Ex Parte Barnett et al - Page 6




             Appeal No. 2005-2686                                                                                    
             Application No. 09/879,823                                                                              


             coupons that a user has viewed, selected, printed, etc.) on the user’s computer [brief,                 
             pages 13-14].  The examiner responds that the target and profile information are                        
             disclosed as being stored at the central location for analysis.  The examiner asserts that              
             the user selection of coupons is not the same as user preferences, profile or adequate                  
             targeting information.  Although the examiner acknowledges that demographic                             
             information is collected from the user, the examiner                                                    


             argues that the information is only stored at the central location [answer, pages 7-12].                
             Appellants respond that selected coupon data is “preference data” and is stored at the                  
             user’s device [reply brief, pages 4-6].                                                                 
                    We agree with appellants that the specification supports the storage of user                     
             preferences on the user’s device.  The fact that some of the data stored at the central                 
             location is obtained from the user’s device supports the claim language that one or                     
             more preferences of the users are stored in the respective users’ devices.  The fact that               
             analysis of the data might occur at the central location does not alter the fact that the               
             coupon information related to the user is stored at the user’s device.                                  
                    Since we agree with at least one of the examiner’s objections to the claims under                
             the first paragraph of 35 U.S.C.  § 112, we will sustain the examiner’s rejection of claims             
             47-62 for the reasons discussed above.                                                                  
             We now consider the rejection of claims 47-62 under 35 U.S.C. § 102(b) as being                         

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