Ex Parte Spence

Patent Trial and Appeal Board

Nov 23, 2016

13309572 (P.T.A.B. Nov. 23, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/309,572 12/02/2011 Thomas Harry Spence III MAS-103 7117
62542 7590 11/28/2016
OrYmnnr Rr Pnmnanv
EXAMINER
P.O. Box 580
Minnetrista, MN 55364-0580
WEISS, JOHN
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
RPO @ oconnorcompanypllc .com
AEO @ oconnorcompanypllc .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS HARRY SPENCE III
Appeal 2014-006164
Application 13/309,5721
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A.WORTH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’
final rejection of claims 14 and 21-33. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Mr. Thomas Harry Spence III as the real party in
interest. Br. 2.
Appeal 2014-006164
Application 13/309,572
THE INVENTION
Appellant claims “a method of offering advertisements on the
Internet.” (Spec. ]|6).
Claim 14, reproduced below, is representative of the subject matter on
appeal.
14. A system for offering advertisements on the Internet, said system
comprising a server computer configured to exchange data with a network,
said server computer having a processor, an area of main memory for
executing program code under the direction of said processor, a storage
device for storing data and program code and a bus connecting said
processor, main memory and said storage device; said code being stored in
said storage device and executing in said main memory under the direction
of said processor, to perform the steps of:
(a) providing, to a plurality of users, one or more advertisements at an
Internet site;
(b) allowing for an individual user to click or view said one or more
advertisements;
(c) establishing an account point balance for said individual user,
wherein said account point balance is not a balance of cash;
(d) during or after said one or more advertisements are clicked or
viewed by said individual user, increasing said account point balance
associated with said individual user;
(e) calculating relative values of account point balances for selected
users within a selected pool of account point balances associated with at
least a portion of said plurality of users, wherein said relative values of
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Application 13/309,572
account point balances for selected users further depend on user profiles
associated with each of said selected users; and
(f) offering cash or a non-cash equivalent to at least one selected user,
based at least in part on said selected pool of account point balances.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pacella US 5,829,746 Nov. 3, 1998
Goldhaber US 5,855,008 Dec. 29, 1998
Churchill US 7,461,022 B1 Dec. 2, 2008
Donahue US 2009/0055256 A1 Feb. 26, 2009
Padgette US 7,877,308 B1 Jan. 25, 2011
The following rejections are before us for review.
Claims 14, 21, 22, 24, 27-30, 32, and 33 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goldhaber in view of Churchill.
Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Goldhaber in view of Churchill, and further in view of Pacella.
Claims 25 and 26 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Goldhaber in view of Churchill and further in view of
Donahue.
Claim 31 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Goldhaber in view of Churchill and further in view of Padgette.
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Appeal 2014-006164
Application 13/309,572
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3 through
14 of the Answer, and on pages 2 through 20 of the Final Action.
2. Churchill discloses:
The account database 134 comprises a user database
(UDB) 151 and a relational database (RDB) 152, as shown in
FIG. 2, which will be maintained in synchronization with
each other. The user database (UDB) 151 is used for speed-intensive
applications, such as real-time access from production
websites. When the offer server 139 awards points, the
user's UDB record will be modified to reflect the transaction.
The offer server 139 notifies the user that his account balance
has been increased (via email or the website). The UDB 151
is also used for redemptions. Upon some redemption action,
the Yahoo! Auction System checks the UDB 151 for available
points for a specific user and a specific transaction, determines
eligibility, and either debits the account for the desired
number of points for an actual transaction or places the
desired number of points on reserve for a potential transaction.
Col. 16 1.61-col. 171.9.
3. Churchill discloses
Certain awards can be checked to make sure that they are
not being credited more than the requisite number of times for
the same action. Thus, a banner ad, which offers one-time-only
points for clicking on the ad, may appear on a website for all to
see. If a user clicks on that ad, he will earn his points. When he
returns to that website, he will see that ad again. By click on the
ad again, he should not be awarded points again since he earned
them once already and this is a one-time-only promotion.
Col. 22,11. 37^15.
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Application 13/309,572
ANALYSIS
The Appellant argues claims 14 and 21-33 as a group (Appeal
Br. 13), selecting claim 14 as the representative claim for this group; thus the
remaining claims standing or falling with claim 14. 37 C.F.R. §
41.37(c)(l)(iv) (2012).
Appellant argues, “Goldhaber does not disclose establishing an
account point balance for an individual user, wherein the account point
balance is not a balance of cash.” (Appeal Br.10).
That argument is not well taken because the Appellant is attacking the
Goldhaber reference individually when the rejection is based on a
