Ex Parte Golder

Patent Trial and Appeal Board

Sep 16, 2016

12660084 (P.T.A.B. Sep. 16, 2016)

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.
12/660,084 02/19/2010 Peter Newman Golder 8579
7590 09/16/2016
Peter Golder
99 East Wheelock Street
Hanover, NH 03755
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
09/16/2016 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 PETER NEWMAN GOLDER
__________

Appeal 2014-000876
Application 12/660,0841
Technology Center 3600
____________

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Peter Newman Golder (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1–20. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

1 The Appellant identifies Dr. Peter Golder as the real party in interest.
Br. 1.
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Application 12/660,084

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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method performed by a computing device, the method
comprising:
receiving, by the computing device from a plurality of
advertiser devices,
a plurality of advertisements,
for each advertisement, at least one corresponding
personal information value, and
for each advertisement, a corresponding price;
granting, by the computing device to an email device, access to
a first email account, in which the first email account has a user and
has an account balance;
calculating, by the computing device, for each of a plurality of
personal information types, a corresponding price;
instructing, by the computing device, the email device to
display the plurality of personal information types and the
corresponding prices;
instructing, by the computing device, the email device to
display
an input control that permits entry of a minimum price,
and
an input control that permits entry of a respective
personal information value for each of a second plurality of personal
information types;
receiving, by the computing device from the email device, a
first set of personal information values of the user;
receiving, by the computing device from the email device, a
minimum price;
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determining, by the computing device, a first subset of the
advertisements that match the first set of personal information values,
without making the first set of personal information values available
to any of the plurality of advertiser devices,
in which
each advertisement of the first subset matches at least one
of the first set of personal information values, and
each advertisement of the first subset has a corresponding
price which is not less than the minimum price;
sending, by the computing device to the first email account, a
plurality of email messages, in which each email message includes a
respective advertisement of the subset of advertisements;
determining, by the computing device, an amount to pay the
user based on the prices corresponding to the subset of
advertisements;
increasing, by the computing device, the account balance by the
amount to pay the user;
after sending the plurality of email messages, receiving, by the
computing device, a command to withdraw at least one personal
information value of the first set of personal information values;
determining, by the computing device, a second subset of the
advertisements that match a second set of personal information values,
in which the second set of personal information values
includes each of the first set of personal information values
except for
the at least one personal information value,
whereby the second set of personal information values does not
include the at least one personal information value; and
sending, by the computing device to the first email account, a
plurality of email messages, in which each email message includes an
advertisement of the second subset of advertisements.

Appeal 2014-000876
Application 12/660,084

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Courchesne
Bosarge

US 2006/0100923 A1
US 2008/0215692 A1
May 11, 2006
Sept. 4, 2008
“Buying with Buy It Now,” Wayback Machine: http://web.archive.
org/web/20061222192403/pages.ebay.com/buy/how-buy-bin.html,
Dec. 22, 2008; accessed Mar. 8, 2012. [“Buying with Buy It Now”]

The following rejections are before us for review:
1. Claims 1–20 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.2
2. Claims 1–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Courchesne, Bosarge, and “Buying with Buy It
Now”.

ISSUES
Did the Examiner err in rejecting claims 1–20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention?

2 This rejection, which is included in the Final Rejection, does not appear in
the Examiner’s Answer. However, there is no indication that it is has been
withdrawn. Accordingly, it will be treated as still pending.
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Did the Examiner err in rejecting claims 1–20 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Courchesne, Bosarge, and
“Buying with Buy It Now”?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1–20 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
According to the Examiner, the following limitations in claim 1 are
“not clear”:
 “granting, by the computing device to an email device, access
to a first email account, in which the first email account has a
user and has an account balance” (Final Act. 2);
 “calculating, by the computing device, for each of a plurality of
personal information types, a corresponding price; instructing,
by the computing device, the email device to display the
plurality of personal information types and the corresponding
prices” (Final Act. 3);
 “receiving, by the computing device from the email device, a
first set of personal information values of the user; determining,
by the computing device, a first subset of the advertisements
that match the first set of personal information values, without
making the first set of personal information values available to
any of the plurality of advertiser devices” (Final Act. 3); and.
 “after sending the plurality of email messages, receiving, by the
computing device, a command to withdraw at least one
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personal information value of the first set of personal
information values” (Final Act. 3).
The difficulty with the Examiner’s rejection is that no consideration
has been given to the construction to be given claim 1. General principles of
claim construction apply when determining indefiniteness. Enzo Biochem,
Inc. v. Applera Corp., 599 F.3d 1325, 1332–33 (Fed. Cir. 2010). Take, for
example, the claim phrase “granting, by the computing device to an email
device, access to a first email account, in which the first email account has a
user and has an account balance” (claim 1) which is alleged to be unclear.
According to the Specification, “a type of email device is a general purpose
computer programmed with a client application such as Microsoft Outlook
[™] or Mozilla Thunderbird [TM].” Para. 132. Regarding the email
account, the Specification discloses:
The system server receives, from a first message device (e.g., a
personal computer, a mobile phone, a smart phone), an identification
of a user of a first email account. For example, the system server may
receive from the first message device a user name (e.g., an
alphanumeric string) and a password. This user name and password
can be verified to be the user name and password of a particular email
account (a “first email account”), and that email account corresponds
to a particular user. The first email account has an account balance
(e.g., the system server stores, with respect to the first email account,
a balance such as an amount of money, points or other quantity that is
credited to the account or that must be otherwise paid to the user of
the account).
Para. 102. In light of the Specification, the claim phrase is clear – it is
reasonably broadly construed to cover a general purpose computer
comprising an email program to which is attached an account associated
with a user and an account balance. The Examiner finds that

