In Re Scroggie , 442 F. App'x 547 ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 09/401, 939)
IN RE MICHAEL C. SCROGGIE, MICHAEL E.
KACABA, DAVID A. ROCHON, AND DAVID M.
DIAMOND
(Real Party in Interest Catalina Marketing Corporation)
__________________________
2011-1016
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
_________________________
Decided: September 16, 2011
_________________________
RICHARD A. NEIFELD, Neifeld IP Law, PC, of Alexan-
dria, Virginia, for appellants.
RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, for appellee. With him on the brief were
JOSEPH G. PICCOLO and WILLIAM LAMARCA, Associate
Solicitors.
__________________________
IN RE SCROGGIE 2
Before RADER, Chief Judge, PROST and O’MALLEY, Circuit
Judges.
Per curiam.
Michael C. Scroggie, Michael E. Kacaba, David A. Ro-
chon, and David M. Diamond (“Scroggie” or “Appellants”)
appeal the decision of the Board of Patent Appeals and
Interferences (“Board”) from the U.S. Patent and Trade-
mark Office (“PTO”) affirming rejections under 35 U.S.C.
§§ 102 & 103 of U.S. Application No. 09/401,939 (“’939
application”). See In re Scroggie, No. 2008-004478
(B.P.A.I. August 20, 2010). Because the Board correctly
determined that the claims at issue would have been
anticipated and obvious to one of skill in the art, this
court affirms.
I.
The ’939 application claims a computer implemented
method, system, and program product for distributing
purchasing incentives to consumers from a main com-
puter to a “personal computer” over a computer network.
According to the specification, the invention’s cooperative
network between retailers and manufacturers was a
departure from existing commercially available incentive
methods and systems. The ’939 application detailed that
a consumer will log-in to the incentive system and elect to
review offers (e.g., coupons or rebates) from manufactur-
ers; the consumer may also select offers that are accumu-
lated and maintained as a session record.
In the Final Office Action, the PTO rejected claims 32,
33, 35-46, 48-59, 61-71, and 75 under 35 U.S.C. § 102(b)
as anticipated by U.S. Patent No. 4,882,675 (“’675 pat-
ent”); rejected claims 34, 47, and 60 under 35 U.S.C. §
103(a) as obvious in view of the ’675 patent; and rejected
claims 72-74 and 76 under 35 U.S.C. § 103(a) as obvious
3 IN RE SCROGGIE
in view of the combination of the ’675 patent and U.S.
Patent No. 6,321,208 (“’208 patent”).
Claim 32 is representative for issues on appeal and
reads as follows.
A computer implemented
method for distributing purchasing in-
centives to consumers, comprising:
transmitting promotion data
identifying a plurality of product dis-
counts from a main computer to a per-
sonal computer over a computer
network;
displaying said plurality of
product discounts at said personal
computer based on said promotion
data;
transmitting selection data des-
ignating at least one product discount
selected from said plurality of product
discounts from said personal computer
to said main computer over said com-
puter network;
generating token data depend-
ing on said selection data;
transmitting said token data
from said main computer to said per-
sonal computer over said computer
network;
identifying said token data in a
retail store in association with items
being purchased at said retail store;
determining discount items be-
ing purchased corresponding to said at
least one product discount from said
identified token data; and
IN RE SCROGGIE 4
generating a purchase incentive
based on said discount items.
J.A. 1291 (emphasis added). The Board’s rejections
turned primarily on its interpretation of the emphasized
phrase “personal computer.” Scroogie’s appeal to this
Court also turns on the proper construction of that term.
The Board found that “[t]he ordinary and customary
meaning of ‘personal computer’ is a computer built around
a microprocessor for use by an individual.” J.A. 26 (citing
American Heritage Dictionary of the English Language
(4th ed. 2000)). The Board noted that the specification of
the ’939 application did “not define a personal computer”
and stated that “absent further definition in the Specifica-
tion, the [interpretation was] to be guided by how one of
ordinary skill would have understood the term.” J.A. 29.
Based on this definition, the Board found that the com-
puter in the ’675 patent fulfilled the ordinary and cus-
tomary meaning of “personal computer” and determined
that “[n]othing in [claim 32] further specifie[d] the proto-
cols used for information transmitted to and from the
personal computer, so arguments regarding email and
internet connections are simply not commensurate with
the scope of the claim.” J.A. 29. The Board thus agreed
with the examiner’s determination that the computer of
the ’675 patent was a “personal computer.” The Board
acknowledged that the ’675 patent “describe[d] a commu-
nication link, [but did] not describe the topology or the
protocols employed in the link.” J.A. 30. The Board found
that the ’208 patent was “directed to distributing and
generating, at a remote site, product redemption coupons”
and determined that it “describe[d] how to implement [the
’675 patent’s] coupon computer at a different location.”
