Ex Parte Thomas et al

Patent Trial and Appeal Board

Nov 16, 2018

13072547 (P.T.A.B. Nov. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/072,547 03/25/2011
30652 7590 11/16/2018
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE500
PLANO, TX 75024
FIRST NAMED INVENTOR
David Edward Thomas
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.
4189-03904 6224
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
11/16/2018 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 DAVID EDWARD THOMAS, JONATHAN G. QUINN,
MICHAEL ROBERT MINAS!, MICHELLE MARIAN,
MIR MOHAMMAD AAMIR, and TAMARA RUTH PATTISON
Appeal2017-006045
Application 13/072,547 1
Technology Center 3600
Before ERIC S. FRAHM, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, Safeway, Inc. is the real party in interest (App.
Br. 4). This appeal is related to (1) U.S. Patent Application No. 13/072,556
and Appeal No. 2017-006049; and (2) U.S. Patent Application No.
13/072,534, which is Appeal No. 2017-007426, which have the same
inventive entity and assignee (Safeway, Inc.) (App. Br. 5).
Appeal2017-006045
Application 13/072,547
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5, 6, 10, 13-15, 17, 18, 22, 25-27, 29, 30, 34, 38, and 39.
Claims 4, 7-9, 11, 12, 16, 19-21, 23, 24, 28, 31-33, 35-37, 40, and 41 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Disclosed Invention and Exemplary Claim
Appellants' disclosed invention pertains to customer loyalty programs
tailored to individual customer needs, interests, and habits (Spec. ,r 3, Title;
Abstract), and "provide[s] a system that generates and notifies participating
customers of offers and/or rewards tailored to a given customer profile"
(Spec. ,r 4). The independent claims pertain to (1) an individualized
discount and reward server of a retailer ( claim 1 ); (2) an individualized
discount and reward system of a retailer ( claim 13); and (3) a non-transitory
computer readable medium executing instructions on a processor of the
individualized discount and reward server of the retailer to cause the server
( claim 25), each to cause the server to provide customized offers to
customers at a point of sale device based on customer input. Exemplary
independent claim 1 under appeal, with emphasis and bracketed lettering
added, reads as follows:
1. An individualized discount and reward server of a
retailer, the server comprising: a processor and instructions
stored on a non-transitory computer readable medium
which, when processed by the processor, causes the
individualized discount and reward server of the retailer to:
send to a computer system of a consumer packaged good
partner, via a network, [A] information that a customer is only
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Application 13/072,547
willing to buy a consumer packaged good partner's product at a
reduced price;
after the computer system of the consumer packaged good
partner receives the information, receive from the computer
system of the consumer packaged good partner an agreement to
provide funding for at least one customized offer for the
consumer packaged good partner's product;
allocate the at least one customized offer to a retailer
account based on the agreement using at least a purchase history
associated with the customer, the at least one customized offer
including a loyalty adjustment changing a general market price
point, of the product to a discount price point;
display to a point of sale device, via an interface, a display
page including categorical display of a plurality of offers that
includes the at least one customized offer and an offer selection
option for individual selection of each offer included in the
plurality of offers, wherein at least one of the plurality of offers
comprises a comparison of an offer price to a competitor's price
for a similar product;
receive a customer input indicating selection of the at least
one customized offer from the point of sale device;
update, upon reception of the customer input indicating
selection of the at least one customized offer, the retailer account
associated with the customer to indicate selection of the at least
one customized off er;
receiving a purchase notification from the point of sale
device specifying the retailer account associated with the
customer and the product; and
upon receiving the purchase notification from the point of
sale device:
i) diverting the purchase notification to a second
server which is operated by the retailer and separate from the
individualized discount and reward server, and
ii) distributing one or more functions to the
second server to prevent the individualized discount and reward
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Application 13/072,547
server from being slowed down, the one or more functions
distributed to the second server including:
a. retrieving the retailer account specified
in the purchase notification, and
b. redeeming the customized offer by
associating the product with the loyalty adjustment independent
of the general market price point associated with the product at a
time of reception of the purchase notification.
The Examiner's Rejections
The Examiner rejected claims 1-3, 5, 6, 10, 13-15, 17, 18, 22, 25-27,
29, 30, 34, 38, and 39 as being unpatentable under 35 U.S.C. § I03(a) over
the base combination of Fujita (US 2006/0277103 Al; published Dec. 7,
2006), Brunner (US 2009/0150218 Al; published June 11, 2009), Stack (US
6,076,070; issued June 13, 2000), Sullivan (US 2001/0018665 Al; published
Aug. 30, 2001), Ruckart (US 2006/0085270 Al; published Apr. 20, 2006),
and Nix (US 2008/0040261 Al; published Feb. 14, 2008). See Final Act. 3-
26.
Issue on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 13-34)
and the Reply Brief (Reply Br. 3-13), the following dispositive issue is
presented on appeal:
Have Appellants shown the Examiner erred in determining that the
