barber. See Ans. 3. Thus,
Appellant’s arguments regarding that rejection are considered moot.
Appeal 2011-004318
Application 11/409,175

3
Claims 1-4 and 7-10
The Examiner found that Barber discloses a touch screen at a kiosk
that enables customer selections to be added to a shopping cart, and Barber
further discloses that e-coupons are sent to customers with discount rental
offerings that are available at one or more local kiosks and a customer may
print the coupon and enter the coupon code at a kiosk to obtain a second
vendible discounted media product. Ans. 4, 9-10. The Examiner reasoned
that a customer inputs information to select a first vendible media product at
a kiosk, which generates a display with an offer of a discount for a second
vendible media product by means of a pop-up, and a user enters a coupon
code to obtain the second media product. Ans. 10. The Examiner found that
Barber also provides promotions based on a kiosk’s inventory history and
has mechanisms to promote specific marketing initiatives. Ans. 10.
Appellant argues that Barber does not disclose the step of “generating
a communication for display on a user interface at one of the plurality of
vending kiosks which is structured to communicate an offer for the at least
one of the second vendible media products at a discount price to the
customer,” as recited in claim 1. App. Br. 8. Appellant asserts that Barber
teaches that advertising is available on the kiosk, kiosk screen, additional
associated monitors, disk cases, dispensed coupons, e-coupons, e-mailed
receipts, and through web-based transactions, but advertisements and an
offer for sale or invitation to purchase are two legally distinct concepts.
App. Br. 9; Reply Br. 6-7. As a result, Appellant contends that “there is
nothing in Barber that discloses, suggests or contemplates an offer being
made through a kiosk’s user interface to rent an item at a discounted price as
required by claim 1.” App. Br. 10.
Appeal 2011-004318
Application 11/409,175

4
Appellant’s arguments do not persuade us of error in the Examiner’s
findings as set forth on pages 4 and 9-10 of the Answer that Barber discloses
kiosks that dispense media products in response to user interaction with a
touch screen (para. [0009]), a central server sends e-mail advertisements and
promotions for discounted media products to users based on profile data, and
users can obtain discounted products at a nearby kiosk based on availability
(paras. [0010, 0020, 0064]). Appellant admits that Barber uses advertising
at kiosks, kiosk screens, associated monitors, e-coupons, e-mailed receipts
and through web transactions. See App. Br. 9 (citing para. [0064]). The
Examiner’s finding that the presentation of advertisements and e-coupons at
kiosks results in generating a communication for display on a user interface
at a kiosk to communicate an offer for a second vendible media product at a
discount price to the customer is consistent with the language of claim 1 and
Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir.
2001), which holds that a communication rises to the level of commercial
offer for sale if it can be made into a binding contract by simple acceptance
(assuming consideration).2 See also Spec. 59, para. [0224] (“A discount
offer is an offer to sell or rent a vendible media product at a discounted
price.”). Accordingly, we sustain the rejection of claims 1-4 and 7-10.
Claims 11-18
The Examiner found that Barber discloses a media vending system
with a central controller 103, 300, 612 remotely located from the vending

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 interpretation of “an offer for the at least one of
the second vendible media products at a discount price” in claim 1. See
App. Br. 9; Reply Br. 7; see also Spec. 58-60, paras. [0222-0228]; fig. 35.
Appeal 2011-004318
Application 11/409,175

5
controller and in communication with the vending controller to transmit a
discount offer notification to a customer. Ans. 5-6, 11 (citing para. [0064]).
The Examiner also found that when a user enters an email address via the
touch screen keyboard at a kiosk 101 or vending controller, a customer
profile is created and stored and verified by the central server when a user
enters their profile information at a kiosk to obtain a vendible media product.
Ans. 11 (citing para. [0010, 0020]). The Examiner reasoned that the central
database server receives the profile information and transmits a discount
offer notification to a kiosk by means of a pop-up window so that a customer
can enter a discount coupon code during a disk dispensing operation. Id.
Appellant argues that Barber lacks “a second user interface screen for
offering a vending product at a discount price and for receiving a second
user input command” for the same reasons as claim 1. Appellant also argues
that Barber does not disclose “the central controller transmits the discount
offer notification to the vending controller” as recited in claim 11. App. Br.
10. Appellant argues that although Barber discloses that customers are
eligible to receive frequent tailored email updates and e-coupons from the
central server for current promotions, neither this section nor any other of
Barber discloses a central server transmitting a discount notification to the
vending controller of a kiosk. App. Br. 11-12; Reply Br. 8-9.
Appellant’s arguments do not persuade us of error in the Examiner’s
findings as set forth at pages 5-6 and 11 of the Answer and we adopt those
findings as our own. Barber discloses a central server controller 103 that
communicates with each kiosk controller and polls individual kiosks 200 for
status information. Para. [0075]. Each kiosk 200 includes a memory 203
that stores its inventory, which is duplicated on core server 103, and a set of
Appeal 2011-004318
Application 11/409,175

6
parameters that are received from core server 103, specific to a kiosk, and
include advertisements and advertising play lists. Para. [0074]. Barber also
discloses that the kiosks 200 communicate credit card and other customer
information to the central server 300 during a transaction and the server 300
verifies the data and transmits authorization to dispense a requested media to
the kiosk. See para. [0079]. Barber also discloses that advertising with the
kiosk system provides mechanisms to promote specific marketing initiatives
and local and global advertising. Para. [0064]. The central server profiles
customers according to movie preferences and sends e-coupons and emails
to customers to offer a discount DVD rental and customers may accept the
discount by printing the coupon and entering the coupon code at a kiosk via
a touch screen to obtain the discounted video. Para. [0020]. The Examiner
had a sound basis for finding that the central controller 103 transmits such a
discount offer notifications to a vending kiosk to allow a customer to receive
the discount media product at the kiosk by entering a coupon code on a user
interface at the kiosk. We sustain the rejection of claims 11-18.
Claim 19
Appellant argues that Barber does not disclose “presenting a discount
offer notification to the user to rent one of the set of second digital video
discs . . . .” for similar reasons as claims 1 and 11. App. Br. 11. This
argument is not persuasive for the reasons set forth supra for claims 1 and
11. We sustain the rejection of claim 19.
Claim 20
Appellant argues that claim 20 is allowable because it depends from
claim 1 and because the Examiner fails to provide any support for finding
that Barber discloses first and second vendible media products with different
Appeal 2011-004318
Application 11/409,175

7
titles, as recited in claim 20. App. Br. 12. This argument is not persuasive
because we sustain the rejection of claim 1 and because Barber dispenses
selected DVDs from a choice of selections (para. [0009]) that would include
first and second vendible media products with different titles. See Ans. 12.
Barber discloses that a kiosk includes a carousel or shuttle that provides user
access to multiple media selections (para. [0008]), maintains an inventory of
available media selections (para. [0074]), and the system provides a real
time inventory of DVDs available at any kiosk with lists of movies often
rented and those that are not (para. [0022]). Barber also profiles customer so
that discounts can be offered for similar types of movies to the movies that a
customer has rented. Para. [0020]. We sustain the rejection of claim 20.
DECISION
We AFFIRM the rejection of claims 1-4 and 7-20.
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

mls