Ex Parte ShepardDownload PDFPatent Trial and Appeal BoardOct 30, 201311768137 (P.T.A.B. Oct. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID SHEPARD ____________ Appeal 2011-005398 Application 11/768,137 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005398 Application 11/768,137 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 to 21. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative: 1. A system comprising: a loyalty user interface module in communication with a group of merchants and comprising a processor and a computer readable storage medium having code stored thereon to direct the processor to, receive an input from a consumer defining a first parameter of a loyalty program, the first parameter comprising a choice of a structure of the loyalty program; receive an input from the consumer defining a second parameter of the loyalty program, the second parameter comprising a choice of a reward qualifying act; receive an input from the consumer defining a third parameter of the loyalty program, the third parameter comprising a choice of a nature of a reward; and communicate the first, second, and third parameters to a loyalty engine in communication with a payment processing network, wherein the loyalty engine stores the first, second, and third parameters in a data storehouse remotely positioned from the group of merchants. Appellant appeals the following rejections: Claims 11 to 19 and 21 under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Claims 1 to 6 and 8 to 21 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Appeal 2011-005398 Application 11/768,137 3 Claim 7 under 35 U.S.C. § 102(b) as anticipated by Kaminkow (U.S. 2003/0032474 A1; pub. Feb. 13, 2003). Claims 1 to 6, 8 to 13, and 15 to 21 under 35 U.S.C. § 103(a) as unpatentable over Kaminkow, Iannacci (U.S. 2002/0062249 A1; pub. May 23, 2002), and Official Notice. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Kaminkow, Iannacci, and Brant (U.S. 5,970,457; iss. Oct. 19, 1999). ISSUES Did the Examiner err in rejecting claims 11 to 19 and 21 under 35 U.S.C. § 101 and under 35 U.S.C. § 112, second paragraph, because the claims do not overlap two different statutory classes? Did the Examiner err in rejecting claims 1 to 6 and 8 to 10 under 35 U.S.C. § 112, second paragraph, because a module as defined in Appellant’s claims is not software only? Did the Examiner err in rejecting the claims under 35 U.S.C. §§ 102(b) and 103(a) because Kaminkow does not disclose receiving an input from the consumer defining or choosing a parameter of a loyalty program? FACTUAL FINDINGS Appellant’s Specification discloses that user interface module 212 is configured to receive information from a consumer that defines the parameters of a loyalty program. In this regard, the user is allowed to define the structure of the loyalty program by designating specific characteristics of the event triggering eligibility for a benefit. For example, a consumer could Appeal 2011-005398 Application 11/768,137 4 elect to receive a particular benefit based upon a total accumulated number of points and thus choose the accumulation of points as a parameter of the loyalty program (para. [0026]). The user could also select other parameters of the loyalty program such as choosing that it be discount based, limited time based, etc. In addition, the user can further define other parameters of the loyalty program such as an eligible act for the reward or benefit, and the nature of the reward or benefit (paras. [0034]-[0036]). The Examiner relies on Kaminkow page 3, paragraphs [0023] to [0024] and page 8, paragraph [0070] for teaching receiving input from a consumer defining a parameter of a loyalty program (Ans. 6). We find that Kaminkow describes a network with a plurality of loyalty program instrument generation sites that award loyalty points or loyalty point instruments. Loyalty point instruments store loyalty points and include various mediums such as printed tickets, magnetic-striped cards, room keys, smart cards, and the like. These loyalty point instruments can be used to redeem loyalty points for goods and services or to add loyalty points to an existing loyalty account. These loyalty points may be earned by a patron during activities such as gaming, food purchase, entertainment purchase, transportation purchase, and service purchase (para. [0023]). The loyalty points may be redeemed using a phone, a gaming machine, clerk validation terminal, cashier station, casino kiosk, hand-held wireless device, web interface, postal service, and card or ticket reader at a restaurant, hotel, or entertainment venue. The loyalty program instrument may be designed to store one or more of prize information, loyalty point information, an establishment, a location, a bar code, an instrument type, an Appeal 2011-005398 Application 11/768,137 5 issue date, a validation number, an issue time, an instrument number, an instrument sequence number, and a machine number (para. [0024]). A user may modify loyalty point accounts by, for example, combining loyalty points on different instruments onto a single loyalty point instrument (para. [0071]). This modification can be done by the user on many different computing devices, such as gaming machines, personal digital assistants, home computers, etc. (Para. [0070]). The ordinary and customary definition of the term “parameter” as defined by Merriam-Webster's Collegiate Dictionary is: a rule or limit that controls what something is or how something should be done (http://www.merriam-webster.com/dictionary/parameter) (last accessed October 30, 2013). ANALYSIS Non-Statutory Subject Matter We will not sustain this rejection because we agree with the Appellant that claims 11 to 19 and 21 are directed to a method reciting the steps of receiving by an interface module and communicating by an interface module. As such, the claims are not hybrid claims. Indefiniteness We will not sustain the rejection of claims 1 to 6 and 8 to 21 because we agree with the Appellant that the recitation of a loyalty user interface module is not a recitation of software, but is a recitation of a module that includes both a processor and a computer readable storage medium with Appeal 2011-005398 Application 11/768,137 6 code stored thereon. Appellant’s Specification at paragraph [0024] and the accompanying figure 2 disclose that module 212 includes both processor 213 and computer readable storage medium 215. Anticipation We will not sustain the Examiner’s rejection of claim 7 under 35 U.S.C. § 102(b) as anticipated by Kaminkow. Kaminkow does not disclose a consumer defining a parameter. At most, Kaminkow discloses that a consumer can choose whether to redeem loyalty points for goods and services or to add loyalty points to an existing loyalty account. While this is a disclosure of an input by the consumer regarding the redemption of points, it is not a disclosure of a consumer defining a parameter. As we found above, a parameter is a rule or limit that controls what something is or how something should be done. The choice of how to redeem points in a loyalty program is a choice within parameters that have already been established for a loyalty program. In other words, a parameter of the Kaminkow program is that it is a point based program. Another parameter of the Kaminkow program is that the points may be redeemed by either redeeming them for goods and services or adding them to accumulated points. Choosing one of the redemption options in an already defined loyalty program is not defining a parameter of the loyalty program. Obviousness Claim 1 recites the step of “defining a third parameter of the loyalty program.” The Examiner relies on Kaminkow for teaching this subject matter. As we have found above, Kaminkow does not disclose defining a Appeal 2011-005398 Application 11/768,137 7 parameter. As such, we will not sustain the rejection as it is directed to claim 1 and claims 2 to 6, and 20 dependent thereon. We will also not sustain this rejection as it is directed to claim 11 and claims 12, 13, 15 to 19, and 21 dependent thereon because claim 11 includes the step of receiving a plurality of parameters of a loyalty program input by the consumer. As we found above, although the consumer can select between options in a loyalty program, there is no receipt of a parameter from the consumer described in Kaminkow. We will also not sustain this rejection as it is directed to claims 8 to 10 for the same reasons because these claims depend from claim 7 and thus include the recitation that the processor receives an input from a consumer defining a parameter of a loyalty program. We will not sustain the rejection of claim 14. Claim 14 depends from claim 11 and thus includes the step of receiving a plurality of parameters input by a consumer. As in the preceding rejection, the Examiner relies on Kaminkow for teaching this subject matter. Therefore, we will not sustain this rejection for the same reasons given in our discussion of the rejection of claim 11. DECISION The decision of the Examiner is reversed. REVERSED hh Copy with citationCopy as parenthetical citation