Ex Parte Teicher

Patent Trial and Appeal Board

Feb 4, 2013

10276682 (P.T.A.B. Feb. 4, 2013)

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.
10/276,682 11/18/2002 Mordechai Teicher 1171-US 8260
24505 7590 02/04/2013
Daniel J. Swirsky
11 Reuven Street
Beit Shemesh, 99544
ISRAEL
EXAMINER
LASTRA, DANIEL
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
02/04/2013 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 MORDECHAI TEICHER
____________________

Appeal 2011-006681
Application 10/276,682
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/276,682

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellant’s invention relates to customer loyalty programs, and, in
particular, to such programs involving a customer card for receiving and
redeeming loyalty incentives (Spec. 1, ll. 5-7).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. A system for managing loyalty incentives for a customer,
comprising:
a. a personal loyalty account at a centralized server,
assigned to the customer for storing a first amount of loyalty
incentives for the customer,
b. a loyalty card carried with the customer for identifying
and accessing the personal loyalty account and including a
loyalty purse for storing a second amount of loyalty incentives,
and
c. a first merchant terminal operable to interface with the
loyalty card for granting the customer an awarded amount of
loyalty incentives by selecting, in accordance with a first
predefined amount of loyalty incentives that is independent of
the awarded amount of loyalty incentives, whether:

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 23, 2010) and Reply Brief (“Reply Br.,” filed January 10,
2011) and the Examiner’s Answer (“Ans.,” mailed November 10, 2010).
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[i] to add the awarded amount of loyalty incentives to the
loyalty purse, or
[ii] to add said first predefined amount of loyalty
incentives to the loyalty account and receive the difference
between the first predefined amount of loyalty incentives and
the awarded amount of loyalty incentives from the loyalty
purse.

THE REJECTION
The following rejection is before us for review:
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Postrel (US 6,594,640 B1, iss. Jul. 15, 2003) in view of
Taylor (US 5,530,232, iss. Jun. 25, 1996) and further in view of Molano
(US 6,330,978 B1, iss. Dec. 18, 2001).

ANALYSIS
Independent claim 1 and dependent claims 2-9
We are persuaded of error on the part of the Examiner by Appellant’s
argument that none of Postrel, Taylor, and Molano discloses or suggests
a first merchant terminal . . . selecting, in accordance with a
first predefined amount of loyalty incentives . . . whether . . . to
add said first predefined amount of loyalty incentives to the
loyalty account and receive the difference between the first
predefined amount of loyalty incentives and the awarded
amount of loyalty incentives from the loyalty purse,
i.e., limitation c[ii], as recited in claim 1 (App. Br. 6-11 and Reply Br. 2-3).
The Examiner concedes that Postrel does not teach this feature
(Ans. 4-5), and cites column 5, lines 25-35 of Taylor, as well as column 3,
lines 15-20 and 25-40 and column 9, lines 5-15 of Molano to cure this
deficiency (Ans. 5-7). However, we agree with Appellant that there is
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nothing in the cited portions of Taylor and Molano that teaches or suggests
limitation c[ii], as set forth in claim 1.
Taylor discloses a multi-application data card and a system for
employing the card (Taylor, col. 1, ll. 5-10). Taylor describes that the
system includes a memory for storing and updating data relating to an
authorized holder of the card, and states that if the data card is a smart card,
the memory is located at least in part on the card (Taylor, col. 4, lines 49-
54). Taylor further describes at column 5, lines 25-35, on which the
Examiner relies, that when a purchase transaction made using the card is
linked to frequency points, e.g., the purchase of an airline ticket, “the point
value is added to the current account balance and the card or [the] central
database is updated.”
Molano discloses a system that loads and unloads data representative
of cash value to and from an integrated circuit bearing card, e.g., a smart
card, and describes at column 3, lines 15-20 and 25-40, cited by the
Examiner, that the system enables a card holder to debit the cash value
loaded onto the card from an associated bank account. Molano further
describes that there is a maximum amount that may be loaded onto the card,
and that the customer has the option of loading the maximum amount or
entering a numerical amount, in which case the system verifies that the
amount is valid, i.e., that the maximum amount will not be exceeded
(Molano, col. 9, ll. 5-15).
The Specification at page 18, lines 5-15 describes in detail the method
by which value is transferred between the loyalty purse, loyalty account, and
the merchant terminal. The Examiner however takes the position that
“Applicant’s claimed invention is simply transferring enough value from the
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loyalty purse to the loyalty account which would allow the loyalty purse in
the smart card to store an amount that would not exceed the maximum
allow[ed] in the memory of the smart card” (Ans. 5). Therefore, the
Examiner concludes that it would have been obvious to modify Postrel in
accordance with Taylor and Molano to arrive at the claimed invention:
[I]t would have been obvious . . . at the time the application was
made, to know that because smart cards have limits in the
amount of value that can be stored in said smart cards, as taught
by Molano, and because it is old and well known . . . to link a
smart cards [sic] to loyalty bank accounts . . . , as taught by
Taylor and Postrel (see Postrel col 10, lines 1-10) and also,
because it is old and well known . . . to have smart cards that
load and unload value between a smart card’s purse and remote
accounts . . ., as taught by Molano, that Postrel would add an
awarded amount to a current value stored in the loyalty purse of
a smart card, where said awarded amount plus said current
value exceed the maximum amount that a user is permitted to
load to said loyalty purse . . ., by using the Taylor and Molano’s
system . . . to transfer from said loyalty purse to a loyalty
account . . . a predefined amount subtracted from said awarded
amount plus said current value, which would . . . split the
balance of said awarded amount + said current value between
the smart card loyalty purse . . . and the . . . loyalty bank
account . . . . Therefore, Postrel would store a predefined
amount in the loyalty bank account and would store the
((additional value) plus (the current value) minus (predefined
amount)) in the loyalty purse.
Ans. 6-7.
In the Examiner’s view, Appellant’s invention involves simply
transferring enough value from the loyalty purse to the loyalty account
which will allow the loyalty purse in the smart card to store an amount that
does not exceed the maximum allowed in the memory of the smart card. But
this falls short of the claim requirements. The claimed invention also
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involves a determination by the merchant terminal, as recited in limitation c,
regarding how the loyalty value should be distributed. The proposed
combination of Taylor and Molano fails to disclose that the first merchant
terminal receives the difference between the first predefined amount of
loyalty incentives and the awarded amount of loyalty incentives from the
loyalty purse, as set forth in limitation c[ii] of claim 1. And the Examiner
provides no articulated reasoning with rational underpinning to modify the
cited references to meet this claim limitation without impermissible
hindsight. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”).
The Examiner has failed to establish a prima facie case of obviousness
with respect to claim 1. Therefore, we will not sustain the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a). We also will not sustain the
Examiner’s rejection of clams 2-9, which depend from claim 1. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.”)

Independent claim 10 and dependent claims 11-18
Independent claim 10 includes language substantially similar to
claim 1. Therefore, we will not sustain the Examiner’s rejection of claim 10
under 35 U.S.C. § 103(a) for the same reasons as set forth above with
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respect to claim 1. We also will not sustain the Examiner’s rejection of
dependent claims 11-18.

DECISION
The Examiner’s rejection of claims 1-18 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

mls