Ex Parte Mittal et al

Board of Patent Appeals and Interferences

Oct 30, 2008

09863921 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PARUL A. MITTAL and VIVEK JAIN 8
___________ 9
10
Appeal 2008-2650 11
Application 09/863,921 12
Technology Center 3600 13
___________ 14
15
Decided: October 30, 2008 16
___________ 17
18
Before JENNIFER D. BAHR, ANTON W. FETTING, and 19
STEVEN D.A. McCARTHY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
STATEMENT OF CASE 23
Parul A. Mittal and Vivek Jain (Appellants) seek review under 24
35 U.S.C. § 134 of a final rejection of claims 1 and 3-48, the only claims 25
pending in the application on appeal. 26
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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 1
(2002). 2
3
We AFFIRM. 4
The Appellants invented a personalisation of promotional offers using 5
the dynamic personalisation and online distribution of electronic coupons for 6
discounts on products and services (Specification 1:5-7). 7
8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method of conducting a promotional offer over a computer 12
network, the method comprising: 13
[1] defining the structure of said promotional offer having a 14
plurality of associated parameters, 15
one or more of which are unspecified or variable; 16
[2] targeting one or more of a plurality of customers as 17
recipients of the promotional offer; 18
and 19
[3] distributing a record of the promotional offer to the 20
customers over said computer network; 21
[4] wherein one or more of the unspecified or variable 22
parameters associated with the offer are individually assigned 23
for one or more of the targeted customers to whom the 24
record of the offer is distributed, 25
[5] wherein said unspecified or variable parameters are defined 26
when the promotional offer is accepted by respective 27
customers, and 28
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[6] wherein said record of the promotional offer comprises a 1
declinable value 2
once said unspecified or variable parameters are defined. 3
This appeal arises from the Examiner’s Final Rejection, mailed July 13, 4
2005. The Appellants filed an Appeal Brief in support of the appeal on 5
November 29, 2005.1 An Examiner’s Answer to the Appeal Brief was 6
mailed on August 28, 2007. 7
PRIOR ART 8
The Examiner relies upon the following prior art: 9
DeLapa US 6,076,068 Jan. 13, 2000
Walker US 6,327,573 B1 Dec. 4, 2001
Lerat US 2002/0010627 A1 Jun. 24, 2002
REJECTIONS 10
Claims 1, 3-6, 16-32, and 42-48 stand rejected under 35 U.S.C. § 103(a) 11
as unpatentable over Lerat and DeLapa. 12
Claims 7-15 and 33-41 stand rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Lerat, DeLapa, and Walker. 14
ISSUES 15
The issues pertinent to this appeal are 16

1 A Supplemental Brief, containing the required Summary of Claimed
Subject Matter, was filed on June 1, 2007. References to the Brief in this
Decision are to the November 29, 2005 Appeal Brief, unless otherwise
noted.
