Appeal No. 2006-1187
Application No. 10/056,832
claims 1, 4 and 5 with claim 1 as the representative claim. Group B, consists of
claim 6 with claim 6 as the representative claim. Group C consists of claim 7 and
Group D consists of claims 8, 9, 10 and 12. Group E consists of claim 14 and
15.
Group A (rejection under 35 U.S.C. 102).
Appellant states that claim 1 recites the step of “offering to the purchaser
of the product an opportunity to purchase a replica of the product, the offering
step being performed by a merchant of the product.” Appellant argues:
Nothing in the Fernwood article teaches, expressly or inherently, that the
bank offered the home buyer an opportunity to purchase a replica of the
home. If anything, the Fernwood article seems to indicate that the bank
simply asked Fernwood to paint replicas on it’s own accord, and provided
those replicas as surprise gifts to the home owners. [Brief, page 13.]
In response, the examiner states that Turkel does teach offering a replica
to the purchaser as claimed because “the claimed term ‘purchase’ is defined in
the instant specification on page 2 as generally meaning ‘an exchange of value’
and includes the act of bestowing a product.” See Answer, page 9. [Emphasis
omitted.]
We concur with the examiner’s claim interpretation and findings regarding
the teachings of Turkel. Claim 1 includes the limitation of “offering to the
purchaser of the product an opportunity to purchase a replica of the product, the
offering step being performed by a merchant of the product.” The examiner in
the statement of the rejection equates the claimed merchant with the bank in
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