Ex Parte Mankoff

Board of Patent Appeals and Interferences

Jan 30, 2008

10128444 (B.P.A.I. Jan. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY W. MANKOFF
____________

Appeal 2007-3136
Application 10/128,444
Technology Center 3600
____________

Decided: January 30, 2008
____________

Before HUBERT C. LORIN, JENNIFER D. BAHR, and
DAVID B. WALKER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mankoff (Appellant) seeks our review under 35 U.S.C. § 134 of the
final rejection of claims 1-6 and 8-34. Claims 35-39 were withdrawn and
claim 7 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
The Appellant’s claimed invention is to a method of electronically
delivering coupons (Specification Fig. 3) to personal digital assistants (PDA)
(Specification 3:11-15) or other portable computing devices. (Specification
9:24). The invention makes use of a wireless network (Specification 5:1-4;
see also Fig. 4) and a server that includes a database “for supporting a set of
virtual coupons available for download to client machines” (Specification
10:15-17; Fig. 1). The method includes a fraud prevention technique that
involves “associat[ing] a given identifier (e.g., a coupon serial number) with
a given user (or user identifier, such as a cookie). Thus, for example, the
given identifier may be associated with the given user when the user first
downloads the coupon.” (Specification 15:1-6).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method of
distributing coupons over a wireless network,
comprising:
providing a database comprising a plurality

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Nov. 14, 2005), the Examiner’s Answer (“Answer,” mailed Jan. 10,
2006), the Final Rejection (mailed Nov. 16, 2004; incorporated in the
Answer, p. 3), and the Reply Brief (“Reply Br.,” filed Apr. 5, 2006).
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of digital coupons, the digital coupons containing
information;
receiving a unique identifier over the
wireless network, the unique identifier identifying
a user having a wireless computing device with a
display;
associating the unique identifier with a
digital coupon so that the coupon can only be
redeemed by the user to which it was provided;
serving the digital coupon over the wireless
network to the user having a wireless computing
device.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bandera
Scroggie
US 6,332,127 B1
US 5,970,469
Dec. 18, 2001
Oct. 19, 1999

The following rejection is before us for review:
1. Claims 1-6 and 8-34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bandera and Scroggie.

ISSUES
The issue is whether the Appellant has shown that the Examiner erred
in rejecting claims 1-6 and 8-34 as unpatentable over Bandera and Scroggie.
This issue turns on whether the prior art would have led one having ordinary
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skill in the art to a method of distributing coupons over a wireless network to
a user involving receiving a unique identifier over the wireless network
identifying the user and associating the unique identifier with the digital
coupon so that the coupon can only be redeemed by the user to which it was
provided.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
The scope and content of the prior art
1. Bandera is directed to advertising over the Internet. Bandera
provides for a database for storing digital coupons (col. 5, ll. 9-11;
element 30 on Fig. 2) and wireless delivery of the coupons to a
wireless device (col. 4, ll, 45-60; col. 9, l. 49 to col. 10, l. 14).
Bandera discloses limiting the use of coupons to the user receiving
the coupon through the use of coupon serial numbers “to reduce
the risk of a coupon being used more than once … the coupon can
be redeemed by the user, and the network registry is updated to
reflect the coupon’s use.” (Col. 10, ll. 15-19.)
2. Scroggie is directed to a method for delivering purchasing
incentives. It describes the targeted delivery of purchasing
incentives such as coupons, by for instance electronic mail, to
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consumers who have received unique identifiers and where the
identifiers are associated with the purchasing incentives. This can
be seen in Fig. 9 (blocks 230 and 232) which shows “the E-mail
address is used to create a unique household identification (id.)”
(col. 9, ll. 33-36). Unique household identifications are stored in a
database (see Fig. 15, 506) and can be used for delivering targeted
purchase incentives (col. 13, ll. 10-23). Scroggie discloses another
embodiment whereby “individual purchase histories of individual
customers” are used. (Col. 12, ll. 8-10; Fig. 14.) “Each customer’s
purchasing behavior is tracked only if the customer provides some
form of unique identification during the purchase transactions”
(col. 12, ll. 14-16). Based on the purchasing behavior associated
with the unique identification, a purchasing incentive may be
delivered to the specific consumer in the form of a coupon. (Col.
12, ll. 18-42.)
Any differences between the claimed subject matter and the prior art
3. The claimed subject matter combines, in a single method,
Bandera’s storing of coupons in a database and wireless delivery of
the coupons with Scroggie’s use of unique identifiers for targeted
coupon delivery.
The level of skill in the art
4. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent arts of tracking items and data
formatting. We will therefore consider the cited prior art as
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representative of the level of ordinary skill in the art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”) (quoting
Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
163 (Fed. Cir. 1985).
Secondary considerations
5. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
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further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 18.

