Ex Parte Nixon-Lane

Patent Trial and Appeal Board

Jul 27, 2015

11873683 (P.T.A.B. Jul. 27, 2015)

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.
11/873,683 10/17/2007 Karen Nixon-Lane 14071-11 1122
80711 7590 07/27/2015
BGL/Ann Arbor
524 South Main Street
Suite 200
Ann Arbor, MI 48104
EXAMINER
MYHRE, JAMES W
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
07/27/2015 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
____________

Ex parte KAREN NIXON-LANE
____________

Appeal 2013-005880
Application 11/873,683
Technology Center 3600
____________

Before LINDA E. HORNER, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–4, 6–8, 17, and 21, which are the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a method for providing
incentives to consumers at transactions and cards that are provided with
changeable image displays.” Spec. 1, ll. 3–4. Claim 1, reproduced below, is
the sole independent claim on appeal.
1. A method of providing point-of-sale incentives to
customers which comprises the steps of;
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a) providing an entity that has a source of a plurality of
cards, each card having a changeable electronic paper display
area;
b) distributing at least one of the plurality of cards to a
consumer;
c) having the consumer make at least one transaction
with the card, which at least one transaction comprises the
purchase of a product or service from a merchant;
d) coupling the card to an external processor during the at
least one transaction which processor supplies power to the
electronic paper display area and causes an image to be
displayed on the display area of the card which image
comprises an incentive to the customer;
e) returning the card to the customer with the image
displayed thereon, and
f) repeating steps c)–e) a plurality of times
wherein the images that are displayed on the card in step
d) comprise third parties’ advertisement information and the
third parties pay the entity having the source of a plurality of
cards a fee for displaying the image.
Appeal Br. 13.
REJECTION
Claims 1–4, 6–8, 17, and 21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Freeman (US 6,068,183, issued May 30, 2000) and
Vayssiere (US 2006/0065741 A1, published Mar. 30, 2006).
ANALYSIS
Claim 1 recites, inter alia, “a) providing an entity that has a source of
a plurality of cards, each card having a changeable electronic paper display
area”; “c) having the consumer make at least one transaction with the card,
which at least one transaction comprises the purchase of a product or service
from a merchant”; “d) coupling the card to an external processor during the
at least one transaction which . . . causes an image to be displayed on the
display area of the card . . .”; and “wherein the images that are displayed on
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the card in step d) comprise third parties’ advertisement information and the
third parties pay the entity . . . for displaying the image.” Emphasis added.
Appellant acknowledges that Freeman discloses chip cards that
receive and display advertisements, and sending information to a chip card
whenever a consumer uses it. Appeal Br. 6 (citing Freeman, col. 2, ll. 8–10,
16–18). But Appellant contends that Freeman does not teach the claimed
method, which involves “consumers who are given and use cards with
displays; merchants who provide goods and services to the consumers; third
party advertisers, whose advertising information is displayed on the card;
and an entity that provides the cards and receives and [sic] advertising fee
from the third party advertisers.” Id.
The Examiner finds that Freeman “gives an example wherein a
stadium could download stadium specific information to each chip card used
at the stadium or that ‘the stadium could generate revenue by downloading
an outside business’ information for a fee.’” Final Act. 3 (citing Freeman,
col. 5, ll. 54–65). The Examiner determines that Freeman discloses that “the
third parties (outside businesses) pay the entity (stadium) a fee for displaying
the images (information)).” Id.
Appellant contends that the stadium is the “entity” that receives the
advertising revenue (Appeal Br. 8), and Freeman does not teach that
advertisers pay advertising fees to an entity that supplies the cards (id. at 9).
According to Appellant, the only transaction is when a consumer purchases
a ticket for an event held at the stadium, making the stadium both the
“merchant” and the “entity” that receives the fee for displaying an outside
business’ information. Id. at 10.
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Claim 21 depends from claim 1 and recites that “the entity having the
source of a plurality of cards is other than the merchant in step c).”
Emphasis added. According to Appellant, “[c]laim 21 was added to make it
even more clear that the entity having the source of a plurality of cards (and
receives a fee from third party advertisers) is other than the merchant in step
