Ex Parte MacLean et al

Patent Trial and Appeal Board

Jun 25, 2013

09818400 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TREVOR ROBERT MACLEAN, JERRY PHILIP,
STEPHEN PAUL OGDEN, and
DARLENE HIGBEE CLARKIN
____________

Appeal 2011-011459
Application 09/818,400
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-4, 13, 14, and
21-381. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6.
The invention relates generally to apparatus and methods for
managing and exchanging points that are issued and redeemed in the context
of a loyalty program (LP) (Spec. 1, ll. 2-4).
Claims 1 and 13, reproduced below, are further illustrative of the
claimed subject matter.
1. A method of managing a first points issuer and a
second points issuer, wherein first points are issued by the first
points issuer and differ from second points that are issued by
the second points issuer, the method implemented by a
computer and comprising the steps of:
(a) a customer setting a first number of the first points to
be sold;
(b) the first points issuer setting the point withdrawal rate
of the first points and the second points issuer setting the
deposit rate of the second points, each of said withdrawal rate
and of said deposit rate being indicative of the monetary value
of each of the first points and each of the second points
respectively;
(c) determining, by a processor, a second number of the
second points based upon the point withdrawal rate of the first
points issuer, the deposit rate of the second points issuer and the
first number of the first points; and
(d) exchanging, by the processor, the first number of the
first points from the first point issuer to the second points
issuer.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 24, 2011) and Reply Brief (“Reply Br.,” filed Jun. 27, 2011),
and the Examiner’s Answer (“Ans.,” mailed Apr. 26, 2011).
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13. A method of managing first and second points
issuers, each of the first points issuer issuing first points and the
second points issuer issuing second points at exchange rates set
by the first and second points issuers respectively, the first
points differing from the second points, the method
implemented by a computer and comprising the steps of:
(a) entering first and second exchange rates by the first
and second points issuers respectively;
(b) entering a customer's request for buying first points
and selling second points;
(c) determining, by a processor, the presence or absence
of each of the first and second exchange rates; and
(d) blocking, by the processor, the selling and/or buying
of points in the absence of either of the first or second exchange
rates.

Claims 1-4, 13, 14, and 21-38 are rejected as anticipated under 35
U.S.C. § 102(e) as being anticipated by Postrel (US 6,594,640 B1; iss. Jul.
15, 2003).
Alternatively, claims 1-4, 13, 14, and 21-38 are rejected as anticipated
under 35 U.S.C. § 102(e) by Lee (US 2001/0054006 A1; pub. Dec. 20,
2001).
We AFFIRM-IN-PART.
ANALYSIS
Rejection of Independent Claim 12 as anticipated by Postrel
We are not persuaded the Examiner erred in asserting that Postrel
discloses “the second points issuer setting the deposit rate of the second

2 We note that the Appellants argue claims 1-4, 21-31, and 33-38 together as
a group (App. Br. 10). Correspondingly, we select representative claim 1 to
decide the appeal of these claims, with remaining claims 2-4, 21-31, and 33-
38 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
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points,” as recited in independent claim 1 (App. Br. 11-13; Reply Br. 2).
Appellants argue that Postrel fails to disclose a “deposit rate” because each
of the rates relied on by the Examiner correspond to a rate of redemption of
points from a reward server, which at best, corresponds to a “withdrawal
rate” (App. Br. 11-12). We disagree. Postrel discloses that merchants may
accept points as consideration (col. 7, ll. 37-41) based on an exchange rate
(col. 3, ll. 33-35). Postrel discloses that its system utilizes two conversion
rates (see fig. 5) and makes explicit that these rates provide relative
consideration to merchants involved in transactions (col. 3, ll. 31-35). The
first rate is a reward server conversion rate which we find corresponds to the
claimed “withdrawal rate.” The second rate is the merchant conversion rate
which we find corresponds to the claimed “deposit rate.” That is, the
merchant conversion rate is the rate that applies to points that are deposited
into a merchant account (col. 9, ll. 38-44).
Appellants also assert that Postrel fails to disclose “the second points
issuer setting the deposit rate of the second points” because the merchant in
Postrel is not a “second points issuer” (App. Br. 13-14). However, Postrel
discloses that merchants may be air carriers, which are clearly points issuers
commensurate with the scope of independent claim 1 (col. 8, ll. 27-38).
Even so, Appellants’ Specification does not set forth a lexicographic
definition of a “points issuer.” To the extent the Specification describes a
points issuer, it states that “the issuer provides a mechanism by which points
can be deposited or withdrawn from customers (sic) accounts, thereby
effecting a points exchange” (Spec. 11, ll. 13-15). Accordingly, under a
broadest reasonable construction, Postrel’s merchants provide a mechanism
where points can be deposited to effect a points exchange properly, and as
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such, correspond to a “a points issuer,” as recited in independent claim 1.
See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(“[d]uring examination [of a patent application, a pending claim is] given
[the] broadest reasonable [construction] consistent with the specification,
and . . . claim language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art”) (internal citation
and quotations omitted).
We are not persuaded the Examiner erred in asserting that Postrel
discloses “determining… a second number of the second points based upon
the point withdrawal rate of the first points issuer, the deposit rate of the
second points issuer and the first number of the first points,” as recited in
independent claim 1 (App. Br. 14-16). As discussed above, Postrel discloses
a conversion rate from an awards server to the trading server and another
conversion rate from the trading server to the merchant (see fig. 5). Thus,
Postrel discloses “determining… a second number of the second points
based upon the point withdrawal rate of the first points issuer, the deposit
rate of the second points issuer and the first number of the first points,” as
presently claimed.
To the extent, Appellants assert that Postrel does not disclose that
“any sort of number of points that are, in fact, deposited or otherwise
transferred into an awards program” (App. Br. 14), we note that neither
independent claim 1 nor the Specification requires that points be deposited
or transferred into an awards program. See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims). Instead, we find
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independent claim 1 broadly exchanges “the first number of first points from
the first point issuer to the second points issuer,” without any specificity as
to the steps involved in the exchange.
We are also not persuaded the Examiner erred in asserting that Postrel
discloses “exchanging… the first number of the first points from the first
point issuer to the second points issuer,” as recited in independent claim 1
(App. Br. 16-17). Appellants’ argument is based on their initial argument
that Postrel fails to disclose that the second points issuer sets its own deposit
rates (App. Br. 16). However, as discussed above, Postrel discloses a
merchant conversion rate which corresponds to the “deposit rate,” as
presently claimed, and in addition to its reward server conversion rates (see
fig. 5).
For these reasons, we sustain the rejection of claim 1 under 35 U.S.C.
§ 102(e) as anticipated by Postrel. Claims 2-4, 21-31, and 33-38 fall with
claim 1.

