Ex Parte Loeger et al

Patent Trial and Appeal Board

Nov 23, 2016

11610434 (P.T.A.B. Nov. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111610,434 12/13/2006
23460 7590 11/28/2016
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Julie Laeger
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.
255531 2744
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE LOEGER and
MARGARET H. GEORGIADIS
Appeal2014-007576 1
Application 11/610,4342
Technology Center 3600
Before ANTON W. PETTING, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEYERS, 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 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1. Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
January 24, 2014) and Reply Brief ("Reply Br.," filed June 20, 2014), the
Examiner's Answer ("Ans.," mailed April 24, 2014), and Final Office
Action ("Final Act.," mailed May 24, 2013).
2. Appellants identify Discover Financial Services, as the real party in
interest (Appeal Br. 3).
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Application 11/610,434
CLAIMED fNVENTION
Appellants' claimed invention relates to a "continuous series of bonus
rewards programs offered by a financial institution, that provide bonus
rewards on consumer purchases with a credit card (or some other financial
alternative offered by the financial institution) on goods and services from
select merchant categories within a given time frame" (Spec. i-f 4).
Claims 1, 9, and 19 are the independent claims on appeal. Claim 1,
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A process for using a financial alternative to currency
to participate in a bonus rewards program offered by a financial
institution, process comprising:
[a] presenting an enrollment interface for a plurality of
disjoint sequential bonus rewards programs;
[b] receiving via the enrollment interface an electronic
signal indicating enrollment of a user in a first bonus rewards
program from the plurality of disjoint sequential bonus rewards
programs, \~1herein the first bonus re\~1ards program is liriked to a
first category of merchants, the first category of merchants being
based on one or more types of goods or services offered by each
merchant in the first category;
[ c] electronically receiving user data corresponding to the
financial alternative to currency for purchasing goods or services
having a value from a merchant, the merchant offering goods or
services of a type associated with the first category of merchants;
and
[ d] assigning to the user a bonus reward based on the value
of the purchased goods or services, the assigned reward being of
a greater monetary value than would be assigned if the merchant
did not offer goods or services of a type associated with the first
category.
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Application 11/610,434
REJECTIONS
Claim 15 is rejected under 35 U.S.C. § l 12(b) as being indefinite.
Claims 1-11 and 13-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strock (US 2004/0122736 Al, pub. June 24, 2004),
O'Neil (US 2003/0105711 Al, pub. June 5, 2003), and Ciancio (US
2004/0219971 Al, pub. Nov. 4, 2004).
Claims 12 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strock, O'Neil, Ciancio, and Looney (US 2006/0074769
Al, pub. Apr. 6, 2006)
ANALYSIS
Indefiniteness
In rejecting dependent claim 15 under 35 U.S.C. § 112, second
paragraph, the Examiner finds
[ t ]he term "about" in claim 15 is a relative term which renders
the claim indefinite. The term "about" is not defined by the
claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the
art would not be reasonably apprised of the scope of the
invention.
(Final Act. 2). In response, Appellants make arguments with respect to
dependent claim 5 (see Appeal Br. 13-14) but, as the Examiner points out,
the "rejection of claim 5 has been withdrawn; however the 35 U.S.C. § 112
second paragraph rejection of claim 15 has been maintained" (Ans. 4).
In the Reply Brief, Appellants argue that the Examiner improperly
"asserts that the recitation 'about three months' is indefinite, since 'about'
covers a range" (Reply Br. 5); however, "about three months" does not
appear in dependent claim 15. Thus, Appellants do not present any response
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Application 11/610,434
to the Examiner's rejection of dependent claim 15, and as such, we
summarily sustain the rejection of claim 15 under 35 U.S.C. § 112, second
paragraph.
