Ex Parte Juetten et alDownload PDFPatent Trial and Appeal BoardOct 27, 201411236281 (P.T.A.B. Oct. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEANETTE JUETTEN, TODD GUNDRUM, CINDY RINK, RENEE ANDERSON, CINDY HOLLENSTEIN, JOHN KREJCAREK, TIFFANY NEELY, SEAN REYNOLDS, BILL ZICHE, GLENN CHRISTENSON ____________ Appeal 2012-007604 Application 11/236,2811 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–34. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1According to the Appellants, the real party in interest is Mattel, Inc., the assignee of record. (Appeal Br. 3.) Appeal 2012-007604 Application 11/236,281 2 STATEMENT OF THE CASE The Appellants’ invention relates to an activity based, online loyalty program. (Spec. ¶ 2.) Illustrative Claim 1. A system for increasing consumer affinity for a brand associated with a sponsor, comprising: a server computer hosting a Web site, wherein the server computer includes: a processor; a database; and a storage medium containing a set of instructions, wherein the processor is configured to read the storage medium and execute the set of instructions, the set of instructions being configured to: store data in the database, wherein the data comprises: a user account having a reward point balance associated therewith for a user; and one or more sub-user accounts affiliated with the user account, each affiliated sub-user account having a reward point balance associated therewith for an affiliated sub-user; credit, upon initiation by the sponsor, one or more reward points to the user account when the user performs a first activity defined by the sponsor; credit, upon initiation by the sponsor, one or more reward points to the affiliated sub-user account when the affiliated sub-user performs a second activity defined by the sponsor; distribute, upon initiation by the user, one or more reward points from the user account to at least one of the affiliated sub-user accounts; and redeem, upon initiation by the affiliated sub-user, one or more reward points to the sponsor in exchange for merchandise. Appeal 2012-007604 Application 11/236,281 3 Prior Art Kohl US 2002/0042744 A1 Apr. 11. 2002 Lotvin US 2004/0230495 A1 Nov. 18, 2004 Nordstrom US 2005/0091385 A1 Apr. 28, 2005 Etuk US 7,257,367 B2 Aug. 14, 2007 Cohagan US 2010/0088174 A1 Apr. 8, 2010 Rejections The Examiner rejects claims 1–9, 15–19, 22, 25–28, 33, and 34 under 35 U.S.C. § 103(a) as unpatentable over Etuk and Cohagan. The Examiner rejects claims 10–14, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over Etuk, Cohagan, and Lotvin. The Examiner rejects claims 12–14 and 24 under 35 U.S.C. § 103(a) as unpatentable over Etuk, Cohagan, Lotvin, and Nordstrom. The Examiner rejects claims 29 and 30 under 35 U.S.C. § 103(a) as unpatentable over Etuk, Cohagan, and Kohl. The Examiner rejects claims 20, 21, 31, and 32 under 35 U.S.C. § 103(a) as unpatentable over Etuk, Cohagan, and Nordstrom. ANALYSIS Rejection of Independent Claim 1 Independent claim 1 sets forth limitations regarding crediting and distributing reward points associated with “a user account” and “one or more sub-user accounts.” (Claims App.) The Appellants paraphrase the relevant limitations as “crediting, upon initiation by the sponsor, one or more reward points to the user account when the user performs a first activity defined by Appeal 2012-007604 Application 11/236,281 4 the sponsor; and distributing, upon initiation by the user, one or more reward points from the user account to at least of one of the affiliated sub-user accounts.” (Appeal Br. 24, 25.) The Examiner’s findings and the Appellants’ arguments are presented primarily in the context of a parent being the “user” and the parent’s child being the “sub-user.” (See e.g., Appeal Br. 21–35, Answer 4–18.)2 We follow this same approach in our analysis. Specifically, we use the term “parent” to denote the “user” recited in claim 1, and we use the term “child” to denote the “sub-user” recited in claim 1. The Appellants explain that, in the parent-child context, claim 1 sets forth two paths for a child to earn reward points. (See Appeal Br. 25.) With one path (hereinafter the “sponsor-to-child credit path”), the child performs an activity, and the sponsor credits reward points to the child. (Id.) With the other path (hereinafter the “parent-to-child transfer path”), the parent transfers reward points to the child. (Id.) Claim 1 also sets forth a “sponsor- to-parent credit path,” wherein the parent performs an activity and the sponsor credits reward points to the parent. (Id.) Claim 1 is rejected as obvious over Etuk in view of Cohagan. (Answer 4.) The Examiner finds that Etuk includes a sponsor-to-child credit path for reward points. (Id. at 5.) And the Examiner finds it would have been obvious, in view Cohagan, to modify Etuk to include a sponsor-to- parent credit path for reward points and to include a parent-to-child transfer path for reward points. (Id.at 6.) 