Ex Parte Jain et al

Patent Trial and Appeal BoardNov 21, 2018

10824178 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/824,178 04/14/2004 150308 7590 11/26/2018 TROUTMAN SANDERS LLP/CAPITAL ONE 600 Peachtree St., NE, Suite 5200 Atlanta, GA 30308 FIRST NAMED INVENTOR ChitraJain 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 ATTORNEY DOCKET NO. CONFIRMATION NO. COF5168 (029424.000940) 6347 EXAMINER DURAN, ARTHUR D ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 11/26/2018 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): chris. fors tner@troutmansanders.com patents@troutmansanders.com sara.rogers@troutman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHITRA JAIN, ROYE. LOWRANCE, GREGOR S. BAILAR, and DANIEL R. SW ANSON SR. Appeal2017-001889 Application 10/824, 178 1 Technology Center 3600 Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 2, 5, 6, 8-10, 12, 13, 16, 17, 19-21, 23-26, 28- 31, 33, and 35. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 The Appellants identify "Capital One Financial Corporation and its subsidiary companies" as the real parties in interest. Appeal Br. 3. Appeal2017-001889 Application 10/824, 178 ILLUSTRATIVE CLAIM 1. A method of providing personalized customer service, compnsmg: electronically receiving purchase information from a financial card provider system at a merchant data management system from one or more purchases made from a particular merchant using a financial card affiliated with the particular merchant and provided to the customer by a financial card provider associated with the financial card provider system, the financial card provider being distinct from the merchant, the financial card having an associated financial account, the financial card having a radio frequency identification (RFID) device coupled thereto, the RFID device storing identification data identifying the financial account; wherein the purchase information includes an identification of items purchased during the one or more purchases; determining, at the merchant data management system, a number of loyalty points to be awarded to the financial account based on the purchase information; reading, at the merchant data management system, the identification data from the RFID device using an RFID reading device; determining, using the merchant data management system, one or more additional items to be purchased; generating, at the merchant data management system, personalized service data based on the purchase information, a purchase history, and the number of loyalty points associated with the identified financial account, wherein the personalized service data comprises an offer for a financial incentive tied to the financial account stored at the financial card provider system if the one or more additional items are selected, wherein the one or more additional items are based on purchase information, the purchase history and the number of loyalty points associated with the identified financial account and wherein the offer is an offer received from the financial card 2 Appeal2017-001889 Application 10/824, 178 provider system and based on an identified merchant competitor; and providing the offer to the customer via an electronic visual interface associated with the merchant data management system. Hind et al. CITED REFERENCES US 2002/0174025 Al (hereinafter "Hind") Shirai Bednarek Pliha US 2003/0167206 Al US 2005/0251440 Al US 7,580,856 B 1 REJECTION Nov. 21, 2002 Sept. 4, 2003 Nov. 10, 2005 Aug. 25, 2009 Claims 1, 2, 5, 6, 8-10, 12, 13, 16, 17, 19-21, 23-26, 28-31, 33, and 35 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Pliha, Hind, Bednarek, and Shirai. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS The Appellants contend that the Examiner erred in rejecting independent claim 1, because the cited prior art references fail to teach or suggest at least the following features of claim 1: electronically receiving purchase information from a financial card provider system at a merchant data management system from one or more purchases made from a particular merchant using a financial card affiliated with the particular merchant and provided to the customer by a financial card provider associated with the financial card provider system, the financial card provider being distinct from the merchant, the financial card having an associated financial account. 3 Appeal2017-001889 Application 10/824, 178 See Appeal Br. 16-21. 2 See also Reply Br. 2-5. Notably, claim 1 further states that "the purchase information includes an identification of items purchased during the one or more purchases." The Examiner finds that the claimed "receiving purchase information from a financial card provider system at a merchant data management system" is met by a disclosure, in Pliha, that the Examiner characterizes as "the bank reporting to the retailer the bank's customer transaction activity information." Answer 5 (referring to Pliha col. 11, 1. 5---col. 12, 1. 25 and col. 15, 1. 60---col. 16, 1. 30). However, regardless of whether the Examiner's cited portions of Pliha teaches the claimed "purchase information," the Examiner's identified portions of Pliha do not teach the receipt thereof "at a merchant data management system," as claimed. A portion of the reference cited by the Examiner (see Answer 3-5) states that Pliha's "system stores all transactions made by a customer with a participating retailer or dealer" and "[t]hese files may be stored in numerous places including, but not limited to the system manager's databases or the financial institution databases." Pliha col. 15, 11. 63---65. Yet, the Examiner does not identify a portion of Pliha that teaches the identified data being provided to a retailer or "merchant data management system," as claimed. The Bednarek reference contains, at least, a similar shortcoming. The Examiner finds that paragraph 108 of Bednarek "discloses a report from the financial card provider to the merchant on the consumer redemption rates related to participant/consumer actions." Final Action 4. However, the cited 2 Citations to the Appeal Brief refer to the Corrected Appeal Brief dated May 12, 2016. 4 Appeal2017-001889 Application 10/824, 178 portion of Bednarek merely discloses that "an organization (e.g., incentive company or system operator) ... can maintain a database or databases that contains the identity of customers and a redemption rate associated with each participant," adding: The entity (e.g., incentive company) that maintains the participant redemption rates, also has a communication link with the reward program sponsors so that a participants [sic] redemption rate can be reported upon request. In this way, a wide range of program sponsors can quickly query a single source to obtain a participant's specific redemption rate as needed. Bednarek ,r 108. Thus, in consonance with the Appellants' argument, we find that Bednarek's "redemption rates" - even if derived from information about a participant's purchasing activity- "are not themselves purchase information," as claimed. Appeal Br. 20. In view of the foregoing, we are persuaded of error in the rejection of independent claim 1. Independent claims 12, 23, 28, and 33 contain limitations similar to those discussed above, in regard to claim 1. See id. at 26. Accordingly, we do not sustain the rejection of independent claims 1, 12, 23, 28, and 33, or their dependent claims 2, 5, 6, 8-10, 13, 16, 17, 19-21, 24--26, 29-31, and 35 under 35 U.S.C. Â§ 103(a). DECISION We REVERSE the Examiner's decision rejecting claims 1, 2, 5, 6, 8- 10, 12, 13, 16, 17, 19-21, 23-26, 28-31, 33, and 35 under 35 U.S.C. Â§ 103(a). REVERSED 5