Ex Parte FarmanfarmaianDownload PDFPatent Trial and Appeal BoardSep 19, 201612192799 (P.T.A.B. Sep. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/192,799 08/15/2008 27667 7590 HA YES SOLOWAY P.C. 4640 E. Skyline Drive TUCSON, AZ 85718 09/21/2016 FIRST NAMED INVENTOR Fati Farmanfarmaian 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. OFFERNODE 07.01 3489 EXAMINER SIGMOND, BENNETT M ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 09/21/2016 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): admin@hayes-soloway.com nsoloway@hayes-soloway.com sbronson@hayes-soloway.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte F ATI F ARMANF ARMAIAN Appeal2014-002757 Application 12/192,799 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1--45. We have jurisdiction under 35 U.S.C. § 6(b ). STATEMENT OF THE DECISION We AFFIRM. 1 Our decision references Appellant's Appeal Brief ("App. Br.," filed July 10, 2013), Reply Brief ("Reply Br.," filed Dec. 23, 2013), the Examiner's Answer ("Ans.," mailed Oct. 24, 2013), and the Final Rejection ("Final Act.," mailed Feb. 14, 2013). 2 Appellant identifies the real party in interest as "Offemode, Inc." App. Br. 2. Appeal2014-002757 Application 12/192,799 CLAIMED INVENTION "The present invention is generally related to online business promotion, and more particularly, is related to a system and method for providing promotional opportunities within a community" (Spec. 1: 10-12). Claims 1, 9, 17, 20, and 45 are independent. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A system for providing promotional opportunities, the system comprising: a communication source comprising a computer-readable medium and a computer-accessible network having a software platform that supports a sale of a plurality of vouchers, said software platform under operational control of a controlling entity; a voucher creation system in communication with the communication source, the voucher creation system configured to allow at least one voucher creating entity to negotiate with said controlling entity terms of at least a first voucher of the plurality of vouchers for sale and to create said first voucher of the plurality of vouchers for sale through the software platform based on said negotiated terms, said first voucher conferring a right to claim goods or services; a voucher purchasing element, within the software platform and under operational control of the controlling entity, for purchasing by the controlling entity at least the first voucher from said at least one voucher creating entity; and a voucher sales element, within the software platform, configured to allow the controlling entity to offer said first voucher for sale to at least one potential buyer, wherein the voucher sales element is configured to provide sufficient access to said at least one potential buyer to purchase the first voucher from said controlling entity. App. Br. 22, Claims Appendix. 2 Appeal2014-002757 Application 12/192,799 REJECTIONS I. Claims 1-5, 8-12, 15-24, 26, 27, and 35--45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Arganbright (US 6,980,962 Bl, iss. Dec. 27, 2005), Macnish (US 2007/0215696 Al, pub. Sept. 20, 2007), and Habiby (US 2003/0033215 Al, pub. Feb. 13, 2003). II. Claims 6, 7, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Arganbright, Macnish, Habiby, and Teague (US 2006/0212355 Al, pub. Sept. 21, 2006). III. Claims 25 and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Arganbright, Macnish, Habiby, and Van Luchene (US 2004/0138953 Al, pub. July 15, 2004). IV. Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Arganbright, Macnish, Habiby, and Perry (US 2007/0073593 Al, pub. Mar. 29, 2007). V. Claims 30-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Arganbright, Macnish, Habiby, and Sandhu (US 2007/0192130 Al, pub. Aug. 16, 2007). DISCUSSION We have reviewed Appellant's arguments in the Briefs against the Examiner's Answer and the Final Rejection, and we are not persuaded of error. We adopt the Examiner's findings and rationale provided in the Answer and Final Rejection as our own, and we note the following for emphasis. 3 Appeal2014-002757 Application 12/192,799 Rejection I Appellant argues independent claims 1, 9, 17, 20, and 45 as a group (App. Br. 14--19). We select claim 1 as being representative. Thus, claims 9, 17, 20, and 45 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). We are not persuaded by Appellant's assertion that the Examiner has misinterpreted the claim term "voucher" (App. Br. 12). Appellant has not cited to a definition from the Specification or provided persuasive evidence to dispute the Examiner's proffered dictionary definition of "voucher" (see Final Act. 3, citing Merriam-Webster's Dictionary) to support this assertion. Instead, Appellant argues that the claims specify that the "first voucher" confers a right to claim goods or services and "that a 'coupon' in no way confers a right to claim goods or services" (App. Br. 13). But the Examiner relies on Arganbright's teaching of "gift certificates," not coupons (see Final Act. 5 (citing "Arganbright, at least col. 54:50-55:11, col. 59:55-67, col. 61:3-5, col. 61:48-57, col. 62:4--30 disclosing that the system supports the sale of vouchers including gift certificates, all references herein to a 'product' or 'products' shall include a reference to vouchers including gift certificates")). And indeed, the value of a "gift certificate" is to confer the right to claim goods or services with it. Appellant's argument that "nowhere does Arganbright provide any teaching or suggestion that the marketing company purchases vouchers (or even products, for that matter) from a voucher creating entity (e.g., a merchant), based on negotiated terms, and offers that voucher for sale to potential buyers" (App. Br. 15) is unpersuasive because Appellant is attacking Arganbright individually; the rejection is based on the combined 4 Appeal2014-002757 Application 12/192,799 teachings of Arganbright, Macnish, and Habiby, not on any one of them alone. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (N onobviousness cannot be established by attacking the references individually when the rejection is based on the teachings of a combination of references). For instance, the Examiner acknowledges that "Arganbright does not expressly disclose that the system supports negotiation of voucher terms and creation of vouchers based on negotiated terms," and instead relies on Macnish to cure this deficiency (Final Act. 6). Appellant acknowledges that Macnish "teaches a voucher 'facilitator' which allows merchants to submit voucher terms, and if acceptable to the voucher facilitator, the system will create vouchers which can be sold from the merchant to a customer," but Appellant argues that the combination fails to provide any teaching or suggestion of a voucher creation element that creates vouchers based on negotiations between the controlling entity and a voucher creation entity" (App. Br. 16). We are not persuaded of Examiner error because Appellant does not adequately explain why Macnish's teaching of preparing a proposed voucher 30 using the electronic voucher system 10 for being offered to the facilitator 12, which "checks each proposed voucher 30 for economic value (i.e., by comparing the cost of the voucher 30 to potential economic benefits provided by the voucher 30) and to ensure that the duration of the offer will be such that the customer 18 will have adequate time to take advantage of the offer" before approving or rejecting the offer, does not teach or suggest creating and negotiating the terms of a voucher (see Final Act. 6, citing Macnish i-fi-1 40-41 ). Macnish discloses that "the merchant 14 is informed that the proposed voucher 30 is unacceptable and steps 106 through 110 5 Appeal2014-002757 Application 12/192,799 repeat until the merchant 14 submits a proposed voucher 30 the voucher facilitator 12 approves" (Macnish i-f 40). Appellant has not acted as her own lexicographer to clearly set forth a definition of the term "negotiate" in the Specification or the Briefs before us. Apart from disagreeing with the Examiner's interpretation, Appellant has not offered persuasive reasoning or evidence to dispute the Examiner's finding. Thus, the Examiner properly determines that this disputed claim term carries its ordinary and customary meaning (see Final Act. 3, citing Merriam-Webster Dictionary; see also Ans. 11-12). As such, we agree with the Examiner's finding that under a broadest reasonable interpretation, one of ordinary skill in the art would consider Macnish's voucher approval process discussed supra as reading on the claimed voucher negotiation. Appellant also argues: The Examiner erroneously cites Habiby as disclosing 'a voucher purchasing element, within the software platform and under operational control of the controlling entity, for purchasing by the controlling entity, at least the first voucher from said at least one voucher creating entity,' as required by Appellant's independent claim 1. Nowhere does Habiby disclose or suggest that a controlling entity, having operational control of the software platform, purchases vouchers from a voucher creating entity and offers those vouchers for sale to potential buyers. In fact, there is no single controlling entity in Habiby at all. Rather, Habiby provides an IT solution for an industry (i.e., wholesalers/distributors of goods for contractors/sub-contractors in construction projects) whereby wholesalers and distributors can access aggregated product information from multiple manufacturers that is stored in a master database of product information. App. Br. 17-18 (citing Habiby i-fi-138 and 45). 