Ex Parte 7,653,572 et al

Patent Trial and Appeal Board

Sep 25, 2014

95001601 (P.T.A.B. Sep. 25, 2014)

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.
95/001,601 04/15/2011 7,653,572 688239-RX1 7426
2292 7590 09/25/2014
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
09/25/2014 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 and Appellant
____________________

Appeal 2014-007353
Reexamination Control 95/001,601
Patent No. US 7,653,572 B1
Technology Center 3900
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner TuitionFund, LLC appeals under 35 U.S.C. §§ 134(b)
and 315(a) (2002) from the rejection of claims 1-9, 11-19, and 22-38
1
as set
forth in the Right of Appeal Notice (RAN) mailed May 30, 2013. Patent

1
Claims 10, 20, and 21 have been confirmed.
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Owner filed a brief (“PO App. Br.”) on August 30, 2013 and a rebuttal brief
(“PO Reb. Br.”) on March 13, 2014. Third Party Requester Vesdia
Corporation filed a Respondent’s Brief on September 30, 2013. The
Examiner mailed an Examiner’s Answer (“Ans.”) on February 13, 2014
which incorporated the RAN by reference. We have jurisdiction under
35 U.S.C. §§ 134 and 315.
We affirm.
The ’572 Patent issued to Thompson on January 26, 2010, and is
assigned to TuitionFund, LLC. The ’572 Patent concerns methods and
systems for funding a college education by accumulating and managing
merchant rebates (Abstract). Purchases are tracked by a rebate network
manager, by correlating a registered credit (or debit) card number with
purchases made by registered members (see col. 3, l. 66 – col. 4, l. 3).
Claim 1 is exemplary of the claims on appeal:
A method of providing a rebate program, the rebate program
including registered members, registered member credit card accounts,
registered member debit card accounts, and registered member rebate
accounts in which to apply rebates earned by registered members, at least
one registered merchant offering rebates to registered members with
registered debit or credit card accounts, the method comprising:
a) at a rebate network manager connected to said at least one
registered merchant via processors that track debit or credit card account
purchases to provide debit and credit card account transaction information,
receiving debit and credit card account transaction information associated
with a registered merchant;
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b) via said rebate network manager operating a centralized processing
system configured to monitor all of said debit and credit card account
transaction information from said processors and associated with a registered
merchant to determine if said transactions are consummated with registered
members using said registered member card accounts, wherein said rebate
network manager’s centralized processing system is located at a location
other than the location of the merchant,
c) calculating a rebate based upon an existing formula for a purchase
by said registered member from said registered merchant, and
d) generating information needed to apply rebate monies earned to at
least one rebate account of a registered member.
PO App. Br. 37.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:

McCarthy 4,941,090 Jul. 10, 1990

Hoffman 5,297,026 Mar. 22, 1994

Community Ben. AU-B-48289/96 March 26, 1996
(Australian ’289)

Kannegiesser CA 2,177,488 A Dec. 3, 1996
(Canadian ’488)

Hardesty US 6,105,865 Aug. 22, 2000

FutureBanker, Relationship Cards: Heroic Means of Saving,
June 1997 (FutureBanker article)

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The claims stand rejected over various combinations of prior art
references (see RAN 3-5):

References Claims Basis (§)
Canadian ’448 1, 2, 7-9, 11-16, and
22-26
102(b)
Hardesty 1, 2, 7- 8, 11-16, and
22-26
102(b)
Australian ’289 1, 2, 7-8, 11-16, and
22-26
102(b)
Canadian ’448 in view of McCarthy 15-16, 22, and 23 103(a)
Hardesty in view of Hoffman 2, 4-5, 11-13, 16, 18,
and 26
103(a)
Hardesty in view of FutureBanker 3, 6, 17, and 19 103(a)
Canadian ’448 in view of
FutureBanker
27-38 103(a)
Hardesty in view of FutureBanker 27-38 103(a)

