Ex Parte Kawan

Board of Patent Appeals and Interferences

Jul 29, 2004

09234889 (B.P.A.I. Jul. 29, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH C. KAWAN
____________
Appeal No. 2004-0013
Application No. 09/234,889
____________
ON BRIEF
____________
Before THOMAS, LEVY, and MACDONALD, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-5, 8, 9, 12-14, 19-25, 27,
31-35, 38-40, 43, 48-57, 60, 68, 72 and 76-79, which are all of
the claims pending in this application.

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Application No. 09/234,889
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BACKGROUND
Appellants' invention relates to a method and system for
tracking smart card loyalty points. An understanding of the
invention can be derived from a reading of exemplary claim 1,
which is reproduced as follows:
1. A method of tracking smart card merchant loyalty program
information for a customer, comprising:
storing loyalty program information in a loyalty register of
a loyalty program application on a purchase log part of a
transaction log on a smart card microcomputer, wherein the
loyalty program application is capable of storing loyalty program
information for a plurality of merchants, each identified by a
unique merchant identifier, in a plurality of loyalty registers
and wherein the loyalty program information includes information
related to transactions with at least one merchant for the
customer and the loyalty register is identified by the unique
merchant identifier associated with the merchant to enable
transactions with the merchant to be matched with the loyalty
register for the merchant;
storing transaction information on the purchase log part of
the transaction log on the smart card microcomputer about
transactions with the merchant for the customer at a merchant
terminal, wherein the transaction information includes the unique
merchant identifier and a unique transaction number associated
with each transaction with the merchant in ascending numerical
order;
comparing the stored transaction information with the stored
loyalty program information at a stand-alone terminal that is
independent of the merchant terminal;
automatically identifying transaction information stored on
the purchase log part of the transaction log at the stand-alone
terminal about at least one transaction with the merchant for
which an associated transaction number is numerically greater
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Application No. 09/234,889
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1 Although the examiner only lists Willmore, Shinjo and Deo in the
statement of the rejection, the examiner additionally relies upon the Carson
textbook and Microsoft Dictionary in the body of the rejection. References not
listed in the statement of the rejection are not routinely considered by the
Board. "Where a reference is relied on to support a rejection, whether or not
in a 'minor capacity,' there would appear to be no excuse for not positively
including the reference in the statement of rejection." In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). However, because both
additional references were also relied upon by the examiner in the final
rejection, and have been argued by appellant in the brief (pages 10-12 and
14), we shall consider the additional references to Carson and Microsoft
than any transaction number for a transaction with the merchant
stored in the stored loyalty program information; and
automatically adding the identified transaction information
to the stored loyalty program information at the stand-alone
terminal.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Deo et al. (Deo) 5,721,781 Feb. 24, 1998
Shinjo et al. (Shinjo) 0,253,240 Mar. 25, 1992
(European Patent)
Willmore 2,274,349 Jul. 20, 1994
(Great Britain Patent)
Carson, College Accounting, Pages 294 and 295, © 1967.
Microsoft Press Computer Dictionary, Third Edition, Page 302 and
439, © 1997.
Claims 1-5, 8, 9, 12-14, 19-25, 27, 31-35, 38-40, 43, 48-57,
60, 68, 72 and 76-79 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Willmore in view of Shinjo, and further
in view of Deo, Carson and Microsoft1.
Appeal No. 2004-0013
Application No. 09/234,889
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Dictionary.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejection,
we make reference to the examiner's answer (Paper No. 20, mailed
April 18, 2003) for the examiner's complete reasoning in support
of the rejection, and to appellant's brief (Paper No. 19, filed
February 18, 2003) for appellant's arguments thereagainst. Only
those arguments actually made by appellant have been considered
in this decision. Arguments which appellant could have made but
chose not to make in the brief have not been considered. See 37
CFR 1.192(a).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellant's arguments set forth in the brief along with the
examiner's rationale in support of the rejection and arguments in
rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we affirm-in-
part. We note at the outset that appellants (brief, page 6) set
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Application No. 09/234,889
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forth 4 groupings of claims. Consistent with appellants
groupings, one claim from each group has been separately argued.
Accordingly, we will follow the groupings as set for by
appellant. We turn first to claim 1 which is representative of
the group consisting of claims 1-5, 8, 9, 12-14, 19-25, 27, 31-
35, 38-40, 43, 48-57, 60, 68 and 72. In rejecting claims under
35 U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness.
See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references to
arrive at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
Appeal No. 2004-0013
Application No. 09/234,889
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These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
From our review of the prior art, we find that Willmore is
directed to a loyalty program used in conjunction with an
electronic point-of-sale (EPOS) system. The retailing system
rewards purchasers for loyalty by providing discounts or other
benefits, based on a customer's purchases. Willmore discloses
that the accumulated data relating to a plurality of purchases,
that is stored on the magnetic card or token, is modified by the
terminal (page 2). From this disclosure of Willmore, we find
that the information stored will be in a transaction log, which
will include the accumulated data from a plurality of purchases.
