Ex Parte Malik et al

Patent Trial and Appeal Board

May 25, 2016

12610057 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/610,057 10/30/2009 Raza Ali Malik
49845 7590 05/27/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.667US 1 9651
EXAMINER
STOLTENBERG, DAVID J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAZA ALI MALIK and SCOTT BRUCK
Appeal2014-005370
Application 12/610,057
Technology Center 3600
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Raza Ali Malik and Scott Bruck ("Appellants") appeal under 35
U.S.C. § 134 from the Examiner's decision rejecting claims 1, 2 and 4--31. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claim 3 is canceled.
Appeal2014-005370
Application 12/610,057
CLAIMED SUBJECT MATTER
The claims are directed to a method and system for issuing coupons to
a user. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of dynamically issuing coupons within a network-
based system, the method comprising:
identifying, using one or more processors within the
network-based system, a user accessing the network-based
system over a network using a remote computer system;
establishing a network-based user session based on the
user accessing the network-based system;
determining, using the one or more processors while the
user is accessing the network-based system and during the user
session, whether the user qualifies to receive a coupon by using
at least one of profile data or activity data associated with the
user;
dynamically issuing a coupon to the user, using the one or
more processors while the user is accessing the network-based
system and during the user session, based on the determination
that the user qualifies to receive the coupon;
displaying, in response to issuing the coupon to the user, a
representation of the coupon within a portion of a display
generated by the network-based system, the display transmitted
by the network-based system for reception by the remote
computer system, the displaying occurring during the user
session; and
applying the coupon to a purchase by the user.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cope
Mikurak
Samson
Gier kink
US 2005/0144066 Al June 30, 2005
US 2006/0178918 Al Aug. 10, 2006
US 2007/0198355 Al Aug. 23, 2007
US 2009/0144201 Al June 4, 2009
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Appeal2014-005370
Application 12/610,057
REJECTIONS
I. Claims 1, 2, 4--7, and 11-21 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Samson.
II. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samson and Gierkink.
III. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Samson and Cope.
IV. Claims 22-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Samson and Mikurak.
V. Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samson, Mikurak, and Gierkink.
VI. Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Samson, Mikurak, and Cope.
OPINION
Rejection I
Regarding independent claims 1 and 11, the Examiner finds, inter
alia, that Samson discloses a method for issuing coupons including the step
of "displaying ... a representation of the coupon within a portion of a
display generated by the network-based system, ... the display occurring
during the user session." Final Act. 3 (citing Samson i-fi-1 3 8--41 ). The
Examiner also finds that Samson discloses presenting the coupon during the
user session because, referring to Figure 2 of Samson, the user session
begins at block 2 when the consumer views and enters an auction and ends
at block 27 when the user either selects or declines an incentive that has
been presented. Ans. 20-22 (citing Samson i-fi-120, 38, 39; Fig. 2).
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Appeal2014-005370
Application 12/610,057
Appellants argue that the coupon is not displayed during the user
session in Samson because the reference only discusses delivering the
coupon by email, which does not have to occur during the user session.
Appeal Br. 13-14 (citing Samson i-fi-138--41); Reply Br. 1-2. Appellants also
argue that the only user session disclosed in Samson is when the user logs
onto the internet at block 1 of Figure 2 and enters an auction site at block 2,
and that the remaining operations are not described as occurring during the
same user session. Reply Br. 2.
Samson discloses a method of providing incentives to consumers
taking part in an auction including the steps of creating a consumer profile,
choosing an unsold item, generating an incentive for the unsold item based
on the consumer profile, and offering the incentive to the consumer.
Samson i17. Samson further discloses establishing a network-based user
session when the user views and enters an auction. See id. at i-fi-f 19, 20; Fig.
2. In the method described in Samson, the consumer's behavior with respect
to an auction is saved in a data file that is used in the consumer profile to
generate an incentive after the auction has finished. Id. at i120; Fig. 2.
Samson is silent regarding the user session persisting until the end of the
auction or during any of the steps regarding generating and offering the
incentive. See id. Accordingly, the Examiner's finding that Samson
displays the representation of the coupon during the user session is not
supported by a preponderance of the evidence.
For this reason, we do not sustain the Examiner's decision rejecting
independent claims 1and11, and claims 2, 4--7, and 12-21, depending
therefrom.
Rejection II
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Appeal2014-005370
Application 12/610,057
Claims 8 and 9 depend from claim 1. Gierkink does not cure the
deficiency in the rejection of claim 1. Accordingly, we do not sustain the
Examiner's decision rejecting claims 8 and 9 for the reasons discussed
supra.
Rejection III
Claim 10 depends from claim 1. Cope does not cure the deficiency in
the rejection of claim 1. Accordingly, we do not sustain the Examiner's
decision rejecting claim 10 for the reasons discussed supra.
Rejection IV
Regarding independent claim 22, the Examiner finds, inter alia, that
Samson discloses each and every limitation of claim 22 except for a coupon
widget to present the coupon to the user while the user is accessing the
network-based system and during the session. Final Act. 12. The Examiner
further finds that Mikurak discloses a coupon widget, and that Samson
discloses presenting the coupon to the user while the user is accessing the
network-based system and during the same session. Id.; Ans. 27. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art "to create widgets for the purpose of displaying coupons as
part of a user interface" to enhance the user experience and increase profits.
Ans. 29.
Appellants argue that the combination of Samson and Mikurak fails to
disclose presenting the coupon to the user while the user is accessing the
network-based system and during the same session. Appeal Br. 16. As
discussed supra, Samson fails to disclose this feature. Mikurak does not
cure the deficiency. Accordingly, we do not sustain the Examiner's decision
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Appeal2014-005370
Application 12/610,057
rejecting independent claim 22, and claims 23-27, which depend therefrom,
for the reasons discussed supra.
Rejection V
Claims 28 and 29 depend from claim 22. Gierkink does not cure the
deficiency in the rejection of claim 22. Accordingly, we do not sustain the
Examiner's decision rejecting claims 28 and 29 for the reasons discussed
supra.
Rejection VI
Claims 30 and 31 depend from claim 22. Cope does not cure the
deficiency in the rejection of claim 2. Accordingly, we do not sustain the
Examiner's decision rejecting claims 30 and 31 for the reasons discussed
supra.
DECISION
The Examiner's rejections of claims 1, 2, and 4--31 are REVERSED.
REVERSED
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