Ex Parte Tavares et al

Patent Trial and Appeal Board

Aug 5, 2016

13490226 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/490,226 06/06/2012
20350 7590 08/09/2016
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Silvio Tavares
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.
87188-840886 (0991 lOUS) 4233
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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
Exparte SILVIO TAVARES, MARKD. BAUMGART,
and JAVIER M. ALVARADO
Appeal2014-002240
Application 13/490,226 1
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-7, 9-17, and 19-30. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates generally to "a network/ system
and method for storing and accessing electronic receipts, and for enrolling a
card and/or cardholder for receiving such receipts." (Spec. i-f 3.)
1 According to Appellants, the real party in interest is First Data
Corporation. (Appeal Br. 3.)
Appeal2014-002240
Application 13/490,226
Claims 1, 17, and 26 are the independent claims on appeal. Claim 1 is
representative and is reproduced below (emphasis added):
1. A method for managing electronic receipts for transactions
conducted by customer entities at merchants using presentation
instruments, the method comprising:
enrolling, by one or more processors, customer entities in
a customer program for receiving electronic receipts in lieu of
paper receipts for transactions conducted at merchants by
customer entities using the presentation instruments, wherein the
presentation instruments are issued by a plurality of different
issuers, wherein enrollment is managed by a third party entity
that processes transactions between merchants and customer
entities using the presentation instruments, wherein the third
party is not a merchant and not an issuer of the presentation
instruments, wherein enrollment includes storing, in a preference
database managed by the third party entity, preference data from
each of the enrolled customer entities, and wherein the
preference data for each enrolled customer entity represents at
least one customer preference regarding the transmission of a
transaction notification at the time of a transaction in lieu of a
paper receipt, and wherein the preference data for at least one or
more of the enrolled customer entities further represents a
preference for printing of a receipt when a transaction is above a
specified amount;
receiving, at a transaction processing system from a
plurality of point-of-sale (POS) devices, transaction data for a
plurality of transactions, wherein the plurality of transactions are
conducted at a plurality of different merchants by a plurality of
different customer entities using a plurality of presentation
instruments issued by the plurality of different issuers, wherein
the transaction processing system is operated by the third party;
generating, by one or more of the processors, electronic
receipts for the plurality of transactions from the transaction data
received at the transaction processing system, wherein each of
the electronic receipts provides evidence of a transaction
between a merchant and a customer entity, and wherein each of
the electronic receipts comprises data reflecting at least the
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identity of a merchant, the presentation instrument used in
making a transaction, the date of a transaction, and the amount
of a transaction;
storing, by one or more of the processors, the electronic
receipts at a receipt database;
providing, by one or more of the processors, access to the
stored electronic receipts to both customer entities and the
merchants;
in response to receiving the transaction data at the
transaction processing system from one of the POS devices for
one of the transactions, determining at the transaction processing
system for that transaction ( 1) whether there is a customer
preference regarding the transmission of a transaction
notification at the time of a transaction in lieu of a paper receipt,
and (2) whether there is a customer preference for printing of a
receipt when a transaction is above a specified amount;
transmitting, by one or more of the processors, a
transaction response message from the transaction processing
system to the one of the POS devices, the transaction response
message having a data field for including ( 1) an "approved -- do
not print receipt" data code when there is a customer preference
for an electronic notification to be transmitted at the time of a
transaction in lieu of a paper receipt, and when the amount of the
transaction is not above the specified amount, and (2) an
"approved - print receipt" data code when there is a customer
preference for an electronic notification to be transmitted at the
time of a transaction in lieu of a paper receipt, and when the
amount of the transaction is above the specified amount; and
in response to the "approved -- do not print receipt" data
code, suppressing, at the one of the POS devices, the printing of
a paper receipt.
REJECTIONS
Claims 1-7, 9, 11-15, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grigg (US 2012/0221446 Al, pub. Aug. 30, 2012), Close
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Application 13/490,226
(US 2012/0290420 Al, pub. Nov. 15, 2012), and Sock (US 2010/0100434
Al, pub. Apr. 22, 2010).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grigg, Close, Sock, and Regmi (US 2009/0271275 Al, pub. Oct. 29, 2009).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grigg, Close, Sock, and Dhamodharan (US 2010/0030644 Al, pub.
