Ex Parte Lieblang et al

Patent Trial and Appeal Board

Mar 20, 2017

13032991 (P.T.A.B. Mar. 20, 2017)

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.
13/032,991 02/23/2011 John Lieblang 39961-0066001 7996
20985 7590 03/22/2017
FISH & RICHARDSON P.C. (SD)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN LIEBLANG, DARRYL HOGAN, and
JOHN DETWILER
Appeal 2015-002774
Application 13/032,991
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—13.
We affirm.
1 The Appellants identify Valassis Communications, LLC as the real party
interest. (Appeal Br. 3).
Appeal 2015-002774
Application 13/032,991
THE CLAIMED INVENTION
Appellants’ claims relate generally to online distribution of printed
offer documents. (Spec. para. 2). Claim 1 is illustrative of the claimed
subject matter:
1. A computer-implemented method for distributing an offer
comprising:
generating an electronic form for displaying offer
identifying information relating to the offer on a client device;
receiving a request from the client device to print an offer
document corresponding to the offer;
generating the offer document without consumer
identifying information, the offer document including time
indicating indicia associated with the request to print; and
transmitting the offer document to the client device for
printing with the time indicating indicia.
Appeal Br. 10 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wolff US 6,247,047 B1 June 12, 2001
Pastor US 6,317,498 B1 Nov. 13,2001
Lee US 2004/0210484 A1 Oct. 21,2004
Freitas US 2010/0205080 A1 Aug. 12, 2010
Christie US 2011/0196731 A1 Aug. 11,2011
REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1—6, 8, 9, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Christie, Lee, and Freitas.
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Application 13/032,991
The Examiner rejected claims 7, 10, and 11 under 35 U.S.C. § 103(a)
as unpatentable over Christie, Lee, Freitas2, and Pastor.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Christie, Lee, Freitas3, and Wolff,
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Lee discloses:
a preferred provider’s coupon 25 as shown in FIG. 5 contains
aside from the product information 65, the following
information: name of the user 66 and name of spouse, if
requested, date of printing or issuance 67 a blank space to fill in
date of purchase 68, a blank space to write in the initial of the
member consumer 69, coupon value 70, barcode 71, unique
encrypted serial number 72, unique membership identification
number 73, instruction to cashier to check identification 74, and
to accept purchases only with a credit card payment method or
by personal bank check 75, a blank space 76 where the member
consumer/user writes in his/her account and or check number,
coupon expiration date 77, mailing address for redemption of
coupon 78, sales order number of the promotion 79 and the e-
mail address 80 issued to the member/user upon registration.
(Lee para. 35) (bold face omitted).
2. Lee also discloses “third party coupons without the above printed
information on the coupon.” (Lee para. 36).
2 The Examiner’s statement of rejection at page 7 of the Final Action omits
Freitas, but the claims depend from claim 1 or claim 5, each of which are
rejected over Freitas. We take this omission as inadvertent error.
3 As with claims 7, 10, and 11, we take the omission of Freitas on page 9 as
inadvertent error.
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Application 13/032,991
3. Christie discloses an administrator of a coupon system sets up “a
coupon template at 106 to allow the advertiser 102' to include any
relevant data or details regarding the coupon.” (Christie para. 23) (bold
face omitted).
ANALYSIS
Claims 1, 2, 4, and 9
The rejection is affirmed as to claim 1. Appellants do not provide any
substantive argument as to the separate patentability of claims 2, 4, and 9
that depend directly or indirectly from claim 1, which is the sole independent
claim among those claims. Therefore, we address only claim 1, and claims
2, 4, and 9 fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue both Christie and Lee display coupons containing
“consumer-identifiable information,” and, thus, fail to disclose a coupon
“without” this information. (Appeal Br. 4—5).
The Examiner first finds the language “without customer-identifiable
information” disclosed in Freitas in the form of anonymous trading
information to protect the security of market participants in a “dark pool”
trading system. (Final Act. 4). The Examiner also finds Lee discloses a
coupon meeting the claim language, absent consumer-identifiable
information, in the form of a “third party coupon.” (Answer 7). We find no
error with the Examiner’s findings concerning Lee, because while Lee
discloses a first coupon that encompasses consumer-identifiable information
(FF 1), Lee also discloses a second coupon without that information (FF 2),
thus, meeting the claim language. The disclosure of Freitas is therefore
cumulative to that of the combination of Christie and Lee.
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Appeal 2015-002774
Application 13/032,991
