Ex Parte Muldoon

Patent Trial and Appeal Board

Nov 26, 2014

11550691 (P.T.A.B. Nov. 26, 2014)

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.
11/550,691 10/18/2006 James R. Muldoon MULDOO-48959 9093
26252 7590 11/26/2014
KELLY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
11/26/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES R. MULDOON
____________

Appeal 2012-003743
Application 11/550,691
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
KEVIN W. CHERRY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–26. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2012-003743
Application 11/550,691

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BACKGROUND
Appellant’s invention is directed to an in-store reward distribution
system (Spec. ¶ 1).
Claim 1 is illustrative:
1. A process for distributing product entitlements in a
retail store to shoppers who are members of that retail store’s
preexisting frequent shopper program, comprising the steps of:
providing a host computer;
periodically obtaining from a retailer having a plurality
of stores data relating to its single, preexisting frequent shopper
program, the frequent shopper program having preexisting
members that have been each previously assigned a unique
frequent shopper member account code by the retailer, a
plurality of the members having made past purchases at the
retailer’s one or more stores in conjunction with their frequent
shopper member account code;
electronically transferring the obtained retailer’s frequent
shopper program data, including individual frequent shopper
program member account codes and past purchases, with or
without a coupon, made in conjunction with each individual
frequent shopper program member account code to the host
computer without generating a host frequent shopper program;
electronically comparing the past product purchases of
each frequent shopper program member account code at the
plurality of stores of the retailer to an electronic data file of
available product entitlements;
selecting available product entitlements to be associated
with each frequent shopper program member account code
based on the comparison;
providing at least one electronic dispenser within the
retailer’s stores which is not located at or in electronic
communication with point of sale check outs of the retailer, but
is accessible to and activated by a frequent shopper program
member at the beginning of or during the shopping trip of the
retailer’s store by entering information identifying the
member’s frequent shopper member account code;
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electronically communicating the previously selected
entitlements for that frequent shopper member account code to
the dispenser; and
printing at least one of the previously selected product
entitlements at the dispenser.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Deaton US 5,687,322 Nov. 11, 1997
Barnett US 6,321,208 B1 Nov. 20, 2001
DeLapa US 2001/0051894 A1 Dec. 13, 2001

Appellant appeals the following rejections:
Claims 1–5, 7–18, and 20–26 under 35 U.S.C. § 103(a) as
unpatentable over Deaton and DeLapa.
Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Deaton,
DeLapa, and Official Notice.
Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Deaton,
DeLapa, and Barnett.

ISSUES
Did the Examiner err in rejecting claim 1 because the Deaton system
is not controlled by the retailer and does not utilize the retailer’s preexisting
frequent shopper program to incent and reward shoppers for taking an action
while shopping at the retailer?
Did the Examiner err in rejecting claim 1 because one of ordinary skill
in the art would not look to the teachings of DeLapa and Deaton and
combine them with one another as proposed by the Examiner?
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Did the Examiner err in rejecting claim 5 because Deaton does not
disclose printing a list of the previously selected entitlements, including a
list of products and rebate information for each listed product?
Did the Examiner err in rejecting claim 17 because Deaton does not
disclose notifying shoppers in the retail store of a limited time entitlement
offer and printing the entitlement at the dispenser within the limited time of
the entitlement offer?
Did the Examiner err in rejecting claim 19 because the Official Notice
position is not supported by any cited reference?

FACTUAL FINDINGS
We adopt the Examiner’s findings in regard to the rejection of claim 1
as our own. Ans. 4–8. Additional findings of fact may appear in the
Analysis that follows.

