Ex Parte Liu et al

Patent Trial and Appeal Board

Feb 5, 2013

11323786 (P.T.A.B. Feb. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte DEBORAH YEE-KY LIU, 7
CHARLES EUGENE COOK JR., 8
MICHAEL R. GAINER, 9
DAVID RACCAH, 10
DEAN YI-WAI QUAN, 11
JENNIFER MARIE FAENZA, 12
MARY KU, 13
SRINIVASAN RAMAN, 14
NEELIKA CHAKRABARTI CHOUDHURY, 15
and JOSEPH EDWARD BLACK 16
___________ 17
18
Appeal 2011-003622 19
Application 11/323,786 20
Technology Center 3600 21
___________ 22
23
24
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 25
MEREDITH C. PETRAVICK, Administrative Patent Judges. 26
FETTING, Administrative Patent Judge. 27
DECISION ON APPEAL 28
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Application 11/323,786

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 24, 2010) and Reply Brief (“Reply Br.,” filed December
20, 2010), and the Examiner’s Answer (“Ans.,” mailed November 12, 2010).
Deborah Yee-Ky Liu, Charles Eugene Cook Jr., Michael R. Gainer, 2
David Raccah, Dean Yi-Wai Quan, Jennifer Marie Faenza, Mary Ku, 3
Srinivasan Raman, Neelika Chakrabarti Choudhury, and Joseph Edward 4
Black (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of 5
claims 1-26, the only claims pending in the application on appeal. We have 6
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 7
The Appellants invented a way to process an incentive (Specification ¶ 8
[0001]). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
1. A system comprising: 13
[1] a payment processor server 14
to communicatively couple 15
to a plurality of client computers, 16
the payment processor having one or more processors 17
to process an incentive, 18
the payment processor server further including at least 19
one database 20
to store information about 21
the incentive 22
and 23
an account related to 24
at least one of the plurality of client 25
computers; 26
and 27
[2] a commerce server 28
having one or more processors, 29
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the commerce server to couple 1
to the payment processor server and the plurality 2
of client computers, 3
the commerce server to receive 4
an incentive identification code 5
that identifies an amount of the incentive to be 6
used 7
for at least a partial payment 8
for a transaction 9
from the at least one of the plurality of client 10
computers, 11
the commerce server further to determine 12
whether an incentive is valid, 13
and, 14
based upon a determination the incentive is valid, 15
to communicate the incentive information 16
from the commerce server to the payment 17
processor server, 18
the incentive information including an 19
authorization 20
that authorizes the payment processor 21
server 22
to transfer the incentive amount into 23
the account 24
as the at least partial payment for the 25
transaction. 26
27
The Examiner relies upon the following prior art: 28
Lerat US 2002/0010627 Al Jan. 24, 2002
Walker US 2004/0039639 A1 Feb. 26, 2004
Nguyen US 2004/0225606 Al Nov. 11, 2004
29
Claim 26 stands rejected under 35 U.S.C. § 112, second paragraph, as 30
failing to particularly point out and distinctly claim the invention. 31
Claims 1, 6-10, 12-13, 18-22, and 24-26 stand rejected under 35 U.S.C. 32
§ 102(b) as anticipated by Lerat. 33
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Claims 2, 3, 5, 14, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Lerat and Nguyen. 2
Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Lerat, Nguyen, and Walker. 4
Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Lerat. 6
ISSUES 7
The issues of anticipation and obviousness turn primarily on whether the 8
recited information regarding incentive information and customer account 9
are present on Lerat’s Merchant computer at any point in time, including 10
during the processing of a sale with an incentive. 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to the Prior Art - Lerat 15
01. Lerat is directed to a means to generate, distribute, exchange, 16
verify and redeem coupons in a public network environment, such 17
as the Internet. This provides a safe way to create and distribute 18
coupons from a Manufacturer to one or more Retailers, while at 19
the same time giving the user all information corresponding to the 20
coupon features. Lerat, para. [0002]. 21
02. Couponing on the Internet has moved from clickable images, 22
password protected discounts and finally transfer of information 23
