Ex Parte THOMAS et al

Patent Trial and Appeal Board

Nov 16, 2018

13072534 (P.T.A.B. Nov. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/072,534 03/25/2011
30652 7590 11/16/2018
CONLEY ROSE, P.C.
5601 GRANITE PARKWAY, SUITE500
PLANO, TX 75024
FIRST NAMED INVENTOR
David Edward THOMAS
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.
4189-03903 6191
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
11/16/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID EDWARD THOMAS, JONATHAN G. QUINN,
MICHAEL ROBERT MINAS!, MICHELLE MARIAN,
MIR MOHAMMAD AAMIR, and TAMARA RUTH PATTISON
Appeal2017-007426
Application 13/072,534 1
Technology Center 3600
Before ERIC S. FRAHM, BETH Z. SHAW, and NORMAN H. BEAMER,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 5-8, 10, 12-15, 17, and 19-27. Claims 2, 4, 9, 11, 16, and 18
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, Safeway, Inc. is the real party in interest (App.
Br. 4). This appeal is related to (1) U.S. Patent Application No. 13/072,547
and Appeal No. 2017-006045; and (2) U.S. Patent Application No.
13/072,556, which is Appeal No. 2017-006049, which have the same
inventive entity and assignee (Safeway, Inc.) (App. Br. 5).
Appeal2017-007426
Application 13/072,534
Exemplary Claims
The independent claims pertain to ( 1) an individualized discount and
reward server of a retailer ( claim 1 ); (2) an individualized discount and
reward system of a retailer ( claim 8); and (3) a non-transitory computer
readable medium executing instructions on a processor of the individualized
discount and reward server of the retailer ( claim 15), each to cause the server
to provide customized offers to customers at a point of sale device when
purchasing items in response to receiving purchase notifications at the point
of sale device. Exemplary independent claim 1 and dependent claim 25
under appeal, with emphasis and bracketed lettering added, read as follows:
1. An individualized discount and reward server of a
retailer comprising: a processor and instructions stored on a
non-transitory computer readable medium which, when
processed by the processor, causes the individualized discount
and reward server to:
allocate at least one customized offer to a retailer account
using at least a purchase history associated with a customer, the
at least one customized offer including a loyalty adjustment
changing a general market price point of a retail product to a
purchase price at or below a competitor price offered for a
competing product by a competitor of the retailer, the
competitor located within the geographic location specified in
the at least one retailer account, wherein the loyalty adjustment
is based on at least the purchase history;
receive a purchase notification from a point of sale
device, the purchase notification including the retailer account
associated with the customer;
upon reception of the purchase notification from the
point of sale device,
i) divert the purchase notification to a second
server which is operated by the retailer and separate from the
individualized discount and reward server, and
ii) distribute one or more functions to the second
server to prevent the individualized discount and reward
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Application 13/072,534
server from being slowed down, the one or more
functions distributed to the second server including:
instruct the point of sale device to display
the at least one customized offer and an option for selection of
the at least one customized offer while the customer is
purchasing an item;
receive a customer input indicating selection
of the at least one customized offer from the point of sale
device; and
update, upon reception of the customer input
indicating selection of the at least one customized offer, the
retailer account associated with the customer to indicate
selection of the at least one customized offer.
25. The individualized discount and reward server
according to claim 1, wherein the instructions processed by the
processor further cause the individualized discount and reward
server to:
send to a computer system of a consumer packaged good
partner, via a network, [A] information that a customer is only
willing to buy the retail product at a reduced price: and
after the computer system of the consumer packaged
good partner receives the information, receive from the
computer system of the consumer packaged good partner
an agreement to provide funding for the at least one customized
offer for the retail product;
wherein the retail product is the consumer packaged good
partner's product, wherein allocate at least one customized offer
to the retailer account is based on the agreement.
The Examiner's Rejections
(1) The Examiner rejected claims 1, 6-8, 13-15, 20, and 21 as being
unpatentable under 35 U.S.C. § I03(a) over the combination of Fujita (US
2006/0277103 Al; published Dec. 7, 2006), Cohagan (US 2004/0243468
Al; published Dec. 2, 2004), Ruckart (US 2006/0085270 Al; published Apr.
20, 2006), Stack (US 6,076,070; issued June 13, 2000), Moss (US
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Application 13/072,534
2005/0159974 Al; published July 21, 2005), and Nix (US 2008/0040261
Al; published Feb. 14, 2008). Final Act. 3-17.
(2) The Examiner rejected claims 5, 12, and 19 as being unpatentable
under 35 U.S.C. § I03(a) over the combination of Fujita, Cohagan, Ruckart,
Stack, Moss, Nix, and Official Notice that price changes and counter offers
were well-known in the art at the time of Appellants' claimed invention
("Official Notice"). Final Act. 17-19.
(3) The Examiner rejected claims 3, 10, and 17 as being unpatentable
under 35 U.S.C. § I03(a) over the combination of Fujita, Cohagan, Ruckart,
Stack, Moss, Nix, and Laor (WO 2001/098998 Al; published Dec. 27,
2001). Final Act. 19-21.
( 4) The Examiner rejected claims 22-24 as being unpatentable under
35 U.S.C. § I03(a) over the combination of Fujita, Cohagan, Ruckart, Stack,
Moss, Nix, Official Notice, and Laor. Final Act. 21-23.
(5) The Examiner rejected claims 25-27 as being unpatentable under
35 U.S.C. § I03(a) over the combination of Fujita, Cohagan, Ruckart, Stack,
Moss, Nix, and Sullivan (US 2001/0018665 Al; published Aug. 30, 2001).
Final Act. 24--28.
Issues on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 12-24)
and the Reply Brief (Reply Br. 1---6), the following issues are presented on
appeal:
(1) Have Appellants shown the Examiner erred in determining that the
base combination of Fujita, Cohagan, Ruckart, Stack, Moss, and Nix teaches
or suggests the servers, point of sale device, processors, and database for
providing customized offers to customers at a point of sale device when
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purchasing items in response to receiving purchase notifications at the point
