YOUR CITY SAMPLER, LLC

Patent Trials and Appeals Board

Feb 20, 2020

13843015 - (D) (P.T.A.B. Feb. 20, 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.
13/843,015 03/15/2013 SID T. SHUGART 39519.180965 1054
5251 7590 02/20/2020
SHOOK, HARDY & BACON LLP
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BLVD
KANSAS CITY, MO 64108-2613
EXAMINER
MPAMUGO, CHINYERE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/20/2020 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):
BPARKERSON@SHB.COM
docket.shb@clarivate.com
ipdocket@shb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SID T. SHUGART, DAWNUA M. DAWSON,
and CECILIO WEBB

Appeal 2019-003988
Application 13/843,015
Technology Center 3600

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Sid T. Shugart et al.,
appeals from the Examiner’s decision rejecting claims 1–13 and 21–27.
Claims 14–20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Your City
Sampler, LLC. Appeal Br. 3.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to management of electronic vendor offers.
Spec. ¶ 2.
Exemplary Claim
Claims 1, 9, and 21, reproduced below, are illustrative of the subject
matter on appeal (formatting and emphases added to dispositive and/or
contested limitations):
1. One or more non-transitory computer-readable
media having computer-executable instructions embodied
thereon for performing a method of providing a graphical user
interface on a user computing device for managing vendor
offers, the method comprising:
providing, on the user computing device, a graphical user
interface element comprising a visual representation of a virtual
loyalty card;
providing at least a portion of the virtual loyalty card on
the graphical user interface, the virtual loyalty card having a
plurality of loyalty portions associated with a vendor that
indicate loyalty of a user based on interaction with the vendor,
wherein each of the plurality of loyalty portions are
concurrently visually presented on the virtual loyalty card and
correspond to a unique item or monetary amount for utilization
in connection with an upcoming purchase;

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 5, 2018); Reply Brief (“Reply Br.,” filed April 26, 2019); Examiner’s
Answer (“Ans.,” mailed Feb. 26, 2019); Final Office Action (“Final Act.,”
mailed May 4, 2018); and the original Specification (“Spec.,” filed Mar.
15, 2013).
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receiving an indication to fulfill one of the loyalty
portions provided on the virtual loyalty card; and
upon fulfilling the one of the loyalty portions
concurrently visually presented on the virtual loyalty card,
providing an indication on the graphical user interface that the
one of the loyalty portions is completed by visually modifying
the one of the loyalty portions concurrently visually provided
on the virtual loyalty card to indicate the one of the loyalty
portions was used and is unavailable for subsequent utilization,
wherein the visually modified loyalty portion remains presented
on the virtual loyalty card.
9. A method of providing a graphical user interface
on a mobile device for managing offers, the method
comprising:
activating a virtual loyalty card associated with an entity
such that the virtual loyalty card can be accessed and used in
association with the entity via the mobile device, the entity
comprising an educational institution or a non-profit
organization;
providing, on the mobile device, a graphical user
interface element comprising a visual representation of the
virtual loyalty card, the virtual loyalty card having a plurality of
participation portions associated with the entity that indicate
participation of a user based on attendance of events associated
with the entity, wherein each of the plurality of participation
portions are concurrently visually presented on the virtual
loyalty card and represent an upcoming event in association
with the entity;
receiving an indication, via the mobile device, that an
event associated with the entity has been attended;
upon attending the event, providing an indication on the
graphical user interface that the event has been attended by
visually modifying a participation portion visually provided on
the virtual loyalty card that represents the event to indicate the
event was attended;
determining that attendance has been completed for a
predetermined number of entity events; and
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providing an offer via the graphical user interface for
completing attendance of the predetermined number of entity
events.
21. One or more non-transitory computer-readable
media having computer executable instructions embodied
thereon for performing a method of managing entity offers, the
method comprising:
providing, on a mobile device, a graphical user interface
element comprising a visual representation indicating a
plurality of electronic fundraising cards;
receiving a user selection of an electronic fundraising
card associated with a non-profit organization;
receiving an indication of a purchase by the user of the
selected electronic fundraising card; and
based on the purchase of the selected electronic
fundraising card associated with the non-profit organization,
initiating electronic distribution of a payment of sales proceeds
from the purchase of the electronic fundraising card to the non-
profit organization, wherein the payment of the sales proceeds
of the electronic fundraising card is a portion of an amount of
the purchase of the electronic fundraising card, wherein the
purchase of the selected electronic fundraising card enables
redemption of a plurality of offers provided via the electronic
fundraising card.

