RetailMeNot, Inc.

Patent Trials and Appeals Board

Feb 23, 2022

2021000975 (P.T.A.B. Feb. 23, 2022)

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. 16/245,021 01/10/2019 David Lemphers 2964P209C2 3984 8791 7590 02/23/2022 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER HOPKINS, DAVID ANDREW ART UNIT PAPER NUMBER 2147 NOTIFICATION DATE DELIVERY MODE 02/23/2022 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): IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID LEMPHERS, CHRISTOPHER COUHAULT, and ALEXANDROS SUVACIOGLU ____________________ Appeal 2021-000975 Application 16/245,021 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and MICHAEL R. ZECHER, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 20, 24-27, 29-36, 38-40, 42, 44-47, and 49-57, all the pending claims. Appeal Br. 5. Claims 1-19, 21-23, 28, 37, 41, 43, and 48 have been cancelled. Appeal Br. 15-20 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies, “[t]he real parties in interest for the appealed application are RetailMeNot, Inc. . . . and Harland Clarke Corp.” Appeal Br. 2. Appeal 2021-000975 Application 16/245,021 2 CLAIMED SUBJECT MATTER Claims 20, 27, 46, and 50-52 are illustrative (emphasis, formatting, and bracketed material added): 20. (not argued) One or more tangible, non-transitory, machine- readable media storing instructions that, when executed by a computer, effectuate operations comprising: [A.] obtaining, with a computer, a first plurality of strings; [B.] identifying, with the computer, a first string-submission interface of a first website, wherein identifying the string-submission interface comprises determining that an input text box in a given webpage of the website is for inserting promotion codes based at least in part on distance, in a document object model of the given webpage, of a first element of the document object model to a second element of the document object model; [C.] causing, with the computer, testing of one or more of the first plurality of strings by causing submission of strings among the first plurality of strings via the first string- submission interface, wherein testing comprises: [i.] determining whether a first response to submission of a first string among the first plurality of strings indicates that the first string is effective to cause a numerical value in a webpage of the first website to decrease, [ii.] controlling a web browser to simulate a user submission of a second string among the first plurality of strings, and [iii.] determining whether a second response to submission of the second string indicates that the second string is effective to cause the numerical value to decrease; and [D.] storing, with the computer, one or more test results of the testing in memory. Appeal 2021-000975 Application 16/245,021 3 27. The one or more media of claim 20, wherein the operations comprise: [E.] obtaining a second plurality of strings; [F.] identifying, a second string-submission interface of a second website; and [G.] causing, testing of one or more of the second plurality of strings by causing submission of strings among the second plurality of strings via a second website-specific application programming interface request. 46 (not argued). A method comprising: [A.] obtaining, with a computer, a first plurality of promotion codes assigned to a validation driver by a monitor; [B.] determining, with the computer, at least in part by the validation driver, how to submit the promotion codes by detecting a first promotion-code-entry webpage of a first merchant website and identifying a first promotion-code interface of the first promotion-code-entry webpage; [C.] testing, with the computer, by the validation driver, the first plurality of promotion codes by [i.] submitting the first plurality of promotion codes via the first promotion-code interface and [ii.] determining whether responses to the submissions indicate respective promotion codes are valid, wherein one or more of the promotion codes are caused to be submitted via a website-specific application programming interface request, and wherein one or more of the first plurality of promotion codes are submitted by controlling a web browser; [D.] storing, with the computer, one or more test results of the testing in memory; Appeal 2021-000975 Application 16/245,021 4 [E.] causing, with the computer, a programming-language object containing validation data indicative of test results to be passed to the monitor; and [F.] causing, with the computer, by the validation driver, testing of a second plurality of promotion codes on a second merchant website, wherein the first merchant website and the second merchant website use different terminology in responses to promotion-code submissions to indicate whether promotion codes are valid. 