Ex Parte Duke

Board of Patent Appeals and Interferences

Feb 12, 2010

10298036 (B.P.A.I. Feb. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte HARRY DUKE 8
___________ 9
10
Appeal 2009-006099 11
Application 10/298,036 12
Technology Center 3600 13
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15
Decided: February 12, 2010 16
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18
Before HUBERT C. LORIN, ANTON W. FETTING, and 19
BIBHU R. MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
Harry Duke (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2
final rejection of claims 1-17 and 19-36, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented an interest bearing gift card ("IBGC") and 10
related methods and systems for using such a card. (Specification 1: Field of 11
the Invention). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 1, which is reproduced below [some paragraphing added]. 14
1. An interest bearing gift card (IBGC) system comprising: 15
(a) at least one IBGC encoded with information 16

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 16, 2007) and Reply Brief (“Reply Br.,” filed September
18, 2007), and the Examiner’s Answer (“Ans.,” mailed September 19,
2007).
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including a unique identification number approved by the 1
American Banking Association for use in a banking debit 2
network; and 3
(b) an IBGC sponsor processing hub computer 4
under IBGC sponsor software control and in 5
communication over a banking debit network with a 6
seller's pre-existing, standard retail point of sale (POS) 7
device, 8
said IBGC sponsor processing computer 9
(i) receiving IBGC data when said IBGC is 10
swiped through said POS device in a 11
transaction, 12
said IBGC data comprising 13
the IBGC identification 14
number, 15
transaction amount, and 16
account balance amount, 17
(ii) having an IBGC account database 18
corresponding to said IBGC, 19
said IBGC account database comprising 20
balance data representative of 21
(1) the sum of an IBGC activation 22
amount and transaction related or 23
investment credits accrued by the 24
IBGC account, less 25
(2) amounts of current or previous 26
transactions, and 27
(iii) having an IBGC credit database 28
under IBGC sponsor bank software control 29
and in communication over an internal 30
IBGC sponsor bank network with the IBGC 31
account database 32
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for updating said IBGC account database on 1
a predetermined periodic basis 2
by transferring data reflecting IBGC 3
transaction related or investment credits on 4
amounts reflected by said IBGC account 5
balance data. 6
THE REJECTION 7
The Examiner relies upon the following prior art: 8
Fleming US 5,953,710 Sep. 14, 1999
Messner US 6,370,514 B1 Apr. 9, 2002
Richards US 6,539,361 B1 Mar. 25, 2003
Claims 1-17 and 19-36 stand rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Messner, Fleming, and Richards. 10
ARGUMENTS 11
The Appellant argue these claims as a group. Accordingly, we select 12
claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 13
The Appellant contends that: the references fail to describe interest 14
accruing to the recipient of a gift card (Appeal Br. 12-13); the references 15
provide no reason to combine their teachings (Appeal Br. 13-14); and the 16
references teach away from the claims (Appeal Br. 14-16). 17
ISSUES 18
The issue of whether the Appellant has sustained its burden of showing 19
that the Examiner erred in rejecting claims 1-17 and 19-36 under 35 U.S.C. 20
§ 103(a) as unpatentable over Messner, Fleming, and Richards turns on 21
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whether it was predictable to pay interest on the unredeemed balance on a 1
gift card. 2
FACTS PERTINENT TO THE ISSUES 3
The following enumerated Findings of Fact (FF) are believed to be 4
supported by a preponderance of the evidence. 5
Facts Related to Claim Construction 6
01. The disclosure contains no lexicographic definition of “gift 7
card.” 8
02. The plain meaning of “gift card” is a gift in the form of a card. 9
03. The only use of the term “interest” in the claims is in the 10
preambles in the phrase “interest bearing gift card.” None of the 11
claims recite to whom such interest is due or paid. 12
04. Claim 1 does recite the term “investment credits” and 13
transferring those in the body of the claim at (iii). There is no 14
recitation in claim 1 of to whom or what such transfers are made 15
other than generically to somewhere in the IBGC database. 16
05. There is no explicit recitation that the interest recited in the 17
preamble is an instance of the investment credit recited in 18
limitation (iii). 19
Facts Related to the Prior Art 20
Messner 21
06. Messner is directed to marketing and distributing gift 22
certificates and vouchers. Messner 1:19-21. 23
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07. Messner defines a gift certificate as an instrument having an 1
account number and a monetary value. Messner 6:24-26. 2
08. Messner explicitly describes a gift card embodiment of its gift 3
certificate. The gift card contains its identifier in the form of an 4
account number. Messner 6:45-46. 5
09. Messner defines a coupon as an instrument that may simply be 6
comprised of an account number, entitling the bearer to a discount 7
on the purchase of goods or services. The discount may be a fixed 8
