Ex Parte Thomas et al

Patent Trial and Appeal Board

Nov 21, 2018

13072556 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/072,556 03/25/2011
30652 7590 11/21/2018
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.
4189-03905 6245
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
11/21/2018 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
Appeal2017-006049
Application 13/072,556 1
Technology Center 3600
Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and
BETH Z. SHAW, 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---6, 8-11, and 13-18. Claims 2, 7, and 12 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, Safeway, Inc. is the real party in interest (App.
Br. 3). 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.
13/072,534, which is Appeal No. 2017-007426, which have the same
inventive entity and assignee (Safeway, Inc.) (App. Br. 4).
Appeal2017-006049
Application 13/072,556
Disclosed Invention and Exemplary Claim
Appellants' disclosed invention pertains to customer loyalty programs
tailored to individual customer needs, interests, and habits (Title; Spec. 3;
Abstract). The independent claims all 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 6); and (3) a non-transitory
computer readable medium executing instructions on a processor of the
individualized discount and reward server of the retailer ( claim 11 ), all to
cause the server to provide customized offers to customers at the customer's
mobile device or at an in-store kiosk when purchasing items in response to
receiving purchase notifications specifying the retailer account associated
with the customer and the selected retail product. Exemplary independent
claim 1 under appeal, with emphasis and bracketed lettering added, reads 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:
select a product category from a plurality of
product categories associated with the retailer, the selected
product category associated with a plurality of retail products;
select a retail product from the plurality of retail
products, the selected retail product purchased at least once by
the loyalty customer;
determine, from at least a purchase history
associated with the loyalty customer, an amount a loyalty
customer spends on the selected retail product over a
predetermined time period;
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Application 13/072,556
determine an amount each customer from a
plurality of customers forming a peer group spends on the
selected retail product over the predetermined time period;
compare the amount the loyalty customer spends
on the selected retail product to the amount each customer in
the peer group spends on the selected retail product to form a
comparison result;
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 selected retail product at a
reduced price;
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 at least one customized off er
for the selected retail product;
receive a purchase notification, from a mobile
device of the customer or on an in-store kiosk for self-checkout,
specifying a retailer account associated with the customer and
the selected retail product; and
upon receiving the purchase notification from the
mobile device or the in-store kiosk:
i) diverting the purchase notification to a second
server which is operated by the retailer and separate from the
individualized discount and reward server, and
ii) distributing one or more functions to the
second server to prevent the individualized discount and reward
server from being slowed down, the one or more functions
distributed to the second server including:
a. retrieve the retailer account specified in
the purchase notification;
b. upon determination from the comparison
result that the amount the loyalty customer spends on the
selected retail product is below a predetermined percentile with
respect to the amount each customer in the peer group spends
on the selected retail product, allocate the at least one
customized off er for the selected retail product based on the
consumer packaged good partner's agreement to a retailer
account associated with the loyalty customer according to at
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least the comparison result, the at least one customized off er
including a loyalty adjustment changing a general market price
point of the selected retail product to a purchase price;
c. display to the customer while the
customer is making a purchase, on a mobile device of the
customer or on an in-store kiosk for self-checkout, the at least
one customized offer and an option for accepting the at least
one customized off er to the customer;
d. receive, from the mobile device or the
in-store kiosk while the customer is making the purchase, an
acceptance of the at least one customized offer; and
e. redeem the at least one allocated
customized offer accepted by the customer.
The Examiner's Rejection
The Examiner rejected claims 1, 3---6, 8-11, and 13-18 as being
unpatentable under 35 U.S.C. § I03(a) over the combination of Fujita (US
2006/0277103 Al; published Dec. 7, 2006), Aggarwal (US 6,349,309 Bl;
issued Feb. 19, 2002), Hedgcock (US 6,182,060 Bl; issued Jan. 30, 2001),
Davis (US 2010/0070346 Al; published Mar. 18, 2010), Sullivan (US
2001/0018665 Al; published Aug. 30, 2001), Ruckart (US 2006/0085270
Al; published Apr. 20, 2006), and Nix (US 2008/0040261 Al; published
Feb. 14, 2008). Final Act. 3--42.
Issue on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 14--34)
and the Reply Brief (Reply Br. 3-13), the following dispositive issue is
presented on appeal:
Have Appellants shown the Examiner erred in determining that the
"information that a customer is only willing to buy the selected retail
product at a reduced price" (see supra claim 1, limitation [A]) recited in
independent claims 1, 6, and 11 is non-functional descriptive material that is
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not to be given any patentable weight; and as a result erred in determining
that the combination of applied references fails to teach or suggest limitation
[A] as set forth in each of claims 1, 3---6, 8-11, and 13-18?
ANALYSIS
We have reviewed the Examiner's rejection (Final Act. 3--42) in light
of Appellants' contentions in the Appeal Brief (App. Br. 14--34) and the
Reply Brief (Reply Br. 3-13) that the Examiner has erred, as well as the
Examiner's findings and reasoning in response to Appellants' arguments
(Ans. 3-18).
As to claims 1, 3-6, 8-11, and 13-18, we agree with Appellants'
contentions (App. Br. 23-26; Reply Br. 10-11) that the Examiner erred in
determining that the "information that a customer is only willing to buy the
selected retail product at a reduced price" (see supra claim 1, limitation [A]),
recited in claims 1, 6, and 11, 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 fails to teach or suggest limitation
[A] as set forth in each of claims 1, 3---6, 8-11, and 13-18.
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
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
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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."); Ex parte Curry, 84 USPQ2d 1272, 1274 (BP AI 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 1, 6, and 11, even if we agree with the Examiner that the
recited information is printed matter, we agree with Appellants (see App. Br.
23-26; Reply Br. 10-11) that the recited information acts as a trigger,
therefore is 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
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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. 24--25). The Examiner's reasoning (see Final
Act. 14, 16-17; Ans. 8-10, 12-13), that the information is not used for
processing, analysis, or other operations set forth in claims 1, 6, and 11, but
only as a matter of timing, is faulty. As seen from the clause following
limitation [A] recited in claim 1, and as similarly recited in remaining
independent claims 6 and 11, 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 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 obviousness rejection of claims 1, 3---6, 8-11, and 13-18
which all contain the disputed feature of "information that a customer is only
willing to buy the selected retail product at a reduced price."
CONCLUSION
Appellants have shown the Examiner erred in determining that the
"information that a customer is only willing to buy the selected retail
product at a reduced price" (see supra claim 1, limitation [A]), recited in
claims 1, 6, and 11, 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 1, 6, and 11, as well as corresponding dependent
claims 3-5, 8-10, and 13-18.
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DECISION
The Examiner's rejection of claims 1, 3---6, 8-11, and 13-18 under
35 U.S.C. § 103(a) over Fujita, Aggarwal, Hedgcock, Davis, Sullivan,
Ruckart, and Nix is reversed.
REVERSED
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