Ex Parte Reinhart

Patent Trial and Appeal Board

Oct 14, 2014

11838116 (P.T.A.B. Oct. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CRAIG LANGDON REINHART
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Appeal 2012-0030851
Application 11/838,1162
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–9 and 11–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
September 29, 2011) and Reply Brief (“Reply Br.,” filed November 28,
2011), and the Examiner’s Answer (“Ans.,” mailed October 26, 2011).
2 The real party in interest, identified by Appellant, is Random Generation
Marketing LLC. App. Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention “relates generally to managing business
transactions and, more particularly, but not exclusively to enabling a
business to manage a financial goal of the business by randomly selecting
users of the business to receive a rebate based, in part, on transactions by a
plurality of users of the business” (Spec. 1, ll. 10–13).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. A method for managing user transactions with a
business, comprising:
[(a)] each time that the business acquires a new user,
randomly selecting, by a network device, a respective existing
user from among a plurality of existing users of the business
based on a user selection mechanism;
[(b)] assigning an account of the new user to the
selected existing user;
[(c)] determining a rebate mechanism based, in part, on
revenues obtained from transactions with the business by the
new user;
[(d)] employing the rebate mechanism to determine a
rebate; and
[(e)] providing the rebate to the selected existing user.

REJECTIONS
Claims 1–9 and 11–20 are provisionally rejected on the ground of
non-statutory obviousness-type double patenting as unpatentable over
claims 1–23 of co-pending application Serial No. 11/838,121.3

3 We treat, as inadvertent error, the Examiner’s inclusion of cancelled
claim 10 among the rejected claims before us for review. Ans. 5.
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Claims 1–9 and 11–20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanter (US 5,537,314, iss. July 16, 1996) and Chilcoat
(US 2004/0103022 A1, pub. May 27, 2004).

ANALYSIS
Double Patenting
Appellant does not present any response to the provisional rejection of
claims 1–9 and 11–20 on the ground of non-statutory obviousness-type
double patenting. Therefore, the Examiner’s rejection is summarily
sustained.
Obviousness
Independent claims 1, 2, 9, and 17
Appellant argues independent claims 1, 2, 9, and 17 together (App.
Br. 11–14). We select claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because neither Kanter
nor Chilcoat discloses or suggests “that each time a business acquires a new
user, a respective existing user is randomly selected and a rebate is provided
to the randomly selected existing user based, in part, on revenues obtained
from transactions with the business by the new user,” i.e., limitations (a) –
(d), as recited in claim 1 (App. Br. 11–14; see also Reply Br. 1–2). Instead,
we agree with, and adopt the Examiner’s response to Appellant’s argument,
as set forth at pages 6–7 and 8–9 of the Answer.
Kanter discloses a system in which a sponsoring company motivates
its participants to make referrals on behalf of the company by issuing credit
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Application 11/838,116

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and/or awards to the participants based on sales made by individuals that the
participants refer to the sponsoring company (see Kanter, col. 16, l. 60 –
col. 17, l. 5). Kanter describes that an individual may become a participant
either directly or via referral by another participant (see Kanter, col. 20, l. 50
– col. 21, l. 32).
The Examiner acknowledges that Kanter does not explicitly disclose
that the existing user is selected at random from a plurality of existing users
of the business. And the Examiner cites Chilcoat to cure the deficiency of
Kanter (Ans. 6–7).
Chilcoat discloses a similar referral and tracking system (see Chilcoat
Abstract), and describes that, if a new user does not have a referrer, the new
user is assigned as a referee to an existing user “based upon predefined
protocols” (Chilcoat ¶ 39). The Examiner notes that the Chilcoat reference
does not explicitly teach that the predefined protocol is a random
protocol/selection. However, the Examiner takes official notice that the
concept of random selection of an entity is old and well-known in the art,
and that a person of ordinary skill in the art at the time of the invention
would have recognized random selection as one such protocol (Ans. 7).
We agree.
Appellant argues that the Examiner overlooks the explicit recital in
claim 1 “that each time that the business acquires a new user, an existing
user is randomly selected to receive a rebate” (App. Br. 13). However, as
the Examiner observes, Chilcoat describes “a scenario that allows new users
to become participants directly with the business instead of being referred by
an existing user” and that “each time, a new user becomes a participant
directly, he/she is assigned to an existing user based upon predefined
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protocol,” which a person of skill in the art would recognize may be a
random protocol (Ans. 8–9).
Appellant argues that Chilcoat’s “predefined protocols” are
“antithetical to the recited random selection by virtue of being ‘predefined’”
(Reply Br. 2). Yet, there is nothing to preclude predefining a protocol as a
random selection.
Appellant’s argument that “Kanter and Chilcoat teach away from
randomly selecting an existing user each time that the business acquires a
new user . . . .” (Reply Br. 2) also is unpersuasive. Appellant asserts that
“[t]he pyramid schemes of Kanter and Chilcoat are based on the principle
that an existing user will be more likely to recruit new users if the existing
user receives a reward for recruiting the new users” (id.). But Appellant
does not point to any passage in Kanter and/or Chilcoat that criticizes,
discredits, or otherwise discourages the random selection of an existing user
— which is required to establish a teaching away. See In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (A teaching away occurs when a reference
discourages one skilled in the art from following the claimed path, or when
the reference would lead one skilled in the art in a direction divergent from
the path that was taken by the applicant); see also In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (The prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of the
alternatives when the disclosure does not criticize, discredit, or otherwise
discourage the solution claimed).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the
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Examiner’s rejection of independent claims 2, 9, and 17, which fall with
claim 1.
Dependent claims 5, 7, 11, 15, and 19
Each of claims 5, 7, 11, 15, and 19 depends from one of independent
claims 1, 9, and 17, and recites that the existing user who receives the rebate
is randomly selected from a subset of existing users, which is defined by
particular criteria. Claim 5 recites that the subset is “based on at least one of
a length of service with the business or a level of purchases made.”
Claims 7 and 15 recite that “each existing user in the subset has generated at
least a defined amount of revenue,” and claim 15 further recites that the
defined amount of revenue is generated within a defined time period.
Claims 11 and 19 recite that the subset is “based on at least one of an overall
financial purchase amount by an existing user exceeding a determined
amount or a length of time that an existing user has been performing
purchase transactions with the business.”
The Examiner cites column 21, lines 35–55 as disclosing the claimed
subject matter of claims 5, 7, 11, 15, and 19 (Ans. 9). However, we agree
with Appellant that rather than describing criteria for defining a subset of
existing users from which the user who receives the rebate is randomly
selected, the cited portion of Kanter describes criteria for determining the
amount of the rebate, i.e., the commission percentage, which will be
awarded to the existing user (App. Br. 15–16).
Therefore, we do not sustain the Examiner’s rejection of claims 5, 7,
11, 15, and 19 under 35 U.S.C. § 103(a).
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Dependent claim 13
Claim 13 depends from claim 9, and recites that “the rebate is
determined based, in part, on a range limited randomly determined
percentage of revenue generated by the business transactions of a plurality of
new users whose accounts are assigned to the selected existing user.”
The Examiner does not address the feature recited in claim 13 in the
Final Office Action. However, in the Response to Argument, the Examiner
asserts that Kanter teaches this feature at column 21, lines 35–55 (Ans. 9).
As set forth above, the cited portion of Kanter describes criteria for
determining the amount of the rebate, i.e., the commission percentage, which
will be awarded to the existing user. Kanter describes that the levels a
participant may earn commissions from, and the percentages associated with
each level, are variable according to each sponsoring company’s desires, and
that the percentages may increase as certain levels of sale-dollar values are
reached. But we fail to see how, and the Examiner does not explain how,
this discloses or suggests the subject matter of claim 13.
Therefore, we do not sustain the Examiner’s rejection of claim 13
under 35 U.S.C. § 103(a).
Dependent claims 3, 4, 6, 8, 12, 14, 16, 18, and 20
Each of claims 3, 4, 6, 8, 12, 14, 16, 18, and 20 depends from one of
independent claims 1, 9, and 17. Appellant does not present any arguments
for the separate patentability of these dependent claims.
Therefore, we sustain the Examiner’s rejection of claims 3, 4, 6, 8, 12,
14, 16, 18, and 20 under 35 U.S.C. § 103(a) for the same reasons set forth
above with respect to the independent claims from which they depend.

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DECISION
The Examiner’s rejection of claims 1–9 and 11–20 on the ground of
non-statutory obviousness-type double patenting is affirmed.
The Examiner’s rejection of claims 1–4, 6, 8, 9, 12, 14, 16–18, and 20
under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 5, 7, 11, 13, 15, and 19 under
35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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