Visa International Service Association

Patent Trials and Appeals Board

May 18, 2020

2019005542 (P.T.A.B. May. 18, 2020)

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.
14/290,134 05/29/2014 Aparna Krishnan Girish 543US02/090426-30362 6380
113349 7590 05/18/2020
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
STOLTENBERG, DAVID J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte APARNA KRISHNAN GIRISH
____________

Appeal 2019-005542
Application 14/290,134
Technology Center 3600
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–4 and 6–22 under 35 U.S.C. § 103 as
unpatentable over Navar (US 2012/0150606 A1, pub. June 14, 2012),
Alexander (US 5,986,654, iss. Nov. 16, 1999), Griffiths (US 2012/0166268
A1, pub. June 28, 2012), and Pasa (US 9,799,027 B2, iss. Oct. 24, 2017).2
Final Act. 2–7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Visa International Service
Association as the real party in interest. Appeal Br. 2.
2 Claim 5 is canceled. Appeal Br. 20 (Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 1, 21, and 22 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A dynamic checkout button processor-implemented method,
the method being implemented by a dynamic checkout button
(DCB) computing device having a memory storing instructions
in the form of computer executable instructions and one or
more data processors physically configured by executing the
computer executable instructions, comprising:
receiving, via the DCB computing device, a user input
message in relation to a product page checkout request received
from a portable user device associated with a user, wherein the
product page checkout request includes login information for a
user’s wallet account;
in response to receiving the user input message,
querying, using the DCB computing device, a
merchant loyalty database for a user merchant loyalty
level associated with a merchant and the user;
accessing, using the DCB computing device, the
user’s wallet account via the login information and
determining user specific behavior based on information
stored in the user’s wallet account;
determining, using the DCB computing device, a
product discount value based on the user merchant
loyalty level and the user specific behavior;
generating, using the DCB computing device, a
product discount value message to be embedded into a
dynamic checkout button associated with the user’s
wallet account based on the product discount value,
wherein the product discount value message includes a
timer; and
transmitting the product discount value message to
the portable user device, wherein receipt by the portable
user device of the transmitted product discount value
message causes the portable user device to display the
dynamic checkout button and the embedded product
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discount value message on a display of the portable user
device,
wherein the product discount value message is
dynamic and changes as the timer counts down.

