11235864 (P.T.A.B. Oct. 27, 2014)

Ex Parte Juetten et al

Patent Trial and Appeal BoardOct 27, 2014

11235864 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEANETTE JUETTEN, TODD GUNDRUM, CINDY RINK, GLENN JENKINS, JOHN KREJCAREK, TIFFANY NEELY, BILL ZICHE, and GLENN CHRISTENSON ____________ Appeal 2012-010858 Application 11/235,8641 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–3, 8–23, 25–31, 33, and 34. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1According to the Appellants, the real party in interest is Mattel, Inc., the assignee of record. (Appeal Br. 3.) Appeal 2012-010858 Application 11/235,864 2 STATEMENT OF THE CASE The Appellants’ invention relates to an activity based, online loyalty program. (Spec. ¶ 2.) Illustrative Claim 1. A system for increasing consumer affinity for a brand associated with a sponsor, comprising a server computer hosting a Web site accessible over a computer network, wherein the server computer includes a processor, a database, and a storage medium containing a set of instructions, the processor being configured to read the storage medium and to execute the set of instructions, the set of instructions being configured to: provide sub-user access to the Web site through a client computer connected to the computer network, wherein the Web site exchanges messages between a sub-user affiliated with a user and one or more other sub-users; provide user access to the Web site through a client computer connected to the computer network; provide user control over the affiliated sub-user’s exchange of messages with one or more other sub-users; and store in the database a message list associated with the user, the message list including one or more exchanged messages subject to the user control. Prior Art Kohl US 2002/0042744 A1 Apr. 11, 2002 Lotvin US 2002/0165777 A1 Nov. 7, 2002 Cox US 2005/0021637 A1 Jan. 27, 2005 Nordstrom US 2005/0091385 A1 Apr. 28, 2005 Dougherty US 2005/0202861 A1 Sept. 15, 2005 Bulfer US 2006/0036701 A1 Feb. 16, 2006 Packer US 7,421,498 B2 Sept. 2, 2008 Appeal 2012-010858 Application 11/235,864 3 Rejections The Examiner rejects claims 1–3, 28, 29, and 33 under 35 U.S.C. § 102(e) as anticipated by Nordstrom. The Examiner rejects claims 8–10 under 35 U.S.C. § 103(a) as unpatentable over Nordstrom and Bulfer. The Examiner rejects claims 11–17 under 35 U.S.C. § 103(a) as unpatentable over Nordstrom, Bulfer, and Cox. The Examiner rejects claims 18–23 and 25 under 35 U.S.C. § 103(a) as unpatentable over Nordstrom and Packer. The Examiner rejects claims 26 and 27 under 35 U.S.C. § 103(a) as unpatentable over Nordstrom and Kohl. The Examiner rejects claims 30 and 31 under 35 U.S.C. § 103(a) as unpatentable over Nordstrom and Dougherty.2 The Examiner rejects claim 34 under 35 U.S.C. § 103(a) as unpatentable over Nordstrom and Lotvin. ANALYSIS Much of the dispute between the Appellants and the Examiner concerning the application of the prior art to the claims comes down to a proper construction of the following claim limitation of independent claim 1: “provide sub-user access to the Web site through a client computer connected to the computer network, wherein the Web site exchanges 2Both the Examiner and the Appellants discuss this rejection as relating to claims 30–32. (See Answer 15; Appeal Br. 27.) However, claim 32 is withdrawn (see Answer 3, Appeal Br. 5.), and hence not addressed in our analysis. Appeal 2012-010858 Application 11/235,864 4 messages between a sub-user affiliated with a user and one or more other sub-users” (hereinafter the “message-exchange” limitation). The Appellants contend an “overriding flaw to all of the rejections” is the Examiner’s interpretation of the message-exchange limitation. (Appeal Br. 18.) As such, we first address this claim construction issue, and then turn to the Examiner’s particular rejections. Claim Construction Issue The Examiner’s findings and the Appellants’ arguments reflect they agree that the message-exchange limitation requires the sub-user affiliated with the user (hereinafter the “affiliated sub-user”) be provided with access to the Web site. (See e.g., Answer 17, Appeal Br. 18.) They do not agree, however, on whether the message-exchange limitation requires the “other sub-users” be provided with access to this same Web site. (Id.) The Appellants argue the message-exchange limitation requires that the “other sub-users” have access to the same Web site as the affiliated user. (Appeal Br. 18.) To support this position, the Appellants point to the recital of a single Web site in the claim language, the distinction between “sub- users” and “non-members” discussed in the Specification, and the dictionary definition of the term “other.” (See Reply Br. 5–7.) The Appellants further argue “[t]he claims should be interpreted to recite a single closed environment Web site