Appeal No. 2002-1846
Application 09/146,199
specific kinds of system test data specified in either claim 20 or claim 36. Yet, following the
filing of the appellants’ supplemental brief, the examiner in the examiner’s answer on page 4
explicitly regards the application of a discount in Mindrum as a redemption and then relies on
Mindrum’s teaching of the logging all coupon printing and redemption transactions as logging a
price change terminal event, one of the system test data specified in claim 20 and claim 36. It
is not clear just what the examiner has found to be the differences between the appellant’s claims
and Mindrum.
The problem with the examiner’s rejection is that the obviousness determination under
35 U.S.C. § 103 is based on an underlying factual finding of differences between the claimed
invention and the prior art, not on similarities. A specific finding of differences between the
claimed invention and the prior art is required. Graham v. John Deere Co., 383 U.S. 1, 7-18,
148 USPQ 459, 467 (1966). The finding provides the proper focus and framework within which
to determine whether the invention as a whole would have been obvious over the prior art. It is
not clear what the examiner has found as the differences between the subject matter of each
rejected claim and Mindrum. Without a clear articulation of such differences, the obviousness
analysis has no proper foundation and cannot be meaningfully reviewed. We have gone back into
the prosecution history and found in Paper No. 17, on page 7, this statement from the examiner:
“Mindrum et al do not explicitly teach of a method that logs event data such as loop errors,
terminal reload and items not-on-sale.” Does that mean the examiner finds that Mindrum
“implicitly” teaches these features? That is not clear, and no explanation for any “implied”
teaching has been provided. Such muddled analysis should be avoided in the future. In any
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