Ex Parte Ionescu et al

Patent Trial and Appeal Board

Nov 21, 2018

13547819 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/547,819 07/12/2012
106095 7590 11/26/2018
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
FIRST NAMED INVENTOR
Stefan Ionescu
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.
063170.9763 2757
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN IONESCU, STEVEN L. GREENSPAN,
VINCENT R. RE, WEI-JUN KONG, NAGA VARDHAN SOGAL, and
ESIN KIRIS
Appeal2017-007001
Application 13/547,819 1
Technology Center 3600
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is CA, Inc. (Appeal
Br. 3.)
Appeal2017-007001
Application 13/547,819
CLAIMED SUBJECT MATTER
Appellants' invention relates to "receiving an identification of an
intended recipient of a physical package and a personalized message having
content based on the identity of the intended recipient" and "transmitting the
personalized message." (Spec. ,r 4.)
Claims 1 and 7 are the independent claims on appeal. Claim 1 is
illustrative. It recites ( emphasis added):
1. A method, comprising:
receiving an identification of an intended recipient of a
physical package and a first personalized message having content
based on the identity of the intended recipient;
identifying a uniform resource locator (URL) comprising
a reference to a first webpage that displays the first personalized
message;
generating, by one or more processors, a Quick Response
(QR) code encoding the URL comprising the reference to the
first webpage that displays the first personalized message;
determining an access time of the intended recipient
accessing the URL encoded by the QR code;
determining whether the access time of the intended
recipient is prior, equal to, or after a predetermined time;
transmitting the first personalized message to the intended
recipient via the first webpage when the access time is prior or
equal to the predetermined time; and
redirecting the intended recipient from the first webpage
to a second webpage that displays a second personalized
message when the access time is after the predetermined time,
wherein the second personalized message is distinct from the
first personalized message.
REJECTION
Claims 1-14 are rejected under 35 U.S.C. § I03(a) as unpatentable in
view ofNidamarthi (US 8,444,048 Bl, iss. May 21, 2013), Kim
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Application 13/547,819
(US 2012/0181330 Al, pub. July 19, 2012), and Ciancio-Bunch
(US 2011/0066692 Al, pub. Mar. 17, 2011).
ANALYSIS
Obviousness is a legal conclusion involving a determination of four
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) ( quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Ciancio-Bunch teaches "redirecting the intended recipient from the
first webpage to a second webpage that displays a second personalized
message when the access time is after the predetermined time, wherein the
second personalized message is distinct from the first personalized
message." (Final Action 5, citing Ciancio-Bunch ,r,r 51 and 52; see also
Answer 3--4, citing Ciancio-Bunch ,r,r 51-54.)
Appellants disagree and argue that
Ciancio-Bunch describes an email system that opens a coupon
image if the coupon has not yet expired and if the coupon has
expired, displays an "Invalid Coupon" image to display on top of
the coupon image. Ciancio-Bunch at ,r,r [0051 ], [0052]. The
email engine retrieves an image stored in a database associated
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with the coupon to render the "Invalid Coupon" image. Id.
Ciancio-Bunch is thus entirely silent as to ... transmitting the
first personalized message to the intended recipient via the first
webpage when the access time is prior to or equal to the
predetermined time, and redirecting the intended recipient from
the first webpage to a second webpage when the access time is
after the predetermined time, as recited in Claim 1. Rather,
Ciancio-Bunch teaches rendering images and displaying images
in the absence of webpages.
(Appeal Br. 13.)
Ciancio-Bunch discloses "[a] system for introducing live content into
an electronic mail message comprising at least one dynamic live content area
sent through an e-mail service provider system." (Ciancio-Bunch, Abstract.)
Ciancio-Bunch further discloses that a retailer may offer coupons to
consumers through an email system. (Id. ,ISO.) In one disclosed
embodiment,
when a coupon has been rendered at the time of the first opening
of the e-mail 1100, the same coupon is rendered ... each time
that e-mail is opened. If the e-mail is reopened after the
expiration date of the coupon, an image may be stored in the
database associated with the coupon that causes the e-mail
engine to render an "Invalid Coupon" image on top of the coupon
image or and [sic] "Offer No Longer Valid" image in place of
the coupon image.
(Id. ,r 51.) Ciancio-Bunch further discloses that live content may be
embedded in the email and that this live content can include a code. (Id.
,r 52.) The code may be "a parameterized image IMG call" and "internet
visible values ( e.g. in URL parameters) may be encoded in the
parameterized image call as a security measure to limit the ability of a
recipient to change values." (Id.)
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The Examiner "interpret[ s] the first rendering of the email [ in
Ciancio-Bunch] at a first time period to be the first webpage." (Answer 2.)
But, here, Appellants' Specification distinguishes between a URL and, "e.g.,
email, phone, text, instant message, etc." (Spec. ,r 3.) And in view of this,
the Examiner does not sufficiently explain why the email itself, as disclosed
in Ciancio-Bunch, should be interpreted as a webpage.
However, as discussed above and by the Examiner, Ciancio-Bunch
also discloses that an email message may include a URL embedded in live
content, and that the content, including the URL, may have a value at a first
time period and may have a different value at a second time period. (See
supra; see also Answer 3--4.) Therefore, we do not find persuasive of error
Appellants' argument that Ciancio-Bunch is "entirely silent" on transmitting
