Ex Parte Spector

Board of Patent Appeals and Interferences

Jun 23, 2006

09589313 (B.P.A.I. Jun. 23, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___

Ex parte DONALD SPECTOR
____________

Appeal No. 2006-1485
Application No. 09/589,313
____________

ON BRIEF
____________

Before OWENS, CRAWFORD and NAPPI, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1-12, which are all
of the pending claims.
THE INVENTION
The appellant claims a system for generating discount or
promotional coupons, comprising a personal video recorder (PVR)
that allows a television viewer to select a coupon for a product

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Application No. 09/589,313

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while the product is advertised in a television commercial. Claim
1 is illustrative:
1. A system for generating discount or promotional coupons,
comprising:

a television receiver located at a viewer’s premises, said
television receiver including and a remote control unit;

a personal video recorder (PVR) that allows a viewer to select
a coupon for a product while it is advertised via a commercial that
is displayed by the television receiver, said selection occurring
via the remote control unit, and said PVR transmitting the request
for said coupon to a data processing device, which transmits the
request to a broadcaster central station;

means included within said broadcaster central station for
transmitting to a manufacturer coupon generator station a coupon
request, which request includes specific information regarding the
product of interest;

first means included within said manufacturer’s coupon
generator station for receiving said specific information regarding
said product of interest, said manufacturer’s coupon generator
station also having available up to the minute point-of-sale
information on the product of interest and coupon responses and
redemptions regarding said product; and

second means included within said manufacture’s coupon
generator station for analyzing said specific information regarding
said product of interest, and said point-of-sale information and
coupon responses and redemptions and issuing a coupon to said
viewer based on said analyzed information; wherein the data
processing device receives and stores the coupon issued to said
viewer.

THE REFERENCES
Van Kohorn 5,249,044 Sep. 28, 1993
Barnett et al. (Barnett) 6,336,099 Jan. 1, 2002
(effective filing date Apr. 19, 1995)
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THE REJECTION
Claims 1-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Barnett in view of Von Kohorn.
OPINION
We reverse the aforementioned rejection. We need to address
only the sole independent claim, i.e., claim 1.
Claim 1 requires a PVR that allows a viewer to select a coupon
for a product while the product is advertised via a commercial that
is displayed by a television receiver, the selection occurring via
a remote control unit, and the PVR transmitting the request for the
coupon to a data processing device which transmits the request to a
broadcaster central station. For that claim requirement the
examiner relies upon Barnett (answer, pages 3 and 9). The examiner
argues (answer, page 3):
With respect to the newly added feature of a
personal video recorder (PVR) that allows a viewer to
select a coupon for a product while it is advertised via
a commercial that is displayed by the receiver, and said
PVR transmitting the request for said coupon to a data
processing device, which transmits, reviews and stores
the request to a broadcaster central station (i.e. the
coupons viewed and selected by the user is [sic] recorded
and transmitted to the coupon distributor)(see Figure 1
and col. 6, lines 66 to col. 7, lines 1-5).

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Application No. 09/589,313

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Barnett’s figure 1 does not show a personal video recorder.
Barnett’s column 6, line 66 to column 7, line 5, discloses:
The online service provider 2 is connected with the
data link 4 and is thus accessible by any remote personal
computer 6 having a data communications interface 20 such
as a modem (see FIG. 2). The online service provider
communicates with the personal computer 6 in order to
transmit requested coupon data, and also in order to
receive coupon requests and the user-specific data
mentioned above.

No personal video recorder is disclosed in this portion of Barnett
relied upon by the examiner, and the examiner has not explained how
the relied-upon portion of Barnett would have fairly suggested, to
one of ordinary skill in the art, a personal video recorder, let
alone one meeting the requirements of the appellant’s claim 1 set
forth above.
We therefore conclude that the examiner has not carried the
burden of establishing a prima facie case of obviousness of the
appellant’s claimed invention.
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Application No. 09/589,313

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DECISION
The rejection of claims 1-12 under 35 U.S.C. § 103 over
Barnett in view of Von Kohorn is reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

Comment [jvn1]: Type address
Comment [jvn2]: Type address
Appeal No. 2006-1485
Application No. 09/589,313

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Collard & Roe
1077 Northern Boulevard
Roslyn, NY 11576

TJO/ki