Ex Parte Subramanian et al

Patent Trial and Appeal Board

Nov 6, 2013

11749671 (P.T.A.B. Nov. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/749,671 05/16/2007 Kaushik Subramanian 4189-01001 8633
30652 7590 11/07/2013
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE 500
PLANO, TX 75024
EXAMINER
WILSON, CANDICE D C
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
11/07/2013 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 KAUSHIK SUBRAMANIAN, STUART AITKEN, and
JONATHAN QUINN
____________________

Appeal 2011-010860
Application 11/749,671
Technology Center 3600
____________________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
THOMAS F. SMEGAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010860
Application 11/749,671

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to the creation of customized nutritional
purchase information, and more specifically to the creation of nutritional
reports, nutritional options, and promotional information based upon
purchases at a local store or online store made while using a loyalty card
(Spec., para. [0004]).
Claim 1, reproduced, is representative of the subject matter on appeal:
1. A computerized method for consumer notification, the
method comprising:
providing a database coupled to an informational
computer;
storing in the database a loyalty profile corresponding to
a consumer;
storing in the database a plurality of records comprising
products available for purchase using the loyalty profile;
storing in the database a plurality of records comprising
product status information about the products available for
purchase using the loyalty profile;
storing in the database the products purchased using the
loyalty profile;

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
November 29, 2010) and Reply Brief (“Reply Br.,” filed May 11, 2011) and
the Examiner’s Answer (“Ans.,” mailed March 11, 2011).
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storing in the database consumer requested information
concerning the products purchased;
updating the product status information stored in the
database;
detecting a change in the product status for the products
purchased using the loyalty profile;
automatically generating a report describing the change
in the product status for the products purchased using the
loyalty profile; and
transmitting the report from the informational computer
to the consumer, wherein transmitting is initiated by the
informational computer.

THE REJECTIONS
The following rejections are before us for review:2
Claims 1-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Day (US 5,857,175, iss. Jan. 5, 1999) in view of Kepecs
(US 7,225,143 B1, iss. May 29, 2007), and further in view of Abreu
(US 2001/0056359 A1, pub. Dec. 27, 2001).
Claims 8-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Day in view of Kepecs, further in view of Abreu, and
further in view of Fine (US 2003/0171944 A1, pub. Sep. 11, 2003).

ANALYSIS
Appellants argue the pending claims as a group (App. Br. 12-16). We
select claim 1 as representative. The remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants assert that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because none of the cited references discloses or suggests

2 The Examiner has withdrawn the rejections under 35 U.S.C. § 101
(Ans. 2-3).
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“computer initiated transmission” of a consumer report, i.e., “transmitting
the report from the informational computer to the consumer, wherein
transmitting is initiated by the informational computer,” as recited in claim 1
(App. Br. 14-15).
The Examiner maintains that the rejection is proper and cites
column 3, lines 48-62, column 4, lines 21-31, and claims 1 and 5 of Kepecs
as disclosing this feature (Ans. 5 and 20-21). We agree with the Examiner.
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification. See, e.g., In re Amer. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under a broadest
reasonable interpretation, a claim term must be given its plain meaning,
which is the ordinary and customary meaning, given to the term by those of
ordinary skill in the art at the time of the invention, unless such meaning is
inconsistent with the specification.
Here, the term “initiate” is generally understood to mean “to set going
by taking the first step; begin,” see The American Heritage® Dictionary of
the English Language (2007), accessed at http://www.credoreference.com/
entry/hmdictenglang/initiate (last visited on Nov. 1, 2013), and we find no
indication in the Specification that Appellants have given the term a
meaning different from its ordinary and customary meaning.
Kepecs discloses a method for extending promotional discounts and
special prices on items for sale to identified customers (Kepecs, Abstract),
and describes at column 3, lines 48-62 that the determination to offer
selected discounts can be made “automatically by software which utilizes
the consumer transaction database for the identification of specific
consumers.” Claim 1 of Kepecs recites a method, performed by at least one
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computer network system, of extending promotional discounts to consumers
comprising, inter alia, “identifying, using the at least one computer network
system, a consumer by a unique identifier; [and] promoting a first selected
item with a discount or special price to said identified consumer.”
Dependent claim 5 recites that “promoting comprises sending mail to said
identified consumer.”
Appellants argue that although Kepecs may disclose an automatic
determination to offer selected discounts and may also disclose sending
mail, “Kepecs is silent regarding the mechanism, procedure, or intelligence
utilized to actually initiate the sending of the mail, i.e., ‘initiate transmission
the report’” (App. Br. 14) (emphasis omitted). However, we agree with the
Examiner that the determination to offer selected discounts to selected
customers, which is made “automatically by software,” is the act that sets in
motion, i.e., begins, the transmission of offers and, therefore, is the act that
“initiates” the transmission of offers, as that term is commonly understood
(Ans. 20). As such, we find that Kepecs discloses the argued limitation, as
reasonably broadly construed.
Therefore, we will sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of
claims 2-20, which stand or fall with claim 1.
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DECISION
The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) is
affirmed.
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).

AFFIRMED

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