Appellants’ arguments directed at Freitas, that the rejection is
conclusory and without explanation, and that Freitas is non-analogous art
and that its disclosure of anonymity is “different,” are unpersuasive because,
as found supra, Lee explicitly discloses the claim language. (Appeal Br. 5—
6).
Appellants finally argue that Christie and Lee teach away from
coupons without customer information, because Christie uses membership
information, and Lee prints the customer name on a coupon. (Appeal Br. 7).
This argument is unpersuasive because of the third-party, anonymous
coupon disclosed in paragraph 36 of Lee, as discussed above.
Appellants argue “Lee does not disclose that these ‘third-party’
coupons are electronic coupons printed by the consumer from a consumer’s
device.” (Reply Br. 3).
We are not persuaded by this argument, because the Examiner finds
the electronic coupons for printing in are disclosed by Christie. (Final Act.
3). In addition, we are persuaded that the ordinary artisan skilled in the field
of coupons would not need reference to a publication explaining a lack of
customer-identifiable information to conceive of a coupon that does not have
customer-identifiable information on it. This is because common experience
shows that there are countless coupons distributed in newspapers,
magazines, retail stores, and through direct mail that do not contain
customer-identifiable information.
Appellants finally argue that the third-party coupon of Lee may not
have customer-identifiable information on it, but if that is so, the coupon
also would fail to disclose the information about time, such that there is no
single coupon embodiment in Lee that explicitly meets the claim language
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Application 13/032,991
disclosing a coupon whose content includes a time but not customer-
identifiable information (such as a name). (Reply Br. 3).
We are not persuaded by Appellants’ argument because we find that,
in connection with a request to print an on line coupon, such as disclosed by
Lee at paragraph 36, time indicating indicia is inherently stamped as part of
the request in the online embedded code. The claim only requires the
document to include “associated” time indicating indicia and does not
require that the time be printed on the coupon. “It is well settled that a prior
art reference may anticipate when the claim limitations not expressly found
in that reference are nonetheless inherent in it. [. . .] ‘Under the principles of
inherency, if the prior art necessarily functions in accordance with, or
includes, the claimed limitations, it anticipates.’” In re Cruciferous Sprout
Lit., 301 F.3d 1343, 1349, (Fed. Cir. 2002) (citations and internal quotation
marks omitted).
Alternatively, we find that the specific content of the coupon does not
affect the method in claim 1, other than that the system must present an offer
and time indicating indicia thereof. However, the content of the coupon,
such as, whether the content of the coupon includes customer-identifying
information or not, does not have effect on the transmitting of the coupon, or
any other step in the claimed method. The presence or absence of content,
such as customer-identifiable information, has no functional relationship to
the coupon generated, as presently claimed. Our reviewing court has held
that nonfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art. In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (noting that when descriptive material is not
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functionally related to the substrate, the descriptive material “will not
distinguish the invention from the prior art in terms of patentability”). King
Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he
relevant question is whether ‘there exists any new and unobvious functional
relationship between the printed matter and the substrate.’”) (citations
omitted).
For the reasons set forth above, we affirm the rejection of claims 1, 2,
4, and 9.
Claims 3, 5, 6, 8, and 12
Dependent claims 3, 5, 6, 8, and 12 either change characteristics of the
coupon content and/or limit how the coupon information is presented, such
as corresponding to receipt, transmission, or printing, whether the time is
“quasi-unique,” more precise, coded, encrypted, or whether it instead “is
associated with a tick count.” We agree with the Examiner that the prior art
renders obvious these claims because the cited art teaches or suggests
coupon content (FF 1), and the claimed changes to the coupon content are
merely a substitution of one piece of NFDM for another piece of NFDM.
None of this information affects the claimed operation.
Claims 7, 10, 11, and 13
Appellants do not advance arguments specifically directed to
dependent claims 7, 10, 11, or 13, so we affirm the rejections of these
claims.
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CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1—13 under 35 U.S.C.
§ 103(a).
DECISION
For the above reasons, the Examiner’s rejections of claims 1—13 are
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)(l)(iv).
AFFIRMED
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