Ex Parte Panttaja et al

Board of Patent Appeals and Interferences

Jun 24, 2009

09932588 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte JAMES T. PANTTAJA, TIMOTHY J.O. CATLIN, CASSANDRA 8
WEI-CHUN LEE, and FRED A. KILBY 9
____________________ 10
11
Appeal 2009-000701 12
Application 09/932,588 13
Technology Center 3600 14
____________________ 15
16
Decided:1 June 25, 2009 17
____________________ 18
19
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH 20
A. FISCHETTI, Administrative Patent Judges. 21
22
CRAWFORD, Administrative Patent Judge. 23
24
25
26
DECISION ON APPEAL 27
28
STATEMENT OF THE CASE29

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000701
Application 09/932,588

2
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 1
of claims 1 to 8, 11 to 15 and 17 to 19. We have jurisdiction under 35 2
U.S.C. § 6(b) (2002). 3
Appellants invented a method for determining which awards to 4
redeem including the step of determining encumbrance levels of allowed 5
awards based on the types of allowed awards and the data in an 6
encumbrance database (Specification 2). 7
Claim 1 under appeal reads as follows: 8
1. A method in a redemption system for 9
determining which awards to redeem, the method 10
comprising: 11
maintaining an award history database that 12
includes award transaction information that 13
describes awards earned by a consumer and, for 14
each earned award, the type of award; 15
maintaining an encumbrance database that 16
describes types of awards that cannot be redeemed 17
at one or more suppliers; 18
receiving a request to redeem an amount of 19
the earned awards at a chosen supplier; 20
determining allowed awards that can be 21
redeemed with the chosen supplier; 22
determining encumbrance levels of the 23
allowed awards based on the types of allowed 24
awards and the data in the encumbrance database; 25
and 26
determining which of the allowed awards, 27
having different encumbrance levels, to redeem 28
based on the encumbrance levels. 29
Appeal 2009-000701
Application 09/932,588

3
The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Ikeda US 5,937,391 Aug. 10, 1999 3
The Examiner rejected claims 1 to 5, 7, 8, 11 to 13, 15 and 17 4
to 19 under 35 U.S.C. § 102(e) as being anticipated by Ikeda. 5
The Examiner rejected claims 6 and 14 under 35 U.S.C. § 103(a) as 6
being unpatentable over Ikeda. 7
8
ISSUE 9
Have Appellants shown that the Examiner erred in finding that Ikeda 10
discloses the step of determining which of the allowed awards, having 11
different encumbrance levels, to redeem based on the encumbrance levels? 12
13
FINDINGS OF FACT 14
Appellants’ Specification discloses a method in a redemption system 15
for determining which awards to redeem. The method includes the step of 16
determining which awards are available for redemption by determining 17
awards earned by the consumer that have not yet expired. Appellants’ 18
method determines which available awards to redeem based on the 19
encumbrance of the award. Figure 3 depicts a data structure for 20
implementing the invention: 21
Appeal 2009-000701
Application 09/932,588

4
1
2
As shown in row 338 of Figure 3, 50 points are awarded to consumer 3
111 by business 4 for promotion 2. As shown in row 340 of Figure 3, 50 4
points are awarded to consumer 111 by business 5 for promotion 1. 5
Figure 4 shows the encumbrance database: 6
7
Appeal 2009-000701
Application 09/932,588

5
According to Figure 4, the award for promotions 2 for business 4 are not 1
available in connection with supplier 200. Thus the awards corresponding to 2
row 338 are encumbered (Specification 11 The award for promotion 1 for 3
business 5 is not included in the encumbrance database shown in Figure 4 4
and are not encumbered indicating that these awards are available with all 5
suppliers. 6
Appellants do not define the phrase “encumbrance level” in the 7
Specification. 8
Ikeda discloses a method for redemption of awards. Shops A to D and 9
F to H participate in a points or awards program. Shop E does not 10
participate in the points program and as such does not award points for 11
shopping (col. 8, ll. 14 to 16). The points accumulated for a shop in which 12
the customer makes new purchases are processed in redeeming points not 13
points accumulated for other shops (col. 11, ll. 36 to 49). 14
15
PRINCIPLES OF LAW 16
An invention is not patentable under 35 U.S.C. § 103 if it is obvious. 17
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). The facts 18
underlying an obviousness inquiry include: Under § 103, the scope and 19
content of the prior art are to be determined; differences between the prior 20
art and the claims at issue are to be ascertained; and the level of ordinary 21
skill in the pertinent art resolved. Against this background the obviousness 22
or nonobviousness of the subject matter is determined. In addressing the 23
findings of fact, “[t]he combination of familiar elements according to known 24
Appeal 2009-000701
Application 09/932,588

