Ex Parte Yu et al

Patent Trial and Appeal BoardJun 21, 2016

12886060 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/886,060 09/20/2010 23446 7590 06/23/2016 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 FIRST NAMED INVENTOR James Yu 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. 25313US01 9907 EXAMINER AMSDELL, DANA ART UNIT PAPER NUMBER 3627 NOTIFICATION DATE DELIVERY MODE 06/23/2016 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES YU, MATTHEW DANFORTH, and CORNELIUS GEER Appeal2014-003087 1 Application 12/886,0602 Technology Center 3600 Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-5. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Sept. 3, 2013) and Reply Br. ("Reply Br.," filed Dec. 26, 2013), and the Examiner's Answer ("Ans.," mailed Oct. 25, 2013) and Final Office Action ("Final Act.," mailed Mar. 25, 2013). 2 Appellants identify Sears Brands, L.L.C. as the real party in interest. Br. 2. Appeal2014-003087 Application 12/886,060 CLAIMED INVENTION Appellants' claimed invention "relates to retail services and, more particularly, relates to a system for facilitating multi-channel purchase of FSA eligible items." Spec. 1: 6-7. Claim 1, reproduced below, is the sole independent claim and illustrative of the subject matter on appeal: 1. A system for facilitating multi-channel purchasing of FSA eligible items, comprising: a retail store located point-of-sale (POS) device; a retail POS system in communication with the POS device having an associated retail system data repository, the retail system data repository storing data indicative of a plurality of items and corresponding Flexible Spending Account (FSA) purchasing eligibility for the plurality of items, the retail POS system being Inventory Information Authentication System (HAS) [sic] certified whereby, upon one or more items being presented for purchase at the POS device, the retail POS system identifies the one or more items and uses the data stored in the retail system data repository to validate the one or more items as being FSA-eligible for purchase with a customer's FSA linked debit card; and an online retail system in communication with the retail POS system for presenting via an online channel items available for purchase, for indicating when items are FSA-eligible for purchase, for receiving payment information, including FSA linked debit card information, in response to a customer's indicated desire to purchase one or more items via the online channel, and for communicating the payment and item information to the retail POS system whereby the retail POS system identifies the one or more items and uses the data stored in the retail system data repository to validate the one or more items as being FSA-eligible for purchase with a customer's FSA linked debit card. 2 Appeal2014-003087 Application 12/886,060 REJECTION Claims 1-5 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Harrison (US 2008/0183627 Al, pub. July 31, 2008) and Marshall (US 2010/0010909 Al, pub. Jan. 14, 2010). 3 ANALYSIS We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 1under35 U.S.C. Â§ 103(a) because Harrison, on which the Examiner relies, does not disclose or suggest "an online retail system in communication with the retail POS system for presenting via an online channel items available for purchase, [and] for indicating when items are FSA-eligible for purchase," as recited in claim 1. App. Br. 7-11; Reply Br. 3---6. Harrison is directed to substantiating eligible expenses related to participating card holders for purchases made at healthcare and non- healthcare merchants. Harrison i-f 8. With reference to Figure 3A, Harrison discloses a process 300A for authorization of a payment card associated with a tax advantage account for card member 202. Id. i-f 62. After a merchant swipes a payment card on a card reader, the information read by the card reader is routed to a card platform processor. Id. The card platform processor receives transaction details (step 306) and determines if the merchant has a valid MCC (step 308). Id. If not, the merchant receives a decline for authorization. Id. If yes, then the card processor platform checks the available funds in the card member's tax advantaged account. Id. 3 We treat as inadvertent error the identification of claims 1-5 as rejected under 35 U.S.C. Â§ 102(b), instead of under 35 U.S.C. Â§ 103(a). Final Act. 7. 3 Appeal2014-003087 Application 12/886,060 The Examiner finds that Harrison at Figure 3A and paragraph 62 discloses an online retail system 300A in communication with a retail POS system that presents purchases 306 indicating FSA eligibility 310. Ans. 4--5. However, the cited portion of Harrison discloses a transaction that occurs at a point of sale terminal of a merchant, not an on-line retail system, as recited in claim 1. In the Final Office Action, the Examiner cites an example at paragraph 29 of Harrison in which a merchant includes an "online merchant" and reasons an online merchant, as disclosed by Harrison, discloses the claimed online retail system. Final Act. 5 (citing Harrison i-f 29). The Examiner finds that merchant 204 is an online merchant, as recited in claim 1. Id. (citing Harrison Fig. 2). As shown in Figure 2 of Harrison, card member 202 uses an electronic card associated with a tax-advantaged account at merchant 204, and merchant 204 reads the electronic card at a point-of-sale device. Harrison, Fig. 2, i-fi-151-53. We agree with Appellants that an online merchant does not teach or suggest an online retail system, as recited in claim 1. For example, we fail to see how, and the Examiner does not explain how, Harrison discloses or suggests communication between the online retail system and the retail POS system, as recited in claim 1. In view of the foregoing, we do not sustain the Examiner's rejection of independent claim 1under35 U.S.C. Â§ 103(a). For the same reasons, we also do not sustain the Examiner's rejection of dependent claims 2-5. 4 Appeal2014-003087 Application 12/886,060 DECISION The Examiner's rejection of claims 1-5 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 5