50. The one or more media of claim 46, wherein: the first promotion-code interface is a non-web programmatic interface exposed by the first merchant website to provide access to a coupon validation function; the website-specific application programming interface request is made via the non-web programmatic interface exposed by the first merchant website; the second merchant website does not expose a non-web programmatic interface to provide access to a coupon validation function; the method comprises[:] [G.] identifying a second promotion-code interface of a second promotion-code-entry webpage of the second merchant website by detecting an input text box in the second promotion-code-entry webpage based at least in part on how close a first element in a document object model of the second promotion-code-entry webpage is to a second element of the document object model; and [H.] testing the second plurality of promotion codes comprises simulating user actions of submitting the second plurality of promotion codes via the input text box. Appeal 2021-000975 Application 16/245,021 5 51. The one or more media of claim 20, wherein identifying the string-submission interface comprises using a recursive process to determine where on the given webpage to enter a promotion code. 52. The one or more media of claim 20, wherein identifying the string-submission interface and causing testing of one or more of the plurality of strings are performed by a driver. REFERENCES2 The Examiner relies on the following references: 2 All citations herein are by reference to the first named inventor/author. 3 Published online on November 18, 2009. Name Reference Date Malmskog US 2003/0069957 A1 Apr. 10, 2003 Landan US 6,564,342 B2 May 13, 2003 Drees US 2006/0276997 A1 Dec. 7, 2006 Barrett US 2007/0300141 A1 Dec. 27, 2007 Channell US 2009/0271368 A1 Oct. 29, 2009 Jellema US 2011/0153401 A1 June 23, 2011 Michael Bolin, End-User Programming for the Web (May 6, 2005) (unpublished M.S. thesis, MIT) (on file with the Department of Electrical Engineering and Computer Science). Kostyantyn Shchekotykhin et al., xCrawl: A High-Recall Crawling Method for Web Mining, 25 Knowl Inf Syst 303-326 (2010).3 Tim Furche et al., OXPath: A Language for Scalable, Memory-efficient Data Extraction from Web Applications, Proceedings of the VLDB Endowment, Vol. 4, no. 11, 1016-1027 (2011). Appeal 2021-000975 Application 16/245,021 6 REJECTIONS4 A. Section 112(a) The Examiner rejects claims 50 and 51 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 6-9. Appellant presents separate arguments for claims 50 and 51. Appeal Br. 5-7. B. Section 112(d) The Examiner rejects claim 52 under 35 U.S.C. § 102(d) failing to limit the subject matter of the parent claim. Final Act. 10-11. Appellant presents arguments as for claim 52. Appeal Br. 8-9. C. Section 103(a) C.1. The Examiner rejects claims 20, 24, 25, 29-33, 35, 38-40, 44, 45, and 51-54 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, and Bolin. Final Act. 12-37. The Examiner rejects claims 46 and 47 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema and Landan. Final Act. 38-43. The Examiner rejects claim 49 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Landan, and Channel. Final Act. 43-44. 4 For simplicity, rejections under (pre-AIA) 35 U.S.C. § 112, first, second, or fourth paragraphs are referred to herein as being under § 112(a), § 112(b), or § 112(d), respectively. Appeal 2021-000975 Application 16/245,021 7 The Examiner rejects claim 26 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, Bolin, and Landan. Final Act. 50-52. The Examiner rejects claim 34 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, Bolin, and Channel. Final Act. 55-56. The Examiner rejects claim 36 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, Bolin, and Drees. Final Act. 56-57. The Examiner rejects claim 42 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, Bolin, and Malmskog. Final Act. 58-60. The Examiner rejects claim 55 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, Bolin, and Furche. Final Act. 60-62. The Examiner rejects claims 56 and 57 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, Bolin, and Shchekotykhin. Final Act. 62-66. Appellant does not present arguments for claims 20, 24-26, 29-36, 38-40, 42, 44-47, 49, and 51-57. “An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection.” 37 C.F.R. § 41.31(c) (2022). Because Appellant does not identify any error in Examiner’s § 103(a) rejections of these claims, we summarily sustain these rejections in this proceeding. Except for our ultimate decision, we do not discuss these rejections of these claims further herein. Appeal 2021-000975 Application 16/245,021 8 C.2. The Examiner rejects claims 27 and 50 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Jellema, Barrett, Bolin, and Landan. Final Act. 44-50, 52-55. Appellant separately argues claim 50. Appeal Br. 10-12. To the extent that Appellant discusses claim 27, Appellant merely references arguments directed to claim 50. Appeal Br. 12 (“Claim 27 recites similar features . . . , and for similar reasons, is also allowable.). OPINION We have reviewed the Examiner’s rejections in