Ex Parte Beck

Patent Trial and Appeal Board

May 4, 2015

10447823 (P.T.A.B. May. 4, 2015)

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.
10/447,823 05/29/2003 Mark Beck 8820-91701-US 2708
42798 7590 05/05/2015
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
05/05/2015 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 MARK BECK
____________________

Appeal 2012-011007
1

Application 10/447,823
2

Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–5 and 7–32. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1
Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
November 29, 2011) and Reply Brief (“Reply Br.,” filed July 23, 2012), and
the Examiner’s Answer (“Ans.,” mailed May 23, 2012).
2
Appellant identifies the inventor, Mark Beck, as the real party in interest.
App. Br. 3.
Appeal 2012-011007
Application 10/447,823

2
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to promotions and
more particularly to sponsored promotions for consumer opportunities”
(Spec. 1, ll. 4–5).
Claim 1, reproduced below, is the sole independent claim and is
representative of the subject matter on appeal:
1. A computer-implemented method comprising:
at a sponsor website comprising at least one server:
receiving information from at least one property-
related services provider regarding the at least one
property-related services provider;
receiving information from the at least one
property-related services provider regarding at least one
property consumer as corresponds to the at least one
property-related services provider; and
providing a redeemable-coupon-related promotion
that:
at least identifies the at least one property-
related services provider, and
corresponds to a consumer opportunity
regarding at least one of goods and services as
offered for sale by a sponsor of the sponsor-
website wherein the sponsor is other than the at
least one property-related services provider and
wherein the goods and services are not offered by
the at least one property-related services provider.

REJECTIONS
3

Claim 1 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.

3
The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Ans. 13.
Appeal 2012-011007
Application 10/447,823

3
Claims 1–5, 7–10, 12–17, 20–24, and 26–28 are rejected under
35 U.S.C. § 103(a) as unpatentable over Brown (US 2004/0030631 A1,
pub. Feb. 12, 2004), Fogelson (US 7,254,553 B2, iss. Aug. 7, 2007), and
Lowery (US 2003/0093287 A1, pub. May 15, 2003).
4

Claims 11, 18, 19, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown, Fogelson, Lowery, and Official Notice.
Claims 29–32 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Brown, Fogelson, Lowery, and Forward (US 6,578,011 B1,
iss. June 10, 2003).

ANALYSIS
Written Description
In rejecting claim 1 under 35 U.S.C. § 112, first paragraph, the
Examiner finds that there is no support in the Specification for “wherein the
sponsor is other than the at least one property-related services provider and
wherein the goods and services are not offered by the at least one property-
related services provider,” as recited in claim 1 (Ans. 4–5). The Examiner
acknowledges that paragraph 24 of the Specification discloses:
The property-related service provider can comprise, for
example, a realtor. In such an example, the sponsored website
can facilitate provision of, for example, a discount coupon for
building materials offered for sale by the sponsoring
commercial enterprise, which discount coupon also presents the
name and/or other identifying indicia as correlates to the realtor
(paragraph 24).

4
We treat, as inadvertent error, the Examiner’s identification of claims 35–
37 in the “Claim Rejections - 35 USC § 103” at page 5 of the Answer.
These claims were canceled in an Amendment filed June 1, 2011.
Appeal 2012-011007
Application 10/447,823

4
Id. at 4. But the Examiner concludes, “[t]he specification does not teach
wherein the sponsor is other than the at least one property -related service
provider and wherein the goods and services are not offered by the at least
one property -related service provider” (id.).
Appellant asserts that the § 112 rejection is improper and that
paragraphs 23 and 24 of the Specification provide “written description
support for the claimed expression that the goods and services offered by the
sponsor ‘are not offered’ by the at least one property-related services
provider” (App. Br. 7).
5
Appellant further maintains that the claimed
expression is taken verbatim from paragraph 28 of the Specification, which
explicitly describes “‘a promotion offered by a sponsor (typically a sponsor
other than the property-related services provider)’” (Reply Br. 3).
6

5
Paragraph 23 states that “[t]he sponsored website . . . facilitates provision
of a promotion that at least identifies the at least one property-related
services provider and that also corresponds to a consumer opportunity as
offered by the sponsor.” And paragraph 24 discloses a scenario in which the
sponsor is a commercial business that sells building materials, construction
tools, repair tools, household appliances, landscaping tools, landscaping
materials, and/or interior furnishings, and the property-related service
provider is a realtor. According to Appellant, paragraph 24, thus, makes
clear that the claimed sponsor (i.e., a hardware store) is “other than” the
property-related service provider (i.e., a realtor) and the goods and services
sold by the sponsor are not “offered for sale” by the property-related
services provider (App. Br. 6).
6
Paragraph 28 reads:
[0028] Referring now to the illustrations, and in particular to
FIG. 1, a sponsor website (existing, in a preferred embodiment,
on the World Wide Web of the Internet) can be configured in a
variety of known (or hereafter developed) ways to essentially
facilitate these basic activities: receiving 10 information regarding
property-related services providers, receiving 11 information
regarding property consumers as corresponds to these property-
Appeal 2012-011007
Application 10/447,823

