Ex Parte Farmanfarmaian et al

Patent Trial and Appeal Board

Sep 19, 2016

12435310 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/435,310 0510412009
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 CIP 3072
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
Exparte FATI FARMANFARMAIAN, CLIFF W. ELGIN, and
JOSEPH NOON JR.
Appeal2014-002848
Application 12/435,310
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
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-34. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
July 24, 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 Appellants identify the real party in interest as "Offemode, Inc." App.
Br. 2.
Appeal2014-002848
Application 12/435,310
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. 1:8-10).
Claims 1, 9, 17, and 20 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 and to create said first voucher of the
plurality of vouchers for sale based on said negotiated terms,
said first voucher conferring a right to claim goods or services;
and
a negotiating element in communication with the
communication source, the negotiating element configured to
allow a referral source and the at least one voucher creating
entity to negotiate voucher terms,
wherein the communication source is configured to allow
the referral source to communicate with the at least one voucher
creating entity and at least a first potential buyer, the referral
source having an inventory of vouchers, wherein the inventory
includes a first portion of the plurality of vouchers,
wherein in operation the controlling entity purchases all
of the vouchers created by the voucher creation system, and the
controlling entity provides the referral source with the
inventory to market to potential buyers,
wherein the software platform is configured to allow the
first potential buyer to purchase the first portion of the plurality
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Application 12/435,310
of vouchers from the referral source, and the software platform
is further configured to allow a second potential buyer to
purchase a second portion of the plurality of vouchers directly
from the controlling entity,
wherein the software platform is configured to provide as
a bounty, split between the controlling entity and the referral
source, a difference between the price at which the controlling
entity purchases a voucher and the price at which the voucher is
purchased by a buyer from the referral source.
App. Br. 22-23, Claims Appendix.
REJECTIONS
I. Claims 1-5, 8-12, 15-24, 26, and 27 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).
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Application 12/435,310
DISCUSSION
We have reviewed Appellants' 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.
Rejection I
Appellants argue independent claims 1, 9, 17, and 20 as a group (App.
Br. 12-18). We select claim 1 as being representative. Thus, claims 9, 17,
and 20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants' assertion that the Examiner has
misinterpreted the claim term "voucher" (App. Br. 10). Appellants have 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 their
assertion. Instead, Appellants argue 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. 11 ). But the
Examiner also relies on Arganbright' s teaching of" gift certificates," not just
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 and coupons,
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.
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Appellants' argument that "nowhere does Arganbright provide any
teaching or suggestion that the marketing company purchases all of the
created vouchers (or even products, for that matter) from a voucher creating
entity (e.g., a merchant), based on negotiated terms, and offers at least a
portion of those vouchers for sale to potential buyers, while providing an
inventory containing another portion of those vouchers to a referral source"
(App. Br. 14) is unpersuasive because Appellants are attacking Arganbright
individually; the rejection is based on the combined 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) (Nonobviousness
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. 7).
Appellants argue that Arganbright fails to provide any teaching or
suggestion "of a software platform that is configured to provide as a bounty,
split between the controlling entity and the referral source, a difference
between the price at which the controlling entity purchases a voucher
and the price at which the voucher is purchased by a buyer from the
referral source" (App. Br. 14). We disagree. Instead, we agree with the
Examiner's findings and response as set forth on pages 12-14 of the
Answer. We further note that Appellants do not present any persuasive
argument or technical reasoning to show that the argued limitation is more
than a predictable variation that would have been obvious, in view of
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Arganbright, to a person of ordinary skill in the art using no more than the
inferences and creative steps such a person would employ. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (When considering
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.").
Although Appellants acknowledge 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 consumer," Appellants argue that the
combination "fails to provide any teaching or suggestion of a voucher
creation element that creates vouchers based on negotiation between a
controlling entity and a voucher creation entity, and that are purchased by
the controlling entity" (App. Br. 16, emphasis omitted).
We are not persuaded of Examiner error because Appellants do 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. 7, 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
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repeat until the merchant 14 submits a proposed voucher 30 the voucher
facilitator 12 approves" (Macnish i-f 40). Apart from disagreeing with the
Examiner's interpretation, Appellants have not offered persuasive reasoning,
an alternate dictionary definition, or evidence to dispute the Examiner's
finding. Thus, the Examiner correctly 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.
Furthermore, we note that the broadest reasonable interpretation of the
system (i.e., machine) of claim 1 requires a processor with the capability to
perform the recited functions. Although it is permissible, as Appellants do
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). Appellants
have 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 purchasing vouchers 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
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claim 1, and independent claims 9, 3 17, and 20, which fall with claim 1. We
also sustain the rejection of dependent claims 2-5, 8, 10-12, 15, 16, 18, 19,
21-24, 26, and 27, which are not separately argued except based on their
dependence on their corresponding independent claims (see App. Br. 18).
Rejections 11-V
To the extent that Appellants contend 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 1-34 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
3 We note that Appellants use the Reply Brief to introduce new arguments
with respect to claim 9 (see Reply Br. 6-7). "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
taken. In fact, the Examiner only addresses the insufficiency of Appellants'
arguments presented in the Appeal Brief with respect to claim 1 (see Ans. 4).
Appellants could have presented the newly introduced arguments in the
Appeal Brief. However, Appellants 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).
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