Ex Parte 7,653,572 et al

Patent Trial and Appeal BoardSep 25, 2014

95001601 (P.T.A.B. Sep. 25, 2014)

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. 95/001,601 04/15/2011 7,653,572 688239-RX1 7426 2292 7590 09/25/2014 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 09/25/2014 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 and Appellant ____________________ Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. US 7,653,572 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 1-9, 11-19, and 22-38 1 as set forth in the Right of Appeal Notice (RAN) mailed May 30, 2013. Patent 1 Claims 10, 20, and 21 have been confirmed. Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 2 Owner filed a brief (“PO App. Br.”) on August 30, 2013 and a rebuttal brief (“PO Reb. Br.”) on March 13, 2014. Third Party Requester Vesdia Corporation filed a Respondent’s Brief on September 30, 2013. The Examiner mailed an Examiner’s Answer (“Ans.”) on February 13, 2014 which incorporated the RAN by reference. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm. The ’572 Patent issued to Thompson on January 26, 2010, and is assigned to TuitionFund, LLC. The ’572 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: A method of providing a rebate program, the rebate program including registered members, registered member credit card accounts, registered member debit card accounts, and registered member rebate accounts in which to apply rebates earned by registered members, at least one registered merchant offering rebates to registered members with registered debit or credit card accounts, the method comprising: a) at a rebate network manager connected to said at least one registered merchant via processors that track debit or credit card account purchases to provide debit and credit card account transaction information, receiving debit and credit card account transaction information associated with a registered merchant; Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 3 b) via said rebate network manager operating a centralized processing system configured to monitor all of said debit and credit card account transaction information from said processors and associated with a registered merchant to determine if said transactions are consummated with registered members using said registered member card accounts, wherein said rebate network manager’s centralized processing system is located at a location other than the location of the merchant, c) calculating a rebate based upon an existing formula for a purchase by said registered member from said registered merchant, and d) generating information needed to apply rebate monies earned to at least one rebate account of a registered member. PO App. Br. 37. The Examiner relies upon the following prior art in rejecting the claims on appeal: McCarthy 4,941,090 Jul. 10, 1990 Hoffman 5,297,026 Mar. 22, 1994 Community Ben. AU-B-48289/96 March 26, 1996 (Australian ’289) Kannegiesser CA 2,177,488 A Dec. 3, 1996 (Canadian ’488) Hardesty US 6,105,865 Aug. 22, 2000 FutureBanker, Relationship Cards: Heroic Means of Saving, June 1997 (FutureBanker article) Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 4 The claims stand rejected over various combinations of prior art references (see RAN 3-5): References Claims Basis (§) Canadian ’448 1, 2, 7-9, 11-16, and 22-26 102(b) Hardesty 1, 2, 7- 8, 11-16, and 22-26 102(b) Australian ’289 1, 2, 7-8, 11-16, and 22-26 102(b) Canadian ’448 in view of McCarthy 15-16, 22, and 23 103(a) Hardesty in view of Hoffman 2, 4-5, 11-13, 16, 18, and 26 103(a) Hardesty in view of FutureBanker 3, 6, 17, and 19 103(a) Canadian ’448 in view of FutureBanker 27-38 103(a) Hardesty in view of FutureBanker 27-38 103(a) ISSUES Patent Owner argues that none of the references cited for anticipation disclose a centralized processing system, 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, Hardesty, and Australian ’289 (PO App. Br. 7, 16, 19). Patent Owner further contends that Canadian ’448 fails to disclose a tracking entity within the meaning of the claims (PO App. Br. 14), and that Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 5 neither Canadian ’448 nor Hardesty disclose a rebate network manage receiving a portion of each sale as compensation for services (PO App. Br. 15, 18). Patent Owner asserts that neither Canadian ’448 nor Hardesty, in combination with FutureBanker, disclose or suggest card accounts capable of being used for both online internet-based and point of sale purchases (PO App. Br. 27), 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. 27-28). Patent Owner argues that Hardesty in combination with FutureBanker fails to disclose or fairly suggest that earned rebates may be used to pay for higher education expenses (App. Br. 34). The arguments made by Patent Owner and Requester present us with the following issues: 1. Does Canadian ’448 disclose a centralized processing system, 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 Hardesty disclose a centralized processing system, 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? 3. Does Canadian ’448 or Hardesty disclose processors associated with a tracking entity in communication with a rebate network manager? Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 6 4. Does Canadian ’448 or Hardesty disclose that the rebate network manager may receive a portion of each consummated sale or rebate as compensation for its services? 5. Does Canadian ’448 or Hardesty in combination with FutureBanker disclose or suggest applying rebate monies toward higher education expenses? 