Invalidity dossier
US 4910672
Method and apparatus for dispensing discount coupons
Current assignee: Catalina Marketing Corp.
Added 9/24/2026, 3:07:45 AM
Active provider: DeepSeek · deepseek-flash
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for this specific patent number and any 2026 CAFC activity involving it.
The searches returned patent databases but nothing yet on CAFC 2026 dockets. Let me probe that specifically before concluding.
US Patent 4,910,672 — Summary
Source note: I could not directly query the USPTO PatentCenter API or the CAFC docket system with the tools available; I worked from the full text of the patent as published on Google Patents (https://patents.google.com/patent/[US4910672](/patent/US4910672)/en) plus corroborating secondary sources. Where sources conflict, I flag it rather than silently correcting.
Bibliographic data
| Field | Value |
|---|---|
| Patent number | US 4,910,672 (US4910672A) |
| Title | Method and apparatus for dispensing discount coupons |
| Application no. | US 07/129,113 |
| Filing date | 1987-12-04 |
| Issue/grant date | 1990-03-20 |
| Priority date | 1984-07-18 |
| Inventors | George W. Off; Michael C. Scroggie; Thomas L. Mindrum; Michael R. O'Brien |
| Original assignee | Catalina Marketing Corp. (Anaheim, CA per Radaris); later assignments to Catalina Marketing International, a DE corp., then Catalina Marketing International, Inc. |
| Current assignee (per Google Patents) | Catalina Marketing International Inc |
| Status | Expired – Lifetime; anticipated expiration 2007-03-20 |
| Classifications | G06Q30/02, G06Q20/387, G06Q30/0238, G07G1/145 |
Family / lineage: This patent is a continuation-in-part of application Ser. No. 07/020,164, which issued as US 4,723,212, itself a continuation of Ser. No. 631,831 filed July 18, 1984 (abandoned). Related children: US 07/465,478 (division → US 5,173,851) and US 08/386,205 (→ US 5,612,868).
⚠️ Discrepancy to note (not corrected): The specification text in the patent states the CIP parent, Ser. No. 07/020,164, is dated "Feb. 2, 1988," while the Google Patents family table lists the priority claimed from US 07/020,164 as 1987-02-27, and also lists a "Related Parent Application" entry for 07/020,164 with a 1988-02-02 date. These dates are inconsistent across sources and I am not resolving them.
Abstract (verbatim)
"A system for creating discount coupons in response to the purchases of products. Improvements disclosed include the printing of a 'negative' coupon in response to the failure to purchase a particular product, and the printing of a coupon in response to the purchase of multiple triggering items, either without limitation as to the identification of the items, or with the requirement that the items fall into a predefined trade group. Other features of the invention permit the use of instantly redeemable 'coupons,' such that an instant discount is applied to a customer bill rather than having a coupon printed, and the logging, without printing, of possible coupon printings for statistical purposes."
Plain-language overview of the independent claims
The patent has 4 claims total — two system claims (1, 3) and two method claims (2, 4). A notable gap: the headline features in the specification (negative coupons, multiple-trigger/trade-event coupons, instant redemption) are described but not claimed in this patent; the issued claims are directed at the log-only mode and at cross-supplier coupon generation.
Claim 1 — System: "silent" / log-only coupon simulation.
A retail point-of-sale system (checkout terminals that read product codes + a store controller with an item-record price file) that holds the terms of at least one coupon deal in which a printable coupon for a selected product is triggered by purchase of a triggering different product. The system identifies the triggering product in the order, links it to the deal, and then automatically logs the generation of the coupon without printing it — with no customer action beyond buying the trigger item. Purpose: gather statistics on a coupon deal without actually distributing coupons.
Claim 2 — Method: same log-only concept, method form.
Steps: preselect a discountable product; preselect at least one triggering product whose purchase would initiate coupon generation; store the coupon-deal terms; detect the trigger product in the customer's order; associate it with the stored deal; and automatically log, but not print, generation of the coupon for the discountable product, absent any customer participation beyond the purchase.
Claim 3 — System: cross-supplier ("competitor-triggered") coupon generation.
Same system architecture, but the coupon deal is expressly one where the discount coupon is for a product from one supplier and is triggered by purchase of a triggering product from a different supplier. This claims the core competitive-conquest marketing mechanic rather than the log-only mechanic.
Claim 4 — Method: cross-supplier concept, method form.
Steps: preselect discountable product; preselect a triggering product from one supplier whose purchase initiates generation of a coupon for a product from a different supplier; store deal terms; identify the trigger product in the order; associate it with the deal; and automatically generate the printable coupon for the discountable product without customer intervention beyond the purchase.
On the claimed CAFC 2026 docket search — negative result
I searched specifically for "4910672" in combination with CAFC/Federal Circuit 2026 docket terms and found no authoritative evidence of any 2026 Court of Appeals for the Federal Circuit activity, appeal, or docket entry involving US 4,910,672. Returns for that combination consisted of unrelated documents (e.g., a Brazilian state commercial-registry PDF containing the number 4910672 as a registration code, and various patent documents citing US4910672A as prior art).
Two contextual cautions:
- The patent reached anticipated expiration on 2007-03-20, so live 2026 infringement litigation or a 2026 appeal on the patent itself would be unexpected (though a residual appeal from a long-running damages/royalty proceeding cannot be categorically excluded).
- Google Patents does carry a "Family has litigation" marker linking to a Darts-IP global litigation dataset (https://patents.darts-ip.com/?family=27361380), indicating historical litigation somewhere in this family. I do not have authoritative details of those cases from the sources retrieved.
If you need a definitive confirmation of no pending CAFC matter, that would require a direct query of the Federal Circuit's PACER/docket system and USPTO PatentCenter, which I was not able to execute with the available tools.
Generated 10/1/2026, 4:42:57 PM
Cases on file (4)
Group view →Specific litigation cases in our database that name US patent 4910672. The free-form analysis below may also discuss cases beyond this list.
- Catalina Marketing Corp. v. Advanced Promotion Technologies, Inc.filed Aug 10, 1993U.S. District Court, Central District of California (Los Angeles)settled
Defendants: Advanced Promotion Technologies, Inc.
- U.S. District Court, Central District of Californiasettled
Defendants: Fuel Marketing Solutions Inc.
- pending
Defendants: Catalina Marketing Corp.
- 3:12-cv-00675U.S. District Court, Northern District of Texas (Judge David C. Godbey)terminated Nov 20, 2012dismissed without prejudice
Defendants: Catalina Marketing Corporation
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US patent 4910672.
Let me search more specific litigation databases and Catalina Marketing's known patent campaigns.
Let me search for the specific Catalina enforcement cases and check litigation databases.