allowing a server (the Coupon Server) to recognize a client (the 24
Internet user). Lerat, para. [0009]. 25
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03. Lerat describes a way to create and sign digital representations 1
of uniquely identified coupons for users including providing a 2
digital coupon having a serial number, information about a 3
manufacturer, a date of start of validity, a date of end of validity, 4
specific location information for redemption, association with a 5
product or a range of products, information about the product 6
being discounted, discount rules including, but not limited to, 7
amount, currency and type of discount; and embedding a digital 8
signature in the coupon. Lerat, para. [0037]. 9
04. Lerat distributes Digital Coupons over the Internet or over any 10
network using a client and server mechanism including generating 11
a coupon file, signing the digital coupon file; and send the digital 12
coupon to a selected recipient through an Internet protocol. Lerat, 13
para. [0038]. 14
05. Lerat verifies integrity and validity of a selected Digital Coupon 15
at any selected time by presenting to a server responsible for 16
digital Coupon information relevant to price reduction, obtaining a 17
confirmation of validity; generating an error message by the 18
server; and sending the error message to the recipient if the Digital 19
Coupon is not valid. Lerat, para. [0039]. 20
06. Lerat has a user redeem a Digital Coupon at a desired moment 21
of a buying process by verifying by a coupon server validity of a 22
specific coupon, storing information regarding said Digital 23
Coupon in a database, subtracting a price of an item being ordered 24
from the discount specified in the Digital Coupon; and generating 25
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an order regarding the purchase made by the user. Lerat, para. 1
[0040]. 2
07. Lerat’s Digital Coupon Server (DCS) refers to software 3
dedicated to digital coupon template creation and storage in a 4
database, digital coupon creation and transfer at a client's request. 5
Lerat, para. [0046]. 6
08. Lerat gets results from the Digital Coupon Server and modifies 7
the price of products bought by the client accordingly. It interacts 8
with the merchant server software through whatever means is used 9
to keep the context of a buying session, such as cookies or a 10
session ID kept in hidden fields of a form. This specific 11
application is referred to by Lerat as the "Merchant Site-Session 12
Manager." Lerat, para. [0048]. 13
09. Lerat’s Digital Coupon Manager (DCM) refers to software 14
capable of computing coupons downloaded and redeemed, 15
gathering statistical data which is displayed in the form of graphs, 16
analyzing buying patterns among users of digital coupons and 17
proposing a coupon policy taking advantage of best downloaded 18
and redeemed information. Lerat, para. [0047]. 19
10. Lerat’s digital coupon is defined as a set of data describing 20
features of the coupon such as date of start and end of validity, a 21
unique identifier, and a means to prevent forgery of any part of the 22
data. The coupon can also contain an image, which is extracted 23
and displayed by appropriate software. The instantiated coupon is 24
a digitally signed file containing information about the 25
Manufacturer (the entity that creates the digital coupon), the 26
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retailers (the entities that accepts coupons created by the 1
Manufacturer), information about the discount type and nature, 2
discount rules applied to a set of items. Lerat, paras. [0053]-3
[0055]. 4
11. Lerat’s redeem URL calls the MS-Session Manager application 5
on the Merchant system which is interfaced both to the Merchant 6
server application and the digital coupon server. A method is 7
included that allows the MS-Session to undecode the data part of 8
the digital coupon, and update the user's session information on 9
the merchant server, whether this information is stored in a file, on 10
a database server, or in the merchant server's memory. Lerat, 11
paras. [0198]-[0199]. 12
12. In this embodiment of the solution, it is mandatory that all 13
necessary information regarding the digital coupon template be 14
included in the database of the digital coupon server. Although it 15
