Ex Parte Michaelis

Patent Trial and Appeal Board

Mar 9, 2018

12104840 (P.T.A.B. Mar. 9, 2018)

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.
12/104,840 04/17/2008 Oliver MICHAELIS QC071088 4578
12371 7590 03/13/2018
Mnnrv rre.issle.r Olrk & T owe P P /OT TAT POMM EXAMINER
4000 Legato Road, Suite 310
Fairfax, VA 22033
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER MICHAELIS
Appeal 2016-001221
Application 12/104,8401
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—96. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is QUALCOMM
Incorporated. (Appeal Br. 3.)
Appeal 2016-001221
Application 12/104,840
CLAIMED SUBJECT MATTER
Appellant’s claimed “invention relates generally to electronic
coupons, and more specifically to distribution and personalization of
electronic coupons.” (Spec. 12.)
Claims 1, 20, 31, 41, 50, 59, 69, 79, and 88 are the independent claims
on appeal. Claim 1 is illustrative. It recites:
1. A method of operating a server configured to distribute
and personalize electronic coupons (E-Coupons), comprising:
transmitting a generic E-Coupon identifier to a group of
mobile devices, the generic E-Coupon identifier identifying an
E-Coupon type that is not personalized to the group of mobile
devices;
receiving, from a given mobile device in the group of
mobile devices, the generic E-Coupon identifier along with a
request for a redeemable E-Coupon;
creating a personalized redeemable E-Coupon that
corresponds to the identified E-Coupon type based at least in part
on the generic E-Coupon identifier; and
transmitting the personalized redeemable E-Coupon.
REJECTIONS
Claims 1—96 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—96 are rejected under 35 U.S.C. § 112, first paragraph, as
unpatentable for failing to comply with the written description requirement.
Claims 1-6, 13, 15-23, 27, 29, 31-33, 37-39, 41^13, 48, 50-52, 59-
62, 69-71, 73, 79—81, 83, 88, and 93—96 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Liu (US 2008/0154714 Al, pub. June 26, 2008).
Claims 7, 14, 28, 30, 40, 47, 49, 57, 58, 91, and 92 are rejected under
35 U.S.C. § 103(a) as unpatentable in view of Liu and Official Notice.
2
Appeal 2016-001221
Application 12/104,840
Claims 8, 53, 63, 72, and 82 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Liu and Sakamura (US 2004/0158490 Al, pub.
Aug. 12, 2004.)
Claims 10-12, 24, 34, 44^46, 54—56, 89, and 90 are rejected under 35
U.S.C. § 103(a) as unpatentable in view of Liu and Darko Kirovski &
Henrique S. Malvar, Spread-Spectrum Watermarking of Audio Signals,
51 IEEE Transactions on Signal Processing 1020—33 (2003) (hereinafter
“Kirovski”).
Claims 25, 26, 35, and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Liu, Kirovski, and Digital Watermarking Alliance —
Frequently Asked Questions,
https://web.archive.org/web/20061019121150/http://www.digitalwatermarki
ngalliance.org/faqs.asp (last visited Feb. 23, 2018).
Claims 9, 64—67, 74—77, and 84—86 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Liu and Wanninger
(US 2005/0004840 Al, pub. Jan. 6, 2005).
Claims 68, 78, and 87 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Liu, Wanninger, and Main (US 2008/0077484 Al,
pub. Mar. 27, 2008).
ANALYSIS
The §101 rejection
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-step framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
3
Appeal 2016-001221
Application 12/104,840
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that “claim 1 include[s] an abstract idea. Specifically, providing
a coupon ID, personalizing a coupon, and sending it to a user is a method of
organizing human activities and a fundamental economic concept.” (Final
Action 3.) Additionally, the Examiner determines that
the method essentially recites transmitting a generic e-coupon
identifier, receiving a request for an e-coupon, creating a
personalized e-coupon, and transmitting it which is a method of
organizing human activities, a fundamental economic concept,
and an idea of itself. . . . Furthermore, receiving requests for
coupons, personalizing coupons, and transmitting coupons has
been common in the marketplace for decades and is a
fundamental economic concept. Finally, the claim language is
excessively broad and does not articulate any particular or
concrete step.
(Answer 4—5.)