Feb. 4, 2010).
Claims 17 and 19--25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grigg, Dhamodharan, and Matkovic (US 2011/0184822
Al, pub. July 28, 2011).
Claims 26-29 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Grigg and Close.
Claim 19 is also rejected under 35 U.S.C. § 112, fourth paragraph, for
failing to reference a claim previously set forth.
ANALYSIS
Claims 1-7. 9-12. 15. 16. 26. 29. and 30
Appellants argue that "[p ]aragraph 0006 of Grigg discloses an
electronic receipt being 'either generated and/or transmitted by a third party
that is associated with the merchant or the consumer, such as a financial
institution' (emphasis added). Grigg does not disclose enrollment by a third
party in a program for receiving electronic receipts." (Appeal Br. 12.)
Appellants further argue that
the disclosure of Grigg (dealing with the generation of receipts)
describes such activity being performed by an entity associated
with a merchant or consumer, "such as a financial institution"
(paragraph 0006). Such a financial institution would be akin to
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(Id.)
an issuer (see paragraphs 0027 and 0036 of Grigg, wherein the
"financial institution" manages "at least one financial account of
the consumer, for example, a credit account or a checking
account of the consumer"). Thus, Grigg does not disclose
enrollment managed by a third party that is "not an issuer of the
presentation instruments."
In relevant part, the Examiner finds that paragraph 6 of Grigg teaches
"a third party associated with either the merchant or consumer may generate
or transmit the electronic receipt." (Final Action 9.) The Examiner also
finds that "Grigg teaches, in i-f[0097], that a consumer controls e-receipt
settings in an online account, which is sufficient to teach 'enrollment"' and
that "Grigg discloses, in i-![[0036], that service businesses and manufacturers
may 'process financial transactions,' which would include third parties that
are not retailers or issuers of presentation instruments. (Answer 36-37.)
Grigg discloses that at the customer's bank's website, a customer may
control ho\v receipts are received. (Grigg i197, Fig. 14.) The Examiner
finds that to teach controlling how receipts are received is sufficient to teach
"enrollment." (See Answer 36.) Appellants do not persuasively argue that
this finding is erroneous. (See Appeal Br. 12.)
Appellants do not argue that the customer's bank is either a merchant
or an issuer of the presentation instrument. Rather, Appellants argue that the
bank is "associated with the merchant or the consumer" and that the bank
"would be akin to an issuer." (See Appeal Br. 12.) But claim 1 recites
"wherein the third party is not a merchant and not an issuer of the
presentation instruments." (Claim 1, emphasis added.) Claim 1 does not
refer to the merchant or issuer as not being associated with the bank, e.g.,
indirectly presenting a demand for payment as a result of a purchase
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transaction. Moreover, Appellants do not explain why a financial institution,
even if managing a checking account of a customer (see Grigg i-f 27) would
be "akin to an issuer."
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1. Appellants do not separately argue independent claims 26 and 30.
Therefore, for the reasons discussed, we are not persuaded that the Examiner
erred in rejecting claims 26 and 30.
Appellants argue that dependent claims 2-7, 9-12, 15, 16, and 29 are
allowable for the same reasons as claims 1 and 26. (Appeal Br. 12.)
Therefore, in view of the above, we are also not persuaded that the Examiner
erred in rejecting claims 2-7, 9-12, 15, 16, and 29.
Claim 13
Claim 13 recites: "The method of claim 1, wherein the electronic
receipts include promotional information when accessed by a customer
entity."
Appellants do not direct us to any definition in the Specification or
elsewhere of "promotional information." However, the Specification refers
to "promotional or coupon data" in the discussion of "promotional
information." (See Spec. i-f 40.) We conclude that under a broadest
reasonable interpretation, "promotional information" includes information
related to coupons and other promotional discounts and rebates.
