Ex Parte Shepard

Patent Trial and Appeal Board

Oct 30, 2013

11768137 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID SHEPARD
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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

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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.
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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
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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
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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

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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
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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

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