Appellant disagrees and argues “that the independent claims do not
recite ‘providing a coupon ID, personalizing a coupon, and sending it to a
user’” and that “this appears to be the Office’s attempt to paraphrase the
claims so as to make them appear more like an abstract idea.” (Appeal
4
Appeal 2016-001221
Application 12/104,840
Br. 9.) Appellant further argues that in the Answer, the Examiner “asserts a
new alleged abstract idea.” (Reply Br. 2.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates generally to electronic coupons, and more specifically to distribution
and personalization of electronic coupons.” (Spec. 12.) Claim 1 recites
“transmitting a generic E-Coupon identifier,” “receiving ... a request for a
redeemable E-Coupon,” “creating a personalized . . . E-Coupon,” and
“transmitting the . . . E-Coupon.”
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241.
In this case, as in Alice, we need not labor to delimit the precise
contours of the “abstract ideas” category. It is enough to recognize that
there is no meaningful distinction in the level of abstraction between the
concept of “customizing web page content as a function of navigation
5
Appeal 2016-001221
Application 12/104,840
history and information known about the user,” Intellectual Ventures ILLC
v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015), and
transmitting data, receiving a response, and transmitting customized content
(an E-Coupon) as a function of the information received from the user. Both
are squarely within the realm of “abstract ideas” as the Court has used that
term. See Alice, 134 S. Ct. at 2357.
Appellant further argues that the claims are not directed to an abstract
idea because “the claims do not seek to preempt all of the numerous ways
one may create a personalized coupon.” (Appeal Br. 10.) We do not find
this argument persuasive of error.
Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), affd, 134 S. Ct. 2347 (2014). Moreover,
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
6
Appeal 2016-001221
Application 12/104,840
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
In view of the above, we are not persuaded that the Examiner erred in
determining that claim 1 is directed to an abstract idea.
Step two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’—i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72—73).
Appellant argues that the claimed steps are “not ‘well-understood,
routine and conventional’ in the field of the alleged abstract idea.” (Appeal
Br. 11.) Specifically, Appellant argues that the Examiner erred in finding
“that the ‘Applicant is using known technology implemented in known
ways.’” (Appeal Br. 12.) But Appellant does not persuasively argue how
the claimed invention is using technology in a way that is not known. Using
a conventional computer to perform an abstract business practice does not
make the claim patent-eligible. DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014).
The introduction of a computer into the claim does not alter the
analysis at step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if ” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “ ‘to a particular technological environment.’ ”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement]” an abstract idea
7
Appeal 2016-001221
Application 12/104,840
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our §101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not. Claim 1 relates to a method
for transmitting data, receiving data, analyzing/processing data, and
transmitting data.
Taking the claim elements separately, the function performed by the
computer at each step is purely conventional. Transmitting data, receiving
data, and analyzing/processing data are basic computer functions.
Moreover, the Specification discloses that the invention can be implemented
using generic computer components. (See, e.g., Spec. ]ff[ 28—29.) In short,
each step does no more than require a generic computer to perform routine
computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. The claim does not, for example, purport to
improve the functioning of the computer itself. Nor does it effect an
improvement in any other technology or technical field. Instead, the claim
at issue amounts to nothing significantly more than an instruction to
transmit, receive, analyze/process data, and transmit data using a generic
8
Appeal 2016-001221
Application 12/104,840
computer. That is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
Nonetheless, Appellant seeks to analogize the present claims to those
in DDR Holdings. Appellant argues that DDR Holdings “establishes that
claims related to a problem specific to a particular technically [sic] (i.e., the
Internet) is sufficient to render the claims patent-eligible under Part 2 of the
Mayo /Alice framework.” (Appeal Br. 12.) But unlike the claims here, the
claims in DDR Holdings “specify how interactions with the Internet are
manipulated to yield a desired result—a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink.’ '’ DDR Holdings, 773 F.3d at 1258 (emphasis added). In other
words, the invention claimed in DDR Holdings does more than “simply
instruct the practitioner to implement the abstract idea with routine,
conventional activity.” See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014); see also DDR Holdings, 773 F.3d at 1259.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 101. Claims 2—96 are not separately argued and,
therefore, fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The £ 112, first varasravh, rejection
The Examiner finds that “[t]he claims recite the negative limitation
‘an E-Coupon type that is not personalized to the group of mobile devices’”
and that although “Applicant points to paragraph 0061 for support,” the
“Examiner can find no express support for the negative limitation in this
paragraph or elsewhere in the specification.” (Final Action 6.)
