Ex Parte Wagenheim

Patent Trial and Appeal Board

Sep 26, 2016

12643657 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/643,657 12/21/2009
26291 7590 09/28/2016
PATTERSON & SHERIDAN LLP, NJ Office
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Jerold I. Wagenheim
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.
WAGE/0003 4880
EXAMINER
BROWN,ALVINL
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
Ktaboada@pattersonsheridan.com
psdocketing@pattersonsheridan.com
P AIR_eOfficeAction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROLD I. WAGENHEIM
Appeal2014-001943 1
Application 12/643,6572
Technology Center 3600
Before BIBHU R. MOHANTY, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, and 5-21. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellant's Appeal Brief ("Appeal Br.," filed
Aug. 31, 2013) and Reply Brief ("Reply Br.," filed Nov. 22, 2013), and the
Examiner's Final Office Action ("Final Act.," mailed Mar. 7, 2013) and
Answer ("Ans.," mailed Sept. 23, 2013).
2 According to Appellant, the real party in interest is Jerold I. Wagenheim,
LLC (Appeal Br. 3).
Appeal2014-001943
Application 12/643,657
Introduction
Appellant's disclosure relates to "awarding an incentive to
customers .... [for] accumulating store credit in a manner specified by an
incentive program." (Spec. i-f 1 ).
Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A computer-implemented method, comprising:
providing an incentive program that includes:
(a) a first predetermined period of time for
accumulating store credit to be spent only during a
second predetermined period of time subsequent to
the first period of time; and
(b) at least one incentive rule that defines (i) a
behavior criteria for accumulating the store credit
from purchasing at least a predefined amount of store
credit on a regular basis during the first period of time
during visits to a predetermined brick-and-mortar
store, and (ii) a corresponding incentive reward based
at least on the regularity of the visits to the brick-and-
mortar store;
executing, by operation of one or more
computer processors, an incentive amount
calculator to determine an amount of the incentive
reward to award to a customer according to an
extent to which a behavior pattern of the customer
satisfies the incentive rule; and
awarding the determined amount of the
incentive reward to the customer as a coupon when
the predefined amount of store credit is purchased at a
time meeting the regularity criteria during the first
time period.
(Appeal Br., Claims App.)
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Appeal2014-001943
Application 12/643,657
Rejections on Appeal
The Examiner maintains, and Appellant appeals, the following
rejections:
I. Claims 1, 2, 6, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Weiszfeiler (US
2004/0249703 Al, pub. Dec. 9, 2004) and West Coast
offers special lifestyle assessments: MAPLE RIDGE, PITT
MEADOWS TIMES 21 (Maple Ridge, B.C., Final ed. Jan.
18, 2005) (hereinafter, "West Coast").
II. Claims 5, 7-11, 20, and 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Weiszfeiler,
West Coast, and Deaton (US 6,684,195 Bl, iss. Jan. 27,
2004).
III. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weiszfeiler, West Coast, Deaton
and Asai (US 2010/0174589 Al, pub. July 8, 2010).
IV. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Weiszfeiler, West Coast,
Deaton and Deb (US 2005/0144099 Al, pub. June 30,
2005).
V. Claim 19 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weiszfeiler, West Coast, and
Pletz (US 2008/0277465 Al, pub. Nov. 13, 2008).
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Appeal2014-001943
Application 12/643,657
Rejection I
ANALYSIS
Independent claim 1 and dependent claim 6
We are unpersuaded by Appellant's argument that W eiszfeiler fails to
disclose purchasing store credit and rewarding the purchase of store credit as
recited in independent claim 1, i.e.,
at least one incentive rule that defines (i) a behavior
criteria for accumulating the store credit from purchasing at
least a predefined amount of store credit on a regular basis
during the first period of time during visits to a predetermined
brick-and-mortar store
... ; and
awarding the determined amount of the incentive reward
to the customer as a coupon when the predefined amount of
store credit is purchased at a time meeting the regularity criteria
during the first time period
(Appeal Br. 11-14). Appellant asserts that it is unreasonable to equate the
types of purchases made in Weiszfeiler to store credit (Appeal Br. 12-14).
However, the Examiner instead relies on West Coast (p. 2) for the teaching
of store credit. Indeed, the West Coast discloses "pre-purchase" passes for
aerobics classes (p.2). Appellant argues that West Coast's store credit is
incidental to membership and is not an incentivization (Appeal Br. 14).