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• Whether the Appellants have sustained their burden of showing that 1
the Examiner erred in rejecting claims 1, 3-6, 16-32, and 42-48 under 2
35 U.S.C. § 103(a) as unpatentable over Lerat and DeLapa. 3
• Whether the Appellants have sustained their burden of showing that 4
the Examiner erred in rejecting claims 7-15 and 33-41 under 35 5
U.S.C. § 103(a) as unpatentable over Lerat, DeLapa, and Walker. 6
The pertinent issues turn on whether it was predictable from the art 7
applied to define a promotional offer comprising a declinable value when the 8
offer was accepted by a customer. 9
FACTS PERTINENT TO THE ISSUES 10
The following enumerated Findings of Fact (FF) are believed to be 11
supported by a preponderance of the evidence. 12
Lerat 13
01. Lerat is directed to a way to generate, distribute, exchange, 14
verify and redeem coupons in a public network environment, such 15
as the Internet (Lerat ¶ 0002). 16
02. Lerat describes it as being advantageous to create coupons 17
whose characteristics change, such as by diminishing in value, 18
over time (Lerat ¶ 0024). 19
03. Lerat’s coupons have a defined structure including dates, 20
identifiers, and images (Lerat ¶’s 0052-53). 21
04. Lerat’s coupons are digitally signed files that contain 22
information about the discount type, nature, and rules (Lerat ¶ 23
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0055). Such information would be contained in data items known 1
as parameters, since a parameter is the name for data that is passed 2
to a functional block of software. In particular, the value of a 3
discount is a required parameter (Lerat ¶ 0168). 4
05. Lerat’s coupons have beginning and ending times for 5
redemption (Lerat ¶’s 0062-63). 6
06. Lerat’s coupons can diminish in value based on the available 7
time to live of the coupon (Lerat ¶ 0069). 8
07. Lerat’s coupons may be dynamically created at download 9
(Lerat ¶ 0087). 10
08. A user is targeted for Lerat’s coupon by web banner ads. 11
Coupons may be downloaded by clicking on such banners (Lerat ¶ 12
0129-130). 13
09. Some of Lerat’s coupons’ parameters have default values. For 14
example, yeas or no parameters default to yes. One of these 15
controls whether the value is cumulative with other discounts, thus 16
making the value variable (Lerat ¶’s 0174-175). 17
DeLapa 18
10. DeLapa is directed to generating coupons to provide discounts 19
for purchases and, in particular, to delivery techniques for 20
delivering coupons assigned to a particular household. DeLapa is 21
particularly adapted for delivering targeted coupons to a 22
household. Targeted coupons are coupons which are assigned to a 23
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household on the basis of attributes of that household (DeLapa 1
1:14-21) 2
11. DeLapa generates coupons to provide discounts for purchases 3
which are capable of increasing profit margins of the participating 4
retail establishment. DeLapa not only generates and dispenses 5
targeted coupons, which are assigned to particular households on 6
the basis of at least one attribute of that household. It also has the 7
capability of enhancing a dialog between a retail establishment 8
and its customers (DeLapa 3:18-27). 9
Walker 10
12. Walker is directed to a frequent shopper reward system that 11
tracks performance data of members or account holders linked to a 12
single frequent shopper account (Walker 2:14-18). 13
Facts Related To The Level Of Skill In The Art 14
13. Neither the Examiner nor the Appellants have addressed the 15
level of ordinary skill in the pertinent arts of programming and 16
system design, promotional campaigns, financial transaction 17
systems, marketing promotion systems design, data 18
communications, and promotional coupon campaigns. We will 19
therefore consider the cited prior art as representative of the level 20
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 21
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings 22
on the level of skill in the art does not give rise to reversible error 23
‘where the prior art itself reflects an appropriate level and a need 24
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for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 1
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 2
Facts Related To Secondary Considerations 3
14. There is no evidence on record of secondary considerations of 4
non-obviousness for our consideration. 5
PRINCIPLES OF LAW 6
Claim Construction 7
During examination of a patent application, pending claims are 8
given their broadest reasonable construction consistent with the 9
specification. In re Prater , 415 F.2d 1393, 1404-05 (CCPA 1969); 10
