Appeal No. 2002-1469 Page 12
Application No. 09/317,110
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, claim 13 specifies in pertinent part the following limitations: "said at least
one purchasing incentive comprises one of a token and a discount coupon. . . ."
(Emphasis added.) Giving the representative claim its broadest, reasonable
construction, the limitations require that a raincheck be for a discount coupon or for a
token. The limitations do not require that the raincheck be for both a discount coupon
and a token.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. The question of obviousness is
"based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)). "'A
prima facie case of obviousness is established when the teachings from the prior art
itself would . . . have suggested the claimed subject matter to a person of ordinary skill
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