Ex Parte Salesky et al

Patent Trial and Appeal Board

Feb 26, 2016

12191795 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/191,795 08/14/2008
22918 7590 03/01/2016
PERKINS COIE LLP - PAO General
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Joseph H. Salesky
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
068015-8002.USOl 1518
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH H. SALESKY and PETER MADAMS
Appeal2013-007387 1
Application 12/191,7952
Technology Center 3600
Before BRUCE T. WIEDER, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 17-20, 22-30, and 45-53. We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
Feb. 28, 2013) and Reply Brief ("Reply Br.," filed May 15, 2013), and the
Examiner's Answer ("Ans.," mailed Mar. 15, 2013), Advisory Action
("Adv. Act.," mailed June 26, 2012), and Non-Final Office Action ("Office
Act.," mailed Sept. 24, 2012).
2 Appellants identify Monitise Americas, Inc. as the real party in interest.
Appeal Br. 2.
Appeal2013-007387
Application 12/191,795
We REVERSE.
CLAIMED INVENTION
Appellants' claimed invention "pertains to a system and technique for
providing specifically-timed, targeted promotional offers to individual
credit/debit card users or users of other types of payment accounts, with
timely and specific feedback." Spec. i-f 2.
Claim 1 7, reproduced below with bracketed added annotations, is
illustrative of the subject matter on appeal:
17. A method comprising:
[ (a)] determining in a computer system when a
promotional offer which is associated with a credit/debit card
account of a particular consumer should be released to the
particular consumer;
[ (b)] in response to a determination in the computer system
that the promotional offer should be released to the consumer,
storing a rule representing the promotional offer in
a rules database, the rule specifying the consumer, a
merchant to which the promotional offer applies and a
time frame during which the promotional offer is valid,
and
causing an alert indicating the promotional offer to
be delivered to a mobile device of the particular consumer
via a cellular communications network, the alert indicating
the merchant to which the promotional offer applies and
the time frame during which the promotional offer is valid;
[ ( c)] receiving at the computer system information
representing a plurality of consumer credit/debit transactions;
[ ( d)] comparing in the computer system information
representing each of the consumer credit/ debit transactions to the
rules database to determine if there is a match between any of the
consumer credit/debit transactions and a rule representing a
promotional offer in the rules database;
[ ( e)] in response to identifying a match between one of the
consumer credit/debit transactions and a rule representing a
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Application 12/191,795
promotional offer in the rules database, automatically
transmitting a first message to a financial institution to cause a
transfer of funds to the credit/debit card account of the consumer;
and
[(f)] in response to identifying the match between the one of the
consumer credit/debit transactions and the rule representing the
promotional offer in the rules database, immediately transmitting
a second message to the mobile device of the consumer via a
cellular communications network to notify the consumer of the
transfer of funds.
REJECTIONS
Claims 17-20, 22-30, 45--48, 50, and 52 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nichtberger (US 4,882,675, iss. Nov. 21,
1989), McCarthy (US 4,941,090, iss. July 10, 1990), Humble (US 4,949,256
iss. Aug. 14, 1990), and Gopinath (US 6,996,409 B2, iss. Feb. 7, 2006). 3
Claims 49, 51, and 53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nichtberger, McCarthy, Humble, Gopinath, and Official
Notice.
ANALYSIS
Independent claim 17 and dependent claims 18-20
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 17 under 35 U.S.C. § 103(a) because the
combination ofNichtberger, McCarthy, Humble, Gopinath does not disclose
3 We treat the Examiner's identification of claims 49, 51, and 53 at page 3
of the Answer as inadvertent error, given the separate rejection of these
claims at pages 11-12 of the Answer.
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Application 12/191,795
or suggest limitation (e), as recited in claim 17. Appeal Br. 9--11; Reply Br.
2-3.
In rejecting claim 17, the Examiner cites Nichtberger at column 17,
