VISA U.S.A. INC.

Patent Trials and Appeals Board

May 6, 2021

2020004052 (P.T.A.B. May. 6, 2021)

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.
15/972,318 05/07/2018 Brian Jeffrey Maw 8223-1803576(P-40025US04) 4167
144885 7590 05/06/2021
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
ST CYR, DANIEL
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
05/06/2021 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN JEFFREY MAW
Appeal 2020-004052
Application 15/972,318
Technology Center 2800
Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and
LILAN REN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–2, 4–10, and 12–20. See Final Act.
1. We have jurisdiction 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 the real party in interest as Visa International
Service Association. Appeal Br. 3.
Appeal 2020-004052
Application 15/972,318

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CLAIMED SUBJECT MATTER
The claims are directed to a system and method for opting into non-
financial programs (e.g., rewards or loyalty programs) at a point of sale.
Spec. ¶¶ 2, 3. Claim 1, reproduced below, is illustrative of the claimed
subject matter (formatting and emphasis added to highlight key disputed
limitation):
1. An opt-in system comprising a point-of-sale device including a
payment device reader, the point-of-sale device configured to:

receive, from a payment device associated with a user,
payment device information for conducting a transaction;

present, through at least one user interface, at least one offer
to opt-in to a rewards or loyalty program associated with a
commercial entity;

receive a user response to the at least one offer to opt-in to the
rewards or loyalty program;

in response to receiving the user response, automatically fill
out an application for the rewards or loyalty program based on
the payment device information received from the payment
device; and

generate a transaction authorization request message based on
the user response and transaction information associated with the
transaction, wherein generating the transaction authorization
request message comprises:

combining and formatting the transaction information and
the user response into formatted information, and including the
formatted information in the transaction authorization request
message.
Independent claim 9 recites a computer-implemented method for
opting-in to a rewards or loyalty program that corresponds to the system
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recited in claim 1 (Claims App. 19, 20). Independent claim 17 recites a
point-of-sale device similar to that recited in claim 1 (Claims App. 20, 21).
The key limitation in dispute as italicized in claim 1 is common to all three
independent claims.2
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cohagan US 2005/0043992 A1 Feb. 24, 2005
Maw US 10,007,922 B2 June 26, 2018

REJECTIONS
Claims 1–2, 4–10, 12–17, and 19–20 are rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by Cohagan.3 Final Act. 2.
Claims 2 and 10 are also rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Cohagan. Final Act. 4.
At the outset, we note that the nonstatutory double patenting rejection
made by the Examiner over Maw (Final Act. 6) has been overcome with the
approved terminal disclaimer filed May 4, 2020 (see also Reply Br. 2).