9
Appeal 2016-001221
Application 12/104,840
Appellant disagrees and cites to paragraphs 5 and 61 of the
Specification. (Appeal Br. 13.) In relevant part, paragraph 5 discloses that
“[a] generic E-Coupon identifier may be sent to a mobile device to retrieve
consumer and device specific data. Using this data the E-Coupon can be
personalized and distributed to the consumer.” (Spec. 1 5.) Appellant
argues that “[b]y implication, this means that the generic E-Coupon ID was
not itself personalized to the mobile device as ‘consumer and device specific
data’ is used to conduct the personalization after the generic E-Coupon ID is
distributed.” (Appeal Br. 13.)
The written description must “convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of the ‘written
description’ inquiry, whatever is now claimed.'1'’ Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563—64 (Fed. Cir. 1991). In relevant part, claim 1 recites
“transmitting a generic E-Coupon identifier to a group of mobile devices, the
generic E-Coupon identifier identifying an E-Coupon type that is not
personalized to the group of mobile devices.” (Emphasis added.) We note
that the language “the generic E-Coupon identifier identifying an E-Coupon
type that is not personalized to the group of mobile devices,” was added to
the claim by amendment. (See Amendment filed Nov. 5, 2014 at 2.)
The Specification discloses that
[a] generic E-Coupon ID 206 may be a symbol or data that
indicates a particular type of coupon that can be received or an
address to an E-Coupon Manager 212 that the mobile device 210
can contact to receive an E-Coupon, but not a specific coupon
that can be redeemed.
10
Appeal 2016-001221
Application 12/104,840
(Spec. 1 61.) Appellant argues that “[i]n context, the generic E-Coupon ID
does not identity a particular coupon because the ‘generic’ E-Coupon ID has
not yet been personalized.” (Appeal Br. 13.) But, as the Examiner points
out, and we agree, “Appellant seems to be arguing that the ‘E-Coupon type’
is the same as the ‘E-Coupon’ itself.” (Answer 8.)
The Specification discloses that
[a] generic E-Coupon identifier may be sent to a mobile device
to retrieve consumer and device specific data. Using this data the
E-Coupon can be personalized and distributed to the consumer.
Such consumer specific data may include consumer location,
time, consumer behavior, consumer environment, consumer
purchase history, and/or mobile device specifications.
(Spec. 15.) Although, as noted above, Appellant points us to a disclosure in
the Specification regarding personalization of an E-Coupon, Appellant does
not point us to any disclosure in the Specification regarding either
personalizing or not personalizing an E-Coupon type. More particularly,
Appellant does not point us to any disclosure in the Specification of an E-
Coupon identifier that identifies “an E-Coupon type that is not
personalized,” as recited in, e.g., claim 1.
In view of the above, we are not persuaded that the written description
conveys with reasonable clarity that the inventor was in possession of the
claimed invention as of the filing date. Nor are we persuaded that the
Examiner erred in finding that claims 1—96 fail to comply with the written
description requirement of § 112, first paragraph.
11
Appeal 2016-001221
Application 12/104,840
The § 102(e) rejection
Appellant argues that
[w]ith respect to independent claims 1, 20, 31, 41, 50 and 88, the
generic E-Coupon is transmitted ‘to a group of mobile devices’.
This does not occur in Liu because the identified enterprises
provided to the mobile device at 506 are individually targeted to
that specific mobile device by virtue of being tailored to the
goods and/or services that are reported to be of interest to the
mobile device ....
(Appeal Br. 17.)2
As an initial matter, we note that claim 1 recites “transmitting a
generic E-Coupon identifier” and not “transmitting a generic E-Coupon.”
Thus, Appellant’s argument is not commensurate with the scope of the
claim.
Regardless, the Specification does not explicitly provide definitions
for the terms “generic E-Coupon identifier,” “E-Coupon type,” or
“personalized redeemable E-Coupon,” all as recited in claim 1. Appellant
argues
that a reasonable definition of “generic” in context with the
subject application is “not personalized”. It is unclear how one
of ordinary skill in the art upon review of the subject application
could reach a different conclusion. The Office’s hypothetical
scenarios where “[o]ne can come up with situations where an
identifier could be generic but be personalized, depending on
how one interprets “not personalized” in the context of the claim”
stretches credibility....
2 On page 21 of the Appeal Brief, Appellant indicates that these arguments
also apply to independent claims 59 and 69. However, Appellant makes no
mention of independent claim 79. Regardless, we consider these arguments
as also applying to claim 79.
