Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardFeb 5, 201311323786 (P.T.A.B. Feb. 5, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte DEBORAH YEE-KY LIU, 7 CHARLES EUGENE COOK JR., 8 MICHAEL R. GAINER, 9 DAVID RACCAH, 10 DEAN YI-WAI QUAN, 11 JENNIFER MARIE FAENZA, 12 MARY KU, 13 SRINIVASAN RAMAN, 14 NEELIKA CHAKRABARTI CHOUDHURY, 15 and JOSEPH EDWARD BLACK 16 ___________ 17 18 Appeal 2011-003622 19 Application 11/323,786 20 Technology Center 3600 21 ___________ 22 23 24 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 25 MEREDITH C. PETRAVICK, Administrative Patent Judges. 26 FETTING, Administrative Patent Judge. 27 DECISION ON APPEAL 28 Appeal 2011-003622 Application 11/323,786 2 STATEMENT OF THE CASE1 1 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed August 24, 2010) and Reply Brief (“Reply Br.,” filed December 20, 2010), and the Examiner’s Answer (“Ans.,” mailed November 12, 2010). Deborah Yee-Ky Liu, Charles Eugene Cook Jr., Michael R. Gainer, 2 David Raccah, Dean Yi-Wai Quan, Jennifer Marie Faenza, Mary Ku, 3 Srinivasan Raman, Neelika Chakrabarti Choudhury, and Joseph Edward 4 Black (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of 5 claims 1-26, the only claims pending in the application on appeal. We have 6 jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 7 The Appellants invented a way to process an incentive (Specification ¶ 8 [0001]). 9 An understanding of the invention can be derived from a reading of 10 exemplary claim 1, which is reproduced below [bracketed matter and some 11 paragraphing added]. 12 1. A system comprising: 13 [1] a payment processor server 14 to communicatively couple 15 to a plurality of client computers, 16 the payment processor having one or more processors 17 to process an incentive, 18 the payment processor server further including at least 19 one database 20 to store information about 21 the incentive 22 and 23 an account related to 24 at least one of the plurality of client 25 computers; 26 and 27 [2] a commerce server 28 having one or more processors, 29 Appeal 2011-003622 Application 11/323,786 3 the commerce server to couple 1 to the payment processor server and the plurality 2 of client computers, 3 the commerce server to receive 4 an incentive identification code 5 that identifies an amount of the incentive to be 6 used 7 for at least a partial payment 8 for a transaction 9 from the at least one of the plurality of client 10 computers, 11 the commerce server further to determine 12 whether an incentive is valid, 13 and, 14 based upon a determination the incentive is valid, 15 to communicate the incentive information 16 from the commerce server to the payment 17 processor server, 18 the incentive information including an 19 authorization 20 that authorizes the payment processor 21 server 22 to transfer the incentive amount into 23 the account 24 as the at least partial payment for the 25 transaction. 26 27 The Examiner relies upon the following prior art: 28 Lerat US 2002/0010627 Al Jan. 24, 2002 Walker US 2004/0039639 A1 Feb. 26, 2004 Nguyen US 2004/0225606 Al Nov. 11, 2004 29 Claim 26 stands rejected under 35 U.S.C. § 112, second paragraph, as 30 failing to particularly point out and distinctly claim the invention. 31 Claims 1, 6-10, 12-13, 18-22, and 24-26 stand rejected under 35 U.S.C. 32 § 102(b) as anticipated by Lerat. 33 Appeal 2011-003622 Application 11/323,786 4 Claims 2, 3, 5, 14, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as 1 unpatentable over Lerat and Nguyen. 2 Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3 over Lerat, Nguyen, and Walker. 4 Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as 5 unpatentable over Lerat. 6 ISSUES 7 The issues of anticipation and obviousness turn primarily on whether the 8 recited information regarding incentive information and customer account 9 are present on Lerat’s Merchant computer at any point in time, including 10 during the processing of a sale with an incentive. 11 FACTS PERTINENT TO THE ISSUES 12 The following enumerated Findings of Fact (FF) are believed to be 13 supported by a preponderance of the evidence. 14 Facts Related to the Prior Art - Lerat 15 01. Lerat is directed to a means to generate, distribute, exchange, 16 verify and redeem coupons in a public network environment, such 17 as the Internet. This provides a safe way to create and distribute 18 coupons from a Manufacturer to one or more Retailers, while at 19 the same time giving the user all information corresponding to the 20 coupon features. Lerat, para. [0002]. 