Ex Parte Prus et al

Patent Trial and Appeal Board

Mar 21, 2017

12582412 (P.T.A.B. Mar. 21, 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.
12/582,412 10/20/2009 David R. Prus 031221.134724-001 4530
24335 7590 03/23/2017
WARNER NORCROSS & JUDD LLP
INTELLECTUAL PROPERTY GROUP
900 FIFTH THIRD CENTER
111 LYON STREET, N.W.
GRAND RAPIDS, MI 49503-2487
EXAMINER
SITTNER, MATTHEW T
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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ckleinheksel @ wnj. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. PRUS and MICHAEL R. HOLCOMB
Appeal 2015-0062841
Application 12/5 82,4122
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4—11, 17, 18, and 20—24. Claims 3, 12—16, and 19
are canceled.3 We have jurisdiction under 35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Sept. 16, 2014) and Reply Brief (“Reply Br.,” filed June 5, 2015), and the
Examiner’s Final Office Action (“Final Act.,” mailed June 17, 2014) and
Answer (“Ans.,” mailed Apr. 23, 2015).
2 According to Appellants, the real party in interest is “Prevo’s Family
Markets, Inc., the assignee of record, which is a subsidiary of SpartanNash
Company.” (Appeal Br. 2).
3 We regard the brief reference to claim 13 in the Appeal Brief to not be part
of the appeal because the Appeal Brief states that claims 12—16 are canceled.
Appeal 2015-006284
Application 12/582,412
Introduction
Appellants’ disclosure relates to “validating discount offers and
coupons, and more particularly to validating discount offers that can be
redeemed at multiple locations” (Spec. 11).
Claims 1 and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method of validating a discount offer on a product,
comprising:
providing a dispenser adapted to dispense a product and
adapted to obtain discount information from a coupon, the
dispenser located at a first location;
using the dispenser, obtaining discount information from a
coupon, wherein the discount information includes a unique
discount identifier and a discount amount;
sending the discount information from the dispenser to a
local controller located at the first location, said local controller
adapted to control the dispenser, wherein the local controller
includes a local stand-in database adapted to store identifiers
associated with previously redeemed coupons;
initiating a communication with a central system processor
to validate the coupon, the central system processor including a
central database separate from the local stand-in database;
in response to the communication with the central system
processor being unsuccessful, accessing the local stand-in
database to locate the unique discount identifier and to
determine whether the coupon has been redeemed;
in response to the local stand-in database revealing that the
coupon has not been redeemed, sending a message to the
dispenser to approve the discount offer;
reducing an amount charged to the customer by the
discount amount; and
adding the redeemed unique discount identifier to the local
stand-in database.
(Appeal Br., Claims App.)
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Application 12/582,412
Rejection on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejection:
Claims 1, 2, 4—11, 17, 18, and 20-24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Nicholson (US
2002/0040321 Al, pub. Apr. 4, 2002), Irwin (US 2004/0103023 Al,
pub. May 27, 2004), and Meyer (US 6,915,271 Bl, iss. July 5, 2005).
ANALYSIS
Independent claims 1 and 17
Appellants argue the patentability of independent claims 1 and 17
together. We select independent claim 1 as representative such that claim 17
stands or falls therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by Appellants’ argument that Meyer fails to
disclose “accessing,” as recited in independent claim 1, i.e., “in response to
the communication with the central system processor being unsuccessful,
accessing the local stand-in database to locate the unique discount identifier
and to determine whether the coupon has been redeemed” (Appeal Br. 12).
Appellants assert that the claim requires communication between a local
controller and a central system processor in response to a discount offer
being used (see Appeal Br. 12; Reply Br. 1).
The Examiner relies on Meyer’s disclosure of redundant information
on multiple servers (Meyer, col. 57,11. 55—65, col. 58,11. 53—61), in
combination with Nicholson’s teachings regarding coupon redemption (Final
Act. 4—6; Ans. 5). In particular, as noted by the Examiner, Meyer discloses
that another database server continues to process requests “in the event that
the network connection to one of the database servers is lost.” (Meyer col.
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Application 12/582,412
58,11. 53—61). Appellants argue that Meyer’s disclosure is deficient because
Meyer does not have access to its own local, “stand-in” database (see Appeal
Br. 12). However, the Examiner relies, in combination therewith, on the
disclosure in Irwin (| 5) that it was known to store coupon information on a
local database (Ans. 3^4). Meyer (col. 18,11. 35—55) further discloses that
information may be stored on a single member information computer 109
