Ex Parte Tarbet

Patent Trial and Appeal Board

Sep 19, 2012

09888031 (P.T.A.B. Sep. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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 09/20/2012
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
09/20/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

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 REQUEST FOR REHEARING

Appeal 2009-015378
Application 09/888,031

2
STATEMENT OF CASE
The Examiner rejected claims 7, 9, 10, and 16-25 in a Final Rejection
mailed Oct. 17, 2008. In the Decision mailed July 11, 2012, we reversed the
rejection of claim 7 under 35 U.S.C. § 112, second paragraph, and affirmed
the rejection of claims 7, 9, 10, and 16-25 as being anticipated by Deaton.
The Appellant filed a REQUEST FOR REHEARING on September 7, 2012,
seeking reconsideration of the portion of our Decision affirming the § 102(b)
anticipation rejection.
We have fully considered our original decision and we DENY the
REQUEST FOR REHEARING as to the relief requested in the rehearing.

ISSUE
The issue pertinent to this request is whether the Appellant has sustained
his burden of showing that we misapprehended the claims and Appellant’s
Specification, and thus erred in sustaining the rejection of the claims. 37
C.F.R. 41.52(a)(1).

ANALYSIS
We found the following in our Decision:
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 7.
The Appellant contends that we misapprehended the claims and as a
result of this misconstruction incorrectly concluded that Deaton anticipates
claims 7, 9, 10, and 16-25. Request 2-5. The Appellant specifically argues
that we misapprehended the limitations “real time generation and provision”
Appeal 2009-015378
Application 09/888,031

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and “remote from a point of sale.” Request 2-5. According to the
Appellant, the proper construction of these terms requires that Deaton
describe both (1) the real time generation of a customer incentive report
which occurs away from the point of sale and (2) the real time provision of
said customer incentive report to a customer when the customer is not at the
point of sale. Request 3.
We disagree with the Appellant. While we agree with the Appellant’s
construction of the limitations “real time generation and provision” and
“remote from a point of sale,” we further found that the terms “generation”
and “provision” are broad enough to encompass an instruction or indication
to create and dispense a coupon or other incentive to a customer. Decision
6. The Appellant does not provide any evidence or rationale that such a
construction is unreasonable or inconsistent with the Specification. As we
pointed out, Deaton describes that a host processor 110 generates an
indication of the type of coupon to be given to the customer and transmits an
instruction to the remote POS Transaction Terminals 120 to print the
coupon. Decision 6-7 (citing Deaton 11:10-25, 67:55-63, Fig. 1, and Ans. 9-
10). The processing of the customer’s transaction in order for generation
and provision is done at the POS terminal or alternatively via direct mail.
Deaton 70:25-28 and Fig. 17b. Since the coupons are generated and
provisioned to the customer at the host processor that is remote from the
POS terminal, while the customer is still at the POS terminal, the generation
and provisioning of coupons is performed in real time. Accordingly, the
Appellant’s argument that since Deaton describes that coupons are mailed to
customers, the coupons cannot be provided to the customer in real time
(Request 3-5 (citing Deaton 63:38-39)) is not persuasive since we did not
Appeal 2009-015378
Application 09/888,031

4
rely on the embodiment that dispenses coupons to customers via direct mail.
As such, Deaton describes the limitations of “real time generation and
provision” and “remote from a point of sale.”
For the above reasons we are not persuaded of reversible error in our
decision. Accordingly, the Appellant’s request for rehearing is denied.

DECISION
To summarize, our decision is as follows:
 We have considered the REQUEST FOR REHEARING.
 We DENY the request that we reverse the Examiner’s rejection of
claims 7, 9, 10, and 16-25 under 35 U.S.C §102(b) as being
anticipated by Deaton.

REQEUST FOR REHEARING DENIED

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