Appeal No. 2005-2744
Application No. 09/849,979
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260, 1266
n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In addition, our
reviewing court stated, that when making an obviousness rejection based on
combination, “there must be some motivation, suggestion, or teaching of the
desirability of making the specific combination that was made by applicant” in
Lee, 277 F.3d at 1343, 61 USPQ2d at 1433 (quoting In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998)). The examiner has found
that Albrecht provides suggestion to modify systems such as Van Dusen’s to
allow gift certificates which can be used at multiple merchants. We concur.
Albrecht identifies that gift certificates which are good only at the vendor have
disadvantages for the purchaser (donor), merchant and recipient. See generally
column 1 lines 53 through column 2, lines 37. Albrecht teaches, as an alternative
to the store specific gift certificate systems, a system where a purchaser can
purchase value in the form of a credit instrument in a separate account at a
financial institution, for the gift recipient. See column 2, lines 50-63. Thus, we
find that Albrecht provides suggestion to modify the merchant specific gift
certificate of Van Dusen to make use of a credit in an account at a financial
institution. Accordingly, we sustain the examiner’s rejection of claims 60 and 71.
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