Appeal No. 2004-1484
Application 09/438,396
products with a balance, increment balances and write new
balances to the cards. Thus, this descriptive material will
not distinguish the claimed invention form the prior art in
terms of Patentability, see In re Gulack, 703 F.2d 1381, 217
USPQ 401, 404 (Fed. Cir. 1983); In re Lowry 32 F.3d 1579, 32
USPQ2d 1031 (Fed. Cir. 1994). Therefore, it would have been
obvious to one of ordinary skill at the time of the
invention to have relied upon any type of data content,
including profit margin ranges. Such data content does not
functionally relate to the steps and the subjective
interpretation of the data content does not patentably
distinguish the claimed invention. Further, Dorf teaches
awarding points for single product types [col 9, line 43].
It would have been obvious to one of ordinary skill at the
time of the invention to have awarded product-specific
points in the program of Fernandez as taught by Dorf.
Associating and awarding points according to single products
can be taken to be inherently awarding products to profit
margin ranges, as each product inherently has its own profit
margin or profit margin range, as defined by cost minus
purchase price for example. (examiner answer, page 4)
After a careful evaluation of the teachings and suggestions
to be derived by one of ordinary skill in the art from a
collective evaluation of Fernandez, Dorf and Walker ‘573 as of
the time appellant’s invention was made, it is our opinion that
the evidence adduced by the examiner is not sufficient to
establish a prima facie case of obviousness with regard to the
subject matter of claims 1 through 12 on appeal, but is
sufficient with regard to the portable device defined in
appellant’s claim 13 and the distributed system defined in claims
14 through 18 on appeal.
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