Ex Parte Kingsborough

Patent Trial and Appeal Board

Jan 25, 2017

13518367 (P.T.A.B. Jan. 25, 2017)

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.
13/518,367 06/21/2012 Donald Kingsborough 4556.11702 2019
15608 7590 01/25/2017
Blackhawk Network, Inc.
C/O Wick Phillips Gould & Martin, LLP
3131 McKinney Avenue, Suite 100
Dallas, TX 75204
EXAMINER
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
01/25/2017 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 DONALD KINGSBOROUGH
Appeal 2015-0015481
Application 13/518,3672
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—26 and 28—37. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
May 12, 2014) and Reply Br. (“Reply Br.,” filed October 28, 2014), and the
Examiner’s Answer (“Ans.,” mailed August 28, 2014) and Final Office
Action (“Final Act.,” mailed October 8, 2013).
2 Appellant identifies Blackhawk Network, Inc. as the real party in interest.
App. Br. 3.
Appeal 2015-001548
Application 13/518,367
CLAIMED INVENTION
Appellant’s claimed invention “relates to packaging and processing of
bundled greeting and stored-value cards” (Spec. 11).
Claims 1, 2, 12—15, 24, and 34 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A greeting card stored-value card combination
product comprising:
a greeting card;
a stored-value card;
a means for affixing the stored-value card to the greeting
card;
a card identifier uniquely identifying the stored-value
card, wherein the card identifier provides a means for activating
the stored-value card; and
an identifier encoded on at least one of the greeting card
and the stored-value card;
wherein the identifier identifies the greeting card
stored-value card combination product, the greeting card of the
combination product, and the stored-value card of the
combination product, thereby differentiating the greeting card
stored-value card combination product from other combinations
of greeting cards and stored-value cards.
REJECTIONS
Claims 1—26 and 28—37 are rejected under 35U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1—5, 7—15, 22—26, and 34—37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Street (US 7,024,807 B2, iss. Apr. 11, 2006)
and Dwyre (US 2007/0278296 Al, pub. Dec. 6, 2007).
Claims 16—21 and 28—33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Street, Dwyre, and Olliphant (US 2009/0327128 Al,
pub. Dec. 31, 2009).
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Application 13/518,367
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Street, Dwyre, and Official Notice.
ANALYSIS
Non-Statutory Subject Matter
Independent Claims 1 and 2 and Dependent Claims 3—11
In rejecting claims 1 and 2 under 35 U.S.C. § 101, the Examiner finds
that the claims are directed to “a method of identifying stored value card and
identifying by an identifier encoded on at least one of the greeting card and
the stored value card and differentiating with other greeting card and stored
value card combination product” (claim 1) and to “identifying greeting card
and stored value card combination product and activating the stored value
card” (claim 2) (Ans. 3). The Examiner concludes that the claimed subject
matter “amounts to nothing more than a method of identifying and activating
cards,” which is considered to be an abstract idea (id. at 3—4). We disagree.
As an initial matter, we note that neither claim 1 nor claim 2 is
directed to a method. Instead, both claims 1 and 2 are directed to a greeting
card stored-value card combination product, and recite that the product
comprises, inter alia, a greeting card and a stored-value card, i.e., physical
objects, and a means for affixing the stored-value card to the greeting card,
i.e., a mechanism for affixing one physical object to another physical object.
The Examiner does not explain how, and we fail to see how a product
comprising two physical, tangible objects and a mechanism for affixing one
of the objects to the other constitutes an abstract idea.
Independent claims 1 and 2 are admittedly broad, and, if issued, could
have broad exclusionary effect. But the mere fact that the claims are broad
does not mean that the claims are directed to an abstract idea.
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Application 13/518,367
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 2 under 35 U.S.C. § 101. For the same reasons,
we also do not sustain the Examiner’s rejection of dependent claims 3—11.
Independent Claims 12—15, 24, and 34 and Dependent Claims 16—23, 25,
26, 28—33, and 35—37
Appellant takes the position that each of claims 12—26 and 28—37
depend from one of claims 1 and 2, and Appellant maintains that because
claims 1 and 2 are patent-eligible, claims 12—26 and 28—37 are likewise
patent eligible (Reply Br. 11).
As an initial matter, we do not agree that claims 12—15, 24, and 34 are
dependent claims. Each of these claims admittedly refers to one of claims 1
and 2. For example, claim 12 recites “[a] computer implemented method for
processing a sale of the greeting card stored-value card combination product
of claim 1.” Claims 13—15, 24, and 34 make similar references to claim 1 or
claim 2. Yet claims that refer to other claims are not necessarily dependent
claims.
35 U.S.C. § 112, fourth paragraph, provides that a claim in dependent
form shall (1) contain a reference to a claim previously set forth and
(2) specify a further limitation of the subject matter claimed. A claim in
dependent form also “shall be construed to incorporate by reference all the
limitations of the claim to which it refers.” Id. Notably, the statute does not
say that a dependent claim is one that contains a reference to another claim,
merely that a dependent claim shall have a reference to another claim.
Here, claim 12 refers to claim 1 as “shorthand” for the product to use
in the claimed method. In other words, claim 12 is drafted in a “shorthand”
format to avoid rewriting the particulars of the greeting card stored-value
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Application 13/518,367
card combination product of claim 1, not to further define the product of
claim 1 — an indication that claim 12 is independent, not dependent. The
remaining claims 13—15, 24, and 34 similarly refer to claim 1 or claim 2 as
shorthand for the greeting card stored-value card combination product, and
do not further limit the product claims — an indication again that these
