Ex Parte Brown

Board of Patent Appeals and Interferences

Jan 11, 2010

10064066 (B.P.A.I. Jan. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KYLE RAY BROWN
____________

Appeal 2009-002341
Application 10/064,066
Technology Center 3600
____________

Decided: January 11, 2010
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002341
Application 10/064,066

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-18 and 28-36 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to method and system
for a discount debit card (Title). Claim 1, reproduced below with added
bracketing, is representative of the subject matter of appeal.

1. A system for operating a discount debit card plan for processing
of an eCard holder transaction by using a discount plan provider
system responsive to a merchant's eCard holder related transaction
data, crediting the merchant with the transaction amount reduced by a
merchant discount and debiting the eCard holder with the transaction
amount reduced by an eCard holder discount, and crediting the
difference between the merchant discount and the card holder
discount as at least one fee to the discount debit card plan provider or
its affiliates, comprising,
a discount debit plan provider terminal containing data indicative of a
discount debit card plan for use by participating merchants and for
application to transactions with a discount debit plan provider's
authorized eCard;

a participating merchant terminal with merchant identifying data;

Appeal 2009-002341
Application 10/064,066

3
said discount debit plan provider eCard with eCard data, including
eCard holder identifying data; a telecommunications network
connecting said discount debit plan provider terminal and said
merchant terminal for transmitting data between said terminals;

said merchant terminal responsive to said eCard data and to
transaction data related to a transaction made between said
participating merchant and said eCard holder for transmitting said
transaction data to said discount debit plan provider's terminal;

[1] said discount debit plan provider's terminal responsive to said
transaction data for crediting said merchant's account with a
merchant's discounted amount represented by said full transaction
amount reduced by said participating merchant's discount and debiting
said eCard holder's account with a eCard holder's discounted amount
represented by said transaction amount reduced by said eCard holder's
discount.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Harris US 6,014,635 Jan. 11, 2000
Peirce US 6,332,126 B1 Dec. 18, 2001
Barbara US 2003/0105710 B1 Jun. 5, 2003

The following rejections are before us for review:
1. Claims 1-6, 8-15, 17-18, 28-32, and 34-36 are rejected under 35
U.S.C. § 103(a) as unpatentable over Harris and Peirce.
2. Claims 7, 16, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Harris, Peirce, and Barbara.

Appeal 2009-002341
Application 10/064,066

4
THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
This issue turns on whether Harris and Peirce disclose claim limitation
[1] identified above.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Harris discloses a system for providing a discount credit network
(Title).
FF2. Harris discloses that a discount authorization processor is connected
to the discount credit network and a database containing membership
numbers and the associated transaction card accounts. The discount
authorization processor is operatively connected to receive discount
authorization requests from authorized merchants, correlate such requests,
and issue a transaction request to that transaction card user. Upon receiving
the signal the merchant then applies the discount to the transaction whereby
the participant receives the discount (Abstract).
FF3. Peirce discloses a computer based targeted payment system discount
program (Title).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2009-002341
Application 10/064,066

5
FF4. Peirce discloses that discounts are automatically applied during the
processing of the qualifying purchase without the need for coupons or
additional actions by either the merchant or consumer (Abstract).
FF5. Peirce at Col. 1:50-2:34 and 13:42-55 fails to expressly disclose a
“merchant discount” that is separate from any “eCard holder discount”.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Appeal 2009-002341
Application 10/064,066

6
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
Peirce fails to disclose claim limitation [1] (Reply Br. 9).
In contrast the Examiner has determined that the cited limitation is
shown by Peirce at Col. 1:65-2:5 (Ans. 6).
We agree with the Appellant. Claim 1 requires in part:
Appeal 2009-002341
Application 10/064,066

7
[1] said discount debit plan provider's terminal responsive to said
transaction data for crediting said merchant's account with a
merchant's discounted amount represented by said full transaction
amount reduced by said participating merchant's discount and
debiting said eCard holder's account with a eCard holder's discounted
amount represented by said transaction amount reduced by said eCard
holder's discount.
We begin with claim construction and note that claim 1 requires both
a “merchant discount” and an “eCard holder discount”. The distinction
between the “merchant discount” and an “eCard holder discount” is further
drawn by the recitation in claim 1 for “crediting the difference between the
merchant discount and the card holder discount as at least one fee to the
discount debit card plan provider or its affiliates”.
The Examiner has agreed that Harris does not expressly disclose the
“discount debit plan providers terminal responsive to said transaction data
for crediting said merchant's account with a merchant's discounted amount
represented by said full transaction amount reduced by said participating
merchant's discount” (Ans. 6, emphasis added). The Examiner has asserted
instead that this is suggested in the combination of references because Peirce
utilizes merchant discounts within a credit transaction network to target
offers deemed valuable to respective cardholders at Col. 1:65-2:5 (Ans. 6)
and Col. 1:50-2:34 (Ans. 13). In contrast we find that Peirce at Col. 1:50-
2:34 fails to expressly disclose any “merchant discount” that is separate from
an “eCard holder discount” (FF5) and thus the combination of Harris and
Peirce fails to disclose limitation [1] as claim 1 requires.
Further, there is no articulated reasoning with rational underpinning to
show why it would have been obvious to modify the systems of both Harris
Appeal 2009-002341
Application 10/064,066

8
and Peirce to meet the specific requirements of claim limitation [1] to
support the legal conclusion of obviousness.
For these reasons the rejection of claim 1, as well as dependent claims
2-9, is not sustained. The Appellant has argued for the same limitations in
claims 10 and 28, and the rejection of these claims, as well as their
dependent claims 11-18 and 29-36 is not sustained for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-6, 8-15, 17-18, 28-32, and 34-36 under 35 U.S.C. § 103(a)
as unpatentable over Harris and Peirce.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 7, 16, and 33 under 35 U.S.C. § 103(a) as unpatentable over
Harris, Peirce, and Barbara.

DECISION
The Examiner’s rejection of claims 1-18 and 28-36 is reversed.

REVERSED

MP

JOEL I. ROSENBLATT
445 11TH AVE.
INDIALANTIC FL 32903