Ex Parte SpectorDownload PDFBoard of Patent Appeals and InterferencesJun 23, 200609589313 (B.P.A.I. Jun. 23, 2006) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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 Appeal No. 2006-1485 Application No. 09/589,313 2 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) Appeal No. 2006-1485 Application No. 09/589,313 3 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). Appeal No. 2006-1485 Application No. 09/589,313 4 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. Appeal No. 2006-1485 Application No. 09/589,313 5 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 6 Collard & Roe 1077 Northern Boulevard Roslyn, NY 11576 TJO/ki Copy with citationCopy as parenthetical citation