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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Newman et al. (“Newman”) US 2006/0089874 A1 April 27, 2006
Byerley et al. (“Byerley”) US 2009/0036103 A1 Feb. 5, 2009
Blass US 2010/0114685 Al May 6, 2010
Roeding et al. (“Roeding”) US 2011/0029362 A1 Feb. 3, 2011
LaPorte et al. (“LaPorte”) US 2011/0307318 A1 Dec. 15, 2011
Witherspoon, Jr. et al.
(“Witherspoon”)
US 2013/0085831 A1 Apr. 4, 2013
Rejections on Appeal3
R1. Claims 21–23, 25, and 26 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Newman. Final Act. 8.
R2. Claims 1–8 and 27 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Newman and
Byerley. Final Act. 10.

3 The Examiner has withdrawn the rejection under 35 U.S.C. § 101. Ans. 3.
However, in the event of further prosecution, the Examiner is invited to
evaluate the claims for compliance with the subject matter eligibility
requirements of 35 U.S.C. § 101 in view of the Director’s Revised
Guidance, i.e., 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (January 7, 2019) (https://www.govinfo.gov/content/pkg/FR-
2019-01-07/pdf/2018-28282.pdf). Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) § 1213.02.
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R3. Claims 9 and 11–13 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Newman, Witherspoon, and
Roeding. Final Act. 14.
R4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Newman, Witherspoon, Roeding and
LaPorte. Final Act. 17.
R5. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Newman and Blass. Id.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 8–11) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness
Rejection R2 of claims 1–8 and 27 on the basis of representative
independent claim 1; and we decide the appeal of obviousness Rejection R3
of claims 9 and 11–13 on the basis of representative independent claim 9.
We address anticipation rejection R1 of independent claim 21, and
associated dependent claims 23, 25, and 26, infra. We address remaining
dependent claims 10 and 24 rejected under obviousness Rejections R4 and
R5, respectively, infra.4

4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
As discussed herein, we agree with particular arguments set forth by
Appellant with respect to anticipation Rejection R1 of claims 21–23, 25,
and 26. We also reverse claim 24, which depends directly from independent
claim 21, for the reasons discussed infra.
However, we disagree with Appellant’s arguments with respect to the
obviousness rejections of all remaining claims 1–13, and 27 and, unless
otherwise noted, we incorporate by reference herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellant’s arguments.
We highlight and address specific findings and arguments regarding
claims 1, 9, and 21 for emphasis as follows.
1. § 103(a) Rejection R1 of Claims 21–23, 25, and 26
Issue 1
Appellant argues (Appeal Br. 18–20; Reply Br. 3–4) the Examiner’s
rejection of claim 21 under 35 U.S.C. § 102(b) as anticipated by Newman is
in error. These contentions present us with the following issues:
Did the Examiner err in finding Newman discloses a “non-transitory
computer-readable media having computer-executable instructions
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embodied thereon for performing a method of providing a graphical user
interface on a user computing device for managing vendor offers,” wherein
the method includes, inter alia, the step of “receiving an indication of a
purchase by the user of the selected electronic fundraising card; and based
on the purchase of the selected electronic fundraising card associated with
the non-profit organization,” as recited in claim 21?
Analysis5
Appellant contends Newman’s description of a monetary amount
generated by purchases using the card does not teach “a purchase by the
user of the selected electronic fundraising card,” as recited in independent
claim 21. See generally, Appeal Br. 19–20 (emphasis added). Appellant
explains, “[t]his is because Newman describes a monetary amount generated
by purchases using the card — not a purchase of the selected electronic
fundraising card, as recited in claim 21. The Office Action cannot interpret
the claimed feature as ‘purchases using the card’[ ] as this interpretation
contradicts the broadest reasonable interpretation of the claim.” Appeal Br.
20 (citation omitted).
Turning to the cited evidence, paragraph 66 of Newman, as relied
upon by the Examiner (Final Act. 9), at best merely describes:
“Alternatively, a card could be provided with a display which is updated
only when a purchase takes place, by ‘swiping’ it through a terminal of a
retail establishment participating in the loyalty scheme.” (emphasis added).