Obviousness
Independent claim 1 and dependent claim 2---8
W e are not persuaded by Appellants' argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because
none of Strock, O'Neil and Ciancio discloses or suggests "presenting an
enrollment interface for a plurality of disjoint sequential bonus rewards
programs and receiving an enrollment in a first bonus rewards program from
a user," as required by claim 1 (Appeal Br. 11-13; Reply Br. 4--5). Instead,
we agree with the Examiner that the combination of Strock, O'Neil and
Ciancio discloses the argued features (see Final Act. 3-13, 23-31, 39, 48,
51-52 (citing Strock i1i130, 31, 57, 61, 86, 94, 123, O'Neil i-fi-f 13, 49,
Ciancio i1i13, 13, 31, 32, 37, Fig. 1) and adopt the Examiner's responses to
Appellants' arguments as set forth at pages 2-5 of the Answer. We add the
following discussion for emphasis only.
Strock is directed to "a data processing technique for allowing a
Bank's existing credit cardmembers to earn promotional rewards for specific
triggering behaviors in a specific time frame, wherein the rewards can be
targeted to specific cardmembers or groups" (Strock i12; see also id. i1 30).
Strock discloses that "customer 74 may interface with the Account Data
Processor 22, the Rewards Account Data Processor 24, and/or the
Transaction Data Processor 26" to customize account information and enroll
in different rewards programs (id. i1i185-86, 94). More particularly, Strock
discloses that "[ d]ifferent rewards programs have different enrollment
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Application 11/610,434
systems and methods. For some rewards programs, cardmembers have the
opportunity to enroll in the program at any time after the account is
established" (id. i-f 94). Strock further disclose that "[t]his ability to enroll
can be limited according to the customer, customer group, and program
based on configurable rules" (id. i-f 95). Strock discloses
Modules 40, 42 may define sets of rules for earning rewards
currency and/or rewards under a program's earnings and
accumulation requirements. The Modules 40, 42 may also
specify attributes or characteristics that limit or define the events,
transactions, and behaviors ("triggering events") for which a
customer earns a reward or rewards currency. Those attributes
may comprise transaction date, time, location, frequency,
amount, and other triggering attributes.
(Id. i-f 60; see also id. i-f 61 ). Strock further discloses
Interrogate Reward Account Behaviors and Transactions
Modules 48, 50 may allow customers to qualify to earn currency
for transactions, events, behaviors with specific sets of attributes
like location, time period, platform, frequency, merchandise
category; merchant; threshold or other trigger attribute. For
example, customers may earn at different rates depending on
whether the purchase is from a particular Partner or non-Partner,
or other factors such as time of day or store location. Customers
can be rewarded with escalating bonus points or rebates for
repeat purchases at specific merchants.
(Id. i-f 123). Strock also discloses that its "Interrogate Reward Account
Behaviors and Transactions Modules 48, 50 may automatically adjust
earnings features ... based on the status of a Partner's business," i.e.,
"periods of peak activity" (id. i-f 128).
O'Neil is directed to "authorization for, and restriction of, financial
transactions" (O'Neil i-f 9). In this regard, O'Neil discloses
a merchant provides purchase detail data in addition to the
conventional transaction data (collectively and in combination,
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Application 11/610,434
"enhanced transaction data"). The purchase detail data
information describes the transaction in greater detail than the
conventional transaction data. This purchase detail data may
include, for example, the category of the item(s) being purchased
(or rented, leased, etc.) by the card holder (e.g., clothes,
groceries, dining, entertainment, etc.) or data describing the
item(s) themselves (e.g., pants, potato chips, food and drink,
movie tickets, etc.).
(Id. i-f 13; see also id. i-f 49).
Ciancio is directed "to a reward system which can provide a reward or
rebate based upon customer purchases in selected product categories"
(Ciancio i-f 2). In this regard, Ciancio discloses
in which a plurality of product categories are created, and the
customer, store, or other entity can select the product categories
to which the program applies or in which the customer's reward
will be generated or accumulated. In this manner, the categories
in which the customer's reward is generated or credited can be
controlled.
(Id. i-f 4). Ciancio discloses that its rewards "program may run for a
predetermined amount of time (i.e., from a few hours or days to several
years or more; in the example addressed herein the predetermined period of
time is several months, such as three months)" and "[ w ]hen the
predetermined amount of time has expired, the program ends (step 24), the
customer's purchases in each selected category may be totaled, and a reward
or rebate based upon the purchases in each selected category may be
calculated (step 26)" (id. i-f 32). Ciancio further discloses that
although the program may be arranged to run in various cycles,
the program may also be arranged to run continuously, but may
have various or periodic "cut-off' points in which accumulated
points or rewards are distributed to customers. Furthermore,
when the program is run in cycles, customers that have
previously joined the program may be automatically enrolled in
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the program for the next cycle without the need to affirmatively
join the program each time.
