Ex Parte Sheprow et al

Patent Trial and Appeal Board

Dec 3, 2014

10000680 (P.T.A.B. Dec. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MADDY SHEPROW, ELLEN M. COX,
and BRIAN F. FITZPATRICK
____________________

Appeal 2012-0031541
Application 10/000,6802
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 4, 11, 12, 14–19, and 21–26. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“Br.,” filed March 10,
2011) and the Examiner’s Answer (“Ans.,” mailed June 24, 2011).
2 Appellants identify the real party in interest as Maritz Inc. Br. 1.
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CLAIMED INVENTION
Appellants’ claimed invention “relates to allowing a customer to
motivate a participant by selecting on-line a communications campaign
element and by presenting off-line to the participant the selected
communications campaign element” (Spec. 1, ll. 21–25).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system that hosts and runs an online motivation
website, said system comprising:
a centralized on-line motivation website on a platform
implementing a plurality of centralized reward programs on the
platform remote from a plurality of program providers and
remotely accessible by the plurality of program providers, each
of the program providers operating at least one of the reward
programs on the platform so that multiple program providers
are operating their reward programs on the same platform, said
website allowing each particular program provider to reward
recipients of the program of the particular provider wherein the
recipients are remote from the platform and wherein the reward
programs are remotely accessible by the recipients, said website
receiving from each program provider a designation of
recipients, said website allowing each program provider to
designate and provide to the designated recipients via the
website (1) an award selected via the website as part of the
motivation program and (2) said website allowing each
program provider to designate and provide to the designated
recipients a printable communications campaign element
referring to the selected award, said element selected via the
website as part of the motivation program wherein the selected
award and its associated printable communications campaign
element are delivered from the centralized website on the
platform to the designated recipients remote from the platform;
a fulfillment program linked to the motivation website
and responsive to the program provider via the platform
providing the selected award to the designated recipients either
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directly from the platform to the designated recipients or from
the platform to the program provider for presentation to the
designated recipients; and
a printing program associated with the website creating
in response to the program provider via the platform a printed
version of the selected communications campaign element and
the selected award for off-line presentation, remote from the
platform, to the designated recipients wherein the printing
program permits the printable communications campaign
elements to be customized on-line via the platform by the
program provider prior to printing and off-line, remote
presentation, wherein the printing program includes a particular
Internet browser plug-in for printing the printable
communications campaign element and the selected award at a
destination selected by the designated recipients or at a
destination selected by the program provider.

REJECTION
Claims 1, 3, 4, 11, 12, 14–19, and 21–26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Eggleston (US 6,061,660, iss. May 9, 2000)
and Hamzy (US 6,623,527 B1, iss. Sept. 23, 2003).

