MasterCard International Incorporated

Patent Trials and Appeals Board

Sep 2, 2020

2020002170 (P.T.A.B. Sep. 2, 2020)

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.
15/366,666 12/01/2016 Manoneet Kohli 21652-00690 9651
75564 7590 09/02/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANONEET KOHLI
____________

Appeal 2020-002170
Application 15/366,6661
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–29. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies Mastercard International Incorporated as the real party
in interest. Appeal Br. 1.

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Application 15/366,666

2

Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A metadata capture (MC) computing device in
communication with a first merchant computing device
associated with a first merchant and a second merchant
computing device associated with a second merchant, the MC
computing device including a processor in communication with
a memory, said processor programmed to:
receive a registration request from the first merchant;
transmit, in response to the registration request, computer-
executable code to the first merchant computing device for
installation on the first merchant computing device, wherein the
computer-executable code is configured to cause the first
merchant computing device to collect metadata representative of
an abandoned product within a virtual shopping cart associated
with a candidate consumer and the first merchant;
receive, from the first merchant computing device, a
message caused to be transmitted by the computer-executable
code, the message including the metadata;
receive a device identifier of a user computing device
associated with the candidate consumer;
generate a cart profile associated with the candidate
consumer, the cart profile configured to include data for
abandoned transactions associated with the candidate consumer,
the cart profile including the metadata and the device identifier;
compare the cart profile to a merchant criteria of the
second merchant; and
transmit a cart profile data packet including the metadata,
the device identifier, and a recommendation to the second
merchant when the cart profile meets the merchant criteria
to enable the second merchant to provide an incentive message
associated with the abandoned product to the candidate consumer
in response to the cart profile data packet.
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Application 15/366,666

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Name Reference Date
Gong US 8,626,575 B1 Jan. 7, 2014
Mitrovic US 2013/0110624 A1 May 2, 2013
Narasimhan US 2017/0193591 A1 July 6, 2017
Goulart US 9,940,660 B2 Apr. 10, 2018

The following rejections are before us for review.
Claims 1–3, 5, 6, 8–11, 12–14, 16, 17, 19–22, 23–25, 27, and 28 are
rejected under 35 U.S.C. § 103 as being unpatentable over Mitrovic further
in view of Narasimhan.
Claims 4, 15, and 26 are rejected under 35 U.S.C. § 103 as being
unpatentable over Mitrovic in view of Narasimhan and further in view of
Gong.
Claims 7, 18, and 29 are rejected under 35 U.S.C. § 103 as being
unpatentable over Mitrovic in view of Narasimhan and further in view of
Goulart.

ANALYSIS
35 U.S.C. § 103 REJECTIONS
Each of independent claims 1, 12, and 23, recites in one form or
another,
transmit, in response to the registration request, computer-
executable code to the first merchant computing device for
installation on the first merchant computing device, wherein the
computer-executable code is configured to cause the first
merchant computing device to collect metadata representative of
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an abandoned product within a virtual shopping cart associated
with a candidate consumer and the first merchant;
receive, from the first merchant computing device, a
message caused to be transmitted by the computer-executable
code, the message including the metadata;
receive a device identifier of a user computing device
associated with the candidate consumer;
compare the cart profile to a merchant criteria of the
second merchant; and
transmit a cart profile data packet including the metadata,
the device identifier, and a recommendation to the second
merchant when the cart profile meets the merchant criteria . . . .
The Examiner found that these limitations are disclosed by Mitrovic at
paragraphs 18–21, and 36–40. (Final Act. 2–3). The Examiner does not
explain and our review of Mitrovic shows no networking structure which
meets or makes obvious the architecture set forth in the independent claims.
To summarize, the architecture required by the claims is as follows: a
media capture computing device MC 110 receives a registration request
from the first merchant device 102 and then transmits a computer executable
code to the first merchant device 102 which causes the first merchant device
to collect data of abandoned products of a customer of the first merchant.
The MC computing device 110 receives from the first merchant device 102 a
message including metadata, and a device identifier of a user computer
device 108 associated with the candidate customer 3. The MC computing
device 110 then generates a cart profile for the customer associated with the
abandoned transactions, the metadata, and the device identifier of the user 4.
The MC computing device then compares the cart profile to criteria of a
second merchant device 106 and transmits the cart profile, metadata and the
device identifier and a recommendation to the second merchant device 106
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when the cart profile meets the merchant criteria to provide an incentive
message associated with the abandoned product.
Contrary to using a device similar to the claimed media capture
computing device MC 110 for parsing data between first and second
merchant computing devices, and a user computing device, Mitrovic instead
discloses a browser based data extraction scheme:
The intended purchase list can be generated based
on accessing information such as Internet browsing
history, wish lists, virtual shopping carts (or
abandoned virtual shopping carts), auction bid
history, auction watch lists, or virtual wallet
activities (e.g., storing a coupon or purchasing an
associated item). Any user related data that can be
accessed over a network, such as the Internet, may
be gathered and used by the user profile module 510
to maintain an intended purchase list.
Mitrovic ¶ 38.
As noted above, the claims require device limitations and specific
coordinated messaging between the claimed metadata capture (MC)
computing device, first and second merchant computing devices, and user
computing device. It is not apparent from the Examiner’s findings, nor from
the disclosure in Mitrovic how these claimed devices map to the devices in
the Mitrovic system. This system structure is a core limitation of the claims.
It causes the system to operate in the manner claimed. Accordingly, absent
such findings in the record, we will not sustain the rejection of independent
claims 1, 12, and 23.
Since claims 2–11, 13–22, and 24–29 depend from claims 1, 12, and
23, respectively, and since we cannot sustain the rejection of claims 1, 12,
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and 23, the rejections of claims 2–11, 13–22, and 24–29 likewise cannot be
sustained.
We note that the additional reference to Gong (cited against claims 4,
15, and 26), and Goulart (cited against claims 7, 18, and 29) do not remedy
the shortfalls discuss above concerning Mitrovic as used to reject
independent claims 1, 12, and 23 under 35 U.S.C. § 103.
CONCLUSION
We conclude the Examiner erred in rejecting claims 1–29 under 35
U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1–29 is reversed.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 8–11,
12–14, 16, 17,
19–22, 23–25,
27, 28
103 Mitrovic,
Narasimhan,
1–3, 5, 6, 8–11,
12–14, 16, 17,
19–22, 23–25,
27, 28
4, 15, 26 103 Mitrovic,
Narasimhan, Gong
4, 15, 26
7, 18, 29 103 Mitrovic,
Narasimhan, Goulart
7, 18, 29
Overall
Outcome
1–29

REVERSED