The Examiner finds that "Sock discloses wherein the electronic
receipts include promotional information when accessed by a customer
entity (see claim 1; provide tools to allow advertisers to promote with a
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selected consumer based [sic] defined by the consumer's personal profile)."
(Final Action 19, emphasis omitted.)
Sock discloses "aggregating and electronically applying promotions,
rebates, and coupons to a particular receipt through [a Global Electronic
Receipt Database Agent]." (Sock, Claim 1.)
Appellants argue that "[ w ]hile Sock does describe sending promotions
to consumers (see also the Abstract and paragraph 0029 of Sock), there is no
teaching or suggestion of including those promotions on electronic
receipts." (Appeal Br. 13.) Specifically, Appellants argue that in Sock,
"[ t ]here is no teaching of including coupons and promotions on electronic
receipts, as recited in claim 13." (Reply Br. 5.)
As an initial matter, claim 13 does not require "including coupons and
promotions on electronic receipts" as argued by Appellants. (See Reply
Br. 5.) This argument is not commensurate with the scope of the claim and,
thus, is not persuasive.
Nor do Appellants persuasively argue why "applying promotions ...
to a particular receipt through [the Global Electronic Receipt Database
Agent]," as disclosed in Sock, does not teach an electronic receipt that
includes promotional information, i.e., a receipt that has promotional
information such as a promotional discount or rebate, included in it. (See
Sock, Claim 1.)
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 13.
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Claim 14
Claim 14 recites: "The method of claim 1, wherein the promotional
information may be selectively removed from the electronic receipts when
accessed by a merchant."
The Examiner finds that Sock teaches this limitation as "it teaches
allowing advertisers to 'promote and communicate with a selected consumer
base defined by the consumer's personal profile, purchase history and
notification preferences" in an electronic receipt systems [sic]."
(Answer 3 7, quoting Sock, Claim 1.)
Appellants argue "that there is no reasonable interpretation of this
language in claim 1 of Sock that might disclose the feature of claim 14 of
promotional information being 'selectively removed from the electronic
receipts when accessed by a merchant."' (Reply Br. 6.)
The Examiner does not indicate where Sock teaches selectively
removing promotional information from an electronic receipt. Therefore, we
are persuaded that the Examiner erred in rejecting claim 14.
Claims 17 and 19-2 5
Claim 1 7 recites (emphasis added):
1 7. A method for managing receipts for transactions
conducted by a customer entity at a merchant using a
presentation instrument, the method comprising:
receiving, at a transaction processing system from a
plurality of point-of-sale (POS) devices, transaction data for each
of a plurality of transactions conducted at a plurality of
merchants by a plurality of different customer entities using
presentation instruments issued by a plurality of issuers, the
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transaction data including merchant classification data for the
merchants at which the transactions are conducted;
generating, at the transaction processing system and at the
time of each of the transactions, a transaction notification for
each of the transactions based on the transaction data;
aggregating transaction data for the plurality of
transactions conducted at the plurality of merchants by the
plurality of different customer entities;
analyzing, at the transaction processing system, the
aggregated transaction data for the plurality of transactions to
determine a likelihood of a customer entity conducting, after a
first transaction with a first merchant having a first merchant
classification, a second, subsequent transaction with a second
merchant having a second merchant classification;
developing, by one or more processors, the [sic]
promotional information based on the second merchant
classification of the second merchant;
associating, by one or more of the processors, the
promotional information with the transaction notification
generated for the first transaction; and
transmitting, by one or more of the processors, the
transaction notification to the customer entity, wherein the
promotional information is transmitted with the transaction
notification at the time of the first transaction with the first
merchant.
With regard to the aggregating step of claim 17, the Examiner finds
that Dhamodharan discloses "identify[ing] the customer's spending history
and deriv[ing] a profile based on spending habits." (Final Action 28, citing
Dhamodharan i-f 27.) With regard to the analyzing step, the Examiner finds
that Dhamodharan discloses that "the spending profile identifies the
probability that the consumer will make a given type of purchase in the
future from a merchant or a category of merchants." (Id., citing
Dhamodharan i-f 36.)