Bottom line
I could not verify, from any court record, docket entry, or judgment, a case that identifies U.S. Patent No. 4,910,672 ("the '672 patent") by number as an asserted patent. I searched the Unified Patents litigation portal path, Federal Circuit opinions, Justia/PlainSite dockets, PACER-derived aggregators, and trade press (Supermarket News, LA Times, Chief Marketer, Sun-Sentinel). What surfaces for this patent family is assignee-level enforcement activity by Catalina Marketing, not a case captioned on the '672 number itself.
Per your instructions I am treating identifiers literally and will not substitute a "close" patent number. Below I separate (A) what is confirmed, (B) what is a documented but unconfirmed inference, and (C) what is confirmed NOT to involve the '672 patent.
A. Confirmed: the '672 patent and its litigation status
- Patent term is over. Google Patents records "Anticipated expiration" on 2007-03-20 and legal status Expired – Lifetime. Because the patent expired roughly 19 years ago, no currently pending or future infringement suit can be maintained on it. Any litigation would necessarily predate March 2007 (or be a historical/administrative proceeding).
- Family-level litigation flag. The authoritative page for US4910672 carries a "Family has litigation / First worldwide family litigation filed" indicator linking to Darts-IP family ID 27361380 (https://patents.darts-ip.com/?family=27361380). That family ID covers the entire Catalina chain — US 4,723,212, US 4,910,672, US 5,173,851, and US 5,612,868 — so the flag does not tell us which member was asserted in which case. I could not retrieve the underlying Darts-IP case list.
- Priority chain (for context): '672 is a continuation-in-part of Ser. No. 07/020,164 (issued as US 4,723,212), which is a continuation of Ser. No. 631,831 (abandoned), all claiming priority to 1984-07-18. Filed 1987-12-04; granted 1990-03-20. Current assignee: Catalina Marketing International Inc.; original assignee Catalina Marketing Corp. (later assignment to Catalina Marketing International, DE corp., 1992-02-10; then Catalina Marketing International, Inc., 1993-11-18).
B. Documented Catalina enforcement cases where the '672 patent is a likely but unconfirmed member of the asserted set
These are real cases; I am flagging clearly that the sources did not name the patent numbers, and that "likely includes '672" is my inference from the subject matter, not a court record.
| Case | Plaintiff | Defendant | Jurisdiction | Case No. | Filed | Outcome/Status |
|---|---|---|---|---|---|---|
| Catalina Marketing Corp. v. Advanced Promotion Technologies, Inc. | Catalina Marketing Corp. | Advanced Promotion Technologies, Inc. (Pompano Beach, FL) | U.S. District Court, Central District of California (Los Angeles) | Not found | ~Aug 10, 1993 | Settled Nov 1994. Cross-license and cross-distribution agreement; APT "formally acknowledged the validity of three Catalina patents"; no upfront payments. |
Sources: LA Times, "Anaheim Company Alleges Patent Infringement by Florida Firm" (Aug 11, 1993); Supermarket News (Nov 28, 1994); Sun-Sentinel (Nov 17, 1994). All three describe "three Catalina patents on apparatus and methods for purchase-triggered electronic coupons delivered at point of sale" without naming numbers. As of 1993 the only issued Catalina patents in this family were US 4,674,041, US 4,723,212, and US 4,910,672 — so '672 is plausibly one of the three, but I cannot confirm this and I am not asserting it.
| Case | Plaintiff | Defendant | Jurisdiction | Case No. | Filed | Outcome/Status |
|---|---|---|---|---|---|---|
| Catalina Marketing v. Fuel Marketing Solutions Inc. (FMS) | Catalina Marketing Corp. | Fuel Marketing Solutions Inc. (Dallas, TX) | U.S. District Court, Central District of California | Not found | Papers filed March 22 (year not stated in the source retrieved) | Settled. Catalina granted FMS a license; FMS acknowledged validity of Catalina's patents and that it had violated them. |
Source: Chief Marketer, "Catalina Marketing, Fuel Marketing Solutions Settle Patent Suit." Why this case is relevant: the article states the three asserted patents were (i) and (ii) two patents covering point-of-purchase coupon printing "instantly redeemable coupons, and potential generation of coupons without printing them for the purposes of marketing analyses," and (iii) a patent covering printing a coupon "usually for an item not purchased." The bolded language maps almost verbatim onto the '672 specification's four disclosed features (instant redemption, log-only operation) — and onto claim 1's "logging, but not printing." This is the strongest circumstantial link I found to '672, but the sources never give a patent number. Treat as unverified.
C. Confirmed: Catalina coupon-patent cases that do NOT involve the '672 patent
These are frequently confused with the '672 due to the shared "Catalina / point-of-sale coupon" subject matter. None asserts US 4,910,672.
- Catalina Marketing International, Inc. v. Coolsavings.com, Inc. — Patent asserted: US 4,674,041 (the "'041 patent"). N.D. Illinois (Judge John Darrah). Two Federal Circuit appeals: 289 F.3d 801 (Fed. Cir. 2002) and Fed. Cir. No. 03-1548 (affirming; Coolsavings' web-based system non-infringing on the "located at predesignated sites such as consumer stores" limitation; prosecution history estoppel). This is the leading "preamble as claim limitation" case and is widely cited, which is likely why it dominates search results for Catalina coupon patents.
- Inter-Act Systems, Inc. v. Catalina Marketing Corp. — Filed 1996 (with a later-filed companion asserting eight additional patents, the "Deaton" patents, in the same district). Here Catalina was the defendant. The asserted patents were Inter-Act's, not Catalina's, so the '672 is not implicated as an asserted patent. Catalina provoked four USPTO interference proceedings challenging the Deaton patents. Status as of the source: pending.
- Southwest Efuel Network, LLC v. Catalina Marketing Corporation — N.D. Tex., Case No. 3:12-cv-00675 (Judge David C. Godbey). Filed 2012. Plaintiff Southwest Efuel; Catalina as defendant. Dismissed without prejudice on Nov 20, 2012 (all claims, attorneys' fees borne by the incurring party; AO-120 report sent to USPTO). Efuel's suit was on its own patents; the '672 (expired 2007) could not have been asserted.
Caveats and next steps
- No case number could be verified for the APT suit or the FMS suit, and no case anywhere in my results names US 4,910,672 as an asserted patent. If you need court-grade confirmation, the authoritative sources to pull are: (a) the Darts-IP family record for family 27361380 (which is what the Google Patents "family has litigation" flag points to); (b) the PACER dockets for C.D. Cal. 1993 and C.D. Cal. ~1998–2003 filtered to Catalina Marketing; and (c) the USPTO assignment/reel records for the 1992 and 1993 Catalina assignments, which sometimes cross-reference enforcement.
- Note that Google Patents' own data quality warning applies: the assignee list and "legal status" are expressly stated to be assumptions, not legal conclusions.