6. Does Canadian ’448 or Hardesty in combination with FutureBanker disclose or suggest a credit or debit card account capable of being used to make both online internet-based and point of sale purchases with registered merchants offering rebates? 7. Does Canadian ’448 or Hardesty 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 “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)). 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 Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 7 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. at 425. ANALYSIS REJECTION OF CLAIMS 1, 2, 7, 8, 12-16, AND 22-26 OVER CANADIAN ’448 We are not persuaded by Patent Owner’s arguments (PO App. Br. 7- 13) that Canadian ’448 fails to disclose a centralized processing system, “at a location other than the location of the merchant,” configured to monitor “all of said debit and credit card account transaction information . . . associated with a registered merchant . . . to determine if said transactions are consummated with registered members using said registered member credit card accounts” (claim 1), or “correlating using a rebate network manager processor, the received account transaction information with the stored member registered card account information to determine which transactions were consummated with a registered member” (claim 15). We agree with Requester (Resp. Br. 2) 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 Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 8 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). Because we find that Canadian ’448 discloses the issuing bank performing the claimed determining or correlating, we find no error in the Examiner’s rejection of claims 1 and 15, or claims 2, 7, 8, 12-14, 16, and 22- 26 not separately argued. We sustain the Examiner’s § 102 rejection over Canadian ’448. REJECTION OF CLAIM 9 OVER CANADIAN ’448 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. 14). Rather, we agree with Requester that Canadian ’448 inherently discloses that the issuing bank has processors associated with a separate tracking entity. 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. 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. 4). We find that Canadian ’448 discloses all the limitations of claim 9. We sustain the Examiner’s § 102 rejection of claim 9 over Canadian ’448. Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 9 REJECTION OF CLAIM 11 OVER CANADIAN ’448 We do not agree with Patent Owner’s argument that Canadian ’448 does not disclose that the rebate network manager may receive a portion of each consummated sale or rebate as compensation for its services (PO App. Br. 15). We agree with Respondent that Canadian ’448 discloses that “the card issuer may fund an agent with a portion of the rebate, or retain a portion as its own fees” (Resp. Br. 5; Canadian ’448 p. 6). As we find no error, we sustain the Examiner’s rejection of claim 11 under § 102 over Canadian ’448. REJECTION OF CLAIMS 1, 2, 7, 8, 12-16, AND 22-26 OVER HARDESTY We are unpersuaded by Patent Owner’s argument that Hardesty fails to teach a centralized processing system, at a location other than the location of the merchant, for monitoring and determining transactions consummated between a participating merchant and a registered member (PO App. Br. 16), or for correlating account transaction information with stored member registered card account information to determine which transactions were consummated with a registered member (PO App. Br. 17). Rather, we are persuaded by Requester that Hardesty discloses that “[a]t the end of a business cycle . . . the merchant will then make a deposit . . . with the merchant’s bank 18 including those credit sales which were purchased by customers using the retirement card. The bank 18 will credit the merchant’s account 52 with an amount which represents the amount of the sale less certain costs of the transaction . . . . The calculation of the rebate and transfer of funds occur electronically using existing banking systems” (col. 5, ll. 50- 61). In Hardesty, then, the bank must examine each transaction and Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 10 discriminate between “those credit sales which were purchased by customers using the retirement card” and those that were not. We find that Hardesty thus teaches the claimed centralized processing system, at a location other than the merchant’s location, that determines or correlates transactions between participating merchant and registered member, as independent claims 1 and 15 recite. We find no error in the Examiner’s rejection. Accordingly we sustain the § 102 rejection of claims 1, 2, 7, 8, 12-16, and 22-26 over Hardesty. REJECTION OF CLAIM 11 OVER HARDESTY We do not agree with Patent Owner that Hardesty fails to disclose a rebate network manager receiving a portion of each consummated sale or rebate as compensation for its services (PO App. Br. 18-19). First, we note that Patent Owner concedes that merchant’s bank 18 “could possibly be performing multiple duties and serving as a rebate network manager and possibly the underwriter or card issuing bank” (PO App. Br. 19). Second, we find that Hardesty discloses that bank 18 withholds “certain costs of the transaction including any fees that the merchant has agreed to pay the underwriting or card-issuing organization” (col. 5, ll. 56-59). Third, we agree with Requester that Hardesty discloses that its rebate concept “will utilize the existing financial structure and existing computer software and hardware” (Resp. Br. 7; Hardesty col. 3, ll. 43-45). We further agree with Requester that use of the existing financial structure necessarily includes that “entities in the position of the bank 18 . . . will collect fees from the rebates as compensation for the system” (Resp. Br. 7). Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 11 Accordingly, we agree with Requester that Hardesty inherently discloses a rebate network manager receiving a portion of each consummated sale or rebate as compensation for its services. We sustain the Examiner’s § 102 rejection of claim 11 over Hardesty. REJECTION OF CLAIMS 1, 2, 7, 8, 11-16, AND 22-26 OVER AUSTRALIAN ’289 Each of these claims is rejected under § 102 over Canadian ’448, or Hardesty, or both. Because the claims stand rejected, we need not reach the merits of the Examiner’s § 102 rejection over Australian ’289. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). REJECTION OF CLAIMS 27, 29, 31, 33, 35, 37 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. 27). Requester correctly points out that the Examiner took Official Notice in parent Application No. 09/703,562 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. As Patent Owner has not shown error in the rejection of claims 27, 29, 31, 33, 35, and 37 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. Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 12 REJECTION OF CLAIMS 28, 30, 32, 34, 36, AND 38 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” (emphasis added), may fairly be construed to be prospective (Resp. Br. 10). 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. 30). We find no error in the Examiner’s rejection of claims 28, 30, 32, 34, 36, and 38 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. REJECTION OF CLAIMS 15, 16, 22, AND 23 OVER CANADIAN ’448 IN VIEW OF MCCARTHY Patent Owner’s sole argument for patentability is that McCarthy fails to disclose the claim elements allegedly lacking in Canadian ’448 (PO App. Br. 31). Because we find supra that Canadian ’448 discloses all the limitations of independent claim 15, we find Patent Owner’s arguments to be Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 13 unpersuasive of Examiner error. We sustain the § 103 rejection of claims 15, 16, 22, and 23 over Canadian ’448 in view of McCarthy. REJECTION OF CLAIMS 4, 5, AND 18 OVER HARDESTY IN VIEW OF HOFFMAN Patent Owner’s arguments against Hardesty and Hoffman individually (PO App. Br. 32) are not persuasive to establish the nonobviousness of the Examiner’s proposed combination. See In re Keller, 642 F.2d at 425. We agree with Requester (Resp. Br. 11) that Patent Owner has previously admitted that Hoffman teaching applying funds to indebtedness (Patent Owner Response filed September 23, 2011 at 25, citing Hoffman col. 6, ll. 27-35). We further agree that the combination of Hardesty and Hoffman would have fairly suggested the earning of rebates and, as money is fungible, the application of rebate monies toward indebtedness owed (see Req. Br. 12). We sustain the Examiner’s § 103 rejection. REJECTION OF CLAIM 11 OVER HARDESTY IN VIEW OF HOFFMAN Patent Owner’s argument that this rejection is erroneous because Hardesty does not disclose a rebate network manager receiving a portion of each sale or rebate as compensation for its services (PO App. Br. 33) is again unpersuasive. As explained supra with respect to the § 102 rejection over Hardesty, we find that Hardesty inherently discloses this element. Accordingly, we do not find error in the Examiner’s rejection of claim 11 over Hardesty in view of Hoffman. We sustain the § 103 rejection. Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 14 REJECTION OF CLAIMS 3, 6, 17, AND 19 OVER HARDESTY IN VIEW OF FUTUREBANKER We are not persuaded by Appellant’s remarks that FutureBanker’s use of the term “education” provides no support for the assertion that funds can be used for higher education expenses (PO App. Br. 34). We agree with Requester that FutureBanker would have fairly suggested to one having ordinary skill in the art that rebates such as those paid in Hardesty may be applied toward such expense categories as health, education, and retirement. We find no error in the Examiner’s rejection of claims 3, 6, 17, and 19 over Hardesty in view of FutureBanker, and we sustain the § 103 rejection. CONCLUSIONS 1. Canadian ’448 discloses a centralized processing system, 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. Hardesty discloses a centralized processing system, 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. 3. Canadian ’448 and Hardesty disclose processors associated with a tracking entity in communication with a rebate network manager. 4. Canadian ’448 and Hardesty disclose that the rebate network manager may receive a portion of each consummated sale or rebate as compensation for its services. Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 15 5. Both Canadian ’448 and Hardesty, in combination with FutureBanker, disclose or suggest applying rebate monies toward higher education expenses. 6. Both Canadian ’448 and Hardesty, in combination with FutureBanker, disclose or suggest a credit or debit card account capable of being used to make both online internet-based and point of sale purchases with registered merchants offering rebates. 7. Both Canadian ’448 and Hardesty, 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. ORDER The Examiner’s rejection of claims 1-9, 11-19, and 22-38 is affirmed. In the event neither party files a request for rehearing within the time period 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 Appeal 2014-007353 Reexamination Control 95/001,601 Patent No. 7,653,572 B1 16 ak Birch Stewart Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 Third Party Requester: Panitch Schwarze Belisario & Nadel, LLP One Commerce Square 2005 Market Street Suite 2200 Philadelphia, PA 19103