Ex Parte Agrawal et al

Board of Patent Appeals and Interferences

Jan 9, 2012

10317354 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ASEEM AGRAWAL, NATWAR MODANI,
PARUL A. MITTAL, and RAJENDRA SUREKA
____________

Appeal 2010-011462
Application 10/317,354
Technology Center 3600
____________

Before: HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-3, 5-6, 11-14,
and 25-27. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6 (2002).
The claimed invention is directed to discounting and promotion of
goods and services to consumers over a communications network, including
managing electronic items such as electronic coupons, gift certificates,
shopping cart content, etc., used in electronic commerce (Spec. 1:4-7).
Claim 1, reproduced below, is further illustrative of the claimed subject
matter.
1. A computer-implemented method for managing one of
an electronic-coupon (e-coupon) and an electronic-gift
certificate (e-gift certificate), acquired by a user across multiple
browsing sessions at a computerized e-commerce website,
without said user registering at said computerized e-commerce
website, the method comprising:
acquiring, by said user, said one of an e-coupon and an e-
gift certificate during an initial browsing session to said
computerized ecommerce website, without said user registering
at said computerized ecommerce website;
associating said acquired one of an e-coupon and an e-
gift certificate and said user by a computerized e-commerce
webserver that provides a computerized e-wallet for said user;
upon ending said initial browsing session, redirecting
said user to said computerized e-wallet, using said web server;
saving, by said user, said acquired one of an e-coupon
and an e-gift certificate in said computerized e-wallet;
receiving, by said web server, from said user, an email
address of said user; and
sending an email to said user, from said web server, said
email including a coded Universal Resource Locator (URL) that
when subsequently used, accesses information related to said
saved one of an e-coupon and an e-gift certificate in a
subsequent browsing session by said user.
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Claims 12, 13, 14, 26, and 27 stand rejected under 35 U.S.C. § 102(e)
as unpatentable over Bezos (US 7,512,548 B1, iss. Mar. 31, 2009); claims 1-
3, 5, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Bezos in view of Official Notice (supported by Hamor (US 6,976,003 B1,
iss. Dec. 13, 2005) and Gillin (US 7,010,512 B1, iss. Mar. 7, 2006)); claim 6
stands rejected under 35 U.S.C. § 103(a) as unpatentable over Bezos in view
of Official Notice and Val (US 6,898,571 B1, iss. May 24, 2005); and claim
11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Bezos in
view of Official Notice and Kernahan (US Pub. 2002/01289803 A1, publ.
Sep. 12, 2002).
We REVERSE.

ISSUES
Did the Examiner err in asserting that Bezos anticipates independent
claim 121? The issue turns on whether Bezos explicitly or inherently
discloses “sending an email to said user, from said webserver, said email
including a coded Universal Resource Locator (URL) that when
subsequently used, accesses information related to said saved item in a
subsequent browsing session by said user,” as recited in independent claim
12.
Did the Examiner err in asserting that a combination of Bezos and
Official Notice renders obvious independent claim 12? The issue turns on

1 We choose independent claim 12 as representative of independent claims
12 and 26, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
2 We choose independent claim 1 as representative of independent claims 1
and 25, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
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whether a combination of Bezos and Official Notice renders obvious
“sending an email to said user, from said webserver, said email including a
coded Universal Resource Locator (URL) that when subsequently used,
accesses information related to said saved one of an e-coupon and an e-gift
certificate in a subsequent browsing session by said user,” as recited in
independent claim 1.

FINDINGS OF FACT
Bezos
FF1. Bezos discloses a system and method that enable a personal
shopping cart to be used to select items from multiple web sites of multiple
business entities, and to place a single order for the selected items. The
shopping cart may remain persistent over multiple sessions of the user
(Abstract; col. 1, l. 56 through col. 2, l. 15; col. 15, ll. 33-48; col. 16, ll. 13-
26).
FF2. Bezos discloses that because identity of the customer is
normally unknown to the merchant Web site 106 at the time of the referral
event, the site 106 uses cookies technology to identify the customer, so that
the customer can be associated with any existing shopping cart created
during previous visits to the site 106. If no shopping cart exists for the
customer, or if no cookie exists on the customer computer 108, a shopping
cart structure is created for the user. Any of a variety of alternative
techniques can be used to identify the customer, including prompting the
customer for a user ID, and/or using URL information returned by the
customer's Web browser (col. 6, l. 61 through col. 7, l. 8).
FF3. Although an embodiment described in Bezos uses Web
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technology to disseminate the catalog documents, any of a variety of
document types and electronic dissemination technologies can be used. For
example, the associate's catalog documents may be in the form of
hypertextual e-mail messages that are disseminated by a list server, or PUSH
documents disseminated by a PUSH server (col. 7, ll. 9-15).
FF4. Bezos further discloses that upon completing an electronic
application form 204 for enrolling an associate, it is sent from the associate's
computer 200 to the merchant Web server 132 for further processing. Other
forms of enrollment processing may be used, including but not limited to
regular mail and electronic mail (col. 8, ll. 61-67).