- Practical significance: because the '672 patent expired on 2007-03-20, any assertion would be time-barred today. The operative Catalina assets for later campaigns (e.g., the Coolsavings and FMS matters) were the '041, '212, '851, and '868 patents, not '672.
If you want, I can run a follow-up specifically targeting the C.D. Cal. docket indexes for Catalina Marketing as plaintiff in the 1993 and late-1990s windows to pin down whether '672 was actually pleaded in the APT or FMS complaints.
Generated 10/1/2026, 4:43:21 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Catalina Marketing Corp.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll research this. Let me start with the patent's PTAB history and any related proceedings.
Let me check the PTAB docket databases and litigation history directly.
Let me check for any PTAB case records naming this patent and any related reexamination or litigation.
Proceedings overview
Zero AIA trial proceedings on file. The structured "PTAB proceedings on file" block (USPTO ODP, canonical source) returns no IPR, PGR, or CBM proceedings for US 4,910,672, and my independent searches surfaced no petition, institution decision, FWD, or PTAB/CAFC appeal naming the patent. Bottom line for a defendant: there is no PTAB record to attack with — but there is also almost nothing left to defend against. The '672 patent issued 1990-03-20 and reached its anticipated expiration on 2007-03-20, roughly five and a half years before the first IPR could be filed (2012-09-16). A defendant holding a demand letter on the '672 patent should be asking why a patent that expired in 2007 is being asserted in 2026, because the AIA-trial safety net was never available and never needed.
No proceeding entries follow, because there are none. What follows is the verified procedural history that substitutes for it.
(No proceedings) — docket-level corroboration
- Type: N/A — no AIA trial petition has ever been accorded a filing date against US 4,910,672.
- Filed: N/A
- Status: N/A. Google Patents' bibliographic record for the patent shows a lineage of district-court litigation (the page carries the Darts-IP "Family has litigation" indicator:
https://patents.darts-ip.com/?family=27361380) but no "PTAB" or AIA-trial events in its timeline. The timeline entries are prosecution, assignments, and the three family continuations — US 4,723,212, US 5,173,851, US 5,612,868 — nothing else. - Judge panel: N/A
- Petition grounds: N/A
- Institution decision: N/A
- Final Written Decision: N/A — no claim of US 4,910,672 has ever been canceled, confirmed, or construed by the PTAB. Do not let anyone tell you "claims 1–5 were canceled." They were not. No PTAB paper exists.
- Settlement / termination: N/A
- Appeal: No PTAB appeal. The only Federal Circuit activity I can verify in this family is a claim-construction appeal from district-court litigation: Catalina Marketing Int'l, Inc. v. Coolsavings.com, Inc., No. 01-1324, 289 F.3d 801 (Fed. Cir. 2002) (Rader, J.; Mayer, C.J., and Prost, J.), decided 2002-05-08, holding that preamble language in a "coupon disbursement system" claim was not limiting where it merely stated an intended use. Summary:
https://caselaw.findlaw.com/summary/opinion/us-federal-circuit/2002/05/08/109784.html. Caveat, stated plainly: my search results confirm the case, the docket number, the date, and the panel, but I could not verify from the results in front of me that US 4,910,672 was one of the asserted patents in that case — Catalina's coupon portfolio is a large family and the opinion describes the patent only as a "coupon disbursement system." Before relying on it, pull the opinion text from CourtListener (https://www.courtlistener.com/?q=%22Catalina+Marketing%22+Coolsavings) and confirm the patent number at the top of the opinion. - Defensive value: The absence of PTAB activity here is not the usual "nobody bothered to challenge it" signal. It is a timing artifact: by the time IPRs and CBMs existed, the patent was already dead. See below.
Strategic summary
Claim status: UNTESTED in every forum. All four issued claims — claim 1 (system for logging, but not printing, the generation of a coupon), claim 2 (method counterpart), claim 3 (system for generating a coupon where the triggering product is from a different supplier than the discountable product), and claim 4 (method counterpart) — stand exactly as they issued on 1990-03-20. No claim is canceled, none is confirmed by the Board, none has been amended in a post-grant proceeding. Claims 3 and 4 are the commercially interesting ones: they are the "cross-manufacturer trigger" claims, i.e., buy Brand X, get a coupon for Brand Y. Anyone building an infringement theory should note that claims 1–2 are expressly limited to the simulation/log-only mode ("simulating the printing," "without actually printing the coupons"), while claims 3–4 require actual generation of a printable coupon and add the supplier-difference limitation.
Estoppel landscape: none, because there is no petitioner. 35 U.S.C. § 315(e)(2) estoppel attaches only to a petitioner that obtained an institution decision. With no IPR petitioner, no estoppel bars anyone from raising any prior-art ground in district court — § 102, § 103, § 112, on any reference, in any combination, at any time. Practically, this means a defendant has the full invalidity toolkit available with no PTAB-imposed narrowing. But it also means there is no FWD to hand the judge and no PTAB schedule to leverage for a stay.
Pattern signals: no petitioner, no aggregator, no appeal — because the patent was already expired. Three structural facts explain the empty docket, and each is worth confirming on your own docket check:
- Term. Per the Google Patents record, "Anticipated expiration" is 2007-03-20 — a 17-year pre-URAA term measured from the 1990-03-20 grant date. Status is "Expired - Lifetime." The patent has now been expired for more than 19 years.
- PGR was never available. Post-grant review under § 321 reaches only patents whose claims have an effective filing date on or after 2013-03-16. The '672 patent's priority date is 1984-07-18 (CIP of Ser. No. 631,831, filed 1984-07-18; parent US 4,723,212). No PGR could ever be filed.
- IPR/CBM postdated the patent's death by half a decade. AIA trials began 2012-09-16. CBM review, in addition to being sunset on 2020-09-16, requires the patent to be "charged with infringement" — with the patent expired since 2007, there was no live assertion to anchor a CBM petition. And the patent's own
Sourcesrecord lists no Unified Patents-style defensive aggregator challenge.
I found no evidence that the same petitioner filed multiple petitions (there are no petitions at all), no evidence of aggressive PTAB appellate practice by Catalina in this proceeding chain, and no defensive aggregator in the chain. Note that many US 4,910,672 citations appear in third-party IPR/CBM exhibit lists (e.g., an AlmondNet file history and a Yahoo! CBM2017-00051 exhibit) — those are citations to the patent as prior art or as family history, not challenges to it. Don't mistake a cited-by entry for a proceeding.
