Ex Parte McCann et al

Patent Trial and Appeal Board

Jun 22, 2016

12608679 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/608,679 10/29/2009
71247 7590 06/24/2016
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Monica Theresa McCann
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.
170103-1200 6925
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
kristen.layton@tkhr.com
ozzie. liggins@tkhr.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONICA THERESA MCCANN,
WILLIAM W. ALLOCCA,
BRANDON R.I. CHANG,
HENRY ROBERT NICKERSON,
MARKS. GULBRANDSEN,
DOUGLAS J. HERRINGTON,
DILIP S. KUMAR,
JAMES J. SHIMADA, and
PAUL D. DEMARCO
Appeal2013-007208
Application 12/608,679 1
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Monica Theresa Mc Cann, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1, 5-26, and 28-32. We
have jurisdiction under 35 U.S.C. §6(b) (2002).
1 The Appellants identify Amazon Technologies, Inc., as the real party in
interest. Appeal Br. 2.
Appeal2013-007208
Application 12/608,679
We REVERSE.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system, comprising:
a computing device;
a plurality of digital coupons in a memory associated with the
computing device, the digital coupons being associated with a
plurality of entities and used in association with an operation of an
electronic commerce system employed to sell a plurality of items over
a network; and
a process executed in the computing device that determines a
subset of the digital coupons to present in a network page encoded for
display on a client by the electronic commerce system by:
identifying an initial pool of the digital coupons that are
relevant to a user logged into the electronic commerce system
and are relevant to a subject matter of the network page;
determining a score for each of the digital coupons in the
subset based on a plurality of factors by implementing a
weighted summation of values, each of the values being derived
from one of the factors; and
selecting a predefined number of the digital coupons
having the highest ones of the scores to be included in the
network page.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
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Application 12/608,679
Herz
Jacobi
Smyth
Novick
US 2001/0014868 Al
US 2001/0021914 Al
US 2006/0173830 Al
US 2008/0065490 Al
The following rejections are before us for review:
Aug. 16, 2001
Sep. 13, 2001
Aug.3,2006
Mar. 13, 2008
1. Claims 1and29 are rejected under 35 U.S.C. §102(b) as being
anticipated by Herz.
2. Claims 5, 6, 8-10, 12, 13, and 30 are rejected under 35 U.S.C. §102(b)
as being anticipated by Herz.
3. Claims 14, 16, 17, 19-24, 26, 28, and 31 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Herz.
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Herz and Jacobi.
5. Claim 11 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Herz and Smyth.
6. Claims 15 and 32 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Herz and Novick.
7. Claim 18 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Herz and Jacobi.
8. Claim 25 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Herz and Smyth.
ISSUES
Did the Examiner err in rejecting claims 1, 5, 6, 8-10, 12, 13, 14, 16,
17, 19-24, 26, and 28-31under35 U.S.C. §102(b) as being anticipated by
Herz?
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Application 12/608,679
Did the Examiner err in rejecting claims 7 and 18 under 35 U.S.C.
§103(a) as being unpatentable over Herz and Jacobi?
Did the Examiner err in rejecting claim 11 and 25 under 35 U.S.C.
§ 103 (a) as being unpatentable over Herz and Smyth?
Did the Examiner err in rejecting claims 15 and 32 under 35 U.S.C.
§ 103 (a) as being unpatentable over Herz and Novick?
ANALYSIS
The rejection of claims 1and29 under 35 U.S.C. §102(b) as being
anticipated by Herz.
The rejection of claims 5, 6, 8-10, 12, 13, and 30 under 35 U.S.C. §102(b) as
being anticipated by Herz.
The rejection of claims 14, 16, 17, 19-24, 26, 28, and 31under35 U.S.C.
§102(b) as being anticipated by Herz.
The central issue with respect to these rejections is the same: does
Herz describe, expressly or inherently, the claimed "digital coupons."
A determination that a claim is anticipated under 35 U.S.C. § 102(b)
involves two analytical steps. First, the Board must interpret the
claim language, where necessary. Because the PTO is entitled to give
claims their broadest reasonable interpretation, our review of the
Board's claim construction is limited to determining whether it was
reasonable. In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997).
Secondly, the Board must compare the construed claim to a prior art
reference and make factual findings that "each and every limitation is
found either expressly or inherently in [that] single prior art
reference." Celeritas Techs. Ltd. v. Rockwell Int'! Corp., 150 F.3d
1354, 1360 (Fed. Cir. 1998).
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
The Specification expressly defines a digital coupon as "compris[ing]
a digital instrument that may be selected by a user that entitles the user to
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Application 12/608,679
redeem a benefit in association with a purchase of one or more items [ ]"
(para. 17). Accordingly, the "digital coupons" as claimed are reasonably
broadly construed as comprising a digital instrument that may be selected by
a user that entitles the user to redeem a benefit in association with a purchase
of one or more items.
According to the Examiner, Herz describes the digital coupons as
claimed, citing paras. 24 and 38. Final Act. 3--4.
Para. 24 describes databases of information about possible offers. It
does not describe "digital coupons" as claimed and reasonably broadly
construed.
Para. 38 mentions coupons. The Examiner cites the statement "If a shopper
elects not to accept an offer immediately, the system may, at the vendors
option, provide the shopper with a 'coupon' (or other credential) certifying
that the shopper is entitled to the same offer until some future date" and
finds therefrom that "Herz discloses the offer to be the same as a coupon,
and the offer/coupon to be associated with a vendor entity." Final Act. 4.
Para. 3 8 lists four purposes for Herz' s coupons - all of which are
intended to entitle a shopper "to the same offer until some future date" (para.
38). Herz never explicitly states that its coupons would further entitle a user
to redeem the coupon for a benefit in association with a purchase of one or
more items - as the claimed "digital coupons" are reasonably broadly
required to do. Coupons have been known to entitle a user to redeem it for a
benefit in association with a purchase of one or more items. It is possible
that the Herz coupons are of that type. But the difficulty here is that the
rejection is one of anticipation, requiring us to find that the claimed "digital
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Application 12/608,679
coupons," as reasonably broadly construed, read on the Herz coupons. In
that regard, Herz describes its coupons only in terms of entitling a shopper
"to the same offer until some future date" (para. 38). Because Herz does not
describe its coupons as entitling a user to redeem the coupon for a benefit in
association with a purchase of one or more items, the Herz' s coupons do not
anticipate the claimed "digital coupons." It is quite possible that a user
would redeem Herz's coupons for a benefit (e.g., the same offer on a future
date) in association with a purchase of one or more items, especially in view
of the fact that redeeming coupons for a benefit in association with a
purchase of one or more items was notoriously well known at the time of the
invention. But "[i]nherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939), quoted in Continental Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
A prima facie case of anticipation has not been made out in the first
instance by a preponderance of the evidence. Accordingly the rejections are
not sustained.
The rejection of claim 7 under 35 U.S.C. §103(a) as being unpatentable over
Herz and Jacobi.
The rejection of claim 11 under 35 U.S. C. §103 (a) as being unpatentable
over Herz and Smyth.
The rejection of claims 15 and 32 under 35 U.S.C. §103(a) as being
unpatentable over Herz and Novick.
The rejection of claim 18 under 35 U.S. C. §103 (a) as being unpatentable
over Herz and Jacobi.
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Application 12/608,679
The rejection of claim 25 under 35 U.S. C. §103 (a) as being unpatentable
over Herz and Smyth.
These rejections directed to dependent claims are not sustained for the
reasons stated. Because Herz does not in fact describe the claimed "digital
coupons" as reasonably broadly construed, a prima facie case of obviousness
has not been made out in the first instance by a preponderance of the
evidence.
CONCLUSIONS
The rejections of claims 1, 5, 6, 8-10, 12-14, 16, 17, 19-24, 26, 28,
30, and 31under35 U.S.C. §102(b) as being anticipated by Herz are
reversed.
The rejections of claims 7 and 18 under 35 U.S.C. §103(a) as being
unpatentable over Herz and Jacobi are reversed.
The rejection of claims 11 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Herz and Smyth are reversed.
The rejection of claims 15 and 32 under 35 U.S.C. § 103(a) as being
unpatentable over Herz and Novick is reversed.
DECISION
The decision of the Examiner to reject claims 1, 5-26, and 28-32 is
reversed.
REVERSED
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