ISSUES
Patent Owner argues that none of the references cited for anticipation
disclose a centralized processing system, located at a location other than the
location of the merchant, that monitors all debit and credit card account
transaction information to determine if transactions were consummated
between a registered merchant and a registered member’s registered card
account. According to Patent Owner, such determination occurs at the
merchant, rather than a central location, in Canadian ’448, Hardesty, and
Australian ’289 (PO App. Br. 7, 16, 19).
Patent Owner further contends that Canadian ’448 fails to disclose a
tracking entity within the meaning of the claims (PO App. Br. 14), and that
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neither Canadian ’448 nor Hardesty disclose a rebate network manage
receiving a portion of each sale as compensation for services (PO App. Br.
15, 18).
Patent Owner asserts that neither Canadian ’448 nor Hardesty, in
combination with FutureBanker, disclose or suggest card accounts capable
of being used for both online internet-based and point of sale purchases (PO
App. Br. 27), or that a party becomes a registered member by providing
information relating to one or more accounts to be used for purchases (PO
App. Br. 27-28).
Patent Owner argues that Hardesty in combination with FutureBanker
fails to disclose or fairly suggest that earned rebates may be used to pay for
higher education expenses (App. Br. 34).
The arguments made by Patent Owner and Requester present us with
the following issues:
1. Does Canadian ’448 disclose a centralized processing system,
located at a location other than the location of the merchant, to determine or
correlate if transactions are consummated with registered members using
registered member card accounts?
2. Does Hardesty disclose a centralized processing system, located at
a location other than the location of the merchant, to determine or correlate
if transactions are consummated with registered members using registered
member card accounts?
3. Does Canadian ’448 or Hardesty disclose processors associated
with a tracking entity in communication with a rebate network manager?
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4. Does Canadian ’448 or Hardesty disclose that the rebate network
manager may receive a portion of each consummated sale or rebate as
compensation for its services?
5. Does Canadian ’448 or Hardesty in combination with FutureBanker
disclose or suggest applying rebate monies toward higher education
expenses?
6. Does Canadian ’448 or Hardesty in combination with FutureBanker
disclose or suggest a credit or debit card account capable of being used to
make both online internet-based and point of sale purchases with registered
merchants offering rebates?
7. Does Canadian ’448 or Hardesty in combination with FutureBanker
disclose or suggest that a party becomes a registered member by providing
information relating to one or more accounts to be used by the registered
member for purchases?

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). 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
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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. Id. at 425.