2 We note that children are not the only possible class of sub-users for the Appellants’ system. (See e.g., Spec. ¶ 39, describing an embodiment wherein an employer is the “user” and its employees are “sub-users.”) Appeal 2012-007604 Application 11/236,281 5 The Appellants argue the proposed combination is improper because: Etuk teaches away from a parent-to-child transfer of reward points; a parent- to-child transfer path of reward points would render Etuk unsatisfactory for its intended use; and a parent-to-child transfer path of reward points would change Etuk’s mode of operation. (See Appeal Br. 22–26.)3 According to the Appellants, “[t]he purpose of the Etuk system is to reward educational accomplishments of a child.” (Appeal Br. 22.) Etuk achieves this objective via its sponsor-to-child credit path of reward points. Specifically, a developer of an educational activity provides reward points to the child when the child participates in an educational activity. (Id.) The Appellants assert “[a]llowing a user, such as a parent, to arbitrarily transfer accumulated points into a child’s account would be contrary to rewarding educational accomplishments because the child would have earned points without even participating in an educational activity.” (Appeal Br. 22.) The Examiner finds that a parent’s transfer of points to a child in the Etuk system can be related to educational goals, and thus not “arbitrary.” 3The Appellants further argue that Etuk provides ample mechanisms for a parent to provide points to the child’s account, and ample mechanisms for a child to access the account regardless of location. (Reply Br. 2, 4.) The Appellants assert that, because of these already provided “ample mechanisms,” there would be no reason to modify Etuk in the proposed manner. (Id.) We note the Appellants advance these “ample mechanisms” arguments for the first time in the Reply Brief, whereby they are waived. (See Appeal Br. 22–28.) We nonetheless observe that the Appellants do not explain, persuasively, how these pre-existing mechanisms would discourage enhancing the Etuk system as proposed by the Examiner. Hence these arguments, even if considered, are not persuasive. Appeal 2012-007604 Application 11/236,281 6 (Answer 14.) The Examiner explains that, for example, when a child receives a favorable report card, the parent can transfer points into the child’s account as a reward. (Id.) This enhancement would not be contrary to, but attuned with, an objective of rewarding a child’s educational accomplishments. The Appellants also assert the proposed modification would “detract from the child’s participation in the educational activity.” (Appeal Br. 23.) The Appellants contend introducing the teachings of Cohagan “would expand the sources of the child’s points to other accounts within a geographical area.” (Id.) Consequently, “the child would be able to obtain points through non-educational activities.” (Id.) The Examiner finds expanding point sources within a geographical area “would not detract from the child’s participation in the educational activity.” (Answer 14.) Instead, such geographical expansion could allow a child to perform educational activities at different locations. (Id. at 15.) The Examiner explains that, for example, a child could receive points for attending a state science fair. (Id.) This enhancement would bolster, not impede, a child’s participation in educational activities. We agree with the Examiner that Etuk does not teach against enhancements involving a parent-to-child transfer of reward points or a geographical expansion of point sources. Neither enhancement is disparaged nor discouraged by Etuk. Indeed, the enhancements proposed by the Examiner would promote Etuk’s preferred embodiment of rewarding educational accomplishments of a child. Appeal 2012-007604 Application 11/236,281 7 The Appellants’ arguments further imply that Etuk’s intended purpose and principle mode of operation both correlate solely with the concept of “rewarding educational accomplishments.” (See e.g., Appeal Br. 22, 23.) We note that the Appellants frame both Etuk’s intended purpose and its principle mode of operation too narrowly. A correct correlation would involve the general concept of rewarding points to a participant. In any event, as indicated above, the enhancements proposed by the Examiner would promote Etuk’s preferred embodiment of rewarding educational accomplishments of a child. Accordingly, even with an adoption of the Appellants’ too-narrow framework, such “intended purpose” and “mode of operation” arguments are not persuasive. Thus, we sustain the Examiner’s rejection of independent claim 1. Rejection of Independent Claims 22, 33, and 34 Independent claims 22, 33, and 34 each set forth limitations, akin to those in independent claim 1, regarding crediting and distributing (or transferring) reward points associated with “a user account” and “one or more sub-user accounts.” (Claims App.) The Examiner rejects independent claims 22, 33, and 34 on the same grounds as independent claim 1, as obvious over Etuk in view of Cohagan. (Answer 5, 6.) Although independent claims 22, 33, and 34 are discussed under different headings, the Appellants repeat the same arguments made in connection with independent claim 1. (See Appeal Br. 26–29.) Specifically, the Appellants argue the proposed combination is improper because: Etuk teaches away from a parent-to-child transfer of reward points; a parent-to- child transfer of reward points would render Etuk unsatisfactory for its Appeal 2012-007604 Application 11/236,281 8 intended use; and a parent-to-child transfer of reward points would change Etuk’s mode of operation. (Id.) As was explained above in our analysis of independent claim 1, we are not persuaded by these arguments. Thus, for the same reasons we sustain the Examiner’s rejection of independent claim 1, we sustain the Examiner’s rejection of independent claims 22, 33, and 34. Rejection of Dependent Claims 2–9, 15–19, and 25–28 Dependent claims 2–9, 15–19, and 25–28 are rejected on the same grounds as their base independent claims 1 and 22, as obvious over Etuk in view of Cohagan. (Answer 5, 6.) The Appellants discuss these claims under separate headings, but the arguments advanced infer they fall with their base claims. (See Appeal Br. 25, 27.) Specifically, the Appellants comment these dependent claims “add further elements,” but do not identify these elements and/or explain why they impact the obviousness rejection. (Id.) As such, the Appellants offer only a conclusory statement, and there is no argument or evidence for us to address. Otherwise, the Appellants assert “the reasons stated above” for the respective independent claim. (Id.) Our analysis above explains why those reasons are unpersuasive of Examiner error, and need not be repeated here. Thus, for the same reasons we sustain the Examiner’s rejection of independent claims 1 and 22, we sustain the Examiner’s rejection of dependent claims 2–9, 15–19, and 25–28. Appeal 2012-007604 Application 11/236,281 9 Rejection of Dependent Claims 10-14, 20, 21, 23, 24, and 30-32 The rest of the dependent claims are rejected as obvious over Etuk and Cohagan, and further in view of Lotvin, Nordstrom, and/or Kohl. (See Answer 10–13.)4 For each of these rejections, the Appellants argue that the Examiner’s proposed combination does not include the claimed parent-to- child transfer path and/or does not include the claimed sponsor-to-parent path. (See Appeal Br. 29–35.) The Appellants assert that, because Etuk and Cohagan do not disclose or suggest the parent-to-child transfer path set forth in independent claims 1 and 22, they also do not disclose or suggest the subject matter of the claims depending therefrom. (See Appeal Br. 29–35.) Along this same train of thought, the Appellants assert Lotvin, Nordstrom, and/or Kohl do not make up for the shortcomings of Etuk and Cohagan. (Id.) As indicated above, the Etuk-Cohagan combination is proper and encompasses the subject matter of independent claims 1 and 22. Hence, there are no shortcomings for Lotvin, Nordstrom, and/or Kohl to cure. Therefore, we are not persuaded by arguments that the Examiner’s proposed combinations do not include the claimed parent-to-child transfer path. The Appellants assert that the supplemental prior art does not disclose a sponsor-to-parent credit path for reward points. (See Appeal Br. 29–35.) However, as alluded to above, the Examiner finds Cohagan teaches the 4Claims 10–14, 23, and 24 are rejected as obvious over Etuk, Cohagan, and Lotvin (Answer 10); claims 12–14 and 24 are rejected as obvious over Etuk, Cohagan, Lotvin, and Nordstrom (Id. at 11); claims 29 and 30 are rejected as obvious over Etuk, Cohagan, and Kohl (Id. at 11); and claims 20, 21, 31, and 32 are rejected as obvious over Etuk, Cohagan, and Nordstrom (Id. at 12). Appeal 2012-007604 Application 11/236,281 10 sponsor-to-parent credit path for reward points, and that it would have been obvious to modify Etuk to include this feature. (Answer 6.) The Appellants do not argue, persuasively, that this feature is absent in Cohagan and/or is not properly combinable with Etuk. (See Appeal Br. 21–28.) Accordingly, Lotvin, Nordstrom, and/or Kohl need not disclose a sponsor-to-parent credit path for reward points. Therefore, we are not persuaded by arguments that the Examiner’s proposed combinations do not include the claimed sponsor- to-parent credit path. Thus, we sustain the Examiner’s rejection of dependent claims 10-14, 20, 21, 23, 24, and 30-32. DECISION We AFFIRM the Examiner’s rejections of claims 1–34. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED5 llw 5Should there be further prosecution of this application, the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014. Copy with citationCopy as parenthetical citation