Ex Parte Barnett et al

Patent Trial and Appeal Board

Nov 22, 2013

09879825 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CRAIG W. BARNETT, KAREN R. REISNER, and
MARK BRAUNSTEIN
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Appeal 2012-001682
Application 09/879,825
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 47, 57, and 64-73. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We reverse and enter a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).

BACKGROUND
Appellants’ invention is directed to distributing coupons to remotely
connected consumer computers and for collecting user-specific data
regarding coupon usage and user demographic information from the remote
computers. (Spec. 1:3-10).
Claim 47 is illustrative:
47. A system for distributing and redeeming electronic
coupons comprising:
a first server system including a computer processor and
associated memory, said first server system being connected by
a communications channel to a client system, said first server
system being adapted for transmitting an electronic coupon to
said client system over said communications channel;
said client system including a computer processor and
associated memory, said client system being adapted for storing
said electronic coupon in said memory;
a second server system connected to said
communications channel, said second server system being
adapted to establish a connection with said client system and
for detecting said electronic coupon stored on said client
system, said second server system further being adapted to
redeem said electronic coupon; and
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wherein said electronic coupon includes data uniquely
identifying the coupon relative to all other coupons transmitted
by said first server system;
wherein said associated memory of said first server
system defines a database;
wherein said database stores coupon offer data defining
available coupon offers, user record data defining user records,
and targeting criteria applicable to said user records to
determine which of said available coupon offers to associate
with which of said user records;
wherein each one of said user records stores
(1) a user identification that is different from all other
user identifications stored in all other records of said user
records,
(2) information regarding coupons redeemed;
(3) data indicating which of said available coupon offers
are to be offered;
said first server system programmed to respond to receipt
over a network of a coupon request prompt from said client
system, said coupon request prompt including a particular user
identification and identification of a particular one of said
available coupon offers, by transmitting from said server
system to said client system, data defining a particular coupon,
wherein said data defining said particular coupon
encodes both said particular user identification and said
particular one of said available coupon offers, wherein said first
coupon offer is a coupon offer associated in said database with
said particular user identification; and
said first server system being programmed to respond to
receipt from a coupon redemption network address of said
second server system, of coupon redemption data indicating an
attempt to redeem said particular coupon by comparing said
coupon redemption data with said information regarding
coupons redeemed in said database, to thereby determine
whether said particular coupon was previously redeemed.

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Appellants appeal the following rejections:
Claims 47, 57, and 64-73 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Von Kohorn (US 5,227,874, iss. Jul. 13, 1993), Saigh
(US 5,734,823, iss. Mar. 31, 1998), and Cameron (US 5,592,378, iss. Jan 7,
1997).
Claims 47, 57, and 64-73 also are rejected under 35 U.S.C. § 103(a) as
unpatentable over Von Kohorn and Cameron.

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
1. Von Kohorn discloses:
Al1 coupons, by their numbers or other identifications,
can be traced to the household having requested them. This
makes it possible to compare the coupons requested and
redeemed with the coupons requested and not redeemed by
individual families or shopping units. The method also permits
an evaluation of each individual stimulus or advertisement
household by household.
(Col. 2, ll. 20-27).
2. Von Kohorn discloses “[b]y replacing the recording media, such as rolls
of paper tape, periodically, and by stipulating redemption of the record
thus created within a specified time period, the unauthorized
reproduction, tampering with and counterfeiting of the marked
recording media can, for all practical purposes, be prevented.” (Col. 16,
ll. 18-23).
3. Von Kohorn discloses
Each time a winning coupon is presented at a redemption
center, the winner of such a prize is required to present the
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verification card. The numbers on the winning coupon and on
the card are compared to verify their matching. When the
coupon is redeemed, the corresponding space or box in the
verification card are canceled or invalidated by any one of
many known methods, such as marking, punching, tearing off,
stamping and the like. When 100 coupons have been presented,
both the paper tape and the verification card have been used up.
(Col. 17, ll. 10-20).
4. Von Kohorn discloses:
The system can be superposed upon a variety of game and quiz
shows to permit viewer participation without interference with
existing show formats, and has the advantage of expanding the
television audience, thereby attracting sponsors of the shows.
The machine readable card 48, or a one-time coupon which
may be outputted by the dispenser 46, may be presented or
redeemed for prizes by successful participants at a local store or
other business establishment cooperating with the broadcaster.
(Col. 20, ll. 34-43).
5. Von Kohorn discloses “[i]t is another object of the invention to quantify
the impact on shoppers of a number of control1ed variables
of an advertising or promotional campaign, individually
or in combination.” (Col. 1, ll. 55-58).
6. Von Kohorn discloses:
The difference between these two sets of data [the total of
coupons requested and the total of coupons redeemed]
represents the loss of sales due to a change of heart by a
shopper following the time of exposure to the identified
stimulus.
By identifying on each coupon the wanted product, the
stimulus responsible for the initial buying decision and the
member of a household, the method generates a person-by-
person behavior pattern and reaction to discrete stimuli and to
controlled variations thereof.
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(Col. 3, ll. 28-37).
ANALYSIS
Claims 47, 57, and 64-71
Each of independent claims 47, 57, 68, and 71 recite language
substantially similar to “comparing said coupon redemption data with said
information regarding coupons redeemed in said database, to thereby
determine whether said particular coupon was previously redeemed.” The
Examiner cites to Von Kohorn, column 2, lines 20-27 as disclosing this
limitation (Ans. 4, 16), and to column 16, lines 17-25, column 17, lines 10-
20, and column 20, lines 35-45 as disclosing a similar limitation. (Ans. 38).
We are persuaded by Appellants’ argument that Von Kohorn “only
discloses tracing coupons to individuals” but fails to disclose the comparing
of coupons to determine whether a coupon was previously redeemed. (App.
Br. 49; see also Reply Br. 4-5).
The cited sections of Von Kohorn do not disclose comparing coupon
data with information regarding coupons already redeemed. (FF 1-4). At
best, Von Kohorn compares groups of redeemed and unredeemed coupons,
presumably comparing the attributes that distinguish what products and
services were purchased from those not purchased, so individual motivations
can be understood. (FF 5). If a copied coupon appears, this compare
wouldn’t detect a duplicate, but would just investigate the copied coupon
user just like other coupons. (FF 6).
Therefore, we will not sustain the rejections under 35 U.S.C. § 103(a)
of independent claims 47, 57, 68, and 71. We also will not sustain the
rejection under 35 U.S.C. § 103(a) of dependent claims 64-67, 69, and 70.

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New ground of rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection. Claims 72 and 73 are rejected under 35 U.S.C. §
112, second paragraph, as indefinite, because they depend from canceled
claim 50. Therefore, their precise claim scope cannot be determined.
Obviousness
Having determined that claims 72 and 73 are indefinite under § 112,
second paragraph, we cannot reach the Examiner's rejection of the same
claims under § 103(a), because such a determination would require
speculation as to the meaning of the claims. See, In re Steele, 305 F.2d 859,
862 (CCPA 1962) (stating that rejections under 35 U.S.C. § 103 should not
be based upon “considerable speculation as to [the] meaning of the terms
employed and assumptions as to the scope of the claims”); In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970) (stating that “[i]f no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious”).
Therefore, we reverse pro forma the Examiner's rejections under 35
U.S.C. § 103(a) of claims 72 and 73.

DECISION
We reverse the rejections under 35 U.S.C. § 103(a) of claims 47, 57,
and 64-73.
We enter a new ground of rejection under 35 U.S.C. § 112, second
paragraph, of claims 72 and 73.

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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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