BELL AND HOWELL, LLC

Patent Trials and Appeals BoardOct 26, 2020

2019004046 (P.T.A.B. Oct. 26, 2020)

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. 14/291,132 05/30/2014 Michael MASELLI 1174/470/2 9116 25297 7590 10/26/2020 Jenkins, Wilson, Taylor & Hunt, P.A. 3015 Carrington Mill Boulevard Suite 550 Morrisville, NC 27560 EXAMINER GOFMAN, ALEX N ART UNIT PAPER NUMBER 2163 NOTIFICATION DATE DELIVERY MODE 10/26/2020 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): datcheson@jwth.com usptomail@jwth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte MICHAEL MASELLI1 _____________ Appeal 2019-004046 Application 14/291,132 Technology Center 2100 ______________ Before ERIC S. FRAHM, JOHN A. EVANS, and STEPHEN E. BELISLE, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of Claims 1–11 and 13–23. Appeal Br. 1. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We REVERSE. INVENTION The invention is directed to a method and apparatus for creating and managing a directory of individuals and businesses. See Abstract. Claims 1, 1 We use the word “Appellant” to refer to “applicants” as defined in 37 C.F.R. § 1.42(a). The Appeal Brief identifies Bell and Howell, LLC, of Durham, North Carolina, as the real party in interest. Appeal Br. 2. Appeal 2019-004046 Application 14/291,132 2 7, 13, 17, 20, and 23 are independent. Illustrative claim 1 is reproduced below. 1. A method for electronically recording data of a recipient by an information delivery service to format and deliver communications to the recipient, the method comprising: receiving and storing recipient data in a database by way of a programmed computer, wherein the recipient data includes different types of enterprise account numbers of the recipient; electronically enrolling the recipient data into an information delivery service database; receiving a recipient selection of enterprises about which the information delivery service is authorized to send the communications to the recipient; identifying preferred delivery channels for delivery of the communications; and associating the recipient data with a mobile phone number of the recipient, such that a mobile phone associated with the mobile phone number permits access to location data of the recipient, wherein communications content is varied based on a distance between one of the enterprises and the recipient, wherein the mobile phone returns the location data on a real-time basis to the information delivery service for calculating the distance between the enterprise and the recipient, and wherein each communication is selected from one or more of a coupon delivered by way of a mobile phone text message including a barcode to be scanned at the enterprise, a reward card, physical mail to the recipient, a confirmation invoice by way of an email, an order status alert, and an automated mobile phone call or text. Appeal 2019-004046 Application 14/291,132 3 REFERENCES2 Name Reference Date Austin US 6,701,315 B1 Mar. 2, 20043 Adamczyk US 2008/0162637 A1 July 3, 20084 Schorr US 2008/0172306 A1 July 17, 20085 Kumar US 2010/0041368 A1 Feb. 18, 20106 Chaikin US 2011/0246284 A1 Oct. 6, 20117 Laffoon US 2013/0179244 A1 July 11, 20138 Tiernan US 2014/0143354 A1 May 22, 20149 Wade US 2014/0278940 A1 Sep. 18, 201410 REJECTIONS11 AT ISSUE12 1. Claims 1 and 4 stand rejected under 35 U.S.C. § 112(b) or § 112, second paragraph, as indefinite.13 Final Act. 2–3. 2. Claims 1–5 stand rejected under 35 U.S.C. § 103 as obvious over Adamczyk, Schorr, and Chaikin. Final Act. 5–9. 2 All citations herein to the references are by reference to the first named inventor/author only. 3 Filed Jun. 20, 2000. 4 Filed Oct. 31, 2007. 5 Filed Jan. 16, 2008. 6 Filed Aug. 12, 2008. 7 Filed Mar. 30, 2011. 8 Filed September 21, 2012. 9 Filed March 15, 2013. 10 Priority Provisional Application 61/794,075, filed March 15, 2013. 11 The Examiner has withdrawn the rejection of Claims 1–11 and 13–23 under 35 U.S.C. § 101. Ans. 3. 12 Throughout this Decision, we refer to the Appeal Brief filed October 26, 2018 (“Appeal Br.”); the Reply Brief filed April 24, 2019 (“Reply Br.”); the Final Office Action mailed April 26, 2018 (“Final Act.”); the Examiner’s Answer mailed February 25, 2019 (“Ans.”); and the Specification filed May 30, 2014 (“Spec.”). 13 The Examiner does not specify whether the examination was taken under pre-, or post-, AIA 35 U.S.C. Appeal 2019-004046 Application 14/291,132 4 3. Claim 6 stands rejected under 35 U.S.C. § 103 as obvious over Adamczyk, Schorr, Chaikin, and Kumar. Final Act. 10–11. 4. Claims 7, 11, and 17–19 stand rejected under 35 U.S.C. § 103 as obvious over Adamczyk and Chaikin. Final Act. 11–17. 