12
Appeal 2016-001221
Application 12/104,840
(Id. at 14.) In other words, Appellant argues that, properly interpreted, a
coupon or coupon identifier cannot be both personalized and generic.
But the Specification discloses that information known to a
communications provider can be used “to enable the delivery of
personalized generic E-Coupons.” (Spec. 149, emphasis added.) Thus, the
Specification refutes Appellant’s proffered interpretation. (See also
Answer 11.)
To construe these terms, we look to the Specification. It discloses that
[a] generic E-Coupon ID 206 may be a symbol or data that
indicates a particular type of coupon that can be received or an
address to an E-Coupon Manager 212 that the mobile device 210
can contact to receive an E-Coupon, but not a specific coupon
that can be redeemed.
(Spec. 161.) The Specification further discloses that
E-Coupons may be personalized based on, for example, a)
location (with high accuracy); b) time; c) consumer purchase
history, d) consumer behavior and interests, and e) mobile device
specification. Each of these criteria are described separately in
the following paragraphs, but may also be combined or
considered as a whole to even more closely personalize coupons
(Id. at 152.)
Liu discloses an “e-coupon provider [that] can . . . notify, or assist in
notifying, a user that he or she is nearby an enterprise that the user has
indicated that they want to shop at, or that sells a good or service the user
has indicated they want to buy.” (Liu 139.) Liu further discloses that
a user-commanded location-based reminder request is sent from
a user’s mobile communication device to the e-coupon provider
(500) .... The provider identifies enterprises that are named in,
or that sell the good or service identified in, the request (504).
However, in this case, the e-coupon provider sends the identities
13
Appeal 2016-001221
Application 12/104,840
and locations of the identified enterprises, along with a list of the
goods and services they sell, to the mobile communication device
(506). The mobile communication device receives this
information (508) and uses the last-ascertained current location
to determine if it is nearby . . . one of the identified enterprises
(510). . . . [WJhenever it is determined that the mobile
communication device is proximate to one of the identified
enterprises, the device generates the aforementioned notice and
informs the user of a nearby enterprise that was named in, or
which sells the good or service identified in, the location-based
reminder request (514). The mobile communication device then
sends an e-coupon request to the e-coupon provider requesting
one or more e-coupons corresponding to the identified
enterprises (516). The e-coupon provider receives the e-coupon
request (518) and generates e-coupon(s) associated with the
identified enterprises (520), which could be for the desired good
or service. The e-coupon(s) are then sent to the mobile
communication device (522) ....
(Id. 141; see also Answer 14—17.)
With regard to the claim limitation “transmitting a generic E-Coupon
identifier to a group of mobile devices, the generic E-Coupon identifier
identifying an E-Coupon type that is not personalized to the group of mobile
devices,” the Examiner finds that “there is no claim language indicating that
the identifier has to be disseminated to every mobile device simultaneously.”
(Answer 16.) The Examiner also finds that Liu discloses that “whenever a
mobile device that indicated electronics [as a good the user has indicated
they want to buy] goes near the enterprise, that mobile device will receive
the identifier, (see Liu, paragraphs 0039-0041).” (Id.) The Examiner
further finds that “any mobile device that is part of the group (devices that
indicated electronics) will all receive the same enterprise identifier from that
enterprise when the device goes within the enterprise’s proximity.” (Id.)
Additionally, “while the enterprise identifier may be unique to that
14
Appeal 2016-001221
Application 12/104,840
enterprise, the identifier is still generic because the same identifier for that
enterprise is transmitted and used by all of the mobile devices in that group.”
(Id.)
Appellant argues that “[i]t is unclear how a list of enterprises that is
specifically tailored to the goods and/or services that are reported to be of
interest to the mobile device in the request of 500-502 of Liu can be
interpreted as generic.” (Reply Br. 11.) “The list of enterprises is
personalized in Liu because it is customized and filtered based on user-
specific data.” (Id. at 12.)
We find that the Examiner has the better position. Appellant does not
persuasively argue why sending the same information to different devices in
a group, e.g., a group of devices that have indicated “electronics” as a good
to buy, is not transmitting a generic identifier to the devices. Additionally,
as discussed above, a coupon ID may be both generic and personalized, e.g.,
personalized by location near the enterprise.