light of Appellant’s arguments (Appeal Brief and Reply Brief) that the Examiner has erred. A. Section 112(a) A.1. Claim 50 As to claim 50, the Examiner determines as to the claimed “non-web programmatic interface”: [C]laim 50 is interpreted to be directed to “non-web programmatic interface”, as claimed, as a means for access a merchant website . . . but the instant [S]pecification does not disclose this, or [provide] any other details on how the website would be accessed by a programmatic interface that is “non- web”, as claimed. Final Act. 6. Appellant contends that the Examiner erred in rejecting claim 50 under 35 U.S.C. § 112(a) because [T]he current claim language satisfies the written description requirement. The term “non-web” indicates that the Appeal 2021-000975 Application 16/245,021 9 “programmatic interface” is distinct from web interface, like a text box that is displayed in a user interface of a web page. Examples of a “non-web programmatic interface” include an application program interface (API). The term has written description support. For instance, paragraph 34 of the present application discusses an “instance where the provider publishes a programmatic interface, such as an application programming interface or API.” The last sentence of paragraph 34 contrasts a “programmatic interface” with “non-programmatic interfaces, such as web pages.” Thus, the [S]pecification supports the term “non-web programmatic interface.” Appeal Br. 5-6. The Examiner responds: A “non-web programmatic interface” is an interface which is not web-based, i.e.[,] “non-web”. This is distinct from a web interface. As per the claim, a “non-web” interface to being exposed by a “website”. To clarify - the use of the term “non- web” clearly indicates a scope that the interface has no web- based portions, i.e.[,] that the interface is not over the internet/world wide web. Ans. 67 (emphasis omitted). We are not persuaded by Appellant’s argument. We agree with the Examiner’s reasoning as to why claim 50 fails to comply with the written description requirement. We do not agree with Appellant’s attempt to equate the claimed “non-web programmatic interface”5 and the disclosed “non-programmatic interface” because Appellant does not explain adequately why an artisan would have understood these to be the same 5 The term “non-web” was not found in this Application as originally filed and was introduced subsequently by amendment. Appeal 2021-000975 Application 16/245,021 10 thing.6 For this reason, we sustain the Examiner’s rejection of claim 50 under 35 U.S.C. § 112(a). A.2. Claim 51 As to claim 51, the Examiner determines as to the claimed “recursive process”: The instant [S]pecification, as cited above, recites that the instant invention uses recursion to iterate through the webpage to navigate to the promo-code entry page, NOT for determining “where on the given webpage to enter a promotion code [i.e., text box or the like]”. Final Act. 8 (emphasis omitted). Appellant contends that the Examiner erred in rejecting claim 5 under 35 U.S.C. § 112(a) because [T]he [S]pecification supports “using a recursive process to determine where on the given webpage to enter a promotion code,” because [F]igure 8 is a recursive process of exploring a website, and in at least some recursions, the process of [F]igure 10 is used to determine where on a given webpage to enter a promotion code, in some embodiments. Appeal Br. 7. 6 As we affirm at least one of the Examiner’s rejections of clam 50, we do not further reject claim 50 under 35 U.S.C. § 112(b) as being indefinite (for multiple reasons). First, we do not find “non-web programmatic interface” to be a term of art that has a set meaning; and although we find the Examiner’s interpretation to be reasonable, Appellant indicates that this is not what they regard as the invention. Ex parte Ionescu, 222 USPQ 537, 539 (Bd. Pat. App. & Inter. 1984). Second, the “one or more media” of the preamble of claim 50 has no antecedent basis in parent claim 46. Appeal 2021-000975 Application 16/245,021 11 The Examiner responds: The [A]ppellant’s argument is that because a recursive process is used to navigate to a specific webpage on a website, the [S]pecification supports “using a recursive process to determine where on the given webpage to enter a promotion code”. However, as clarified above, the “Recursive process” is merely used to navigate to “the given webpage”, nothing in the [S]pecification supports that once at “the given webpage” that a “recursive process” is used “to determine where on the given webpage to enter a promotion code”. Ans. 73. We are not persuaded by Appellant’s argument. We agree with the Examiner’s reasoning as to why claim 51 fails to comply with the written description requirement because, in our view, using a recursive process to navigate to a specific webpage does not reasonably convey to an artisan also using a recursive process to determine where on the given webpage to enter a promotion code. For