Appeal No. 2004-1420
Application 09/567,274
transmitting the incentives. . . .” The examiner then goes on to state why the claimed subject
matter as a whole would have been obvious, by stating that
[s]ince the e-mail address for the user is stored then it would have
been obvious . . . to have included transmitting incentives to the user’s
electronic e-mail address because such a modification would allow
for distributing incentives that are transparent to the user.
While the examiner specifically applied this reasoning to claims 34-43, it is clear that this
reasoning is applicable to the other claims since those other claims also include the limitation of
transmitting a purchase incentive to an electronic mail address.
Further, while the examiner may not have gone into as much detail as appellants desired
in applying Barnett to the specifics of the claims, the examiner did, in fact, set forth a reasonable
case of obviousness by indicating how each of the claimed elements is alleged to have been
taught by Barnett and why the claimed subject matter would have been obvious thereover.
Accordingly, the burden shifted to appellants to overcome the examiner’s prima facie case by
specifically pointing to some error in the examiner’s reasoning.
Yet, instead of pointing specifically to error in the examiner’s reasoning and showing
how/why Barnett does not teach what is alleged by the examiner, appellants merely cite portions
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