Ex Parte Ishizuka

Board of Patent Appeals and Interferences

Feb 27, 2009

09725511 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROAKI ISHIZUKA
____________

Appeal 2009-0320
Application 09/725,511
Technology Center 3600
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Decided:1 March 2, 2009
____________

Before HUBERT C. LORIN, DAVID B. WALKER, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 09/725,511

2
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-462. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for using information obtained
from an off-line transaction for communication related to an on-line
transaction whereby the characteristics of a purchaser are analyzed when
considering whether or not to grant authorization for a transaction.
(Specification 1:8-11.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A method of communicating,
comprising the steps of:
storing a customer's financial information in a
supplier computer system based on an off-line
transaction of a completed purchase or lease of
equipment between a customer and a supplier;
beginning an on-line purchase, subsequent
to the completed off-line transaction, by the
customer with the supplier and communicating to a

2 The Appeal Brief indicates that the rejections of claims 1-43 are being
appealed, which we deem to be a typographical error given that the Appeal
Brief goes on to account for all pending 46 claims, listing them all in the
“GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL,” and
further argues claim 44 separately on page 10 of the Appeal Brief.
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server computer by the customer;
determining whether the customer is an
acceptable credit risk for the on-line purchase
using the customer's financial information in the
supplier computer system and which is based on
the off-line transaction;
communicating to the customer that the on-
line purchase has been approved, when said
determining step determines that the customer is
an acceptable credit risk.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Stein US 5,826,241 Oct. 20, 1998
Gardenswartz US 6,055,573 Apr. 25, 2000
Boesch US 6,092,053 Jul. 18, 2000

The following rejections are before us for review.
The Examiner rejected claims 1-7, 16-19, 22-30, 39-42, 45, and 46
under 35 U.S.C. § 103(a) as unpatentable over Gardenswartz in view of
Boesch.
The Examiner rejected claims 8-15, 20-21, 31-38, and 43-44 under 35
U.S.C. § 103(a) as unpatentable over Gardenswartz in view of Boesch and
further in view of Official Notice.

ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 1-7,
16-19, 22-30, 39-42, 45, and 46 on appeal under 35 U.S.C. § 103(a) as
unpatentable over Gardenswartz in view of Boesch on the grounds that a
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person with ordinary skill in the art would understand that the value contract
in Gardenswartz works like credit in that it is usable as a form of payment,
e.g., points redeemable for cash?
Has Appellant shown that the Examiner erred in rejecting claims 8-15,
20-21, 31-38, and 43-44 under 35 U.S.C. § 103(a) as unpatentable over
Gardenswartz in view of Boesch and further in view of Official Notice in
that a person with ordinary skill in the art would understand that at the time
of the invention a variety of bill presentment options were known to exist?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification describes:
An optional feature of the invention is an
indication as to how credit may be extended or
money utilized to allow the future purchase of
supplies for the imaging device. A field 340
allows the user to have the price of purchased
supplies be automatically debited from a bank
account. A field 342 allows supplies to be
automatically debited from a third party credit card
such as Visa, Master Card, American Express, or
any other third party credit card. Moreover, as an
alternative, if the user falls behind on payments to
the supplier or lessor, there may be a provision or
agreement that a third party credit card can be
automatically billed as a back-up manner of
attempting to collect on good[s] or services which
have been provided. Field 344 indicates whether it
is permitted for supplies to be purchased on credit.
(Specification 9:22-30.)

2. The Examiner found:
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5. Gardenswartz teaches delivering a targeted
advertisement online based on the customer's off-
line purchase history, but does not expressly
disclose that the purchases are on-line, offline or
both. However, Boesch teaches a system and
method where certain consumer information is
stored on a server and is provided to a merchant to
allow the consumer to purchase a product or
service on-line in an easy and safe manner
(Abstract).

(Answer 4.)