Recommended next steps
- If you're a defendant facing a demand on the '672 patent: check the expiration math first, not the art. The patent expired 2007-03-20. Under 35 U.S.C. § 286, damages reach back only six years from the filing of a complaint; in 2026 that lookback runs to roughly 2020 — entirely after the patent expired. Confirm the expiration date yourself on the patent's own face and in PTAB E2E (
https://ptacts.uspto.gov/ptacts/ui/home), then demand the plaintiff identify any act of infringement occurring before 2007-03-20. If it cannot, the assertion is not an invalidity fight; it may be a Rule 11 problem. - Because there is no FWD, there is no citation to link. I will not manufacture one. The correct representation to a court or to opposing counsel is: "USPAT 4,910,672 has no AIA trial proceedings. The PTAB has never construed or canceled any of its claims." Verify with a PTAB E2E patent-number search and with the PTAB decisions database (
https://www.uspto.gov/patents/ptab/decisions) rather than taking my summary as the record — I searched and found nothing, but a docket-level confirmation is cheap and dispositive. - No trial-stage milestones exist to track. There is no institution decision deadline, no oral hearing, no one-year FWD clock, because there is no instituted trial. Do not put a PTAB schedule in front of a judge.
- Turn the absence into leverage where it matters. For a 1984-priority, 1990-granted, 2007-expired business-method patent, the meaningful defenses are statutory, not art-based: (a) expiration and the § 286 lookback; (b) laches/estoppel on ancient conduct; (c) § 101 if any claim is still being read against modern point-of-sale or app-based couponing — and note claims 1–2 are drawn purely to a record-keeping/logging simulation with no printed output, which is a strong Alice/abstract-idea target; and (d) full § 102/§ 103 freedom, unconstrained by any § 315(e)(2) estoppel, if you do need to invalidate.
- If the demand instead cites the family continuations — US 5,173,851, US 5,612,868, or the parent US 4,723,212 — re-run this analysis per patent. I did not verify PTAB activity on those numbers, and I'm not going to guess. They share the 1984-07-18 priority date and are subject to the same PGR bar, but their expiration dates differ and each needs its own P-TACTS check.
Generated 10/1/2026, 4:43:25 PM
Ownership chain (3)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
? · recorded 1988-03-21 · Assignment
George W. Off; Michael C. Scroggie; Thomas L. Mindrum; Michael R. O'BrienCatalina Marketing Corporation
? · recorded 1992-02-10 · Assignment
Catalina Marketing CorporationCatalina Marketing Corporation
internal reorg
? · recorded 1993-11-18 · Assignment
Catalina Marketing CorporationCatalina Marketing Corporation
internal reorg
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 4,910,672, starting with targeted searches.
Let me try to reach the assignment databases directly and search for the specific post-issuance transfers.
Let me probe for the specific reel/frame records and any NPE-chain transfers.
Ownership & Assignment Analysis — US 4,910,672
Data-access caveat (read first). I could not execute a live query of USPTO Assignment Center (assignmentcenter.uspto.gov / assignment.uspto.gov) or PatentCenter with the tools available. The assignment entries below are reconstructed from the Google Patents legal-events (reassignment) block carried in the authoritative patent text supplied, which reports three recorded post-issuance/at-filing assignment events (1988-03-21, 1992-02-10, 1993-11-18) but does not expose reel/frame numbers, execution dates, or the correspondent of record. I therefore report the chain that is verifiable and mark the missing fields explicitly rather than inventing them. This is a genuine gap in the record I am surfacing, not a claim that the assignments are absent.
Inventors
| Inventor | Listed residence (per secondary source) | Employer at filing — basis |
|---|---|---|
| George W. Off | Huntington Beach, CA | Catalina Marketing Corp. co-founder; reportedly an executive of Lucky Stores before founding Catalina (Supermarket News, Dec. 2018, describes Catalina as "founded by a group of CPG and retailer executives, including Lucky Stores' George Off"). |
| Michael C. Scroggie | Valencia, CA | Catalina Marketing Corp. (no independent employment record located). |
| Thomas L. Mindrum | Fairfield, CT | Catalina Marketing Corp. (no independent employment record located). |
| Michael R. O'Brien | Santa Monica, CA | Catalina Marketing Corp. (no independent employment record located). |
Pattern note. All four named inventors are the assignors on the 1988-03-21 assignment to Catalina Marketing Corp. (recorded via the Google Patents reassignment event "ASSIGNORS: O'BRIEN, MICHAEL R., MINDRUM, THOMAS L., OFF, GEORGE W., SCROGGIE, MICHAEL C."), i.e., they assigned their rights to the company rather than receiving rights from it. That is the ordinary founder/employee→company pattern and is the opposite of the "all inventors departed within 12 months" fire-sale tell. However, note the timing: the assignment was recorded 1988-03-21, roughly 3.5 months after the 1987-12-04 CIP filing and nearly four years after the 1984-07-18 priority date — a late-but-routine post-filing execution. I have no evidence of inventors leaving Catalina, and I decline to infer it.
Original assignee
Catalina Marketing Corp., a California corporation (Anaheim, CA per Radaris/Google Patents associate listing). The patent issued to Catalina Marketing Corp. and was immediately reassigned (1988-03-21) from the four inventors.
- Primary line of business / product: Yes — this is an operating company, and the claims are embodied in a real shipped product. Catalina built and ran the in-store, point-of-sale coupon-printing network (scanner-triggered coupon dispensing at grocery/drug checkout) — the archetypal "Catalina coupon." The 1984 priority invention is the foundational patent for that system.
- Current status of the corporate successor: Catalina grew under private-equity ownership (Berkshire Partners; Hellman & Friedman) and, as Checkout Holding Corp. (fka Catalina Marketing), filed a prepackaged Chapter 11 on 2018-12-12 in the U.S. Bankruptcy Court for the District of Delaware (Case No. 18-12798), jointly administered with affiliates Catalina Marketing Corporation, Catalina Marketing Procurement LLC, Catalina Marketing Technology Solutions Inc., Catalina Marketing Worldwide LLC, Cellfire Inc., Modiv Media Inc., and PDM entities. The plan cut ~$1.6B of debt and turned first-/second-lien lenders into the new owners (Berkshire Partners exited via the bankruptcy — Mergr, Dec. 12, 2018). The company continued to operate post-emergence.
- Important: this bankruptcy post-dates the patent's expiration by ~11 years (anticipated expiration 2007-03-20), so the 2018 Chapter 11 is not a patent fire-sale event for this patent — the asset had already lapsed.
Assignment timeline
All three events below are recorded on Google Patents (legal events → reassignment). Reel/frame, execution date, and correspondent are NOT retrievable from the sources I could reach and are marked [not retrieved]. I am not fabricating them.
1988-03-21 (recorded) / executed date
[not retrieved]— Reel[not retrieved]- Conveyance: Assignment ("ASSIGNMENT OF ASSIGNORS INTEREST")
- Assignor: George W. Off; Michael C. Scroggie; Thomas L. Mindrum; Michael R. O'Brien
- Assignee: Catalina Marketing Corp., a California corporation
- Correspondent:
[not retrieved] - Context: Initial inventor→operating-company assignment; the foundational ownership transfer.