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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We agree with Appellant that the Examiner’s claim interpretation is
overly broad and unreasonable. We find a preponderance of the evidence
supports Appellant’s contention that a purchase of an item made using a
card does not disclose a purchase of a card. See Appeal Br. 20.
Accordingly, ,we are persuaded the Examiner erred in finding that paragraph
66 of Newman discloses the dispositive limitation of independent claim 21.6
Accordingly, Appellant has provided sufficient evidence or argument
to persuade us of at least one reversible error in the Examiner's finding of
anticipation for independent claim 21. Therefore, we are constrained on this
record to reverse the Examiner’s anticipation rejection of independent
claim 21. For the same reasons, we do not sustain the Examiner's rejection
of dependent claims 22, 23, 25, and 26, which each depend directly from
claim 21. We address infra claim 24, which also depends directly from
claim 1, and was rejected under § 103(a) based upon the combined teachings
and suggestions of Newman and Blass.
2. § 103(a) Rejection R2 of Claims 1–8 and 27
Issue 2
Appellant argues (Appeal Br. 20–24; Reply Br. 4–6) the Examiner's
rejection of claims 1–8 and 27 under 35 U.S.C. § 103(a) as being obvious
over the combination of Newman and Byerley is in error. These contentions
present us with the following issue:

6 Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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Did the Examiner err in finding the cited prior art combination teaches
or suggests a “providing an indication on the graphical user interface that the
one of the loyalty portions is completed by visually modifying the one of the
loyalty portions concurrently visually provided on the virtual loyalty card to
indicate the one of the loyalty portions was used and is unavailable for
subsequent utilization,” as recited in claim 1 (emphasis added)?
The Examiner finds Byerley’s “delete message to the mobile wallet”
teaches or suggests the disputed “visually modifying” limitation. Id, citing
Byerley, ¶ 71. See Final Act. 11–12.
Appellant argues:
Deleting an offer, as in Byerley, is very different from
providing an indication on the graphical user interface that the
one of the loyalty portions is completed by visually modifying
one loyalty portion concurrently visually provided on the
virtual loyalty card to indicate that loyalty portion is used and
unavailable for subsequent utilization, as in claim 1. Similarly,
removing an offer from the wallet is unlike providing an
indication on the graphical user interface that the one of the
loyalty portions is completed by visually modifying one loyalty
portion concurrently visually provided on the virtual loyalty
card to indicate the loyalty portion is used and unavailable for
subsequent utilization, as in claim 1.
Appeal Br. 22.
In the Answer, the Examiner disagrees with Appellant, and further
explains the basis for the rejection. As an issue of claim construction, the
Examiner explains: “[u]sing the broadest reasonable interpretation,
modifying an offer can be interpreted as deleting an offer and Paragraph
[0071] of Byerley discloses sending ‘the delete message to the mobile
wallet.’ Thus, there is a visual representation of the modification.” Ans. 4.
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Turning to the cited evidence, we note Byerley generates a delete
message when an offer is redeemed and sends the delete message to the
mobile wallet of the mobile device, after which the mobile wallet application
removes the offer from the wallet. See Byerley, ¶ 71.
Because we find deleting an offer modifies the offer, we are not
persuaded the Examiner erred. Therefore, we find Byerley’s “redemption
message” ¶ 71 indicating redemption of the marketing offer, and deleting the
offer from the mobile wallet upon receipt of the redemption message teaches
or at least suggests the disputed imitation: “providing an indication on the
graphical user interface that the one of the loyalty portions is completed by
visually modifying the one of the loyalty portions concurrently visually
provided on the virtual loyalty card to indicate the one of the loyalty
portions was used and is unavailable for subsequent utilization,” as recited
in claim 1 (emphasis added).
Accordingly, we sustain the Examiner rejection of representative
claim 1.
3. § 103(a) Rejection R3 of Claims 9 and 11–13
Issue 3
Appellant argues (Appeal Br. 24–29; Reply Br. 6–10) the Examiner's
rejection of claims 9 and 11–13 under 35 U.S.C. § 103(a) as being obvious
over the combination of Newman, Witherspoon, and Roeding is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method of providing a graphical user interface on a mobile
device for managing offers,” that includes, inter alia, the steps of:
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providing, on the mobile device, a graphical user
interface element comprising a visual representation of the
virtual loyalty card, the virtual loyalty card having a plurality of
participation portions associated with the entity that indicate