claims are properly considered to be independent.
The claims involved here are similar to those the Board considered in
Ex parte Porter, 25 USPQ2d 1144 (BPAI 1992). There, claim 7 was
directed to “[a] nozzle suitable for use in discharging a controlled stream of
fluid into a reactor tube of a catalyst unloading apparatus”; claim 6 recited
“[a] method for unloading non-packed, non-bridging and packed, bridging
flowable particle catalyst and bead material from the opened end of a reactor
tube which comprises utilizing the nozzle of claim 7.” Id. at 1145. The
Board noted that the manner in which claim 6 is drafted “has been an
acceptable format for years” and suggested that such a claim “could be
construed as an independent claim, drafted in a short-hand format.” Id.
at 1147 (citing In re Kuehl, 475 F.2d 658 (CCPA 1973).
It also is significant here that the Manual of Patent Examining
Procedure (“MPEP”) instructs Examiners that “[a] claim which makes
reference to a preceding claim to define a limitation is an acceptable claim
construction which should not necessarily be rejected as improper or
confusing” under 35 U.S.C. § 112, second paragraph. See MPEP
§ 2173.05(f) (citing Ex parte Porter). It would make little sense to include
this section of the MPEP if every claim referencing another claim was
considered to be a dependent claim. Perhaps most tellingly, the MPEP
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Application 13/518,367
acknowledges, “there is no set statutory form for claims.” MPEP
§ 608.01(m).
Claims 12—15, 24, and 34, in our view, are properly considered to be
independent claims, with claims 16—23, 25, 26, 28—33, and 35—37,
depending, directly or indirectly, from one of claims 12—15, 24, and 34.
Appellant does not present any arguments in support of the patent-
eligibility of claims 12—26 and 28—37 beyond alleging that the claims are
patent-eligible based on their dependence from claims 1 and 2. Therefore, in
absence of further arguments specifically addressing claims 12—26 and 28—
37, we sustain the Examiner’s rejection of these claims under 35 U.S.C.
§101.
Obviousness
Independent Claims 1 and 2 and Dependent Claims 3—5 and 7—11
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 2 under 35 U.S.C. § 103(a) because the
combination of Street and Dwyre fails to disclose or suggest a single
identifier that “identifies the greeting card stored-value card combination
product, the greeting card of the combination product, and the stored-value
card of the combination product, thereby differentiating the greeting card
stored-value card combination product from other combinations of greeting
cards and stored-value cards,” as recited in claim 1, and similarly recited in
claim 2 (App. Br. 6—12). The Examiner cites Street as disclosing a single
identifier that “identifies the greeting card stored-value card combination
product, the greeting card of the combination product, and the stored-value
card of the combination product” (Final Act. 3 (citing Street, Figures 1—4;
col. 3,11. 56—60; col. 4,11. 30-48); see also Ans. 4—5 (additionally citing
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Application 13/518,367
Street, col. 4,11. 22—29)). However, we agree with Appellant that although
Street discloses various identifiers, including preprinted indicia 3 8 on the
front or back panel of the greeting card, including text, photographs,
artwork, or imagery suitable for the occasion (see Street, col. 3,11. 56—60),
and other indicia printed on the surface of the gift card (i.e., indicia 50
identifying the account holder who carries the credit from which the
recipient may obtain goods or services, a PIN number 52 for accessing an
account corresponding to the gift card, and a coded portion 46 for activating
the account (see id. at col. 4,11. 22-48)), none of these indicia is a single
identifier, as called for in claims 1 and 2, that identifies all of “the greeting
card stored-value card combination product, the greeting card of the
combination product, and the stored-value card of the combination product.”
The Examiner ostensibly takes the position that the combination of
Street’s disclosed indicia constitutes a single identifier that identifies the
combination card, greeting card, and stored-value card, and that Street
inherently discloses a single identifier, as called for in the claims (Final
Act. 2-4; see also Ans. 4—5). Yet more than speculation is required to
establish inherency. “Inherency. . . may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed.Cir. 1991) (quoting In re Oelrich,
666 F.2d 578, 581 (CCPA 1981)). Instead, the Examiner must provide
evidence and/or technical reasoning that make “clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
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Id. at 1268. The Examiner has presented no such evidence and/or technical
reasoning here.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 2 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 3—5 and 7—
11. Cf.In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent
claims are nonobvious if the independent claims from which they depend are
nonob vious”).
Dependent Claim 6
Claim 6 ultimately depends from claim 1. The rejection of claim 6
based on Official Notice, in combination with Street and Dwyre, does not
cure the deficiency in the Examiner’s rejection of claim 1. Therefore, we do
not sustain the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) for
the same reasons set forth above with respect to claim 1.
Independent Claims 12—15, 24, and 34 and Dependent Claims 16—23, 25,
26, 28—33, and 35—37
Appellant does not present any arguments in support of the
patentability of claims 12—26 and 28—37 beyond alleging that the claims are
allowable based on their dependence from claims 1 and 2 (App. Br. 17—18).
We conclude, for the reasons set forth above, claims 12—26 and 28—37 do
not depend from claims 1 and 2. Therefore, in absence of further arguments
specifically addressing claims 12—26 and 28—37, we sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1—11 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 12—26 and 28—37 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejections of claims 1—11 under 35 U.S.C. § 103(a)
are reversed.
The Examiner’s rejections of claims 12—26 and 28—37 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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