Ex Parte Sterling et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201612104904 (P.T.A.B. Feb. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/104,904 04/17/2008 20350 7590 02/26/2016 KILPATRICK TOWNSEND & STOCKTON LLP TWO EMBARCADERO CENTER EIGHTH FLOOR SAN FRANCISCO, CA 94111-3834 Jacob M. Sterling 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. 87188-744412 4701 EXAMINER LOFTUS, ANNE ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 02/26/2016 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): ipefiling@kilpatricktownsend.com j lhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACOB M. STERLING and ANDREW T. HURT Appeal2013-007252 Application 12/104,904 1 Technology Center 3600 Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BRADLEY B. BAY AT, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jacob M. Sterling, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's Final rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. 1 The Appellants identify First Data Corporation as the real party in interest. App. Br. 1. Appeal2013-007252 Application 12/104,904 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of providing incentives, the method comprising: receiving, at a host computer, transaction information gathered at a point of sale system, the transaction information relating to a transaction performed by a consumer at a merchant, wherein the transaction information comprises a consumer account identifier identifying an account from which payment is to be made for the transaction, and also comprises a merchant identifier identifying the merchant; recognizing, using the host computer, that the combination of the merchant identifier and the consumer account identifier qualifies for an incentive offer that comprises a specific amount off the purchase of a specified item during a subsequent purchase of the specified item with the merchant without requiring preregistration from the consumer; transmitting, by the host computer, a description of the incentive offer to be offered to the consumer at the point of sale such that the incentive offer is displayable on a display screen of a point of sale device along with a request to affirmatively accept the offer in order to receive a reward, wherein the incentive offer is displayable on the display screen to permit the consumer to visualize a description on the display screen of the specific amount off the purchase of the specified item as well as instructions to affirmatively accept the offer, wherein the incentive offer further indicates that the a reward will be provided to the consumer when the consumer makes a subsequent purchase with the same combination of consumer account identifier and merchant identifier; receiving, at the host computer, an indication from the point of sale device that the consumer has accepted the offer at the point of sale for the transaction; and recording, in a database maintained by the host computer, an indication that the offer is pending for the combination of consumer 2 Appeal2013-007252 Application 12/104,904 account identifier and merchant identifier such that the merchant has now incurred a financial obligation and such that when the consumer makes a subsequent purchase, the reward associated with the offer is required to be fulfilled by the merchant. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Walker Jensen Alspach-Goss Vaughn Deaton US 2003/0055727 Al US 2005/0267812 Al US 2006/0053056 Al US 2006/0095327 Al US 2006/0100931 Al The following rejections are before us for review: Mar. 20, 2003 Dec. 1, 2005 Mar. 9, 2006 May4, 2006 May 11, 2006 1. Claims 1, 3, 6-16, and 19--27 are rejected under 35 U.S.C. §103(a) as being unpatentable over Alspach-Goss, neaton, and Jensen. 2. Claims 4, 5, 17, and 18 are rejected under 35 U.S.C. §103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Vaughn. 3. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Walker. ISSUES Did the Examiner err in rejecting claims 1, 3, 6-16, and 19--27 under 35 U.S.C. §103(a) as being unpatentable over Alspach-Goss, Deaton, and Jensen; claims 4, 5, 17, and 18 under 35 U.S.C. §103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Vaughn; and, claim 2 3 Appeal2013-007252 Application 12/104,904 under 35 U.S.C. § 103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Walker? FINDINGS OF FACT We rely on the Examiner's factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The rejection of claims 1, 3, 6-16, and 19--27 under 35 USC §103(a) as being unpatentable over Alspach-Goss, Deaton, and Jensen. The Appellants argued claims 1, 3, 6-16, and 19--27 as a group (App. Br. 7-10). We select claim 1 as the representative claim for this group, and the remaining claims 3, 6-16, and 19--27 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(vii) (2007). We have reviewed the arguments challenging the rejection as it pertains to the subject matter of claim 1 and find them unpersuasive as to error in the rejection. The first argument is that Alspach-Goss is directed to a networked loyalty program rather than an offer for an incentive. "Goss does