Appeal No. 2005-2439
Application No. 09/754,378
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the briefs have not been considered and are deemed
to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
With respect to independent claims 76 and 112, the
examiner’s rejection essentially finds that Von Kohorn teaches
every feature of these claims except that Von Kohorn does not
explicitly disclose that the communication channel is the
Internet. The examiner cites Saigh as teaching use of the
Internet to transmit coupons to a user. The examiner finds that
it would have been obvious to the artisan to use the Internet as
taught by Saigh to transmit coupons in Von Kohorn [answer, pages
4-7].
Appellants make the following arguments: 1) that the applied
prior art is non-analogous art; 2) that there is no motivation to
modify the teachings of Von Kohorn with the teachings of Saigh;
and 3) the collective teachings of Von Kohorn and Saigh fail to
teach all of the claim elements. With respect to the first
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007