6
methods is likely to be obvious when it does no more than yield predictable 1
results.” KSR, 550 U.S. at 416. As explained in KSR: 2
If a person of ordinary skill can implement a 3
predictable variation, § 103 likely bars its 4
patentability. For the same reason, if a technique 5
has been used to improve one device, and a person 6
of ordinary skill in the art would recognize that it 7
would improve similar devices in the same way, 8
using the technique is obvious unless its actual 9
application is beyond his or her skill. Sakraida 10
and Anderson's-Black Rock are illustrative-a court 11
must ask whether the improvement is more than 12
the predictable use of prior art elements according 13
to their established functions. 14
KSR at 417. 15
A prior art reference is analyzed from the vantage point of all that it 16
teaches one of ordinary skill in the art. In re Lemelson, 397 F.2d 1006, 1009 17
(1968)(“The use of patents as references is not limited to what the patentees 18
describe as their own inventions or to the problems with which they are 19
concerned. They are part of the literature of the art, relevant for all they 20
contain.”). Furthermore, “[a] person of ordinary skill is also a person of 21
ordinary creativity, not an automaton.” KSR at 421. 22
On appeal, Applicants bear the burden of showing that the Examiner 23
has not established a legally sufficient basis for combining the teachings of 24
the prior art. Applicants may sustain its burden by showing that where the 25
Examiner relies on a combination of disclosures, the Examiner failed to 26
Appeal 2009-000701
Application 09/932,588

7
provide sufficient evidence to show that one having ordinary skill in the art 1
would have done what Applicants did. United States v. Adams, 383 U.S. 39, 2
52 (1966). 3
4
ANALYSIS 5
We are not persuaded of error on the part of the Examiner by 6
Appellants’ argument that Ikeda does not disclose the step of determining 7
which of the allowed awards, having different encumbrance levels, to 8
redeem based on the encumbrance levels. Appellant’s Specification does 9
not specifically define the phrase “encumbrance level.” The Appellants 10
have directed our attention to page 13, lines 11 to 12 of the Specification for 11
a teaching that the encumbrance level is based on the restriction on 12
redeeming the awards at certain suppliers (App. Br. 2). This portion of the 13
Specification discloses that the encumbrance awards are measured in terms 14
of restrictions on redeeming the awards at certain suppliers and that awards 15
are encumbered if one or more suppliers will not accept them for 16
redemption. There is no discussion regarding encumbrance levels. To the 17
extent the word “level” implies a ranking, such can be based on 18
alphanumeric character identifiers such as supplier names. There is no 19
requirement in Appellants’ disclosure that the level is required to be 20
numeric. In Ikeda the awards differ in level at least as to which shop is 21
involved. Thus, an award supplied only by shop A is only redeemable at 22
shop A and thus we agree with the Examiner that shop A awards are a 23
different type and level than awards supplied only by shop B. This 24
interpretation is in accord with the actual recitations in claim 1 that the 25
Appeal 2009-000701
Application 09/932,588

8
encumbrance level is determined based on types of awards and data in the 1
database. Therefore, we hold that Ikeda does disclose the step of 2
determining which of the allowed awards having different encumbrance 3
levels to redeem based on the encumbrance levels. 4
5
CONCLUSION OF LAW 6
On the record before us, Appellants have not shown that the Examiner 7
erred in rejecting the claims on appeal. 8
9
DECISION 10
The decision of the Examiner is affirmed. 11
No time period for taking any subsequent action in connection with 12
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 13
14
AFFIRMED 15
16
17
18
19
20
hh 21
22
ROTHWELL, FIGG, ERNST & MANBECK, P.C. 23
1425 K STREET, N.W. 24
SUITE 800 25
WASHINGTON, DC 20005 26
27