Ex Parte 7,499,872 B1 et al

Patent Trial and Appeal Board

Feb 18, 2015

95001604 (P.T.A.B. Feb. 18, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,604 04/18/2011 7,499,872 B1 688239-RX 9587
2292 7590 02/18/2015
BIRCH STEWART KOLASCH & BIRCH, LLP
PO BOX 747
FALLS CHURCH, VA 22040-0747
EXAMINER
HOTALING, JOHN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/18/2015 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
____________________

VESDIA CORPORATION
Requester

v.

TUITIONFUND, LLC
Patent Owner
____________________

Appeal 2014-008890
Reexamination Control No. 95/001,604
Patent 7,499,872 B1
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Patent Owner requests rehearing of the portion of our Decision
entered September 29, 2014 (“Decision”), in which we affirmed the
Appeal 2014-008890
Reexamination Control 95/001,604
Patent 7,499,872 B1

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rejection of claims 25, 27, 29, 31, 33, and 35 under 35 U.S.C. § 103(a) as
being unpatentable over Canadian ‘448 in view of FutureBanker.

OPINION
We will maintain the rejections.
PRINCIPLES OF LAW
A reference may be understood by the artisan to be suggesting a
solution to a problem that the reference does not discuss. See KSR v.
Teleflex, 550 U.S. 398, 420–21 (2007) (“The second error of the Court of
Appeals lay in its assumption that a person of ordinary skill attempting to
solve a problem will be led only to those elements of prior art designed to
solve the same problem. . . . Common sense teaches . . . that familiar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle. . . . A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).
The test of obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference, nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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ANALYSIS
Patent Owner reiterates its argument that the special purpose card
disclosed in Canadian ‘448 would not be “capable of being used to make
both online internet-based and point of sale purchases with registered
merchants offering rebates,” as claims 25, 27, 29, 31, 33, and 35 recite (Req.
for Reh’g 2). Patent Owner asserts that the Board misapprehended the issue
because online merchants would not possess the specially configured card
processing terminal (Req. for Reh’g 3). This argument remains unpersuasive
to show error, for two reasons.
First, Requester correctly notes that the Examiner took Official Notice
in parent Application No. 09/703,562 that on-line purchasing was well
known at the time of the invention (Office Action mailed December 15,
2003, p. 5). Such Official Notice stands unchallenged by Patent Owner (Req.
for Reh’g 2; Req. Comments in Opposition, p. 1). The Examiner’s rejection
finds, and we agree, that Canadian ‘448 explicitly discloses point of sale
purchases (RAN 3-4, adopting proposed rejection in Third Party Requester
Comments filed June 8, 2012, pp. 12-14).
Second, as a consequence of that unrebutted official notice, we agree
with Requester (Req. Comments in Opposition, pp. 2-3) that one of ordinary
skill in the art, having the teachings of Canadian ‘448 regarding point of sale
purchases and the known concept of using credit or debit cards for on-line
purchases before him, would have found it obvious to arrive at the limitation
recited in these claims. A reference may be understood by the artisan to be
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suggesting a solution to a problem that the reference does not discuss. See
KSR, 550 U.S. at 420–21. We agree with Requester that the teachings of
Canadian ‘448 do not preclude application of the “CareCard” to on-line
purchases, and that it would have been within the realm of ordinary skill in
the art to apply the CareCard to on-line as well as point of sale purchases
(Req. Comments in Opposition, pp. 2-3). We are thus also unpersuaded by
Patent Owner’s contention that there is no articulated reasoning to support a
conclusion of obviousness (Req. for Reh’g 4).
Patent Owner’s argument regarding Hardesty (Req. for Reh’g 4) is not
persuasive to disturb our decision, because as noted in the Decision, we did
not reach the rejection of these claims over Hardesty (Dec. 11).
Last, we note that it is not relevant whether the affirmed Examiner’s
rejection mischaracterizes “online” purchasing as the term is used in
Canadian ‘448 (see Req. for Reh’g 5). As mentioned supra, it is a matter of
record that the Examiner took Official Notice that on-line internet-based
purchasing was well known at the time of the invention, and Patent Owner
did not contest this Official Notice.

We therefore conclude that Appellant has not shown any points which
we misapprehended or overlooked in our Decision.

CONCLUSION
In summary, we have granted Appellant’s request for rehearing to the
extent that we have reconsidered our decision affirming the rejection of
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claims 25, 27, 29, 31, 33, and 35, but we decline to modify the decision in
any way.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

REHEARING DENIED

ack

PATENT OWNER:

BIRCH STEWART KOLASCH & BIRCH, LLP
PO Box 747
Falls Church, VA 22040-0747

THIRD PARTY REQUESTOR:

Stephen E. Murray
PANITCH SCHWARZE BELISARIO & NADEL LLP
One Commerce Square, 2005 Market St., Suite 2200
Philadelphia, PA 19103-7086