Ex Parte Mankoff

Board of Patent Appeals and Interferences

May 27, 2009

10262767 (B.P.A.I. May. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY W. MANKOFF
____________

Appeal 2008-003146
Application 10/262,767
Technology Center 3600
____________

Decided:1 May 27, 2009
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on May 14, 2009.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/262,767

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STATEMENT OF THE CASE
Jeffrey W. Mankoff (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 84-103. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

THE INVENTION
The claimed invention is directed to a method of distributing
promotional offers for a product or service to subscribers of interactive
television services whereby an accepted offer is redeemed upon presentment
of the subscriber's payment system for payment for the product or service.
By such a method, for example, “consumers’ natural reluctance to provide
credit card information in response to a banner ad or email” (Spec. 6:6-7) is
mitigated.
Claim 84, reproduced below, is illustrative of the subject matter on
appeal.
84. A method of distributing promotional offers to subscribers of
interactive television services, the method comprising:

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 2, 2007) and Reply Brief (“Reply Br.,” filed Jun. 18, 2007),
and the Examiner’s Answer (“Answer,” mailed Apr. 17, 2007)

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a) creating an enabled promotional offer for a product or
service;
b) distributing the enabled promotional offer to the subscribers
according to their established electronic contact addresses associated
with their respective interactive television service, wherein the
promotional offer can be electronically accepted by at least one of the
subscribers without redeeming the offer;
c) upon electronic acceptance of the enabled promotional offer,
placing the unredeemed accepted promotional offer in a coupon
database associated with the accepting subscriber; and
d) establishing or maintaining an association of the coupon
database with the accepting subscriber's payment system such that
presentment of the subscriber's payment system for payment for the
product or service redeems the promotional offer.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Meyer US 6,915,271 B1 Jul. 5, 2005
The following rejection is before us for review:
1. Claims 84-103 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Meyer.

ISSUE
Has the Examiner shown that Meyer describes, expressly or
inherently, the method as claimed and, in particular, the step of “establishing
or maintaining an association of the coupon database with the accepting
subscriber's payment system such that presentment of the subscriber's

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payment system for payment for the product or service redeems the
promotional offer” (claim 84, step d))?

PRINCIPLE OF LAW
Anticipation
“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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
There are three independent claims on appeal: claims 84, 95, and 100.
All are drawn to a method of distributing promotional offers to subscribers
of interactive television services and all include the step of "establishing or
maintaining an association of the coupon database with the accepting
subscriber's payment system such that presentment of the subscriber's
payment system for payment for the product or service redeems the
promotional offer."
The Examiner relied on Meyer to reject the claims under § 102 as
being anticipated. "Invalidity on the ground of 'anticipation' requires lack
of novelty of the invention as claimed. . . . that is, all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim." Karsten Manufacturing Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001). “This court requires that in order to

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anticipate a claim, “a single prior art reference must expressly or inherently
disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523
F.3d 1323, 1334 (Fed. Cir. 2008). Accordingly, if Meyer expressly or
inherently describes the method as claimed, including the step in the claims
of "establishing or maintaining an association of the coupon database with
the accepting subscriber's payment system such that presentment of the
subscriber's payment system for payment for the product or service redeems
the promotional offer," the Examiner’s burden of establishing a prima facie
case of anticipation will have been met.
The Examiner drew the Appellant’s attention to four passages in
Meyer as evidence that Meyer expressly describes the step in the claims of
"establishing or maintaining an association of the coupon database with
the accepting subscriber's payment system such that presentment of the
subscriber's payment system for payment for the product or service redeems
the promotional offer." (Ans. 6-7). The Meyer passages relied upon are
located at col. 16, ll. 51-553; col. 50, ll. 38-454; col. 41, ll. 31-405; and, col.

3 “For example, a promotion sponsor may be a chamber of commerce, or a
credit card company such as VISA, or an external membership organization,
such as the American Automobile Association or a credit card company.”

