Ex Parte Schuller et al

Patent Trial and Appeal Board

Mar 24, 2014

11687101 (P.T.A.B. Mar. 24, 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.
11/687,101 03/16/2007 Robert J. Schuller VCI 0428 PUS1 7575
22045 7590 03/24/2014
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
03/24/2014 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 ROBERT J. SCHULLER and
ROBERT J. WEISZ
____________

Appeal 2012-000068
Application 11/687,101
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-000068
Application 11/687,101

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 22-24, 26-28, and 30-431 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to managing a
promotion in a store (Spec., para. [0004]). Claim 22, reproduced below with
the numbering in brackets added, is representative of the subject matter on
appeal.

22. A method carried out by an audit and billing computer
for promotion monitoring in connection with the distribution of
a particular promotion offer for a promoted product by one or
more devices in a store in connection with one or more linking
products, the method involving the steps of:
[1] an audit and billing computer system tracking [2] a
number of promotion offers for one or more promoted products
distributed by the one or more devices in the store in connection
with one or more linking products differing from one or more
of the one or more promoted products [3] to obtain a tracked
number of promotion offers;
[4] the audit and billing computer system tracking a
number of the one or more linking products that pass through a
point-of-sale of the store to obtain a tracked number of linking
products;
[5] the audit and billing computer system comparing the
tracked number of promotion offers for the one or more

1 Claims 25 and 29 have been cancelled (Br. 2).
Appeal 2012-000068
Application 11/687,101

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promoted products with the tracked number of linking products
to obtain a comparison value identifying if the tracked number
of promotion offers for
the one or more promoted products is no more than a certain
amount greater than the tracked number of linking products;
and
[6] based upon the comparison value, the audit and
billing computer system generating promotion offer billing data
comprised of a certain fee for each promotion offer distributed
to a consumer.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 22-24, 26-28, 30-36 and 38-432 are rejected under 35
U.S.C. § 102(e) as anticipated by Smith (US 2005/0015300 A1, pub. Jan.
20, 2005).
2. Claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Smith and Doerwald (US 2004/0204992 A1, pub. Oct. 14, 2004).

FINDINGS OF FACT
We find the findings of fact in the Analysis section below are
supported at least by a preponderance of the evidence3.

2 The Answer at page 4 has omitted claims 42-43 from this rejection but this
is considered a typographical error as the claims are listed in the body of the
rejection at page 11 of the Answer.
3 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 2012-000068
Application 11/687,101

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ANALYSIS
The Appellants argue that the rejection of claim 22 is improper
because the prior art fails to disclose claim limitation [2] (Br. 4-5).
In contrast, the Examiner has determined that the claim limitation is
found in Smith at paragraphs [0019], [0049], [0061], [0064], [0071], and
[0072] (Ans. 5, 13, 14).
We agree with the Appellants. Claim limitation [2] requires:
[2] a number of promotion offers for one or more promoted
products distributed by the one or more devices in the store in
connection with one or more linking products differing from
one or more of the one or more promoted products. [(Claim
22).]
We begin with claim construction. Here, support for the claim term
“linking product” has been provided in the Specification at paragraph [0017]
where it is stated that “[t]he term ‘linking product’ is use herein to refer to a
product that, when weighed by the scale, causes a promotion offer to be
generated for a promoted product that is different that the linking product.”
Thus the claim requires in part that a promotion offer be provided for a
promoted product in connection with one or more linking products differing
from one or more of the one or more promoted products.
The Examiner has cited to Smith at paragraph [0019] as disclosing
claim limitation [2], but there is no specific disclosure here that “free item”
in the shopping basket is a different product from the promoted product, and
the claim limitation has not been shown in the prior art. The remaining
citations to Smith at paragraphs [0049], [0061], [0064], [0071], and [0072]
fail to disclose this claim limitation as well. As this cited claim limitation
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Application 11/687,101

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[2] has not been shown the rejection of claim 22 is not sustained. The
remaining claims contain a similar limitation and the rejection of these
claims is not sustained for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 22-24, 26-28, and 30-43 is
reversed.

REVERSED

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