with a single member database 111, or may be distributed over a network
(quoted in Ans. 4—5). We agree with the Examiner that it would have been
obvious to a person of ordinary skill in the art to combine the database
system of Irwin with Meyer’s teachings of redundant databases connected
over a network in order to obtain the advantages of back-up information (see
Ans. 6). We agree with the Examiner that this meets the “accessing”
limitation whereby a local controller communicates with a stand-in database
“in response to the communication with the central system processor being
unsuccessful,” as recited. (See, e.g., Answer 4—5, citing Meyer col. 18,
11. 35-55.)
We are unpersuaded by Appellants’ argument that the combination of
Nicholson, Irwin, and Meyer is improper. Appellants argue that “Nicholson
can hardly validate a discount offer if the discount offer has not yet been
issued as disclosed in Irwin” because Irwin discloses detecting a barcode
before issuance (Appeal Br. 14 (citing Irwin 126)). Appellants also argue
that the servers in Irwin would have functioned differently when combined
(see Ans. 8). We disagree. The Examiner is not relying on Irwin for
detecting a barcode. The Examine is relying on a combination of references
as follows: The Examiner is relying on Nicholson for a system of crediting
only coupons that have not yet been used (see 139); on Irwin for the
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Application 12/582,412
teaching that a coupon validation system can use multiple networked
systems/stations (e.g., a local station and a central station communicating
over the internet) (see 141); and on Meyer, as above, for the teaching that
one server may be relied on when another server is not functioning (see
Final Act. 4—6).
To the extent that Appellants are arguing that Irwin’s teachings
regarding system networking cannot be incorporated with the teachings of
Nicholson regarding coupon validation, we disagree. Rather, we determine
that a person of ordinary skill in the art of computer technology at the time
of the claimed invention would have been able here “to fit the teachings of
multiple patents together like pieces of a puzzle.” See KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 416, 417 (2007); In reEtter, 756 F.2d 852, 859 (Fed.
Cir. 1985) (en banc). See also Final Act. 6 (finding that “the combination of
features produces no unforeseen, new, novel, or unexpected results.”)
As to Appellants’ argument that the Examiner fails to state sufficient
reasoning for the combination, we agree with the Examiner that a person of
ordinary skill in the art would have been motivated to combine the teachings
of Irwin and Nicholson regarding coupon processing with the server
redundancy of Meyer in order to provide back-up and maintenance of
computer servers (see Ans. 8).
Therefore, we sustain the Examiner’s rejection under § 103 of
independent claims 1 and 17.
Dependent claims 2, 4, 6—11, 18 and 21—24
Although placed under a different heading, Appellants do not argue
the patentability of claims 2, 4, 6—11, 18, and 21—24 separately from that of
claims 1 and 17, from which they respectively depend. Accordingly, we
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Application 12/582,412
sustain the Examiner’s rejection of claims 2, 4, 6—11, 18, and 21—24, for
similar reasons as for independent claims 1 and 17.
Dependent claims 5 and 20
Appellants argue the patentability of dependent claims 5 and 20
together. We select claim 5 as representative such that claim 20 stands or
falls therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by Appellants’ argument that Nicholson and
Irwin fail to disclose “communicating with the central system processor after
it becomes accessible and adding the redeemed discount identifier to the
central database,” as recited in dependent claim 5 (Appeal Br. 15).
Appellants assert that Nicholson’s controller 13 discloses storing the
discounts in a database when the customer completes a purchase rather than
after the central system processor becomes available (id. at 16). Appellants
further assert that Irwin processes a redemption at the time it is scanned
(id.).
The Examiner relies on Nicholson and Irwin, e.g., as above with
respect to independent claim 1, for the teachings of coupon validation, and
further on Meyer, for the disclosure of updating a central database when it
becomes online. In particular, the Examiner relies on the disclosure in
Meyer (col. 58,11. 53—61) that “[w]hen the machine that went down returns
online, its copy of the database is immediately synchronized with the current
database from the machine whose operation was not interrupted” (see Ans.
9; see also Final Act. 10). We agree with the Examiner that Meyer’s
teaching of synchronizing information when the machine returns online
meets the “after it becomes accessible” limitation. Therefore, we sustain the
Examiner’s rejection under § 103 of dependent claims 5 and 20.
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Application 12/582,412
DECISION
The Examiner’s decision to reject claims 1, 2, 4—11, 17, 18, and 20-
24 under 35 U.S.C. § 103(a) is 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
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