Ex Parte Prakash et al

Patent Trial and Appeal Board

Dec 28, 2015

11766796 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111766,796 06/22/2007
7590 12/28/2015
Raj Prakash
20585 Carniel A venue
Saratoga, CA 95070
FIRST NAMED INVENTOR
Raj Prakash
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.
1055
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
MAILDATE DELIVERY MODE
12/28/2015 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 RAJ PRAKASH and UDA Y PUNDALIK KURKURE
Appeal2012-004349
Application 11/766,796
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
CYNTHIA L. MURPHY, 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 7, 8, 10, 12, 13, 15, 16, 24, and 27-37, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2012-004349
Application 11/766,796
THE INVENTION
The Appellants' claimed invention is directed to an online invoice and
receipt service based distributed service (Spec., para. 1002). Claim 7,
reproduced below with the numbering in brackets added, is representative of
the subject matter on appeal.
7. A method of deploying advertisements, the method
compnsmg:
[ 1] receiving an electronic mail message that comprises a
vendor transaction object that represents a transaction between
a vendor and a customer of the vendor, wherein the electronic
mail message indicates the customer;
[2] selecting a set of one or more advertisement objects
from a set of one or more computer readable storage mediums
based on an attribute of the vendor indicated in the set of
computer readable storage mediums;
[3] embedding a set of one or more references to the
selected set of one or more advertisement objects into the
electronic mail message, wherein the set of one or more
references indicates a set of one or more network locations of
the set of one or more advertisements objects; and
[ 4] transmitting, a network, the electronic mail message
with the embedded set of one or more references to an
electronic mail message account designated for the customer,
wherein the embedded set of one or more references resolve to
the set of one or more advertisement objects when the
electronic mail message is later accessed.
THE REJECTION
Claims 7, 8, 10, 12, 13, 15, 16, 24, and 27-37 are rejected under
35 U.S.C. § 102(e) as anticipated by Reardon '368 (US 2009/0319368 Al,
filed Aug. 20, 2009, pub. Dec. 24, 2009). Reardon '368 is a continuation-in-
part of Reardon '572 (US 7,873,572 B2, filed Feb. 22, 2005, pub. Sep. 1,
2005, issued Jan. 18, 2011).
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Appeal2012-004349
Application 11/766,796
FINDil-.JGS 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.
ANALYSIS
The dispositive issue in this appeal involves limitations [2] and [3] of
independent claim 7, which read:
selecting a set of one or more advertisement objects ...
based on an attribute of the vendor [and,]
embedding a set of one or more references to the selected
set of advertisement objects into the electronic mail message,
wherein the set of one or more references indicates a set of one
or more network locations of the set of one or more
advertisements objects.
As noted by the Examiner, the Appellants do not dispute that Reardon
'368 discloses subject matter reading on limitations [2] and [3] (Ans. 11 ).
However, the Appellants contend that, without proper support in Reardon
'572, the subject matter in Reardon '368 reading on limitations [2] and [3]
does not predate the Appellants' patent application date (see Appeal Br. 4).
And, according to the Appellants, Reardon '572 does not support the subject
matter in Reardon '368 reading on limitations [2] and [3] (id. at 4-5).
We agree, at least arguendo, with the Appellants' position that
Reardon '572 must sufficiently support the subject matter in Reardon '368
reading on limitations [2] and [3] in order for this subject matter to qualify
as prior art under 35 U.S.C. § 102(e). But we are not persuaded by the
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).
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Appeal2012-004349
Application 11/766,796
Appellants' pos1t10n that Reardon '572 does not provide such support for the
subject matter in limitations [2] and [3].
We are not persuaded because the Examiner cites to particular
portions of Reardon '572 for support (see Ans. 14--15), and we agree with
the Examiner that these cited portions support the subject matter in
Reardon '368 reading on limitations [2] and [3]. For example, Reardon
'572, at column 14, lines 14--21 discloses "pulling commercials" when they
are needed based on their commercial classification with a given example
for "lawn fertilizer." Here, the commercials that are pulled are
advertisement objects based on an attribute of the vendor, as required by
limitation [2]. Reardon '572, at column 15 lines 1-8, also discloses mailing
an advertisement to people with a message including a "click here" feature
to get more material. Here, the embedding of the "click here" feature to the
message would indicate a network location from which the information
would be received, as required by limitation [3].
Moreover, the Examiner determines that a priority-providing
provisional application provides further support (see Ans. 15). 2 Both
Reardon '368 and Reardon '572 incorporate by reference, this provisional
application (Reardon '368 para. 1; Reardon '572 col. 1:7: 13). The
Appellants acknowledge that the paragraphs relied upon in Reardon '368
"may have the benefit" of this provisional application (Supp. Appeal Br. 7).
For these reasons the rejection of claim 7 is sustained. The Appellants
have provided the same arguments for the remaining claims, and the
rejection of these claims is sustained for the same reasons given above.
2 US Provisional Application No. 60/547,462 filed on February 26, 2004.
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Appeal2012-004349
Application 11/766,796
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner's rejection of claims 7, 8, 10, 12, 13, 15, 16, 24, and
27-37 is sustained.
AFFIRMED
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