a first message via a first webpage/URL, and, at a later time, transmitting a
different message via a second webpage/URL. (See Appeal Br. 13.)
Appellants do not separately argue independent claim 7. (See Appeal
Br. 12-13.) Therefore, claim 7 falls with claim 1. See 37 C.F.R.
§ 4I.37(c)(iv) (2014).
Appellants separately argue dependent claims 4 and 10. Claim 4
recites:
4. The method of claim 1, wherein the first personalized
message is received from a sender, the method further
comprising receiving, through the first webpage, a personalized
response message to the sender from the intended recipient in
response to the first personalized message.
Claim 10 contains similar language.
The Examiner finds that Nidamarthi discloses "receiving, through the
first webpage, a personalized response message to the sender from the
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intended recipient in response to the first personalized message." (Final
Action 7, citing Nidamarthi, col. 14, 1. 56-col. 15, 1. 23; see also Answer 4.)
Appellants disagree and argue that "Nidamarthi does not disclose a
sender receiving through the first webpage a personalized response message
from the recipient." (Appeal Br. 14.)
Nidamarthi discloses "encod[ing] information to associate a physical
package to a transaction ... [ and that s ]ubsequent to delivery of the physical
package to a recipient, recipient reaction information containing the encoded
information obtained from the machine-readable representation is received
over a network." (Nidamarthi, Abstract.) Nidamarthi, in the portion cited
by the Examiner, discloses that feedback may be obtained from the recipient
of a package through the use of multiple QR ( quick response) codes
provided with a package; in particular, that "labeling associated with the QR
codes indicates to the user that the scanning of a particular QR code from
among the multiple QR codes provides information with respect to user
satisfaction regarding the received package." (Id. at col. 14, 11. 58---63.)
Nidamarthi further discloses that "one of skill in the art will realize that
customer service interaction request interfaces will vary between
embodiments without departing from the scope and intent of the present
disclosure. Specifically, interfaces in various embodiments will support
customer service interaction requests in formats that include chat, SMS, and
electronic mail." (Id. at col. 15, 11. 11-17.)
Although Nidamarthi discloses a response from the package recipient
being sent by, e.g., email or by selecting a QR code, claim 4 recites that the
response is received "through the first webpage." In view of the above, the
Examiner does not either sufficiently explain where Nidamarthi discloses
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this limitation or provide sufficient "articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007), citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). Therefore, we will reverse the rejection of
claims 4 and 10.
Appellants also separately argue dependent claims 6 and 14. Claim 6
recites:
6. The method of claim 1, further comprising providing,
through the first webpage, an interface for receiving feedback
from the intended recipient regarding the physical package.
Claim 14 contains similar language.
The Examiner finds that Nidamarthi discloses this limitation. (Final
Action 8, citing Nidamarthi, col. 9, 11. 39--45; see also Answer 4--5.)
Appellants disagree and argue that "Nidamarthi does not disclose
providing, through the first webpage, an interface for receiving feedback
from the intended recipient." ( Appeal Br. 14--15.)
Nidamarthi discloses:
Contents of transaction record 162a also include encoded
information 172, which comprises URLs that contain identifiers
for associating physical packages described in fulfillment
information 170 to the transaction described by transaction
record 162a. When recipient reaction information is received
from a user of a mobile device, feedback results 174 are added to
transaction record 162a. Feedback results 174 may vary between
a simple indication of a time stamp for receipt of recipient
reaction information to detailed responses to a user questionnaire
provided to the user by a mobile computing device.
(Nidamarthi, col. 9, 11. 35--45.)
The portions ofNidamarthi cited by the Examiner in rejecting claim 6
(and, as discussed above, in rejecting claim 4), do not disclose providing
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feedback through the first webpage. Therefore, we will reverse the rejection
of claims 6 and 14.
Finally, Appellants argue that the Examiner has not established a
prima facie case of obviousness for the independent claims, and, therefore,
the rejection of dependent claims 2---6 and 8-14 should be reversed. (Appeal
Br. 15.)
We disagree. The USPTO carries its procedural burden of establishing
a prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, "together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (alteration in original) (quoting 35 U.S.C.
§ 132(a)). Here, the Examiner notified Appellants that the claims are
rejected as obvious over the cited art, and the Examiner cited to particular
parts of the prior art and provided explanations for the conclusions of
obviousness. (Final Action 2-11.) Thus, Appellants have been notified of
the reasons for the rejection with such information "as may be useful in
judging of the propriety of continuing the prosecution of his application."
See 35 U.S.C. § 132(a). Moreover, that Appellants were able to respond to
the rejection is evidence that the rejection was sufficiently informative for
the Appellants to recognize and provide counter-arguments to the grounds
for rejection.
DECISION
The Examiner's rejection of claims 1-3, 5, 7-9, and 11-13 under
35 U.S.C. § 103(a) is affirmed.
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The Examiner's rejection of claims 4, 6, 10, and 14 under 35 U.S.C.
§ 103(a) is reversed.
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-IN-PART
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