this reason, we sustain the Examiner’s rejection of claim 51 under 35 U.S.C. § 112(a). B. Section 112(d) As to the § 112(d) rejection of claim 52, Appellant argues: The [claim 52] term “driver” does not appear in claim 20, nor does claim 20 specify that the same thing (here a driver) performs both recited operations: identifying the string-submission interface and causing testing of one or more of the plurality of strings. In both regards, claim 52 further limits claim 20. Appeal Br. 9. We are persuaded by Appellant’s argument because the operations performed by the “driver” of claim 52 further limits the operations required Appeal 2021-000975 Application 16/245,021 12 by claim 20. For this reason, we reverse the Examiner’s rejection of claim 52 under 35 U.S.C. § 112(d). C. Section 103(a) C.1. Claim 50 Appellant raises the following argument in contending that the Examiner erred in rejecting claim 50 under 35 U.S.C. § 103(a). [C]laim 50 recites two ways in which the same validation driver validates coupons on two different types of merchant websites: 1) In the first type of merchant website, promotion codes are “submitted via a website-specific application programming interface request” made to “a programmatic interface exposed by the first merchant website . . . .” 2) In the second type of merchant website, the merchant website does not expose an API with a coupon validation function. . . . Thus, to address every feature of claim 50, the cited references must address a validation driver capable of validating promotion codes on both types of merchant websites: those with a “programmatic interface . . . [exposing] a coupon validation function,” and those without. The [Examiner’s obviousness] rejection, however, does not address the former[] and, for at least this reason, the rejection should be withdrawn. Appeal Br. 10-11 (emphasis added; footnote omitted). As to claim 50, we do not reach the merits of the Examiner’s obviousness rejection or the merits of the references at this time. Rather, we reverse pro forma the outstanding rejection of claim 50 under 35 U.S.C. § 103(a) because review of appealed claim 50 requires us to resort to speculation for the reasons discussed in footnote 6 supra. Before a proper review of the prior art rejections can be performed, the subject matter Appeal 2021-000975 Application 16/245,021 13 encompassed by the claims on appeal must be reasonably understood without resort to speculation. Presently, we would be forced to engage in speculation and conjecture to determine the scope of the claimed invention. This we decline to do. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language). C.2. Claim 27 Appellant raises the following argument in contending that the Examiner erred in rejecting claim 27 under 35 U.S.C. § 103(a). Claim 27 recites similar features [to claim 50] (simulating a user submission on the first website and using an API on the second website), and for similar reasons, is also allowable. Appeal Br. 12. We are not persuaded by Appellant’s argument. Contrary to Appellant’s argument, our review of the record does not indicate that claim 27 has “similar features” to claim 50 because we find that the “exposed” and “does not expose” limitations of claim 50 (Appeal Br. 11-12) are not recited in claim 27. Compare App. Br. 16 (Claims App.), with id. at 20-21. CONCLUSION The Examiner does not err in rejecting claims 50 and 51 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. We affirm the Examiner’s rejection of claims 50 and 51 under 35 U.S.C. § 112(a). Appellant has shown the Examiner errs in rejecting claim 52 under 35 U.S.C. § 112(d) as failing to further limit the subject matter of the parent Appeal 2021-000975 Application 16/245,021 14 claim. We reverse the Examiner’s rejection of claim 52 under 35 U.S.C. § 112(d). The Examiner does not err in rejecting claim 27 as being unpatentable under 35 U.S.C. § 103(a). We affirm the Examiner’s rejection of claims 20, 24-27, 29-36, 38- 40, 42, 44-47, 49, and 51-57 as being unpatentable under 35 U.S.C. § 103(a). We reverse pro forma the Examiner’s rejection of claim 50 as being unpatentable under 35 U.S.C. § 103(a). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 50, 51 112(a) Written Description 50, 51 52 112(d) Improper Dependency 52 20, 24, 25, 29- 33, 35, 38-40, 44, 45, 51-54 103(a) Jellema, Barrett, Bolin 20, 24, 25, 29-33, 35, 38-40, 44, 45, 51-54 46, 47 103(a) Jellema, Landan 46, 47 49 103(a) Jellema, Landan, Channel 49 50, 26, 27 103(a) Jellema, Barrett, Bolin, Landan 26, 27 50 34 103(a) Jellema, Barrett, Bolin, Channel 34 Appeal 2021-000975 Application 16/245,021 15 36 103(a) Jellema, Barrett, Bolin, Drees 36 42 103(a) Jellema, Barrett, Bolin, Malmskog 42 55 103(a) Jellema, Barrett, Bolin, Furche 55 56, 57 103(a) Jellema, Barrett, Bolin, Shchekotykhin 56, 57 Overall Outcome 20, 24-27, 29-36, 38-40, 42, 44-47, 49-57 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2022). See 37 C.F.R. § 1.136(a)(1)(iv) (2022). AFFIRMED