Ex Parte 7,499,872 B1 et al

Patent Trial and Appeal BoardSep 29, 2014

95001604 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,604 04/18/2011 7,499,872 B1 688239-RX 9587 2292 7590 09/29/2014 BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 EXAMINER HOTALING, JOHN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/29/2014 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 ____________________ VESDIA CORPORATION Requester v. TUITIONFUND, LLC Patent Owner ____________________ Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. US 7,499,872 B1 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patent Owner TuitionFund, LLC appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-36 as set forth in the Right of Appeal Notice (RAN) mailed May 30, 2013. Patent Owner filed a brief Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 2 (“PO App. Br.”) on August 30, 2013, and a rebuttal brief (“PO Reb. Br.”) on April 14, 2014. Third Party Requester Vesdia Corporation filed a Respondent’s Brief (“Resp. Br.”) on September 30, 2013. The Examiner mailed an Examiner’s Answer (“Ans.”) on March 14, 2014, which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. An oral hearing was conducted on September 10, 2014. We affirm. The ’872 Patent issued to Thompson on March 3, 2009, and is assigned to Tuitionfund, LLC. The ’872 Patent concerns methods and systems for funding a college education by accumulating and managing merchant rebates (Abstract). Purchases are tracked by a rebate network manager by correlating a registered credit (or debit) card number with purchases made by registered members (see col. 3, l. 66 – col. 4, l. 3). Claim 1 is exemplary of the claims on appeal: 1. A method comprising: a) providing: i) debit and credit card accounts, ii) at least one higher education account, iii) at least one registered merchant offering rebates ranging from 0.01 % to 30%, and iv) a rebate network manager connected to processors that track debit and credit card purchases to provide debit and credit card transaction information, wherein said at least one registered merchant is registered with said rebate network manager and said debit and credit card accounts are registered with said rebate network manager, b) via said rebate network manager, monitoring all of said debit and credit card transaction information from said processors and associated with said at least one registered Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 3 merchant and determining if said transactions are consummated using said debit and credit card accounts registered with said rebate network manager, c) calculating a rebate on each purchase made from said at least one registered merchant using said registered debit and credit card accounts, wherein said calculating step is performed by said rebate network manager utilizing a computer processor configured to calculate said rebate based on an existing formula wherein said rebate ranges from 0.01% to 30% for each transaction, wherein said rebate network manager then debits the account of the merchant, and wherein said computer processor is located at a location other than the location of the merchant; and d) via a computer network, crediting said at least one higher education account with said rebate, wherein said rebate is provided by said at least one registered merchant. The Examiner relies upon the following prior art in rejecting the claims on appeal: 1. Canadian Patent Application Publication No. 2, 177,448 of Kannegiesser, December 3, 1996 (“Canadian ’448”); 2. American Banker Inc., “Relationship Cards: Heroic Means of Saving” 162 (109) FutureBanker 20, June 9, 1997 (“the FutureBanker article”); 3. U.S. Patent No. 6,105,865 of Hardesty (“Hardesty ’865”) issued August 22, 2000; 4. Australian Publication No. AU-B-48289/96 (“Australian ’289”) (also known as “AU 676819 B”) published March 20, 1997; 5. Complaint filed July 11, 1983 in the United Stated District Court for the Southern District of New York against Goldome Bank for Savings, and “Plus Card” Card Cash Discount System Implementation Agreement (“the Goldome Complaint”); Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 4 6. U.S. Patent No. 5,471,669 of Lidman (“Lidman ’669”), issued November 28, 1995; 7. Amy Remus Scott, A Commerce Clause Challenge To New York’s Tax Deduction For Investment In Its Own Tuition Savings Program, 32 U. Mich. J. L. Reform 379-402 (1998- 1999) (“the Michigan article”). The claims stand rejected over various combinations of