ANALYSIS
102(e) Rejection of Independent Claim 12
We are persuaded the Examiner erred in asserting that Bezos
anticipates independent claim 12 (App. Br. 8-16; Reply Br. 3-6). Appellants
set forth specific arguments as to why Bezos does not disclose the last
paragraph of independent claim 12 (App. Br. [0007]-[0009]). While the
Examiner does acknowledge Appellants’ arguments on pages 8-9 of the
Examiner’s Answer, the substance of the Examiner’s rejection concerning
the last aspect of independent claim 12 is solely as follows:
receiving e-mail address and sending email to said user, said
email including a coded universal resource locator that when
used, accesses information related to said saved item in
subsequent browsing session by said user (see column 7, lines
9-14 whereby any of a variety of document types and electronic
dissemination technologies can be user, for example e-mail
messages (examiner interprets sending email to said user with
coded URL as implicitly an option of the designer).

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(Exam’r’s Ans. 5; emphasis added).
Examiner interprets any variety of alternatives techniques to logically
implicitly include e-mail.

(Exam’r’s Ans. 9). As this is an anticipation rejection under 102(e),
however, and the “option of the designer” is only available in an
obviousness analysis, we are left with the Examiner’s assertion that the
aforementioned aspect is implicitly disclosed by Bezos. However, an
analysis of the cited portions of Bezos shows that this is not the case.
Simply put, the last aspect of independent claim 12 recites sending an
e-mail to a user that includes a URL to a saved item from a previous
browsing session. Bezos disclose saved items (FF1). Portions of Bezos also
disclose identifying customers using various techniques, including URL
information returned by the customer's Web browser, but not that this URL
was sent to the user via an e-mail (FF2). Further portions of Bezos
additionally disclose disseminating catalog information via e-mail, but not
including URL information to saved items (FF3). Other portions of Bezos
disclose enrolling associates via e-mail, but not including URL information
to saved items (FF4).
Accordingly, we do not sustain the rejection of independent claims 12
and 26, or their dependent claims 13, 14, and 27.

103(a) Rejection of Independent Claim 11
We are persuaded the Examiner erred in asserting that a combination
of Bezos and Official Notice renders obvious independent claim 1 (App. Br.
16-19; Reply Br. 6-9). Initially, we note that the citation of Official Notice
is solely directed to e-coupons, e-gift certificates, and e-wallets (Exam’r’s
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Ans. 7). Indeed, the rejection of “sending an email to said user, from said
webserver, said email including a coded Universal Resource Locator (URL)
that when subsequently used, accesses information related to said saved one
of an e-coupon and an e-gift certificate in a subsequent browsing session by
said user,” as recited in independent claim 1, is essentially identical to that
set forth previously with respect to the corresponding aspect of independent
claim 12 (Exam’r’s Ans. 6).
We have previously discussed how Bezos does not implicitly disclose
the aforementioned aspect of independent claim 12. That analysis is also
applicable here. Unlike the rejection for independent claim 12, as this is an
obviousness rejection, the “option of the designer” is available to the
Examiner. However, the Examiner has not set forth any prima facie analysis
as to specifically how the various portions of Bezos could be combined to
render obvious sending an e-mail to a user that includes a URL to a saved
item from a previous browsing session. Furthermore, the Examiner has not
set forth any reasoning or rationale as to why it would be desirable to do so.
Accordingly, we do not sustain the rejection of independent claims 1
and 25, or their dependent claims 2, 3, 5, 6, and 11.

DECISION
The rejections of claims 1-3, 5-6, 11-14, and 25-27 are REVERSED.

REVERSED

mls