Ex Parte Sterling et al

Patent Trial and Appeal Board

Mar 23, 2016

12407699 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/407,699 03/19/2009
20350 7590 03/25/2016
KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
Jacob M. Sterling
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.
87188-767147 7829
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB M. STERLING and ANDREW T. HURT
Appeal2013-002319 1
Application 12/407 ,6992
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We REVERSE.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
June 5, 2012) and Reply Brief ("Reply Br.," filed Nov. 26, 2012), and the
Examiner's Final Office Action ("Final Act.," mailed Dec. 6, 2011) and
Answer ("Ans.," mailed Sept. 24, 2012).
2 According to Appellants, the real party in interest is First Data
Corporation (Appeal Br. 3).
Appeal2013-002319
Application 12/407,699
Introduction
Appellants' disclosure relates to a system and method for "content
delivery to point of sale devices," and specifically, "to advertising content
deliver [sic] to point of sale devices across public networks based on
transaction characteristics" (Spec. i-f 2).
Claims 1, 10, and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A system for delivering content to a user, wherein the
system comprises:
a payment processing system that is configured to:
receive transaction information from at least one
point of sale device over a network;
determine advertising content based at least in part
on the transaction information, wherein the advertising
content is determined by searching for whether a coupon
or discount obtained from a previous transaction by the
user is stored after being accepted by the user, and when
such a previously obtained coupon or discount is found,
modifying the transaction according to the coupon or
discount;
transmitting the modified transaction to the point
of sale device;
wherein when no previously obtained coupon or
discount is found, determining a discount or coupon
based on the transaction information; and
transmitting the determined discount or coupon to
the point of sale device.
(Appeal Br., Claims App.)
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Appeal2013-002319
Application 12/407,699
Rejection on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejection:
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carlson (US 2008/0154727 Al, pub. June 26,
2008), Kanevsky (US 6,334, 109 B 1, iss. Dec. 25, 2001 ), and Besecker
(US 2009/0026255 Al, pub. Jan. 29, 2009).
ANALYSIS
Independent claim 1
Appellants argue that the prior art relied on by the Examiner fails to
disclose storing a coupon or discount so that during a subsequent transaction
a search may be performed to determine whether the previously accepted
coupon or discount may be applied to the subsequent transaction, i.e.,
"determine advertising content based at least in part on the transaction
information, wherein the advertising content is determined by searching for
whether a coupon or discount obtained from a previous transaction by the
user is stored after being accepted by the user" (Appeal Br. 9-10; Reply Br.
2). Appellants assert that Besecker discloses the ability to print out a coupon
and then provide this at a point of sale or electronically send the information
to a point of sale but does not disclose searching (Appeal Br. 10; Reply Br.
3). We are persuaded by Appellants' argument.
The Examiner relies on Besecker (i-fi-f 150-152, 165) for this
limitation, stating that Besecker discloses that a coupon can be stored and
applied to a later transaction (Ans. 9-10). Paragraphs 150-152 of Besecker
and paragraph 165 of Besecker are disclosed in Besecker as two separate
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Appeal2013-002319
Application 12/407,699
embodiments. Although Besecker (ii 165) describes storing purchase
records for later analysis, this analysis is done within the same transaction or
time period. It is unclear, at best, that the purchase records are stored for a
subsequent transaction. To the extent that the Examiner relies on paragraphs
150-152 for the teaching that a coupon can be used for a subsequent
transaction, Besecker describes that the consumer himself or herself presents
the coupon at a later transaction, rather than having the data from the
previous transaction being stored and searched. The Examiner does not
offer additional reasoning to combine the embodiments of Besecker to meet
the "searching" limitation, as recited by claim 1.
The Examiner does not rely on Carlson or Kanevsky to remedy the
deficiency in Besecker. For these reasons, we do not sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of independent claim 1. For the same
reason, we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a)
of claims 2-9, which depend therefrom.
Independent claims 10 and 16 and dependent claims 11-15 and 17-20
Independent claims 10 and 16 contain similar language and
requirements as independent claim 1. We do not sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of independent claims 10 and 16 for
similar reasons as for independent claim 1. For the same reason, we do not
sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 11-15
and 17-20, which each depend respectively from one of claims 10 and 16.
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Appeal2013-002319
Application 12/407,699
DECISION
The decision of the Examiner to reject 1-20 is reversed.
REVERSED
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