5. Claim 8 stands rejected under 35 U.S.C. § 103 as obvious over Adamczyk, Austin, and Chaikin. Final Act. 18. 6. Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as obvious over Adamczyk, Chaikin, and Wade. Final Act. 18–21. 7. Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as obvious over Wade and Chaikin. Final Act. 21–23. 8. Claim 15 stands rejected under 35 U.S.C. § 103 as obvious over Wade, Chaikin, and Kumar. Final Act. 24. 9. Claim 16 stands rejected under 35 U.S.C. § 103 as obvious over Wade, Chaikin, Kumar, and Austin. Final Act. 25. 10. Claim 20 stands rejected under 35 U.S.C. § 103 as obvious over Laffoon and Chaikin. Final Act. 26–28. 11. Claim 22 stands rejected under 35 U.S.C. § 103 as obvious over Tiernan, Schorr, and Chaikin. Final Act. 28–30. 12. Claims 21 and 23 stand rejected under 35 U.S.C. § 103 as obvious over Schorr, Adamczyk, and Chaikin. Final Act. 31–37. Appeal 2019-004046 Application 14/291,132 5 ANALYSIS We have reviewed the rejections of Claims 1–11 and 13–23 in light of Appellant’s arguments that the Examiner erred. Appellant’s arguments have persuaded us the Examiner erred. CLAIMS 1 AND 4: INDEFINITENESS After Final Rejection, Appellant amended Claims 1 and 4 in a manner consistent with the Examiner’s findings. See Amendment filed October 26, 2018. The Examiner entered the amendment. See Advisory Action (mailed November 5, 2018). Appellant does not include the rejection under 35 U.S.C. § 112 among the grounds to be reviewed on appeal. See Appeal Br. 9. The Answer does not repeat or discuss the 35 U.S.C. § 112 rejection. We do not reach, and consider withdrawn, the rejection of Claims 1 and 4 under 35 U.S.C. § 112. Any rejection not repeated and discussed in the answer may be taken by the Board as having been withdrawn. Ex Parte Emm, 118 USPQ 180 (Bd. App. 1957). CLAIMS 1–5: OBVIOUSNESS OVER ADAMCZYK, SCHORR, AND CHAIKIN A recipient selection of enterprises. Claim 1 recites, inter alia, “receiving a recipient selection of enterprises about which the information delivery service is authorized to send the communications to the recipient.” The Examiner finds Adamczyk teaches this limitation. Final Act. 6 (citing Adamczyk, ¶ 21 (“[R]eceiving at the notification service a message from one of the authorized services for delivery to one of the recipients.”)). Appellant contends the cited passage of Adamczyk fails to teach receiving “a recipient selection of enterprises,” which inherently requires the recipient to make a selection regarding from which enterprises the Appeal 2019-004046 Application 14/291,132 6 information delivery service is authorized to send communications to the recipient. Appeal Br. 14. Appellant argues that the term “authorized service,” as described in Adamczyk, is not an enterprise selected by the recipient, but instead “include[s] at least one of the plurality of applications and/or a subscriber device registered with the IMS.” Id. (quoting Adamczyk ¶ 25). The Examiner finds Adamczyk discloses “receiving at the notification service a message from one of the authorized services for delivery to one of the recipients, retrieving profile and preference data [from] a Home Subscriber Server (HSS) for the one of the recipients.” Ans. 3 (quoting Adamczyk, ¶ 21). The Examiner interprets this passage to mean subscription information is retrieved from a user profile. Id. The Examiner further finds Adamczyk discloses the subscription service allows “users to subscribe and manage their subscriptions to various services.” Id. at 4 (emphasis omitted). The subscription service may act as a clearinghouse to establish subscriptions.” Ans. 4 (quoting Adamczyk, ¶ 115). The Examiner interprets this passage to mean a user authorizes delivery of information by subscribing to a particular service. Id. The Examiner finds the disputed limitation is taught in paragraph 21 of Adamczyk. Final Act. 6. Appellant contends the cited passage of Adamczyk refers to an “authorized service.” Reply Br. 2. Appellant argues the term “authorized service” is not an enterprise selected by the recipient, but instead “include[s] at least one of the plurality of applications and/or a subscriber device registered with the IMS.” Id. (quoting Adamczyk, ¶ 25). Appellant argues the Examiner’s citation to Paragraph 115 of Adamczyk is Appeal 2019-004046 Application 14/291,132 7 irrelevant to define the term “authorized service” because that term is not recited in Paragraph 115. Id. We agree with Appellant. Adamczyk discloses: 6. Subscription Service Subscription service may allow users to subscribe