amount, a specified percentage of the purchase price, or a 9
percentage which increases based on the purchase price. Messner 10
6:59-66. 11
10. Messner sends the gift card information plus the transaction 12
amount to the processing center when the card is swiped. Messner 13
10:14-32. 14
11. Messner describes physical gift card embodiment bearing the 15
account number and the monetary denomination of the certificate. 16
Messner 11:11-13. 17
Fleming 18
12. Fleming is directed to a credit or debit card system that allows a 19
limit to be set on the number of expenditures that can be made and 20
allows the available credit to be determined by someone other 21
than the card issuer. One embodiment is that of a debit card held 22
by a parent who in turn provides a credit card based on the 23
parent’s balance to the parent’s child. Fleming 3:5-15. 24
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13. Fleming describes using conventional existing banking credit 1
card processing systems to process its transactions. Fleming 5:25-2
32. 3
14. Fleming describes statements of account history that describe 4
all transactions including beginning balances, credits, and 5
transaction amounts. Fleming 3:12-63. 6
15. Fleming describes paying interest on the balance in a debit 7
account. Fleming 14:30-39. 8
Richards 9
16. Richards is directed to an automated banking machine at which 10
a user may conduct transactions. Richards 3:10-12. 11
17. Richards describes the practice of earning interest on account 12
balances. Richards 2:7-11. 13
Facts Related To The Level Of Skill In The Art 14
18. It is generally known to those of ordinary skill that some 15
financial compensation such as interest is often paid for the use of 16
another party’s funds. 17
Facts Related To Secondary Considerations 18
19. The Appellant provides two references describing a roundtable 19
discussion on stored value cards and a letter from VISA to the 20
FDIC. Nothing in either reference suggests that the system in 21
claim 1 would be unworkable or that a consumer would not find 22
such a system useful. 23
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PRINCIPLES OF LAW 1
Obviousness 2
A claimed invention is unpatentable if the differences between it and 3
the prior art are “such that the subject matter as a whole would have been 4
obvious at the time the invention was made to a person having ordinary skill 5
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 6
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 7
In Graham, the Court held that that the obviousness analysis is 8
bottomed on several basic factual inquiries: “[(1)] the scope and content of 9
the prior art are to be determined; [(2)] differences between the prior art and 10
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 11
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 12
U.S. at 406. “The combination of familiar elements according to known 13
methods is likely to be obvious when it does no more than yield predictable 14
results.” KSR, 550 U.S. at 416. 15
ANALYSIS 16
The Appellant’s primary argument is that the art fails to describe an 17
interest bearing gift card. Appeal Br. 12. To address this we must first 18
construe what an interest bearing gift card means. The Specification 19
provides no lexicographic definition. FF 01. The plain meaning of “gift 20
card” is a gift in the form of a card. FF 02. The only use of the term 21
“interest” in the claims is in the preambles in the phrase “interest bearing gift 22
card.” None of the claims recite to whom such interest is due or paid. FF 23
03. So an interest bearing gift card is simply a gift in the form of a card that 24
in some manner bears interest. 25
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Claim 1 does recite the term “investment credits” and transferring those 1
in the body of the claim at (iii). There is no recitation in claim 1 of to whom 2
or what such transfers are made other than generically to somewhere in the 3
IBGC database. FF 04. There is no explicit recitation that the interest 4
recited in the preamble is an instance of the investment credit recited in 5
limitation (iii). FF 05. Thus, the claim does not even specify that any such 6
interest is credited rather than charged to the holder. 7
The Appellant first argues that in Messner the interest does not accrue to 8
the holder of the card. Appeal Br. 12. However, as we just found, the claim 9
does not specify to whom interest accrues. The Appellant next argues hat 10
the card becomes a potential investment vehicle. Appeal Br. 13. However, 11
apart from the recitation of investment credits there is no recitation of an 12
investment vehicle in claim 1. The only requirement of limitation (iii) in 13
which such investment credits are recited is that the system have a credit 14
database which updates balances based on transaction or investment credit 15
data. Clearly this is in the form of an alternative limitation, which is met at 16
least by Messner’s transactional updates. Thus, the argument regarding an 17
investment vehicle is not commensurate with the scope of the claim. 18
The Appellant also argues that the claimed card may be given as a gift 19
by a third party. Appeal Br. 13. But this is exactly the nature of Messner’s 20
gift card. FF 08 & 11. 21
Next the Appellant discusses Fleming, which is arguably the most 22