not describe anything to do with an offer for an incentive. Instead, Goss describes a loyalty program based on rewards and does not offer a specific discount on a specific item for subsequent purchase." App. Br. 8. This argument is unpersuasive. Claim 1 is directed to "[a] method of providing incentives" and recites steps whereby a host computer is used to receive, recognize, and transmit to and receive from a display screen of a point of sale device, certain information-carrying data. The host computer 4 Appeal2013-007252 Application 12/104,904 also maintains a database used to record. The question is whether it would have been obvious to one of ordinary skill in the art given the cited prior art combination to provide incentives using a host computer as claimed. Whether or not Alspach-Goss is directed to a networked loyalty program rather than an offer for an incentive does not go to the question of obviousness of what is claimed, and therefore cannot be a persuasive argument as to its error. The second argument is that neither Alspach-Goss nor Deaton "mention that the user affirmatively accepts the offer or having such acceptance received at the host computer." App. Br. 9. This argument is unpersuasive because it is not based on an accurate reading of the claim. According to claim 1, a host computer receives data from a point of sale device carrying information indicative "that the consumer has accepted the offer at the point of sale for the transaction" (claim l ). The question is \vhether it \vould have been obvious to one of ordinary skill in the art given the cited prior art combination to provide incentives using a host computer that receives data from a point of sale device as claimed. That question begs another question: whether information indicative "that the consumer has accepted the offer at the point of sale for the transaction" (claim 1) carries patentable weight in the context of what is claimed. See In re Distefano, 808 F.3d 845, 849 (Fed. Cir. 2015) ("a limitation is printed matter only if it claims the content of information") (citation omitted). Whether or not the prior art "mention[ s] that the user affirmatively accepts the offer or having such acceptance received at the host computer" does not go to the question of obviousness of what is claimed and therefore cannot be a persuasive argument as to its error. App. Br. 9. 5 Appeal2013-007252 Application 12/104,904 The third argument is "[ t ]he references also fail to teach or suggest the merchant incurring a financial obligation in response to a consumer accepting the incentive offer." App. Br. 9. This argument is similarly unpersuasive. As with the second argument, it is not based on an accurate reading of the claim. According to claim 1, a host computer maintains a database that records data carrying information indicative "that the offer is pending for the combination of consumer account identifier and merchant identifier such that the merchant has now incurred a financial obligation and such that when the consumer makes a subsequent purchase, the reward associated with the offer is required to be fulfilled by the merchant" (claim 1 ). The question is whether it would have been obvious to one of ordinary skill in the art given the cited prior art combination to provide incentives using a host computer that maintains a database that records data as claimed. That question begs another question: \~1hether information indicative "that the offer is pending for the combination of consumer account identifier and merchant identifier such that the merchant has now incurred a financial obligation and such that when the consumer makes a subsequent purchase, the reward associated with the offer is required to be fulfilled by the merchant" (claim 1) carries patentable weight in the context of what is claimed. Whether or not the prior art "teach[ es] or suggest[ s] the merchant incurring a financial obligation in response to a consumer accepting the incentive offer" does not go to the question of obviousness of what is claimed and therefore cannot be a persuasive argument as to its error. See App. Br. 9. 6 Appeal2013-007252 Application 12/104,904 The remaining arguments are unpersuasive as to reversible error in the rejection. The rejection of claims 4, 5, 17, and 18 under 35 US.C. §103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Vaughn. The rejection of claim 2 under 35 US.C. §103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Walker. These rejections have not been separately challenged. Accordingly, they are summarily affirmed. CONCLUSIONS The rejection of claims 1, 3, 6-16, and 19--27 under 35 U.S.C. §103(a) as being unpatentable over Alspach-Goss, Deaton, and Jensen is affirmed. The rejection of claims 4, 5, 17, and 18 under 35U.S.C.§103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Vaughn is affirmed. The rejection of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Alspach-Goss, Deaton, Jensen, and Walker is affirmed. DECISION The decision of the Examiner to reject claims 1-27 is affirmed. 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation