Ex Parte Tran

Patent Trial and Appeal Board

Jun 16, 2017

11142916 (P.T.A.B. Jun. 16, 2017)

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.
11/142,916 05/31/2005 Hung Tran 5100.001 6619
82331 7590
Docket Clerk
Kelly & Krause, Ltd
P.O. Box 888
Downers Grove, IL 60515
06/20/2017 EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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):
info@kkiplaw.com
joe.krause@kkiplaw.com
joe.krause@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUNG TRAN
Appeal 2015-0058431
Application 11/142,9162
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claim 225. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
October 8, 2014) and Reply Brief (“Reply Br.,” filed April 7, 2015), and the
Examiner’s Answer (“Ans.,” mailed March 16, 2015) and Final Office
Action (“Final Act.,” mailed July 8, 2014).
2 Appellant identifies Digital Coupons Technology International, LLC. as
the real party in interest. App. Br. 1.
Appeal 2015-005843
Application 11/142,916
CLAIMED INVENTION
Appellant’s claimed invention relates to a service provider system and
method for marketing programs (Title).
Independent claim 225, reproduced below, is the only claim on
appeal:
225. A server system comprising:
a database for storing consumer information comprising,
for each consumer, an identifier associated with the consumer
and information corresponding to at least one electronic coupon,
the electronic coupon comprising identification of a product or
service and an amount by which a purchase price is reduced,
wherein information necessary to redeem the electronic coupon
at a point-of-sale terminal is not transmitted to the consumer;
a mobile coupon redemption module for receiving a
consumer’s identifier from a point of sale terminal;
an authentication system for authenticating the identifier
received from the point of sale terminal; and
a redemption system for sending, based upon successful
authentication of the identification, to the point of sale terminal,
information required for redemption of at least one electronic
coupon associated with the consumer, wherein the identifier
itself is non-redeemable for a discount.
REJECTION3
Claim 225 is rejected under 35 U.S.C. § 102(b) as anticipated by
Yuasa (US 2002/0198777 Al, pub. Dec. 26, 2002).
3 The Examiner, in the Answer, enters a new ground of rejection of
“[cjlaims 1, 8, 13, 16, and 17 and their dependents” under 35 U.S.C. § 101
(Ans. 5—8). However, independent claim 225 is the only claim at issue in
this appeal. All other claims have either been canceled (e.g., claims 1, 8, 13,
16, and 17, and their respective dependent claims) or withdrawn (see Reply
Br. 1).
2
Appeal 2015-005843
Application 11/142,916
ANALYSIS
Appellant argues that the Examiner erred in rejecting claim 225 under
35 U.S.C. § 102(b) because Yuasa does not disclose that “information
necessary to redeem the electronic coupon at a point-of-sale terminal is not
transmitted to the consumer,” as recited in claim 225 (App. Br. 4—5);
Appellant maintains that Yuasa, instead, “requires the transmission of an ‘e-
coupon ID’ to a cell phone, which is[,] in fact[,] an e-coupon that is fully
redeemable after its validation or at the discretion of a cashier” {id. at 4).
We agree.
Yuasa is directed to an electronic coupon method and system, and
discloses that an e-coupon issue center, in response to a consumer request,
generates a unique “e-coupon ID,” which is sent to, and stored in, the
consumer’s mobile device (Yuasa 145). When the consumer desires to
purchase a product using the coupon, the consumer tells the salesclerk that
he/she has an e-coupon; the clerk then enables a communication link
between the consumer device and the retail terminal, and the e-coupon ID is
uploaded to the retail terminal {id. H 47, 48). The retail terminal sends the
e-coupon information to the e-coupon issue center, which confirms the e-
coupon validity, and sends approval back to the retailer terminal {id. 149).
A specific example of the Yuasa methodology is set forth in paragraphs 63—
69.
Responding to Appellant’s arguments, the Examiner cites
paragraph 68 and Figure 6 of Yuasa as disclosing that the information
required for redemption of a coupon is sent to the POS (i.e., the retailer’s
terminal), and that the customer never has possession of information
necessary to redeem the coupon (Ans. 3—5). In this regard, the Examiner
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Appeal 2015-005843
Application 11/142,916
ostensibly maintains because the coupon must be validated/approved before
it can be redeemed and because the approval is sent from the e-coupon issue
center to the retailer terminal, the “information required for redemption of a
coupon” is sent to the POS terminal {id. at 5).
We agree with Appellant that the Examiner has misinterpreted Yuasa.
As Appellant correctly observes, Yuasa plainly discloses that an e-coupon is
transmitted to a consumer’s phone and stored until the coupon is used by the
consumer (Reply Br. 3 (citing Yuasa 68, 69)). The coupon is then used
when the consumer wirelessly transmits the coupon from his/her mobile
device to the retailer’s terminal {id.). That the coupon must be subsequently
validated by the issue center does not change the fact that the e-coupon, as
stored on the consumer’s mobile device, contains all the information
necessary for a customer to receive a price discount simply by presenting the
e-coupon to a salesclerk, i.e., that the Yuasa e-coupon is fully redeemable
{id.)
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 225 under 35 U.S.C. § 102(b).
DECISION
The Examiner’s rejection of claim 225 under 35 U.S.C. § 102(b) is
reversed.
REVERSED
4