ANALYSIS
Independent claim 1 and dependent claims 3, 4, 25, and 26
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because neither
Eggleston nor Hamzy discloses or suggests “a printing program [that]
includes a particular Internet browser plug-in for printing the printable
communications campaign element and the selected award at a [selected]
destination,” as recited in claim 1. Appellants maintain that Eggleston
illustrates standard input/output devices attached to a computer, but does not
disclose printing awards via the standard input/output, and that Hamzy does
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not cure this deficiency because Hamzy does not disclose a particular
Internet plug-in for printing campaigns, campaign elements and awards at a
destination selected by the recipients or the program provider (Br. 12–13).
Appellants’ argument is not persuasive.
Eggleston is directed to a method and system for providing incentive
programs over a computer network, and describes that the system includes
participation of a host, who manages the system; one or more consumers,
who participate in incentive programs and in certain instances win awards;
one or more sponsors, who offer incentive programs through the host
system; and one or more retailers, who provide awards for the incentive
programs and who fulfill delivery of awards to consumers (Eggleston, col. 9,
l. 65 – col. 10, l. 9). Eggleston describes that a consumer computer may
include various standard components, including a central processing unit
(“CPU”) and attached I/O devices, e.g., a video display, keyboard, scanner,
mouse, joystick or other input or output devices (id. at col. 10, ll. 55–65),
and further describes displaying a message on the consumer computer, in the
form of a HTML page, which identifies the prize won and the location of the
retail store at which the consumer may claim his or her prize (id. at col. 10,
ll. 10–42; col. 40, ll. 35–53).
The Examiner acknowledges that Eggleston does not specifically state
that the I/O devices include a printer (Ans. 9). However, the Examiner
observes that Hamzy discloses that an internet browser plug-in may be used
to extend the capability of a browser to allow the printing of documents
available over a network (Ans. 9–10, citing Hamzy, col. 6, ll. 41–67).
Appellants argue that Hamzy describes using a browser application to
print standard HTML web pages displayed in a local browser, rather than
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campaigns, campaign elements, and awards (Br. 12–13). But that argument
is not persuasive because it is not commensurate with the scope of claim 1.
Nothing in the claim language requires the Internet browser plug-in to be
enabled to print only certain documents (see Ans. 24–25).
Appellants’ argument that Hamzy teaches away from “a particular
Internet browser plug-in for printing selected campaign elements, selected
motivation documents, and selected awards” (Br. 18–19) also fails.
Appellants do not point to any passage in Hamzy that criticizes, discredits,
or otherwise discourages printing campaign elements, motivation
documents, and selected awards, which is required before a proper finding of
“teaching away” can be made. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (A teaching away occurs when a reference discourages one skilled in
the art from following the claimed path, or when the reference would lead
one skilled in the art in a direction divergent from the path that was taken by
the applicant).
Appellants next argue that the Examiner’s rationale for combining
Eggleston and Hamzy is flawed because Eggleston “never identifies the
benefit and value of ‘a printed version of the selected communications
campaign element and the selected award . . . ,’ as recited in claim 1,” and
implies that the value in an incentive program ends with the display of a
“win eligible message” (Br. 19–20). This argument also is unpersuasive.
The Examiner concluded that it would have been obvious to a person
of ordinary skill in the art at the time of Appellants’ invention to modify
Eggleston to include an internet browser plug-in, as disclosed in Hamzy, to
allow for the selection and printing of win messages (Ans. 9–10). The
Examiner explained that the rationale for modifying Eggleston in this way,
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i.e., for using a plug-in to print the win messages of Eggleston, is to improve
the performance of the network server at the expense of increased use of
local services (id., citing Hamzy, col. 7, ll. 1–3). In the absence of specific,
technical arguments as to why the motivation is insufficient and/or why the
improvement described by the Examiner is more than the predictable use of
prior art elements according to their established functions, we find
Appellants’ argument unpersuasive.
Finally, Appellants argue that the Examiner erred in rejecting claim 1
under § 103(a) because Eggleston only discloses that each customer can
download and operate its rewards program on its own processor, and fails to
discloses multiple motivation/rewards programs by various sponsors
operating on the same online motivational website, as required by claim 1,
i.e., “a centralized on-line motivation website on a platform implementing a
plurality of centralized reward programs. . . .” (Br. 13 and 22–25).
There is no dispute that Eggleston discloses that a customer may
download and operate the awards program on its own processor; however, as
the Examiner explains, Eggleston also discloses embodiments in which a
plurality of motivation and incentive programs are centralized on a host
system (Ans. 26–29). For example, Eggleston discloses at column 17,
lines 25–50 that the sponsor site, which may be HTML pages stored in the
data management, storage, and retrieval application of the sponsor site, is
“located on the host system and dedicated to sponsor activities.”
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection
of dependent claims 3, 4, 25, and 26, which are not argued separately.
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Independent claims 11, 15, 19, 21, and 23 and dependent claims 12, 14, 16–
18, 22, and 24
Appellants argue that each of independent claims 11, 15, 19, 21, and
23 should be allowed for the same reasons set forth with respect to claim 1
(see Br. 20, 23, and 26–28). We are not persuaded for the reasons set forth
above that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Therefore, we sustain the rejection of independent claims 11, 15, 19, 21, and
23 for the same reasons. We also sustain the rejection of claims 12, 14, 16–
18, 22, and 24, each of which depends from one of claims 1, 15, 19, 21, and
23 and is not argued separately.

DECISION
The Examiner’s rejection of claims 1, 3, 4, 11, 12, 14–19, and 21–26
under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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