would be possible for each digital coupon verification to query the 16
remote database of the original manufacturer, such action would 17
not be practically possible, considering the speed requirements 18
due to the real time constraints associated with the redemption 19
process. Lerat, para. [0205]. 20
ANALYSIS 21
Claim 26 rejected under 35 U.S.C. § 112, second paragraph, as failing to 22
particularly point out and distinctly claim the invention. 23
This rejection is moot as claim 26 is cancelled. Reply Br. 2. 24
25
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Claims 1, 6-10, 12-13, 18-22, and 24-26 rejected under 35 U.S.C. 1
§ 102(b) as anticipated by Lerat. 2
Claims 2, 3, 5, 14, 15, and 17 rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Lerat and Nguyen. 4
Claims 4 and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over 5
Lerat, Nguyen, and Walker. 6
Claims 11 and 23 rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Lerat. 8
We are not persuaded by the Appellants’ argument that Lerat fails to 9
describe the payment processor server further including at least one database 10
to store information about the incentive and an account related to at least one 11
of the plurality of client computers. Appeal Br. 15-18. 12
Below is a reproduction of Lerat’s Fig. 1, showing what part corresponds 13
to each of the payment processor server and commerce server in the claims. 14
15
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Fig. 1 from Lerat showing that Lerat’s Merchant web site corresponds to 1
the claimed payment processor server, and Lerat’s Digital Coupon Server 2
corresponds to the claimed commerce server. 3
It appears that Appellants do not appreciate the breadth of their claims as 4
drafted. In particular, claim 1 does not limit the time frame that the database 5
Appellants argue about must exist. Examiner found it exists at least during 6
processing of the incentive. The claim also imposes no structural limitation 7
on the database. Thus, any repository of data suffices. 8
As the Examiner found, Lerat instantiates an MS-Session Manager 9
application on the Merchant system which is interfaced both to the Merchant 10
server application and the digital coupon server. A method (term of art for 11
an object procedure written in computer code) is included that allows the 12
MS-Session to undecode the data part of the digital coupon, and update the 13
user's session information on the merchant server, whether this information 14
is stored in a file, on a database server, or in the merchant server's memory. 15
That data part contains information about the incentive. 16
The customer account is already present on the Merchant system, as the 17
transaction is already in progress, and the Merchant system will inherently 18
have a customer account set up either permanently or on the fly in its 19
customer master file for its sales system. The Examiner repeats Lerat’s 20
description of how the digital coupon server validates that coupon, which 21
inherently authorizes a credit for the amount of the incentive to the customer 22
account. 23
Also, as the Examiner found, claim 1 does not actually transfer anything 24
into a customer account. It merely communicates anything that could be 25
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used to authorize payment. Certainly an indication of the validity of the 1
incentive as in Lerat could be used as such. 2
CONCLUSIONS OF LAW 3
The rejection of claim 26 under 35 U.S.C. § 112, second paragraph, as 4
failing to particularly point out and distinctly claim the invention is moot as 5
the claim has been cancelled. 6
The rejection of claims 1, 6-10, 12-13, 18-22, and 24-25 under 35 U.S.C. 7
§ 102(b) as anticipated by Lerat is proper. Claim 26 is cancelled. 8
The rejection of claims 2, 3, 5, 14, 15, and 17 under 35 U.S.C. § 103(a) 9
as unpatentable over Lerat and Nguyen is proper. 10
The rejection of claims 4 and 16 under 35 U.S.C. § 103(a) as 11
unpatentable over Lerat, Nguyen, and Walker is proper. 12
The rejection of claims 11 and 23 under 35 U.S.C. § 103(a) as 13
unpatentable over Lerat is proper. 14
DECISION 15
The rejection of claims 1-25 is affirmed. 16
Claim 26 stands cancelled. 17
No time period for taking any subsequent action in connection with this 18
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19
§ 1.136(a)(1)(iv) (2011). 20
21
AFFIRMED 22
23
Klh 24