Appeal No. 2001-1862
Application No. 09/102,044
three broad teaching of the Your Choice MasterCard prepaid card would require us to
resort to speculation. Deficiencies in the factual basis cannot be supplied by resorting to
speculation or unsupported generalizations. In re Freed, 425 F.2d 785, 787, 165
USPQ 570, 571 (CCPA 1970); In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967). The examiner’s individual modifications to the teachings of Your
Choice leaves us with uncertainty as to the combination of all of the modifications.
Therefore, we cannot sustain the rejection of independent claim 53 and its dependent
claims 54-58, 60 and 62. Similarly, we will not sustain the rejection of claims 72-75, 77,
79-82, 84, 86, 98-100, 103, and 104 which have been similarly rejected.
GROUP TWO
With respect to independent claim 612, Group Two is directed to a gift card
sponsor promoted gift card with a rebate. Appellants argue that the Office has failed to
provide a prima facie case of obviousness and that there is no evidence to establish
that one of ordinary skill in the art would modify Your Choice according to all of the
Official Notices in the Office action. (See brief at page 14.) We agree with appellants
as discussed above. We find that the examiner’s additional reliance upon More
Retailer’s does not remedy the noted deficiency in the Your Choice combination.
2 We note that claim 62 depends from claim 60 which depends on dependent claim 54 and
independent claim 53, but which has the same limitation as claim 62.
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