4 “In yet another implementation, a redemption is tied at the time of payment
for a purchase to a payment vehicle such as a credit card or online payment
system used for the purchase. Thus, only redemptions that are concurrent
with purchases using a payment vehicle are enabled. This would make it

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44, ll. 19-236. The Appellant disputes the Examiner’s interpretation of these
passages as describing the step in the claims where unredeemed offers are
redeemable by the presentment of the consumer’s associated payment
system, arguing that Meyer describes there, instead, a redemption that is tied
to a purchase with, for example, a credit card at the time of payment. (Reply
Br. 7-9). According to the Examiner, however, “a plain reading of the
reference material ... refutes appellant’s argument.” (Ans. 6).
We have reviewed Meyer, including the passages the Examiner relied
upon. We find we are in agreement with the Appellant that Meyer does not
expressly describe the method as claimed.
The step in the claim at issue requires, as a precondition, the presence
of a “coupon database” associated with an accepting subscriber into which
impossible for a vendor to redeem an incentive from a member that did not
actually purchase the applicable goods or services, ... .”
5 “In an yet another alternate embodiment, the service provider actually
charges the purchase to the member's credit card, and then informs the
vendor of the transaction, giving the vendor all information necessary for the
vendor to fulfill the purchase (i.e., to send the product to the member). The
member then is provided with the necessary information to collect the goods
or with a confirmation that delivery will take place. Since an actual incentive
redemption took place, the redemption recording activities described below
also need to take place.”

6 “Other implementations also are possible. For example, an arrangement
may be made with an offline merchant to enable the service provider to
charge a member’s credit card for purchasing goods to which clipped
incentive have been applied.”

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are placed unredeemed, accepted promotion offers. It is establishing or
maintaining an association of such a “coupon database” with the accepting
subscriber's payment system that is further required by the claimed method.
This association is established or maintained “such that presentment of the
subscriber's payment system for payment for the product or service redeems
the promotional offer.” In other words, the association between the “coupon
database” and the accepting subscriber's payment system is established or
maintained such that it is the subscriber's payment system, upon presentment
for payment for the promoted product or service, which effects the
redemption of the unredeemed accepted promotion offer in the “coupon
database.” This is not what Meyer describes.
Rather, what Meyer describes is a process by which a subscriber may
redeem a “clipped” offer upon payment for a product underlying the offer.
While Meyer (col. 12, ll. 35-44) describes a member database for storing
clipped incentives - and thus teaches a “coupon database” - there is no
description of establishing or maintaining an association of such a “coupon
database” with the accepting subscriber's payment system. Accordingly,
Meyer cannot also describe establishing or maintaining that association such
that the promotional offer is redeemed upon presentment of the subscriber's
payment system for payment for the product or service as claimed. Meyer
teaches automatic redemption means whereby the clipped incentives may be
automatically redeemed when a purchase meets match criteria for clipped
inventive in the member database. (See col. 13, ll. 7-12). Meyer also teaches
redeeming clipped incentives upon payment of a product with, for example,

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a credit card. (See col. 50, ll. 38-41). But Meyer does not describe what the
claimed method also requires, namely establishing or maintaining an
association of the “coupon database” with the accepting subscriber's
payment system such that the promotional offer is redeemed upon
presentment of the subscriber's payment system for payment for the product
or service.
The passages in Meyer relied upon by the Examiner do not change
our finding. The Meyer disclosure at col. 16, ll. 51-55, describes credit card
companies as possible promotion companies. The Meyer disclosure at col.
50, ll. 38-45, describes redemption at the time of payment for a purchase tied
to a payment vehicle such as a credit card. The Meyer disclosure at col. 41,
ll. 31-40, describes a service provider charging a purchase to a member’s
credit card and providing the member with information to collect the goods.
According to this disclosure, the “actual incentive redemption took place.”
The Meyer disclosure at col. 44, ll. 19-23, describes charging a member’s
credit card for purchasing goods “to which clipped incentives have been
applied.” These disclosures describe redeeming an incentive when a
consumer makes a purchase with, for example, a credit card. To that extent
we agree with the Examiner’s understanding of Meyer. (See Ans. 6
“redemption ... is tied to a credit card”). But the claims are not broadly
drawn to redeeming an incentive with, for example, a credit card. The
claimed method additionally requires the step "establishing or maintaining
an association of the coupon database with the accepting subscriber's
payment system such that presentment of the subscriber's payment system

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for payment for the product or service redeems the promotional offer.”
Meyer’s disclosure of redeeming an incentive when a consumer makes a
purchase with, for example, a credit card is insufficient as evidence that
Meyer expressly describes that step in the claims.

CONCLUSIONS
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 84-103 under 35 U.S.C. § 102(e) as being anticipated by
Meyer.
DECISION
The decision of the Examiner to reject claims 84-103 is reversed.

REVERSED
JRG

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