Appellant also argues that “Liu’s teachings can certainly be used with
multiple devices, but each of these multiple devices would need to send their
own ‘user-commanded location-based reminder request’ at 500 of FIG. 5,
and each of these multiple devices would receive their own personalized list
of enterprises at 508 of FIG. 5.” (Id.) Therefore, Appellant argues, “there is
no basis for a single execution of FIG. 5 to be expanded to group
implementations.” (Id.) “The fact that the same information is sent to
different users does not necessarily make the information non-personalized.”
(Id. at 13.)
Again, we find that the Examiner has the better position. Regardless
of whether the information is “non-personalized,” the claim does not recite a
15
Appeal 2016-001221
Application 12/104,840
“non-personalized E-Coupon identifier,” rather, the claim recites “a generic
E-Coupon identifier.” For the reasons discussed above, we do not find
Appellant’s argument persuasive of error. Additionally, we agree with the
Examiner that the claim language does not recite disseminating to every
mobile device simultaneously.
Appellant further argues that “the enterprise identifier in Liu merely
identifies the enterprise, and does not identify ‘an E-Coupon type’ that is
used to create ‘a personalized redeemable E-Coupon that corresponds to the
identified E-Coupon type’ as recited in [the] independent claim[s].” (Id.
at 14.) Specifically, Appellant argues that “the mere enterprise identifiers do
not specify any type of ‘E-Coupon type’.” (Id.)
We are not persuaded of error. The Examiner finds,
[f]or instance, if the enterprise is Best Buy, then the enterprise
identifier is the identifier for Best Buy. The mobile device will
receive the enterprise identifier for enterprises that sell a
particular good or service. For instance, a mobile device will
receive the identifier for Best Buy if the device indicated
electronics.
(Answer 17; see also Final Action 9.) Appellant does not proffer a claim
construction for “E-Coupon type.” Nor does the Specification disclose an
explicit definition for the term. However, as discussed above, the
Specification discloses that “[a] generic E-Coupon ID 206 may be a symbol
or data that indicates a particular type of coupon that can be received . . ., but
not a specific coupon that can be redeemed.” (Spec. 161.) Applying a
broadest reasonable interpretation to the term “E-Coupon type,” we
determine that a coupon identifier for an enterprise, e.g., identifying Best
Buy, identifies an “E-Coupon type,” that is, a coupon for Best Buy is a type
16
Appeal 2016-001221
Application 12/104,840
of coupon. Therefore, we are not persuaded that Liu does not disclose
identifying an E-Coupon type.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 102(e). Independent claims 20, 31, 41, 50, 59, 69,
79, and 88 are not separately argued and fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv). With regard to dependent claims, Appellant argues that
“these claims recite additional subject matter, which is not believed
suggested by the cited art.” (Appeal Br. 21.) We do not find this argument
persuasive of error. For the reasons discussed above, we are not persuaded
that the Examiner erred in rejecting dependent claims 2—6, 13, 15—19, 21—
23, 27, 29, 32, 33, 37-39, 42, 43, 48, 51, 52, 60-62, 70, 71, 73, 80, 81, 83,
and 93—96.
The rejections under § 103(a)
With regard to the rejections under § 103(a), Appellant argues that the
art cited in addition to Liu
do[es] not cure the deficiencies of Liu as discussed above with
respect to independent claims 1, 20, 41, 50, 59, 69 and 88. As
such, dependent claims 7-12, 14, 24-26, 28, 30, 34-36, 40, 44-
47, 49, 53-58, 63-67, 72, 74-77, 82, 84-86 and 89-91 are
likewise allowable by virtue of their dependence upon one of
the above-noted independent claims.
(Appeal Br. 21.)3
For the reasons discussed above, we do not find this argument
persuasive of error.
3 Appellant makes no mention of dependent claims 68, 78, 87, and 92.
Regardless, we consider these arguments as also applying to these claims.
17
Appeal 2016-001221
Application 12/104,840
DECISION
The Examiner’s rejection of claims 1—96 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1, 20, 31, 41, 50, 59, 69, 79, and
88 under 35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner’s rejection of claims 1—6, 13, 15—23, 27, 29, 31—33,
37-39, 41—43, 48, 50-52, 59-62, 69-71, 73, 79-81, 83, 88, and 93-96 under
35 U.S.C. § 102(e) is affirmed.
The Examiner’s rejection of claims 7—12, 14, 24—26, 28, 30, 34—36,
40, 4AA7, 49, 53-58, 63-68, 72, 74—78, 82, 8^U87, and 89-92 under
35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
18