Ex Parte Strock et al

Patent Trial and Appeal Board

Feb 2, 2015

11488783 (P.T.A.B. Feb. 2, 2015)

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.

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Application 11/488,783

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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”).
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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.
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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
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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
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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.
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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

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