Ex Parte Tavares et al

Patent Trial and Appeal BoardAug 5, 2016

13490226 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/490,226 06/06/2012 20350 7590 08/09/2016 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Silvio Tavares 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. 87188-840886 (0991 lOUS) 4233 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 08/09/2016 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): ipefiling@kilpatricktownsend.com j lhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte SILVIO TAVARES, MARKD. BAUMGART, and JAVIER M. ALVARADO Appeal2014-002240 Application 13/490,226 1 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1-7, 9-17, and 19-30. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Appellants' claimed invention relates generally to "a network/ system and method for storing and accessing electronic receipts, and for enrolling a card and/or cardholder for receiving such receipts." (Spec. i-f 3.) 1 According to Appellants, the real party in interest is First Data Corporation. (Appeal Br. 3.) Appeal2014-002240 Application 13/490,226 Claims 1, 17, and 26 are the independent claims on appeal. Claim 1 is representative and is reproduced below (emphasis added): 1. A method for managing electronic receipts for transactions conducted by customer entities at merchants using presentation instruments, the method comprising: enrolling, by one or more processors, customer entities in a customer program for receiving electronic receipts in lieu of paper receipts for transactions conducted at merchants by customer entities using the presentation instruments, wherein the presentation instruments are issued by a plurality of different issuers, wherein enrollment is managed by a third party entity that processes transactions between merchants and customer entities using the presentation instruments, wherein the third party is not a merchant and not an issuer of the presentation instruments, wherein enrollment includes storing, in a preference database managed by the third party entity, preference data from each of the enrolled customer entities, and wherein the preference data for each enrolled customer entity represents at least one customer preference regarding the transmission of a transaction notification at the time of a transaction in lieu of a paper receipt, and wherein the preference data for at least one or more of the enrolled customer entities further represents a preference for printing of a receipt when a transaction is above a specified amount; receiving, at a transaction processing system from a plurality of point-of-sale (POS) devices, transaction data for a plurality of transactions, wherein the plurality of transactions are conducted at a plurality of different merchants by a plurality of different customer entities using a plurality of presentation instruments issued by the plurality of different issuers, wherein the transaction processing system is operated by the third party; generating, by one or more of the processors, electronic receipts for the plurality of transactions from the transaction data received at the transaction processing system, wherein each of the electronic receipts provides evidence of a transaction between a merchant and a customer entity, and wherein each of the electronic receipts comprises data reflecting at least the 2 Appeal2014-002240 Application 13/490,226 identity of a merchant, the presentation instrument used in making a transaction, the date of a transaction, and the amount of a transaction; storing, by one or more of the processors, the electronic receipts at a receipt database; providing, by one or more of the processors, access to the stored electronic receipts to both customer entities and the merchants; in response to receiving the transaction data at the transaction processing system from one of the POS devices for one of the transactions, determining at the transaction processing system for that transaction ( 1) whether there is a customer preference regarding the transmission of a transaction notification at the time of a transaction in lieu of a paper receipt, and (2) whether there is a customer preference for printing of a receipt when a transaction is above a specified amount; transmitting, by one or more of the processors, a transaction response message from the transaction processing system to the one of the POS devices, the transaction response message having a data field for including ( 1) an "approved -- do not print receipt" data code when there is a customer preference for an electronic notification to be transmitted at the time of a transaction in lieu of a paper receipt, and when the amount of the transaction is not above the specified amount, and (2) an "approved - print receipt" data code when there is a customer preference for an electronic notification to be transmitted at the time of a transaction in lieu of a