Ex Parte Hammad et al

Patent Trial and Appeal Board

Aug 5, 2013

10676848 (P.T.A.B. Aug. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AYMAN HAMMAD, LOC NGUYEN, LIANE REDFORD, and
GARY YAMAMURA
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Appeal 2011-009794
Application 10/676,848
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-6, 9-12, 14-21, 24-29, 42-52, 60-65, 68, 69, 76-79,
81, and 82. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention generally relates to loyalty programs and more
specifically to methods and apparatus for providing a plurality of incentives
based on the same product during the same time period (Spec., para. [0001]).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. A method comprising:
[a] determining a plurality of incentives, using a
distribution channel, that are eligible for application to a
transaction, the eligibility of each of the plurality of incentives
is based on at least one product in the transaction, wherein each
product in the transaction is associated with a product identifier
that is used to determine the plurality of incentives, wherein at
least two of the plurality of incentives are determined using the
same product identifier in the transaction, wherein the product
identifier is a stock keeping unit (SKU);
[b] determining, using the distribution channel, two or
more incentives from the plurality of incentives to apply to the
transaction, wherein determining the two or more incentives

1 Our decision will make reference to the Appellants’ Appeal Brief
(“App. Br.,” filed December 6, 2010) and Reply Brief (“Reply Br.,” filed
April 14, 2011) and the Examiner’s Answer (“Ans.,” mailed February 16,
2011).
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comprises determining an incentive parameter for each of the
determined two or more incentives and using the incentive
parameters to determine how the determined two or more
incentives are to be applied to the transaction, wherein the
incentive parameters comprise information indicating if an
incentive is redeemable in the transaction with another
incentive; and
[c] applying, using the distribution channel, the
determined two or more incentives to the transaction, wherein
the distribution channel operates in an offline manner while
determining the plurality of incentives, determining the two or
more incentives, and applying the determined two or more
incentives to the transaction.

THE REJECTION
The following rejection is before us for review:
Claims 1, 3-6, 9-12, 14-21, 24-29, 42-52, 60-65, 68, 69, 76-79, 81,
and 82 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Iannacci (US 2002/0062249 A1, pub. May 23, 2002) in view of Fernandez
(US 2001/0016827 A1, pub. Aug. 23, 2001) and further in view of Austin
(US 2002/0082920 A1, pub. Jun. 27, 2002).