6 Appeal2014-002757 Application 12/192,799 The Examiner responds: The Office Action cites Habiby because Habiby describes the well-known business arrangement of a wholesale distributorship. For example, at [0045] (cited in Office Action at ,-r 11 ), Habiby teaches: "Sellers, for example, are wholesalers and distributors that purchase and resell manufactured goods to contractors and subcontractors ... Product manufacturers, for example, are manufacturers who produce goods but do not sell them directly to contractors and builders. Rather, they rely on wholesalers and distributors as their distribution arms." Thus, Habiby expressly teaches that middlemen purchase goods for resale from the creators of those goods, and re-sell them to consumers of the goods. When combined with art teaching a computerized system for purchasing and re-selling vouchers, the combination expressly supplies the missing link of purchasing goods (e.g. vouchers) for resale from the manufacturer of the goods. In the context of the combination, this teaches the portion of the "voucher purchasing element" underlined above. ii .. ns. 15-16. We are likewise unpersuaded by Appellant's argument here. To further understand the scope of the "voucher purchasing element," Appellant directs us to the Specification (App. Br. 7, citing Spec. 6: 14--7:5). We find this section of the disclosure describing the value of vouchers as related to each entity, such that "Face Value" (F) is the dollar amount the voucher may purchase in goods at the issuing entity 22, "Wholesale Value" (W) is the price at which issuing entity 22 sells its vouchers to software platform 20, and "Buyer Price" (B) is the price software platform 20 resells vouchers to buyers 28 (Spec. 6: 14--19). After buying vouchers from the issuing entity at wholesale and selling to buyers at retail, "the difference between Band W, net of the Fees (B-W-Fees) is left for bounties to the company operating the 7 Appeal2014-002757 Application 12/192,799 software platform 20" (id. 6:22-24 ). In other words, software platform 20 reaps the benefits of being a wholesaler by reselling vouchers to buyers at a profit, not unlike the teachings of Habiby, as asserted by the Examiner. Furthermore, we note that independent claim 1 is directed to a system. Although it is permissible, as Appellant does in claim 1, to recite features of an apparatus using functional language, such functional language may not be relied on for patentability if the prior art discloses or suggests structure capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1478-1479 (Fed. Cir. 1997). The portion of the Specification cited by Appellant fails to disclose any structure corresponding to the "voucher purchasing element." Appellant has made no showing here or offered any argument, that the combination of the prior art fails to disclose or suggest software configuring hardware capable of purchasing vouchers. In fact, there is no objective evidence of record here that the structure and/or function of the voucher purchasing element is altered or otherwise affected by being under the operational control of the "controlling entity." As such, we are not persuaded, on the present record, of error on the part of the Examiner. According! y, we sustain the rejection of independent claim 1, and independent claims 9, 3 17, 20, and 45, which fall with claim 1. 3 We note that Appellant uses the Reply Brief to introduce new arguments with respect to claim 9 (see Reply Br. 7-8). "Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A Jn issue not raised by an appellant in its opening brief ... is waived.") (citing Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. Cir. 1990)). The Examiner's findings as to claim 9 remain unchanged from the Final Rejection, from which the instant appeal was 8 Appeal2014-002757 Application 12/192,799 We also sustain the rejection of dependent claims 2-5, 8, 10-12, 15, 16, 18, 19, 21-24, 26, 27, and 35--44, which are not separately argued except based on their dependence on their corresponding independent claims (see App. Br. 19). Rejections 11-V To the extent that Appellant contends that the teachings of Teague, Van Luchene, Perry, and Sandhu do not cure the alleged deficiencies of the combination of Arganbright, Macnish, and Habiby (see App. Br. 19-21 ), we sustain Rejections II-V for the reasons discussed above. DECISION The Examiner's decision to reject claims 1--45 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED taken. In fact, the Examiner only addresses the insufficiency of Appellant's arguments presented in the Appeal Brief with respect to claim 1 (see Ans. 4). Appellant could have presented the newly introduced arguments in the Appeal Brief. However, Appellant may not present arguments in a piecemeal fashion, holding back evidence and arguments until an examiner answers the original brief. This basis for asserting error is waived. See 37 C.F.R. § 41.37(c)(l)(iv). 9 Copy with citationCopy as parenthetical citation