KASHIWA, Circuit Judge.
This is an appeal from the decision of the Patent and Trademark Office Board of Appeals (the "Board") sustaining the examiner's rejection of claims 1-4 and 6 in application Serial No. 684,408, filed May 7, 1976, entitled "Coded Merchandising Coupon." This application is a division of appellant's application, filed December 13, 1974, which issued as U.S. Patent No. 3,959,624 on May 25, 1976. The claims were primarily rejected as obvious under 35 U.S.C. § 103
I
Appellant's invention relates to a method and system for redeeming discount coupons automatically at a retail store's checkout counter. The coupons are used to reduce the purchasing price of consumer items commonly found in retail stores such as supermarkets. The system disclosed employs an existing optical scanner and computer system, the IBM Supermarket System. The discount coupon disclosed is impressed with a Universal Product Code (the "UPC") symbol and a recognition code symbol.
The UPC symbol is a series of light and dark parallel bars which represent 10 digits. The bars are grouped into two groups, generally referred to as "5-by-5," with each group representing five digits. One group of five identifies the manufacturer of consumer items; and the other group identifies a particular consumer item. The "5-by-5" bar code symbol is best illustrated as follows:
The recognition code symbol, also in the UPC bar code format, identifies the item the symbol is impressed on as the discount coupon. In addition, the symbol identifies the amount of the discount.
Appellant's invention is best described by his independent claims:
II
The Uniform Product Code Council, Inc.
Participating in the UPC symbol selection process, RCA in 1972 submitted a brochure which showed its proposed UPC symbol, the RCA Bullseye symbol. The Bullseye symbol is best illustrated as follows:
The RCA brochure stated that the use of its symbol was for both products and coupons.
To demonstrate the feasibility of its coupon redemption system, RCA, in conjunction with the Kroger supermarket chain and Proctor & Gamble, successfully operated such a system in early 1973 at a Kroger supermarket in Kenwood (Cincinnati), Ohio. The discount coupons used, issued by Proctor & Gamble for four of its products,
The RCA computer system included five or six checkout stands connected to a central computer, all of which were located in one supermarket. Each checkout stand included an optical scanner, a display, a keyboard, a printer, and a cash register terminal having a "string" memory and a comparator. In operation, products were optically scanned first and the Bullseye symbol on each item caused the name of the item and the price of that item to be retrieved from the computer memory and shown on the display and stored in the "string" memory. Next, a coupon was optically scanned and the first digit of that Bullseye symbol would trigger a comparator that compares the 7-digit product identification symbol on the coupon with a list of product identification numbers held in the "string" memory. If a match was made, then the amount of the discount was retrieved from the computer memory and shown on the display and registered by the terminal. If a match was not found by the comparator, then the coupon was dishonored and this occurrence entered in the terminal. There were daily and weekly summaries made and sent to the single manufacturer, Proctor & Gamble. The summary for each coupon item, generated by the computer, included redemptions and attempted misredemptions, misredemption being a crediting of a discount to a customer who did not purchase the product to which the discount applied.
A similar prior art system is IBM's 3660 Supermarket System a brochure for which is incorporated by reference into appellant's application. Each checkout stand of this system includes an optical scanner and a terminal. The optical scanner, which is capable of reading the "5-by-5" UPC symbol, sends a signal corresponding to the UPC code to the terminal which in turn automatically retrieves the item's name and price from its memory and displays them. Moreover, the 3660 System includes a supermarket controller that supervises up to 24 terminals and scanners and provides price look-up and item movement data on over 20,000 different items. At the end of the day or at any convenient time, summarized data may be transmitted to a central computer at the headquarters of the supermarket chain.
Additional prior art references, a magazine article
III
Subsequent to the issuance of appellant's parent application, U.S. Patent No. 3,959,624, the UPCC instituted a declaratory judgment action against the appellant regarding the issued patent in the U.S. district court.
Following a denial by the district court of appellant's motion to dismiss,
IV
In the public use proceeding, the intervenor asserted that appellant's invention was unpatentable as obvious in light of prior public use, the RCA-Kroger supermarket system demonstration. The examiner found, inter alia, that (1) the RCA system provided a printed summary of coupon redemption and misredemption for each product; (2) the "5-by-5" UPC symbol and several symbol variations were disclosed to the public in April, 1973; (3) as of December 13, 1974, no UPC-coded symbol for coupons had been adopted and no system was processing UPC-symboled discount coupons; and (4) the RCA system was capable of printing summaries of data such as summaries by products, by product size, by manufacturer, by date, and by terminal.
