Ex Parte Antao et al

Patent Trial and Appeal Board

Aug 10, 2016

12041036 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/041,036 03/03/2008
29052 7590 08/12/2016
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
Suite 2300
ATLANTA, GA 30309
FIRST NAMED INVENTOR
Leonard F. Antao
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
25040-2712 1627
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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):
patent. docket@sutherland.com
pair_sutherland@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LEONARD F. ANTAO, ANTHONY J. PHILLIPS,
GERARD E. INSOLIA, and H. BROCK KOLLS
Appeal2014-002648 1
Application 12/041,0362
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 4--14, 16-18, 20, 21, 23, and 24. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Br.," filed July 29,
2013), and the Examiner's Answer ("Ans.," mailed October 2, 2013) and
Final Office Action ("Final Act.," mailed March 28, 2013).
2 Appellants identify The Coca-Cola Company of Atlanta, Georgia as the
real party in interest. Br. 1.
Appeal2014-002648
Application 12/041,036
CLAIMED fNVENTION
Appellants' claimed invention "generally relates to incentive
programs, and more particularly relates to systems and methods for
providing a personal terminal for a loyalty program" (Spec. i-f 1 ).
Claim 1, reproduced below, is the sole independent claim and
representative of the subject matter on appeal:
1. A personal terminal for obtaining loyalty rewards,
the personal terminal comprising:
a housing sized and shaped to be transported by or with a
user so that the housing is accessible when the user is physically
nearby one of a product, a piece of equipment, and a promotional
object;
a processor positioned in the housing;
a memory positioned in the housing;
an interaction terminal interface associated with the
housing, the interaction terminal interface operable to receive a
communication transmitted by an interaction terminal, the
interaction terminal physically associated with the product,
equipment, or promotional object, the communication
comprising an indication that the personal terminal is physically
nearby the interaction terminal and associated product,
equipment, or promotional object; and
a loyalty management engine stored on the memory and
executable by the processor, the loyalty management engine
operable to:
determine a loyalty reward based at least in part on
the communication with the interaction terminal interface,
store an indication of the loyalty reward in the
memory; and
transmit an instruction operable to redeem or store
the loyalty reward.
2
Appeal2014-002648
Application 12/041,036
REJECTIONS
Claims 1, 4--14, 21, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hayes (US 2004/0073497 Al, pub. Apr. 15, 2004), and
Birch (US 7,213,742 Bl, iss. May 8, 2007).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hayes, Birch, and Smits (US 7,551,814 Bl, iss. June 23, 2009).
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hayes, Birch, and Challa (US 2006/0202035 Al, pub. Sept. 14, 2006).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hayes, Birch, and Daniels (US 2007/0014916 Al, pub. Jan. 18, 2007).
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hayes, Birch, and Huang (US 2003/0094031 Al, pub. May 22, 2003). 3
ANALYSIS
Independent Claim 1 and Dependent Claims 4-14, 21, 23, and 24
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because neither
Hayes nor Birch, individually or in combination, discloses or suggests "a
loyalty management engine ... operable to[] determine a loyalty reward
based at least in part on the communication with the interaction terminal
interface," as recited in claim 1 (Br. 3-7).
Hayes is directed to an electronic purchasing system in which a user
communicates with a system server and at least one partner system over a
network (Hayes, Abstract). The user is provided with an electronic wallet
3 The Examiner mistakenly identifies the Huang publication as "Renyolds"
on page 23 of the Final Office Action.
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Appeal2014-002648
Application 12/041,036
and a smart card (id. il 8). The smart card includes a microprocessor and a
memory; the memory stores an electronic coupon book containing special
offers or incentives that the user may use when shopping over the network,
graphic tools, and website recognition tools (id. i-fi-1 30, 31, Fig. 2A). The
website recognition tools are capable of recognizing a partner system,
e.g., by its URL address or other indicia, and when a partner system is
recognized, other tools search for and download coupons applicable to the
partner system to the smart card (id. i132). Additionally, when a coupon
exists for a partner system being visited by the user, discount display tools
cause the offer to appear on the user system (id.; see also id. i-fi-19, 36).
Hayes describes that once coupons have been loaded into the electronic
coupon book, the coupons may be used, i.e., redeemed, online or within a
partner's "brick-and-mortar" establishment (id. i1 47).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner cites
paragraphs 9, 30-32, and 36 and Figure 2A of Hayes as disclosing "a loyalty
management engine ... operable to[] determine a loyalty reward based at
least in part on the communication with the interaction terminal interface,"
as recited in claim 1 (Final Act. 10-11 ). However, we agree with Appellants
that there is nothing in the cited portions of Hayes that discloses or suggests
that a user receives a coupon based on the user's physical proximity to a
product, equipment, or promotional object, i.e., that the physical proximity
of a personal terminal to a product, equipment, or promotional object is a
factor in receiving a loyalty reward, as called for in claim 1. Nor, for that
matter, does the Examiner ostensibly contend otherwise.
Responding to Appellants' argument, the Examiner maintains that
"[ t ]here is no determination of any kind with respect to reward and the
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Appeal2014-002648
Application 12/041,036
physical proximity"; that the claims recite that "the loyalty reward is based
in part on the communication with the interaction interface"; and that
"Hayes teaches ... that the personal terminal [i.e., the smart card] is
physically associated with the interaction terminal (vendor POS) which is
associated with the product, equipment or promotional object in that the
vendor is a participating vendor in the promotion, product or equipment"
(Final Act. 8-9 (citing Hayes i-f 9); see also id. at 8 ("The applicant is
arguing a feature (i.e. that the physical proximity of the product, equipment
or promotion determines the loyalty program) not presented in the
claims.")). We cannot agree.
Claim 1 recites that "a loyalty reward [is determined] based at least in
part on the communication with the interaction terminal interface" and also
plainly recites that the communication with the interaction terminal interface
"compris[ es] an indication that the personal terminal is physically nearby the
interaction terminal and associated product, equipment, or promotional
object." In other words, the loyalty reward is determined based at least in
part on the personal terminal being physically nearby the product,
equipment, or promotional object. The Examiner has not established on this
record that Hayes and Birch, whether considered individually or in
combination, disclose or suggest this feature.
Therefore, we do not sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the Examiner's rejection of dependent claims 4--14, 21, 23, and 24.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
no no bvious").
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Appeal2014-002648
Application 12/041,036
Dependent Claims 16-18 and 20
None of the rejections of claims 16-18 and 20 based on Smits
(claim 16), Challa (claim 17), Daniels (claim 18), and Huang (claim 20), in
combination with Hayes and Birch, cures the deficiency in the Examiner's
rejection of independent claim 1. Therefore, we do not sustain the
Examiner's rejections of claims 16-18 and 20 under 35 U.S.C. § 103(a) for
the same reasons set forth above with respect to claim 1.
DECISION
The Examiner's rejections of claims 1, 4--14, 16-18, 20, 21, 23, and
24 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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