Thursday, March 21, 2013

Appellant loses in Ex parte Barber

The bottom line in Ex parte Barber:

The Examiner did not err in rejecting claims 1, 3-7, 9-21, 23-41, 63-
68, 70, and 71 under 35 U.S.C. § 103(a).


For the above reasons, the Examiner’s rejection of claims 1, 3-7, 9-21,
23-41, 63-68, 70, and 71 is AFFIRMED.

From the decision:

We are not persuaded by Appellants' argument that “coupling kiosks
to the single central server via the Internet” constitutes a patentable
distinction. We broadly construe the undefined claim term “Internet” to be a
collection of networked computers and the wide-area-networks
interconnecting them1. We find Newell discloses an interconnected, widearea
network of kiosk computers communicating with a central server (FF 3,
4). Although Newell discloses a vendor-specific network implementation
using IBM SNA communications2, the ordinary artisan would recognize this
is but one implementation of a wide-area network, and that other wide-area
network suppliers are available. Broadly interpreted, the “Internet” is an
interconnection of many wide-area networks from many suppliers, both
public and private. One typically does not connect directly to “the Internet”,
but instead one connects to a private or public network operated by an
Internet Service Provider, which is part of “the Internet” by being connected
to other networks.

Of the TSM test:

To the extent Appellants seek an explicit suggestion or motivation in
the reference itself, this is no longer the law in view of the Supreme Court’s
recent holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
We find the Examiner cited reasonable motivations to combine (see, for
example, FF 1, 2), so we are not persuaded of error because the Examiner
has set forth reasonable rationales for combinations.

As to employing creative steps

We are not persuaded by Appellants' argument, because we find one
of ordinary skill in the art would recognize that emailing discount coupons
based on available inventory may help incent the purchase of items for
which there are inventory levels that are excessive or sufficient to support an
advertising campaign. Both kiosk inventory and partner inventory represent
inventory levels available to sell, so they are only slightly different. See
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (In making the
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)

As to lack of patentable weight:

The term administering is not defined or described by the
Specification (FF 26), so we use the ordinary and customary definition of “to
manage or supervise the execution, use, or conduct of” (FF 27). The term
business data is not defined or described by the Specification (FF 28), so we
broadly construe it to mean data, because the specific content of the data
does not affect the function of the claim, which is to manage the data. The
content of the data does not receive patentable weight, similar to printed
matter. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). Finally, a
remote web-interface is not defined by the Specification, but is described by
example as “allow[ing] an Internet browser to be a system interface ....” (FF
28). Although web browser software is an option for a remote webinterface,
it is not required. Therefore, we broadly interpret the term as
being a computer interface that permits management of a remote computer
over a network.

Of secondary considerations:

Next, evidence pertaining to secondary considerations must be taken
into account because it is present; however, it does not necessarily control
the obviousness conclusion. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1372 (Fed. Cir. 2007) (“the record establish [ed] such a strong case of
obviousness” that allegedly unexpectedly superior results were ultimately
insufficient to overcome obviousness conclusion). Facts established by
rebuttal evidence must be evaluated along with the facts on which the
conclusion of a prima facie case was reached, not against the conclusion
itself. See In re Eli Lilly, 902 F.2d 943 (Fed. Cir. 1990). “[E]vidence that
has been presented in a timely manner should not be ignored, but rather
should be considered on the record. However, not all evidence need be
accorded the same weight.” Manual of Patent Examining Procedure § 2145
(8th Ed. Rev. 9, 2012).


In order to be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed features.
Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990),
aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992).

Of hearsay:

Hearsay evidence is entitled to little weight. In re Mageli, 470 F.2d 1380,
1384 (CCPA 1972).


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