Ex Parte Austin

Board of Patent Appeals and Interferences

Dec 15, 2003

09309834 (B.P.A.I. Dec. 15, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GARY M. AUSTIN
__________
Appeal No. 2003-2131
Application 09/309,834
___________
ON BRIEF
___________
Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Gary M. Austin appeals from the final rejection (Paper No.
19) of claims 1 through 20, all of the claims pending in the
application.
Appeal No. 2003-2131
Application 09/309,834
1 The terms “the charity” in claim 11 and “the financial
institution trustee” in claim 15 lack a proper antecedent basis.
In the event of further prosecution, steps should be taken to
correct these informalities.
2
THE INVENTION
The invention relates to a method (claims 1 through 11), a
computer program (claims 12 through 14) and a system (claims 15
through 20) for administering consumer rebates. Representative
claim 1 reads as follows:1
1. A method of administering a rebate system, comprising
the steps of:
a. a controlling authority receiving rebate-related
information electronically transmitted from a rebate issuing
entity, the rebate-related information including:
i. information identifying a consumer;
ii. information relating to a purchase made by the
consumer from the rebate issuing entity; and
iii. information identifying the rebate issuing
entity;
b. the controlling authority calculating an amount of a
rebate that is to be credited to the consumer, based on
information previously provided by the rebate issuing entity and
at least a portion of the rebate-related information;
c. the controlling authority controlling transfer of
the amount of the rebate, to an omnibus trust account; and
d. the controlling authority authorizing a financial
institution trustee to transfer a credit from the omnibus trust
account directly to the consumer.
Appeal No. 2003-2131
Application 09/309,834
3
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
McCarthy 4,941,090 Jul. 10, 1990
Kanter 5,537,314 Jul. 16, 1996
Molbak 5,620,079 Apr. 15, 1997
THE REJECTIONS
Claims 1 through 8 and 15 through 17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over McCarthy in view of
Kanter.
Claims 9 through 14 and 18 through 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over McCarthy in view of
Kanter and Molbak.
Attention is directed to the main and reply briefs (Paper
Nos. 21 and 23) and to the answer (Paper No. 22) for the
respective positions of the appellant and the examiner regarding
the merits of these rejections.
DISCUSSION
McCarthy, the examiner’s primary reference, discloses a
consumer cash value accumulation system 10 comprising a central
system 12 and a plurality of merchant locations 14. Each
merchant location includes a microprocessor 16, a consumer data
input device 20 (e.g., a keyboard or magnetic card reader for
Appeal No. 2003-2131
Application 09/309,834
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entering a consumer account number), a transaction data input
device 22 (e.g., a keyboard or cash register), a memory 24 for
storing an operating program, the consumer and transaction data
and a credit rate selected by the merchant, and an input/output
device 26 through which the microprocessor communicates consumer
account numbers, calculated credit values or rebates and merchant
data to the central system. The central system comprises an
input/output device 40, a bill printer 44, an access
authorization unit 46, a memory 48, a consumer accounts memory
50, a merchant accounts memory 52 and a microprocessor 54.
Periodically, the central system bills merchants for operating
fees and the cash rebates and sends a total rebate value for each
consumer account to the access authorization unit 46. This unit
communicates with (1) one or more electronic terminals 60 for
dispensing rebate funds to the consumers, (2) banking
institutions for wire transfer of rebate funds directly to the
consumers’ bank accounts, or (3) a printer for producing rebate
checks which are mailed to the consumers. McCarthy describes the
operation of the foregoing system as follows:
when a consumer makes a purchase, the consumer’s Social
Security number and birthdate are entered along with
the amount of the purchase at the point-of-sale. Where
a plastic card with a magnetic stripe is used for entry
of the consumer data, a PIN code is also entered and
Appeal No. 2003-2131
Application 09/309,834
2 The examiner views McCarthy’s central system 12 as
generally embodying a computer program of the sort recited in
claim 12.
5
verified against a code stored on the card. A credit
value for that transaction is then determined based
upon the credit rate stored in memory 24 as selected by
that merchant and the dollar amount of the particular
transaction involved. Subsequently, the consumer data,
merchant data and credit value are transmitted to the
central system whereat the cash value in the consumer
account having the appropriate account or Social
Security number and birthdate segments is incremented
by the amount of the credit value. Similarly, at the
central system, the bill value in the merchant account
having the appropriate merchant code number segment is
also incremented by the amount of the credit value.
Periodically, such as monthly, bills are sent to the
merchants for at least the bill value amount which is
then reset to zero. Similarly, at selected intervals
all consumers having one or more selected common
birthdates are provided access to funds in the amount
of the cash value shown in the consumer accounts
associated with those individuals and the cash value
then rest to zero. Such access may be by authorized
access to an access account or by checks issued
directly to that consumer, for example [column 5, lines
