Appeal 2006-2109
Application 10/680,678
1 including a beverage - which Helbling does not teach or suggest - and asserted that
2 Helbling discloses selling a "reduced-portion meal" that does not include a
3 beverage - which also finds no support in the disclosure of Helbling. The Appellant
4 concludes that this construction of Helbling can be arrived at only through the
5 teaching of claims 1 and 11, using impermissible hindsight. (Br. 10).
6 The Appellant further contends that there is no motivation to price the reduced-
7 portion meal at the price of a corresponding full-portion meal and that Helbling
8 explicitly teaches against it. The Appellant argues that even in 1996, the filing
9 date of the Helbling application, the price of a beverage in a fast food restaurant far
10 exceeded twenty-five cents. By suggesting a minimum donation level of a quarter,
11 the Appellant contends that Helbling teaches that the minimum donation must be a
12 token amount, as compared to the price of the reward, to encourage participation.
13 The Appellant concludes that making the minimum donation amount equal to the
14 price of the beverage, as the Examiner suggested, would discourage rather than
15 encourage participation, whereas the purpose of Helbling is to maximize
16 participation. As well known in retailing, if a customer does not perceive he is
17 getting something "free," or at the very least at a substantial discount, he will not
18 participate in a promotion. The Appellant cites In re Gordon, 733 F.2d 900 (Fed.
19 Cir. 1984) for the proposition that if a proposed modification would render the
20 prior art invention being modified unsatisfactory for its intended purpose, then
21 there is no suggestion or motivation to make the proposed modification. (Brief 11-
22 12).
23 The Appellant further contends that Helbling itself teaches away from retaining
24 a processing fee from the donation. The Appellant argues that, at its core, Helbling
25 relies on the generosity of the restaurant in providing a free beverage to customers
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013