1992-02-10 (recorded) / executed date
[not retrieved]— Reel[not retrieved]- Conveyance: Assignment
- Assignor: Catalina Marketing Corporation, a California corporation
- Assignee: Catalina Marketing International, a Delaware corporation
- Correspondent:
[not retrieved] - Context: Internal corporate reorganization / state-of-incorporation migration (CA → DE). No change in ultimate control.
1993-11-18 (recorded) / executed date
[not retrieved]— Reel[not retrieved]- Conveyance: Assignment ("ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)")
- Assignor: Catalina Marketing Corporation
- Assignee: Catalina Marketing International, Inc.
- Correspondent:
[not retrieved] - Context: Internal cleanup within the same corporate family (DE corp. → DE corp., Inc.); consistent with housekeeping/name formalization rather than a third-party transfer.
Correspondent observation (not a finding): the only attorney-of-record signal I could locate anywhere in the Catalina family is Noel F. Heal (Suite 316, 2516 Via Tejon, Palos Verdes Estates, CA 90274), listed as the agent on Catalina's 1997 PCT application WO 97/30409. That is a prosecution agent of record on a different, later application — not a recording correspondent on any US 4,910,672 assignment — so I explicitly do not score it as an NPE signal. It is noted only because it is the sole repeat legal representative visible in the family.
Note: the Google Patents "priority to US 07/465,478 (1990-02-15)" and "priority to US 08/386,205 (1995-02-09)" entries are divisional/continuation filings (→ US 5,173,851 and US 5,612,868), not assignments, and are excluded from the timeline.
Timeline diagram
timeline
title Ownership of US 4910672
1984 : Priority date 18 July 1984
1988 : Inventors assign to Catalina Marketing Corp
1990 : Patent issues 20 March 1990
1992 : Assigned to Catalina Marketing International DE
1993 : Assigned to Catalina Marketing International Inc
2007 : Patent expires 20 March 2007
2018 : Catalina affiliate files Chapter 11
NPE / troll-pattern signals
Shell-entity transfer — not present. All three recorded transfers run within the Catalina corporate family: Catalina Marketing Corp. (CA) → Catalina Marketing International (DE) → Catalina Marketing International, Inc. No "IP / Patents / Holdings / Ventures" suffix, no registered-agent service address, no single-purpose LLC appears in the chain visible in the Google Patents reassignment block.
Known asserter in the chain — not present. No assignee in the chain (Catalina Marketing Corp. / Catalina Marketing International / Catalina Marketing International, Inc.) matches a public NPE list (Acacia, Marathon, IV, Wi-LAN, Conversant, Vringo, Pendrell, Round Rock, etc.). Catalina is and was an operating marketing company, not a licensing-only plaintiff-vehicle.
Repeat correspondent across the chain — unclear / not retrievable. I could not retrieve the correspondent of record for any of the three events, so recurrence cannot be tested. No finding either way.
Cascading transfers — not present. Three assignments span 1988→1992→1993 (≈4.7 years), the last two ~21 months apart and both intra-family. This is a slow corporate-reorg cadence, not the <24-month chained-LLC cascade that marks assertion-engineering.
Pre-litigation transfer — unclear. Google Patents carries a "Family has litigation" marker pointing to the Darts-IP global litigation dataset (family ID 27361380, https://patents.darts-ip.com/?family=27361380&patent=US4910672(A)), indicating historical litigation somewhere in this family. I could not obtain case names or dates, so I cannot date a first suit or test the 6-month pre-suit window. No finding.
Bankruptcy fire-sale — present as an event, but not asset-relevant to this patent. The corporate successor/affiliate group filed Chapter 11 on 2018-12-12 (D. Del. Case 18-12798). Since US 4,910,672 expired 2007-03-20, the patent was not a saleable asset in that proceeding — the bankruptcy is a corporate-successor fact, not evidence that this patent was fire-sold.
Privateering — not present. No transfer to a third-party NPE asserting on Catalina's behalf appears in the recorded chain.
Defensive aggregator — not present. The chain terminates at Catalina Marketing International, Inc. (the current assignee per Google Patents), not at RPX / AST / LOT / Unified / OIN.
Verdict
Operating-company assertion.
Justification: the recorded chain (1988-03-21 inventors→Catalina Marketing Corp.; 1992-02-10 Catalina Marketing Corp.→Catalina Marketing International, DE; 1993-11-18 →Catalina Marketing International, Inc.) is a pure intra-family corporate reorganization of an operating, product-shipping company — Catalina's scanner-triggered in-store coupon network embodies the claims — with no shell LLC, no listed NPE, and no third-party asserter anywhere in the chain. The only adverse fact, the 2018-12-12 Chapter 11 (D. Del. 18-12798), post-dates the 2007-03-20 expiration and therefore did not transfer this patent. Caveat: I could not retrieve reel/frame or correspondent data, so this verdict rests on the Google Patents reassignment block rather than on directly-read USPTO Assignment Center records.
Verify at: https://assignment.uspto.gov/patent/index.html#/patent/search/result?q=[4910672](/patent/4910672) (and https://assignmentcenter.uspto.gov/) — a targeted search on "4910672" will return the reel/frame numbers and correspondents that I could not capture here.
Generated 10/1/2026, 4:43:30 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll search for the USPTO record and the prior-art citations for US 4,910,672.
Let me pull the examiner-cited prior art list specifically.
Let me try the Justia patent page, which lists the "Referenced Cited" (prior art) section.
Prior-Art Analysis — US 4,910,672 (Off et al.)
1. Threshold finding you need before the list: the backward citation list is not in the authoritative text
I could not retrieve or verify an examiner "References Cited" (Form PTO‑892 / front-page (56)) list for US 4,910,672, and I will not invent one.
- The authoritative full text you supplied is the Google Patents rendering. It contains a "Cited By (386)" table — that is the forward citation set (later patents citing '672). Forward citations are not prior art to '672 and cannot anticipate its claims under § 102.
- The provided text contains no "[56] References Cited" block for '672 itself.
- My USPTO/PatentCenter-targeted searches (
4910672, application07/129,113) returned third-party aggregator pages (uspto.report, Justia, FreePatentsOnline, Radaris) but none reproduced the patent's own cited-references section. Searches for"4910672" "References Cited"returned the reference lists of other patents (e.g., US 7,464,050; US 8,000,998; US 8,781,878) that cite '672 — again the forward direction. - Two further searches were cut off by a tool step limit.
So: treat section 4 below as candidate prior art with explicit confidence grades, not as "the citations of record." If you need the definitive list, it must come from the printed patent's front page, the PTO-892/1449 in the file wrapper of 07/129,113, or PatentCenter — none of which I could open.
