Ex Parte Arning

Board of Patent Appeals and Interferences

Dec 7, 2009

10034973 (B.P.A.I. Dec. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte ANDREAS ARNING 8
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Appeal 2008-000992 11
Application 10/034,973 12
Technology Center 3600 13
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Decided: December 7, 2009 16
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Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU 20
MOHANTY Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL 26
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Appeal 2008-000992
Application 10/034,973

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STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 24. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellant invented a system and method for rewarding a user’s 4
interaction behavior with a computer system (Spec. 1). 5
Claims 1 and 2 under appeal read as follows: 6
1. In a computing environment, a system 7
for providing a reward to a user of the Internet for 8
desired web site visiting behavior, said system 9
comprising: 10
means located at a first server for loading a 11
first web document over the Internet to a user's 12
computer, said first web document having a 13
hyperlink to a different server for a second web 14
document; 15
means for monitoring at the first server 16
whether said user selects said hyperlink to navigate 17
to said second web document; 18
means at said first server responsive to a 19
detection for monitoring whether said user returns 20
to said first document; and 21
means at said first server for providing a 22
reward to said user in response to the user 23
returning to the first web document from the 24
second web document. 25
2. The system of Claim 1, further 26
comprising: 27
means for starting a timer in response to the 28
user selecting the hyperlink in the first web 29
document; 30
means for stopping the timer when the user 31
returns to the first web document and determining 32
a timer value; and 33
means for comparing the timer value to a 34
first and a second threshold value, wherein, the 35
reward is provided to the user only if the timer 36
Appeal 2008-000992
Application 10/034,973

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value is greater than the first threshold value and 1
smaller than the second threshold value. 2
The prior art relied upon by the Examiner in rejecting the claims on 3
appeal is: 4
Lowell US 6,381,632 B1 Apr. 30, 2002 5
The Examiner rejected claims 1 to 24 under 35 U.S.C. § 102(e) as 6
being anticipated by Lowell. 7
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ISSUES 9
Has the Appellant shown that the Examiner erred in finding that 10
Lowell discloses means at the first server for providing a reward in response 11
to the user returning to the first web document as recited in claim 1? 12
Has the Appellant shown that the Examiner erred in finding that 13
Lowell discloses means for starting a timer in response to the user selecting 14
the hyperlink in the first web document as recited in claim 2? 15
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FINDINGS OF FACT 17
Lowell discloses a system and method for tracking network usage 18
which includes a monitor which analyzes the data stream activity for 19
different strings of data stream to determine the type of activity that is taking 20
place (col. 4, ll. 37 to 64). The monitor is programmed to record activity 21
such as connecting, disconnecting, browsing, accessing areas within a 22
network site, uploading and/or downloading data, ordering products, 23
participating in surveys and participating in real-time and/or on-line events 24
(col. 5, ll. 6 to 10). The monitor also obtains the time and date of an activity 25
(col. 6, ll. 50 to 55). Lowell provides an incentive for users to visit and 26
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browse sponsored Web sites by awarding points for various activities that a 1
user does on a Web site (col. 6, l. 66 to col. 7, l. 3). A processing site credits 2
the user with the appropriate award points after such has been calculated 3
(col. 8, ll. 65 to 67). The processing site also informs the user of the credit 4
and provides information to the user regarding how to redeem the credit (col. 5
9, ll. 1 to 3). The award points have an expiration time (col. 7, ll. 27 to 30). 6
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PRINCIPLES OF LAW 8
A claim is anticipated only if each and every element as set forth in 9
the claim is found, either expressly or inherently described, in a single prior 10
art reference. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 11
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987). 12
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ANALYSIS 14
We are not persuaded of error by the Examiner by Appellant’s 15
argument that Lowell does not disclose a means at the first server for 16
providing a reward in response to the user returning to the first web 17
document as recited in claim 1. Lowell discloses that the user is awarded 18
points upon returning to the processing cite. We agree with the Examiner 19
that the processing cite is the first web document as broadly claimed. 20
In view of the foregoing, we will sustain the Examiner’s rejection of 21
claim 1. We will also sustain the Examiner’s rejection of claims 3 to 6, 8, 9, 22
10, 12 to 19 and 21 to 24 because the Appellant has not argued for the 23
separate patentability of these claims. 24
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We will not sustain the Examiner’s rejection of claims 2, 11, and 20. 1
While the Examiner is correct that Lowell discloses that the awards earned 2
by the user expire after a predetermined time and thus the award is only 3
provided if a time value is less than a threshold value, there is no disclosure 4
that a time value is determined corresponding to when the user selects the 5
hyperlink and when the user returns to the first web document and therefore, 6
there is no disclosure of another threshold value. We do not agree with the 7
Examiner that the disclosure in Lowell that since awards are provided for 8
participation in a survey this equates to a threshold value. In our view, this 9
is a disclosure that awards are provided based on the activity rather than the 10
time taken to complete the activity. In this regard, an award in Lowell will 11
be awarded for participation in a survey no matter how long it takes to 12
complete. In addition, Lowell does not disclose a timer which is started and 13
stopped as is required by claims 2 and 10. 14
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CONCLUSION OF LAW/DECISION 16
On the record before us, Appellant has not shown error on the part of 17
the Examiner in rejecting claims 1, 3 to 10, 12 to 19, 21 and 22 to 24. The 18
Examiner’s rejection as it is directed to claims 1, 3 to 10, 12 to 19, 21, and 19
22 to 24 is sustained. 20
The Appellant has shown error on the part of the Examiner in 21
rejecting claims 2, 11, and 20. The Examiner’s rejection as it is directed to 22
claims 2, 11, and 20 is not sustained. 23
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
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AFFIRMED-IN-PART 5
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LAW OFFICE OF JIM BOICE 18
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