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it is not clear whether the computing device is [an] email device, said
email device is a registration host wherein a user registers with the
host by providing their email address and profile information, or
something else. Also, it is not clear whether said computing device
grants mail device access to user accounts which have user email
addresses, or something else.
Final Act. 2–3. However, in light of the Specification, the claim phrase is
clear. The hypotheticals the Examiner raises about what the claim could
cover is not a question of clarity but a question of scope. For example,
whether “the device grants mail device access to user accounts which have
user email addresses, or something else” goes to the breadth of the claim, not
its definiteness. Cf. In re Robins, 429 F.2d 452, 458 (CCPA 1970) (“Giving
the language its broadest possible meaning, as we are bound to do in the
absence of special definitions by appellant, the breadth of the claims insofar
as the catalyst is concerned is indeed immense. However, ‘Breadth is not
indefiniteness.’ In re Gardner, 427 F.2d 786 [, 788], 57 CCPA [1207]
(1970).”) We reach the same conclusion as to the other allegedly unclear
limitations.
The rejection is not sustained.

The rejection of claims 1–20 under 35 U.S.C. § 103(a) as being
unpatentable over Courchesne, Bosarge, and “Buying with Buy It Now”.
All the claims include a limitation to a first email account, in which
the first email account has an account balance. See independent claims 1, 2,
and 20. The Appellant argues that “[n]o references of record suggest any
sort of ‘email account which has an account balance’”. Page 5 of the
Final Office Action asserts that Bosarge Fig. 2 (and associated disclosure)
discloses these limitations. However, the entirety of Bosarge contains no
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reference whatsoever to any account or any account balance.” Br. 22. The
Examiner responded as follows:
In response to appellant's argument that cited references do not
teach user account with account balance.
However, cited reference Courchesne teaches capability and
concept for a user account with account balance.
Ans. 20.
According to the Examiner, “Co[u]rchesne does not explicitly recite
email, however it is old and known . . . .” Final Act. 5. Apparently, given
that Courchesne does not disclose email, the Examiner is conceding that
Courchesne does not disclose said claim limitation. The Examiner appears
to rely further on Bosarge as evidence that an email account with an account
balance was furthermore known – albeit that is not stated expressly. Rather,
the Examiner argues that “Courchesne in view of Bosarge teaches [the]
capability and [a] concept for . . . granting, to an email device, access to a
first email account, in which the first email account has a user and has an
account balance [Bosarge, Fig. 2, and associated disclosure].” Final Act. 5.
The difficulty with the Examiner’s reasoning is two-fold. First, we
have reviewed Fig. 2 and the associated disclosure in Bosarge but can find
no mention of an email account with an account balance. All that is
disclosed in Bosarge pertains to forming an email with an ad included.
Second, the Examiner does not explain how the combination of well-known
email and Bosarge’s disclosure of forming an email with an ad included
yields an email account that has an account balance. The Examiner states
that “Courchesne in view of Bosarge teaches [the] capability and [a]
concept” for doing that but the Examiner does not explain and we do not see
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how (a) well-known email and (b) Bosarge’s ad-included email would lead
one of ordinary skill in the art to an email account with an account balance
as claimed.
For the foregoing reasons, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence.

CONCLUSIONS
The rejection of claims 1–20 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
not sustained.
The rejection of claims 1–20 under 35 U.S.C. § 103(a) as being
unpatentable over Courchesne, Bosarge, and “Buying with Buy It Now” is
not sustained.

DECISION
The decision of the Examiner to reject claims 1–20 is reversed.

REVERSED