Appeal 2007-0275
Application 09/313,278
reward points. We note that our reviewing court has found that “[i]nherency
… may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1951
(Fed. Cir. 1999) (internal citations omitted).
Here, we find the Examiner’s reasoning fails because two users with
identical levels of “participation” (or other milestones) may have vastly
different medical information needs, as pointed out by Appellant in the Brief
(see Br. 6, ¶ 2). Indeed, Douglas discloses: “[t]he members of the wellness
group may not need all the features [i.e., information] available to members
of the clinical group” (col. 5, ll. 60-61). Thus, we find the sicker clinical
group would likely present more sophisticated medical information inquiries
than the healthier wellness group. In the alternative, two users with similar
conditions of wellness (or clinical illness) may have different numbers of
reward points (based upon differences in user participation), even though
these users would have similar medical information needs (i.e., possessing
the same level of “user sophistication”). Thus, we find that “user
sophistication” (as claimed) cannot be fairly read on the reward points of
Douglas because of the imperfect correlation between user medical
information needs (i.e., “user sophistication”) and the reward points.
It appears the Examiner is reading the recited “user inquiry” on the
portion of Douglas that discloses the “reward ‘apples’ icon 92 allows a user
to view information [i.e., request information] on the rewards point system
and how it works” (col. 14, ll. 38-41, Fig. 9). Nevertheless, in light of the
above discussion, we find nothing in Douglas that fairly discloses where
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