relevant reference. Fleming explicitly recites paying interest on the balance 23
in an account. FF 15. The Appellant argues that Fleming pays the parent 24
rather than the child. To understand this argument, one must understand that 25
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Fleming describes providing two linked cards to a parent and child, where 1
the child’s purchases are funded by the parent’s card account. FF 12. 2
Again, this argument is not commensurate with the scope of the claim 3
because the claim does not specify the recipient of any such interest. 4
The Appellant next argues that Fleming describes a debit card and that 5
such a debit card differs from a gift card. Appeal Br. 13. However nothing 6
in the claim precludes a debit card being given as a gift. Further, a debit 7
card has a funds balance from which purchases are transacted, much as any 8
card used for gifts. 9
The Appellant next argues that the claim does not rely on credit ratings 10
or credit limits. Appeal Br. 13. This argument is not commensurate with the 11
scope of the claim since the claim also does not recite the absence of such 12
credit ratings or limits. 13
As to the argument regarding motivation to combine the art, we agree 14
with the Examiner that Fleming describes a mechanism for refilling cards 15
such as those in Messner (Ans. 3-4), and therefore describes potential 16
implementation details that one of ordinary skill would look to in 17
implementing Messner’s gift cards. The Appellant argues that the Examiner 18
essential found it predictable to give interest to anyone for any type of 19
account. Appeal Br. 14. This argument is unsupported by the Examiner’s 20
findings. To the extent the Examiner found that it was predictable to pay 21
interest to anyone from whom funds were held until consumed, we would 22
agree that centuries of financial practice have shown the predictability of 23
paying interest for the use of another party’s funds. FF 18. 24
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The Appellant next argues that the references teach away from the claim. 1
First the Appellant contends that Messner only teaches paying interest to the 2
issuer. This is not relevant because it is Fleming that describes paying 3
interest to the account owner. The Appellant next argues that Fleming’s 4
child, as the card holder, does not receive the interest. Again, the claim does 5
not specify to whom interest is paid, or even that interest is paid. 6
Finally, the Appellant points to other references as evidence of teaching 7
away. The Appellant provides two references describing a roundtable 8
discussion on stored value cards and a letter from VISA to the FDIC. 9
Nothing in either reference suggests that the system in claim 1 would be 10
unworkable or that a consumer would not find such a system useful. FF 19. 11
The Appellant argues that the references show that the first reference does 12
not discuss interest and the second reference describes paying interest as less 13
profitable. Neither reference describes the payment of interest as being 14
unworkable or even undesirable from the standpoint of the consumer. 15
What a reference teaches or suggests must be examined in the 16
context of the knowledge, skill, and reasoning ability of a 17
skilled artisan. What a reference teaches a person of ordinary 18
skill is not, as Syntex's expert appears to believe, limited to 19
what a reference specifically "talks about" or what is 20
specifically "mentioned" or "written" in the reference. Under 21
the proper legal standard, a reference will teach away when it 22
suggests that the developments flowing from its disclosures are 23
unlikely to produce the objective of the applicant's invention. In 24
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). [**22] A 25
statement that a particular combination is not a preferred 26
embodiment does not teach away absent clear discouragement 27
of that combination. In re Fulton, 391 F.3d at 1199-1200. … a 28
prior art reference that does not specifically refer to one element 29
of a combination does not, per se, teach away. If it did, only 30
references that anticipate could be used to support an 31
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obviousness analysis. However, prior art references that are 1
capable of rendering an invention obvious under a section 103 2
analysis are not limited to reference that also anticipate the 3
patent at issue. 4
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 5
2005). Thus a lack of discussion regarding interest is not a teaching away 6
and reduced profitability is not a teaching away, but actually an incentive, 7
from the standpoint of the consumer. 8
CONCLUSIONS OF LAW 9
The Appellant has not sustained its burden of showing that the Examiner 10
erred in rejecting claims 1-17 and 19-36 under 35 U.S.C. § 103(a) as 11
unpatentable over Messner, Fleming, and Richards. 12
DECISION 13
To summarize, the rejection of claims 1-17 and 19-36 under 35 U.S.C. 14
§ 103(a) as unpatentable over Messner, Fleming, and Richards is sustained. 15
No time period for taking any subsequent action in connection with this 16
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 17
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AFFIRMED 19
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mev 23
SCHWEGMAN, LUNDBERG & WOESSNER, P.A. 24
P.O. BOX 2938 25
MINNEAPOLIS MN 55402 26