c).” Appeal Br. 8. Appellant contends that the Examiner’s interpretation
improperly requires the merger of “the entity” and “the merchant,” who are
recited as separate entities in claim 1. Id.
Appellant’s contentions are not persuasive. Claim 1 does not
expressly recite that “an entity” and “a merchant” are different entities, but
dependent claim 21 does. According to the doctrine of claim differentiation
“‘the presence of a dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found in the independent
claim.’” Bancorp Servs. L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1275 (Fed. Cir. 2012) (citation omitted). Applying claim
differentiation, the recitation in claim 21 of “the entity having the source of a
plurality of cards is other than the merchant in step c)” raises a presumption
that this limitation in not required in claim 1—that is, “the entity having the
source of a plurality of cards” may be, or may not be, “other than” “the
merchant in step c).” Otherwise, construing claim 1 to include the limitation
of claim 21 would result in claim 21 not further limiting claim 1 and being
indefinite. That is, claim 21 would fail to meet the requirements of either
35 U.S.C. § 112, fourth paragraph or second paragraph.
Nonetheless, we agree with Appellant that the Examiner fails to
establish that the combination of Freeman and Vayssiere would have
rendered obvious the method recited in claim 1. Assuming that the stadium
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in Freeman’s electronic ticketing example corresponds to the claimed
“entity,” although the stadium receives a fee from outside businesses for
downloading the business’ information, the Examiner does not show that the
stadium is “an entity that has a source of a plurality of cards,” as required by
claim 1.
The Examiner responds to Appellant’s contentions by noting that
Figures 5A and 5B of Freeman show a “Chip Card Transaction Processing
Company” (“the company”) having a database of advertisements. Ans. 9.
The Examiner determines that the company is a “card issuing entity” and
also provides advertisements to the chip card when a consumer uses it at an
Internet Retailer 62. Id. The Examiner further determines that “[s]ince the
chip card issuing entity in Freeman has control over the advertisement
database, it is obvious that the advertiser would be paying the advertising
fees to this entity, not directly to the possibly large plurality of merchants
with which the consumers may conduct transactions.” Id. at 10 (emphasis
added).
We understand the Examiner’s position to be that Freeman discloses,
rather than it would have been obvious in view of Freeman, that the
advertiser pays the advertising fees to the company. However, we agree
with Appellant that this position is based on postulation and is not supported
by evidence. Reply Br. 4–5. “The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not, because it may doubt
that the invention is patentable, resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis.” In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
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Regarding the embodiments shown in Figures 5A and 5B, we note
that Freeman does not expressly describe that the company issues chip cards.
See Freeman, col. 5, ll. 29–35. The Examiner’s position relies on what the
Examiner believes would be most probable to occur in Freeman’s chip card
system, not on Freeman’s actual disclosure or other factual basis. Even
assuming that the company does issue chip cards to consumers in Freeman,
the Examiner does not establish by a preponderance of the evidence that a
third party advertiser does, in fact, pay the company a fee for displaying an
image on a consumer’s chip card during a transaction, rather than this
scenario being but one of numerous possibilities, including those described
by the Examiner and Appellant.
Further, to the extent the Examiner’s position is that it would have
been obvious in view of Freeman for the advertiser to pay advertising fees to
the chip card-issuing entity (e.g., VisaCash) because there are a finite
number of parties involved, we find the Examiner’s determination to be
based on impermissible hindsight. The Examiner’s articulation of the finite
list of entities involved in the transaction impermissibly uses the claim itself
to define the universe of entities. Ans. 9‒10.
The Examiner’s reliance on Vayssiere for disclosing “a changeable
electronic paper display area” (Final Act. 4) does not cure the deficiencies of
the Examiner’s reliance on Freeman.
For the foregoing reasons, we do not sustain the rejection of claim 1,
and its dependent claims 2–4, 6–8, 17, and 21, as unpatentable over Freeman
and Vayssiere.
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DECISION
We REVERSE the decision of the Examiner to reject claims 1–4, 6–8,
17, and 21.

REVERSED
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