and manage their subscriptions to various services. The subscription service may act as a clearinghouse to establish subscriptions, validate billing/credit information, send subscription notices, and integrate with a billing service to establish the appropriate information base to generate usage records. Adamczyk, ¶¶ 115–116. We do not find that an “authorized service,” i.e., “at least one of the plurality of applications and/or a subscriber device registered with the IMS,” as taught by Adamczyk, is “an enterprise selected by the recipient,” as claimed. Reply Br. 2. In view of the forgoing, we decline to sustain the rejection of Claims 1–5. Appellant contends independent Claims 7 and 17 contain commensurate recitations. Appeal Br. 14. The Answer does not separately discuss independent Claim 7. See Ans. 3–4. With respect to independent Claim 17, the Answer does not respond to Appellant’s foregoing argument. See Ans. 7–8. In view of the forgoing, we decline to sustain the rejection of independent Claims 7 and 17, and Claims 8–11, 18, and 19, which depend therefrom. Appeal 2019-004046 Application 14/291,132 8 Communications content is varied based on a distance. Independent Claim 1 recites, inter alia, “wherein communications content is varied based on a distance between one of the enterprises and the recipient.” The Examiner finds that this limitation is taught by Chaikin. Final Act. 7. The Examiner finds Chaikin teaches the mobile phone returns the location data on a real-time basis to the information delivery service for calculating the distance between the enterprise and the recipient and that the position of the mobile device is determined to provide incentives when it is “located nearby” particular incentives. Id. (citing Chaikin, ¶¶ 15, 111, 172, and 173). Appellant contends Claim 1 requires the content of the communication is varied as a function of distance, whereas the Examiner finds Chaikin teaches the binary choice of whether or not a communication is sent depends on distance. Appeal Br. 14. The Examiner finds Chaikin discloses “the incentive’s offering location is compared against the location of existing mobile device users. Those users and their mobile wallets located nearby are loaded automatically.” Ans. 4 (citing Chaikin, ¶ 173). The Examiner finds “[c]learly, the content, such as the incentives are based on a distance between where content is being offered and the location of the user.” Id. Appellant contends Chaikin discloses a binary choice to send, or not, based on distance, but not whether the content is varied. Reply Br. 3. Chaikin discloses: When a new mobile device user or a new advertiser is loaded into the system, incentives may be automatically preloaded to the new or existing mobile device users’ mobile wallets. In the Appeal 2019-004046 Application 14/291,132 9 example of a new mobile device user signing-up, it is known what location is considered their home position. Associated with that position are latitude and longitude coordinates, which are compared against existing incentives being offered near those location coordinates. Those incentives nearby are loaded automatically into their new mobile wallet. In the example of a new advertiser or new incentive being offered, the incentive’s offering location is compared against the location of existing mobile device users. Those users and their mobile wallets located nearby are loaded automatically with the new incentive being offered. Chaikin, ¶ 173 (citied by the Examiner (Ans. 4)). We find Chaikin discloses where a mobile device is located nearby, incentives are loaded. But we find no disclosure that the content or type of incentive is varied. We find the prior art fails to teach the disputed limitation. Appellant contends independent Claims 7, 13, 17, and 20–23 contain commensurate limitations. Appeal Br. 14. The Examine does not make separate findings for these independent claims. See Ans. 4–8. DECISION In view of the foregoing, we decline to sustain the rejection of independent Claims 1, 7, 13, 17, and 20–23 and claims dependent therefrom. Appeal 2019-004046 Application 14/291,132 10 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–5 103 Adamczyk, Schorr, Chaikin 1–5 6 103 Adamczyk, Schorr, Chaikin 6 7, 11, 17– 19 103 Adamczyk, Chaikin 7, 11, 17– 19 8 103 Adamczyk, Austin, Chaikin 8 9, 10 103 Adamczyk, Chaikin, Wade 9, 10 13, 14 103 Wade and Chaikin 13, 14 15 103 Wade, Chaikin, Kumar 15 16 103 Wade, Chaikin, Kumar, Austin 16 20 103 Laffoon, Chaikin 20 22 103 Tiernan, Schorr, Chaikin 22 21, 23 103 Schorr, Adamczyk, Chaikin 21, 23 Overall Outcome 1–11, 13– 23 REVERSED