Willmore further discloses that the terminal may have a history
store which records details of all transactions identified to the
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terminal means (page 4). From this disclosure of Willmore, we
find that the transaction log will include a purchase log. In
addition, we find that although Willmore discloses that a smart
card may be used instead of a magnetic card (pages 2, 5, and 8)
we find that Willmore refers to the smart card as a card having
data which can be written or read (page 8). From this disclosure
of Willmore, we find that although Willmore discloses a smart
card, that the smart card is used as a magnetic card would be
used, and that Willmore does not make use of the capabilities of
the smart card. In addition, we find that Willmore is silent as
to how the purchase history is recorded, and does not disclose
that the transactions are recorded in ascending numerical order.
We further find that in Willmore, the loyalty program
information is stored on the magnetic card or token (pages 2 and
4). From this disclosure, we find that loyalty program
information is stored on the magnetic card, and that the loyalty
program information is stored in a register. However, Willmore
does not disclose that the loyalty program application itself is
stored on the smart card. In addition, although Willmore
discloses the use of the loyalty program for the products of
different manufacturers, Willmore only discloses use of the
loyalty program with a single merchant, and therefore does not
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disclose the system being used with a plurality of merchants,
each having a unique merchant identifier.
Turning to Shinjo, we find that Shinjo is also directed to a
loyalty program used in conjunction with a POS system (col. 1,
lines 1-10). From Shinjo's disclosure of store codes and store
names (figures 3 and 5) we agree with the examiner (answer, page
5) that the disclosure of a store code represents a merchant
identifier. In addition, from the disclosure of Shinjo that a
loyalty program used in conjunction with a POS terminal can be
used with different stores (col. 1, lines 1-10) we find that an
artisan would have been motivated to utilize the loyalty program
of Willmore with plural merchants, each of which has a merchant
identifier, as taught by Shinjo.
Turning to Deo, we find that Deo is directed to an
authentication system for smart card transactions (col. 1, lines
1 and 2). Deo discloses that in conventional smart card systems,
the cards have been designed to hold just one application, such
as a banking/financial application (col. 2, lines 12-14). Due to
little or no standardization in the smart card arena, many
different non-compatible systems are in existence today. This
lack of standardization has impeded efforts to produce a smart
card capable of handling multiple applications (col. 2, lines 21-
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Application No. 09/234,889
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25). It is an object of Deo's invention to provide an
authentication system for ensuring the security of the smart card
and the applications contained thereon (col. 2, lines 41-43). As
stated by the examiner (answer, page 6) Deo discloses (col. 12,
lines 12-22) that each application may be capable of maintaining
data in multiple files. Although we do not agree with the
examiner, (id.) that Deo discloses storing data relating to a
plurality of loyalty programs, we find that in view of the
disclosure of Deo, an artisan would have been motivated to
utilize the capabilities of the smart card of Willmore to store
multiple loyalty applications on the smart card, relating to
different merchants. In view of Deo's disclosure that a
standardized authentication system would allow the capabilities
of smart cards to be used, the use of the authentication system
of Deo in the smart card of Willmore would utilize Willmore's
smart card for handling loyalty programs for multiple merchants.
Turning to the Carson textbook, we agree with the examiner
(answer, page 5) that Carson discloses providing a series of
transactions that are sequentially listed as 151-158. Willmore
is silent as to how the transactions are recorded. From the
disclosure of Carson, we agree with the examiner (id.) that an
artisan would have been taught to record transactions in
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Application No. 09/234,889
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ascending numerical order, to ensure that a user was only awarded
loyalty points one time for a transaction.
Turning to the dictionary definition of a smart card,
provided by the Microsoft Dictionary, we find that the dictionary
definition is cumulative of the teachings of Deo, and consider
the dictionary definition to be surplusage. From our review of
the entire record, we find that the teachings of the prior art
are combinable, as advanced by the examiner. However, for the
reasons which follow, we find that the combined teachings of the
prior art are insufficient to meet the limitations of claim 1.
Claim 1 additionally requires that the stored program information
is compared with the stored transaction information at a stand-
alone terminal, identifying transaction information stored at the
stand alone terminal when the transaction number is numerically
greater that the transaction number of a stored transaction, and
adding the identified transaction to the stored loyalty program
information at the stand alone terminal. The examiner's position
(answer, page 5) is that the purchase transaction can be stored
on the stand-alone terminal. From our review of Willmore, we
find that although Willmore discloses the use of a stand-alone
terminal 14a, Willmore discloses that the stand-alone terminal is
provided for use by the user, for example when first entering the
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store. The terminal reads the accumulated data on the smart card
12, and allows the user to instruct the terminal to perform a
selected function, such as printing out the purchaser's
accumulated point value or details of promotional activities. A
further alternative allows the terminal to modify the accumulated
data by reducing the point value, in return for obtaining a
discount on purchases made at that visit (pages 13 and 14).