5
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id. See also Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (The Specification need
not provide verbatim support but “the specification must contain an
equivalent description of the claimed subject matter”). Moreover, any
negative limitation or exclusionary proviso must have basis in the original
disclosure. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012) (“Negative claim limitations are adequately supported when
the specification describes a reason to exclude the relevant limitation.”).
Here, we agree with Appellant that the Specification, specifically
paragraphs 23, 24, and 28, conveys with reasonable clarity to those skilled in
the art that, as of the filing date sought, Appellant was in possession of the
invention as now claimed, including providing, at a sponsor website, a
redeemable-coupon-related promotion that identifies a property-related

related services providers, and providing 12 a promotion offered
by a sponsor (typically a sponsor other than the property-related
services provider) that also identifies the property-related services
provider that corresponds to the respective property consumer. . . .
(Emphasis added).
Appeal 2012-011007
Application 10/447,823

6
services provider and corresponds to goods and/or services offered for sale
by the website sponsor “wherein the sponsor is other than the . . . property-
related services provider and . . .the goods and services are not offered by
the . . . property-related services provider,” as recited in claim 1.
Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 112, first paragraph.
Obviousness
Appellant argues that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because none of Brown, Fogelson, and
Lowery discloses or suggests “at a sponsor website comprising at least one
server . . . providing a redeemable-coupon-related promotion,” as recited in
claim 1 (App. Br. 9). The Examiner maintains that the rejection is proper,
and that Brown discloses the argued limitation in at least paragraphs 28–31
(Ans. 6). We agree with Appellant.
Brown is directed to a system and method for assisting buyers
interested in renting, leasing, acquiring, or selling real property in selecting
appropriate real estate properties, and for facilitating cooperation among
various parties that contribute to the selection, transaction, and associated
services (Brown, Abstract). Brown discloses real estate transaction
system 100, with reference to Figure 1, and describes that the central
coordinating element in the system is real estate server 102 (id. ¶ 26). Other
participants include realtor-reseller 104, which establishes a reseller
agreement with real estate server 102 and communicates a commitment of a
selling commission discount (id.); promotional alliance partner 112, which
provides services of interest to potential customers of various realtor-
resellers 104, e.g., information about real estate available for sale or rent;
Appeal 2012-011007
Application 10/447,823

7
home repair supplies; and home repair services (id. ¶ 27); and buyer 114,
who wants to acquire, i.e., purchase, rent, lease, or otherwise identify and
perform a real property transaction pertaining to, a certain type of real
property (id. ¶ 28)
Brown discloses in paragraph 28 that in one exemplary embodiment,
buyer 114 notices a promotion of promotional alliance partner 112, e.g., an
offer to receive real estate related services at a discounted price; buyer 114
can respond to the offer by “clicking on an appropriate actuator on a world
wide web site configured for this purpose . . . or by signaling the response by
filling in a coupon at a retail outlet of a promotional partner.” Buyer 114 is
then directed to a personalized web page or portal 120 on real estate
server 102 where the buyer registers by supplying relevant personal
information and information about the real property in which buyer 114 is
interested (id. ¶ 29).
The Examiner equates promotional alliance partner 112 to the
claimed sponsor (see Ans. 15), which indeed is an entity, disclosed in the
cited portions of Brown, that provides a redeemable promotion that
“corresponds to a consumer opportunity regarding at least one of goods and
services as offered for sale by a sponsor.” However, claim 1 requires that
the sponsor website provide the “redeemable-coupon-related promotion,”
and, as Appellant points out, the sponsor website in Brown is real estate
server 102, not promotional alliance partner 112 (Reply Br. 7). We find
nothing in the cited portions of Brown that discloses or suggests that real
estate server 102 “provid[es] a redeemable-coupon-related promotion,” as
recited in claim 1 (see id.).
Appeal 2012-011007
Application 10/447,823

8
Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a).
The remaining rejections of dependent claims 2–5 and 7–32 based on
Brown, Fogelson, and Lowery in combination with Official Notice or
Forward do not cure the deficiency in the Examiner’s rejection of claim 1.
Therefore, we also do not sustain the Examiner’s rejections of claims 2–5
and 7–32 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claim 1 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner’s rejections of claims 1–5 and 7–32 under 35 U.S.C.
§ 103(a) are reversed.

REVERSED
hh