Ex Parte Muthugopalakrishnan et al

Patent Trial and Appeal Board

Mar 24, 2015

13043238 (P.T.A.B. Mar. 24, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/043,238 03/08/2011 Manickababu Muthugopalakrishnan 60202-0064 8490
124871 7590 03/24/2015
Hickman Palermo Becker Bingham / Coupons
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
03/24/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANICKABABU MUTHUGOPALAKRISHNAN,
GAYATHRI UDAY NAYAK,
NAHRIN REIHANEH, STEVEN R. BOAL,
TINO GUDELJ, and RAVI KANT KESWANI
____________

Appeal 2012-008708
Application 13/043,238
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the Final
rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

Appeal 2012-008708
Application 13/043,238

2

THE INVENTION
The Appellants’ claimed invention is directed to a distribution system
which “distributes transactional advertisements (such as coupon content) to
any number of online publishers with programmatically implemented
restrictions and controls, so as to restrict and control the use of the
transactional advertisement on the publisher’s web property.” (Spec. ¶ 16).
Claim 1, reproduced below with added bracketing, is representative of the
subject matter on appeal.
1. A system for distributing a transactional advertisement to
a user terminal over a network, the system comprising:
[1] one or more storage media storing a plurality of
transactional advertisements, wherein each transactional
advertisement of the plurality of transactional advertisements
comprises coupon content that is redeemable for value when
printed in hard-copy form;
[2] a publisher interface module operable to generate a
script to embed in a web page that is to include transactional
advertisements, wherein said publisher interface module is
operable to generate the script in response to a request
specifying an identifier of the web page from a publisher of the
web page;
[3] a distribution module operatively coupled to the user
terminal over the network;
[4] said distribution module operable to deliver a
transactional advertisement data item corresponding to a
selected transactional advertisement of the plurality of
transactional advertisements to the user terminal over the
network in a manner that causes the coupon content of the
selected transactional advertisement to be displayed to a user at
the user terminal as part of the web page, wherein the coupon
content displayed to the user as part of the web page is
redeemable for value when printed as displayed in hard-copy
form;
[5] said distribution module operable to deliver a print
control component to the user terminal over the network for
Appeal 2012-008708
Application 13/043,238

3

restricting a manner in which the coupon content displayed as
part of the web page may be printed at the user terminal.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–3, 6–8, and 11–13 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brodson (US 2007/0288313 A1, pub. Dec. 13,
2007) and Hopp (US 2007/0156528 A1, pub. July 5, 2007).
2. Claims 4, 9, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brodson, Hopp, and “Microsoft Windows XP version
2002 screen shot showing controls disabled by admin,” identified on page 2
of an Information Disclosure Statement By Applicant, received August 15,
2011 (hereinafter, “Reference U”).
3. Claims 5, 10, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brodson, Hopp, and Gilliam (US 2004/0039704 A1, pub.
Feb. 26, 2004).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.
1

1
See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2012-008708
Application 13/043,238

4

ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the prior art does not disclose claim limitation [5] (Appeal Br. 30–32, Reply
Br. 7–8).
In contrast, the Examiner has determined that the rejection is proper
and the cited claim limitation is found in Hopp at paragraph 89. (Ans. 6 and
14).
We agree with the Appellants. Here, claim limitation [5] recites:
[5] said distribution module operable to deliver a print control
component to the user terminal over the network for restricting
a manner in which the coupon content displayed as part of the
web page may be printed at the user terminal.
(Claim 1, emphasis added). Thus, the cited claim limitation requires
delivery of a print control component to the user terminal over the network
that restricts the manner in which the coupon may be printed at the user
terminal. The Specification at paragraph 35 describes the “print control
component” as “a program (or trigger to locate and initiate install of a
program) that is installed on the terminal as a plug-in or other installed
application, to both allow and to control or place restrictions on the ability of
the user to print.” The Specification further describes at paragraph 44 that
“the coupon content are packaged or included with programmatic controls
that control or otherwise regulate the manner in which the coupon content
can be used.”
Here, the citation to Hopp cited above fails to disclose this and instead
discloses only that Hopp’s on-line print coupon distribution system allows
advertisers to set up print limits for their coupons. The Examiner finds
Hopp “limits the printing a[t] the user’s device, where the printer i[s]
Appeal 2012-008708
Application 13/043,238

5

connected, by software running the web browser, and the operation system,
on the device.” (Ans. 14; citing Hopp at para. 89.) The Examiner concludes
that “[t]his software meets the claim limitation of ‘a print control
component[’] delivered to the user terminal over the network, i.e. the
internet, as the software logic that controls the printing restriction is
delivered from the web server to the user device to control the printing from
that device.” However, the cited portion of Hopp fails to describe any
program for applying its print limits, much less disclose delivery of a print
control component to the user terminal over the network that restricts the
manner in which the coupon may be printed at the user terminal, as claim 1
requires.
For these reasons the rejections of claim 1 and its dependent claim are
not sustained. The remaining independent claims 6 and 11 contain a similar
limitation and the rejections of these claims, and their dependent claims, are
not sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.

DECISION
The Examiner’s rejection of claims 1–15 is reversed.

REVERSED
JRG