ANALYSIS
REJECTION OF CLAIMS 1, 2, 7, 8, 12-16, AND 22-26 OVER CANADIAN ’448
We are not persuaded by Patent Owner’s arguments (PO App. Br. 7-
13) that Canadian ’448 fails to disclose a centralized processing system, “at
a location other than the location of the merchant,” configured to monitor
“all of said debit and credit card account transaction information . . .
associated with a registered merchant . . . to determine if said transactions
are consummated with registered members using said registered member
credit card accounts” (claim 1), or “correlating using a rebate network
manager processor, the received account transaction information with the
stored member registered card account information to determine which
transactions were consummated with a registered member” (claim 15).
We agree with Requester (Resp. Br. 2) that Canadian ’448 discloses
that “the issuing bank, upon recognizing the special card and that the vendor
does provide a contribution of rebate and discount . . . would then charge or
debit the cardholder’s account” and pay the vendor (Canadian ’448 p. 21).
We find that “upon recognizing,” supra, means that the issuing bank must
discriminate between those incoming transactions that involve a registered
merchant and a registered card, and those transactions that do not. We
further find, in accord with Requester’s position, that this processing,
because it is done by the issuing bank, is done at a location other than the
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location of the merchant (see Resp. Br. 2). We further agree with Requester
and find that in Canadian ’448 a transaction conducted with the CareCard is
“correlated” with a stored member account when the issuing bank
recognizes the special card and the vendor as part of the electronic
transaction (see Resp. Br. 3).
Because we find that Canadian ’448 discloses the issuing bank
performing the claimed determining or correlating, we find no error in the
Examiner’s rejection of claims 1 and 15, or claims 2, 7, 8, 12-14, 16, and 22-
26 not separately argued. We sustain the Examiner’s § 102 rejection over
Canadian ’448.
REJECTION OF CLAIM 9 OVER CANADIAN ’448
We do not agree with Patent Owner that Canadian ’448 fails to teach
processors associated with a tracking entity in communication with a rebate
network manager (PO App. Br. 14). Rather, we agree with Requester that
Canadian ’448 inherently discloses that the issuing bank has processors
associated with a separate tracking entity. Starting with the Dale
Declaration’s disclosure that merchants have an “acquirer” to accept card
transactions from the merchant, either directly or through the acquirer’s card
processor (Declaration ¶ 5), we agree with Respondent that in Canadian ’448
the issuing bank is the “acquirer” for each vendor. We further agree that
Canadian ’448 discloses that it is intended use within the framework of
traditional credit card processing systems, which necessarily include having
the issuing bank farm out tracking duties to a card processor (Resp. Br. 4).
We find that Canadian ’448 discloses all the limitations of claim 9.
We sustain the Examiner’s § 102 rejection of claim 9 over Canadian ’448.
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REJECTION OF CLAIM 11 OVER CANADIAN ’448
We do not agree with Patent Owner’s argument that Canadian ’448
does not disclose that the rebate network manager may receive a portion of
each consummated sale or rebate as compensation for its services (PO App.
Br. 15). We agree with Respondent that Canadian ’448 discloses that “the
card issuer may fund an agent with a portion of the rebate, or retain a portion
as its own fees” (Resp. Br. 5; Canadian ’448 p. 6). As we find no error, we
sustain the Examiner’s rejection of claim 11 under § 102 over Canadian
’448.
REJECTION OF CLAIMS 1, 2, 7, 8, 12-16, AND 22-26 OVER HARDESTY
We are unpersuaded by Patent Owner’s argument that Hardesty fails
to teach a centralized processing system, at a location other than the location
of the merchant, for monitoring and determining transactions consummated
between a participating merchant and a registered member (PO App. Br. 16),
or for correlating account transaction information with stored member
registered card account information to determine which transactions were
consummated with a registered member (PO App. Br. 17). Rather, we are
persuaded by Requester that Hardesty discloses that “[a]t the end of a
business cycle . . . the merchant will then make a deposit . . . with the
merchant’s bank 18 including those credit sales which were purchased by
customers using the retirement card. The bank 18 will credit the merchant’s
account 52 with an amount which represents the amount of the sale less
certain costs of the transaction . . . . The calculation of the rebate and transfer
of funds occur electronically using existing banking systems” (col. 5, ll. 50-
61). In Hardesty, then, the bank must examine each transaction and
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discriminate between “those credit sales which were purchased by customers
using the retirement card” and those that were not. We find that Hardesty
thus teaches the claimed centralized processing system, at a location other
than the merchant’s location, that determines or correlates transactions
between participating merchant and registered member, as independent
claims 1 and 15 recite.
We find no error in the Examiner’s rejection. Accordingly we sustain
the § 102 rejection of claims 1, 2, 7, 8, 12-16, and 22-26 over Hardesty.
REJECTION OF CLAIM 11 OVER HARDESTY
We do not agree with Patent Owner that Hardesty fails to disclose a
rebate network manager receiving a portion of each consummated sale or
rebate as compensation for its services (PO App. Br. 18-19). First, we note
that Patent Owner concedes that merchant’s bank 18 “could possibly be
performing multiple duties and serving as a rebate network manager and
possibly the underwriter or card issuing bank” (PO App. Br. 19). Second,
we find that Hardesty discloses that bank 18 withholds “certain costs of the
transaction including any fees that the merchant has agreed to pay the
underwriting or card-issuing organization” (col. 5, ll. 56-59). Third, we
agree with Requester that Hardesty discloses that its rebate concept “will
utilize the existing financial structure and existing computer software and
hardware” (Resp. Br. 7; Hardesty col. 3, ll. 43-45). We further agree with
Requester that use of the existing financial structure necessarily includes that
“entities in the position of the bank 18 . . . will collect fees from the rebates
as compensation for the system” (Resp. Br. 7).
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Accordingly, we agree with Requester that Hardesty inherently
discloses a rebate network manager receiving a portion of each
consummated sale or rebate as compensation for its services. We sustain the
Examiner’s § 102 rejection of claim 11 over Hardesty.
REJECTION OF CLAIMS 1, 2, 7, 8, 11-16, AND 22-26 OVER AUSTRALIAN ’289
Each of these claims is rejected under § 102 over Canadian ’448, or
Hardesty, or both. Because the claims stand rejected, we need not reach the
merits of the Examiner’s § 102 rejection over Australian ’289. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).
REJECTION OF CLAIMS 27, 29, 31, 33, 35, 37 OVER CANADIAN ’448 IN VIEW OF
FUTUREBANKER
Patent Owner’s arguments do not persuade us that the Examiner erred
in combining the references to suggest “registered member credit card
accounts and registered member debit card accounts . . . capable of being
used to make both online internet-based and point of sale purchases with
registered merchants” (PO App. Br. 27). Requester correctly points out 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), and that such Official Notice
stands unchallenged by Patent Owner.
As Patent Owner has not shown error in the rejection of claims 27, 29,
31, 33, 35, and 37 over Canadian ’448 in view of FutureBanker, we sustain
the Examiner’s rejection. We need not reach the Examiner’s rejection of the
same claims over Hardesty in view of FutureBanker. See Gleave, 560 F.3d
at 1338.
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REJECTION OF CLAIMS 28, 30, 32, 34, 36, AND 38 OVER CANADIAN ’448 IN
VIEW OF FUTUREBANKER
We are not persuaded that the Examiner erred in rejecting these
claims. We agree with Requester that the claim language, “wherein a party
becomes a registered member by providing information relating to one or
more accounts to be used by the registered member for purchases”
(emphasis added), may fairly be construed to be prospective (Resp. Br. 10).
Because of the presence of the phrase “to be used,” there is no requirement
in these claims that the account already be in existence at the time the
information is provided. Consequently, we agree that Canadian ’448
discloses this claim limitation, because (as Patent Owner states) when
making an application for the card disclosed in Canadian ’448, an individual
provides the card issuer with information (PO App. Br. 30).
We find no error in the Examiner’s rejection of claims 28, 30, 32, 34,
36, and 38 over Canadian ’448 and FutureBanker, and we sustain the § 103
rejection. We need not reach the Examiner’s rejection of the same claims
over Hardesty in view of FutureBanker. See In re Gleave, 560 F.3d at 1338.
REJECTION OF CLAIMS 15, 16, 22, AND 23 OVER CANADIAN ’448 IN VIEW OF
MCCARTHY
Patent Owner’s sole argument for patentability is that McCarthy fails
to disclose the claim elements allegedly lacking in Canadian ’448 (PO App.
Br. 31). Because we find supra that Canadian ’448 discloses all the
limitations of independent claim 15, we find Patent Owner’s arguments to be
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unpersuasive of Examiner error. We sustain the § 103 rejection of claims 15,
16, 22, and 23 over Canadian ’448 in view of McCarthy.
REJECTION OF CLAIMS 4, 5, AND 18 OVER HARDESTY IN VIEW OF HOFFMAN
Patent Owner’s arguments against Hardesty and Hoffman individually
(PO App. Br. 32) are not persuasive to establish the nonobviousness of the
Examiner’s proposed combination. See In re Keller, 642 F.2d at 425.
We agree with Requester (Resp. Br. 11) that Patent Owner has
previously admitted that Hoffman teaching applying funds to indebtedness
(Patent Owner Response filed September 23, 2011 at 25, citing Hoffman col.
6, ll. 27-35). We further agree that the combination of Hardesty and
Hoffman would have fairly suggested the earning of rebates and, as money
is fungible, the application of rebate monies toward indebtedness owed (see
Req. Br. 12). We sustain the Examiner’s § 103 rejection.
REJECTION OF CLAIM 11 OVER HARDESTY IN VIEW OF HOFFMAN
Patent Owner’s argument that this rejection is erroneous because
Hardesty does not disclose a rebate network manager receiving a portion of
each sale or rebate as compensation for its services (PO App. Br. 33) is
again unpersuasive. As explained supra with respect to the § 102 rejection
over Hardesty, we find that Hardesty inherently discloses this element.
Accordingly, we do not find error in the Examiner’s rejection of claim
11 over Hardesty in view of Hoffman. We sustain the § 103 rejection.