3. Gardenswartz describes:
[t]he value contract …[as] a promotional incentive
in which the consumer is offered a reward for
complying with a particular behavioral pattern
such as a predefined change in behavior or the
continuance of an established behavior. Any type
of reward may be offered. The reward may be
"points" which may correspond to, or be redeemed
for, cash, cash equivalents, frequent flier miles,
minutes of long distance time, minutes of Internet
service provider time, coupons, discounts, prizes,
or free products, for example.
(Gardenswartz, col. 14, ll. 51-60.)

4. Gardenswartz describes that “[t]he eligibility of each consumer [to
receive a value contract] may depend on any desired factor(s) including …
whether the consumer's observed offline purchase history meets certain
criteria ….” (Gardenswartz, col. 15, ll. 23-26.)
5. Boesch discloses:
If the consumer elects to purchase the item,
the CIS software forwards information to the
merchant's computer. The information includes
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information from the merchant's offer and the
consumer's personal information (e.g., credit card
number, address, shipping address) which is stored
on the CIS. The merchant's computer then uses the
information to complete the transaction.
If the consumer is unknown to the CIS
software, the CIS software sends a form to the
consumer's computer which is displayed within the
area reserved for the wallet within the merchant's
Web page. The form prompts the consumer to
provide the purchasing information to complete the
transaction. Once the consumer provides
sufficient information to complete the transaction,
the CIS software prompts the consumer to
purchase the item.
(Boesch, col. 3, l. 54 - col. 4, l. 2.)

6. The Examiner’s Answer notes:
[the] Examiner identified a prior art (see U.S.
Patent No. 5,826,241, issued to Stein et al.,
October 20, 1998) for features related to bill
distribution and presentment. Stein teaches a
system and method for making payment and
authenticating transactions over the internet.
In conclusion, Examiner notes that these
claims focus exclusively on bill distribution and
presentment and are unrelated to the concept of
using previously acquired off-line information in
making a credit risk determination to a current
transaction. Hence, the Examiner takes an Official
Notice of these claims (see claims rejection
above).
(Answer 11.)

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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., 127 S. Ct. 1727,
1734 (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, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
We affirm the rejection of claims 1-46.
Claims 1-7, 16-19, 22-30, 39-42, 45, and 46
Initially, we note that the Appellant argues independent claims 1 and
24 together as a group. Correspondingly, we select representative claim 1 to
decide the appeal of these claims. The Appellant does not provide a
substantive argument as to the separate patentability of claims 2-7, 16-19,
22, 23, 25-30, 39-42, 45, 463 that depend from claims 1 and 24, which are

3 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See,
37 C.F.R. § 41.37(c)(1)(vii) (2007).
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the sole independent claims among those claims. Therefore, claims 2-7, 16-
19, 22, 23, 25-30, 39-42, 45, 46 fall with claims 1 and 24. See,
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellant argues that,
Gardenswartz is directed to delivering a targeting
advertisement based on a customer database.
Gardenswartz merely utilizes a server that can
provide a targeted price offer advertisement to a
customer, but Gardenswartz does not disclose or
suggest any determination of whether the customer
is an acceptable credit risk for an on-line purchase,
based on a prior off-line transaction.
(Appeal Br. 6.)

Appellant’s arguments however are not persuasive as to error in the
rejection because the Appellant is attacking the Gardenswartz reference
individually when the rejection is based on a combination of references to
both Gardenswartz and Boesch, and the Examiner found that Boesch, not
Gardenswartz, discloses the on-line purchase transaction and the customer's
financial information is used in transaction based on an off-line transaction
(FF 2). See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403
F.2d 754, 757-58 (CCPA 1968).
But, this is not to say that Gardenswartz is devoid of the required step
of determining whether the customer is acceptable based on a given
standard. According to Gardenswartz, the eligibility of each consumer to
receive a value contract may depend on whether the consumer's observed
offline purchase history meets certain criteria (FF 4). While the value
contract arguably is not credit, it nevertheless works like credit in that it is
usable as a form of payment, e.g., points redeemable for cash (FF 3). As
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required by the claims, in Gardenswartz, a determination is made in advance
of giving a customer a value contract based on eligibility requirements
(FF 4). Thus, while Gardenswartz discloses awarding a value contract and
not credit to a customer, the manner in which the value contract is given to a
specific customer is the same because a determination step using given
criteria is used in both circumstances.
Appellant next argues that:
The "value contract" in Gardenswartz is directed to
providing a consumer with a reward as an
incentive for the consumer to visit a retail store.
The claims are clearly directed to an "on-line
transaction", not an in-store transaction,
subsequent to an off-line transaction. Thereby,
Gardenswartz in fact teaches away from the
above-noted claimed feature.
(Appeal Br. 8.)

