Jack L. Marovets

Patent Trials and Appeals BoardNov 1, 2019

13385013 - (D) (P.T.A.B. Nov. 1, 2019)

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. 13/385,013 01/28/2012 Jack L. Marovets Jack Marovets-P0009 9285 133690 7590 11/01/2019 Goodhue, Coleman & Owens, P.C. 12951 University Ave Suite 201 Clive, IA 50325 EXAMINER MARCUS, LELAND R ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 11/01/2019 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): USPTO@dockettrak.com docketing@goodhue.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACK L. MAROVETS Appeal 2018-008719 Application 13/385,013 Technology Center 3600 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 52 and 55–62, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Jack L. Marovets. Appeal Br. 3. Appeal 2018-008719 Application 13/385,013 2 CLAIMED SUBJECT MATTER Appellant’s invention “relates to . . . delivering hard copy advertising and marketing materials to a consumer.” Spec. 1:11–12. Sole independent claim 52, reproduced below, is representative of the claimed subject matter. 52. A method of selling and distributing advertising using a web-based service, the method comprising: receiving an order for a product or service from a customer at a first business, the order comprising food to be delivered; after the order is completed, electronically communicating information about the consumer and information about the order from the first business over the internet to a web- based software application executing on a computing system; matching by the web-based software application executing on the computing system advertising for the consumer based on the information about the consumer and the order for placement in available white space for advertising, wherein the advertising is associated with one or more advertisers, wherein the available white space for advertising is physical space for printed advertising, the printed advertising associated with delivery of the order comprising the food to be delivered; electronically receiving over the internet the advertising from the web-based software application; printing on demand a hard copy advertising document at first business, the advertising document containing the advertising to be delivered to the consumer with the delivery of the product or service, the advertising placed in the available white space; delivering the hard copy advertising document to a consumer along with the food; wherein the hard copy advertising is sponsored by and comprises advertising from one or more advertiser, each of the one or more advertisers different than the first business which receives the order for the product or service; Appeal 2018-008719 Application 13/385,013 3 wherein each of the one or more advertisers has a user account for the web-based service for placing ads in available hard copy advertising space; wherein the consumer has a user account for the web-based service; wherein the information about the consumer includes information from the consumer including demographic information and preference information; wherein the first business is a subscriber to the web-based service. REJECTION Claims 52 and 55–62 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hanschen (US 2004/0122733 A1, published June 24, 2004), Clopp (US 2009/0259547 A1, published Oct. 15, 2009), and Jones (US 2010/0156933 A1, published June 24, 2010). OPINION We are persuaded by Appellant’s argument that “Jones does not teach or suggest a consumer having a user account for a web-based service used to sell and distribute advertising,” as required by independent claim 52. Appeal Br. 14. According to Appellant, the user relied upon by the Examiner in paragraph 44 of Jones is not the consumer who ordered food items from the business, but instead is the business itself, who has an account with the entity selling and distributing advertising. Id. at 15. In rejecting claim 52, the Examiner finds Hanschen and Clopp fail to disclose the limitation “wherein the consumer has a user account for the web-based service,” and instead, the Examiner finds Jones discloses this limitation at paragraph 44. Final Act. 4. Appeal 2018-008719 Application 13/385,013 4 In response to Appellant’s argument that “the user taught by Jones is not analogous to a consumer as recited by Applicant” (Appeal Br. 15), the Examiner asserts: From a review of the usage of “web-based service” of the claim language, that phrase means more broadly to include the service the customer uses to order products or services of the first business, not just “a web-based service of selling and distributing advertising”. As such, the teaching of Jones, paragraph 44 teaches the customer having an account with the first business. Answer 5–6. We disagree with the Examiner that this cited paragraph of Jones meets the claim language. Jones, at paragraph 44, discloses that its “control program 206 may calculate and provide a compensation amount for users in exchange for making the virtualized real-estate available for ad placement,” which may take the form of a “compensation amount . . . provided to the user . . . a credit to an account.” Jones ¶ 44. Unlike the limitation in claim 52, Jones compensates a user for making “virtualized real-estate available for ad placement.” Id. The user in Jones is not the same as the claimed consumer of the product or service of the claimed “first business,” because, in this portion of Jones, the user instead corresponds to the claimed “first business.” We are therefore persuaded by the Appellant’s argument of error, on the basis that the Examiner has not adequately shown that Jones discloses “wherein the consumer has a user account for the web-based service,” as required by claim 52. Accordingly, we do not sustain the rejection of independent claim 52. We also do not sustain the rejection of dependent claims 55–62 for the same reasons. Cf. In re Fritch, 972 F.2d 1260, 1266 Appeal 2018-008719 Application 13/385,013 5 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). CONCLUSION The Examiner’s rejection under 35 U.S.C. § 103(a) is REVERSED. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 52, 55–62 103(a) Hanschen, Clopp, Jones 52, 55–62 REVERSED