"information that a customer is only willing to buy the retail product at a
reduced price" (see supra claim 1, limitation [A]) recited in independent
claims 1, 13, and 25 is non-functional descriptive material that is not to be
given any patentable weight; and as a result erred in determining that the
combination of applied references teaches or suggests limitation [A] as set
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forth in each of claims 1-3, 5, 6, 10, 13-15, 17, 18, 22, 25-27, 29, 30, 34,
38, and 39?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 3-26) in light
of Appellants' contentions in the Appeal Brief (App. Br. 13-34) and the
Reply Brief (Reply Br. 3-13) that the Examiner has erred, as well the
Examiner's findings and reasoning in response to Appellants' arguments
(Ans. 3-18).
As to claims 1-3, 5, 6, 10, 13-15, 17, 18, 22, 25-27, 29, 30, 34, 38,
and 39, we agree with Appellants' contentions (App. Br. 22-25; Reply Br.
10-11) that the Examiner erred in determining that the "information that a
customer is only willing to buy the retail product at a reduced price" (see
supra claim 1, limitation [A]) recited in claims 1, 13, and 25 is non-
functional descriptive material that is not to be given any patentable weight;
and as a result erred in determining that the combination of applied
references teaches or suggests limitation [A] as set forth in each of claims 1-
3, 5, 6, 10, 13-15, 17, 18,22,25-27,29,30,34,38,and39.
Our reviewing court has the following to say about printed matter:
"[O]nce it is determined that the limitation is directed to printed matter, one
must then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is "no" is the printed
matter owed no patentable weight." In re DiStefano, III, 808 F.3d 845, 851
(Fed. Cir. 2015). As our reviewing court has held, printed matter may serve
to distinguish an invention from the prior art only if there is a functional
relationship between the printed matter and its substrate. See AstraZeneca
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LP v. Apotex, Inc., 633 F.3d 1042, 1064---65 (Fed. Cir. 2010); King
Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir.
2010) ( the relevant inquiry here is whether the additional instructional
limitation has a "new and unobvious functional relationship" with the
method, that is, whether the limitation in no way depends on the method,
and the method does not depend on the limitation); see also Ex parte Nehls,
88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (informational content
of the data thus represents non-functional descriptive material, which "does
not lend patentability to an otherwise unpatentable computer-implemented
product or process."); Ex parte Curry, 84 USPQ2d 1272, 1274 (BP AI 2005)
(informative) (Fed. Cir. Appeal No. 2006-1003), aff'd, (Rule 36) (June 12,
2006) ("wellness-related" data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method). See also
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994) (the Examiner need not give patentable
weight to descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate).
In this light, in the instant case concerning the information limitation
recited in claims 1, 13, and 25, even if we agree with the Examiner that the
recited information is printed matter, we agree with Appellants (see App. Br.
22-25; Reply Br. 10-11) that the recited information acts as a trigger,
therefore is functional in nature and related to the retailer's server, and
cannot be read out of the claim. Specifically, the recited "'information' is
functional with respect to the retailer's server because the 'information'
functions to trigger when the retailer's server sends the communication to
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the [ consumer packaged good] CPG partner's computer system and when
the retailer's server receives a communication from the CPG partner's
computer system" (App. Br. 22-24). The Examiner's reasoning (see Final
Act. 11-13; Ans. 8-10, 12-13) that the information is not used for
processing, analysis, or other operations set forth in claims 1, 13, and 25, but
only as a matter of timing, is faulty. As seen from the clause following
limitation [A] recited in claim 1, and as similarly recited in remaining
independent claims 13 and 25, the information that a customer is only
willing to buy the selected retail product at a reduced price acts as a trigger
to receive (i.e., thus send) "an agreement to provide funding for at least one
customized offer for the selected retail product" from "the computer system
of the consumer packaged good partner."
As a result, we are constrained by the record before us not to sustain
the Examiner's obvious rejection of claims 1-3, 5, 6, 10, 13-15, 17, 18, 22,
25-27, 29, 30, 34, 38, and 39, which all contain the disputed feature of
"information that a customer is only willing to buy the retail product at a
reduced price."
CONCLUSION
Appellants have shown the Examiner erred in determining that the
"information that a customer is only willing to buy the retail product at a
reduced price" (see supra claim 1, limitation [A]) recited in claims 1, 13,
and 25) is non-functional descriptive material that is not to be given any
patentable weight; and as a result erred in determining that the combinations
of applied references teach or suggest limitation [A] as set forth in each of
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claims 1, 13, and 25, as well as corresponding dependent claims 2, 3, 5, 6,
10, 14, 15, 17, 18,22,26,27,29,30,34,38,and39.
DECISION
The Examiner's rejections of claims 1-3, 5, 6, 10, 13-15, 17, 18, 22,
25-27, 29, 30, 34, 38, and 39 under 35 U.S.C. § 103(a) over the base
combination of Fujita, Brunner, Stack, Sullivan, Ruckart, and Nix is
reversed.
REVERSED
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