Ex Parte Strock et alDownload PDFPatent Trial and Appeal BoardFeb 2, 201511488783 (P.T.A.B. Feb. 2, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/488,783 07/19/2006 Bradley R. Strock 47004.000423 9380 21967 7590 02/03/2015 HUNTON & WILLIAMS LLP INTELLECTUAL PROPERTY DEPARTMENT 2200 Pennsylvania Avenue, N.W. WASHINGTON, DC 20037 EXAMINER ALVAREZ, RAQUEL ART UNIT PAPER NUMBER 3682 MAIL DATE DELIVERY MODE 02/03/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRADLEY R. STROCK, LYNN HOPPER, EUGENE M. GLAVIN, and BETH L. BRESSLER ____________ Appeal 2012-006501 Application 11/488,783 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MEREDITH C. PETRAVICK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1–38. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-006501 Application 11/488,783 2 BACKGROUND Appellants’ invention is directed to a system and method for granting promotional rewards to credit account holders (Spec. 1). Claim 1 is illustrative: 1. A computer-implemented method for implementing multiple promotional rewards programs comprising: generating, by an offer setup processor associated with a financial institution, at least one promotional reward offer from a first promotional rewards program and at least one promotional reward offer from a second promotional rewards program to a customer, wherein each of the at least one promotional reward offer comprises a customized promotional reward associated with a promotional reward-earning behavior and a promotional time frame, wherein the customized promotional reward is generated based at least in part on prior account activity of the customer, the account activity associated with the financial institution; communicating, from an offer setup processor, the at least one promotional reward offer from a first promotional rewards program and the at least one promotional reward offer from a second promotional rewards program to a customer; and crediting, from the offer setup processor, the customized promotional reward from the first promotional rewards program and the second promotional rewards program to the customer if the customer accomplishes the promotional reward-earning behavior within the promotional time frame. The Examiner relies on the following prior art references as evidence of unpatentability: Iannacci US 2002/0062249 A1 May 23, 2002 Delta and American Express Introduce ‘Always Double Miles’ Feature on Delta SkyMiles® Cards, PR Newswire. New York, 1–3 (Oct. 2, 2000) (hereinafter “Delta”). Appeal 2012-006501 Application 11/488,783 3 Internet Archive WayBackMachine search for Delta.Liveonline.Net (Jan. 21, 2001) (hereinafter “Delta Website”). American Express and Starwood Launch The New Starwood Preferred Guest(SM) Credit Card from American Express, PR Newswire. New York, 1–5 (June 19, 2001) (hereinafter “Starwood”). Appellants appeal the following rejections: Claims 1–38 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1–36 of co-pending Application 11/202,325 and claims 1–29 of co- pending Application 10/683,294. Claims 36 and 37 are rejected under U.S.C. § 103(a) as being unpatentable over Delta Website, Delta, and Official Notice1. Claims 1–3, 5, 6, 8–31, 34, 35, and 38 are rejected under U.S.C. § 103(a) as being unpatentable over Delta and Official Notice. Claims 4, 7, 32, and 33 are rejected under U.S.C. § 103(a) as being unpatentable over Delta, Official Notice, and Starwood. ISSUES Did the Examiner err in rejecting claim 1 because the prior art does not disclose crediting from the offer setup processor associated with the financial institution the customized first and second promotional reward? 1 We take as inadvertent the citation of Iannacci and the absence of the citation of Official Notice in the statements of the rejection of claims 1–38 in the Answer as the Examiner clearly indicates reliance on Official Notice on pages 8 and 11 of the Answer and indicates that Iannacci is used to support the Official Notice. Appeal 2012-006501 Application 11/488,783 4 Did the Examiner err in rejecting claim 1 because the Examiner has not presented a proper rationale to combine the references? Did the Examiner err in rejecting claim 1 because the Examiner by Appellants’ argument that Delta does not disclose customized promotional rewards based on prior account activity associated with the financial institution? FACTUAL FINDINGS We adopt all of the Examiner’s findings as our own. Ans. 6–11. Additional findings of fact may appear in the Analysis that follows. ANALYSIS Double Patenting We summarily sustain the provisional obviousness-type double patenting rejection, because Appellants present no arguments contesting the rejection. See Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th Ed., Mar. 2014) (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board.”) Obviousness We are not persuaded of error on the part of the Examiner by Appellants’ argument that the prior art does not disclose crediting from the offer setup processor associated with the financial institution the customized first and second promotional reward. The Examiner relies on Official Notice for teaching this subject matter (Ans. 8). In this regard, the Examiner Appeal 2012-006501 Application 11/488,783 5 finds “it is old and well known to credit the promotional reward by an offer setup processor associated with a financial institution.” Id. The Examiner states that credit card companies frequently enable users to apply for a credit card online through a processor and allow users to receive benefits such as bonus miles or points through the processor. As such, the promotional offer associated with a credit card company, for instance, is credited to the rewards account of the credit card holder by the credit card company. In addition, the Examiner supports this Official Notice by citing the teaching in Iannacci that a user can apply for a credit card account and have promotional reward offers credited through a processor associated with the credit card company. Appellants argue that they have traversed the Examiner’s Official Notice. However, the Appellants do not direct our attention to this traversal. We find no adequate traversal in the Brief or Reply Brief. We remind the Appellants that an adequate traversal must specifically point out the supposed errors in the examiner's action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. 37 C.F.R. § 1.104(d)(2); MPEP § 707.07(a). An adequate traversal must contain adequate information or argument to create on its face a reasonable doubt regarding the circumstances justifying the Examiner's notice of what is well known to one of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971). The Official Notice taken by the Examiner has not been adequately challenged by the Appellants. As such, the Official Notice has not been rebutted. In any case, we agree with the Examiner that Iannacci discloses crediting rewards by an offer setup processor associated with the financial Appeal 2012-006501 Application 11/488,783 6 institution in that a user of the Iannacci system can apply for a credit card account using the Iannacci system and receive promotional rewards credited to their accounts by the credit card company processor (Fig. 4; paras. 44, 115, 235, 472). We are not persuaded of error on the part of the Examiner by Appellants’ argument that the Examiner has not presented a proper rationale to combine the references. As the Examiner has established that it was known to credit rewards of a rewards program from the offer setup processor of the associated financial institution, the addition of this step to the Delta method would have been no more than the combination of known methods to achieve predictable results. We are not persuaded of error on the part of the Examiner by Appellants’ argument that Delta does not disclose customized promotional rewards. We agree with the Examiner that the disclosure in Delta of Classic Delta, Gold Delta, and Platinum Delta rewards is a disclosure of customized rewards as broadly claimed. We note that claim 1 does not recite individual customized rewards. We also note that Delta discloses that a card-member will receive a different promotional award based on whether the account is a Classic Delta, Gold Delta, or Platinum Delta. The acquisition of a Gold Delta or Platinum Delta account is based on prior account activity associated with the financial institution as broadly claimed. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We will also sustain the rejection as it is directed to claims 2, 3, 5, 6, 8–31, 34, 35, and 38 because the Appellants have not argued the separate patentability of these claims. Appeal 2012-006501 Application 11/488,783 7 We will also sustain the rejection as it is directed to claims 36 and 37 because the Appellants make the same arguments in regard to the rejection of these claims as was made in response to the rejection of claim 1. We will also sustain the rejection of claims 4, 7, 32, and 33 because the Appellants rely on the same arguments advanced in regard to claim 1 in response to the rejection of these claims (App. Br. 28). DECISION The decision of the Examiner 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)(1) (2011). AFFIRMED hh Copy with citationCopy as parenthetical citation