Ex Parte Lefebvre et al

Board of Patent Appeals and Interferences

Jun 16, 2010

09688694 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER R. LEFEBVRE,
CHRISTOPHER JAMES KONEN SR.,
MATTHEW JOSEPH KEANE, and
ELISSA BUDISCHAK
____________

Appeal 2009-008215
Application 09/688,694
Technology Center 3600
____________

Decided: June 16, 2010
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on June 8, 2010.
Appeal 2009-008215
Application 09/688,694

STATEMENT OF THE CASE
Christopher R. Lefebvre, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 19, 22-29, and 32-38. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention relates to a method and system for retaining customer
loyalty by “presenting incentives that are tailored to a particular customer
and profitable to the provider.” Specification 1:6-7. “The present invention
determines a set of incentives based on customer segmentation, card
segmentation, call type as well as other factors.” Specification 5:5-7.
There are two independent claims; claim 19 to a method and claim 29
to a system. Claim 19 reproduced below, is illustrative of the subject matter
on appeal.
19. A computer implemented method for providing one or more
tailored incentives to a customer in response to a customer request, the
computer implemented method comprising the steps of:
receiving a request from a customer, wherein the request is
received by a provider or provider representative;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Mar. 13, 2007) and Reply Brief (“Reply Br.,” filed Feb. 6, 2009),
and the Examiner’s Answer (“Answer,” mailed Dec. 9, 2008).
Appeal 2009-008215
Application 09/688,694
3
retrieving account data associated with the customer in response
to the request where the account data is displayed on a graphical user
interface, wherein the account data is verified for the customer;
identifying the request as a request type from a list of
predetermined request types, at a type module, where the request type
identifies the customer's current situation;
identifying the customer as a customer segment, at a customer
segment module, where the customer segment identifies the
customer's past behavior;
identifying one or more incentives, at an incentive module,
based on the request type, the customer segment and one or more
profitability factors associated with the provider of the one or
more incentives; and
offering the customer at least one of the identified one or more
incentives for retaining the customer in response to the request,
wherein the request is a request to terminate a relationship with
the provider;
wherein the steps of identifying the request as a request type,
identifying the customer as a customer segment and identifying one or
more incentives are performed in response to the step of receiving a
request from a customer; and
wherein the one or more incentives comprises at least one
product or service offered by a financial institution.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
McCausland US 5,822,410 Oct. 13, 1998
Steve Gasner, Forging a Link Between Retention and Profits, Credit
Card Management at 84 (Apr. 1992). (Gasner)
The following rejections are before us for review:
1. Claims 19, 22-29, and 32-38 are rejected under 35 U.S.C. §103(a) as
being unpatentable over McCausland and Gasner.
Appeal 2009-008215
Application 09/688,694
4
2. Claims 19 and 22-28 are rejected under 35 U.S.C. §101 as being
directed to non-statutory subject matter.

ISSUES
Has the Examiner shown that the claimed process is directed to
nonstatutory subject matter?
Does McCausland disclose
receiving a request from a customer, wherein the request is
received by a provider or provider representative .... identifying
the request as a request type from a list of predetermined
request types, at a type module, where the request type
identifies the customer's current situation ... wherein the request
is a request to terminate a relationship with the provider ?
(Claim 19).

