Ex Parte Kaulbach et al

Patent Trial and Appeal Board

Dec 2, 2016

13293870 (P.T.A.B. Dec. 2, 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.
13/293,870 11/10/2011 Peter D. Kaulbach 0076412-000050 7797
21839 7590 12/06/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
12/06/2016 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER D. KAULBACH, MOSTAFA SABET,
JOSHUA KESSLER, STEPHEN TONER, STEPHEN HENDRIX,
MATTHEW RICHARD STOCKE, and ADAM KENNETH HOSP
Appeal 2014—008594
Application 13/293,870
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-008594
Application 13/293,870
STATEMENT OF THE CASE1
Peter D. Kaulbach, Mostafa Sabet, Joshua Kessler, Stephen Toner,
Stephen Hendrix, Matthew Richard Stocke, and Adam Kenneth Hosp
(Appellants) seek review under 35U.S.C. § 134 of a final rejection of
claims 1—24, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of “distributing advertisements to
mobile devices, specifically offers distributed to mobile devices such as
smart phones encoded with an offer identifier.” Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for distributing an offer to a computing
device computer, comprising:
[1] storing, by a server, offer preferences of a user of a
first computer;
[2] identifying, by the server, a location of the first
computer;
[3] identifying, by the server, the offer preferences of the
user of the first computer;
and
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 19, 2014) and Reply Brief (“Reply Br.,” filed August 8,
2014), and the Examiner’s Answer (“Ans.,” mailed June 9, 2014), and Final
Action (“Final Act.,” mailed January 17, 2014).
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[4] transmitting, by the server, a message including at
least the offer to the first computer,
[5] wherein the offer, within the transmission message,
(i) is for the purchase of goods or services,
(ii) meets the offer preferences of the user of the
first computer,
and
(iii) is encoded with a first offer identifier
corresponding to the user of the first computer,
and
[6] wherein the encoded first offer identifier is
configured to be decoded upon redemption of said offer.
The Examiner relies upon the following prior art:
Claims 1—6, 8—15, 17—19, 21, and 24 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Rajan.2
Claims 7, 16, 20, 22, and 23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Rajan and Michaelis.
The issues of anticipation and obviousness turn primarily on whether
Rajan encodes and decodes an identifier as recited.
Micha US 2008/0262928 A1
Rajan US 2009/0076912 A1
Oct. 23, 2008
Mar. 19, 2009
ISSUES
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Application 13/293,870
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition
of “encode.”
02. The plain meaning of “encode” is to convert
information into code.2 3
Facts Related to Appellants ’ Disclosure
03. Identification of the account may be based on any
offer identifier(s) encoded in the offer. For example, if the initial
offeree redeems the offer, the offer may only be encoded with the
offeree’s offer identifier. Spec. para. 68.
Facts Related to the Prior Art — Raj an
04. Raj an is directed to a mobile operating
environment, and more particularly to providing management of
dynamic mobile coupons at a mobile device. Rajan para. 3.
05. A dynamic mobile coupon (DMC) distribution
entity can receive mobile coupons and/or rules for generating such
coupons from a coupon supplier. The DMC distribution entity
2 The Examiner withdraws the rejection of claims 1—24 under 35 U.S.C.
§112, first paragraph, as lacking a supporting written description within the
original disclosure. Advisory Action mailed April 7, 2014.
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Application 13/293,870
can then generate, distribute and/or associate a DMC with the
mobile device if the mobile device qualifies based on such criteria.
Raj an para. 38.
06. A coupon generation/distribution server can
initiate, and a transceiver can be configured to receive, a unicast
push message. The unicast push message can transmit the DMC
application specifically to the mobile device. For instance, such a
message can utilize information unique to the mobile device (e.g.,
subscriber identity number, user profile information), and encode
the transmission based on such information. Raj an para. 55.
07. A redemption module can be configured to
facilitate redeeming a DMC in conjunction with a transaction. In
some aspects, the redemption module can provide mobile coupon-
related information to other devices. For instance, the redemption
module can provide a visual indication (e.g., a bar code displayed
on a user interface display) and/or auditory indication (e.g., an
auditory sequence associated with a DMC, a spoken name or ID
of the DMC, etc.) of a unique ID of a DMC on the output module.
Such indication can be utilized by a redemption entity (e.g., a
point of sale device) to identify the DMC. Further, the
redemption module can provide a wired and/or wireless electronic
transmission of the unique ID to the redemption entity in
conjunction with redeeming the DMC. Alternatively, or in
3 The American Heritage® Dictionary of the English Language, Fifth
Edition, 2016, https://www.ahdictionary.com/word/search.html?q=encode
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addition, the redemption module can provide user profile
information to the redemption entity. The redemption entity can
then access a user profile stored at the mobile device or
maintained on a network database to identify mobile coupons
associated with the user profile that are pertinent to a transaction.
Such mobile coupons can be redeemed in conjunction with the
transaction. Raj an para. 89.
08. To redeem a DMC, a mobile device can simply
present the user profile to a retail entity in conjunction with a
transaction. The retail entity can provide the user profile to
coupon server in conjunction with details of the transaction. The
coupon server can determine whether the user profile has any
mobile coupons associated with such profile. If a mobile coupon
is associated with the user profile, qualifying transaction
information associated with the mobile coupon can be extracted
from the coupon and referenced against the transaction
information provided by the retail entity. If the DMC is valid with
respect to the transaction, the value of the coupon can be refunded
