Ex Parte Holmen et al

Patent Trial and Appeal Board

Jul 22, 2013

10530878 (P.T.A.B. Jul. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC HOLMEN, MARK HERTENSTEIN, and
DAVID DIAMOND
___________

Appeal 2011-010102
Application 10/530,878
Technology Center 3600
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Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
THOMAS F. SMEGAL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010102
Application 10/530,878

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STATEMENT OF THE CASE
Eric Holmen et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-12 and 14-43. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A computer network implemented method,
comprising:
receiving, in a computer system including at
least one digital computer including associated
central processor, memory, input, and output
devices, a CID;
determining, using said computer system,
whether CID associated data associated with said
CID meets invitation offer criteria associated with
an invitation code;
storing, using said computer system, said
CID in memory in association with said invitation
code when said CID associated data meets said
invitation offer criteria;
storing, using said computer system, in

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 4, 2011) and Reply Brief (“Reply Br.,” filed Jun. 7, 2011),
and the Examiner’s Answer (“Ans.,” mailed May 12, 2011).

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association with said invitation code, contract
terms comprising terms for a contract for a
subscription to a periodical publication;
transmitting, to an offer terminal, data
defining said CID and said invitation code in order
to provide an invitation to a consumer;
receiving, from an acceptance terminal, said
invitation code in association with said CID
subsequent to said transmitting, thereby indicating
acceptance of said invitation by said consumer;
and
storing in computer memory, said CID in
association with a transaction tracking code.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Walker
Herz
US 5,926,796
US 6,571,279 B1
Jul. 20, 1999
May 27, 2003

The following rejections are before us for review:
1. Claims 16, 19, 24, 38, and 39 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention.
2. Claims 1-12, 14-29, 33, and 40-43 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Walker.
3. Claims 32 and 34-39 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Walker.
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4. Claims 30 and 31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Walker and Herz.
ISSUE
The major issue is whether Walker describes the following steps of
claim 1:
determining, using said computer system,
whether CID associated data associated with said
CID meets invitation offer criteria associated with
an invitation code;
storing, using said computer system, said
CID in memory in association with said invitation
code when said CID associated data meets said
invitation offer criteria;
storing, using said computer system, in
association with said invitation code, contract
terms comprising terms for a contract for a
subscription to a periodical publication; [and]
transmitting, to an offer terminal, data
defining said CID and said invitation code in order
to provide an invitation to a consumer.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
We adopt the Examiner’s findings of fact with regards to the Walker
reference.

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ANALYSIS
The rejection of claims 16, 19, 24, and 38-39 under §112, second
paragraph, as being indefinite
The rejection of claims 16, 19, 24, 38 and 39 under 35 U.S.C. § 112,
second paragraph, is pending. The Appeal Brief does not contain any
arguments contesting or mentioning this pending rejection. The Reply Brief
does contain an argument contesting this rejection. However, “[a]ny
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer, including
any designated new ground of rejection, will not be considered by the Board
for purposes of the present appeal, unless good cause is shown.” 37 C.F.R. §
41.41(b)(2). Accordingly, the rejection of claims 16, 19, 24, 38, and 39
under 35 U.S.C. § 112, second paragraph, is summarily affirmed. In the
interest of judicial efficiency, we will address the rejections of claims 16, 19,
24 under 35 U.S.C. § 102(b) and 38-39 under 35 U.S.C. § 103(a) below.

The rejection of claims 1-12, 14-29, 33, and 40-43 under § 102(b) as being
anticipated by Walker
We are not persuaded by the Appellants’ arguments that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Walker. We agree with the Examiner’s argument on pages 22-29 of the
Answer, which we will not repeat here, that when given the broadest
reasonable construction, in light of the Specification, Walker describes each
of the four contested limitations (see supra 4). As the Examiner points out,
the Appellants’ arguments are not commensurate with the scope of claim 1.
For example, the contested determining step does not required “processing
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based on the identity of the consumer,” as the Appellants argue (App. Br. 4-
5), but more broadly requires determining whether data associated with the
CID meets criteria associated with an invitation code.
Accordingly, the rejection of claims 1-12, 14-29, 33, and 40-43 under
35 U.S.C. § 102(b) as being anticipated by Walker is sustained.

The rejection of claims 32 and 34-39 under §103(a) as being unpatentable
over Walker and the rejection of claims 30 and 31 under §103(a) as being
unpatentable over Walker and Herz
We also shall sustain the standing 35 U.S.C. § 103(a) rejections of
dependent claims 30-32 and 34-39 as being unpatentable over the cited prior
art because the Appellants have not challenged such with any reasonable
specificity, thereby allowing claims 30-32 and 34-39 to stand or fall with
their parent claims (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

DECISION
The decision of the Examiner to reject claims 1-12 and 14-43 is
affirmed.
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).

AFFIRMED

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