FINDINGS OF FACT
The §103(a) rejection
Taking claim 19 as representative, the Examiner takes the position
that McCausland discloses all the claim limitations but for “wherein the one
or more incentives comprises at least one product or service offered by a
financial institution” (the last clause in claim 19), for which Gasner is cited.
The Examiner found that
[i]t would have been obvious to a person skilled in the art at the time
of the applicant's invention to modify McCausland to include
providing products offered by a financial institution as retention
incentives if McCausland’s method was implemented to solve the
retention problem for a financial services company instead of a
cellular company, since at that time, financial services incentives
would be more valuable retention tools to those customers rather than
cellular services related incentives.
Answer 4-5.
Appeal 2009-008215
Application 09/688,694
5
The Appellants dispute the Examiner’s position that McCausland
discloses all the claim limitations except, “wherein the one or more
incentives comprises at least one product or service offered by a financial
institution”. App. Br. 9. Consistent therewith, the Appellants identify
limitations which the Appellants believe the Examiner has not shown to be
disclosed as claimed. App. Br. 9.
One of the limitations identified as not having been addressed is a
request to terminate a relationship with a provider. In the words of claim 19,
the method comprises,
receiving a request from a customer, wherein the request is
received by a provider or provider representative .... identifying
the request as a request type from a list of predetermined
request types, at a type module, where the request type
identifies the customer's current situation ... wherein the request
is a request to terminate a relationship with the provider.
(Claim 29 is a “system” claim providing for elements functioning in manner
paralleling the steps in claim 19. E.g., the system of claim 29 provides for a
“type module for identifying the request as a request type from a list of
predetermined request types, where the request type identifies the customer's
current situation” and “an incentive module ... wherein the request is a
request to terminate a relationship with the provider.” )
According to the Examiner, McCausland discloses a request to
terminate a relationship with a provider because it discloses “contract end is
one of the problem factors for which customers call ORU’s [organization
representative users]”, citing to the Abstract; col. 3, ll. 62-65; col. 11, ll. 40-
46; col. 14, ll. 1-6; col. 15, ll. 1-4; and, Fig. 7. Answer 3. The Appellants
disagree.
Appeal 2009-008215
Application 09/688,694
6
However, a customer either allows a contract to lapse thereby
automatically terminating the contract or the customer will sign up for
another term. Accordingly, there is nothing in the disclosure of
McCausland that addresses “receiving a request from a customer ...
wherein the request is a request to terminate a relationship with the
provider.” The Office Action has failed to properly address this
limitation.
App. Br. 10.

ANALYSIS
The §101 rejection
We will not sustain the rejection under §101.
The rejection simply restates the machine-or-transformation test for
determining whether a claimed process is a statutory process under §101. In
re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 77
USLW 3442 (U.S. Jun. 1, 2009) (No. 08-964). But there is no further
explanation. See Ans. 2 and 8-9. Further explanation was necessary to
support a prima facie case of nonstatutory subject matter because a plain
reading of the claim reveals that the process subject matter as claimed
includes various apparatus limitations (e.g., “computer implemented,” “type
module,” “incentive module”). Because the Examiner has not addressed and
explained why these various apparatus limitations, in the claims, are
insufficient to tie the claimed method to a particular machine and thus
(satisfying the machine prong of the Bilski test), a prima facie case of
nonstatutory subject matter for the claimed subject matter under §101 has
not been established in the first instance.

Appeal 2009-008215
Application 09/688,694
7
The §103(a) rejection
We have reviewed McCausland and find that we are in agreement
with the Appellants.
The disclosure in McCausland which was relied upon as showing a
request to terminate a relationship with the provider, does in fact describe a
process for addressing churn, i.e., the deactivation of an active customer
account. The McCausland process seeks to ameliorate churn by identifying
problems, for example, “Contract End” and “Dropped Calls” (see Table 2),
indicative of customer dissatisfaction and performing responsive actions to
address the problems (see col. 9, ll. 24-54). To that end, McCausland also
describes procedures by which ORUs may propose specific offers to
customers on behalf of the organization. E.g., col. 10, ll. 36-48.
While McCausland does disclose “reactive” contacts by a customer
with an ORU (e.g., col. 3, ll. 61-65), no specific action, that the customer
might take, is disclosed. Accordingly, McCausland does not expressly
disclose a customer making a request to terminate a relationship with the
provider as claimed. Even if one of ordinary skill in the art could infer
requests to terminate a relationship with a provider given McCausland’s
disclosure of “reactive” customer contacts (in light of the churn factors), the
claimed subject matter requires more than simply a request to terminate a
relationship with the provider. The claimed method calls for “identifying the
request as a request type from a list of predetermined request types, at a type
module, where the request type identifies the customer's current situation ...
wherein the request is a request to terminate a relationship with the
provider.” Even if one of ordinary skill in the art could infer a request is
made with a provider, given McCausland’s disclosure of “reactive”
Appeal 2009-008215
Application 09/688,694
8
customer contacts, the prior art combination would not lead one of ordinary
skill in the art to identify the request as a request type from a list of
predetermined request types, at a type module, where the request type
identifies the customer's current situation, notwithstanding that to meet the
claim the request must not only be identified at a type module identifying the
customer's current situation but must be a request to terminate the
relationship with a provider.
For the foregoing reason, we find that a prima facie case of
obviousness for the claimed subject matter has not been established.

DECISION
We reverse the §101 and §103(a) rejections.

ORDER
REVERSED

mev

HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
1900 K STREET, N.W.
SUITE 1200
WASHINGTON DC 20006-1109