prior art references (see RAN 3-5): References Claims Basis (§) Canadian ’448 in view of FutureBanker 1-22 and 24 103(a) Hardesty in view of FutureBanker 1-9, 11-14, 16-22, and 24 103(a) Canadian ’448 in view of FutureBanker and Michigan article 23 102(b) Canadian ’448 in view of FutureBanker 25-36 103(a) Hardesty in view of FutureBanker 25-36 103(a) ISSUES Patent Owner argues that none of the references cited discloses a processing method, including a processor located at a location other than the location of the merchant, that monitors all debit and credit card account transaction information to determine if transactions were consummated between a registered merchant and a registered member’s registered card account. According to Patent Owner, such determination occurs at the merchant, rather than a central location, in Canadian ’448 and Hardesty (PO App. Br. 14, 26). Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 5 Patent Owner asserts that neither Canadian ’448 nor FutureBanker discloses or fairly suggests that earned rebates may be used to pay for higher education expenses (PO App. Br. 19). Patent Owner further contends that Canadian ’448 fails to disclose a tracking entity within the meaning of the claims (PO App. Br. 23). Patent Owner asserts that neither Canadian ’448 nor FutureBanker discloses or suggests card accounts capable of being used for both online internet-based and point of sale purchases (PO App. Br. 10-11) or that a party becomes a registered member by providing information relating to one or more accounts to be used for purchases (PO App. Br. 13-14). The arguments made by Patent Owner and Requester present us with the following issues: 1. Does the combination of Canadian ’448 and FutureBanker disclose or suggest a processing method, including a processor located at a location other than the location of the merchant, to determine or correlate if transactions are consummated with registered members using registered member card accounts? 2. Does the combination of Canadian ’448 and FutureBanker disclose or suggest crediting a higher education account with a rebate provided by at least one registered merchant? 3. Does Canadian ’448 in combination with FutureBanker disclose processors associated with a tracking entity in communication with a rebate network manager? 4. Does Canadian ’448 in combination with FutureBanker disclose or suggest a credit or debit card account capable of being used to make both Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 6 online internet-based and point of sale purchases with registered merchants offering rebates? 5. Does Canadian ’448 in combination with FutureBanker disclose or suggest that a party becomes a registered member by providing information relating to one or more accounts to be used by the registered member for purchases? PRINCIPLES OF LAW One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. ANALYSIS REJECTION OF CLAIMS 1-7, 9, 11-14, 16-19, 22, AND 24 OVER CANADIAN ’448 IN VIEW OF FUTUREBANKER We are not persuaded by Patent Owner’s arguments (PO App. Br. 7- 13) that Canadian ’448 in combination with FutureBanker fails to disclose or suggest monitoring “all of said debit and credit card account transaction information . . . associated with said at least one registered merchant and determining if said transactions are consummated using said debit and credit Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 7 card accounts registered with said rebate network manager,” the rebate network manager using a computer processor “located at a location other than the location of the merchant” (claim 1), or “correlating a registered credit or debit card account number with said purchases and said network of registered merchants are registered with said rebate network manager” (claim 14). We agree with Requester (Resp. Br. 3) that Canadian ’448 discloses that “the issuing bank, upon recognizing the special card and that the vendor does provide a contribution of rebate and discount . . . would then charge or debit the cardholder’s account” and pay the vendor (Canadian ’448 p. 21). We find that “upon recognizing,” supra, means that the issuing bank must discriminate between those incoming transactions that involve a registered merchant and a registered card, and those transactions that do not. We further find, in accord with Requester’s position, that this processing, because it is done by the issuing bank, is done at a location other than the location of the merchant (see Resp. Br. 