Ex Parte Wong et al

Patent Trial and Appeal Board

Nov 24, 2014

10001580 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOON KEAN WONG, DAVID KAMMER, and
DAVID Z. CREEMER
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Appeal 2012-006818
Application 10/001,5801
Technology Center 3600
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Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Claims 30–34, 36, 37, 39–42, 44–46, 48–52, 54, and 56–59 are
pending in the subject patent application. Appeal Br. 2, Ans. 3. Appellants
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
30–34, 36, 37, 39–42, 44–46, 48–52, 54, and 56–59. Id. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 Appellants state that the real party in interest is Hewlett-Packard
Development Company, L.P. Appeal Br. 2.
Appeal 2012-006818
Application 10/001,580

2
Claimed Subject Matter
Claims 30, 39, and 48 are the independent claims on appeal. Claim
30, reproduced below, is illustrative of the subject matter on appeal.
30. A system for pricing a product, comprising:
a handheld computer comprising (a) a
location circuit configured to provide location data
based at least in part on the location of the
handheld computer, wherein the location circuit is
configured to provide the location data using at
least one of a signal from a global positioning
system and radio frequency (RF) triangulation, and
(b) a wireless transceiver configured to provide
wireless communication of the location data and a
user identifier; and
a data processor configured to receive the
location data and the personal identifier, to set a
price for selling the product, and to adjust the price
lower for selling the product to a person associated
with the user identifier based at least in part on the
location data.

Rejections
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Steiner US 5,528,248 June 18, 1996
Dueck US 6,012,834 Jan. 11, 2000
Brick US 6,269,342 B1 July 31, 2001
Peterson US 6,324,522 B2 Nov. 27, 2001
Banatre US 6,901, 261B2 May 31, 2005
Vendetti EP 0 568 824 A2 Nov. 10, 1993
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Application 10/001,580

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Claims 30–32, 36, 37, 39, 40, 45, 46, 48–50, 52, 54 and 56–59 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Banatre, Steiner, and
Peterson (“Rejection A”).
Claims 33, 41, 44 and 51 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Banatre, Steiner, Peterson, and Brick (“Rejection B”).
Claims 34 and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Banatre, Steiner, Peterson, and Dueck (“Rejection C”).
The Examiner alternatively rejects claims 30–33, 36, 37, 39–41, 44–
46, 48–52, 54, and 56–59 under 35 U.S.C. § 103(a) as unpatentable over
Vendetti and Steiner, and claims 34 and 42 under 35 U.S.C. § 103(a) as
unpatentable over Vendetti, Steiner, and Dueck (the “Alternative
Rejections”).

ANALYSIS
Rejections A, B, and C
With respect to Rejections A, B, and C,2 Appellants assert that the
Examiner has admitted that the Banatre reference does not teach the
following limitation of claim 30:
a data processor configured to receive the
location data and the personal identifier, to set a
price for selling the product, and to adjust the price
lower for selling the product to a person associated
with the user identifier based at least in part on the
location data.

2 Appellants argue Rejections A, B, and C together, and refer to these three
Rejections as “Ground A.”
Appeal 2012-006818
Application 10/001,580

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Appeal Br. 1011. Appellants then assert that the Examiner is relying solely
on the Peterson reference as teaching this claim limitation. Id. Appellants
go on to argue that Rejections A, B, and C must all be reversed because
Peterson does not, in fact, teach the quoted limitation.3 Id. The Examiner
responds by noting that Appellants are mischaracterizing the nature of the
Final Office Action. Ans. 14. Appellants argue in reply that the Final
Office Action does, in fact, rely solely on the Peterson reference as teaching
the above-quoted claim limitation. Reply 4–5. Appellants also argue in the
alternative that neither Banatre nor Peterson teaches “adjusting price lower
based at least in part on the location data.” Id. at 5. Appellants’ arguments
are not persuasive.
In the Final Office Action, the Examiner finds that Banatre teaches “a
data processor configured to receive the location data and the personal
identifier . . . and to send a targeted promotion for selling a product to a
person associated with the user identifier based at least in part on the
location data.” Final Act. 3. The Examiner then finds that Peterson teaches
“a data processor configured to receive a personal identifier, to set a price
for selling a product, and to adjust the price lower for selling the product for
a person associated with the user identifier.” Id. at 5. Thus, Appellants are
incorrect in asserting that the Examiner is relying solely on Peterson to teach
the concept of lowering prices based at least in part on location data.

3 Appellants argue that the other two independent claims—claims 39 and
48—contain similar language, and that the Examiner’s purported error
regarding Peterson thus requires reversing Rejections A, B, and C. See
Appeal Br. 11.
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Application 10/001,580

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Appellants’ alternative argument that neither Banatre nor Peterson
teaches adjusting price lower based on location data is not persuasive
because the Examiner is relying on a combination of references. Where, as
here, the Examiner relies on teachings from a combination of references,
Appellants “cannot show non-obviousness by attacking references
individually.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citation
omitted). Instead, each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Banatre teaches that the price of a product may be adjusted according
to a user’s location. See, e.g., Banatre 1:1113 (“[t]his invention concerns
mobile telephony enabling access to a context-sensitive service using the
position and/or identity of the user”); 1:15–18 (the “location and/or
identification of the user” are used “in order to offer adapted and adjusted
services, in particular with regard to price-setting”); 3:36–38 (“[f]or
example, a vocal communication between users whose pricing is adjusted by
the position of the caller is a context-sensitive service”). Peterson teaches
that the prices of a certain product can be discounted for certain users, but
not others. See, e.g., Peterson 24:9–20. Thus, there is ample evidence to
support the Examiner’s finding it would have been obvious, in view of the
combined teachings of these two references, to adjust prices lower based at
least in part on a user’s location data.
For the foregoing reasons, we are not persuaded that the Examiner
erred in rejecting independent claim 30. Appellants treat claim 30 as
representative of all three independent claims, and do not make any separate
patentability arguments with respect to independent claims 39 and 48. See
Appeal 2012-006818
Application 10/001,580

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Appeal Br. 11. Appellants also do not set forth any separate patentability
arguments with respect to any dependent claims. See id. Thus, we sustain
the Examiner’s rejection of claims 30–34, 36, 37, 39–42, 44–46, 48–52, 54,
and 56–59 as unpatentable under 35 U.S.C. § 103(a) over the prior art
combinations set forth in Rejections A, B, and C.

Alternative Rejections
Because we sustain Rejections A, B, and C, which cover all claims on
appeal, we need not reach the Alternative Rejections set forth by the
Examiner.

DECISION
For the foregoing reasons, we AFFIRM the Examiner’s decision
rejecting claims 30–34, 36, 37, 39–42, 44–46, 48–52, 54, and 56–59.
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)(iv).

AFFIRMED

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