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 11
2004). 12
Limitations appearing in the specification but not recited in the claim are 13
not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 14
1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 15
specification” without importing limitations from the specification into the 16
claims unnecessarily) 17
Although a patent applicant is entitled to be his or her own lexicographer 18
of patent claim terms, in ex parte prosecution it must be within limits. In re 19
Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing 20
such definitions in the Specification with sufficient clarity to provide a 21
person of ordinary skill in the art with clear and precise notice of the 22
meaning that is to be construed. See In re Paulsen, 30 F.3d 1475, 1480 23
(Fed. Cir. 1994) (although an inventor is free to define the specific terms 24
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used to describe the invention, this must be done with reasonable clarity, 1
deliberateness, and precision; where an inventor chooses to give terms 2
uncommon meanings, the inventor must set out any uncommon definition in 3
some manner within the patent disclosure so as to give one of ordinary skill 4
in the art notice of the change). 5
Obviousness 6
A claimed invention is unpatentable if the differences between it and 7
the prior art are “such that the subject matter as a whole would have been 8
obvious at the time the invention was made to a person having ordinary skill 9
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 10
S.Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 11
(1966). 12
In Graham, the Court held that that the obviousness analysis is 13
bottomed on several basic factual inquiries: “[(1)] the scope and content of 14
the prior art are to be determined; [(2)] differences between the prior art and 15
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 16
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 17
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to 18
known methods is likely to be obvious when it does no more than yield 19
predictable results.” KSR, at 1739. 20
“When a work is available in one field of endeavor, design incentives 21
and other market forces can prompt variations of it, either in the same field 22
or a different one. If a person of ordinary skill can implement a predictable 23
variation, § 103 likely bars its patentability.” Id. at 1740. 24
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“For the same reason, if a technique has been used to improve one 1
device, and a person of ordinary skill in the art would recognize that it would 2
improve similar devices in the same way, using the technique is obvious 3
unless its actual application is beyond his or her skill.” Id. 4
“Under the correct analysis, any need or problem known in the field 5
of endeavor at the time of invention and addressed by the patent can provide 6
a reason for combining the elements in the manner claimed.” Id. at 1742. 7
ANALYSIS 8
Claims 1, 3-6, 16-32, and 42-48 rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Lerat and DeLapa. 10
Claims 1, 17, 18, 22-27, and 43 11
The Appellants argue claims 1 and 22-27 as a group (Br. 14-18). The 12
Appellants also argue claims 17, 18, 42, and 43 as a group based only on 13
their dependence from claims 1 and 22 (Br. 21). Therefore, we treat claims 14
1, 17, 18, 22-27, and 43 as a group. 15
Accordingly, we select claim 1 as representative of the group. 16
37 C.F.R. § 41.37(c)(1)(vii) (2007). 17
The Examiner found that Lerat described all the limitations of claim 1 18
except for limitation [2] targeting customers as offer recipients. The 19
Examiner found that DeLapa described this limitation within the field of 20
promotional offers and implicitly found that one of ordinary skill knew that 21
such selection of offers for customers would have provided offers of interest 22
to customers upon login of a computer system, and concluded that it would 23
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have been obvious to a person of ordinary skill in the art to have so 1
combined Lerat and DeLapa (Answer 3-4). 2
The Appellants contend that Lerat does not describe the unspecified or 3
variable parameters in limitations [1] and [4]-[6] (Br. 15:Bottom full ¶); 4
defining the parameters when the offer is accepted in limitation [4] (Br. 5
14:Bottom ¶ - 15:Top ¶); and a declinable value once the parameters are 6
defined in limitation [6] (Br. 14:Bottom ¶). The Appellants also argue that 7
there is no reason to combine the references (Br. 16:Bottom ¶). The 8
Examiner responds that Lerat’s offer value that is based on the time to live is 9