to an account associated with the user profile, in effect
reimbursing the user the redeemable value of the DMC.
Accordingly, Rajan can provide device—based redemption (e.g.,
where a DMC is transmitted to the device) or network—based
redemption (e.g., where an indication of the DMC, describing
pertinent terms, conditions, etc., is transmitted to the device), or a
combination of both. Rajan can also provide security by utilizing
encryption/decryption, random or function—based coding, or the
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like, in conjunction with coupon generation and profile
generation. Raj an para. 112.
09. Rajan can further include a module for identifying
a mobile device. Identification can be based at least in part on a
predetermined characteristic (e.g., a qualifying characteristic).
Such a qualifying characteristic can be included with the DMC, as
provided by the vendor/supplier, or included within the rules for
generating the DMC. In addition, the module can determine
whether the mobile device meets such characteristic based at least
in part on wired and/or wireless data exchange with the mobile
device. Rajan para. 143.
ANALYSIS
With respect to the limitation of the offer identifier being decoded, we
are not persuaded by Appellants’ argument that
according to the present claims, the identifier encoded on
the offer itself is not decoded upon receipt at the user's device
when the transmission is decoded, but rather, upon redemption
at the merchant and after its transmission (to the user device)
has been completed.
App. Br. 7. Contrary to Appellants’ contention, there is no step of decoding
recited. Instead, the wherein clause recites that the encoding of the offer
identifier is configured to be decoded upon redemption of said offer. That is
the offer identifier is configured so that it may be decoded upon redemption.
As no particular encoding implementation is claimed or even disclosed, and
no implementation for how “upon redemption” is evaluated and triggered is
recited, any encoding scheme that allows decoding when redemption is
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initiated is within the scope of the claim. Raj an explicitly describes
transmitting the encoded coupon at the time of redemption, which would
necessarily be followed by decoding the coupon.
We are not persuaded by Appellants’ argument that
[i]n the present claims, when the user's computer (e.g.,
mobile device) receives the transmission from the server (and
after any conventional encoding and decoding of the
transmission), the payload (claimed offer) is available for
redemption and still remains encoded with the offer identifier
that corresponds to the user. The encoded offer identifier of the
present claims is not decoded until the offer is, in fact,
redeemed, e.g., at a merchant.
App. Br. 7. Again, there is no decoding step recited in claim 1 and the claim
does not recite that the offer remains encoded after reception.
We are not persuaded by Appellants’ argument that “the DMC of
Raj an is not itself encoded with an offer identifier that corresponds to the
user. Rather, the entire transmission (e.g. including header, payload, trailer,
etc. information) is encoded.” App. Br. 8. The claim as drafted does not
preclude parts of the transmission beyond the offer being encoded as well.
We are not persuaded by Appellants’ argument that
Regardless of whether paragraph [0089] of Rajan
discloses that a DMC may include a barcode with, e.g., a
unique ID of the DMC, and can be scanned upon redemption,
this barcode (alleged offer identifier) does not correspond to a
user, as does the encoded offer identifier of claim 1, and
therefore could not be decoded (upon redemption) to reveal the
identity of that user. In direct contrast, the barcode of Rajan
corresponds to the DMC so that coupon—related information
can be identified upon redemption.
App. Br. 9.
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The claim as drafted does not recite revealing the identity of the user.
The limitation of the first offer identifier corresponding to the user of the
first computer does not recite or narrow the implementation or degree of
correspondence. In particular, any indirect form of correspondence would
be within its scope. Further, the limitation does not specify how the
identifier is implemented. As the Examiner finds, Raj an describes using
information unique to the mobile device, which corresponds to the user, for
the encoding, and therefore decoding as well. Final Act. 7—8. Raj an also
includes a qualifying characteristic of the user’s device in the coupon that
identifies the user as having such a characteristic and at least in that sense
corresponds to the user.
As to separately argued claim 17, this is a system claim to perform the
method of claim 1.
As to separately argued claim 9, this is a system claim to perform the
method of claim 1 that recites “wherein the encoded first offer identifier is
decoded upon redemption of said offer.” “[Ajpparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). See also In re Schreiber, 128
F.3d 1473, 1477—78 (Fed. Cir. 1997) (functional language does not confer
patentability if prior art structure has capability of functioning in the same
manner). As we find supra, Raj an has the capacity to decode everything
including the identifier at time of redemption.
As to separately argued claims 3 and 11, we are persuaded by
Appellants’ argument that Raj an fails to describe further encoding with a
second identifier. The Examiner finds that Raj an’s coupon can be sent to a
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second user, but not that the second identifier is encoded with the first
identifier. Final Act. 9.
The remaining claims are argued on the basis of the independent
claims.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 4—6, 8—10, 12—15, 17—19, 21, and 24
under 35 U.S.C. § 102(b) as anticipated by Rajan is proper.
The rejection of claims 3 and 11 under 35 U.S.C. § 102(b) as
anticipated by Rajan is improper.
The rejection of claims 7, 16, 20, 22, and 23 under 35 U.S.C. § 103(a)
as unpatentable over Rajan and Michaelis is proper.
DECISION
The rejection of claims 1, 2, 4—10, and 13—24 is affirmed.
The rejection of claims 3 and 11 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED-IN-PART
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