2). We further agree with Requester and find that, in Canadian ’448, a transaction conducted with the CareCard is “correlated” with a stored member account when the issuing bank recognizes the special card and the vendor as part of the electronic transaction (see Resp. Br. 3-4). We are also unpersuaded by Patent Owner’s argument that FutureBanker provides no support for the assertion that the article “demonstrates that rebate programs can be utilized for educational accounts” (PO App. Br. 19). We agree with Requester that FutureBanker would have fairly suggested to one having ordinary skill in the art that rebates such as Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 8 those paid in Canadian ’448 may be applied toward such expense categories as health, education, and retirement (Resp. Br. 4-5). Because we find that Canadian ’448 discloses the issuing bank performing the claimed determining or correlating, and we find that the combination of references suggests applying rebates to educational expenses, we find no error in the Examiner’s rejection of claims 1-7, 9, 11- 14, 16-19, 22, and 24. We sustain the Examiner’s § 103 rejection over Canadian ’448 in view of FutureBanker. REJECTION OF CLAIM 8 OVER CANADIAN ’448 IN VIEW OF FUTUREBANKER We do not agree with Patent Owner that the combination of Canadian ’448 and FutureBanker fails to teach or suggest purchases made online, because the card disclosed in Canadian ’448 would require specialized processing terminals (PO App. Br. 22). Requester is persuasive that Patent Owner has never challenged the Examiner’s taking of Official Notice that making purchases on-line was well known in the art (December 15, 2003 Office Action, p. 5). As we find no error in the Examiner’s rejection of claim 8, we sustain the § 103 rejection over Canadian ’448 in view of FutureBanker. REJECTION OF CLAIMS 10 AND 15 OVER CANADIAN ’448 IN VIEW OF FUTUREBANKER We do not agree with Patent Owner that Canadian ’448 fails to teach processors associated with a tracking entity in communication with a rebate network manager (PO App. Br. 23). Rather, we agree with Requester that Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 9 Canadian ’448 inherently discloses that the issuing bank has processors associated with a separate tracking entity (Resp. Br. 6-7). Starting with the Dale Declaration’s disclosure that merchants have an “acquirer” to accept card transactions from the merchant, either directly or through the acquirer’s card processor (Declaration ¶ 5), we agree with Respondent that, in Canadian ’448, the issuing bank is the “acquirer” for each vendor (Resp. Br. 6). We further agree that Canadian ’448 discloses that it is intended use within the framework of traditional credit card processing systems, which necessarily include having the issuing bank farm out tracking duties to a card processor (Resp. Br. 7). We find that Canadian ’448 discloses all the limitations of claims 10 and 15. We sustain the Examiner’s § 103 rejection over Canadian ’448 in view of FutureBanker. REJECTION OF CLAIMS 20 AND 21 OVER CANADIAN ’448 IN VIEW OF FUTUREBANKER Patent Owner’s argument that the Examiner erred because “nowhere in the FutureBanker article is there any disclosure or suggestion that the customers can access the savings via a second computer processor, much less to transfer the funds from the savings account to make payments on education loans and/or debt” (PO App. Br. 26) is unpersuasive. First, Patent Owner’s argument against FutureBanker individually is insufficient to show error in a rejection based upon a combination. See Keller, 642 F.2d at 425. Second, we agree with Respondent that Canadian ’448 teaches the use of computers for moving money among accounts (Resp. Br. 8; Canadian ’448 Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 10 Figs. 1A-1C). Third, we further agree with Requester that FutureBanker suggests the use of money credited to an education savings account to pay for education expenses, which include loans or debt (Resp. Br. 8). We find no error in the Examiner’s rejection of claims 20 and 21 over Canadian ’448 in view of FutureBanker, and we sustain the § 103 rejection. REJECTION OF CLAIMS 1-9, 11-14, 16-22, AND 24 OVER HARDESTY IN VIEW OF FUTUREBANKER Each of these claims is rejected under § 103 over Canadian ’448 in view of FutureBanker. Because the claims stand rejected, we need not reach the merits of the Examiner’s § 103 rejection over Hardesty in view of FutureBanker. