Free Claim Construction Opening Brief - District Court of Delaware - Delaware

Case 1:04-cv-OO360—JJF Document 138-7 Filed 05/O9/2006 Page 1 of 3
Application No. AppIicant(s) n
. f - ' 08/572,017 Thomas W. Storey A
Notice 0 Allow/ability Examiner Group Art Unit
‘Gr0utt, Phillip 2411
All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
herewith lor previously mailed), a Notice of Allowance and Issue Fee Due or other appropriate communication will be
mailed in due course.
This communication is responsive to 12/14/95 _
(E The allowed cIaim(s) is/are 1-3O _ I I
I] The drawings filed on are acceptable.
Ki Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § ‘I‘I9(a)-(dl.
[I All El Some* E None of the CERTIFIED copies of the priority documents have been
received. _
received in Application No. (Series Code/Serial Number) .
E received in this national stage application from the International Bureau (PCT Rule ‘I7.2(a)).
"‘Certified copies not received: _
K] Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
A SHORTENED STATUTORY PERIOD FOR RESPONSE to comply with the requirements noted below is set to EXPIRE
THREE MONTHS FROM THE "DATE MAILED" of this Office action. Failure to timely comply will result in
ABANDONMENT of this application. Extensions of time may be obtained under the provisions of 37 CFR 1.136(a).
Q Note the attached EXAMINER'S AMENDMENT or NOTICE OF INFORMAL APPLICATION, PTO-152, which discloses
that the oath or declaration is deficient. A SUBSTITUTE OATH OR DECLARATION IS REQUIRED.
(X] Applicant MUST submit NEW FORMAL DRAWINGS
because the originally filed drawings were declared by applicant to be informal.
li including changes required by the Notice of Draftsperson's Patent Drawing Review, PTO—948, attached hereto or
to Paper No. . ‘
lil including changes required by the proposed drawing correction filed on , which has been
approved by the examiner.
Q including changes required by the attached Examiner's Amendment/Comment.
Identifying indicia such as the application number (see 37 CFR 1 .84(c)) should be written on the reverse side of the
drawings. The drawings should be filed as a separate paper with a transmittal Iettter addressed to the Official
Draftsperson.
lil Note the attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
Any response to this letter should include, in the upper right hand corner, the APPLICATION NUMBER (SERIES
CODE/SERIAL NUMBER). If applicant has received a Notice of Allowance and Issue Fee Due, the ISSUE BATCH NUMBER
and DATE of the NOTICE OF ALLOWANCE should also be included.
Attachmentls)
lj Notice of References Cited, PTO-892
X) information Disclosure Statementlsl, PTO-1449, Paper No(s). 3
Q Notice of Draftsperson's Patent Drawing Review, PTO-948
I] Notice of Informal Patent Application, PTO-152 ~
[Tl Interview Summary, PTO·413
Examiner's Amendment/Comment
I] Examiner's Comment Regarding Requirement for Deposit of Biological Material
X Examiner‘s Statement of Reasons for Allowance

U. S Patent and Trademark Office `
PTO-37 (Rev. 9-95) Notice of Allowabilitv Part of Paper No. 7

Case 1 :O4—cv-OO360—JJF Document 138-7 Filed 05/O9/2006 Page 2 of 3
Serial Number: 08/572,017 Page 2
Art Unit: 241 1 Q
DETAILED ACTION
Allowable Subject Matter
1. Claims 1-30 allowed. p
Independent claim 1 describes an incentive award program including a computer system
accessible for on-line interactive communication with users, said computer system comprising a
Hrst memory area for storing product catalog, said product catalog including product descriptions
and product prices for each product available for purchase a second memory area for storing an
awards catalog, said awards catalog including an award description and award point value for
each award and a frequency database storing account information for each enrolled user of said
incentive award program. It is the specific embodiment of the frequency database, coupled with a
product catalog, from which purchase of goods may be made, and an awards catalog, from which
awards maybe redeemed, that renders the invention distinct over the prior art. Several references
have been cited giving specific embodiments of electronic commerce systems and incentive award
programs, however, none suggest or disclose combining the features of both to create the
invention of the instant application. For this reason the claim is allowed.
Independent claims 10 and 15 are allowed on the same basis as claim 1 above. They
disclose more specific details ofthe same incentive award program of claim 1.
Dependent claims 2-9, 1 1-14, 16-18, and 21-30, are allowed as depending from the
independent claims as discussed above.

Case 1 :O4—cv-OO360—JJF Document 138-7 Filed 05/O9/2006 Page 3 of 3
Serial Number: 08/572,017 Page 3
Art Unit: 241 1 ·
Independent claim 19 discloses a method of displaying a database of articles to facilitate
display of the product and awards catalog in claims 1, 10, and l5. The method comprises
assigning a value for each article of the database, defining a plurality of escalating levels, assigning
each ofsaid articles to only one of said plurality of escalating levels, depending on the value I
assigned to each of said articles, receiving a request to review said articles and determining a level
to which said request correspond, and making available for review only those articles
corresponding to the level to which said request corresponds and any lower level. As this is an
independent claim, a separate search was done inthe database arts to find such a method of
displaying a database of articles. However, there was no suggestion in the art to employ such a
method whereby escalating levels are defined, goods are classihed into one of said levels based
upon their respective values, and request results are truncated on the basis of the level to which
said request corresponds.
Independent claim 20 is likewise allowed, as it corresponds to the same subject matter as
claim 19. _
2. Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Phillip Groutt whose telephone number is (703) 306-2906. The examiner
can normally be reached on Mondays to Fridays from 9:00 to 5:00.

Case 1:04-cv-00360-JJF

Document 138-7

Filed 05/09/2006

Page 1 of 3

Case 1:04-cv-00360-JJF

Document 138-7

Filed 05/09/2006

Page 2 of 3

Case 1:04-cv-00360-JJF

Document 138-7

Filed 05/09/2006

Page 3 of 3