J.A. 31. The Board affirmed-in-part the examiner’s
findings.
5 IN RE SCROGGIE
In its second decision denying rehearing, the Board
noted that Appellants did not “cite[ ] a section of the
Specification that actually define[d] the phrase ‘personal
computer.’ The Appellants do not contend otherwise.”
J.A. 17. The Board located the specific term “personal
computer” only twice in the specification, column 1, line
18 and column 18, line 23, and found that these two
instances were included within the cited dictionary defini-
tion. Id. The Board acknowledged that the cited defini-
tion included the phrase “as in an office or at home,” but
determined that it was “not part of the definition, but
merely lists exemplary contexts in which personal com-
puters are found.” J.A. 18. Accordingly, the Board denied
Appellants’ request for rehearing. In its third decision,
the Board granted the Renewed Petition Under 37 C.F.R.
41.3/1.183 “to the extent that a copy of the relevant dic-
tionary definition [was] enclosed [but] [a]ll other issues
raised by the Renewed Petition [were deemed] moot.”
J.A. 11.
Scroggie appeals the claim rejections under 35 U.S.C.
§§ 102 & 103 based upon the ’675 patent and the ’208
patent. These anticipation and obviousness determina-
tions hinge on the Board’s interpretation of “personal
computer.”
II.
This court reviews factual findings of the Board for
substantial evidence. See In re Gartside, 203 F.3d 1305,
1312-16 (Fed. Cir. 2000). Claims appealed from the Board
receive the broadest reasonable meaning in light of the
specification. See In re Bond, 910 F.2d 831, 833 (Fed. Cir.
1990). In addition, the applicant may act as a lexicogra-
pher by setting out a definition in some manner within
the patent disclosure. See Intellicall, Inc. v. Phonomet-
rics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992). A
IN RE SCROGGIE 6
specification or file history must clearly identify an appli-
cant’s unique definition. See Vitronics Corp. v. Concep-
tronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “This
Court thus reviews the PTO’s interpretation of disputed
claim language to determine whether it is ‘reasonable.’”
In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (quoting In re Morris, 127 F.3d 1048, 1055 (Fed.
Cir. 1997)). “The presence or absence of a motivation to
combine references in an obviousness determination is a
pure question of fact.” Gartside, 203 F.3d at 1316. This
court reviews the Board’s legal conclusions de novo. In re
Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000).
III.
The first question before this court is whether the
Board’s interpretation of “personal computer” is reason-
able. The representative claim recites only the term
“personal computer.” Nowhere in the specification does
Scroggie act as a lexicographer and define that term.
Specifically, the ’939 application has no definition or
explanation of “personal computer.” Scroggie has not
ventured to add such a limitation or definition by
amendment.
To act as a lexicographer, an applicant must define
claim terms with “reasonable clarity, deliberateness, and
precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). This court has previously determined that it is
improper to “attempt to redefine the claimed invention by
impermissibly incorporating language appearing in the
specification into the claims,” but it is proper for the
specification of an application to be used “to interpret
what the [Appellants] meant by a word or phrase in the
claim.” Id.While the ’939 application discloses an embodiment
that envisages use of the Internet and e-mail, that disclo-
7 IN RE SCROGGIE
sure does not incorporate those limitations into the repre-
sentative claim. Thus, even if an embodiment of the
invention discusses utilizing a “personal computer” in
connection with the Internet, the embodiment does not
require the “personal computer” by definition to have an
Internet connection. “Absent an express definition in
their specification, the fact that appellants can point to
definitions or usages that conform to their interpretation
does not make the PTO's definition unreasonable when
the PTO can point to other sources that support its inter-
pretation.” Morris, 127 F.3d at 1056. In this case, Scrog-
gie cites to claims and parts of the specification to support
the premise that the claim term “personal computer”
requires access to the Internet and the ability to receive
emails. Review of the representative claim in light of
subsequent claims, such as claim 44 which adds the
limitation that “said computer network comprises one of
an intranet and the Internet,” provides evidence that the
representative claim is broader than the definition prof-
fered by Scroggie because a contrary interpretation by the
Board or this court would render some claims duplicative.
See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed.
Cir. 2005) (en banc) (“Differences among claims can also
be a useful guide in understanding the meaning of par-
ticular claim terms. For example, the presence of a
dependent claim that adds a particular limitation gives
rise to a presumption that the limitation in question is
not present in the independent claim.”) (internal citations
omitted); see also Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1054-55 (Fed. Cir. 1988).