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REJECTION OF CLAIMS 3, 6, 17, AND 19 OVER HARDESTY IN VIEW OF
FUTUREBANKER
We are not persuaded by Appellant’s remarks that FutureBanker’s use
of the term “education” provides no support for the assertion that funds can
be used for higher education expenses (PO App. Br. 34). We agree with
Requester that FutureBanker would have fairly suggested to one having
ordinary skill in the art that rebates such as those paid in Hardesty may be
applied toward such expense categories as health, education, and retirement.
We find no error in the Examiner’s rejection of claims 3, 6, 17, and 19
over Hardesty in view of FutureBanker, and we sustain the § 103 rejection.

CONCLUSIONS
1. Canadian ’448 discloses a centralized processing system, located at
a location other than the location of the merchant, to determine or correlate
if transactions are consummated with registered members using registered
member card accounts.
2. Hardesty discloses a centralized processing system, located at a
location other than the location of the merchant, to determine or correlate if
transactions are consummated with registered members using registered
member card accounts.
3. Canadian ’448 and Hardesty disclose processors associated with a
tracking entity in communication with a rebate network manager.
4. Canadian ’448 and Hardesty disclose that the rebate network
manager may receive a portion of each consummated sale or rebate as
compensation for its services.
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5. Both Canadian ’448 and Hardesty, in combination with
FutureBanker, disclose or suggest applying rebate monies toward higher
education expenses.
6. Both Canadian ’448 and Hardesty, in combination with
FutureBanker, disclose or suggest a credit or debit card account capable of
being used to make both online internet-based and point of sale purchases
with registered merchants offering rebates.
7. Both Canadian ’448 and Hardesty, in combination with
FutureBanker, disclose or suggest that a party becomes a registered member
by providing information relating to one or more accounts to be used by the
registered member for purchases.
ORDER
The Examiner’s rejection of claims 1-9, 11-19, and 22-38 is affirmed.
In the event neither party files a request for rehearing within the time period
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, 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.

AFFIRMED

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ak

Birch Stewart Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747

Third Party Requester:

Panitch Schwarze Belisario & Nadel, LLP
One Commerce Square
2005 Market Street
Suite 2200
Philadelphia, PA 19103