Ex Parte Bouta et al

Patent Trial and Appeal Board

Sep 28, 2016

12868579 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/868,579 08/25/2010 Brian Bouta
97531 7590 09/29/2016
Mauriel Kapouytian Woods LLP
15 W. 26th Street
7th Floor
New York, NY 10010
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.
10033-2021500 6189
EXAMINER
GATLING, STACIE D
ART UNIT PAPER NUMBER
3622
MAILDATE DELIVERY MODE
09/29/2016 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 BRIAN BOUTA and ARUN SUNDARESAN
Appeal2014-006230
Application 12/868,579
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JAMES A. WORTH, 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 1, 2, 6-12 and 16-21. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-006230
Application 12/868,579
Claim 1 is illustrative:
1. A method for sharing coupons, the method
compnsmg:
providing, to a user device, one or more coupons
comprising a sharing operation;
receiving, by a computer, notification of a coupon being
selected for sharing, wherein the notification is a result of a
referring user selecting the sharing operation of the coupon;
receiving, from the referring user, a list of one or more
referred users, wherein the list comprises users with which the
referring user intends to share the coupon;
formatting, by a computer, the coupon into a referred
coupon having an identifier that is associated with the referring
user and the one or more referred users, wherein the referred
coupon does not comprise the sharing operation such that the
referred coupon may not be shared with another user after being
shared with at least one referred user;
sharing the referred coupon with the one or more referred
users; and
issuing a payment to the referring user based on a
conversion of the referred coupon by the one or more referred
users, the conversion comprising a purchase using the referred
coupon.
Appellants appeal the following rejections:
1. Claims 1, 2, 6-12 and 16-21under35 U.S.C. § 103(a) as unpatentable
over Otto (US 2009/0030798 Al, pub. Jan. 29, 2009) and Daniel (US
6,766,301 Bl, iss. July 20, 2004).
ISSUE
Did the Examiner err in rejecting the claims because Otto does not
disclose providing coupons comprising a sharing operation?
2
Appeal2014-006230
Application 12/868,579
ANALYSIS
The Examiner relies on paragraph 108 of Otto for teaching a coupon
with a sharing operation (Ans. 2). The Appellants argue that Otto does not
disclose a coupon with a sharing operation. We agree.
We find that paragraph 108 of Otto teaches a system in which loyalty
members are given coupons for referring other people for membership. The
receipt of the coupons may be conditioned on the actions of the other person
such as signing up for the loyalty program or redeeming a coupon. There is
no disclosure in this portion of Otto of sharing coupons much less a coupon
that comprises a sharing operation. We do not agree with the Examiner that
the referral operation disclosed in Otto is a sharing operation and even if it
were, it is not a coupon comprising a sharing operation.
In view of the foregoing, we will not sustain the rejection of claim 1
and claims 2, and 6-10 dependent therefrom. We will also not sustain the
• '. ., • 1• ' 1 ' .1 1 • 1 1 ... 1 reJecnon as n is mrec1ea wine remammg crn1ms oecause eacn or mese
claims requires a coupon with a sharing operation.
DECISION
The decision of the Examiner is reversed.
REVERSED
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