in which sub-users can exchange messages among only users or sub-users of the same Web site.” (Appeal Br. 18, emphasis added.) The Appellants refer to Figure 1 and statements in the specification as showing sub-users cannot exchange messages with non- members from a different web site. (Id.) The Appellants contend this Appeal 2012-010858 Application 11/235,864 5 “closed environment” is a “critical feature” because it provides a safe online environment for children, and can comply with the Children’s Online Privacy Protection Act. (Id. at 20.) We agree with the Appellants that the message-exchange limitation entails the “other sub-users” having access to the same Web site as the affiliated sub-user. Throughout the Specification, persons having access to the Web site are called “sub-users,” while persons without access to this Web site are called “non-members.” (See e.g., Spec. ¶ 33.) As such, when this phrase is interpreted in light of the Appellants’ Specification, “other sub-users” are constituents provided with access to the same Web site as the affiliated sub-user. We disagree with the Appellants, however, that the message-exchange limitation requires the affiliated sub-user to exchange email messages only with other sub-users. Although the claim language may refer to a single Web site, the open-ended spirit of its transitional terms (i.e., comprising, including, containing) does not preclude the involvement of other websites. As for the closed environment being a critical feature for children’s online safety, we note children are not the only possible class of sub-users for the Appellants’ system. (See e.g., Spec. ¶ 39, describing an embodiment wherein an employer is the “user” and employees are “sub-users.”) We further note that the claim language does not recite that the sub-users be children. Accordingly, we construe the message-exchange limitation as requiring a configuration which permits the affiliated sub-user to exchange messages with, but not necessarily only with, sub-users of the same Web site. Appeal 2012-010858 Application 11/235,864 6 Rejection of Independent Claim 1 Independent claim 1 is rejected as anticipated by Nordstrom. (Answer 4.) The Appellants argue Nordstrom does not disclose or suggest the subject matter of the message-exchange limitation. (Appeal Br. 20.) Independent claim 1 sets forth a processor “configured” to execute a set of instructions; and this set of instructions is “configured” according to the listed limitations. As such, we look to whether Nordstrom is “configured” to accommodate the requirements of the message-exchange limitation. According to the Appellants, Nordstrom discloses a system for children to safely send and receive email, thanks to parental interception and approval. (Appeal Br. 14.) The Appellants stress that the Nordstrom system “allows children to send e-mail messages to anyone.” (Id. at 20.) As such, Appellants assert that Nordstrom discloses “the exchange of messages among users of different websites,” and thus does not meet their proffered construction of the message-exchange limitation. (Id. at 22.) We agree with the Appellants that Nordstrom is “configured” to allow the affiliated sub-user to exchange messages with “non” sub-users. However, we disagree with Appellants in that we find Nordstrom is also “configured” to allow the affiliated sub-user to exchange messages with other sub-users. We generally note that web-based email systems are ineludibly configured to allow participants, using the same email server and thus accessing the same website, to exchange email messages among themselves. As the Examiner explains, a person having an email account on the AOL Appeal 2012-010858 Application 11/235,864 7 server accesses the AOL website to send a message to a recipient. (Answer 19, 20.) If the recipient has an email account on the Hotmail server, the recipient accesses a different website (i.e., the Hotmail website) to retrieve the message. (Id. at 20.) However, if the recipient has an AOL email account, the recipient accesses the same AOL website as the sender to retrieve the message. (Id.) In other words, as set forth in the above example, a generic email system is configured generally to allow its subscribers, who use the same generic email server and thus access the same generic email website, to exchange email messages among themselves. Notably, a contrary configuration for any email system would seem to be unworkable practically, as it would seem to allow only one member of an email- exchanging population to have an account on a particular email system. Likewise, mirroring the Examiner’s aforementioned line of reasoning, we find that the Nordstrom email system is configured to allow children, whose respective parents are screening their email via the Nordstrom system, to exchange email messages among