lines 52-54 and column 18, lines 20-41 as disclosing automatically
transmitting a first message to trigger a transfer of funds to the payment
account of the consumer. Ans. 5, 12-13. The Examiner finds Nichtberger
discloses that once the store's local processor determines a match occurs
between the transaction information and coupon rules, "a message is sent
(all information is distributed) to the financial institution (central CPU 16)
which triggers the transfer of funds between the appropriate accounts." Ans.
13.
The difficulty with the Examiner's reasoning is two-fold. First, the
transfer of funds, as disclosed by Nichtberger, is a credit to a merchant's
account, not "to the credit/debit card account of the consumer," i.e.,
limitation ( e ), as recited in claim 17. See Nichtberger, col. 18, 11. 20-29
("the CPU 16 debits the manufacturer's 'account' ... and credits the
merchant's 'account' [based on redeemed coupon data]").
At page 5 of the Answer, the Examiner acknowledges that
Nichtberger does not explicitly disclose that the customer's account is a
credit/debit card account (Ans. 5), or that "a value (funds) associated with
the offer is transferred to the customer's account" (id. at 6). And, instead,
the Examiner relies on McCarthy to cure the deficiency. Id. at 5---6 (citing
McCarthy, col. 3, 1. 59---col. 4, 1. 9).
McCarthy describes an accumulation of cash value for consumers
based upon point-of-sale transactions. McCarthy col. 1, 11. 7-9. Each
participating merchant may set its own credit rate for cash value to
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Application 12/191,795
accumulate on each sale irrespective of a rate set by any other merchant and
independent of a central authority. Id. col. 1, 11. 9--14, col. 3, 11. 59--col. 4, 1.
9.
The Examiner concludes that it would have been obvious for
Nichtberger "to apply the funds from the offer [i.e., coupons] to the
consumer's account" to "attract consumers." Id. at 6 (citing McCarthy, col.
2, 11. 1-5). However, Nichtberger's coupons are redeemed by the consumer
at check-out. See Nichtberger, col. 17, 11. 49--61. In other words, when a
match occurs (i.e., at check-out), Nichtberger's local processor applies credit
to the consumer's transaction and no funds from the offer remain. To the
extent the Examiner determines that one of ordinary skill in the art would
have been motivated to modify Nichtberger to provide subsequent cash
rebates instead of immediately redeeming a coupon (see Ans. 5), this
reasoning is inadequately articulated by the Examiner to support an
obviousness determination.
Second, contrary to the Examiner's finding, Nichtberger discloses that
the redemption information is sent to the store's local CDR unit after
determining a match, not the operations center's CPU (characterized by the
Examiner as the claimed financial institution). See Nichtberger col. 17, 11.
59--61. The local CDR unit stores the information in a file of redemptions
by customer, and later the local CDR unit is called by the CPU. Id. col. 18,
11. 5-9. In other words, Nichtberger does not disclose "in response to
identifying a match ... automatically transmitting a first message to a
financial institution," i.e., limitation ( e ), as recited by claim 17 (emphasis
added).
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Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claim 17, and claims 18-20, which depend
therefrom.
Independent claims 22 and 45, and dependent claims 23-30, 46--48, 50, and
52
Independent claims 22 and 45 include language substantially similar
to the language of claim 17. Therefore, we do not sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of independent claims 22 and 45, and
claims 23-30, 46-48, 50, and 52 which depend from the independent claims,
for the same reasons set forth above with respect to claim 1 7.
Dependent claims 49, 51, and 53
Claims 49, 51, and 53 each depends from one of independent claims
17, 22, and 45. The Examiner's rejection of claims 49, 51, and 53 based on
Official Notice, in combination with Nichtberger, McCarthy, Humble,
Gopinath, does not cure the deficiency in the Examiner's rejection of the
independent claims. Therefore, we do not sustain the Examiner's rejection
of claim 49, 51, and 53 under 35 U.S.C. § 103(a) for the same reasons.
DECISION
The Examiner's rejections of claims 17-20, 22-30, and 45-53 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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