ANALYSIS
Claims 1-5, 7–18, and 20–26
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Deaton’s system is not controlled by the retailer
and does not utilize the retailer’s preexisting frequent shopper program to
incent and reward shoppers for taking an action while shopping at the
retailer and, in fact, teaches away from this subject matter. The Appellant
argues that in Deaton it is the manufacturer that controls the frequent
shopper program. We agree with the Examiner’s response to this argument
found on pages 13–15 of the Answer. In this regard, we find that Deaton
explicitly discloses a shopping card for a frequent shopper that is distributed
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to shoppers by the retail store (col. 82, ll. 31–48). Appellant also argues that
in the Deaton system, the shopper does not receive incentives and rewards
while shopping at the retailer, but rather at the point of sale register and,
thus, after the shopper has completed shopping. In our view, printing
coupons in Deaton as the shopper checks out is a printing of the coupons
“during the shopping trip,” as broadly claimed. In addition, we find that
DeLapa discloses printing coupons at the kiosk before the shopper pays for
the goods at the point of sale check-out (claim 32).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that one of ordinary skill in the art would not look to
the teachings of DeLapa and Deaton and combine them with one another as
proposed by the Examiner. We agree with the Examiner’s response to this
argument that as both Deaton and DeLapa relate to presenting coupons to
shoppers in a retail store environment, the references are properly combined.
We also note that DeLapa is only relied on for teaching that the coupons can
be dispensed via a kiosk that is available before the customer pays. In
addition, we find no error in the Examiner’s reason for combining the
references, i.e., so that customers can better use the coupons.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the Examiner’s rejection of claims 2–4, 9–16,
18, and 20–26 because the Appellant has not argued the separate
patentability of these claims.
Claim 5 recites that the printing step includes printing a list of the
previously selected entitlements. The Appellant argues that the Examiner
erred in rejecting claim 5 because Deaton does not disclose printing a list of
the previously selected entitlements, including a list of products and rebate
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information for each listed product. The Examiner does not explain in the
Grounds of Rejection portion of the Answer how the cited references teach
this subject matter. For this reason alone, the rejection of claim 5 cannot be
sustained. In response to the Appellant’s argument that the cited references
do not teach printing a list of the previously selected entitlements, the
Examiner in the Response to Argument portion of the Answer directs our
attention to the teaching in Deaton of printing a list of coupons for a
particular shopper based on shopper history. It is true that the Deaton
system utilizes the shopper’s history to generate and print coupons.
However, there is no teaching in Deaton that the coupons are previously
selected entitlements. In this regard, the Deaton system does not disclose
how the shopper’s history is used to generate coupons. There is no teaching
in the Deaton system of generating a list of previously selected entitlements.
In view of the foregoing, we will not sustain the Examiner’s rejection of
claim 5 and claims 7 and 8 dependent therefrom.
We are not persuaded of error on the part of the Examiner in rejecting
claim 17 by Appellant’s argument that Deaton does not disclose notifying
shoppers in the retail store of a limited time entitlement offer and printing
the entitlement at the dispenser within the limited time of the entitlement
offer. In Appellant’s view, because the coupons are printed at the point of
sale checkout in Deaton, there is no disclosure of notifying shoppers in the
retail store. We agree with the Examiner’s response to this argument found
on page 20 of the Answer. In this regard, we find that the point of sale
checkout is in the retail store, as broadly claimed, and although the coupons
are issued at the point of sale checkout, they are only active for a limited
time.
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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 17.
Claim 19
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner’s reliance on Official Notice in the
rejection of claim 19 was in error. In rejecting claim 19, the Examiner took
Official Notice that the making of verbal announcements over public address
systems to announce specials in a store is old and well known. Appellant
argues that the Official Notice position is not supported by the cited
references. Appellant’s arguments and comments do not constitute an
adequate traverse because Appellant has not specifically pointed out the
supposed errors in the Examiner’s action, which would include stating why
the noticed fact is not considered to be common knowledge or well-known in
the art. 37 C.F.R. § 1.104(d)(2), Manual of Patent Examining Procedure
(MPEP) § 707.07(a) (9th Ed., Mar. 2014). An adequate traverse must
contain adequate information or argument to create on its face a reasonable
doubt regarding the circumstances justifying Examiner’s notice of what is
well known to one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728
(CCPA 1971). In view of the foregoing, we will sustain the Examiner’s
rejection of claim 19.
Claim 6
We will not sustain the Examiner’s rejection of claim 6 because
claim 6 depends from claim 5 and, thus, includes the subject matter we
found lacking in Deaton and DeLapa, and Barnett does not cure this
deficiency.

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DECISION
We affirm the Examiner’s rejections of claims 1–4 and 9–26.
We do not affirm the Examiner’s rejections of claims 5–8.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2011).

AFFIRMED-IN-PART

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