In his decision dated July 7, 1980, the examiner barred appellant's application on the ground of prior public use. His conclusions of law are as follows:
V
Following the public use proceeding, the appellant amended his claims to emphasize that the memory at each supermarket shall identify discount coupons according to individual manufacturer and transmit this data from each supermarket to a central computer in order to provide an audit. This procedure would therefore eliminate the need for clearinghouses and prevent retailer fraud.
The examiner, in his final office action, rejected the claims under 35 U.S.C. § 132 as being drawn to new matter in that the amendments to claims 1 and 3 are not supported by the original disclosure. He stated:
The examiner also rejected the claims at bar under sections 102(b) and 103 as barred by public use more than one year before the effective filing date in view of the public use evidence. The examiner stated:
VI
The Board affirmed both of the examiner's rejections. The Board, however, treated the section 132 rejection as if it had been made under the first paragraph of section 112. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (Cust. & Pat.App.1981). The Board believed that the sole ground for sustaining the section 132 rejection was the failure of appellant's specification to describe the claimed audit feature. The Board stated:
OPINION
The appellant primarily argues that the Board erred in holding all claims unpatentable under section 103 in view of the public use evidence and the UPC Symbol Specification booklet. The appellant also argues that the Board erred in holding all claims as being drawn to new matter under section 132 (treated as if rejected under section 112) due to appellant's alleged failure to describe the claimed auditing feature in his application.
I. Obviousness
First, the appellant contends that his application disclosed the source of a problem and his invention solved that problem, the disclosed problem being retailer fraud and manual clearinghouse operations. To buttress the retailer fraud argument, the appellant cites the Progressive Grocer magazine article for the proposition that the coupon misredemption problem lies with the retailers. In addition, appellant's specification discusses the existing clearinghouse operations of manually sorting coupons which have been received from various retailers. Accordingly, appellant's invention would eliminate the identified problem of retailer fraud and manual clearinghouse operations.
Next, the appellant contends that combining the public use evidence with the UPC Symbol Specification booklet would not produce the claimed invention. Further, the appellant contends that the claims at bar, citing In re Corcoran, 640 F.2d 1331, 208 USPQ 867 (Cust. & Pat.App.1981), do not completely read on a hypothetical arrangement created by combining the RCA system in view of the UPC Symbol Specification. In support of the latter contention, the appellant argues that, inter alia, the UPC Symbol Specification was not concerned with the processing of coupons; the RCA Bullseye code was a private code; the RCA Bullseye code did not identify the manufacturer; the RCA system did not provide a summary of the coupons broken down in accordance to manufacturers; and the RCA system did not employ a central computer which linked several supermarkets. We, however, disagree.
In reviewing decisions of the Board which are based on section 103 obviousness grounds, our focus must be whether "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made." [Emphasis added]. 35 U.S.C. § 103. See Graham v. John Deere Co., 383 U.S. 1, 13, 86 S.Ct. 684, 691, 15 L.Ed.2d 545 (1966); Lockheed Aircraft Corp. v. United States, 553 F.2d 69, 77, 213 Ct.Cl. 395, 193 USPQ 449, 454 (Ct.Cl.1977); In re Buehler, 515 F.2d 1134, 1140, 185 USPQ 781, 786 (Cust. & Pat.App.1975). Moreover, the discovery of the source of a problem is a part of the "subject matter as a whole" inquiry. In In re Sponnoble, 405 F.2d 578, 585, 56 CCPA 823, 160 USPQ 237, 243 (1969), the Court of Customs and Patent Appeals stated:
See also In Re Peehs, 612 F.2d 1287, 1290, 204 USPQ 835, 837 (Cust. & Pat.App.1980).
We agree with the Board that appellant's specification does not support the argument that he discovered the source of a problem—retailer fraud. Appellant's specification only mentions the problem of misredemption fraud committed by consumers, local charitable groups, check-out clerks, and retail store managers. The Progressive Grocer article describes, in addition to the previously mentioned groups, the trash collectors. Retailers and supermarket chains, however, are mentioned only in relation to the "retailer in-ad" coupon problem.
