Ex Parte Barnett et al

Patent Trial and Appeal Board

Jul 24, 2013

10871381 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG W. BARNETT,
KAREN R. REISNER, and
MARK BRAUNSTEIN
____________

Appeal 2011-007957
Application 10/871,381
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 47-59. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

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BACKGROUND
Appellants’ invention is directed to a method and system for the
electronic distribution of coupons at a central repository to remote personal
computers located at users’ homes (Abs.).
Claim 55 is illustrative:
55. A system for providing coupons, the system comprising:
a central computer system having memory, a processor,
an input, and an output;
system coupon offer data indicating stored coupon offers
stored in said memory;
said central computer system programmed to receive, in
association with a first user identification, first user coupon
offer selection data identifying at least some of said stored
coupon offers, thereby indicating selection by a person
operating a client computer of the identified stored coupon
offers;
said central computer system programmed to store in said
memory said identified stored coupon offers in association with
said first user identification;
said central computer system programmed to determine,
based at least in part upon said first user coupon offer selection
data stored in said memory in association with said first user
identification, a set of first user targeted coupon offers, wherein
said set of first user targeted coupon offers are a subset of said
stored coupon offers;
said central computer system programmed to store said
set of first user targeted coupon offers in said memory in
association with said first user identification;
said central computer system programmed to receive said
first user identification in association with and an available
coupon offers prompt prompting said central computer system
for coupon offers;
said central computer system programmed to respond to
said first user identification in association with said available
coupon offers prompt by retrieving from said memory said set
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of first user targeted coupon offers and transmitting said set of
first user targeted coupon offers modified so that each coupon
offer of said set of first user targeted coupon offers is at least
one of uniquely identified and contains an identification
corresponding to said first user identification.

Appellants appeal the following rejections:
Claims 47, 48, and 50-59 rejected under 35 U.S.C. § 103(a) as
unpatentable over Von Kohorn (US 5,227,874; iss. Jul. 13, 1993).
Claim 49 rejected under 35 U.S.C. § 103(a) as unpatentable over Von
Kohorn and Saigh (US 5,734,823; iss. Mar. 31, 1998).

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Ans. 3-19. Additional
findings of fact may appear in the Analysis that follows.

ANALYSIS
Claims 47, 48, and 50-59 rejected under 35 U.S.C. § 103(a) as unpatentable
over Von Kohorn.
We are not persuaded the Examiner erred in asserting that Von
Kohorn discloses or suggests “said central computer system programmed to
receive . . . first user coupon offer selection data,” as recited by
representative independent claim 55, because Von Kohorn fails to disclose a
central computer system and a client computer. App. Br. 14-15; Reply Br.
8-9. We agree with the Examiner that Von Kohorn discloses a central
station and response unit corresponding to the recited central computer
system and client computer, respectively. See Ans. 9. In particular, Von
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Kohorn discloses that its central station 202 includes a scoring computer
902, evaluation unit 808, and data facility 904 with storage unit 940 (cols.
90:65-66 and 94:33-41). Von Kohorn describes that its system delivers
shopper-selected discount coupons based on individual behavior patterns
and reaction to discrete stimuli (col. 3:17-56). These coupon offer selection
data are transmitted from Von Kohorn’s response unit to the central station
using each response unit’s keyboard which allows users to enter responses to
the stimuli (col. 87:49-54 see also Fig. 31.)
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Von Kohorn fails to disclose or suggest that the
central computer system is programmed to determine “a set of first user
targeted coupon offers based upon the user’s prior coupon selections.” App.
Br. 15-16; Reply Br. 9-10. This argument is not persuasive because it is not
commensurate with the scope of independent claim 55 which does not recite
that a set of first user targeted coupon offers are determined based upon the
user’s prior coupon selections, but rather recites that the set of targeted
coupon offers is determined based in part on “offer selection data.”
Specifically, we find that the determination made in claim 55 is not
limited solely based on “prior coupon selections,” but rather, broadly related
to data “identifying at least some of said stored coupon offers,” which we
find corresponds to Von Kohorn’s behavior patterns and reaction to discrete
stimuli, under the broadest reasonable interpretation, as it elicits data which
would identify potential individual shopper-selected coupon offers. And,
because, Von Kohorn discloses that users’ responses can be electronically
transmitted to its central station where they are compared, identified, and
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scored, one of ordinary skill in the art would appreciate that Von Kohorn
discloses or suggests a central computer system programmed to determine “a
set of first user targeted coupon offers,” as claim 55 recites.
We are not persuaded the Examiner erred in asserting that Von
Kohorn discloses or suggests a “central computer system,” as recited by
independent claim 55. App. Br. 16-17. As discussed supra, the Examiner
does not rely on the response unit disclosed in Von Kohorn to address the
central computer system, but instead, relies on Von Kohorn’s central station
which includes a scoring computer, evaluation unit, and data facility with
storage unit (cols. 90:65-66 and 94:33-41).
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that Von Kohorn fails to disclose or suggest that the
central computer system is programed “to respond to said first user
identification in association with said available coupon offers prompt by
retrieving from said memory said set of first user targeted coupon offers,” as
recited by independent claim 55. App. Br. 17-18; Reply Br. 9-10.
Specifically, Appellants argue that Von Kohorn does not disclose “the
response unit 22 responding to user input by retrieving from memory coupon
offers stored in association with a user identification.” App. Br. 17. We
disagree.
Von Kohorn discloses that its central station and response units are
capable of bilateral communication (see Fig. 6). Von Kohorn’s system
delivers shopper-selected discount coupons based on user responses such as
individual behavior patterns and reaction to discrete stimuli (col. 3:17-56).
Von Kohorn’s system processes these responses and delivers a set of
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targeted coupons to the response unit by “screening, sorting, scoring,
evaluating, massaging, statistically analyzing, or otherwise machine-
processing responses, data and information provided by participants at the
receiving stations” (col. 9:33-37). As such, one of ordinary skill in the art at
the time of the invention would understand that Von Kohorn’s central station
in conjunction with data received from its response units is retrieving from
memory and subsequently transmitting a set of targeted coupon offers in
response to the user’s input, as claim 55 requires.
We are not persuaded the Examiner erred in asserting that Von
Kohorn discloses or suggests “transmitting said set of first user targeted
coupon offers,” as recited by independent claim 55, because Von Kohorn
“discloses the response unit 22 printing coupons offers, not transmitting.”
App. Br. 18. Von Kohorn discloses transmitting signals from its central
station which directs the printers of response units to print coupons (col.
86:67 – col. 87:4). Thus, Von Kohorn discloses “transmitting” from one
remotely located computer to another computer commensurate with the
definition proffered by Appellants on page 18 of the Appeal Brief.
In view of the foregoing, we will sustain the Examiner’s rejection of
independent claim 55. We will also sustain the Examiner’s rejection of
claims 47, 50-52, 56, and 57 because these claims stand or fall with
independent claim 55. See App. Br. 7.