We disagree with Appellant’s limited reading of Gardenswartz.
While Gardenswartz discloses use of the value contract at a bricks and
mortar store, it also discloses that the value contained in the value contract
can be used for “minutes of Internet service provider time” (FF 3). We
interpret redeeming the value contract for minutes of Internet service
provider time as an on-line related transaction, and thus are not persuaded by
Appellant’s argument.
Finally, Appellant argues that “… no teachings [(sic)] in Boesch are
believed to cure the above-noted deficiencies in Gardenswartz.” (Appeal
Br. 8). We disagree with Appellant.
The Specification describes that as an indication as to how credit may
be extended or money utilized to allow a future purchase, it is first
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determined if such purchases can to be automatically debited from a third
party credit card such as Visa, Master Card, American Express, or any other
third party credit card (FF 1). In the same manner, Boesch discloses
determining whether the customer has a credit card on file before allowing
the purchase to occur without prompting the consumer to provide the
purchasing information to complete the transaction (FF 5). Thus, both
Appellant and Boesch disclose determining whether the involved user has a
credit card on file as a form of criteria to awarding credit.
Claims 8-15, 20-21, 31-38, and 43-44
Appellant argues that “[w]ith respect to dependent claims 8-15, 20-21,
31-38, and 43-44, applicant previously traversed the basis for the Official
Notice and requested that prior art be cited for the features recited therein.
That has not even been addressed.” (Appeal Br. 10.)
A review of the record shows that Appellant did timely traverse the
Official Notice in his paper filed September 13, 2007 made against the
Official Notice taken in the first instance in the previous Office Action dated
June 16, 2007. In this paper Appellant states:
with respect to dependent claims 8-15, 20-21, 31-
38, and 43-44, applicant traverses the basis for the
Official Notice and require that prior art be cited
for the features recited therein. In that respect
applicant reiterates Gardenswartz teaches away
from the claimed features, and thus applicant
request clear motivation be set forth to modify
Gardenswartz to meet such further claim features
in view of the new art to be cited for the
propositions for which Official Notice was taken.

(After Final Response dated Sep. 13, 2007.)

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However, Appellant’s argument as to improper treatment of his
traversal of the Official Notice is not persuasive as to error in the rejection
for two reasons. First, the Appellant did not specifically point out the
supposed errors in the Examiner's taking of Official Notice, includ[ing]
stating why the noticed fact is not considered to be common knowledge or
well-known in the art. See 37 CFR [§] 1.111(b).” An adequate traverse
must contain adequate information or argument to create on its face a
reasonable doubt regarding the circumstances justifying Examiner's notice of
what is well known to one of ordinary skill in the art. In re Boon, 439 F.2d
724, 728 (CCPA 1971). That has not been done here.
Second, the Examiner’s Answer provides the requested evidence by
referencing Stein along with some articulated reasoning of how the Official
Notice is being applied to the combination under 35 U.S.C. § 103(a) (FF 6),
which we conclude sufficiently articulates a required reasoning. Therefore,
Appellant’s argument is not persuasive as to error in the rejection.

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred
in rejecting claims 1-7, 16-19, 22-30, 39-42, 45, and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Gardenswartz in view of Boesch and claims 8-
15, 20-21, 31-38, and 43-44 under 35 U.S.C. § 103(a) as unpatentable over
Gardenswartz in view of Boesch and further in view of Official Notice.
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DECISION
The decision of the Examiner to reject claims 1-46 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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