both variable and declinable (Answer 5-6) and is defined when the offer is 10
downloaded to the customer’s computer, such download implying 11
acceptance by the customer (Answer 4:First full sentence). 12
The Appellants contend that neither reference describes the unspecified 13
or variable offer parameters as recited in the claims. The Appellants argue 14
that Lerat’s coupon characteristics that vary over time make the value 15
variable, not its parameters, and that the Appellants’ parameters may be 16
personalized (Br. 15:Bottom ¶). We disagree with the Appellants. 17
Lerat’s coupons are digitally signed files that contain information about 18
the discount type, nature, and rules. Such information would be contained in 19
data items known as parameters, since a parameter is the name for data that 20
is passed to a functional block of software. Further, the value of a discount 21
is a required parameter (FF 04). This parameter, the value, may be based on 22
the available time to live of the coupon (FF 06). Thus, Lerat describes a 23
variable parameter, such variability based on remaining time for a coupon. 24
As to the Appellants’ argument regarding personalization of the parameter, 25
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we find no limitation in the claim to such personalization other than the 1
assignment to a customer in limitation [4]. Lerat describes such assignment 2
during download (FF 08). 3
The Appellants next contend that Lerat does not describe defining the 4
parameter when the offer is accepted. The Examiner responds that an offer 5
is accepted when its file is downloaded to a computer (Answer 6). By this 6
we take the Examiner to mean that downloading inherently causes a user’s 7
computer, and therefore the user, to accept what is downloaded, and because 8
downloading creates a new file on the user’s computer, all contents of the 9
file are defined at that point on the user’s computer. 10
We agree with the Examiner. Lerat’s customer downloads coupons by 11
clicking on a banner, thus accepting the offer for a coupon that the banner 12
describes (FF 08). Claim 1 does not limit the manner in which an offer is 13
accepted. We find that accepting the contents of a file containing an offer 14
onto one’s computer is an acceptance of that offer. 15
As to the Appellants’ argument that Lerat fails to describe a declinable 16
value once the parameters are defined in limitation, we find that Lerat 17
describes coupons that can diminish in value based on the available time to 18
live of the coupon (FF 06). This declinable value is defined by the 19
parameters that are created at download, and thus those parameters define 20
the nature of the decline in value once the parameters are defined. Claim 1 21
does not limit the manner in which value is declinable, so it is immaterial 22
whether the decline itself actually begins at the time of download, only that 23
the parameters define a value that is declinable according to some basis once 24
the parameters are defined. 25
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As to the motivation to combine the references, as both references are 1
directed to promotional coupons (FF 01 & 10), DeLapa’s description of 2
ways to increase profit margins and enhance the dialog with customers (FF 3
11) provides incentive for one of ordinary skill to adopt its targeting 4
methods. 5
Claims 3-6, 15, 16, 19-21, 28-32, 42, and 44-48 6
The Appellants argue claims 3, 5, 6, 152, 19-21, 28, 29, 31, 32, and 44-7
47 as a group. Accordingly, we select claim 3 as representative of the group. 8
Claim 3 further requires that one or more of the unspecified or variable 9
parameters be assigned default values. The Examiner found that the starting 10
value of any parameter is the default value (Answer 4). The Appellants 11
contend that neither reference describes the unspecified or variable offer 12
parameters as recited in the claims. The Appellants argue that Lerat’s 13
coupon characteristics that vary over time make the value variable, not its 14
parameters (Br. 18). The Appellants do not argue the claim 3 limitation of 15
default values. 16
We found that Lerat’s coupon value was a parameter that may be 17
variable supra. Thus, the Appellants’ argument here similarly fails to 18
overcome the burden of showing error on the Examiner’s part. 19
20

2 The Appellants present a separate argument that claim 15 was rejected
under the wrong set of art, based purely on claim 15’s dependence from
claim 7 (Br. 19). The Examiner corrected this obvious clerical error in the
rejections as presented in the Answer (see Answer 7). Accordingly, we need
not treat this issue further.