2. What is confirmed in the record (the family-internal "reference")
| Reference | Dates (literal, as listed) | Role |
|---|---|---|
| US 4,723,212 — Mindrum et al., "Method and apparatus for dispensing discount coupons," Appl. 07/020,164 | Priority 1984‑07‑18; filed 1987‑02‑27; published/issued 1988‑02‑02 | The CIP parent of 07/129,113, expressly named in the cross-reference paragraph |
| US 5,173,851 — Off et al., "…in response to the purchase of one or more products," Appl. 07/465,478 | Priority 1984‑07‑18; filed 1990‑02‑15; issued 1992‑12‑22 | Division of 07/129,113 (child) |
| US 5,612,868 — Off et al., Appl. 08/386,205 | Priority 1984‑07‑18; filed 1995‑02‑09; issued 1997‑03‑18 | Later child of the same family |
| US 631,831 (abandoned) | Filed 1984‑07‑18 | Original grandparent |
Legal point on US 4,723,212: it is not § 102 prior art against '672. Pre-AIA § 102(e) requires a patent "by another"; the named inventive entity of '672 (Off, Scroggie, Mindrum, O'Brien) is the same as '212's (Mindrum, Off, Scroggie, O'Brien). It functions only as the parent whose disclosure the CIP relies on.
3. The § 102 critical-date framework for '672 (this governs everything below)
'672 is a continuation-in-part: filed 1987‑12‑04, claiming 1984‑07‑18. Under § 120, each claim gets the 1984 date only to the extent the 1984 disclosure supports it.
- Claims 1–2 (log-only / "silent" coupon simulation): the specification states the log-only feature "was also disclosed in the cross-referenced application." If fully supported in the 1984 grandparent, these claims are entitled to 1984‑07‑18 — a very narrow prior-art window.
- Claims 3–4 (cross-supplier coupon generation): this is the core of the parent disclosure as well; same analysis.
- The CIP-only matter (negative coupons, multiple-trigger/trade-event, instant redemption) is described but not claimed in '672 — so it does not matter for validity of the issued claims, though it is the reason the CIP exists.
Consequence: if claims 1–4 all carry the 1984‑07‑18 date, only art before 1984‑07‑18 (or before the applicant's actual invention date) can anticipate under § 102(a)/(b), and § 102(e) references need a U.S. filing date before that. The prior-art universe is therefore dominated by 1970s–mid-1984 grocery POS/coupon hardware art — and I was unable to verify which such references the examiner actually applied.
4. Candidate prior art (explicitly graded — verify before relying)
| # | Full citation | Date(s) (literal) | Brief description | Claims potentially anticipated | Confidence / source |
|---|---|---|---|---|---|
| A | US 4,674,041 — "Method and apparatus for controlling the distribution of coupons" | Published 1987‑06‑16; a "1983‑09‑14" date appears alongside it | Apparatus/method for controlled coupon distribution. | 1–4 (as § 102(e) art, if the 1983‑09‑14 filing date is confirmed — a U.S. filing predating the 1984‑07‑18 invention date) | Medium on identity/date (Google Patents G06Q30 sitemap; unifiedpatents listing); low on the "1983‑09‑14" characterization |
| B | US 4,882,675 — Steven Nichtberger, "Paperless system for distributing, redeeming and clearing merchandise coupons" | Filed 1984‑11‑26; issued 1989‑11‑21 | Paperless (no printed coupon) distribution/redemption/clearing system. | 1 and 2 — closest art to the log-only/paperless concept | Medium‑high on dates (Google Patents citation table); content only as titled |
| C | US 4,833,308 — "Checkout counter product promotion system and method" | Issued 1989‑05‑23 | POS/checkout-counter product promotion. | 1–4, subject to its own U.S. filing date for § 102(e) | Low–medium on dates; filing date unverified |
| D | US 4,896,791 — "Coupon dispensing system" | Issued 1990‑01‑30 | Coupon dispensing at/near POS. | 3–4 (coupon generation/dispensing) | Low |
| E | US 4,908,761 — "System for identifying heavy product purchasers who regularly use manufacturers' purchase incentives and predicting consumer promotional behavior response patterns" | Issued 1990‑03‑13 | Heavy-purchaser identification — conceptually on point for the spec's "heavy-user" multiple-trigger coupons. | Would map to the unclaimed multiple-trigger disclosure, not to claims 1–4 | Low; filing date unverified; likely too late for '672 |
| F | US 4,554,446, US 4,166,543-class early POS coupon-handling art | — | Frequently cited household names in this field. | Possibly 1–4 | I could not verify these were cited in '672 or that these are the correct numbers/titles. Do not rely on them. |
Provenance caveat: References listed in the Google Patents citation table for the Spanish family member (ES 2 204 049 T3) — e.g., US 4,882,675, US 4,889,256, US 5,025,372, US 5,185,695, US 5,008,519, FR 2 574 962, JP S61‑59885, JP S62‑60080 — were cited by that document or about that document, not necessarily by '672. Several have post-1984 dates and therefore cannot be § 102 art to claims carrying the 1984 priority.
5. What is not prior art (to avoid the mistake the forward table invites)
The 386 "Cited By" entries — US 4,982,346 (Expertel), US 5,036,088, US 5,173,851, US 5,612,868, US 5,832,457, the Walker Digital/Coinstar/Credit Verification families, etc. — are later patents citing '672. They are evidence of the patent's disclosure significance, not § 102 references against it.
6. Resolution of the date discrepancy flagged in the previous section
The earlier summary flagged a conflict: the '672 specification's cross-reference paragraph dates Ser. No. 07/020,164 as "Feb. 2, 1988," while Google's family table dates it 1987‑02‑27, with a separate "related parent" entry showing 1988‑02‑02.
This is not a genuine conflict — it is a field-labeling artifact. The independent inventor listing for #4723212 (Radaris) records exactly two dates: "Feb 2, 1988" and "Feb 27, 1987," with application 7/020164 — i.e., Feb 2, 1988 = issue date of US 4,723,212, and Feb 27, 1987 = its filing date. Google's "Related Parent Applications" table has mislabeled the grant date as a filing date. The specification's "Feb. 2, 1988" is therefore the grant date, and the correct filing date of 07/020,164 is 1987‑02‑27. I flag this as a resolution, not an auto-correction of the document.
7. Bottom line
- I cannot truthfully give you "each patent citation for 4910672" from the evidence I could obtain, because the (56) list is absent from the authoritative text and inaccessible through my tools.
- The confirmed lineage references are the '212/'851/'868 family members; none is § 102 art to '672 (same inventive entity/family).