combination of references, and the Examiner relies on Churchill, and not
Goldhaber, to disclose account point balance values. (Final Act. 5). See In
re Keller, 642 F.2d 413 (CCPA 1981); In re Young, 403 F.2d 754, 757-58
(CCPA 1968).
Appellant further argues that, “.. .Goldhaber says nothing about
calculating relative values, i.e. of one user compared to other users. There
would be no reason to do so in Goldhaber, since a non-cash point system is
not utilized; instead, cash is transferred directly and instantly to each user.”
(Appeal Br. 11).
Appellant’s arguments fail from the outset because they are not based
on limitations appearing in the claims which do not recite, “calculating
relative values, i.e. of one user compared to other users”. In re Self,
671 F.2d 1344, 1348 (CCPA 1982). Appellant’s claims only require
“calculating relative values of account point balances for selected users
within a selected pool. . . ,” without mention of any comparison (see, e.g.,
Claim 14 (e)). Notwithstanding, we agree with the Examiner’s findings that
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Application 13/309,572
Churchhill discloses this feature in the relational database (RDB) 152. (Final
Act. 9, (FF. 2)). This is because Appellant’s Specification does not
specifically define the term relative, nor does it utilize the term contrary to
its customary meaning. The ordinary and customary definition of the term
relative is “a thing having a relation to or connection with or necessary
dependence on another thing.”2 Thus, we find that the arrangement of award
point values in the relational database 152 of Churchill meets claim
requirement of relative values given that the award point values, once
arranged in the database, stand in relation to one another.
Appellant further argues that:
The Examiner erred in equating “limiting the number of points
a user can obtain by clicking an ad” (from Churchill) to “calculating
relative values of account point balances within a selected pool of
account point balances” of claim 14. The calculation of relative
values of account point balances, within a selected pool, has nothing
to do with a limitation of points for a particular user. The calculations
must reference other users within a selected pool.
(Appeal Br. 12).
We disagree with Appellant because as found supra, we find the
relative values of award point balances in Chruchill, once calculated under
the rules of the system (FF. 3), stand in relative relationship in the RDB 152.
(FF. 2). Even still, we find no error with the Examiner’s finding that
limiting award point crediting to all users in Churchill constitutes
“calculating relative values of account point balances” because Churchill
discloses certain awards are not “credited more than the requisite number of
times for the same action”. (FF. 3). That is, because actions by web users in
2 http://www.merriam-webster.com/dictionary/relative (last visited on
11/10/2016).
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Application 13/309,572
the database are all made relative to a given number of actions rule to
warrant credit, we find that the stored award credits stand in relation to one
another. (See, note 2, supra).
Appellant argues that, “Churchill describes auction systems that can
use points, rather than money, as currency. Churchill does not disclose a
system for offering advertisements on the Internet.” (Appeal Br. 11).
That argument is not well taken because the Appellant is attacking the
Churchill reference individually when the rejection is based on a
combination of references and the Examiner relies on Goldhaber for
disclosing a system for offering advertisements on the Internet. (Final Act.
3). See In re Keller, 642 F.2d at 426; In re Young, 403 F.2d at 757-58.
Appellant further argues that:
Regarding step (f) of claim 14, the Examiner states... [wjhen
the offer server 139 awards points, the user’s UDB record will be
modified to reflect the transaction. The offer server 139 notifies the
user that his account balance has been increased.” This teaching is
somehow equated with the fact that offering cash or a noncash
equivalent to at least one selected user, is “based at least in part on
said selected pool of account point balances” in claim 14. However,
the disclosure of Churchill quoted above is in reference to an
individual's account, and makes no mention at all of other users, as is
necessary when the step is based on a selected pool (including other
users beyond the individual user) of account point balances.
(Appeal Br. 12).
We disagree with Appellant. We find that the claims do not limit the
term “selected pool of account users” to any specific standard of selection.
Thus, we construe the term to apply to the users whose data was selected to
reside in the RDB 152. (FF. 2). As found supra, (FF. 2, 3), Churchill
discloses applying crediting rules to all users of the database pool.
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Application 13/309,572
CONCLUSIONS OF LAW
We conclude that the Examiner did not err in rejecting:
(1) claims 14, 21, 22, 24, 27-30, 32, and 33 under 35 U.S.C. § 103(a)
as being unpatentable over Goldhaber in view of Churchill.
(2) claim 23 under 35 U.S.C. § 103(a) as being unpatentable over
Goldhaber in view of Churchill, and further in view of Pacella.
(3) claims 25 and 26 under 35 U.S.C. § 103(a) as being unpatentable
over Goldhaber in view of Churchill and further in view of Donahue.
(4) claim 31 under 35 U.S.C. § 103(a) as being unpatentable over
Goldhaber in view of Churchill and further in view of Padgette.
DECISION
The decision of the Examiner to reject claims 14 and 21-33 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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