21 02. Couponing on the Internet has moved from clickable images, 22 password protected discounts and finally transfer of information 23 allowing a server (the Coupon Server) to recognize a client (the 24 Internet user). Lerat, para. [0009]. 25 Appeal 2011-003622 Application 11/323,786 5 03. Lerat describes a way to create and sign digital representations 1 of uniquely identified coupons for users including providing a 2 digital coupon having a serial number, information about a 3 manufacturer, a date of start of validity, a date of end of validity, 4 specific location information for redemption, association with a 5 product or a range of products, information about the product 6 being discounted, discount rules including, but not limited to, 7 amount, currency and type of discount; and embedding a digital 8 signature in the coupon. Lerat, para. [0037]. 9 04. Lerat distributes Digital Coupons over the Internet or over any 10 network using a client and server mechanism including generating 11 a coupon file, signing the digital coupon file; and send the digital 12 coupon to a selected recipient through an Internet protocol. Lerat, 13 para. [0038]. 14 05. Lerat verifies integrity and validity of a selected Digital Coupon 15 at any selected time by presenting to a server responsible for 16 digital Coupon information relevant to price reduction, obtaining a 17 confirmation of validity; generating an error message by the 18 server; and sending the error message to the recipient if the Digital 19 Coupon is not valid. Lerat, para. [0039]. 20 06. Lerat has a user redeem a Digital Coupon at a desired moment 21 of a buying process by verifying by a coupon server validity of a 22 specific coupon, storing information regarding said Digital 23 Coupon in a database, subtracting a price of an item being ordered 24 from the discount specified in the Digital Coupon; and generating 25 Appeal 2011-003622 Application 11/323,786 6 an order regarding the purchase made by the user. Lerat, para. 1 [0040]. 2 07. Lerat’s Digital Coupon Server (DCS) refers to software 3 dedicated to digital coupon template creation and storage in a 4 database, digital coupon creation and transfer at a client's request. 5 Lerat, para. [0046]. 6 08. Lerat gets results from the Digital Coupon Server and modifies 7 the price of products bought by the client accordingly. It interacts 8 with the merchant server software through whatever means is used 9 to keep the context of a buying session, such as cookies or a 10 session ID kept in hidden fields of a form. This specific 11 application is referred to by Lerat as the "Merchant Site-Session 12 Manager." Lerat, para. [0048]. 13 09. Lerat’s Digital Coupon Manager (DCM) refers to software 14 capable of computing coupons downloaded and redeemed, 15 gathering statistical data which is displayed in the form of graphs, 16 analyzing buying patterns among users of digital coupons and 17 proposing a coupon policy taking advantage of best downloaded 18 and redeemed information. Lerat, para. [0047]. 19 10. Lerat’s digital coupon is defined as a set of data describing 20 features of the coupon such as date of start and end of validity, a 21 unique identifier, and a means to prevent forgery of any part of the 22 data. The coupon can also contain an image, which is extracted 23 and displayed by appropriate software. The instantiated coupon is 24 a digitally signed file containing information about the 25 Manufacturer (the entity that creates the digital coupon), the 26 Appeal 2011-003622 Application 11/323,786 7 retailers (the entities that accepts coupons created by the 1 Manufacturer), information about the discount type and nature, 2 discount rules applied to a set of items. Lerat, paras. [0053]-3 [0055]. 4 11. Lerat’s redeem URL calls the MS-Session Manager application 5 on the Merchant system which is interfaced both to the Merchant 6 server application and the digital coupon server. A method is 7 included that allows the MS-Session to undecode the data part of 8 the digital coupon, and update the user's session information on 9 the merchant server, whether this information is stored in a file, on 10 a database server, or in the merchant server's memory. Lerat, 11 paras. [0198]-[0199]. 