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Claims 4 and 30 1
The Appellants argue claims 4 and 30 as a group. Accordingly, we 2
select claim 4 as representative of the group. Claim 4 further requires that 3
the assigned default values from claim 3 may be changed a predetermined 4
number of times. The Examiner implicitly found that changes to declining 5
values daily or at other periods were known to those of ordinary skill and 6
concluded that it would have been obvious to a person of ordinary skill in 7
the art to have used changes at predetermined intervals. With defined start 8
and end dates as in Lerat, would have resulted in a predetermined number of 9
changes (Answer 4). The Appellants contend that the Examiner provides no 10
proof that such a feature is plausible with Lerat, even in the form of official 11
notice (Br. 19). 12
We disagree with the Appellants. The Examiner made a finding of fact 13
that one of ordinary skill knew of changes at fixed time periods, irrespective 14
of whether the Examiner used the phrase “official notice.” The Appellants 15
offer no reason to doubt that those of ordinary skill knew of such 16
programming practices and their applicability to systems such as in Lerat. 17
We further find that, as a matter of computer programming constraints, 18
once a start and end date are established for a promotion as in Lerat (FF 05), 19
the number of iterations in any decline in value that occurs at regular 20
intervals will be predetermined by those dates. Lerat’s description of 21
declining the value based on time to live (FF 06) implies such regularity in 22
the decline. 23
The programming constraints we refer to are those in which digital 24
computers are constrained to use discrete values and time periods that limit 25
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the precision of such amounts. The use of discrete values and time periods 1
necessarily constrains any series of operations to be performed with such 2
discrete values and time periods. Thus any regular change from one limit to 3
another, such as from a beginning value and date to an ending value and 4
date, must occur over a series of operations whose number is predetermined 5
by the program and the constraints on the precision of values and time 6
periods. 7
Finally, we find that claim 4 requires only the capacity for, not the actual 8
performance of, changing values a predetermined number of times. Any 9
reduction in value over a predetermined range has such a capacity because 10
once the change increments are known, the number of changes are implied. 11
Claims 16 and 42 12
The Appellants argue claims 16 and 42 as a group. Accordingly, we 13
select claim 16 as representative of the group. Claim 16 further requires that 14
the customers can decline to redeem the offer. The Examiner found that 15
because Lerat does not require redemption, customers must necessarily have 16
the ability to decline redemption (Answer 4). The Appellants contend that 17
the customers may have postponed the decision or may not have yet 18
received the offer in Lerat (Br. 20). 19
We disagree with the Appellants. Claim 16 broadly requires capacity to 20
decline, not performance of such a decline. Claim 16 does not further limit 21
the manner in which declination occurs. Whether the customer postpones a 22
decision to decline does not diminish a customer’s inherent capacity to 23
decline any offer. 24
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Whether a customer has not yet received an offer is not commensurate 1
with the scope of claim 16, because claim 16 depends from claim 1, among 2
whose limitations are distribution of the offer. Thus, an instance where a 3
customer has not received an offer is outside the scope of claim 16. 4
Claim 48 5
The Appellants argue claim 48, which further requires that the decline in 6
value be linear, polynomial, or exponential. The Examiner implicitly found 7
that one of ordinary skill knew that declining values were typically 8
performed with a fixed amount (linear) or percentage (polynomial or 9
exponential) per day (Answer 4). The Appellants contend that the Examiner 10
provides no evidence, even in the form of official notice, for the Examiner’s 11
finding (Br. 21). 12
The Examiner made a finding of fact that one of ordinary skill knew of 13
changes at fixed time periods, irrespective of whether the Examiner used the 14
phrase “official notice.” We further find that once a start and end date are 15
established for a promotion as in Lerat (FF 05), with a declining value based 16
on time to live (FF 06), such a combination at least suggests changes at fixed 17
time periods having linear or percentage regularity in the decline, because 18
such decline would be the most simple to program and for the customer to 19
apprehend. 20
The Appellants have not sustained their burden of showing that the 21
Examiner erred in rejecting claims 1, 3-6, 16-32, and 42-48 under 35 U.S.C. 22
§ 103(a) as unpatentable over Lerat and DeLapa. 23
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Claims 7-15 and 33-41 rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Lerat, DeLapa, and Walker. 2