(Id. i-f 37). Ciancio also discloses that "the store or chain can communicate
the bonus products or product categories (i.e. pet products) to the customers
and encourage the customers to purchase the bonus products or products in
the bonus product categories" (id. i-f 31 ).
Appellants argue "[n]owhere does Ciancio teach or suggest 'a
plurality of disjoint sequential bonus rewards programs' as required by the
independent claims" because "the 'cycles' described by Ciancio have
nothing to do with a sequence of different bonus rewards programs" (Appeal
Br. 12; Reply Br. 4). However, we agree with the Examiner that the
combination of Strock, O'Neil and Ciancio discloses the argued feature (see
Ans. 2--4). In this regard, Strock discloses that its system allows customers
to "qualify to earn currency [(i.e., "bonus points or rebates")] for
transactions, events, behaviors with specific sets of attributes like location,
time period, platform, frequency, merchandise category, merchant, threshold
or other trigger attribute" (Strock i-f 123) and Ciancio discloses that its
rewards program may be "run in various cycles" or "run continuously"
(Ciancio i-f 3 7). That is, Ciancio discloses that "[ w ]hen the predetermined
amount of time has expired, the program ends (step 24), the customer's
purchases in each selected category may be totaled, and a reward or rebate
based upon the purchases in each selected category may be calculated (step
26)" (id. i-f 32; see also id. Fig. 1) while a particular cycle begins with
"Define Product Categories" (step 10) (see id. i-f 14; see also id. Fig. 1 ).
We note this interpretation is commensurate in scope with the
language of independent claim 1 and reasonable in light of Appellants'
Specification. In making this determination, we note that Appellants have
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Application 11/610,434
not directed us to any special definition in the Specification for the phrase
"disjoint sequential bonus rewards programs," as presently claimed; and,
after reviewing Appellants' Specification, we are unable to find any such
clear and explicit definition for the term. Instead, the Specification provides
several non-limiting examples (see, e.g., Spec. i-fi-15, 7, 15, 17, 19) and
describes broadly that
an example of some of the steps for a financial institution to offer
one bonus rewards program in a series of programs to one or
more consumers. First, the financial institution selects a category
of merchants and/ or one or more particular merchants for the
bonus rewards program 40. Preferably, the financial institution
selects the category of merchants and goods and services based
on consumers [sic] needs for the given time frame of the bonus
rewards program. For example, if the bonus rewards program is
offered in the fall during the months of August and September,
the category of merchants may include those that sell school
supplies. This coincides with the start of the new school year and
consumers' needs for new school supplies.
(Id. i-f 17). Here; we agree with the Examiner that "Ciancio teaches the
concept of category based rewards for set periods of time, wherein each
cycle as taught by Ciancio is functionally the same as the individual reward
programs as claimed by the Appellant" (Ans. 2-3), and as such, constitutes
"a plurality of disjoint sequential bonus rewards programs," as recited by
independent claim 1, under a broad, but reasonable, interpretation.
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the
Examiner's rejection of claims 2-8, which is not separately argued.
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Independent claims 9 and 19, and dependent claims 10-18 and 20
Appellants' arguments with respect to independent claims 9 and 19
(see Appeal Br. 11-13; see also Reply Br. 4--5) are substantially similar to
Appellants' arguments with respect to claim 1, and are unpersuasive for the
same reasons.
Therefore, we sustain the Examiner's rejection of independent claims
9 and 19 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to independent claim 1. We also sustain the Examiner's rejections of
claims 10-18 and 20, which are not separately argued.
DECISION
The Examiner's rejection of claim 15 under 35 U.S.C. § 112, second
paragraph, is summarily affirmed.
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
are 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)(l )(iv).
AFFIRMED
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