Ex Parte Laor

Board of Patent Appeals and Interferences

May 20, 2008

09595677 (B.P.A.I. May. 20, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAVIV LAOR
____________

Appeal 2008-0532
Application 09/595,677
Technology Center 3600
____________

Decided: May 20, 2008
____________

Before LINDA E. HORNER, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 11, and 28-31. Claims 4-10 and 12-27 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
REVERSE.
Appeal 2008-0532
Application 09/595,677

2
THE INVENTION
The Appellant’s claimed invention is directed to a method and system
for distributing and redeeming electronic coupons in a networked
environment where the source of the coupons, the consumer, and the vendor
are all connected to a common communications channel (Spec. 3). Claim
28, reproduced below, is representative of the subject matter of appeal.
28. A system for managing promotions over a network
comprising:
an promotion server;
a retailer's commercial server;
a consumer's client computer;
wherein said advertiser's promotion server; said retailer's commercial
server; and said consumer's client computer are operably connected to
the Internet, and are structured and programmed so that:
said consumer's client computer can request from said retailer's
commercial server a promotion; and
said retailer's commercial server responds to requests from said
consumer's client computer for said promotion by automatically
obtaining from said promotion server promotion
authorization data for said promotion, and said retailer's commercial
server determines from said authorization data whether to accept or
decline said promotion.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
GERACE US 5,848,396 Dec. 8, 1998

Appeal 2008-0532
Application 09/595,677
3
The following rejections are before us for review1:
1. Claims 1-3, 11, and 28-31 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Gerace.

FINDINGS OF FACT
We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence2:
1. Gerace discloses determining the psychographic and demographic
profile of a user (Col. 2:1-15) in a customized ad system.
2. Gerace discloses that advertisements for display to users are based on
the psychographic and demographic profiles of the user to provide targeted
marketing (Col. 2:30-35).
3. Gerace discloses that each Ad Package Object has an indicated
sponsor ID (Col. 12:7-11).
4. Gerace does not disclose the use of a server generating a script for a
website frame having a predetermined signature with an electronic token or
coupon that corresponds to that predetermined signature.

1 We note that the objection to new matter in the Specification made under
35 U.S.C. § 132 (a) has been withdrawn in the Examiner’s Answer at
page 3.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2008-0532
Application 09/595,677
4
PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
it fails to disclose the limitation for the commercial server to include “a
script for generating a website frame having a predetermined signature, such
that an electronic token uniquely corresponds to said predetermined
signature” (Br. 12). The Appellant also argues that “[t]his application
discloses that a token is an identification of or point to an electronic coupon”
(Br. 11).
We agree with the Appellant. We first determine the scope of the
term “token” in the claims not solely on the basis of the claim language, but
upon giving the claims their broadest reasonable construction in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
Here, the Specification for example in describing the invention states: “[t]his
Appeal 2008-0532
Application 09/595,677
5
invention relates to a method of and system for distributing and redeeming
electronic coupons or “tokens” in a computer network environment…”
(Replacement Spec. 2). The Specification in describing the invention also
states: “[t]he electronic token may only include the complete body of coupon
information, or the electronic token may include data identifying the client
and pointing to coupon information…” (Replacement Spec. 7). Giving the
claims their broadest reasonable construction in light of the whole
Specification as it would be interpreted by one of ordinary skill in the art, the
definition of “token” in the claims would be taken to refer to, or relate to a
“coupon” in some manner.
Claim 1 includes the phrase “script for generating a website frame
having a predetermined signature, such that an electronic token uniquely
corresponds to said predetermined signature.” First, we consider this phrase
to require that the commercial server be configured to: 1. generate a website
frame having a predetermined signature and 2. uniquely correspond to an
electronic token with the predetermined signature. Gerace does disclose an
indicated “sponsor ID” (FF 3) which may be considered a “predetermined
signature.” However, Gerace fails to show an “electronic token” as defined
by the Appellant which uniquely corresponds to that “sponsor ID” or
“predetermined signature” (FF 4) as claim 1 requires. As Gerace fails to
disclose the limitation for “a script for generating a website frame having a
predetermined signature, such that an electronic token uniquely corresponds
to said predetermined signature,” claim 1 is not anticipated.
For the above reasons we will not sustain the rejection of claim 1. As
the rejection of claims 2-3 and 11 fails to cure the deficiency of the rejection
of claim 1, we will also not sustain the rejection of these claims, which
depend from claim 1.
Appeal 2008-0532
Application 09/595,677
6
The Appellant also argues that the rejection of claims 28 and 30 is
improper because in Gerace “the user never requests the specific
advertisement to be transmitted and displayed to the user” (Br. 10).
We agree with the Appellant. Initially we note that claims 28 and 30
each contain a phrase which states that the promotion server, commercial
server, and client computer “[a]re structured and programmed so that…” in
describing the invention. This phrase in each of claims 28 and 30 is taken to
be a limitation that the system is not just “programmable” but actually
specifically “programmed” as claimed.
Claims 28 and 30 require that the “retailer’s commercial server
responds to requests from said consumer’s client computer for said
promotion.” Gerace in contrast displays advertisements based on
psychographic and demographic profiles of the user (FF 1 and 2) and not a
“request” from the user’s computer. As such, Gerace fails to anticipate
claims 28 and 30.
For the above reasons, we do not sustain the rejections of claims
28 and 30. The rejection of dependent claims 29 and 31 fails to cure the
deficiency in the rejection of the independent claims, and we also will not
sustain the rejection of these claims.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner
erred in rejecting claims 1-3, 11, and 28-31 under 35 U.S.C. § 102(b) as
being anticipated by Gerace.

DECISON
The Examiner’s rejection of claims 1-3, 11, and 28-31 is reversed.
Appeal 2008-0532
Application 09/595,677
7

REVERSED

hh

NEIFELD IP LAW, PC
4813-B EISENHOWER AVENUE
ALEXANDRIA, VA 22304