ANALYSIS
The Appellant argues claims 1-6 and 8-34 as a group (Br. 7-12). We
select claim 1 as the representative claim for this group, and the remaining
claims 2-5 and 8-34 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
The Examiner found that Bandera discloses all of the steps of claim 1
except for receiving a unique identifier over the wireless network identifying
the user and associating the unique identifier with the digital coupon so that
the coupon can only be redeemed by the user to which it was provided.
(Final Rejection 2-3.) The Examiner relied on the teaching in Scroggie (Fig.
11) to show this was known in the art, and determined that it would have
been obvious to “have modified the method of Bandera to have included the
teachings of Scroggie … for added security” (Final Rejection 3).
The Appellant argues that Scroggie does not overcome the deficiency
in Bandera of steps of receiving a unique identifier over the wireless
network identifying the user and associating the unique identifier with the
digital coupon so that the coupon can only be redeemed by the user to which
it was provided. (App. Br. 9 and Reply Br. 2.) In particular, the Appellant
contends that “Scroggie in fact teaches that a user is required to directly
input identifying information when prompted, in order to receive certain
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offers or advertisements.” (App. Br. 9.) The Appellant further argues that
the combination of Bandera and Scroggie “is improper since there is no
motivation for one skilled in the art to make the combination.” (App. Br.
10). According to the Appellant, motivation can only come from (a) the
nature of the problem to be solved, (b) the teachings in the references, or (c)
“the knowledge of one skilled in the pertinent field of art” (App. Br. 10; see
also Reply Br. 2-4), none of which the Appellant alleges the Examiner has
shown.
We do not find the Appellant’s arguments persuasive.
The Appellant does not challenge the Examiner’s finding that Bandera
discloses all of the steps of claim 1, including wireless transmission of
coupons (FF 1), except for receiving a unique identifier over the wireless
network identifying the user and associating the unique identifier with the
digital coupon so that the coupon can only be redeemed by the user to which
it was provided. Accordingly, that finding is deemed undisputed.
For the claimed steps of receiving a unique identifier over the wireless
network identifying the user and associating the unique identifier with the
digital coupon so that the coupon can only be redeemed by the user to which
it was provided, we have reviewed Scroggie and find that it describes, as the
Examiner has argued (Final Rejection 3 and Answer 4-5), the targeted
delivery of purchasing incentives such as coupons, by for instance electronic
mail, to consumers who have received unique identifiers and where the
identifiers are associated with the purchasing incentives. Scroggie discloses
electronic delivery of coupons involving the use of unique identifiers both to
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identify the user and to target the user for delivery of the coupons. (See FF
2.) Thus, the claimed steps of receiving a unique identifier over a network
identifying the user and associating the unique identifier with the digital
coupon so that the coupon can only be redeemed by the user to which it was
provided are disclosed in Scroggie.
All the steps of the claimed method are disclosed in the references.
Accordingly, the Examiner has made out a prima face case of obviousness.
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR Int'l
Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007). The operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. In that regard,
combining Bandera’s storing of coupons in a database and wireless delivery
of the coupons with Scroggie’s use of unique identifiers for targeted coupon
delivery appears to yield, predictably, the wireless delivery of targeted
coupons. No evidence of secondary considerations to overcome the prima
facie case of obviousness has been submitted. (FF 5.)
The Appellant has argued that, as a matter of law, the combination of
Bandera and Scroggie is improper because “motivation can only come from
(a) the nature of the problem to be solved, (b) the teachings in the references,
or (c) the knowledge of one skilled in the pertinent field of art” (App. Br. 10;
see also Reply Br. 2-4). However, regarding (a), “[i]n determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. What matters is
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the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR at 1741-42. Regarding (b), in KSR, the Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 1739, and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test. “[T]he
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at 1741. Regarding (c),
[w]hen a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.
Id. at 1740.
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CONCLUSIONS OF LAW
We conclude the Appellant has failed to show that the Examiner erred
in rejecting claims 1-6 and 8-34 as unpatentable over Bandera and Scroggie.

DECISION
The decision of the Examiner to reject claims 1-6 and 8-34 is
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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