ANALYSIS
Claims 1, 3-5, 9-12, 14-21, 24-29, 42-52, 60-65, 68-69, 76-79, and 82
Appellants argue claims 1, 3-5, 9-12, 14-21, 24-29, 42-52, 60-65,
68-69, 76-79, and 82 as a group, and select claim 1 as representative (App.
Br. 9). The remaining claims stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that none of Iannacci,
Fernandez, and Austin teaches or suggests a method comprising, inter alia,
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determining an incentive parameter for each of the determined
two or more incentives and using the incentive parameters to
determine how the determined two or more incentives are to be
applied to the transaction, wherein the incentive parameters
comprise information indicating if an incentive is redeemable in
the transaction with another incentive,
as recited in the claim (App. Br. 10-12 and Reply Br. 2-3).
The Examiner cites paragraph [0057] of Austin as teaching that, at the
time Appellants’ invention was made, it was old and well-known that
merchants may place restrictions on the use of an incentive. The Examiner
thus concludes that it would have been obvious to one of ordinary skill in the
art to modify the Iannacci system to define restrictions to be applied in
redeeming incentives, as taught by Austin (Ans. 21).
In our view, the Examiner’s obviousness determination is adequately
supported by rational underpinnings. Austin describes in paragraphs [0056]
and [0057] that a merchant may place restrictions on the use of an incentive,
and states that such restrictions may include restrictions on time or a
particular user, or the merchant may require that the incentive not be
combined with other incentives. We agree with the Examiner that the
proposed modification of the Iannacci system is no more than a combination
of prior art elements according to their established functions, and yields a
predictable result (Ans. 21). Therefore, it would have been obvious at the
time of Appellants’ invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416(2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
Appellants argue that Austin only discloses incentives that cannot be
redeemed with other incentives, and does not disclose incentive parameters
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comprising “information indicating if an incentive is redeemable in the
transaction with another transaction” (App. Br. 11 and Reply Br. 2-3).
However, the Supreme Court has made clear that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418.
Appellants’ argument that none of the cited references discloses or
suggests that “each product in the transaction is associated with a product
identifier that is used to determine the plurality of incentives, wherein at
least two of the plurality of incentives are determined using the same
product identifier in the transaction” is similarly unpersuasive
(App. Br. 12-13 and Reply Br. 3). Appellants argue that paragraphs [0235]
through [0237] of Iannacci, on which the Examiner relies (Ans. 4), disclose
example transactions but do not disclose each product being associated with
a product identifier and determining incentive using a product identifier, and
that paragraph [0314] of Iannacci, cited by the Examiner (Ans. 4 and 22),
does not disclose at least two incentives being determined using the same
product identifier (App. Br. 13). But, as mentioned above, the obviousness
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, but may take into account the inferences and
creative steps that a person of ordinary skill in the art would employ.
Iannacci discloses an example transaction in paragraph [00235] where
Hilton Hotels may provide triple HHonors points and double airline award
miles when an individual uses an American Express card account to charge a
stay at a Hilton hotel, i.e., two incentives are awarded for purchase of the
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same product (service). The Hilton incentives are not determined based on a
product identifier. However, paragraph [0314] of Iannacci clearly teaches
using a product identifier (e.g., for Tide detergent) in a transaction to
determine an incentive, i.e., a $1.00 manufacturer coupon.
We also are not persuaded by Appellants’ further argument that
modifying Iannacci with Fernandez would render Iannacci unsuitable for its
intended purpose (App. Br. 14-15 and Reply Br. 4-5). The Examiner
acknowledges that Iannacci does not teach a distribution channel operating
in an offline manner, i.e., limitation [c], as recited in claim 1, and the
Examiner relies on Fernandez as disclosing this feature (Ans. 5, citing
Fernandez, paras. [0026] - [0031]).
Fernandez discloses a loyalty system where a point of sale terminal
(read/write unit) communicates with a central server to receive updated
information, e.g., regarding discounts, and to transmit log information.
However, Fernandez teaches that the read/write units are not required to be
in continuous communication with the central server, and can connect
periodically to perform various online functions (see, e.g., Fernandez, para.
[0027]).
Appellants argue that limited communication with a central server
would render Iannacci unsuitable for its intended purpose, i.e., because
querying a central service at the time of each transaction is necessary to
“deliver the stated benefits of Iannacci” (Reply Br. 4-5). However,
Appellants have provided no persuasive evidence that modifying the
Iannacci system to connect periodically with the central server, as needed,
would render Iannacci’s system unsatisfactory for its intended purpose.
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Attorney argument cannot take the place of evidence in the record. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
There also is no basis for Appellants’ argument that Fernandez is not
combinable with Iannacci because Fernandez teaches away from Iannacci
(Reply Br. 5). The Examiner proposes to modify the Iannacci system (with
its continuous online operation) to include periodic online operation, as
taught by Fernandez, not the other way around. Appellants’ reliance on
paragraph [0027] of Fernandez as demonstrating a “teaching away” is
misplaced (Reply Br. 5).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 3-5, 9-12, 14-21, 24-29, 42-52, 60-65, 68, 69, 76-79, and
82, which stand or fall with claim 1.
Dependent claim 6
Claim 6 depends from claim 3, which in turn depends from claim 1.
Claim 3 recites that the method of claim 1 further comprises, inter alia,
“communicating with a portable device to determine portable device
information,” and claim 6 recites “[t]he method of claim 3, further
comprising updating the portable device information in the portable device
to indicate that the determined two or more incentives have been applied to
the transaction.”
We are not persuaded that the Examiner erred in rejecting claim 6
under 35 U.S.C. § 103(a) by Appellants’ argument that none of the cited
references discloses or suggests updating portable device information, as
recited in the claim (App. Br. 16 and Reply Br. 5-6). Instead, we agree with
the Examiner that Iannacci discloses this feature (Ans. 5 (see discussion
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regarding claim 3) and 6, citing Iannacci, paras. [0178], [0235] through
[0238], [0314], and [0334]).
Iannacci describes in paragraph [0178] that a portable device may be
used to store information regarding a consumer’s payment, award, and
loyalty accounts,
[w]ith the present invention, one account and access
mechanism (e.g., magnetic stripe card, smart card, personal
digital device) gives consumers convenient access to all their
payment, award, and loyalty accounts offering such practical
improvements as a thinner physical wallet. Such convenient
and universal access also can be employed as an authentication
methodology to confirm the existence and validity of certain
account elements for interactions between the user and other
parties.
and discloses various exemplary transactions in paragraphs [0235] through
[0238], [0314], and [0334] in which incentives are identified and applied to
the consumer’s account.
Therefore, we will sustain the Examiner’s rejection of dependent
claim 6 under 35 U.S.C. § 103(a).
Dependent claim 81
Claim 81 depends from claim 1, and recites that “the applying the
determined two or more incentives to the transaction applies the two or more
incentives to the same product.”
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 81 under 35 U.S.C. § 103(a) (App. Br. 16). As
described above with respect to claim 1, Iannacci discloses an example
transaction in paragraph [0235] where Hilton Hotels may provide triple
HHonors points and double airline award miles when an individual uses an
American Express card account to charge a stay at a Hilton hotel, i.e., two
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incentives are awarded for purchase of the same product (service). The
Hilton incentives are not determined based on a product identifier but
paragraph [0314] of Iannacci clearly teaches using a product identifier in a
transaction to determine an incentive.
Therefore, we will sustain the Examiner’s rejection of claim 81 under
35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1, 3-6, 9-12, 14-21, 24-29, 42-52,
60-65, 68, 69, 76-79, 81, and 82 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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