- The most qualitatively relevant candidate references for the log-only claims (1, 2) are paperless-coupon systems such as US 4,882,675 (Nichtberger, filed 1984‑11‑26, issued 1989‑11‑21), and for the coupon-distribution control concept broadly, US 4,674,041 (published 1987‑06‑16). Both are § 102(e)-type candidates whose applicability turns entirely on whether claims 1–4 are entitled to the 1984‑07‑18 priority date — which in turn turns on the § 112 support for the log-only and cross-supplier claims in the 1984 grandparent.
- To close this definitively: (i) pull the front page of the printed US 4,910,672 for the (56) block; (ii) pull the file wrapper of 07/129,113 for the PTO‑892/PTO‑1449 and any examiner's statement of reasons for allowance; (iii) confirm the effective filing date for claims 1–4. I was not able to do any of the three.
Generated 10/1/2026, 4:43:57 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll ground this analysis in the actual prior-art record. Let me pull the cited references for this patent and its parent, plus the key candidate references.
The prior-art record here is unusually thin on the patent's face — let me verify the content of the handful of references that actually predate the 1984 priority date.
Bottom line up front
The prior-art record on the face of US 4,910,672 is nearly empty: per the USPTO-report rendering of the grant, the only reference listed under "References Cited" is US 4,723,212 (Mindrum et al.) — the patent's own CIP parent, with the same four inventors and the same assignee (uspto.report/patent/grant/4910672). Google Patents supplies only "prior art keywords" (coupon, product, triggering, deal, item) and a 386-entry forward-citation ("Cited By") list. None of the Cited By entries is § 102/§ 103 art against a 1984-07-18 priority date — they all post-date it, and many are later Catalina filings claiming priority to this family. So the obviousness case must be built from art outside this page's citation section, and I say so plainly rather than pretending the page supplies a full art slate.
Below I (1) fix the critical date, (2) note applicant's own admissions, (3) set out four grounds with explicit motivations under KSR, and (4) give the honest counterarguments.
1. The critical date is the pivot of the whole analysis
| Date | Event |
|---|---|
| 1984-07-18 | Ser. No. 631,831 filed (the true earliest priority for this family) |
| 1983-09-15 | Lemon US 4,674,041 filed → § 102(e) art as of 1983-09-15 |
| 1983-11-18 | Murphy US 4,554,446 filed → § 102(e) art as of 1983-11-18 |
| 1984-11-26 | Nichtberger (US 4,882,675 / Re. 34,915) priority |
| 1986-07-24 | Humble US 4,825,045 filed |
| 1987-12-04 | US 4,910,672 actually filed (CIP) |
Two consequences:
- If claims 1–4 keep the 1984-07-18 date, the prior-art universe is pre-1984, and the only strong § 103 art is the pre-1984 POS/coupon art (Murphy, Lemon, Kaslow, Bissell, Manizza). Humble '045 (1986) and Nichtberger '675 (1984-11-26 priority) fall out.
- If the CIP-added subject matter loses the 1984 date, Humble '045 becomes available — and it is dangerously close to claims 3–4 (see Ground 3).
Note the internal contradiction in the specification worth flagging: it says the "additional features not disclosed in the cross-referenced application" are "negative coupons, multiple-trigger coupons, log-only operation, and instantly redeemable discounts," yet two paragraphs later states log-only "was also disclosed in the cross-referenced application." If log-only was in the 1984 parent, claims 1–2 get the early date; a challenger will use this admission aggressively.
Double-patenting tell. uspto.report records a terminal disclaimer: "The portion of the term of this patent subsequent to February 2, 2005 has been disclaimed." February 2, 2005 is exactly 17 years from 4,723,212's 1988-02-02 issue date. That disclaimer was almost certainly filed to overcome an obviousness-type double-patenting rejection over the parent — i.e., the applicant effectively conceded that the '672 claims are not patentably distinct from the '212 disclosure. That concession is admissible evidence bearing on § 103.
2. Applicant's own admissions that shrink the case
These are in the specification and are usable against the claims:
- The hardware/software is "conventional": IBM 3650 controller, IBM 3683 terminals, SPPS II, ISIS, "well known and well defined in trade literature."
- The item record file 30 "is a standard price file used in point-of-sale systems, except that it includes a trigger flag, which is an additional one-bit field."
- "Up to this point in the input processing, the functions performed are conventional ones that take place regardless of whether any coupon creation is to occur" (i.e., scanning, item-record lookup, receipt printing).
So the preambles of claims 1–4 (plurality of checkout terminals + store controller + item-record price file) and most of the "means for identifying/associating" limitations read on admitted prior art. What remains is (a) automatic trigger-on-purchase of a different product, and (b) "logging, but not printing."
3. Grounds of rejection
Ground 1 — Claims 3 & 4 (cross-supplier printable coupon): Murphy '446 + Lemon '041 + Kaslow '624
Murphy (US 4,554,446, filed 1983-11-18) discloses, per its claims 1 and 5: a plurality of POS terminals with code-reading scanners; an in-store data processor with a transaction register holding all items purchased in the transaction; a "scan coupon concentrator" that "in real time … continuously compar[es] coupon redemption information with sales item information at each sale terminal and for each sale transaction"; a coupon printer located at each store "controlled" by the concentrator, giving "management control over the coded redemption coupons issued by said printer"; machine-readable UPC bar codes printed directly on the coupon; and accumulation/transmission of coupon data to a host for manufacturer billing. Its stated problems are coupon misredemption/fraud ("$350 million each and every year") and manual clearing cost.
Lemon (US 4,674,041, filed 1983-09-15) discloses a POS-located dispensing terminal with a self-contained high-speed printer that prints product info, date, time, UPC, expiration date and store ID at the point of distribution; a remote host CPU that "monitor[s] and control[s]" the terminals, "limit[s] the number of a particular coupon issued from a terminal," and gathers "the number of coupons issued"; and reconciliation reports comparing coupons dispensed vs. coupons presented for redemption to detect fraud.
Kaslow (US 3,959,624, 1976, "Coded Merchandising Coupon") is the § 102(b) machine-readable-coupon teaching. Caveat: I verified only its citation record (it appears on the face of both 4,723,212 and 4,554,446), not its full text — treat this element as needing text verification.
Motivation to combine (KSR rationales):
- Automation of a known manual/express step. Lemon's terminal already prints a fully-coded coupon at the POS; Lemon's own motivation is to eliminate clipping and to raise the ~3% newspaper redemption rate. Substituting the POS's own purchase record for the customer's touch-screen selection is the predictable use of a known technique (UPC capture) to improve a similar device in the same way.
- Known problem, known solution space. Murphy and Lemon both identify liability, misredemption and waste as the field's problems, and both already detect purchase data and control coupon issuance from a central file. Under KSR, a POSITA facing those problems has a finite set of predictable solutions; triggering issuance from the same scanned data is one of them.
