Ex Parte Bortolin et al

Patent Trial and Appeal BoardAug 4, 2014

10365703 (P.T.A.B. Aug. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CORINNE BORTOLIN, AYMAN HAMMAD, CHRIS S. NELSON, and JOHN OTAEGUI ____________________ Appeal 2012-000797 Application 10/365,7031 Technology Center 3600 ____________________ Before ANTON W. FETTING, MICHAEL W. KIM, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 16–21, 23, 29–37, 42–44, 46–48, 53–55, 57–59, 63, and 69–72. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 The real party in interest identified by Appellants is Visa U.S.A., Inc. App. Br. 3. 2 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed March 8, 2011) and Reply Brief (“Reply Br.,” filed August 10, 2011), and the Examiner’s Answer (“Ans.,” mailed June 13, 2011). Appeal 2012-000797 Application 10/365,703 2 THE CLAIMED INVENTION Appellants’ claimed invention “relates to a method and system for selectively applying discounts to commercial transactions based on relevant tax laws” (Spec. ¶ 2). Claim 42, reproduced below, is illustrative of the subject matter on appeal: 42. A method for calculating transaction amounts for transactions, comprising: inserting a smartcard into a point-of-sale device, wherein the point of sale device operates in an offline manner; providing reward information including a reward selection and a total transaction amount for a transaction to the point-of-sale device; directing the point-of-sale device to reverse calculate a tax amount and a pre-tax subtotal amount using the total transaction amount and a tax rate stored on the point-of-sale device; directing the point-of-sale device to calculate a discount amount for the transaction based on the reward information and the pre-tax subtotal amount; directing the point-of-sale device to calculate a revised tax amount based on the discount amount, wherein the revised tax amount is calculated on either a post-tax basis and a pre-tax basis, and wherein which basis is used to calculate the revised tax amount depends on where the transaction is incurred; and directing the point of sale device to perform authentication and an online authorization request. THE REJECTION The following rejection is before us for review: Claims 16–21, 23, 29–37, 42–44, 46–48, 53–55, 57–59, 63, and 69–72 are rejected under 35 U.S.C. § 103(a) as unpatentable over Walker Appeal 2012-000797 Application 10/365,703 3 (US 7,240,021 B1, iss. July 3, 2007), Appellants’ Background of the Invention (hereinafter “ABI”), Tadakuma (US 4,144,567, iss. Mar. 13, 1979), Fernandez (US 2001/0016827 A1, pub. Aug. 23, 2001), and Herz (US 2001/0014868 A1, pub. Aug. 16, 2001). ANALYSIS Claims 16–21, 23, 29–37, 42–44, 46–48, 53–55, 57–59, 63, and 69–71 Appellants argue claims 16–21, 23, 29–37, 42–44, 46–48, 53–55, 57– 59, 63, and 69–71 as a group, and select claim 42 as representative (App. Br. 7–8). The remaining claims, thus, stand or fall with claim 42. 37 C.F.R. § 41.37(c)(1)(vii) (2008).3 We are not persuaded by Appellants’ argument that the Examiner erred in rejecting claim 42 under 35 U.S.C. § 103(a) because none of the cited references discloses or suggests “directing the point-of-sale device [“POS”] to reverse calculate a tax amount and a pre-tax subtotal amount using the total transaction amount and a tax rate stored on the [POS] device,” as recited in claim 42 (App. Br. 8–11; see also Reply Br. 2–4). Instead, we agree with the Examiner that the argued feature would have been 3 Notwithstanding Appellants’ indication that “[c]laims 16–21, 23, 29–37, 43[,] 44, 46–48, 53–55, 57–59, 63, and 69–71 may stand or fall with respect to independent claim 42” (App. Br. 7–8), Appellants argue separately, with respect to claim 16, that “Fernandez teaches away from a system using smartcards,” as recited in the claim (App. Br. 15). In this regard, Appellants argue that paragraph 16 of Fernandez discloses that it would be impractical to use a smartcard “for a onetime, limited duration promotion” (id.). However, as the Examiner observes, Fernandez expressly discloses that “[the present] invention can be used with [a] smart card” (Ans. 19, citing Fernandez, ¶ 50). Appeal 2012-000797 Application 10/365,703 4 obvious to a person of ordinary skill in the art at the time Appellants’ invention was made, in view of the combination of at least Walker, Tadakuma, and ABI (see Ans. 4–6 and 13). Walker discloses “[a] system and method for rewarding a customer’s loyalty to a retail establishment . . . by offering a progressive discount on [the customer’s] purchases,” and describes that the system includes a POS controller that determines the amount of the customer discount (see Walker, Abstract). As best shown in Figure 1, purchasing system 100 includes POS controller 102 and a plurality of POS terminals 104 in communication with POS controller 102 (Walker, Fig. 1 and col. 4, ll. 11– 18). Walker describes that POS terminal 104 maintains a subtotal of the transaction as each purchase item is scanned through an input device; then, after the discount amount is determined by POS controller 102 (i.e., by multiplying subtotal by the percentage discount, see Walker, col. 12, ll. 20– 35), the POS controller deducts the discount from the subtotal, and adds any applicable taxes to generate a total purchase amount for the transaction (see, e.g., Walker, col. 5, ll. 10–27). The Examiner acknowledges that Walker “does not expressly teach . . . directing the point of sale device to reverse calculate [a] tax amount and a pre-tax subtotal amount using the total transaction amount and a tax rate stored on the point of sale device” (Ans. 13; see also Ans. 4–5). However, the Examiner notes that Tadakuma discloses that “it is old and well known in the business art to store relevant tax information at POS terminals . . . .” (Ans. 9, citing