Ex Parte Carlson et al

Patent Trial and Appeal Board

Jul 20, 2017

11960173 (P.T.A.B. Jul. 20, 2017)

United States Patent and Trademark Office
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.
11/960,173 12/19/2007 Mark Carlson 80083-719192 (027000US) 4030
66945 7590 07/24/2017
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
ipefiling@kilpatricktownsend.com
EDurrell @ kilpatrickto wnsend .com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK CARLSON and PETER CIUREA1
Appeal 2015-007673
Application 11/960,173
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MATTHEW S. METERS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 5—11, 13, 16—21, 24—26, 28, 30-32, 34, 35, 37-40
which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
1 According to Appellants the Real Party In Interest is Visa U.S.A., Inc.
Appeal 2015-007673
Application 11/960,173
THE INVENTION
The Appellants’ claimed invention is directed to generating a coupon
targeted to an individual consumer (Spec., para. 6). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A method comprising:
detecting, by a server computer associated with a payment
processing network located between an issuer and an acquirer,
purchase activity associated with an individual consumer using an
account at the issuer, the payment processing network configured to
process credit card and debit card transactions;
storing, by the server computer associated with the payment
processing network, the purchase activity as consumer transaction
data associated with the individual consumer;
referencing, by the server computer associated with the
payment processing network, the consumer transaction data associated
with the individual consumer stored as part of the payment processing
network to generate an electronic coupon targeted to the individual
consumer;
determining, by the server computer associated with the
payment processing network, from the consumer transaction data
associated with the individual consumer stored as part of the payment
processing network, a location of a prior transaction conducted by the
individual consumer over the payment processing network;
determining, by the server computer associated with the
payment processing network, from the consumer transaction data
associated with the individual consumer stored as part of the payment
processing network, a time of the prior transaction conducted by the
individual consumer over the payment processing network;
generating by the server computer associated with the payment
processing network, an electronic coupon based on the location of the
prior transaction and within a predetermined time of less than one
hour from the time of the prior transaction conducted over
the payment processing network, wherein the electronic coupon
includes a bar code configured to be electronically scanned from a
display of a mobile device of the individual consumer for
redemption of the electronic coupon;
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Appeal 2015-007673
Application 11/960,173
transmitting by the server computer associated with the
payment processing network, the electronic coupon within the
predetermined time of less than one hour from the time of the prior
transaction conducted over the payment processing network, to the
mobile device of the individual consumer over a communications
network; and
processing, using the server computer associated with the
payment processing network, a purchase transaction utilizing the
electronic coupon over the payment processing network.
THE REJECTIONS
The following rejections are before us for review:
1. Claim 34 is rejected under 35 U.S.C. § 112, first paragraph, as
failing the written description requirement to show possession of the claimed
invention.
2. Claims 1,9-11, 13, 16, 21, 24, 25, 28, 30-32, 34, 35, and 37-
40 are rejected under 35 U.S.C. § 103(a) as unpatentable over Aggarwal (US
7,013,286 Bl; Mar. 14, 2006), Fowler (US 7,953,630 B2; May 31, 2011),
and Fossen McConnell (US 2006/0175403 Al; Aug. 10, 2006).
3. Claims 5, 7, 8, 17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Aggarwal, Fowler, Fossen McConnell, and
Phillips (US 2006/0270421 Al; Nov. 30, 2006).
4. Claims 6 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aggarwal, Fowler, Fossen McConnell, Phillips, and
Perttila (US 2004/0243519 Al; Dec. 2, 2004).
5. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Aggarwal, in view of Fowler and in further views of Fossen McConnell
and Mechaley (US 2008/0003987 Al; Jan. 3, 2008).
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Appeal 2015-007673
Application 11/960,173
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner has determined that the limitation in claim 1 for
“generating the electronic coupon only if the volume of purchases utilizing
the payment card exceeds a predetermined volume” lacks support in the
Specification to show possession of the invention (Ans. 4, 16, 17).
In contrast, the Appellants argue that this rejection is improper and
that support for the above cited claim limitation is found in the Specification
at paragraph 86 of the Specification (App. Br. 9, Reply Br. 2, 3).
We agree with the Examiner. Here, the claim limitation at issue
requires “generating the electronic coupon only if the volume of purchases
utilizing the payment card exceeds a predetermined volume”. In contrast,
the Specification at paragraph 86 only cites examples where such a coupon
may be generated, and not specifically excluding the coupon from being
generated in other ways. For this reason, this rejection is sustained.
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the prior art does not teach or suggest the claim limitation for: “detecting,
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-007673
Application 11/960,173
by a server computer associated with a payment processing network located
between an issuer and an acquirer” (App. Br. 14—16, Reply Br. 5—7)
In contrast, the Examiner has determined that the above cited claim
limitation is shown by Fowler at cols. 8:39-67, 9:1—6, 12:28—30, 14:63—67,
15; 1—7, and 18:29-38 (Ans. 6, 18).
We agree with the Appellants. Here, Fowler at the above citations
fails to disclose the argued claim limitation. For example, Fowler at col.
8:53—59 shows transmitting first data to a “marketing host controller” and
second data to one of a “financial institution”, “intermediate processor”, or
“another institution” for processing. This citation however fails to
specifically disclose “detecting, by a server computer associated with a
payment processing network located between an issuer and an acquirer”.
“For this reason, this rejection of claim 1 and its dependent claims is not
sustained. Claims 13 and 21 contain a similar limitation, and the rejection of
this claim and its dependent claims is not sustained for these same reasons.
CONCFUSIONS OF FAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claim 34 is rejected under 35 U.S.C. § 112, first paragraph
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims 1, 5—11, 13, 16—21, 24—26, 28, 30-32, 34, 35, 37^40
under 35 U.S.C. § 103(a) as listed in the Rejections section above.
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Appeal 2015-007673
Application 11/960,173
DECISION
The Examiner’s rejection of claims 1, 5—11, 13, 16—21, 24—26, 28,
30-32, 35, and 37^40 is reversed. The Examiner’s rejection of claim 34 is
sustained.
AFFIRMED-IN-PART
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