OPINION
In contesting the rejection, Appellant references certain limitations
recited in independent claims 1, 21, and 22, but otherwise presents
arguments without regard to any particular claim. See Appeal Br. 9–18.
Thus, we select independent claim 1 as the representative claim, and claims
2–4 and 6–22 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner finds that Navar teaches the
following:
• querying, using the computing device, a merchant loyalty
database (fig. 1 element 130; 0022; 0023) for a user
merchant loyalty level associated with a merchant and
the user (0033);
• determining, using the computing device, a product
discount value based on the user merchant loyalty level
and user specific behavior (0033);
• generating, using the computing device, a product
discount value message based on the product discount
value (0033); . . .
• wherein the product discount value message includes a
timer (i.e. a “countdown clock”) (0035); and
• transmitting the product discount value message to the
portable user device (0039), wherein receipt by the
portable user device of the transmitted product discount
value message causes the portable user device to display
the product discount value message on a display of the
portable user device (0035).
Final Act. 2–3. The Examiner finds that
Griffiths teaches what Navar does not, namely that the discount
is triggered after[:]
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 receiving, via the computing device, a user input message in
relation to a product page checkout request received from a
user device associated with a user (i.e. browsing to a
checkout page) (0009);
 wherein the product discount value message is dynamic and
changes as the timer counts down (0071; 0051; 0067); and
 that the checkout apparatus is associated with a wallet (e.g.
“credit card information”) (0069).
Id. at 3. The Examiner determines that it would have been “obvious to
combine Navar with the timer and changing discount in Griffiths to better
‘create[] in the consumer a sense of urgency’ (0051) at the point of
checkout.” Id. (alteration in original).
The Examiner finds that, “[w]hile Navar teaches creating messages
for portable devices based on customer loyalty, and Griffiths teaches
associating the discount with [a] checkout button, neither of them
specifically teach embedding the message into the button itself.” Final
Act. 3. However, the Examiner finds that Alexander teaches embedding the
message in a dynamic button, transmitting the discount message, and
displaying the dynamic button on a user device. Id. at 4 (citing Alexander,
2:59–62, 8:3–8, 18–34). The Examiner determines that it would have been
obvious “to have modified Navar to place the discount message into the
button itself to better ‘[offer] more distinctive information, especially over
repeated use.’ (Alexander: 1:39–41).” Id. (alteration in original).
The Examiner also finds that
Pasa teaches that all of this can occur in a system of wallet
accounts wherein the product page checkout request includes
login information for a user’s wallet account (Fig. 3A; 4:60;
8:23; 12:42) which results in accessing, using the computing
device, the user’s wallet account via the login information and
determining user specific behavior based on information stored
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in the user’s wallet account (e.g. “coupon or offer associated
with one of the plurality of digital wallets” or “balance of
available funds” or “contact information” including “tracking
wallet usage and expenditures” in the “profile of the
consumer”) (3:20–21, 26–32; 3:40; 8:50–57; 9:3–5; 14:53;
13:57; 15:24–31).
Final Act. 4. The Examiner determines that it would have been obvious “to
integrate secure wallet technology as the source of consumer information, as
is taught by Pasa. . . . One would have been motivated to incorporate digital
wallet data to better gather the consumer information relevant to the offer.”
Id. (citing Pasa, 5:63–6:1).
Appellant argues that the Examiner’s proposed modifications would
render Navar unsatisfactory for its intended purpose and change its principle
of operation. Appeal Br. 11–15. In particular, Appellant asserts that,
[i]f Navar is modified as suggested by the examiner, then the
coupon offer would be associated with an electronic wallet and
a dynamic checkout button that, when activated, applies the
coupon to a customer’s online/mobile order instantaneously.
This would completely eliminate the critical step of displaying
the coupon on a coupon display interface for merchant
verification before the coupon is redeemed. Without
verification, a nefarious user could create false coupons as the
coupons would not be verified.
Id. at 12–13 (citing Navar ¶ 41, Fig. 4E); see also id. at 13 (asserting that the
Examiner’s proposed modifications “completely change the way Navar’s
customer loyalty system operates and renders it unfit for its intended
purpose”). According to Appellant, “[a]ll of these suggested modifications[]
change the principle [of] operation of the customer loyalty application
disclosed in Navar from a basic coupon offering application to a
sophisticated application and interface having integrated electronic wallet
and dynamic checkout button capabilities.” Id. at 15; see also id. at 14
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(asserting that “Navar must be substantially modified” in order to have an
electronic wallet and dynamic checkout button with embedded discount
value message). We are not persuaded by Appellant’s argument in that it
too narrowly defines the principle of operation of Navar.
The “principle of operation” referred to by Appellant relates to the
“basic principles” under which the prior art device was designed to
operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested
combination of references would require a substantial reconstruction and
redesign of the elements shown in [the primary reference] as well as a
change in the basic principles under which the [primary reference]
construction was designed to operate.”) (emphasis added). Under Ratti, “a
change in the basic principles” refers to change that is fundamental in scope
so as to relate to scientific or technical principles under which the invention
is designed to operate. Here, Appellant does not provide factual evidence or
persuasive technical reasoning to explain how or why adding an electronic
wallet and a dynamic checkout button embedded discount value message to
Navar’s customer loyalty application, as proposed by the Examiner, would
result in a change in the basic principles of Navar’s customer loyalty
application, or otherwise render it unsatisfactory for its intended purpose of
providing rewards, especially those that are tailored for the customer, to
attract and retain customers. Navar, Abstract, ¶¶ 3, 8; see also Ans. 6–7
(explaining that each proposed modification based on the teachings of
Griffiths, Alexander, and Pasa is “an incremental improvement to the
disclosure[] of Navar rather than a fundamental change in the system
disclosed by Navar”).
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Appellant argues that Alexander does not “teach a button that has text
that continues to change once displayed. Rather, Alexander discloses a
system and method for creating a display button object that appears to a
viewer to be a unified graphic image of a button having text and graphics,
where the text can be changed.” Appeal Br. 17 (citing Alexander, 6:38–46).
Appellant asserts that Alexander’s “modifications that are made to the text
happen before the button is displayed.” Id. (citing Alexander, 2:63–65,
7:9–12). According to Appellant, “[t]his is different from the present
disclosure where the text is embedded into and displayed with the button and
then the text changes as a timer counts down.” Id. We are not persuaded by
this argument because it attacks Alexander individually, rather than the
combination of reference teachings relied on by the Examiner in the
rejection. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot
show nonobviousness by attacking references individually when the
rejection is based on a combination of the references). As discussed above,
the Examiner relies on Griffiths for teaching a product discount value
message that is dynamic and changes as a timer counts down. Final Act. 3
(citing Griffiths ¶¶ 51, 67, 71); see also Ans. 9 (explaining that “Griffiths is
relied upon to disclose the changing of a text message as a part of a display
element or button while the user views the display (i.e., analogous to a real-
time changing stock price feed)”). The Examiner relies on Alexander for
teaching embedding the message in the button itself. Final Act. 4. In this
regard, Appellant’s argument against Alexander individually does not
apprise us of error in the Examiner’s determination that the disputed
limitation is rendered obvious by the combination of reference teachings
presented in the rejection.
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Appellant argues that “Alexander . . . teaches away from the use of
textual messages in a dynamic button in favor of the use of icons only.”
Appeal Br. 17. In particular, Appellant asserts that Alexander “states that ‘a
button with an icon (e.g., an iconic button) is faster to locate and recognize
than a text only button because it offers more distinctive information
especially over repeated use.’” Id. (quoting Alexander, 1:37–43). This
argument is unconvincing. In order to “teach away,” a reference must
“criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has not identified
where Alexander criticizes, discredits, or discourages the use of a dynamic
button with embedded message text. Alexander’s teaching that an iconic
button has advantages over a text only button does not teach away from
embedding textual messages in a dynamic button. See Ans. 8 (explaining
that “Alexander is not restricted to only iconic equipped buttons and also
includes the display of textual information which a person of skill in the art
would appreciate is also directed to enhancing the marketing appeal of
displayed buttons”).
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s conclusion of obviousness with respect to claim 1.
Accordingly, we sustain the rejection of claim 1, and claims 2–4 and 6–22
falling therewith, under 35 U.S.C. § 103 as unpatentable over Navar,
Alexander, Griffiths, and Pasa.

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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–4, 6–22 103 Navar, Alexander,
Griffiths, Pasa
1–4, 6–22
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)(iv).

AFFIRMED