themselves. Otherwise, only one parent from an email-exchanging community (e.g., a neighborhood school) could screen emails via the Nordstrom system. Nordstrom-screened children have access to the web server 56 and thus access to the same website. (Nordstrom ¶ 39.) And Nordstrom- screened children have the ability to exchange emails among themselves via this website. (Id.) These children, therefore, are “sub-users” as set forth in the message-exchange limitation. Accordingly, contrary to Appellants’ assertions, Nordstrom is “configured” to “provide sub-user access to the Web site through a client Appeal 2012-010858 Application 11/235,864 8 computer connected to the computer network, wherein the Web site exchanges messages between a sub-user affiliated with a user and one or more other sub-users,” as recited in independent claim 1. Thus, we sustain the Examiner’s rejection of independent claim 1. Rejection of Dependent Claims 2, 3, 28, 29, and 33 Dependent claims 2, 3, 28, 29, and 33 are rejected on the same grounds as independent claim 1, as anticipated by Nordstrom. (Answer 4.) The Appellants discuss these claims under a separate heading, but the arguments advanced infer these claims fall with independent claim 1. (See Appeal Br. 23, 24.) Specifically, the Appellants comment these dependent claims “add further elements,” but do not identify these “further elements” and/or explain how they impact anticipation (Appeal Br. 23, 24.) As such, the Appellants offer only a conclusory statement, and there is no argument or evidence for us to address. Otherwise, the Appellants assert the “same reasons” as argued for independent claim 1. (Id.) Our analysis above explains why those reasons are unpersuasive of Examiner error, and need not be repeated here. Thus, for the same reasons we sustain the rejection of independent claim 1, we sustain the Examiner’s rejection of dependent claims 2, 3, 28, 29, and 33. Rejection of Dependent Claims 1–3, 8–23, 25–31, 33, and 34 The rest of the dependent claims on appeal are rejected as obvious over Nordstrom in view of Bulfer, Cox, Packer, Kohl, Dougherty, and/or Appeal 2012-010858 Application 11/235,864 9 Lotvin. (See Answer 6–16.)3 For each of these rejections, the Appellants argue that the Examiner’s proposed combination is incomplete and/or impermissible. (See Appeal Br. 24–28.)4 Specifically, the Appellants assert that, because Nordstrom does not disclose the message-exchange limitation set forth in independent claim 1, Nordstrom does not disclose the subject matter of the claims depending therefrom. (See Appeal Br. 24–28.) Following this theme, the Appellants assert that a combination, of Nordstrom and the applicable secondary reference(s), would likewise not include the message-exchange limitation. (Id.) As indicated above, we are not persuaded by the Appellants’ argument that Nordstrom fails to disclose the message-exchange limitation. Thus, we are also not persuaded by these arguments. The Appellants also assert “there is no disclosure or suggestion” to combine the teachings of Nordstrom and the corresponding secondary reference(s). (See Appeal Br. 24–28.) This sweeping statement is made for each obviousness rejection, but not followed by specific assertions 3Claims 8–10 are rejected as obvious Nordstrom in view of Bulfer (Answer 6); claims 11–17 are rejected as obvious over Nordstrom in view of Bulfer and Cox (Id. at 8); claims 18–23 and 25 are rejected as obvious over Nordstrom in view of Packer (Id. at 10); claims 26 and 27 are rejected as obvious over Nordstrom in view of Kohl (Id. at 14); claims 30 and 31 are rejected as obvious over Nordstrom in view of Dougherty (Id. at 14); and claim 34 is rejected as obvious over Nordstrom in view of Lotvin (Id. at 16). 4The Appellants further argue modifying Nordstrom, Bulfer, Cox, and/or Packer to restrict messages to a closed environment would be improper. (Reply Br. 7, 8.) This argument is made for the first time in the Reply Brief, whereby it is considered waived. We nonetheless reiterate that a proper construction of the message-exchange limitation does not require a closed environment. Thus, this argument, even if considered, is not persuasive. Appeal 2012-010858 Application 11/235,864 10 explaining the alleged impermissibility. (Id.) The Appellants do not, for example, direct our attention to any flaws in the Examiner’s articulated rationales for combining references. (See Answer 7–17.) As such, there is no argument or evidence for us to address. Thus, we sustain the Examiner’s rejection of dependent claims 8–23, 25–27, 30–32, and 34. DECISION We AFFIRM the Examiner’s rejections of claims 1–3, 8–23, 25–31, 33, and 34. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED5 llw 5 Should there be further prosecution of this application, the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014.