However, Examiner relies on Weiszfeiler (i-fi-f 2-5, 17-18) for the teaching of
rewarding customers based on the amount of their total purchase and on the
regularity of their visits to the brick-and-mortar store. Indeed, the
background section of W eiszfeiler describes loyalty programs to reward
customers for frequently patronizing a store, e.g., a grocery store, at least
once every pre-defined period (Weiszfeiler i1i12-3).
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Appeal2014-001943
Application 12/643,657
Appellant also argues that West Coast and W eiszfeiler fail to disclose
"accumulating" store credit or pre-purchase passes in a manner that would
incentivize future behavior, and that it does not disclose using the purchase
of store credit at any particular time (Appeal Br. 14--15). However,
Weiszfeiler (i-fi-f 4--5, 24--25) describes awards for customers whose purchase
exceeds a threshold during a pre-determined time period that are to be spent
during a second time period, and also awards for repeated visits, as set forth
above.
Appellant further argues that the Examiner has not demonstrated a
reasonable connection between the teachings of West Coast and those of
Weiszfeiler (Appeal Br. 14--15). However, the Examiner determines that it
would have been obvious to combine West Coast's disclosure of purchase of
store credit with W eiszfeiler' s disclosure of rewarding purchase during a
specific time period in order to build loyalty among customers of a business
(Final Act. 4). We agree for the reasons stated by the Examiner.
We, therefore, sustain the Examiner's rejection under§ 103 of
independent claim 1 over W eiszfeiler and West Coast. Appellant does not
argue the patentability of claim 6 separately from that of independent claim
1, from which it depends. We sustain the Examiner's rejection of claim 6,
for similar reasons as for independent claim 1.
Independent claim 17 and dependent claims 2 and 18
Appellant's arguments with respect to claims 2, 17, and 18 are similar
to those for independent claim 1. We are unpersuaded for similar reasons.
We, therefore, the Examiner's rejections of independent claims 2, 17, and
18.
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Appeal2014-001943
Application 12/643,657
Rejection V
Dependent claim 19
Claim 19 depend from claim 17, and stand rejected under§ 103 as
unpatentable over W eiszfeiler, West Coast, and Pletz. Appellant argues that
Pletz does not remedy the argued deficiency in the Examiner's rejection of
independent claim 17 under § 103 over W eiszfeiler and West Coast. Having
found no deficiency therein, we sustain the Examiner's rejection of claim 19.
Rejection II
Claims 5, 7-11, 20, and 21
Appellant argues that patentability of claims 5, 7-11, and 20-21
together. We select claim 5 as representative, such that claims 7-11, 20, and
21 stand or fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that Deaton fails to discuss regularity as a criteria for
t.. t. t. ' . . . . ,..l • ,..l • 1 • 4:. • w111c11 suoppers actlv1t1es are momtoreu as rec1teu m c1aim .J, i.e.,
wherein purchasing on the regular basis further comprises
purchasing at least the predefined amount of store credit in each of at
least two intervals defined during the first period of time, wherein the
first period of time has at least N intervals, and wherein N is an
integer greater than 1
(Appeal Br. 19-21 ). Appellant argues that Deaton rewards frequency rather
than regularity (Appeal Br. 20). The Examiner relies on Deaton (col. 73, 11.
24--44) for the teaching of awarding credit during a first period, which
contains multiple intervals N (Final Act. 5---6). Indeed, Figure 28 of Deaton,
referred to in this portion of Deaton, diagrams a system in which a preset
number of weeks is analyzed to determine attendance in week intervals, and
in which the coupon is based both on the average purchase and on the
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Appeal2014-001943
Application 12/643,657
number of weeks attended during the preset number of weeks. We find that
this disclosure in Deaton meets the argued regularity limitation. Therefore,
we sustain the Examiner's rejection under§ 103 of claims 5, 7-11, and 20-
21.
Rejections III-IV
Dependent claims 12-16
Claims 12-16 depend from claim 9, and stand rejected under§ 103 as
unpatentable over W eiszfeiler, West Coast, Deaton and one of Asai and
Deb. Appellant argues that Asai and Deb do not remedy the argued
deficiency in the Examiner's rejection of independent claim 9 under § 103
over W eiszfeiler, West Coast, and Deaton. Having found no deficiency
therein, we sustain the Examiner's rejection of claims 12-16.
DECISION
The Examiner's decision to reject claims 1, 2, and 5-21 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)(l )(iv).
AFFIRMED
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