2 The claims appear to be directed to an abstract idea without significantly
more. The Board relies on the involved parties to focus the issues and
decides those issues based on facts and arguments presented by the involved
parties. See Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010 (precedential)).
While the Board is authorized to enter a new ground of rejection, this
authority is discretionary. See 37 C.F.R. § 41.50(b). We leave it to the
Examiner to decide in any further prosecution of this case whether a new
ground of rejection based on the claims being directed to an abstract idea
without significantly more (nonstatutory subject matter) should be made.
3 We consider it harmless error that the Examiner characterized the rejection
as “based on public use or sale” (Final Act. 2).
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OPINION
After reviewing each of the Appellant’s arguments for patentability,
we determine that a preponderance of the evidence supports the Examiner’s
finding that the claimed subject matter of representative claim 1 (as well as
any other claims argued separately) is anticipated within the meaning of
§ 102 in view of the applied prior art of Cohagan. Appellant has also not
shown reversible error in the Examiner’s § 103 rejection of claims 2 and 10.
Accordingly, we will sustain all of the Examiner’s rejections for essentially
those reasons expressed in the Answer and Final Action. We add the
following primarily for emphasis.
The main dispute is whether the claim language “generating a
transaction authorization request message”, that “comprises: combining and
formatting the transaction information and the user response into formatted
information, and including the formatted information in the transaction
authorization request message” as recited in representative claim 1 (and
corresponding language in claims 9 and 17), encompasses the instant
enrollment and point of sale process and system as taught by Cohagan.
(Appeal Br. 12–13; see also Reply Br. 3–4). Appellant argues that the
Examiner has not shown that Cohagan teaches the required transaction
authorization request message (Appeal Br. 12–13). These arguments are not
persuasive of error in the Examiner’s rejection.
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
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a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
It is also established that in determining whether a reference
anticipates the subject matter recited in a claim, “it is proper to take not
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Cf. In re
Schaumann, 572 F.2d 312, 315 (CCPA 1978) (In order to anticipate, a
reference must identify something falling within the claimed subject matter
with sufficient specificity to constitute a description thereof within the
purview of § 102). It is also well settled that specific examples of the
claimed subject matter are not necessary to establish anticipation. Rather, to
anticipate, one skilled in the art must be able to “at once envisage” the
claimed subject matter in the prior art disclosure. In re Petering, 301 F.2d
676, 681 (CCPA 1962).
Specifically, Appellant argues that the Cohagan does not teach the
claimed transaction authorization request to include the claimed combining
transaction information and the user response (Appeal Br. 12–13; Reply Br.
3–4). While the Examiner cites Figure 2 of Cohagan as teaching the claimed
transaction authorization request message (Final Act. 2–3), Appellant argues
that Cohagan’s Figure 2 teaches away from such functionality by alleging
that the user’s response in Cohagan is instead immediately communicated to
the retailer system, instead of being combined with the transaction
information within the transaction authorization request (Appeal Br. 12–13).
Appellant contends that the Examiner’s citation of step 212 of Figure 2
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(Final Act. 2–3) does not involve combining the user response with any sort
of message. Id.
The Examiner correctly points out that Cohagan’s Figure 2 teaches an
instant enrollment process for a loyalty program involving an authorization
request (see, e.g., Cohagan’s enrollment application, and waiting for
approval response ¶¶ 90–93), and also teaches receiving the user’s
affirmative response for participation in the loyalty program (Ans. 7–8).
The Examiner explains that, without combining the user’s response and the
transaction data, it would not be possible to know to issue instant coupons
and temporary account numbers (Id.). A preponderance of the evidence
supports the Examiner’s finding that in order to process the user’s
enrollment, the user’s request to enroll must be combined with enrollment
application (Ans. 8; see Cohagan ¶¶ 86–90).
Appellant’s argument that Cohagan teaches away from a transaction
authorization request is not persuasive, because Appellant fails to explain
with any specificity how Appellant’s alleged immediate communication of
Cohagan’s user response would somehow prevent Cohagan from later
submitting an authorization request on behalf of the user and based on the
user’s affirmative response to participate in the loyalty program (see
Cohagan, Fig 2, 214, 216, and 218). Appellant de facto appears to contend
that the checkout process and the authorization request of Figure 2 of
Cohagan are mutually exclusive process steps (Appeal Br. 12–13, Reply Br.
4). However, Cohagan explains that the checkout process is happening at
the same time as the request for loyalty membership, and information is
shared among both processes (see Cohagan ¶¶ 86–90). Indeed, step 220
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states “immediate participation” in the loyalty program is obtained during
checkout.
Notably, Appellant has not directed our attention to any limiting
definitions in the Specification, nor does Appellant provide any persuasive
reasoning or credible evidence to establish that the Examiner’s interpretation
of the language of claim 1 (or corresponding claims 9 and 17) is
unreasonable. Therefore, Appellant’s arguments are insufficient to show
reversible error.
With respect to dependent claims 2 and 10, Appellant argues that
Cohagan does not inherently teach the recited printing “based on the user
response” (Appeal Br. 13). However, Appellant has not shown reversible
error in the Examiner’s position that any retail point-of-sale system has the
inherent ability to generate a receipt, and that, in effect, a receipt is more
often than not printed for the customer (Ans. 8). Further, since Cohagan
allows for immediate participation in the loyalty program, one of ordinary
skill would have immediately inferred that the receipt would indeed be based
on the user response and include any relevant loyalty coupon(s). The
Examiner points out that Cohagan de facto describes the consumer waiting
for a receipt at the point-of-sale system (see Final Act. 3 citing Cohagan ¶
92). The Examiner also points out that Cohagan teaches the ability to print
out purchaser profiles, including combined consumer enrollment data and
purchase data, which would also include coupons (Ans. 8; see Cohagan ¶¶
146–148).
Appellant has failed to show with any specificity how the printing and
receipt elements of Cohagan are differentiated from the claimed printing
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recited in Appellant’s claims 2 and 10; thus, Appellant’s arguments are
insufficient to show reversible error.
With respect to dependent claims 8 and 16, Appellant asserts that
Cohagan’s Figure 2 fails to teach or suggest including a user response in a
transaction authorization request message, “even generally” (Appeal Br. 14).
This is not persuasive or reversible error for reasons set out supra. Again,
the Examiner points out that Cohagan teaches a request to approve a
transaction and an immediate enrollment into a reward program based on a
user’s affirmative response (Ans. 8). Further, the Examiner points to
Cohagan’s Figure 2, steps 210-220 to show that the enrollment request and
generation of an enrollment application is based on user’s affirmative
response to enroll in the loyalty program (Final Act 3; see also Cohagan ¶¶
86–90). Notably, we do not find—and Appellant has not directed our
attention to—any limiting definitions in the Specification, nor does
Appellant provide any persuasive reasoning or credible evidence to establish
that the Examiner’s interpretation of the language of claims 8 and 16 is
unreasonable.
With respect to dependent claims 6 and 14, Appellant argues that that
Cohagan fails to describe configuring a field on a payment device. In
response, Examiner points out that once a user device is scanned, the user
information is generated and communicated to appropriate entities so that
the reader/scanner configures user information (Ans. 8). One of ordinary
skill would have immediately inferred that the reader/scanner configures
user information within at least the user fields of the enrollment application.
Again, Appellant fails to provide with any specificity why Appellant’s
claimed configuring a field on a payment device fails to encompass
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Cohagan’s collection of user data and generation of data fields within an
enrollment application.
With respect to dependent claims 7, 15, and 20, Appellant argues that
Cohagan fails to teach or suggest that generating the transaction
authorization request message comprises embedding the user response in the
customer exclusive data field (Appeal Br. 14). The Examiner points out that
Cohagan teaches an authorization request is generated when a user card is
scanned at the POS terminal, in order to allow immediate participation in the
loyalty program, including generating a temporary ID, and thus must
accompany the transaction (Ans. 8). Appellant has not shown any error in
the Examiner’s position that the fields of the enrollment application
incorporate information from the customer, their transaction, and their
loyalty membership identifying information (e.g., Ans. 7; see generally
Appeal Br.). Therefore, one of ordinary skill would have readily appreciated
or inferred that Copenhagen would necessarily have several fields that are
embedded or incorporated into the loyalty enrollment based on the user’s
affirmative response to enroll in the loyalty program. Appellant fails to
provide with any specificity why Appellant’s claims 7, 15, and 20 fails to
encompass Cohagan’s authorization request generation when a user card is
scanned at the POS terminal, in order to allow immediate participation in the
loyalty program.4

