Ex Parte Bergh et al

Patent Trial and Appeal Board

Jul 11, 2016

13100447 (P.T.A.B. Jul. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/100,447 05/04/2011 Christopher P. Bergh
112978 7590 07113/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920115013US6_8150-0175 2983
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/13/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER P. BERGH, MICHAELS. BAUER,
SIDRA MICHON, ZACK MILOUSHEV, KEVIN FURBISH,
CHARLES EVETT, GREGORY ERMAN, and
JOHN MANDEL
Appeal2014-004654 1
Application 13/100,447
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 17-31. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to managing and distributing offers.
Spec. 1, 1. 12.
1 The Appellants identify Unica Corp. as the real party in interest. Appeal
Br. 1.
Appeal2014-004654
Application 13/100,447
Claim 17 is illustrative:
17. A computer-implemented method comprising:
retrieving, by one or more computers, information
indicative of one or more offers sent to customers during
marketing campaigns;
receiving, by the one or more computers, information
indicative of one or more completed commercial transactions
prompted by the one or more offers sent to the customers;
matching, by the one or more computers, the one or more
offers to the one or more completed commercial transactions;
and
generating, by the one or more computers, statistical
measures that relate the offers to the completed transactions in
the marketing campaigns.
Claims 17-20, 22-25, and 27-30 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Christensen (US 5,710,886, iss. Jan. 20, 1998).
Claims 21, 26, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Christensen and Official Notice.
We AFFIRM.
ANALYSIS
Claims 17-20, 22-25, and 27-30
The Appellants argue claims 17-20, 22-25, and 27-30 together as a
group (Appeal Br. 11), so we select claim 17 as representative. See 37
C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by the Appellants' argument that Christensen
fails to disclose the Examiner's paraphrasing of claim language of "keeping
track who receives ads during the ad campaign." Appeal Br. 11; see also
Reply Br. 2. As an initial matter, the actual claim language at issue is
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"retrieving . . . information indicative of one or more offers sent to
customers during marketing campaigns." Moreover, with respect to that
claim language, the Examiner cites to Figure 5, which includes step 506,
"Download to Database." Final Act. 2. Specifically, Christensen discloses
step 506 involves marketing information that is "downloaded to the
consumer database as illustrated in step 506. The consumer database may
contain names of consumers selected to receive SELLECTSOFTâ„¢ diskette
310, as well as demographic data for each consumer." Christensen, col. 7, 11.
61---65. The database further updates a unique identification number for each
customer that received a diskette of coupon offers. Id. at col. 7. 1. 65 to col.
8, 1. 1. Christensen, thus, keeps in its database for later use "information
indicative of one or more offers sent to customers during marketing
campaigns," as claimed.
We are not persuaded by the Appellants' argument that "while a
coupon may accompany an offer, it is not an offer itself, as that term is used
by Appellants." Appeal Br. 11-13; see also Reply Br. 3. The Appellants
explicitly define the term "offer" to encompass any communication with
customers. Spec. 4, 11. 23-25 ("The term 'offer' includes various types of
solicitations, advertisements, or any information-containing communication
with the customer"). Although the Appellants additionally describe an
example where an offer also includes a "discount coupon," this is referred to
explicitly as an example, and is not sufficient to redefine the term "offer" to
exclude all "coupons." Spec. 11, 11. 20-23 ("Another example is an offer
that is triggered by a customer providing registration information at a Web
site, such as an offer with a discount coupon for a purchase from a web site
at which the customer registered"). We, thus, construe an offer in light of
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Application 13/100,447
the Specification as an information-containing communication with a
customer, which is met by Christensen's coupons. Christensen, col. 4, 11.
17-21.
We are also not persuaded by the Appellants' argument that the
Examiner "has not established that Christensen identically discloses" it
applies to "multiple campaigns" as claimed. Appeal Br. 13; see also Reply
Br. 3. Christensen discloses expressly the application of its system to
multiple campaigns. Christensen, col. 4, 11. 44--45 ("It is an object of the
present invention to improve consumer response to coupon distribution
campaigns").
We are not persuaded by the Appellants' argument that Christensen's
capturing and saving a unique customer ID number on a coupon is not
"information indicative of one or more completed commercial transactions,"
as claimed. Appeal Br. 13; see also Reply Br. 3--4. Christensen discloses
tracking completed commercial transactions, stating:
Once redeemed at the retailer, paper coupons are
traditionally sorted, counted, and returned to a coupon depository
for further redemption and processing. In step 703, at the coupon
depository, such coupons may be further scanned to capture
product information data and consumer ID data from the first and
second bar code portions. From this data, it may be determined
exactly which consumers purchased which particular products
and from which retailers.
Christensen, col. 10, 11. 43-50. Christensen, thus, records exactly which
coupons for which customers led to completed commercial transactions.
Finally, we are not persuaded by the Appellants' argument that
Christensen fails to disclose matching offers to transactions, because
Christensen's "step 510 does not keep track of offers redemption." Appeal
Br. 15. Christensen stores precisely which customers purchase which
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products using coupons (Christensen, col. 10, 11. 43-50), updates the
database with this information (col. 12, 11. 23-27), and permits reports and
queries on the information stored in the database (col. 16, 11. 14--19), with
the purpose to "provide more accurate data of which consumers redeem
particular coupons in a coupon distribution campaign" (col. 4, 11. 25-27).
For these reasons, we sustain the rejection of claims 17-20, 22-25,
and 27-30.
Claims 21, 26, and 31
Each of dependent claims 21, 26, and 31 recite:
determining a first number of the one or more completed
commercial transactions that are matched to a particular offer;
determining a second number of customers to which the
particular offer was sent; and
comparing the first number to the second number.
The claims, thus, recite steps to compare the numbers of offers
executed to offers extended. The claims do not recite how the comparing is
used, but the Specification describes that the "cost of delivering the offers
(including the costs of the promotions) are compared to the returns generated
by the offers to generate these reports." Spec. 19, 11. 17-19.
We are not persuaded by the Appellants' argument that the "Examiner
has not taken Official Notice of the actual limitations being claimed."
Appeal Br. 15-16. The Examiner finds "that it is old and well known to
compare how the different customers are responding to the offers/ads in
order to better target subsequent offers based on the comparison." Final Act.
4. The ordinary artisan would recognize that this encompasses the claim
language. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a
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reference does not have to satisfy an ipsissimis verbis test to disclose a
claimed element).
For these reasons, we sustain the rejection of claims 21, 26, and 31.
DECISION
We AFFIRM the rejections of claims 17-31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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