Ex Parte Rampell et alDownload PDFPatent Trial and Appeal BoardJun 30, 201612430656 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/430,656 0412712009 113349 7590 LOEB & LOEB, LLP 321 North Clark Street Suite 2300 Chicago, IL 60654-4746 07/05/2016 FIRST NAMED INVENTOR Alastair Rampell 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. TRPY-0008-POl 3564 EXAMINER HENRY, RODNEY M ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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): chpatent@loeb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALASTAIR RAMPELL, ALEXANDER E. CAMPBELL, TERRY ANGELOS, and KENNETH K. YU Appeal2014-006188 Applicationl2/430,6561 Technology Center 3600 Before JOSEPH A. FISCHETTI, SHEILA F. McSHANE, and ROBERT J. SILVERMAN, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION ON APPEAL The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's decision to reject claims 1-8 and 26-31. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to the Appellants, the real party in interest is TrialPay, Inc. Appeal Brief filed October 15, 2013, hereafter "App. Br.," 2. Appeal2014-006188 Application 12/430,656 BACKGROlH-.JD The invention relates to transactional advertising that includes providing a transactional advertising platform for presenting offers to users who have committed to completing an electronic transaction. Abstract, Specification, hereafter "Spec.,",-r 15. Representative claim 1 is reproduced from page 16 of the Claim Appendix of the Appeal Brief (Claims App'x) as follows, with emphasis added to relevant claim limitations: 1. A method of transactional advertising, comprising: providing, on a computer, a transaction offer platform for presenting offers to a user committed to complete an electronic transaction in which the user is currently engaged; accessing a database of offer templates; electronically calculating an anticipated payout amount for user acceptance of at least one of the offers in the database; customizing at least one of the offer templates based on the anticipated payout to provide a transaction offer; and presenting the transaction offer to the user in the electronic transaction. In a Final Rejection, the Examiner rejects claims 1, 2, and 26 under 35 U.S.C. § 103(a) as obvious over Wardell2, Swartz3, and Gentry4. Claims 3-8 and 27-31 are rejected under Wardell, Swartz, Gentry, and Bednarek5. Final Action, hereafter "Final Act.," 2-13, mailed January 14, 2013; see, also, Answer, hereafter "Ans." 3-5 mailed February 27, 2014. 2 US Publication 2006/0047563 Al, published March 2, 2006. 3 US Publication 2005/0040230 Al, published February 24, 2005. 4 US Publication 2006/0271441 Al, published November 30, 2006. 5 US Publication 2005/0251440 Al, published November 10, 2005. 2 Appeal2014-006188 Application 12/430,656 DISCUSSION The Appellants argue issues in the Appeal that are common to the independent claims, claims 1 and 26. App. Br. 8-14. We will address the issues as a group using claim 1 as representative. The Examiner finds that Swartz discloses "commitment" to the purchase by scanning items and the use of a virtual shopping cart to which items are added by customers. Final Act. 4 (citing Swartz i-fi-f 109, 216). The Examiner also finds that Mueller discloses subscribing to a service, and Wardell discloses customers as "subscribers," also indicating commitment to the purchase. Id. at 13 (citing Mueller i123). The Examiner finds that the term "committed" can be used "to describe the user's intent to purchase the item. It does not limit the definition to mean that the person has already purchased the item or signed an agreement to purchase an item." Ans. 3--4. The Appellants argue that the prior art fails to disclose the claim limitation "presenting offers to a user committed to complete an electronic transaction." App. Br. 8-14. More specifically, the Appellants allege that Swartz, the prior art reference relied upon by the Examiner, fails to present offers to a user who has "committed" to a transaction because merely scanning an item, as the prior teaches, does not commit to the transaction. Id. at 13. The Appellants contend that high quality information on a user is important, for example, such as "what the user is actually interested at that moment, 'rather than items that may have been added to an electronic shopping cart that [were subsequently] discarded."' Id. at 10 (citing Spec. i1367)6. Moreover, the Appellants argue that "commitment" does 6 The Appellants' parenthetical addition appears to incorrectly present this portion of the Specification. A more complete as-written quotation from the Specification is provided herein. 3 Appeal2014-006188 Application 12/430,656 not refer a customer's intent only, and there are objective indicators of commitment that should be used, where, for instance, per the Specification, one way to commit to the completion of the transaction is by providing a form of payment. Reply Brief, hereafter "Reply Br.," 3--4, mailed April 28, 2014 (citing Spec. i-f 52). The Appellants "resist" providing their own construction for the term "commitment" to the transaction, but "submit that being 'committed to complete an electronic transaction' does not read on a scenario in which a user may unilaterally cancel an electronic transaction, without any consequences, implications, penalties, or the like." Id. at 4. The Appellants additionally argue that the Examiner construed the term "electronic transaction" in an overly broad manner, based on the statement made by the Examiner in the Final Rejection that "scanning a product is completing an electronic transaction," and this construction is not supported by the Specification. App. Br. 12 (citing Final Act. 4). In light of the Examiner's other findings, it appears that the term "committed to" was omitted prior to text "completing an electronic transaction" in the Final Action. We view this as harmless error. The issue as to what may constitute "commitment" to the completion of a transaction is determinative as to whether the prior art discloses the claim limitation. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification states that there are different "levels" of commitment, where, for instance, "[t]he user's level of commitment may include one of an indication of non-payment, an indication of payment commitment, an indication of payment authorization, an indication of indecision to pay, and the like." Spec. i-f 19 (emphasis added), see, also, Abstract. The Specification further states that "the 4 Appeal2014-006188 Application 12/430,656 transactional offers may be presented to the user [] based on user's level of commitment." Id. i-f 272. The Specification refers to providing a form of payment as indicia of "commitment," but does not indicate that the user "commitment" requires a form of payment or actual payment has to be provided. See Spec. i-f 52. Figure 21 of the Specification is reproduced below. 2100 ..... YOUR SHOPPING CART 0.1•mity' Gii\t l __ ~ - ¥110"' t~'' it•m ln~AA'k Gt1;o1.r,,r111"i:-d 1om~11 tods)' i·SOn·fl1ire~~'1- FREEOI;;~:~~;;;;~;;;:;~:-;:;;:;::;;:~~~-:~-;~~:~~;:;:~-~-:;;~--------------~--? 2102 ortero R01tooranuom. r 2102 ~>~'Jt~~~~~~~,~~~~- a~ ow: Wrp!~clng an 1>rd~r of$)1g Of r.mt(I. {!lr.k"ADWto ai:'C:epttffl'S gtft. (E~~) P1&i .. on:otyoo1tiplimtolo)J·SIJUSll>l!S>!l~flMHhli>ml!o~ fml! ·fo•>h®lu.or0erbet..,.mMun~ il«•ml>.d""""Y.°"'.rrJl" ll Q l!fillwi~""""'!kaml>Copy with citationCopy as parenthetical citation