of sale device, as recited in independent claim 1, as well as the
commensurate limitations recited in each of independent claims 8 and 15?
(2) Have Appellants shown the Examiner erred in determining that the
"information that a customer is only willing to buy the retail product at a
reduced price" (see supra claim 1, limitation [A]) recited in claims 25-27 is
non-functional descriptive material that is not to be given any patentable
weight; and as a result erred in determining that the combination of applied
references teaches or suggests limitation [A] as set forth in each of claims
25-27?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions in the Appeal Brief (App. Br. 12--44) and the Reply Brief (Reply
Br. 3-17) that the Examiner has erred.
As to claims 25-27, we agree with Appellants' contentions (App. Br.
24--3 8) that the Examiner erred in determining that the "information that a
customer is only willing to buy the retail product at a reduced price" (see
supra claim 1, limitation [A]) recited in claims 25-27 is non-functional
descriptive material that is not to be given any patentable weight; and as a
result erred in determining that the combination of applied references
teaches or suggests limitation [A] as set forth in each of claims 25-2 7.
Our reviewing court has the following to say about printed matter:
"[O]nce it is determined that the limitation is directed to printed matter, one
must then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is 'no' is the printed
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matter owed no patentable weight." In re DiStefano, III, 808 F.3d 845, 851
(Fed. Cir. 2015). As our reviewing court has held, printed matter may serve
to distinguish an invention from the prior art only if there is a functional
relationship between the printed matter and its substrate. See AstraZeneca
LP v. Apotex, Inc., 633 F.3d 1042, 1064---65 (Fed. Cir. 2010); King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (the relevant
inquiry here is whether the additional instructional limitation has a "new and
unobvious functional relationship" with the method, that is, whether the
limitation in no way depends on the method, and the method does not
depend on the limitation); see also Ex parte Nehls, 88 USPQ2d 1883, 1889
(BP AI 2008) (precedential) (informational content of the data thus
represents non-functional descriptive material, which "does not lend
patentability to an otherwise unpatentable computer-implemented product or
process."); Exparte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (Fed. Cir. Appeal No. 2006-1003), aff'd, (Rule 36) (June 12,
2006) ("wellness-related" data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method). See also
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Lowry, 32 F.3d
1579, 1582-84 (Fed. Cir. 1994) (the Examiner need not give patentable
weight to descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate).
In this light, in the instant case concerning the information limitation
recited in claims 25-27, even if we agree with the Examiner that the recited
information is printed matter, however, we agree with Appellants (see App.
Br. 31-34) that the recited information acts as a trigger, therefore is
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functional in nature and related to the retailer's server, and cannot be read
out of the claim.
Specifically, the recited "'information' is functional with respect to
the retailer's server because the 'information' functions to trigger when the
retailer's server sends the communication to the [ consumer packaged good]
CPG partner's computer system and when the retailer's server receives a
communication from the CPG partner's computer system" (App. Br. 32).
The Examiner's reasoning (see Final Act. 36-37; Ans. 13-16, 19-21), that
the information is not used for processing, analysis, or other operations set
forth in claims 25-27, but only as a matter of timing, is faulty. As seen from
the clause following limitation [A] recited in claim 25, and as similarly
recited in remaining dependent claims 26 and 27, the information that a
customer is only willing to buy the selected retail product at a reduced price
acts as a trigger to receive (i.e., thus send) "an agreement to provide funding
for the at least one customized offer for the [ selected] retail product" from
"the computer system of the consumer packaged good partner."
As a result, we are constrained by the record before us not to sustain
the Examiner's various obviousness rejections of claims 25-27 which all
contain the disputed feature of "information that a customer is only willing
to buy the retail product at a reduced price."
However, as to claims 1, 8, and 15, we disagree with Appellants'
arguments relied on with respect to those claims (see App. Br. 16-24, 41-
43; Reply Br. 3---6). We concur with the conclusions reached by the
Examiner, and we adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 3-15),
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
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response to the Appellants' Appeal Brief (Ans. 3-12). As a result, we
sustain the Examiner's rejections of claims 1, 8, and 15, as well as claims 3,
5-7, 10, 12-14, 17, and 19-24 depending respectively therefrom.
CONCLUSIONS
(1) Appellants have not shown the Examiner erred in determining that
the base combination of Fujita, Cohagan, Ruckart, Stack, Moss, and Nix
teaches or suggests the servers, point of sale device, processors, and
database for providing customized offers to customers at a point of sale
device when purchasing items in response to receiving purchase
notifications at the point of sale device, as recited in independent claim 1, as
well as the commensurate limitations recited in each of independent claims 8
and 15.
(2) Appellants have shown the Examiner erred in determining that the
"information that a customer is only willing to buy the retail product at a
reduced price" (see supra claim 1, limitation [A]) recited in claims 25-27 is
non-functional descriptive material that is not to be given any patentable
weight; and as a result erred in determining that the combination of applied
references teaches or suggests limitation [A] as set forth in each of claims
25-27.
DECISION
(1) The Examiner's rejections of claims 1, 3, 5-8, 10, 12-15, 17, and
19-24 under 35 U.S.C. § 103(a) over the base combination of Fujita,
Cohagan, Ruckart, Stack, Moss, and Nix are affirmed.
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(2) The Examiner's rejection of claims 25-27 under
35 U.S.C. § I03(a) over Fujita, Cohagan, Ruckart, Stack, Moss, Nix, and
Sullivan is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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