Ex Parte Lefkowith

Board of Patent Appeals and Interferences

Oct 29, 2007

09681815 (B.P.A.I. Oct. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID LEFKOWITH
____________

Appeal 2007-2312
Application 09/681,815
Technology Center 3600
____________

Decided: October 29, 2007
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
This appeal arises from the Examiner’s Final Rejection, mailed February 17,
2006. Appellant filed an Appeal Brief in support of the appeal on July 17, 2006
and filed a “revised Argument section” (Rvsd Arg.) to the Brief on August 24,

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2006. An Examiner’s Answer to the Appeal Brief was mailed on October
19, 2006.
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a method and system for providing rebates to automobile
owners which is said to woo new car buyers to purchase a new car from them.
(Specification 1: [0001])
Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A method for providing rebates to automobile owners based on
purchases made at participating retailer locations, the method
comprising:

providing an automobile to a customer wherein the automobile
has been acquired by the customer;

providing the customer with a customer identification badge
containing a plurality of customer information;

electrically receiving the customer information stored within
the customer identification badge at a point of sale computer;
electrically transmitting point of sale purchase information and the
customer information over a computer network to a computer at a
rebate processing center remote from the point of sale computer; and

providing a rebate to the customer wherein the rebate is
calculated based on the purchase information, and wherein the
customer identification badge expires after a pre-determined time
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interval if the customer does not verify that he or she continues to
possess the automobile.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:

Schilling 5,359,182 Oct. 25, 1994
Kanter 5,537,314 Jul. 16, 1996
Ovadia 5,612,527 Mar. 18, 1997
Bricaud 6,149,466 Nov.21, 2000
DeWolf 2002/0032626A1 Mar. 14, 2002

The following rejections are before us for review.
1. Claim 1-3, 6-10, 13-15, and 18-21 are rejected under 35 U.S. § 103(a) as being
unpatentable over Kanter in view of DeWolf.

2. Claims 11, 12, 22, and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kanter in view of DeWolf in view of Schilling.

3. Claims 4 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kanter in view of DeWolf in view of Ovadia.

4. Claims 5 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kanter in view of DeWolf in view of Bricaud.

ISSUE
The issue before us is whether Appellant has sustained its burden of showing
that the Examiner erred in rejecting the claims on appeal as being unpatentable
under 35 U.S.C. § 103(a) over Kanter in view of DeWolf. More specifically,
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Appellant argues that the prior art fails to teach a customer identification badge
that expires after a predetermined time interval if the customer does not verify that
he or she continues to possess the automobile (Rvsd Arg,, 2), and that Kanter and
DeWolf each fail to teach, disclose, or suggest updating the customer identification
badge to reflect that the customer continues to possess the automobile (Rvsd
Argument., 3, 4).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Kanter discloses a “participant's account number is a unique account
number of the participant, such as the participant's social security number, and is
encoded in a magnetic stripe or similar on a plastic card…” (Kanter, col., 17, ll.
54-57) and this customer identification badge is used as part of a referral
recognition system in an incentive program offered by merchants (Kanter, col. 12,
ll. 49-54).
2. DeWolf discloses an asset information registry which can be applied to
vehicles and record maintenance (DeWolf p.10, [0107]) which we find to be an
incentive for the sale of the vehicle like the referral recognition system (FF 1) is to
Kanter.
3. The Examiner found that:

DeWolf discloses that an asset record of what the user
owns can be maintained at time of transaction via a smart
card:
"[0109] In one embodiment, the vehicle asset record is
transferred from the manufacturer or dealer to the buyer
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or other party. The transfer of the asset record can be
done in numerous ways. In one embodiment, the asset
record is transferred via a digital medium, such as, floppy
disk, zip disk, tape drive, CD, DVD, smart card, etc. In a
preferred embodiment, the asset record is transferred
over a computer network, such as the Internet. Using the
Internet allows the manufacturer or dealer to make the
vehicle asset record available to customers or other
interested parties even if the are remotely located".

Final Rejection pp. 8-9.

4. DeWolf discloses as part of its Background of the Invention “a need still
exists for an efficient method for asset and information management where data is
not lost after a transfer of ownership” (DeWolf p.1, [0007] ) which emphasizes the
importance the system places on the need to keep the ownership status updated.

5. DeWolf discloses that (1) the “Global Asset Information Registry
(GAIR) is maintained and accessed by the asset owners and by any combination of
organizations and individuals having a relationship to these assets”
(DeWolf p.1, [0011]); and (2) “the owner 116 may receive data about the asset or
update data related to the asset” (DeWolf p.3, [0039]) which we interpret as
meaning that the owners have access to the GAIR and can update it with changes,
such as in ownership status.