4 We also note that regarding the argued dependent claims, Appellant
essentially restates various claim limitations and asserts that Cohagan fails to
teach these limitations. Appeal Br. 13, 14. As such, Appellant’s statements
may be considered to be nothing more than general allegations of
patentability and are not considered separate patentability arguments. See 37
C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a
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Application 15/972,318

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Appellant further argues that Examiner’s alternative §103 rejection of
claims 2 and 10 is improper because the Examiner fails to show how the
claimed printing of a receipt is a known common practice (Reply Br. 15–
16). This argument is not persuasive of reversible error as the printing of a
sales receipt and/or coupons at checkout at a store is ubiquitous (see Ans. 9
(pointing out that based on common practice with most retail point-of-sale
systems, it is common practice to print customer receipts which summarize
the transaction)).
Accordingly, the Examiner’s §§ 102 and 103 rejections are affirmed.

CONCLUSION
The Examiner’s rejections are affirmed.

claim recites will not be considered an argument for separate patentability of
the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).

Appeal 2020-004052
Application 15/972,318

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–10,
12–17, 19,
20
102(b) Cohagan 1, 2, 4–10,
12–17, 19,
20

2, 10 103(a) Cohagan 2, 10
Overall
Outcome
1, 2, 4–10,
12–17, 19,
20

TIME PERIOD FOR RESPONSE
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