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Appellants argue that Dhamodharan "does not teach or suggest the
more specific feature of predicting the likelihood of a purchase from a
merchant having a certain classification based on an earlier purchase at a
merchant with a different classification." (Appeal Br. 11.) But claim 17
does not recite that the first merchant classification must be different from
the second merchant classification and Appellants do not point to anything
in the Specification to lead to such a conclusion. Therefore, we conclude
that under a broadest reasonable interpretation, the first merchant
classification need not be different from the second merchant classification.
Thus, Appellants' argument is not commensurate with the scope of the
claim. Regardless, Appellants also do not persuasively argue why the
disclosure in Dhamodharan of predicting a future purchase from a merchant
or category of merchants does not include predicting a future purchase from
a second merchant whose merchant category/classification is different from
that of the first merchant.
Next, the Examiner finds that
Matkovic discloses transmitting, by one or more of the
processors, the transaction notification to the customer entity,
wherein the promotional information is transmitted with the
transaction notification at the time of the first transaction with
the first merchant (see i-f[0037]; promotional messages and
advertisements can be directed via electronic messages and
physical receipts).
(Final Action 29.)
Appellants argue that the Matkovic does not teach the "specific type
of electronic notification [of claim 1 7] that is sent at the time of a
transaction." (Reply Br. 3.) Although claim 20 refers to the transaction
notification being an electronic message, claim 1 7 does not require the
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transaction notification to be an electronic message. Therefore, Appellant's
argument is not commensurate with the scope of the claim.
Moreover, Matkovic discloses that "promotional messages and
advertisements can be directed to a customer and/or merchant via electronic
messages, physical receipts, and messages displayed on hardware devices at
the point of sale." (Matkovic i-fi-1 3 7, 115.) In other words, Matkovic
discloses that promotional messages may be included with the receipt, i.e.,
with a transaction notification.
Appellants argue, for the first time in the Reply Brief, that "[i]n
Appellants' invention, large numbers of transactions involving a large
population of cardholders are analyzed" and that "[ t ]his is not the same as
Dhamodharan, where the spending habits of a specific consumer are
analyzed to determine the probability that that specific consumer will make a
purchase from a category of merchants." (Reply Br. 3.) Appellants'
argument is not responsive to an argument raised in the Examiner's Answer
and Appellants do not show good cause as to why this argument was not
raised in the Appeal Brief. Therefore, this new argument is not considered.
(See 37 C.F.R. § 41.41(b)(2).)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 17. Appellants argue that dependent claims 19--25 are
allowable for the same reasons as claim 17. (Appeal Br. 11.) Therefore, in
view of the above, we are also not persuaded that the Examiner erred in
rejecting claims 19--25 under§ 103.
Claim 19 is also rejected under§ 112, fourth paragraph. Claim 19
depends from cancelled claim 18. The amendment Appellants filed under
37 C.F.R. § 1.116 seeking to amend claim 18 to change its dependency was
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not entered. (See Advisory Action mailed May 1, 2013.) Appellants present
no arguments with regard to the rejection of claim 19 under§ 112, fourth
paragraph. Therefore, we summarily affirm the rejection of claim 19 under
§ 112, fourth paragraph.
Claims 27 and 28
Appellants indicate that dependent claims 27 and 28 are not pending.
(Appeal Br. 3.) That is incorrect. The amendment Appellants filed under
37 C.F.R. § 1.116 seeking to cancel claims 27 and 28 was not entered. (See
Advisory Action mailed May 1, 2013.)
Appellants present no arguments with regard to claim 27 and 28.
Therefore, we summarily affirm the rejection of claims 27 and 28.
DECISION
The Examiner's rejection of claims 1-7, 9-13, 15-17, and 19-30
under 35 U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claim 14 under 35 U.S.C. § 103(a) is
reversed.
The Examiner's rejection of claim 19 under 35 U.S.C. § 112, fourth
paragraph, is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv)(2013).
AFFIRMED-IN-PART
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