Ex Parte Tarbet

Board of Patent Appeals and Interferences

Jul 10, 2012

09888031 (B.P.A.I. Jul. 10, 2012)

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.
09/888,031 06/25/2001 Kenneth H. Tarbet 4189-00500 7507
30652 7590 07/11/2012
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE 750
PLANO, TX 75024
EXAMINER
ALAM, SHAHID AL
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
07/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH H. TARBET
____________________

Appeal 2009-015378
Application 09/888,031
Technology Center 2100
____________________

Before, KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
BRYAN F. MOORE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 7, 9, 10, and 16-25, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.

The Appellant invented a system and method for direct marketing and
directed sales incentive dissemination to selected customers. Specification
3:15-16.
An understanding of the invention can be derived from a reading of
exemplary claim 7, which is reproduced below [bracketed matter and some
paragraphing added]:
7. A method of improving customer loyalty via real time
generation and provision to a customer of a customer incentive
report remote from a point of sale, said method comprising:
[1] utilizing a computer to execute a plurality of steps, the
steps comprising:
[a] selecting a product information related to a
product;
[b] storing a purchase information related to the
purchase of the product by a customer;
[c] storing a customer information related to the
customer, the customer information associating the customer
with the purchase;
[d] storing a promotion information related to a
promotion of the product, the promotion being independent of

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Feb. 17, 2009) and Reply Brief (“Reply Br.,” filed Sep. 1, 2009),
and the Examiner’s Answer (“Ans.,” mailed July 8, 2009), and Final
Rejection (“Final Rej.,” mailed Oct. 17, 2008).
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the customer information, wherein the promotion information
includes both current and future promotional incentives;
[e] determining an intersection of the promotion
information, the purchase information, and the customer
information and storing the intersection in a database as the
customer incentive report;
[f] wherein the database comprises a first table
containing the product information, a second table comprising
the purchase information, and a third table comprising the
promotion information and a reference to a row of at least one
other table in the database; and,
[g] following the determining step:
[i] fashioning the second table responsive to an
item identifier attribute of the first table; and
[ii] picking at least one row from the first table
or the second table; and,
[h] receiving an identifier comprising at least a portion
of the first table; and
[i] fashioning the third table with the identifier.

REFERENCES
The Examiner relies on the following prior art:
Deaton US 5,649,114 Jul. 15, 1997

REJECTIONS
Claim 7 stands rejected under 35 U.S.C. §112 second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the Appellant regards as the invention.
Claims 7, 9, 10, and 16-25 stand rejected under 35 U.S.C. §102(b) as
being anticipated by Deaton.

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ISSUES
The issue of whether the Examiner erred in rejecting claim 7 under 35
U.S.C. § 112 second paragraph as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the Appellant regards
as the invention turns on whether a person with ordinary skill in the art
would have understood what the Appellant is claiming when reciting the
terms “fashioning,” “real time,” and “real time generation.”
The issue of whether the Examiner erred in rejecting claims 7, 9, 10,
and 16-25 rejected under 35 U.S.C. §102(b) as being anticipated by Deaton
turns on whether Deaton describes “[a] method of improving customer
loyalty via real time generation and provision to a customer of a customer
incentive report remote from a point of sale.”

ANALYSIS
Claim 7 rejected under 35 U.S.C. §112 second paragraph as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the Appellant regards as the invention.
The Examiner found that a person with ordinary skill in the art
“should question how customer loyalty has to do with fashioning the table or
fashioning the third table” as per claim 7. Ans. 7-8. The Appellant contends
that a person with ordinary skill in the art would not question the connection
between fashioning tables and the provision of the customer incentive report
to improve customer loyalty. Reply Br. 5-7. The Appellant specifically
argues that the third table comprises promotion information and the
promotion information is used to generate the customer incentive report.
Reply Br. 6. The Appellant argues that the customer incentive report is
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further used to provide a manner of improving customer loyalty in real time.
Reply Br. 6.
We agree with the Appellant’s arguments and accordingly do not
sustain the Examiner’s rejection of claim 7 under 35 U.S.C. §112 second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellant regards as the
invention. We further note that the test for definiteness under 35 U.S.C. §
112, second paragraph, is whether “those skilled in the art would understand
what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986)(citations omitted). As such, we do not agree
with the Examiner that a person with ordinary skill in the art “should
question how customer loyalty has to do with fashioning the table or
fashioning the third table” thereby rendering claim 7 indefinite.

Claims 7, 9, 10, and 16-25 stand rejected under 35 U.S.C. §102(b) as being
anticipated by Deaton.
The Appellant contends that Deaton fails to describe the “real time
generation and provision to a customer of a customer incentive report remote
from a point of sale,” as recited in claim 7. App. Br. 12-16 and Reply Br. 7.
The Appellant specifically argues that Deaton in one embodiment describes
that coupons are dispensed at the point-of-sale and therefore cannot describe
a location remote from the point-of-sale. App. Br. 13. The Appellant
further argues that Deaton describes another embodiment that includes
mailing coupons remote from the point-of-sale, but this embodiment fails to
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describe that the coupons are generated and provisioned in real time. App.
Br. 13-14.
We disagree with the Appellant. The preamble of claim 7 recites the
“real time generation and provision to a customer of a customer incentive
report remote from a point of sale.” “[A] claim preamble has the import that
the claim as a whole suggests for it.” Bell Communications Research, Inc.
v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed.Cir. 1995). If the
claim preamble, when read in the context of the entire claim, recites
limitations of the claim, or, if the claim preamble is “necessary to give life,
meaning, and vitality” to the claim, then the claim preamble should be
construed as if in the balance of the claim. Kropa v. Robie, 187 F.2d 150,
152 (CCPA 1951). Here, the preamble recites limitations necessary to give
life to the claim. The preamble requires that the steps are performed in “real
time” and result in the “generation and provision of a customer incentive
report.” However, neither the Specification nor the claims limit the scope of
the terms “generation,” and “provision.” Under the broadest reasonable
construction, the terms “generation” and “provision” in the limitation the
“real time generation and provision to a customer of a customer incentive
report remote from a point of sale” encompass an instruction or indication to
create and dispense a coupon or other incentive to a customer, where the
instruction or indication is provided remote from the point-of-sale.
As found by the Examiner (Ans. 9-10), Deaton describes a system that
generates coupons or other incentives to a customer based on the customer’s
shopping history. Deaton 7:31-50. Specifically, the system includes a
transaction processing system 110 that includes a transaction processor 112
that is connected through a network to transaction terminals 120 located at a
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point-of-sale. Deaton 11:10-26 and Fig. 1. Information regarding a
particular product is generated by bar code reader 123a and transmitted to
host processor 110. Deaton 67:51-55. The host processor 110 identifies
each product, compares it against the stored data tables, and generates an
indication of the type of coupon to be given to the customer. Deaton 67:55-
58. This indication may be a signal transmitted to display 124 or utilized to
generate the actual printing of a coupon (123b). Deaton 67:58-63.
As discussed supra, the limitation “real time generation and provision
to a customer of a customer incentive report remote from a point of sale” is
sufficiently broad such that it encompasses the generation of an indication of
what incentive to provide to the customer and that indication is transmitted
to the point-of-sale, as described by Deaton. As such, we agree with the
Examiner that Deaton anticipates claims 7, 9, 10, and 16-25.

CONCLUSIONS
The Examiner erred in rejecting claim 7 under 35 U.S.C. § 112 second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellant regards as the
invention.
The Examiner did not err in rejecting claims 7, 9, 10, and 16-25 under 35
U.S.C. §102(b) as being anticipated by Deaton.

DECISION
To summarize, our decision is as follows.
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 The rejection of claim 7 under 35 U.S.C. § 112 second paragraph as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which the Appellant regards as the invention
is not sustained.
 The rejection of claims 7, 9, 10, and 16-25 under 35 U.S.C. §102(b) as
being anticipated by Deaton is sustained.

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) (2010).

AFFIRMED

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