Rejection of Independent Claim 133 as anticipated by Postrel
We are persuaded that the Examiner erred in asserting that Postrel
discloses “(c) determining… the presence or absence of each of the first and
second exchange rates; and (d) blocking… the selling and/or buying of
points in the absence of either of the first or second exchange rates” (App.
Br. 19). The Examiner asserts that Postrel discloses these limitations
because “[t]he processor of the reward server may perform actions that may

3 We note that the Appellants argue independent claims 13 and 14 together
as a group. (App. Br. 18). Correspondingly, we select representative claim
13 to decide the appeal of these claims, with remaining claim 14 standing or
falling with claim 13. See 37 C.F.R. § 41.37(c)(1)(vii).
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allow or refuse the requested action” (col. 9, ll. 5-7) and reasons that “if
there is not a conversion rate, there can be not exchanged between points of
different points issuers” [sic] (Ans. 8-9). However, while Postrel may
disclose that the server may fail to perform an action, Postrel does not
disclose determining the presence or absence of exchange rates or blocking a
transaction based upon this determination. In other words, the inaction of
Postrel cannot correspond to explicitly recited determining and blocking
steps. A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). Because the cited section of Postrel does not disclose the
limitations recited by steps (c) and (d), we reverse the rejection of
independent claim 13 and claim 14, depending therefrom.

Rejection of Independent Claim 14 as anticipated by Lee
Affirmance of the anticipation rejection for claims 1-4, 21-31, and 33-
38 based on Postrel renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections
after finding an anticipation rejection to be upheld). As such, we need not
reach the propriety of the rejection of representative claim 1 as anticipated
by Lee.

4 We note that the Appellants argue claims 1-4, 21-31, and 33-38 together as
a group. (App. Br. 21). Correspondingly, we select representative claim 1
to decide the appeal of these claims, with remaining claims 2-4, 21-31, and
33-38 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
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Rejection of Independent Claim 135 as anticipated by Lee
We are persuaded that the Examiner erred in asserting that Lee
discloses “(c) determining… the presence or absence of each of the first and
second exchange rates; and (d) blocking… the selling and/or buying of
points in the absence of either of the first or second exchange rates” (App.
Br. 24). The Examiner relies on Figures 4 and 5 of Lee to disclose these
limitations (Ans. 27-28) and again asserts that “if there is not a conversion
rate, there can be not exchanged between points of different points issuers”
[sic] (Ans. 42). However, Figure 4 merely depicts an exchange rate and
Figure 5 depicts the processed results of a point sales request from a
customer (para. [0042]), neither of which discloses determining the presence
or absence of exchange rates and blocking a transaction based upon this
determination, as the claim requires. See Verdegaal Bros., 814 F.2d at 631.
Because the cited sections of Lee do not disclose the limitations recited by
steps (c) and (d), we reverse the rejection of independent claim 13 and claim
14, depending therefrom.

DECISION
The decision of the Examiner to reject claims 1-4, 21-31, and 33-38
under 35 U.S.C. § 102(e) as anticipated by Postrel is AFFIRMED.
The decision of the Examiner to reject claims 13 and 14 under 35
U.S.C. § 102(e) as anticipated by Postrel is REVERSED.

5 We note that the Appellants argue independent claims 13 and 14 together
as a group. (App. Br. 24). Correspondingly, we select representative claim
13 to decide the appeal of these claims, with remaining claim 14 standing or
falling with claim 13. See 37 C.F.R. § 41.37(c)(1)(vii).
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The decision of the Examiner to reject claims 13 and 14 under 35
U.S.C. § 102(e) as anticipated by Lee is REVERSED.
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).
AFFIRMED-IN-PART

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