We also agree with the Board that appellant's invention fails to eliminate the problem of manual clearinghouse operations. Appellant's specification merely describes the typical clearinghouse operations and the considerable cost associated with such operations. In reading the specification in the light most favorable to the appellant, we
Accordingly, we fail to find a clear indication that the appellant discovered the source of the problem. See Sponnoble, 405 F.2d at 585, 160 USPQ at 243. As the Court of Customs and Patent Appeals said in In re Wiseman, 596 F.2d 1019, 1023, 201 USPQ 658, 661 (Cust. & Pat.App.1979),
As for appellant's contentions that the public use evidence combined with the UPC Symbol Specification booklet would not produce the claimed invention and the claims at bar do not read completely on the combination, we also disagree.
In a section 103 inquiry, the focus is not just on the differences between the claimed subject matter and the prior art, but rather on the subject matter as a whole. See Buehler, 515 F.2d at 1140, 185 USPQ at 786. Although the appellant has submitted a litany of differences between the hypothetical combination and his claimed invention, we must focus on his claimed invention as a whole. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed.Cir.1983).
The RCA-Kroger system included all features of the claims at bar except for the requirements of multiple supermarkets, the use of the UPC "5-by-5" symbol on coupons, and the central computer at the headquarters of the supermarket chain. Since the RCA-Kroger system was a public use or on sale bar under 35 U.S.C. § 102(b), it is "prior art" under section 103. See Corcoran, supra. Moreover, the appellant has misplaced the emphasis of Corcoran. Whereas the appellant believes that Corcoran stands for the proposition that his claims at bar must read completely on a prior art combination, the Corcoran holding is that a public use or placing on sale under section 102(b) is "prior art" which may support an obviousness rejection under section 103.
Since the fundamental teaching of the RCA-Kroger system is automatic coupon handling between the consumer and the retailer, the fact that the RCA Bullseye code was a "private" code is not significant. Moreover, the appellant does not appear to contest the Board's holding that it would have been obvious to substitute the UPC "5-by-5" code for the RCA Bullseye code after the UPCC's selection and publication of the UPC symbol in 1973.
Contrary to appellant's contention, the RCA-Kroger system and code did identify the manufacturer of the consumer items, albeit only one manufacturer, Proctor & Gamble. Further, the summary data of redemptions and misredemptions grouped by product inherently identified the manufacturer. Distinguishing the claims at bar from the device in public use on the ground that only a single manufacturer provided coupons is not convincing. The fact that only one manufacturer was involved in issuing coupons did not alter the means or method steps disclosed in the public use proceeding and does not alter their anticipation of the corresponding means and method steps in the claims at bar.
Even if appellant's claims are read to require the summarized data to include a single identifier and a single total of redeemed coupons for each manufacturer, appellant's invention as a whole would have been obvious since the collating and sorting of information is conventional for a computer. For example, the IBM 3660 has summarization capability. Further, adding a central computer to a plurality of supermarkets each of which having a RCA-Kroger system also would have been obvious. Since the IBM 3660 brochure disclosed the means and method of forwarding data to a headquarters, the placement of RCA-Kroger systems into several supermarkets would not have been unobvious. See Alco Kar Kurb, Inc. v. Ager, 286 F.2d 931, 128
After considering the prior art evidence and references in their entirety for all they teach and suggest,
II. New Matter
The appellant also contends
We disagree. As the Board in the instant appeal correctly said:
Appellant contends that the word "check"
In addition, appellant contends that since an audit is a verified statement and the checkout system only accepts those coupons that matched the products purchased, its summary of coupons redeemed is a verified statement. Accordingly, the summary is an audit. However, if the summary is the audit, as the appellant urges, what is the step and means claimed for providing the audit? Since the claims recite transmitting the summary data to a central computer to provide an audit, the implication is that the audit takes place after the transmission of the data. This, however, is inconsistent with appellant's position that the summary data itself is the audit. Moreover, this contention is also not supported by the specification.
Since the claims are not separately argued, they all stand or fall together. See In re Burckel, 592 F.2d 1175, 201 USPQ 67 (Cust. & Pat.App.1979). Accordingly, we hold the Board committed no reversible error and its decision is affirmed.
AFFIRMED.
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