paper receipt, and when the amount of the transaction is above the specified amount; and in response to the "approved -- do not print receipt" data code, suppressing, at the one of the POS devices, the printing of a paper receipt. REJECTIONS Claims 1-7, 9, 11-15, and 30 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Grigg (US 2012/0221446 Al, pub. Aug. 30, 2012), Close 3 Appeal2014-002240 Application 13/490,226 (US 2012/0290420 Al, pub. Nov. 15, 2012), and Sock (US 2010/0100434 Al, pub. Apr. 22, 2010). Claim 10 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Grigg, Close, Sock, and Regmi (US 2009/0271275 Al, pub. Oct. 29, 2009). Claim 16 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Grigg, Close, Sock, and Dhamodharan (US 2010/0030644 Al, pub. Feb. 4, 2010). Claims 17 and 19--25 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Grigg, Dhamodharan, and Matkovic (US 2011/0184822 Al, pub. July 28, 2011). Claims 26-29 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Grigg and Close. Claim 19 is also rejected under 35 U.S.C. Â§ 112, fourth paragraph, for failing to reference a claim previously set forth. ANALYSIS Claims 1-7. 9-12. 15. 16. 26. 29. and 30 Appellants argue that "[p ]aragraph 0006 of Grigg discloses an electronic receipt being 'either generated and/or transmitted by a third party that is associated with the merchant or the consumer, such as a financial institution' (emphasis added). Grigg does not disclose enrollment by a third party in a program for receiving electronic receipts." (Appeal Br. 12.) Appellants further argue that the disclosure of Grigg (dealing with the generation of receipts) describes such activity being performed by an entity associated with a merchant or consumer, "such as a financial institution" (paragraph 0006). Such a financial institution would be akin to 4 Appeal2014-002240 Application 13/490,226 (Id.) an issuer (see paragraphs 0027 and 0036 of Grigg, wherein the "financial institution" manages "at least one financial account of the consumer, for example, a credit account or a checking account of the consumer"). Thus, Grigg does not disclose enrollment managed by a third party that is "not an issuer of the presentation instruments." In relevant part, the Examiner finds that paragraph 6 of Grigg teaches "a third party associated with either the merchant or consumer may generate or transmit the electronic receipt." (Final Action 9.) The Examiner also finds that "Grigg teaches, in i-f[0097], that a consumer controls e-receipt settings in an online account, which is sufficient to teach 'enrollment"' and that "Grigg discloses, in i-![[0036], that service businesses and manufacturers may 'process financial transactions,' which would include third parties that are not retailers or issuers of presentation instruments. (Answer 36-37.) Grigg discloses that at the customer's bank's website, a customer may control ho\v receipts are received. (Grigg i197, Fig. 14.) The Examiner finds that to teach controlling how receipts are received is sufficient to teach "enrollment." (See Answer 36.) Appellants do not persuasively argue that this finding is erroneous. (See Appeal Br. 12.) Appellants do not argue that the customer's bank is either a merchant or an issuer of the presentation instrument. Rather, Appellants argue that the bank is "associated with the merchant or the consumer" and that the bank "would be akin to an issuer." (See Appeal Br. 12.) But claim 1 recites "wherein the third party is not a merchant and not an issuer of the presentation instruments." (Claim 1, emphasis added.) Claim 1 does not refer to the merchant or issuer as not being associated with the bank, e.g., indirectly presenting a demand for payment as a result of a purchase 5 Appeal2014-002240 Application 13/490,226 transaction. Moreover, Appellants do not explain why a financial institution, even if managing a checking account of a customer (see Grigg i-f 27) would be "akin to an issuer." Therefore, we are not persuaded that the Examiner erred in rejecting claim 1. Appellants do not separately argue independent claims 26 and 30. Therefore, for the reasons discussed, we are not persuaded that the Examiner erred in rejecting claims 26 and 30. Appellants argue that dependent claims 2-7, 9-12, 15, 16, and 29 are allowable for the same reasons as claims 1 and 26. (Appeal Br. 12.) Therefore, in view of the above, we are also not persuaded that the Examiner erred in rejecting claims 2-7, 9-12, 15, 16, and 29. Claim 13 Claim 13 recites: "The method of claim 1, wherein the electronic receipts include promotional information when accessed by a customer entity." Appellants do not direct us to any definition in the Specification or elsewhere of "promotional information." However, the Specification refers to "promotional or coupon data" in the discussion of "promotional information." (See Spec. i-f 40.) We conclude that under a broadest