Claim 48
We are not persuaded of error by Appellants’ argument that Von
Kohorn fails to disclose that the central computer system receives “an
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indication from said merchant computer system an identification of said
coupon and storing in said memory data indicating that said coupon was
redeemed [sic].” App. Br. 21-22. Von Kohorn discloses that its coupons
can be traced (col. 3:33-37) and local stores cooperate with the central
station in Von Kohorn’s system to redeem the coupons (col. 20:39-43).
Based on these disclosures, one of ordinary skill in the art at the time of the
invention would have appreciated that the central station (i.e., central
computer system) in Von Kohorn receives an indication that a coupon was
redeemed and subsequently stores these data or else there would be no way
for Von Kohorn’s system to measure the effectiveness of stimuli on
shoppers (Abs.) Therefore, in the absence of any specificity as to the
manner of receiving the indication, we will sustain the Examiner’s rejection
of claim 48.

Claims 53 and 58
We are not persuaded of error by Appellants’ argument that Von
Kohorn fails to disclose or suggest that the central computer system receives
“from a second network address data indicating redemption of a redeemed
coupon in association with at least one of a unique identifier of that coupon
and . . . storing in association with said first user identification data
indicating that said redeemed coupon has been redeemed,” as generally
recited by dependent claims 53 and 58. App. Br. 19; Reply Br. 10-11. We
agree with the Examiner that Von Kohorn discloses that its system makes it
“possible to compare the coupons requested and redeemed with the coupons
requested and not redeemed” (col. 2:20-30). Additionally, Von Kohorn
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discloses that its central station (i.e., central computer system) is in bilateral
communication with redemption facility 906 via data facility 904 (col.
89:38-41; see also Fig. 29).
As such, we sustain the Examiner’s rejection of claims 53 and 58.

Claims 54 and 59
We are not persuaded of error by Appellants’ argument that Von
Kohorn fails to disclose or suggest that the central computer system
“determin[es] whether said redeemed coupon was previously redeemed,” as
generally recited by dependent claims 54 and 59. App. Br. 21; Reply Br. 12-
13. We agree with the Examiner that Von Kohorn discloses one-time
coupons (col. 20:38-43) which suggests that Von Kohorn’s system is
capable of determining whether a redeemed coupon was previously
redeemed. Additionally, we find that Von Kohorn discloses an
authentication process where the redemption facility interrogates the data
facility to compare the data on the record at the data facility with the record
on a card (coupon) and rejects the card if there is any disparity between the
two records (col. 91:10-20). In light of this disclosure, one of ordinary skill
in the art at the time of the invention would understand that Von Kohorn’s
central station is “determining whether said redeemed coupon was
previously redeemed,” and as such, renders obvious the subject matter of
claims 54 and 59.

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Claim 49 rejected under 35 U.S.C. § 103(a) as unpatentable over Von
Kohorn and Saigh.
We are not persuaded the Examiner erred in asserting that the
combination of Von Kohorn and Saigh discloses or suggests “wherein said
coupon is an electronic coupon and said person presenting said coupon does
so by transmitting said coupon over a network to said merchant computer
system,” as recited by dependent claim 49. App. Br. 22-23; Reply Br. 13-
14. Specifically, Appellants argue that Saigh fails to disclose or suggest the
“electronic redemption of coupons.” App. Br. 23. However, Saigh discloses
a promotional delivery system which allows users to shop electronically
using coupons on demand through an interactive promotional book bank
(col. 14:15-67). Saigh describes that its book bank is an Internet-based
point-of-sale system (col. 1:53-67) or interactive self-service vending device
(col. 2:13:55). Therefore, in the absence of any special definition for the
term “electronic coupon,” we find that Saigh discloses the redemption of an
electronic coupon over a network.
For these reasons, we sustain the Examiner’s rejection of claim 49
under 35 U.S.C. § 103(a) as unpatentable over Von Kohorn and Saigh.

DECISION
We affirm the Examiner’s rejections under 35 U.S.C. § 103(a).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2011).

AFFIRMED

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