26 through 53].
The examiner concedes (see pages 10, 13 and 17 in the
answer) that McCarthy does not respond to the limitations in
independent claims 1 and 15 requiring the controlling authority,
which corresponds to McCarthy’s central system 12, to calculate
an amount of a rebate that is to be credited to the consumer, or
to the similar limitation in independent claim 12 requiring the
claimed computer program to execute such a calculation.2 As
Appeal No. 2003-2131
Application 09/309,834
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indicated above, the microprocessor 16 at each of McCarthy’s
merchant locations 14 calculates the credit values or rebates and
sends this information to the central system. To cure McCarthy’s
shortcoming in this regard, the examiner looks to Kanter.
Kanter discloses a consumer credit/rebate accumulation and
accessing system having much in common with the McCarthy system
including sponsoring company point-of-sale locations 14, 16 and a
central system 12. Kanter teaches that the credit/rebate
associated with a particular retail transaction can be determined
either at a sponsoring company point-of-sale location (see, for
example, column 18, lines 7 through 15; and column 19, lines 1
through 9) or at the central system (see, for example, column 23,
line 44 et seq.).
In proposing to combine McCarthy and Kanter, the examiner
concludes that it would have been obvious “to combine the
centralized cash value accumulation system for multiple merchants
taught by McCarthy and . . . the Kanter system of calculation at
the central location to offer to merchants an alternative and
more flexible (i.e. providing choices for the merchants) rebate
administration system” (answer, pages 10 and 11).
Appeal No. 2003-2131
Application 09/309,834
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This proposed modification of McCarthy, which has not been
specifically challenged by the appellant, is reasonable on its
face given Kanter’s teaching that credits/rebates may be
determined either locally or centrally.
The appellant does contend, however, that McCarthy, even as
so modified, would still not respond to the limitations in claims
1, 12 and 15 requiring the controlling authority or computer
program to perform all four steps of (1) receiving rebate-related
information, (2) calculating the amount of a rebate, (3)
controlling transfer of the rebate amount to a trust account, and
(4) authorizing a financial institution trustee to transfer a
credit from the trust account directly to the consumer. This
line of argument rests on the appellant’s assertion that
“McCarthy does not teach or suggest . . . anything having to do
with a trust account” (main brief, page 4).
The examiner, citing the definition of the terms “trust” and
“trustee” provided by Black’s Law Dictionary With Pronunciations,
Sixth Edition, Centennial Edition (1891-1991), pp. 1508-14,
counters that McCarthy’s “customer accounts” 50 constitute trusts
having the central system 12 as a trustee and that the bank
Appeal No. 2003-2131
Application 09/309,834
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accounts linked to the central system also constitute trusts
having the central system and/or the banking institutions as
trustees.
As indicated above, McCarthy’s component 50 is merely a
consumer accounts memory associated with central system
microprocessor 54. As such, it does not amount to a “trust”
under any reasonable meaning of this term. Nonetheless, McCarthy
does suggest that the central system receives credit/rebate funds
from the bills sent to the merchants. Thus, to at least some
extent, the central system and/or the banking institutions
associated therewith do hold or directly control rebate money
intended to be distributed to consumers. This does not
necessarily make “trust accounts” of the money or “trustees” of
the central system or banking institutions in the sense disclosed
and claimed by the appellant. As evidenced by the Black’s Law
Dictionary definitions advanced by the examiner, a person having
ordinary skill in the art would appreciate a trust as having to
meet certain legal requirements. Not all arrangements wherein
property is held by one entity for another meet these
requirements, and hence the examiner’s apparent position that any
such arrangement constitutes a trust is unsound. In the present
case, there is nothing in the disclosure of McCarthy, taken alone
Appeal No. 2003-2131
Application 09/309,834
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or in combination with the disclosure of Kanter, which teaches or
would have suggested that the consumer accounts with which
McCarthy is concerned are trust accounts having a financial
institution trustee as set forth in independent claims 1, 12 and
15. This fundamental flaw in the McCarthy-Kanter combination
finds no cure in the examiner’s additional application of Molbak
for its disclosure of consumer contributions to charity.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claims 1 and 15, and dependent
claims 2 through 8, 16 and 17, as being unpatentable over
McCarthy in view of Kanter, or the standing 35 U.S.C. § 103(a)
rejection of independent claim 12, and dependent claims 9 through
11, 13, 14 and 18 through 20, as being unpatentable over McCarthy
in view of Kanter and Molbak.
Appeal No. 2003-2131
Application 09/309,834
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SUMMARY
The decision of the examiner to reject claims 1 through 20
is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM:pgc
Appeal No. 2003-2131
Application 09/309,834
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Needle & Rosenberg P.C.
127 Peachtree Street N.E.
Atlanta, GA 30303-1811