reasonable interpretation, "promotional information" includes information related to coupons and other promotional discounts and rebates. The Examiner finds that "Sock discloses wherein the electronic receipts include promotional information when accessed by a customer entity (see claim 1; provide tools to allow advertisers to promote with a 6 Appeal2014-002240 Application 13/490,226 selected consumer based [sic] defined by the consumer's personal profile)." (Final Action 19, emphasis omitted.) Sock discloses "aggregating and electronically applying promotions, rebates, and coupons to a particular receipt through [a Global Electronic Receipt Database Agent]." (Sock, Claim 1.) Appellants argue that "[ w ]hile Sock does describe sending promotions to consumers (see also the Abstract and paragraph 0029 of Sock), there is no teaching or suggestion of including those promotions on electronic receipts." (Appeal Br. 13.) Specifically, Appellants argue that in Sock, "[ t ]here is no teaching of including coupons and promotions on electronic receipts, as recited in claim 13." (Reply Br. 5.) As an initial matter, claim 13 does not require "including coupons and promotions on electronic receipts" as argued by Appellants. (See Reply Br. 5.) This argument is not commensurate with the scope of the claim and, thus, is not persuasive. Nor do Appellants persuasively argue why "applying promotions ... to a particular receipt through [the Global Electronic Receipt Database Agent]," as disclosed in Sock, does not teach an electronic receipt that includes promotional information, i.e., a receipt that has promotional information such as a promotional discount or rebate, included in it. (See Sock, Claim 1.) Therefore, we are not persuaded that the Examiner erred in rejecting claim 13. 7 Appeal2014-002240 Application 13/490,226 Claim 14 Claim 14 recites: "The method of claim 1, wherein the promotional information may be selectively removed from the electronic receipts when accessed by a merchant." The Examiner finds that Sock teaches this limitation as "it teaches allowing advertisers to 'promote and communicate with a selected consumer base defined by the consumer's personal profile, purchase history and notification preferences" in an electronic receipt systems [sic]." (Answer 3 7, quoting Sock, Claim 1.) Appellants argue "that there is no reasonable interpretation of this language in claim 1 of Sock that might disclose the feature of claim 14 of promotional information being 'selectively removed from the electronic receipts when accessed by a merchant."' (Reply Br. 6.) The Examiner does not indicate where Sock teaches selectively removing promotional information from an electronic receipt. Therefore, we are persuaded that the Examiner erred in rejecting claim 14. Claims 17 and 19-2 5 Claim 1 7 recites (emphasis added): 1 7. A method for managing receipts for transactions conducted by a customer entity at a merchant using a presentation instrument, the method comprising: receiving, at a transaction processing system from a plurality of point-of-sale (POS) devices, transaction data for each of a plurality of transactions conducted at a plurality of merchants by a plurality of different customer entities using presentation instruments issued by a plurality of issuers, the 8 Appeal2014-002240 Application 13/490,226 transaction data including merchant classification data for the merchants at which the transactions are conducted; generating, at the transaction processing system and at the time of each of the transactions, a transaction notification for each of the transactions based on the transaction data; aggregating transaction data for the plurality of transactions conducted at the plurality of merchants by the plurality of different customer entities; analyzing, at the transaction processing system, the aggregated transaction data for the plurality of transactions to determine a likelihood of a customer entity conducting, after a first transaction with a first merchant having a first merchant classification, a second, subsequent transaction with a second merchant having a second merchant classification; developing, by one or more processors, the [sic] promotional information based on the second merchant classification of the second merchant; associating, by one or more of the processors, the promotional information with the transaction notification generated for the first transaction; and transmitting, by one or more of the processors, the transaction notification to the customer entity, wherein the promotional information is transmitted with the transaction notification at the time of the first transaction with the first merchant. With regard to the aggregating step of claim 17, the Examiner finds that Dhamodharan discloses "identify[ing] the customer's spending history and deriv[ing] a profile based on spending habits." (Final Action 28, citing Dhamodharan i-f 27.) With regard to the analyzing step, the Examiner finds that Dhamodharan discloses that "the spending profile identifies the probability that the consumer will make a given type of purchase in the future from a merchant or a category of merchants." (Id., citing Dhamodharan i-f 36.) 