Tadakuma, col. 2, ll. 55–65 and col. 4, ll. 1– 50), and further observes that ABI describes that “it is old and well known in Appeal 2012-000797 Application 10/365,703 5 the promotion art that the application of a discount to a purchase transaction must follow tax laws that are unique to each state in the United States” (id.). ABI discloses that in conventional systems, the total transaction amount is entered into a stand-alone POS device, which is responsible for calculating the discount amount. And ABI explains that because different states have different tax laws governing how a discount amount should be calculated, e.g., as a pre-tax or post-tax amount, simply directing the POS to apply any applicable discount to the total transaction amount may be problematic in some states, i.e., the calculated discount amount may be improperly inflated based on the inclusion of the tax amount in the total transaction amount in those states where discounts are calculated on a pre- tax basis (see Spec. ¶¶ 3–5). Appellants argue that a reverse calculation is not taught, suggested, or otherwise rendered obvious by the prior art, and that there is no reason, with the Walker system, to reverse calculate a tax amount because Walker discloses that the subtotal of the current transaction is provided to the POS terminal (App. Br. 8–11). Claim 42, however, is not rejected over Walker alone; instead, the claim is rejected over a combination of references, including Walker, Tadakuma, and ABI. The argument that a single reference alone does not disclose all the recited claim limitations is not persuasive because nonobviousness “cannot be established by attacking the references individually when the rejection is based on the teachings of a combination of references.” See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). The Supreme Court also has made clear that when considering obviousness “the analysis need not seek out precise teachings directed to the Appeal 2012-000797 Application 10/365,703 6 specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner that it would have been obvious to a person of ordinary skill in the art to modify the Walker POS device to store tax rate information, as taught by Tadakuma, and, upon receipt of a total transaction amount, including tax, as disclosed in ABI, to reverse calculate a tax amount and a pre-tax subtotal amount using the total transaction amount and the stored tax rate information so as to take into account state tax laws, e.g., mandating pre-tax discounts, in calculating the applicable discount amount. Contrary to Appellants’ arguments, we find that the Examiner does not engage in permissible hindsight or otherwise improperly rely on Appellants’ disclosure as a guide (App. Br. 11–13). Instead, the Examiner properly relies on the teachings of the cited references themselves, including ABI, i.e., Appellants’ admitted prior art. We also are not persuaded of error on the part of the Examiner by Appellants’ argument that none of the cited references discloses or suggests that the POS device is configured to operate in an offline manner, i.e., “wherein the point of sale device operates in an offline manner,” as recited in claim 42 (App. Br. 14–15). Instead, we agree with the Examiner that Fernandez teaches this feature (see Ans. 6, citing Fernandez, ¶¶ 10 and 26; see also Ans. 13), and also agree that modifying the Walker POS device to operate offline, as taught by Fernandez, is nothing more than a combination of prior art elements according to their established functions, and yields a predictable result (Ans. 6). Therefore, it would have been Appeal 2012-000797 Application 10/365,703 7 obvious at the time of Appellants’ invention to a person of ordinary skill in the art. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”). Appellants argue that modifying the Walker system to operate offline would require multiple processing changes throughout the system, and vastly change how each part of Walker operates (App. Br. 14–15). Yet the test for obviousness is not whether the features of one reference may be bodily incorporated into the structure of another reference; instead, the test is what the combined teachings of those references would have suggested to a person of ordinary skill in the art. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”) (citations omitted); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Nievelt, 482 F.2d 965 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In view of the foregoing, we sustain the Examiner’s rejection of claim 42 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection of claims 16–21, 23, 29–37, 43, 44, 46–48, 53–55, 57–59, 63, and 69–71, which fall with claim 42. Dependent claim 72 Claim 72 depends from claim 42, and recites that the method further comprises “directing the point-of-sale device to periodically transmit statistics and historical information to a host computer.” Appellants argue that Fernandez, on which the Examiner relies, does not teach or suggest the subject matter of claim 72 because “Fernandez only Appeal 2012-000797 Application 10/365,703 8 recites that ‘[e]ach card may contain various data which can be read and employed in various recordkeeping, accounting and statistical functions’ (see Fernandez, paragraph [0010])” and “does not disclose ‘periodically’ transmitting statistics and historical information from a POS device” (App. Br. 15–16). However, we agree with the Examiner that Fernandez teaches this feature at paragraph 27 (Ans. 19–20). Therefore, we sustain the Examiner’s rejection of claim 72 under 35 U.S.C. § 103(a). DECISION The Examiner’s rejection of claims 16–21, 23, 29–37, 42–44, 46–48, 53–55, 57–59, 63, and 69–72 under 35 U.S.C. § 103(a) is affirmed. 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). AFFIRMED llw