Ex Parte 7,499,872 B1 et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201595001604 (P.T.A.B. Feb. 18, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,604 04/18/2011 7,499,872 B1 688239-RX 9587 2292 7590 02/18/2015 BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 EXAMINER HOTALING, JOHN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/18/2015 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 ____________________ VESDIA CORPORATION Requester v. TUITIONFUND, LLC Patent Owner ____________________ Appeal 2014-008890 Reexamination Control No. 95/001,604 Patent 7,499,872 B1 Technology Center 3900 ____________________ Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Patent Owner requests rehearing of the portion of our Decision entered September 29, 2014 (“Decision”), in which we affirmed the Appeal 2014-008890 Reexamination Control 95/001,604 Patent 7,499,872 B1 2 rejection of claims 25, 27, 29, 31, 33, and 35 under 35 U.S.C. § 103(a) as being unpatentable over Canadian ‘448 in view of FutureBanker. OPINION We will maintain the rejections. PRINCIPLES OF LAW A reference may be understood by the artisan to be suggesting a solution to a problem that the reference does not discuss. See KSR v. Teleflex, 550 U.S. 398, 420–21 (2007) (“The second error of the Court of Appeals lay in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. . . . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. . . . A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). The test of obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appeal 2014-008890 Reexamination Control 95/001,604 Patent 7,499,872 B1 3 ANALYSIS Patent Owner reiterates its argument that the special purpose card disclosed in Canadian ‘448 would not be “capable of being used to make both online internet-based and point of sale purchases with registered merchants offering rebates,” as claims 25, 27, 29, 31, 33, and 35 recite (Req. for Reh’g 2). Patent Owner asserts that the Board misapprehended the issue because online merchants would not possess the specially configured card processing terminal (Req. for Reh’g 3). This argument remains unpersuasive to show error, for two reasons. First, Requester correctly notes that the Examiner took Official Notice in parent Application No. 09/703,562 that on-line purchasing was well known at the time of the invention (Office Action mailed December 15, 2003, p. 5). Such Official Notice stands unchallenged by Patent Owner (Req. for Reh’g 2; Req. Comments in Opposition, p. 1). The Examiner’s rejection finds, and we agree, that Canadian ‘448 explicitly discloses point of sale purchases (RAN 3-4, adopting proposed rejection in Third Party Requester Comments filed June 8, 2012, pp. 12-14). Second, as a consequence of that unrebutted official notice, we agree with Requester (Req. Comments in Opposition, pp. 2-3) that one of ordinary skill in the art, having the teachings of Canadian ‘448 regarding point of sale purchases and the known concept of using credit or debit cards for on-line purchases before him, would have found it obvious to arrive at the limitation recited in these claims. A reference may be understood by the artisan to be Appeal 2014-008890 Reexamination Control 95/001,604 Patent 7,499,872 B1 4 suggesting a solution to a problem that the reference does not discuss. See KSR, 550 U.S. at 420–21. We agree with Requester that the teachings of Canadian ‘448 do not preclude application of the “CareCard” to on-line purchases, and that it would have been within the realm of ordinary skill in the art to apply the CareCard to on-line as well as point of sale purchases (Req. Comments in Opposition, pp. 2-3). We are thus also unpersuaded by Patent Owner’s contention that there is no articulated reasoning to support a conclusion of obviousness (Req. for Reh’g 4). Patent Owner’s argument regarding Hardesty (Req. for Reh’g 4) is not persuasive to disturb our decision, because as noted in the Decision, we did not reach the rejection of these claims over Hardesty (Dec. 11). Last, we note that it is not relevant whether the affirmed Examiner’s rejection mischaracterizes “online” purchasing as the term is used in Canadian ‘448 (see Req. for Reh’g 5). As mentioned supra, it is a matter of record that the Examiner took Official Notice that on-line internet-based purchasing was well known at the time of the invention, and Patent Owner did not contest this Official Notice. We therefore conclude that Appellant has not shown any points which we misapprehended or overlooked in our Decision. CONCLUSION In summary, we have granted Appellant’s request for rehearing to the extent that we have reconsidered our decision affirming the rejection of Appeal 2014-008890 Reexamination Control 95/001,604 Patent 7,499,872 B1 5 claims 25, 27, 29, 31, 33, and 35, but we decline to modify the decision in any way. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. REHEARING DENIED ack PATENT OWNER: BIRCH STEWART KOLASCH & BIRCH, LLP PO Box 747 Falls Church, VA 22040-0747 THIRD PARTY REQUESTOR: Stephen E. Murray PANITCH SCHWARZE BELISARIO & NADEL LLP One Commerce Square, 2005 Market St., Suite 2200 Philadelphia, PA 19103-7086 Copy with citationCopy as parenthetical citation