6. DeWolf discloses that the GAIR service “could be offered for a specific
time period…” (DeWolf p.11, [0114]) which we read as being a predetermined
time interval.
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7. DeWolf discloses “[t]ransactions, regarding the exchange of ownership
rights, for example, would be incorporated into the system. Exchanges of objects
would then have an audit-able trail that would relate to ownership over time”
(DeWolf p.8, [0090]). The tracking of exchange of ownership rights can be
applied to the sale of a vehicle (DeWolf p.10, [0101]).

8. DeWolf discloses that “the creator or owner of the initial vehicle asset
record, the manufacturer, would grant various access privileges to particular asset
records to various individuals and organizations depending on their ownership
status…” (DeWolf [0110]).

PRINCIPLES OF LAW
Under 35 U.S.C. § 103, a claimed invention is unpatentable if 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.” KSR Int’l v.
Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007); Graham v.
John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 466 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17, 148 USPQ at 467. See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at
1391.
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the
same reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill. Sakraida
and Anderson's-Black Rock are illustrative-a court must
ask whether the improvement is more than the
predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396.

ANALYSIS
We affirm the rejection of claims 1-23 under 35 U.S.C. § 103(a). Appellant
does not provide a substantive argument as to the separate patentability of claims
3-12, and 15-23 that depend from claims 1 and 13, respectively, which are the sole
independent claims for each group. Since Appellant argues independent claims 1
and 13 as a group, we address only claim 1 as representative of the independent
claims and, for the reasons that follow, we affirm the rejection of claims 1 and 13.
We also affirm the rejections of dependent claims 3-12, and 15-23 since Appellant
has not challenged such with any reasonable specificity (See In re Nielson, 816
F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987)). Also, Appellant argues
the separate patentability of dependent claims 2 and 14, and we affirm the rejection
of these claim for the reasons as set forth infra.
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Appellant argues “Kanter and DeWolf each fail to teach, disclose, or suggest
a customer identification badge that expires after a predetermined time interval if
the customer does not verify that he or she continues to possess the automobile, as
each of independent claims 1 and 13 recite.” (Rvsd Argument., 2) We disagree.
We begin by noting that Appellant does not argue that the combination of
Kanter and DeWolf made under 35 U.S.C. § 103(a) is improper, but rather that
each reference fails to teach the claimed feature of the customer identification
badge expiring as forth, supra. We thus address the 35 U.S.C. § 103(a) rejection in
the context of whether this limitation is found in one of Kanter and DeWolf.
We find that DeWolf does disclose a customer badge that expires after a
predetermined time interval if the customer does not verify that he or she continues
to possess the automobile as required by the claims. First, in DeWolf, a smart card
can be used to transfer a record of an asset owned by a holder of the card (FF 3),
and thus the smart card is a customer identification badge. Appellant does not
challenge this point. (Rvsd Argument., 3)
Second, we find that in DeWolf, the registry service associated with the
smart card may be set to expire after a predetermined period lapses (FF 6). In
addition, in DeWolf, the smart card, via the registry system with which it is
associated, does effectively expire if the customer does not verify that he or she
continues to possess the automobile as required by the claims. This is because: (1)
the smart card in DeWolf is tied to a predetermined time interval (FF 6), and (2)
the access privileges in the smart card are also tied to ownership (FF 8). Thus, if
the user has access to the system, then he/she must be the present owner of the
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asset (FF 8) and, at that point in time of use, the predetermined time period could
not have elapsed. Common sense tells us that once the user updates the record to
change the ownership to another, then privileges tied to that user will expire. See
KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397. As Kanter’s badge is tied to a
specific user uniquely (FF1), privileges tied to that badge or card would logically
expire upon change of ownership. Whether the loss of privileges occurs because
no update is made by the user before time expires, as claimed, or occurs because
the user has affirmatively inputted an updated change of ownership causing the
period to expire as of the time of the update, is not seen to be a patentable
difference. In either case, the predetermined time period expires as the result of a
change of ownership caused by some required action of the user.
Regarding claims 2 and 14, Appellant argues Kanter and DeWolf fail to
contemplate “updating an ownership attribute associated with the vehicle asset
record.” (Rvsd Arg., 4) We disagree. DeWolf discloses a system which involves:
(1) “[t]ransactions, regarding the exchange of ownership rights” (FF 7), and (2)
that the owner 116 may update data about the asset (FF 5). Thus, the requirements
of claims 2 and 14 are met by at least these items in DeWolf. We therefore sustain
the rejection of claims 2 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Kanter in view of DeWolf.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-23 under 35 U.S.C. § 103(a) as unpatentable over Kanter and
DeWolf.
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DECISION
The decision of the Examiner to reject claims 1-23 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) (2006).
AFFIRMED

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