Although Willmore discloses that the stand-alone terminal is used
when entering the store, we find that the teachings of Willmore
suggest that the stand-alone terminal could also be used before
leaving the store. Willmore further discloses (page 3) that the
terminal compares identifying data with predetermined data to
determine the required modification of the accumulated data,
i.e., to determine whether loyalty points should be awarded for a
particular purchase. However, we find no teaching or suggestion
that Willmore, the only reference relied upon by the examiner
having a stand-alone terminal, that would have taught or
suggested adding the identified transaction information to the
stored loyalty information at the stand-alone terminal, as
recited in claim 1. Instead, Willmore discloses that the
transaction data is added to the smart card by the terminal 14 or
to the optional loyalty controller. Accordingly, we do not agree
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with the examiner (answer, page 5) that this feature is disclosed
by Willmore at page 14, lines 11-26. From our review of the
portion of Willmore relied upon by the examiner we find that the
passage refers to the operation of the alternative loyalty
controller 40 storing the transaction information, and find no
disclosure in this or any portion of Willmore of adding the
transaction data to the smart card at the stand-alone terminal.
Accordingly, we agree with appellants (brief, page 8) that this
claimed feature is not taught by Willmore.
From all of the above, we find that the combined teachings
of the prior art fails to teach all of the limitations of claim
1. Accordingly, we find that the examiner has failed to
establish a prima facie case of obviousness of claim 1. The
rejection of claim 1 under 35 U.S.C. § 103(a) is therefore
reversed. Independent claim 57 also recites that the identified
transaction is added to the stored loyalty program information at
the stand-alone terminal. Accordingly, the rejection of claims
1, 57, and claims 2-5, 8, 9, 12-14, 19-25, 27, 31-35, 38-40, 43,
48-57, 60, 68 and 72, dependent therefrom, under 35 U.S.C.
§ 103(a) is reversed.
As independent claims 77 and 78 also recite that adding the
transaction data to the smart card at the stand-alone terminal,
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the rejection of claims 77 and 78 under 35 U.S.C. § 103(a) is
reversed.
We turn next to claims 76 and 79. Although these claims
have been listed in separate groups by appellant (brief, page 6),
we observe that the claims have similar arguments. Appellants do
not dispute the combinability of the references, but rather
assert that the combined teachings of the references do not teach
all of the limitations of the claims. From our review of claims
76 and 79, we find that these claims, unlike all of the other
claims before us on appeal, do not recite the use of a stand-
alone terminal at which the identified transaction information is
added to the loyalty program information. Appellants sole
argument with respect to claim 76 (brief, page 12) is that the
combined teachings of the prior art does not describe that:
transaction information is compared with the stored
loyalty program information by an application program
on the smart card microcomputer internally as a
function of the smart card microcomputer independently
of the merchant terminal, that transaction information
stored on the purchase log part of the transaction log
is identified by the application program on the smart
card microcomputer about at least one transaction with
the merchant for which an associated transaction number
is numerically greater than any transaction number for
a transaction with the merchant stored in the stored
loyalty program information, and that the identified
transaction information is added to the stored loyalty
program information by the application program on the
smart card.
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Application No. 09/234,889
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With respect to claim 79, appellants sole argument (brief, page
14) is that the combined teachings of the prior art as a whole
does not describe:
that loyalty program information is stored in a loyalty
register of a loyalty program application in
programmable memory on a smart card microcomputer, that
transaction information is stored on the purchase log
part of the transaction log in programmable memory on
the smart card microcomputer, that the stored
transaction information is compared with the stored
loyalty program information by an application program
in programmable memory on the smart card microcomputer
internally as a function of the smart card
microcomputer independently of the merchant terminal,
that transaction information stored on the purchase log
part of the transaction log is identified by the
application program in programmable memory on the smart
card microcomputer about at least one transaction with
an associated transaction number that is numerically
greater than any transaction number for the merchant
stored in the stored loyalty program information, and
that the identified transaction information is added to
the stored loyalty program information by the
application program in programmable memory on the smart
card microcomputer.
At the outset, we not that instead of reciting the stand-
alone terminal, claims 76 and 79 recite, inter alia, that the
transaction information is compared with the stored loyalty
information on the smart card independently of the merchant
terminal. We make reference to our findings, supra, with respect
to claim 1. In addition, we find that upon storing the loyalty
program application on the smart card as taught by Willmore, as
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Application No. 09/234,889
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taught by Deo, the transaction information and the stored loyalty
program information would be stored on the smart card,
independently of the merchant terminal. Accordingly, we find
that the combined teachings of the prior art suggest the
limitations of independent claims 76 and 79. The rejection of
claims 76 and 79 under 35 U.S.C. § 103(a) is therefore affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-5, 8, 9, 12-14, 19-25, 27, 31-35, 38-40, 43, 48-57, 60, 68, 72,
77 and 78 under 35 U.S.C. § 103(a) is reversed. The rejection of
claims 76 and 79 under 35 U.S.C. § 103(a) is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136
(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
SSL/gjh
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Application No. 09/234,889
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