This court permits the PTO to use dictionary defini-
tions in tandem with the specification and prosecution
history to enlighten the broadest reasonable interpreta-
tion of a claim term. This court has previously held that
“dictionary definitions are [ ] pertinent.” In re Trans Tex.
IN RE SCROGGIE 8
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007)
(citing Philips, 415 F.3d at 1318). The Board omitted the
phrase “as in an office or at home or school” as only exem-
plary and not part of the definition. This court discerns
no error in this omission. As the Board stated, the omit-
ted portion was not part of the definition because the “as
in” is not limiting. Thus, the record supports the reason-
ableness of Board’s interpretation.
IV.
In weighing the anticipation rejections, this court ex-
amines claims 32, 33, 35-46, 48-59, 61-71, and 75 and the
’675 patent in view of the Board’s claim interpretation of
“personal computer.” A claim is anticipated only if each
and every element appears, either expressly or inherently,
in a single prior art reference. Verdegaal Bros. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Antici-
pation depends on the claim interpretation of “personal
computer” because Appellants do not dispute that all
other limitations appear in the ‘675 patent. The Board’s
definition of “personal computer” includes two relevant
parts: (i) a microprocessor that (ii) is usable by an indi-
vidual.
The ’675 patent claims a paperless system (particu-
larly electronic) for distributing, redeeming, and clearing
merchandise coupons. ’675 patent col.1 ll.6-11. The ’675
patent discloses local stations, which may consist, in part,
of a local coupon distribution and redemption (CDR) unit
that presents coupons to customers via its electronic
display. ’675 patent col.5 ll.1-7. The CDR unit records
the coupons selected by the customers and provides this
information to checkout systems of the supermarket. ’675
patent col.5 ll.10-15. The specification of the ’675 patent
describes that customers use the CDR unit in a variety of
ways, including personally entering the information for
9 IN RE SCROGGIE
their completed applications to use the CDR unit. ’675
patent col.7 ll.18-29. The CDR unit may be comprised of a
microprocessor that controls the performance of the
various functions of the CDR unit. ’675 patent col.11
l.64–col.12 l.15; ’675 patent col.15 l.67–col.16 l.11. The
CDR unit may also use a video monitor to present cus-
tomers with instructions, including directions on use of
the CDR unit. ’675 patent col.12 ll.49-53. Additionally, a
touch screen sensor may enable customers to select cou-
pons and control information on the screens. ’675 patent
col.13 ll.28-38.
The ’675 patent shows a microprocessor, as illustrated
by Figure 5 and described in the specification at lines 4
through 7 of column 12. Customers use the ’675 invention
and thus this reference contains the “usable by an indi-
vidual” element of the Board’s definition. As the Board
found, even assuming the CDR unit itself is not the
“personal computer,” the microprocessor within the CDR
unit controlled by individuals satisfies the Board’s defini-
tion of “personal computer.” Thus, the record supports
the Board’s factual findings. This court discerns no error
in the Board’s rejection of claims 32, 33, 35-46, 48-59, 61-
71, and 75 as anticipated by the ’675 patent.
This court examines claims 34, 47, and 60 under the
requirements for obviousness in view of the ’675 patent.
Obviousness requires evaluation of the “differences be-
tween the subject matter sought to be patented and the
prior art” with an eye on “the subject matter as a whole . .
. at the time the invention was made” from the perspec-
tive of “a person having ordinary skill in the art.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting
35 U.S.C § 103(a)). This inquiry focuses on three basic
factual inquiries: “the scope and content of the prior art. .
. ; differences between the prior art and the claims at
issue. . . ; and the level of ordinary skill in the pertinent
IN RE SCROGGIE 10
art. . . . .” Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17 (1966).
The Board determined that “Appellants invented
ways of delivering customer incentives and other shop-
ping aids to customers with a computer network.” J.A.
22. The Board also determined that the ’675 patent was
“directed to distribution, redemption and clearing of
coupons and the like, and in particular how coupons . . .
can be distributed, redeemed and cleared electronically”
and “describe[d] a communications link.” J.A. 26-27. As
such, the ’939 application and the ’675 patent have over-
lapping scope and content. The Board reviewed the ’939
application and the ’675 patent and did not note differ-
ences between the two that would transcend the basic
understanding and knowledge of a person of ordinary
skill. On appeal, Appellants have not pointed out in the
record any alleged differences to overcome the obvious-
ness determination other than the contention that the
term “personal computer” requires email and internet
access. As discussed above, the Board’s reasonable claim
construction places that argument, even if it would pre-
sent some evidence of nonobviousness, beyond reach.
