Appeal No. 2004-1267
Application No. 08/873,974
issue on which both appellants and the examiner are in apparent
agreement, viz., that a rejection under 35 U.S.C. § 112 was not
improper. Where there is no controversy, there is no need for
the Board, or any tribunal, to make a decision.
Accordingly, we decline appellants’ invitation to render a
decision on whether claims are proper, within the meaning of
35 U.S.C. § 112.
Appellants further argue that we misapprehended the claim
limitation, “in response to a consumer request...” and the
reasoning in support thereof in the brief filed July 10, 2001.
Part of the problem arises from multiple filings, by
appellants, of various briefs and supplemental briefs, and
attempting to incorporate by reference, into the arguments, all
of these briefs. Thus, rather than including all of appellants’
arguments in a single brief and/or a brief and possibly one reply
brief, the record is rife with arguments scattered throughout
several papers.
In any event, our decision did treat the “in response to a
consumer request...” limitation of the claims, by indicating, at
page 6 of our decision, that any promotion or discount offered in
Sloane is clearly “in response to a consumer request.” The
reason is explained in the paragraph bridging pages 6-7 of the
-3–
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