The Appellants argue that the references may not be properly combined 3
(Br. 22-24), and repeat their arguments from claim 1 that the references fail 4
to describe unspecified or variable offer parameters. As to the arguments 5
repeated from claim 1, we find the Appellants have not sustained their 6
burden of showing error for the same reasons we found supra. As to the 7
motivation to combine Walker with the other references, we find that 8
Walker is directed to a frequent shopper reward system that tracks 9
performance data of members (FF 12), and therefore its teachings of 10
tracking performance is complementary to the promotional teachings of 11
Lerat and DeLapa. Thus, we agree with the Examiner’s finding that one of 12
ordinary skill would have seen from Walker that the performance of Lerat’s 13
and DeLapa’s promotional systems would be improved by aligning each 14
customer’s promotion with that customer’s profile as described by Walker 15
(Answer 5). 16
The Appellants have not sustained their burden of showing that the 17
Examiner erred in rejecting claims 7-15 and 33-41 under 35 U.S.C. § 103(a) 18
as unpatentable over Lerat, DeLapa, and Walker. 19
CONCLUSIONS OF LAW 20
The Appellants have not sustained their burden of showing that the 21
Examiner erred in rejecting claims 1 and 3-48 under 35 U.S.C. § 103(a) as 22
unpatentable over the prior art. 23
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DECISION 1
To summarize, our decision is as follows: 2
• The rejection of claims 1, 3-6, 16-32, and 42-48 under 35 U.S.C. 3
§ 103(a) as unpatentable over Lerat and DeLapa is sustained. 4
• The rejection of claims 7-15 and 33-41 under 35 U.S.C. § 103(a) as 5
unpatentable over Lerat, DeLapa, and Walker is sustained. 6
No time period for taking any subsequent action in connection with this 7
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 8
9
AFFIRMED 10
11
12
13
14
BAHR, Administrative Patent Judge, concurring 15
I join in the opinion of my colleagues with the exception of the 16
portions addressing the rejection of claims 4, 30, and 48. While I take issue 17
with the statements in the opinion that “The Examiner implicitly found that 18
changes to declining values daily or at other periods were known to those of 19
ordinary skill and concluded that it would have been obvious to a person of 20
ordinary skill in the art to have used changes at predetermined intervals” and 21
“The Examiner implicitly found that one of ordinary skill knew that 22
declining values were typically performed with a fixed amount (linear) or 23
percentage (polynomial or exponential) per day,” I concur with the decision 24
of my colleagues to affirm the rejection as to those claims. 25
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It is not clear to me that the Examiner’s statement that “[r]egarding 1
claim 4, it would have been obvious to one of ordinary skill at the time of 2
the invention to have reduced the value once a day (or other time period) 3
until the offer expires” (Answer 3-4) is a finding that “changes to declining 4
values daily or at other periods were known to those of ordinary skill,” as 5
opposed to an inference that Lerat’s teaching that the coupons can diminish 6
in value based on the available time to live of the coupon somehow suggests 7
or implies such a reduction in value. In my opinion, the Appellants 8
reasonably question where the Examiner finds support for the determination 9
of obviousness (Br. 19). In any event, any lack of clarity in the Examiner’s 10
explanation of the rejection is harmless error, given the scope of claim 4, 11
which, as pointed out by my colleagues, only requires capability of the 12
assigned default values to be changed a predetermined number of times. 13
Moreover, I additionally observe that such predetermined number could be 14
any number, including 1. In teaching that the coupons can diminish in value 15
based on the available time to live of the coupon, Lerat teaches such 16
capability. 17
Likewise, it is not clear to me that the Examiner’s statement that 18
“[r]egarding claim 48, Lerat does not appear to specify or limit the type of 19
discount value decay and it would have been obvious to one of ordinary skill 20
at the time of the invention to have provided any reasonable function 21
including linear (x amount per day)” (Answer 4) is an implicit finding that 22
“one of ordinary skill knew that declining values were typically performed 23
with a fixed amount (linear) or percentage (polynomial or exponential) per 24
day,” as opposed to a finding that linear functions are known and a legal 25
conclusion that the application of any known function would have been 26
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obvious to a person of ordinary skill in the art to implement the decline in 1
value of Lerat’s coupon. The selection of any one of a finite number of 2
identified, predictable solutions to a problem is likely the product not of 3
innovation but of ordinary skill and common sense. KSR, 127 S. Ct. at 4
1742. Accordingly, the Examiner’s conclusion that the subject matter of 5
claim 48 would have been obvious is fundamentally sound. 6
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