9 Appeal2014-002240 Application 13/490,226 Appellants argue that Dhamodharan "does not teach or suggest the more specific feature of predicting the likelihood of a purchase from a merchant having a certain classification based on an earlier purchase at a merchant with a different classification." (Appeal Br. 11.) But claim 17 does not recite that the first merchant classification must be different from the second merchant classification and Appellants do not point to anything in the Specification to lead to such a conclusion. Therefore, we conclude that under a broadest reasonable interpretation, the first merchant classification need not be different from the second merchant classification. Thus, Appellants' argument is not commensurate with the scope of the claim. Regardless, Appellants also do not persuasively argue why the disclosure in Dhamodharan of predicting a future purchase from a merchant or category of merchants does not include predicting a future purchase from a second merchant whose merchant category/classification is different from that of the first merchant. Next, the Examiner finds that Matkovic discloses transmitting, by one or more of the processors, the transaction notification to the customer entity, wherein the promotional information is transmitted with the transaction notification at the time of the first transaction with the first merchant (see i-f[0037]; promotional messages and advertisements can be directed via electronic messages and physical receipts). (Final Action 29.) Appellants argue that the Matkovic does not teach the "specific type of electronic notification [of claim 1 7] that is sent at the time of a transaction." (Reply Br. 3.) Although claim 20 refers to the transaction notification being an electronic message, claim 1 7 does not require the 10 Appeal2014-002240 Application 13/490,226 transaction notification to be an electronic message. Therefore, Appellant's argument is not commensurate with the scope of the claim. Moreover, Matkovic discloses that "promotional messages and advertisements can be directed to a customer and/or merchant via electronic messages, physical receipts, and messages displayed on hardware devices at the point of sale." (Matkovic i-fi-1 3 7, 115.) In other words, Matkovic discloses that promotional messages may be included with the receipt, i.e., with a transaction notification. Appellants argue, for the first time in the Reply Brief, that "[i]n Appellants' invention, large numbers of transactions involving a large population of cardholders are analyzed" and that "[ t ]his is not the same as Dhamodharan, where the spending habits of a specific consumer are analyzed to determine the probability that that specific consumer will make a purchase from a category of merchants." (Reply Br. 3.) Appellants' argument is not responsive to an argument raised in the Examiner's Answer and Appellants do not show good cause as to why this argument was not raised in the Appeal Brief. Therefore, this new argument is not considered. (See 37 C.F.R. Â§ 41.41(b)(2).) In view of the above, we are not persuaded that the Examiner erred in rejecting claim 17. Appellants argue that dependent claims 19--25 are allowable for the same reasons as claim 17. (Appeal Br. 11.) Therefore, in view of the above, we are also not persuaded that the Examiner erred in rejecting claims 19--25 underÂ§ 103. Claim 19 is also rejected underÂ§ 112, fourth paragraph. Claim 19 depends from cancelled claim 18. The amendment Appellants filed under 37 C.F.R. Â§ 1.116 seeking to amend claim 18 to change its dependency was 11 Appeal2014-002240 Application 13/490,226 not entered. (See Advisory Action mailed May 1, 2013.) Appellants present no arguments with regard to the rejection of claim 19 underÂ§ 112, fourth paragraph. Therefore, we summarily affirm the rejection of claim 19 under Â§ 112, fourth paragraph. Claims 27 and 28 Appellants indicate that dependent claims 27 and 28 are not pending. (Appeal Br. 3.) That is incorrect. The amendment Appellants filed under 37 C.F.R. Â§ 1.116 seeking to cancel claims 27 and 28 was not entered. (See Advisory Action mailed May 1, 2013.) Appellants present no arguments with regard to claim 27 and 28. Therefore, we summarily affirm the rejection of claims 27 and 28. DECISION The Examiner's rejection of claims 1-7, 9-13, 15-17, and 19-30 under 35 U.S.C. Â§ 103(a) is affirmed. The Examiner's rejection of claim 14 under 35 U.S.C. Â§ 103(a) is reversed. The Examiner's rejection of claim 19 under 35 U.S.C. Â§ 112, fourth paragraph, is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l)(iv)(2013). AFFIRMED-IN-PART 12