12 12. In this embodiment of the solution, it is mandatory that all 13 necessary information regarding the digital coupon template be 14 included in the database of the digital coupon server. Although it 15 would be possible for each digital coupon verification to query the 16 remote database of the original manufacturer, such action would 17 not be practically possible, considering the speed requirements 18 due to the real time constraints associated with the redemption 19 process. Lerat, para. [0205]. 20 ANALYSIS 21 Claim 26 rejected under 35 U.S.C. § 112, second paragraph, as failing to 22 particularly point out and distinctly claim the invention. 23 This rejection is moot as claim 26 is cancelled. Reply Br. 2. 24 25 Appeal 2011-003622 Application 11/323,786 8 Claims 1, 6-10, 12-13, 18-22, and 24-26 rejected under 35 U.S.C. 1 § 102(b) as anticipated by Lerat. 2 Claims 2, 3, 5, 14, 15, and 17 rejected under 35 U.S.C. § 103(a) as 3 unpatentable over Lerat and Nguyen. 4 Claims 4 and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over 5 Lerat, Nguyen, and Walker. 6 Claims 11 and 23 rejected under 35 U.S.C. § 103(a) as unpatentable over 7 Lerat. 8 We are not persuaded by the Appellants’ argument that Lerat fails to 9 describe the payment processor server further including at least one database 10 to store information about the incentive and an account related to at least one 11 of the plurality of client computers. Appeal Br. 15-18. 12 Below is a reproduction of Lerat’s Fig. 1, showing what part corresponds 13 to each of the payment processor server and commerce server in the claims. 14 15 Appeal 2011-003622 Application 11/323,786 9 Fig. 1 from Lerat showing that Lerat’s Merchant web site corresponds to 1 the claimed payment processor server, and Lerat’s Digital Coupon Server 2 corresponds to the claimed commerce server. 3 It appears that Appellants do not appreciate the breadth of their claims as 4 drafted. In particular, claim 1 does not limit the time frame that the database 5 Appellants argue about must exist. Examiner found it exists at least during 6 processing of the incentive. The claim also imposes no structural limitation 7 on the database. Thus, any repository of data suffices. 8 As the Examiner found, Lerat instantiates an MS-Session Manager 9 application on the Merchant system which is interfaced both to the Merchant 10 server application and the digital coupon server. A method (term of art for 11 an object procedure written in computer code) is included that allows the 12 MS-Session to undecode the data part of the digital coupon, and update the 13 user's session information on the merchant server, whether this information 14 is stored in a file, on a database server, or in the merchant server's memory. 15 That data part contains information about the incentive. 16 The customer account is already present on the Merchant system, as the 17 transaction is already in progress, and the Merchant system will inherently 18 have a customer account set up either permanently or on the fly in its 19 customer master file for its sales system. The Examiner repeats Lerat’s 20 description of how the digital coupon server validates that coupon, which 21 inherently authorizes a credit for the amount of the incentive to the customer 22 account. 23 Also, as the Examiner found, claim 1 does not actually transfer anything 24 into a customer account. It merely communicates anything that could be 25 Appeal 2011-003622 Application 11/323,786 10 used to authorize payment. Certainly an indication of the validity of the 1 incentive as in Lerat could be used as such. 2 CONCLUSIONS OF LAW 3 The rejection of claim 26 under 35 U.S.C. § 112, second paragraph, as 4 failing to particularly point out and distinctly claim the invention is moot as 5 the claim has been cancelled. 6 The rejection of claims 1, 6-10, 12-13, 18-22, and 24-25 under 35 U.S.C. 7 § 102(b) as anticipated by Lerat is proper. Claim 26 is cancelled. 8 The rejection of claims 2, 3, 5, 14, 15, and 17 under 35 U.S.C. § 103(a) 9 as unpatentable over Lerat and Nguyen is proper. 10 The rejection of claims 4 and 16 under 35 U.S.C. § 103(a) as 11 unpatentable over Lerat, Nguyen, and Walker is proper. 12 The rejection of claims 11 and 23 under 35 U.S.C. § 103(a) as 13 unpatentable over Lerat is proper. 14 DECISION 15 The rejection of claims 1-25 is affirmed. 16 Claim 26 stands cancelled. 17 No time period for taking any subsequent action in connection with this 18 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19 § 1.136(a)(1)(iv) (2011). 20 21 AFFIRMED 22 23 Klh 24 Copy with citationCopy as parenthetical citation