Acoustic, L.P.

Patent Trials and Appeals Board

Sep 3, 2020

15372843 - (D) (P.T.A.B. Sep. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/372,843 12/08/2016 Matthew V. Abbott 10333-2000901 2652
51417 7590 09/03/2020
Mauriel Kapouytian Woods LLP
15 W. 26th Street
7th Floor
New York, NY 10010
EXAMINER
SARKER, SANCHIT K
ART UNIT PAPER NUMBER
2495
NOTIFICATION DATE DELIVERY MODE
09/03/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@mkwllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW V. ABBOTT, DAVID ALVARADO,
JASON B. BRETT, ERIC BUSLER, JASON CAI,
JEFFREY S. DERNAVICH, and SERGEY TSYMBLER
Appeal 2019-006653
Application 15/372,843
Technology Center 2400

Before JENNIFER S. BISK, JASON J. CHUNG, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 4–21, all of the claims under
consideration. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments
were heard on August 27, 2020. A transcript of that hearing will be added to
the record in due time.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies International Business Machines
Corporation as the real party in interest. Appeal Br. 2.
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Application 15/372,843

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CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to automatically
suspending electronic communications to a user for a period if a magnitude
of user sales does not exceed a threshold. Spec. ¶ 34.2 According to
Appellant, the electronic communications may include “advertisements,
fliers, mailings . . . and/or other types of marketing materials to announce
sales and promote the sale of items.” Spec. ¶ 2.
Claims 1, 4, and 14 are independent. Independent claim 1 is
reproduced below, with certain limitations at issue emphasized, and is
illustrative of the claimed subject matter:
1. A non-transitory computer-readable medium
embodying a program executable in a computing device,
comprising:
code configured to receive a first request to suspend
transmission of electronic communications to a recipient during
a suspension period, wherein the first request is associated with
a recipient identifier (ID) and is received in response to a
determination to suspend transmission, wherein the
determination to suspend transmission is based at least in part
on a magnitude of sales to the recipient that is associated with
a previous transmission of electronic communications to the
recipient, and wherein the sales include transactions initiated
from the previous transmission of electronic communications to
the recipient;

2 Throughout this Decision we refer to: (1) Appellant’s Specification filed
December 8, 2016 (“Spec.”); (2) the Final Office Action (“Final Act.”)
mailed October 5, 2018; (3) the Appeal Brief filed April 8, 2019 (“Appeal
Br.”); and (4) the Examiner’s Answer (“Ans.”) mailed July 9, 2019; and
(5) the Reply Brief filed September 9, 2019 (“Reply Br.”).
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code configured to associate the recipient ID with a
suspension state in response to receiving the first request to
suspend transmission of the electronic communications;
code configured to receive a second request to transmit
an electronic communication to the recipient; and
code configured to prevent transmitting the electronic
communication to the recipient during the suspension period
based on the association of the recipient ID with the suspension
state.
Appeal Br. 21 (Claims Appendix).
REFERENCES
The references3 relied upon by the Examiner are:
Name Reference Date
Bhargava et al. US 2003/0204568 A1 Oct. 30, 2003
Becker US 2003/0233413 A1 Dec. 18, 2003
Ahopelto et al. US 2010/0291953 A1 Nov. 18, 2010
Packer US 2012/0143692 A1 June 7, 2012
REJECTIONS
The Examiner rejects claims 1, 2, 4, 6, 8–10, 14, 15, 18, 19, and 21
under 35 U.S.C. § 103 as unpatentable over Becker and Packer. Final
Act. 12–22.
The Examiner rejects claims 5, 7, 11–13, 16, and 17 under 35 U.S.C.
§ 103 as unpatentable over Becker, Packer, and Ahopelto. Id. at 23–28.
The Examiner rejects claim 20 under 35 U.S.C. § 103 as unpatentable
over Becker, Packer, and Bhargava. Id. at 28–29.

3 All citations to the references use the first-named inventor or author only.
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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv)(2017).
Independent claim 1 recites, in part, code configured to receive a first
request to suspend transmission of electronic communications, “wherein the
first request . . . is received in response to a determination to suspend
transmission, wherein the determination to suspend transmission is based at
least in part on a magnitude of sales to the recipient that is associated with a
previous transmission of electronic communications to the recipient.” The
Examiner notes “Becker does not explicitly disclose wherein the
determination to suspend transmission is based at least in part on a
magnitude of sales to the recipient that is associated with a previous
transmission of electronic communications to the recipient . . . .” Final
Act. 14. The Examiner relies on Packer’s discussion of “a consumer
interface to limit the quantity of advertisements received” to teach or suggest
the limitation at issue. Id. (citing Packer ¶¶ 33, 45, 62, 63, 67).
Appellant argues that “Packer merely discusses a consumer interface
through which consumers may be targeted for advertisements and/or may
manually opt out of advertisements” but “does not disclose suspending
transmission of advertising messages that is based on a magnitude of sales to
the recipient.” Appeal Br. 13 (emphasis omitted).
Appellant’s argument is persuasive. Claim 1 requires that the
determination to suspend transmission of electronic communications is
based on a magnitude of sales to the recipient. The Examiner, however,
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does not show sufficiently where Packer or Becker teaches or suggests
calculating a magnitude of sales, let alone using a magnitude of sales to the
recipient in connection with a determination to suspend transmission of
electronic communications to the recipient.
The Examiner explains that “Packer shows sharing money, generation
of money, receiving payments and incentive[s] based on advertisements that
are relative to money that related to sale[s]” and that “Packer further teaches
that consumer interface[s] also track account information.” Ans. 4 (citing
Packer ¶¶ 63, 67, 68).
Even so, Packer is silent regarding determining a magnitude of sales
to a recipient. Consequently, although Packer describes that a consumer
may be able to “block an advertiser” (¶ 63), “use consumer interface 207 to
limit the quantity of advertisements received” (¶ 61), or use scheduler 213 to
place restrictions on advertisements (¶¶ 67, 68), the Examiner does not show
how Packer teaches or suggests suspending advertisements to a recipient
based on a magnitude of sales to the recipient (Reply Br. 4).
Accordingly, we find persuasive Appellant’s argument that the
Examiner has not demonstrated sufficiently that the combination of Packer
and Becker teaches or suggests suspending transmission of electronic
communications to a recipient based at least in part on a magnitude of sales
to the recipient, as recited in claim 1.
Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 1, we need not reach the merits of
Appellant’s other arguments. Accordingly, based on the record before us,
we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of independent
claim 1. We also reverse the rejection of independent claims 4 and 14,
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which recite commensurate limitations, and of dependent claims 2, 6, 8–10,
18, 19, and 21, for similar reasons.
With respect to the remaining obviousness rejections of claim 5, 7,
11–13, 16, 17, and 20, the Examiner does not rely on the additionally cited
references, Ahopelto or Bhargava, to cure the deficiency noted for claim 1.
Accordingly, we do not sustain these obviousness rejections for the reasons
set forth above for claim 1.
CONCLUSION
We reverse the Examiner’s rejections of claims 1, 2, and 4–21 under
35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6,
8–10, 14,
15, 18,
19, 21
103 Becker, Packer 1, 2, 4, 6,
8–10, 14,
15, 18,
19, 21
5, 7, 11–
13, 16,
17
103 Becker, Packer,
Ahopelto
5, 7, 11–
13, 16,
17
20 Becker, Packer,
Bhargava
20
Overall
Outcome
1, 2,
4–21

REVERSED