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). REJECTION OF CLAIMS 25, 27, 29, 31, 33, AND 35 OVER CANADIAN ’448 IN VIEW OF FUTUREBANKER Patent Owner’s arguments do not persuade us that the Examiner erred in combining the references to suggest registered member credit card accounts and registered member debit card accounts “capable of being used to make both online internet-based and point of sale purchases with registered merchants” (PO App. Br. 1). Requester correctly points out that the Examiner took Official Notice during original prosecution that on-line purchasing was well known at the time of the invention (Office Action mailed December 15, 2003, p. 5), and that such Official Notice stands unchallenged by Patent Owner. Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 11 As Patent Owner has not shown error in the rejection of claims 25, 27, 29, 31, 33, and 35 over Canadian ’448 in view of FutureBanker, we sustain the Examiner’s rejection. We need not reach the Examiner’s rejection of the same claims over Hardesty in view of FutureBanker. See Gleave, 560 F.3d at 1338. REJECTION OF CLAIMS 26, 28, 30, 32, 34, AND 36 OVER CANADIAN ’448 IN VIEW OF FUTUREBANKER We are not persuaded that the Examiner erred in rejecting these claims. We agree with Requester that the claim language, “wherein a party becomes a registered member by providing information relating to one or more accounts to be used by the registered member for purchases” (claims 28 and 36,1 emphasis added), may fairly be construed to be prospective (see Resp. Br. 2). Because of the presence of the phrase “to be used,” there is no requirement in these claims that the account already be in existence at the time the information is provided. Consequently, we agree that Canadian ’448 discloses this claim limitation, because (as Patent Owner states), when making an application for the card disclosed in Canadian ’448, an individual provides the card issuer with information (PO App. Br. 14). We find no error in the Examiner’s rejection of claims 26, 28, 30, 32, 34, and 36 over Canadian ’448 and FutureBanker, and we sustain the § 103 rejection. We need not reach the Examiner’s rejection of the same claims over Hardesty in view of FutureBanker. See In re Gleave, 560 F.3d at 1338. 1 The other claims in this group recite a substantially identical limitation. Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 12 REJECTION OF CLAIM 23 OVER CANADIAN ’448 IN VIEW OF FUTUREBANKER AND MICHIGAN ARTICLE Patent Owner’s sole argument for patentability is that the Michigan article fails to disclose the claim elements allegedly lacking from Canadian ’448 and FutureBanker (PO App. Br. 33). Because we find supra that Canadian ’448 in combination with FutureBanker discloses all the limitations of independent claim 22, we find Patent Owner’s arguments to be unpersuasive of Examiner error. We sustain the § 103 rejection of claim 23 over Canadian ’448 in view of FutureBanker and the Michigan article. CONCLUSIONS 1. The combination of Canadian ’448 and FutureBanker discloses a processing method, including a processor located at a location other than the location of the merchant, to determine or correlate if transactions are consummated with registered members using registered member card accounts. 2. The combination of Canadian ’448 and FutureBanker suggests crediting a higher education account with a rebate provided by at least one registered merchant. 3. Canadian ’448 in combination with FutureBanker discloses processors associated with a tracking entity in communication with a rebate network manager. 4. Canadian ’448 in combination with FutureBanker suggests a credit or debit card account capable of being used to make both online Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 13 internet-based and point of sale purchases with registered merchants offering rebates. 5. Canadian ’448 in combination with FutureBanker suggests that a party becomes a registered member by providing information relating to one or more accounts to be used by the registered member for purchases. ORDER The Examiner’s rejection of claims 1-36 is affirmed. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED peb Appeal 2014-008890 Inter Partes Reexamination Control 95/001,604 Patent No. 7,499,872 B1 14 PATENT OWNER: BIRCH STEWART KOLASCH & BIRCH, LLP PO Box 747 Falls Church, VA 22040-0747 THIRD PARTY REQUESTOR: Stephen E. Murray PANITCH SCHWARZE BELISARIO & NADEL LLP One Commerce Square, 2005 Market St., Suite 2200 Philadelphia, PA 19103-7086