The record supports the Board’s factual findings that
underlie its prima facie case of obviousness. Therefore,
the Board did not err in rejecting claims 34, 47, and 60 as
obvious in view of the ’675 patent.
This court also must examine the Board’s rejection of
claims 72-74 and 76 as obvious in view of the combination
of the ’675 patent and the ’208 patent. The Board found
that the ’675 patent describes (i) “distribution, redemption
and clearing of coupons” that may be selected by a cus-
tomer at a computer and displayed at checkout and (ii) “a
communications link, but does not describe the topology
or the protocols employed in the link.” J.A. 26-27. To fill
11 IN RE SCROGGIE
this gap, the Board relied on the ’208 patent which “is
directed to distributing and generating, at a remote-site
product redemption coupons.” J.A. 27.
As noted, the ’208 patent claims methods and systems
for electronic distribution of product redemption coupons
to personal computers via a data communications inter-
face within the homes of users. ’208 patent Abstract; col.8
ll.52-58. The electronic coupon distribution system of the
’208 patent comprises a centrally located repository of
electronically stored coupon data. ’208 patent col.6 ll.29-
34. Further, the public may access this repository via a
variety of transmission means, such as the Internet or, as
illustrated by Figure 8, digital satellite communication
links. ’208 patent col.6 ll.39-47; col.13 ll.36-45.
While the ’675 patent does not provide the topology or
protocols for its “communications link” limitation, the ’208
patent does. The ’208 prior art uses the Internet, among
other options, to link the repository to the user’s remote
location. Correctly applying the next step of finding a
reason to combine the ’675 patent and the ’208 patent, the
Board stated that “[o]ffering multiple venues for product
promotion is and has been a fundamental marketing ploy,
known to those of ordinary skill in the product promo-
tional arts.” J.A. 31 (citing KSR, 550 U.S. at 421). The
’675 patent and the ’208 patent as well as the ’939 appli-
cation discuss distribution of coupons via newspapers,
direct-mail, and free standing dispensers in a retail store.
’939 application p.1 ll.8-14; p.6 ll.3-8; ’675 patent col.1
l.26–col.2 l.51; ’208 patent col.1 l.21–col.2 l.41. Further,
the ’675 patent and the ’208 patent as well as the ’939
application discuss distributing coupons electronically, at
a remote-site, or with a computer network, respectively.
Thus, the record contains substantial evidence to support
the Board’s factual finding that a person of ordinary skill
would have the knowledge and motivation, as a relatively
IN RE SCROGGIE 12
routine matter, to combine the teachings of the ’675
patent and the ’208 patent.
Claims 72 and 73 place the “personal computer” out-
side of the retail store or at the user’s home. The ’208
patent distributes product redemption coupons “to remote
personal computers located at users’ homes,” “a plurality
of remote user computers,” or “any remote personal com-
puter.” ’208 patent Abstract; col.4 ll.46-47; col.6 l.66–col.7
l.5. Once again, these disclosures substantially overlap.
Therefore, the record supplies substantial evidence to
support the Board’s factual findings and conclusions
concerning claims 72 and 73.
Claims 74 and 76 recite that the “personal computer”
logs on to a website, with claim 74 adding that web con-
nection occurs before transmission of promotional data.
The ’675 patent discloses transmissions of information
between a plurality of local stations, which include a CDR
unit and an operations center. ’675 patent col.4 ll.34-60.
The ’208 patent discloses the central repository as “an
online service provider or web site on the Internet” that
allows the user to request coupon data from a centrally
located repository which may then transmit coupon data
to the remote user computer. ’208 patent Abstract; col.4
ll.52-60. The preferred embodiment is an online service
provider. ’208 patent col.6 ll.29-39. The ’208 patent,
directed to an “online method,” discloses the Internet as
the means of communication, meaning that the user must
log on to a website before data transmission. ’208 patent
Abstract; col.6 l.29–col.7 l.5. The communication between
components disclosed in the ’675 patent combined with
the online method disclosed in the ’208 patent, at the very
least, suggest logging a “personal computer,” as defined,
on to a website before data transmission. Once again, the
record amply supports the Board’s factual findings and
conclusions concerning claims 74 and 76.
13 IN RE SCROGGIE
In sum, the Board did not err in concluding that
claims 72-74 and 76 were obvious in view of the combina-
tion of the ’675 patent and the ’208 patent. Overall, this
court affirms the Board’s determination that claims 32-40,
43-53, 56, 58-66, 69, and 71-76 are not patentable.
AFFIRMED.