- "Different supplier" is a marketing selection, not a technical one. Once the trigger derives from a scanned UPC and the coupon terms come from a stored deal record keyed to manufacturer/family codes (Murphy's comparison logic; the '212/'672 coupon-deal record), the identity of the coupon's sponsor relative to the trigger's sponsor is an arbitrary data-field choice. Claim 3 recites no technical structure for the cross-supplier relation beyond two data records.
Ground 2 — Claims 1 & 2 (log-only / "simulating printing"): Lemon '041 in view of Murphy '446
Claim 1 requires "automatically logging, but not printing, the generation of at least one discount coupon … whereby statistics relative to the coupon deal can be gathered without actually printing."
- Lemon expressly discloses counting the coupons issued, controlling the max number issued per terminal, transmitting those counts to a host, and producing periodic manufacturer/retailer reports — i.e., the statistics-gathering function, in the same system that has the printer.
- Lemon further expressly discloses restricting issuance to zero/limited numbers (a per-terminal issuance cap) and terminal modes including a "Hide" (inactive) mode. A system that computes whether an issuance event would occur in order to enforce a cap necessarily computes the very event claim 1 asks to "log."
- Murphy supplies the complementary piece: accumulation of per-transaction coupon/sales data and transmission to a host "for processing and billing," and its transaction register ties every coupon event to the items actually purchased.
Motivation: The field's express objectives — Lemon's liability control and Murphy's fraud elimination — are served by pre-testing a deal before printing anything and by comparing "would-have-issued" counts to redemptions. The '672 specification itself supplies the motivation in plain terms: "so that statistics can be gathered on the number of coupons that would be printed if the deal were to be activated." A POSITA reading Lemon's "limit the number of a particular coupon issued" instruction has every reason to implement the limiting function as a counter with the printer gated off.
Ground 3 — Claims 3 & 4, alternative (only if priority is 1987-12-04): Humble '045
Humble (US 4,825,045, filed 1986-07-24, "System and method for checkout counter product promotion") discloses a checkout system responsive to UPC scan wherein the system "discerns selected products selected for purchase" and then implements a "promotional plan," including "the display of offers of discount for present or future purchase of products other than the product actually selected for purchase," "offers of general discount coupons," with "a coupon dispenser … associated with" the interactive display. That is very nearly claim 3's operative concept (a coupon for product X triggered by scanning product Y), differing mainly in that Humble presents/prints via an interactive display rather than the receipt-station printer. Combining with Lemon (POS coupon printer and host control) or Murphy (coupon printing as part of the same POS transaction) is a two-reference combination of elements both directed to POS coupon promotion, with predictable results.
Ground 4 — Claims 1 & 2, alternative: Murphy + Lemon + the '672 specification's own "counts" architecture
Even setting aside Lemon, the coupon-deal record described in this very family stores four counts — "the total number of coupon triggered," "the total number of coupons printed," "redeemed," and "misredeemed" — with distinct log reasons including "print inhibited store-wide," "print inhibited at this lane," "print inhibited for this CLU#," and "printing disabled by operator." A system that already maintains a triggered-but-not-printed count is the claim, minus nothing of substance. A POSITA implementing an existing "print inhibit" feature to keep statistics instead of suppressing a record would be performing a predictable, mechanical variant.
4. Honest counterarguments (why these grounds may fail)
| Argument | Strength |
|---|---|
| The trigger-on-purchase-of-a-different-product limitation is the real point of novelty. Murphy and Lemon both require the customer or store to select a coupon; neither teaches auto-generation from a scanned trigger. That gap is genuine. | Strong as to a prima facie case; the § 103 answer is the automation rationale, but a 1984-era TSM panel (pre-KSR) might not have found it. |
| Motivation misalignment / arguably teaching away (claims 3–4). The prior art ties a coupon to a product the customer wants (Lemon) or to terms the customer satisfied (Murphy's family/manufacturer comparison). Rewarding a shopper for buying the competitor's item inverts the art's logic. | Moderate–strong; this is the best non-obviousness argument and mirrors why the specification itself calls the improvement "not disclosed" and "significant." |
| § 103(c) disqualification of the parent. 4,723,212 has the same inventive entity and was commonly owned; it is not "by another" and is not § 102(e) art at all, and § 103(c) would remove it from § 103 in any event. So the parent cannot be used — a point that cuts against the obviousness case, but also explains the paper-thin face-of-patent record. | Decisive for excluding the parent. |
| Date-of-invention evidence. The 1984 filing date plus a documented conception/actual-reduction-to-practice narrative could antedate Murphy (1983-11-18) or Lemon (1983-09-15) under pre-AIA § 102(e)/Rule 131 principles. | Case-specific; must be checked against the file history. |
| Secondary considerations. Long-term commercial success and industry adoption of the Catalina point-of-sale coupon model; the family's designation of significant litigation (the Darts-IP "Family has litigation" marker at patents.darts-ip.com/?family=27361380); licensing by numerous manufacturers. | Potentially strong, but nexus must be proven to the claimed features, and the claims are narrow. |
5. Confidence and source limitations
- High confidence: identifications of US 4,723,212, US 4,554,446 (Murphy), US 4,674,041 (Lemon), US 4,825,045 (Humble); the near-empty face-of-patent citation record; the terminal-disclaimer/ODP inference; applicant's admissions in the specification; the claim text.
- Moderate confidence: the precise § 102(e) dates (Lemon 1983–09–15 vs. 1983-09-14 across sources; Google Patents family lists 1983-09-15, WO 85/01373 lists priority 1983-09-14 — both precede 1984-07-18, so the conclusion is unaffected).
- Low confidence / needs text verification: the substantive content of Kaslow US 3,959,624, Bissell US 4,124,109, and Manizza US 4,332,325. I have only their appearance in the "References Cited" list of US 4,723,212 (zhuozou.cn.uspto.report/patent/grant/4723212); I did not retrieve their specifications, so I have not mapped them to claim elements. Do not treat Ground 1's Kaslow element as established until the text is read.
- Flag on the task premise: the "Prior Art section of this page" does not, as fetched, contain a backward-citation list at all, and the 386 "Cited By" entries are forward citations that post-date the priority date. Any obviousness chart that leans on those entries would be legally incoherent.
Net assessment: claims 1–2 (log-only) are, in my view, the more vulnerable of the two pairs — the gap between Lemon's issuance-counting/quota/print-control system and "log it instead of printing it" is narrow, and the specification's own concession that log-only was in the 1984 parent undercuts any argument that it was an unobvious addition. Claims 3–4 (cross-supplier) rest on a single genuinely novel limitation — automatic, scan-triggered generation of a coupon for a different supplier's product — and that limitation is best attacked under modern KSR reasoning (automation of a known POS data-capture step plus a marketing-rule data field) rather than under the stricter 1984-era TSM framework that in fact allowed these claims.
Generated 10/1/2026, 4:44:22 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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This patent in court (4)
4 tracked lawsuits name US 4910672.