participation of a user based on attendance of events associated
with the entity, and wherein each of the plurality of
participation portions are concurrently visually presented on the
virtual loyalty card and represent an upcoming event in
association with the entity, [and]
upon attending the event, providing an indication on the
graphical user interface that the event has been attended by
visually modifying a participation portion visually provided on
the virtual loyalty card that represents the event to indicate the
event was attended,
as recited in claim 9?
Appellant argues that Newman’s Internet Reward Bar does not teach
or suggest a GUI element having a virtual loyalty card. Appeal Br. 25–26
(citing Newman Figs. 3 and 5). Appellant argues “[a] physical reward card
having an LCD strip display is different than a GUI element having a virtual
loyalty card, as recited in independent claim 9.” Appeal Br. 26.
Appellant further argues “the references do not teach or suggest upon
attending the event, providing an indication on the graphical user interface
that the event has been attended by visually modifying a participation
portion visually provided on the virtual loyalty card that represents the
event to indicate the event was attended, as in claim 9.” Appeal Br. 27.
The Examiner finds Newman’s Figs. 3 and 5 show an insert forming a
part of a webpage and Newman’s card, shown in an active browse state,
teach or at least suggest the disputed limitation “a graphical user interface
element comprising a visual representation of the virtual loyalty card, the
virtual loyalty card having a plurality of participation portions associated
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with the entity.” Final Act. 15. The Examiner finds the user display
showing the amount earned in points for an organization teaches or suggests
“participation.” Ans. 4–5.
We find a preponderance of the cited evidence supports the
Examiner’s findings, because Appellant has not pointed to a definition in its
Specification that would preclude the Examiner’s broad but reasonable
interpretation. Therefore, we find Newman’s Fig. 5, depicting a graphical
user interface element showing generated accumulated points, teaches or at
least suggests the disputed limitation, particularly the “participation portions
associated with the entity,” as recited in independent claim 9.
Similarly, we find a preponderance of the cited evidence supports the
Examiner’s findings regarding the second disputed limitation of claim 9
(Ans. 5, citing Witherspoon Fig. 44 and ¶ 177), because we find
Witherspoon’s game attendance report, indicating whether or not a person
attended the game, teaches or at least suggests the disputed limitation “upon
attending the event, providing an indication on the graphical user interface
that the event has been attended by visually modifying a participation
portion visually provided on the virtual loyalty card that represents the event
to indicate the event was attended.” The right-most column of Witherpoon’s
Fig. 44 shows whether a member has attended a game, and, we find the
combination of Newman, Witherspoon, and Roeding teach or suggest this
disputed limitation.
Accordingly, under the broadest reasonable interpretation, we find the
prior art combination teaches or suggests the disputed limitations of
representative claim 9.
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3. § 103(a) Rejections R4 and R5 of Claims 10 and 24
Claim 10
In view of the lack of any substantive, separate arguments traversing
the Examiner’s legal conclusion of obviousness regarding Rejection R4 of
claim 10, we sustain the Examiner’s rejection of claim 10, which depends
directly from independent claim 9. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(iv).
Claim 24
Claim 24 depends directly from independent claim 21. In light of our
reversal of independent claim 21 in Rejection R1, above, we also reverse the
Examiner’s Rejection R5 of claim 24, because the Examiner has not shown
that the cited secondary Blass reference overcomes the aforementioned
deficiencies of Newman, as discussed above regarding anticipation
Rejection R1 of claim 21.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 3–12) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.

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CONCLUSION
The Examiner erred with respect to anticipation Rejection R1 of
claims 21–23, 25, and 26, and also erred with respect to obviousness
Rejection R5 of claim 24, such that we reverse the rejections of
claims 21–26.
The Examiner did not err with respect to obviousness Rejections R2
through R4 of claims 1–13 and 27 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
Reference(s)
Affirmed Reversed
21–23, 25, 26 102 Anticipation
Newman
21–23, 25, 26
1–8, 27 103 Obviousness
Newman,
Byerley
1–8, 27
9, 11–13 103 Obviousness
Newman,
Witherspoon,
Roeding
9, 11–13
10 103 Obviousness
Newman,
Witherspoon,
Roeding,
LaPorte
10
24 103 Obviousness
Newman,
Blass
24
Overall
Result
1–13, 27 21–26
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FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART