Ex Parte MonkDownload PDFPatent Trial and Appeal BoardJul 20, 201611757980 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111757,980 0610412007 Justin T. Monk 66945 7590 07/22/2016 KILPATRICK TOWNSEND & STOCKTONLLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 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. 16222U-033000US 3698 EXAMINER CLARK, DAVID J ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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 EDurrell@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUSTIN T. MONK Appeal 2014-006581 1 Application 11/757,9802 Technology Center 3600 Before BIBHU R. MOHANTY, KENNETH G. SCHOPPER, and MATTHEWS. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1, 4, 5, 10, 13, 14, 17, 18, and20-26. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed November 1, 2013), ("Reply Br.," filed May 7, 2014), the Examiner's Answer ("Ans.," mailed March 13, 2014), and Final Office Action ("Final Act.," mailed June 7, 2013). 2 Appellant identifies Visa U.S.A. Inc., as the real party in interest (Appeal Br. 2). Appeal2014-006581 Application 11/757,980 CLAHvIED Il-.JVENTION Appellant's claimed invention relates generally to "a method of handling returned account statements in a payment card system" (Spec. i-f 6). Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal. 1. A method of handling returned account statements in a payment system, the method comprising: [a] upon receipt of a returned account statement corresponding to a consumer's account wherein the account includes a prepaid reloadable payment card, indicating, using a computer, in the consumer's account that an address of the consumer is invalid including indicating with a returned statement flag; [b] suppressing mailing of future account statements to the address of the consumer based on determining that the address of the consumer is invalid until an updated address is received from the consumer; [ c] activating electronic delivery of the account statement to an email address of the consumer based on determining the address of the consumer is invalid; [ d] receiving the updated address from the consumer; [e] indicating in the consumer's account that the address of the consumer is valid in response to receiving the updated address including clearing the returned statement flag; [ f] if the returned statement flag is cleared, activating mailing of future account statements to the updated address; and [g] suppressing electronic delivery of the account statement to the email address of the consumer. REJECTION Claims 1, 4, 5, 10, 13, 14, 17, 18, and 20-26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fogel (US 7,328,085 B2, iss. Feb. 5, 2008), Levering (US 2005/0125316 Al, pub. June 9, 2005), DeSchryver (US 2 Appeal2014-006581 Application 11/757,980 2007/0011089 Al, pub. Jan. 11, 2007), and Rojas (US 6,770,831 Bl, iss. Aug. 3, 2004). ANALYSIS Independent claim 1 and dependent claims 4, 5, 20, and 22-25 We are persuaded by Appellant's argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the combination of Fogel, Levering, De Schryver, and Rojas fails to disclose or suggest "activating electronic delivery of the account statement to an email address of the consumer based on determining the address of the consumer is invalid," as recited by limitation [c] in independent claim 1 (see Appeal Br. 8-9, 11-15; see also Reply Br. 2-5). In the Final Office Action, the Examiner finds that Fogel discloses "based on determining the address of the consumer is invalid" (Final Act. 4 (citing Fogel, col. 3, 1. 66 - col. 4, 1. 10)), as required by limitation [ c ], but acknowledges that Fogel does not disclose "activating electronic delivery of the account statement to an email address of the consumer" (Id. at 5). To address this deficiency, the Examiner turns to Levering, at paragraphs 40 and 60, as disclosing the missing feature (id.). Based on these disclosures, the Examiner concludes (Id.). [i]t would have been obvious to one of ordinary skill in the art at the time of the invention to combine the method of Fogel et al. with the technique of Levering et al. because "document [sic] are expensive to maintain and to ship, and frequently are wasted as compliance information can rapidly change and quickly render pre-printed pamphlets obsolete." (Levering et al. paragraph 0013). 3 Appeal2014-006581 Application 11/757,980 Fogel is directed to a mail processing system for handling "mail that is not deliverable as addressed" (Fogel, col. 1, 11. 6-8). More particularly, Fogel discloses that its system "allows [a] mailer to take appropriate remedial action in response to non-delivery and return of a mailpiece" (id. at col. 2, 11. 48-51). Fogel discloses [i]f the mailpiece is determined to be "undeliverable as addressed" or if a similar determination is made, the postal authority will (116 in FIG. 1) typically mark, print or otherwise affix on or to the mail piece an indication, endorsement and/ or code to indicate a reason why the mailpiece is not deliverable. (Id. at col. 3, 1. 66- col. 4, 1. 4). Fogel further discloses returned mail is processed by or on behalf of the mailer in accordance with aspects of the present invention to be described below. At 122 the mailer and/or its contractor or agent performs remedial action that is determined based on the processing which occurred at 120, and an operation to update the recipient database 102, based possibly on the remedial action 122, is indicated at 124. (Id. at col. 4, 11. 22-28). Fogel still further discloses the mailer, its contractor or agent may proceed with the remedial action decided upon at 208. When the remedial action produces updated address information for the intended recipient, the resulting information may be used to update a recipient database, which in tum may again be "cleansed". In some cases, the old address (i.e., the address which resulted in nondelivery) may be stricken from the recipient database unless it can be updated by conventional address updating/cleansing processes. (Id. at col. 6, 11. 27-35). Levering is directed to "a system for distributing compliance information to a user" (Levering i-f 16). Levering identifies that the distribution of compliance information "documents are expensive to maintain and to ship, and frequently are wasted as compliance information 4 Appeal2014-006581 Application 11/757,980 can rapidly change and quickly render pre-printed pamphlets obsolete" (id. i-f 13). Levering discloses that its system allows a user to select "how the user prefers to see documents (such as font, formatting, print versus electronic, etc.), ... and any other preference which may affect how a user wants to receive his/her information" (id. i-f 40). Levering further discloses that "[ o ]nee the preference information is received from the user, the compliance documents may then be published to the user either electronically, in print, or by any other means according to those preferences" (id.; see also id. i-f 60). Levering also discloses that "[ e ]lectronic delivery is particularly helpful in the area of delivering compliance information because of the cost of distributing compliance information on paper. For certain users who have consented, and many entities which must comply with the regulations, suppressing paper delivery and opting for electronic delivery is a preferred option" (id. i-f 58). We have reviewed the cited portions of Fogel and Levering and agree with Appellant that neither Fogel nor Levering, alone or in combination, disclose or suggest the argued limitation. In particular, we fail to see, and the Examiner does not adequately explain, how Levering' s disclosure regarding "delivery preferences" which allow a user to choose whether to view compliance information in hard copy versus electronic version (see Levering i-fi-1 40, 60) in combination with Fogel's disclosure regarding determining whether a mailpiece is "undeliverable as addressed" (see Fogel, col. 3, 1. 66 - col. 4, 1. 4) discloses or suggests "activating electronic delivery of the account statement to an email address of the consumer based on determining the address of the consumer is invalid," as recited by limitation [ c] in independent claim 1. 5 Appeal2014-006581 Application 11/757,980 Responding to Appellant's argument in the Response to Argument section of the Answer, the Examiner explains Levering discloses activating electronic delivery of the account statement to an email address of the consumer in at least paragraphs 0040 where Levering discloses publishing and distributing documents electronically and 0060 the information is contained or attached to the email message. Further Levering in at least paragraph 0058 discloses that suppressing paper and op[ ting] for electronic delivery is preferred. Fogel et al. discloses based on determining the address of the consumer is invalid in at least column 3 line 66 - column 4, line[] 10 as described above. (Ans. 3--4 (emphasis omitted)). However, we agree with Appellant "[t]he Examiner has done no more than show that the delivery of account statements via e-mail and determining that an address of the consumer is invalid were separately known in the prior art" (Reply Br. 3). That is, independent claim 1 requires the activation of "electronic delivery of the account statement to an email address of the consumer" to occur based on a determination as to whether the address of the consumer is invalid, and the Examiner provides no explanation as to why this step would have been obvious in light of the cited disclosures. We note that the Examiner does not rely on either of De Schryver or Rojas to address this limitation. In view of the foregoing, we do not sustain the Examiner's rejection of claim 1under35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner's rejections of claims 4, 5, 20, and 22-25, which depend therefrom. Independent claim 10 and dependent claims 13, 14, 17, 18, 21, and 26 Independent claim 10 includes a limitation similar to limitation [ c] in independent claim 1, and is rejected based on the same rationale applied 6 Appeal2014-006581 Application 11/757,980 with respect to independent claim l (see Final Act. 8-9). Thus, for the same reasons, we also do not sustain the Examiner's rejection of independent claim 10, and claims 13, 14, 17, 18, 21, and 26, which depend therefrom, under 35 U.S.C. § 103(a). DECISION TheExaminer'srejectionofclaims 1,4,5, 10, 13, 14, 17, 18,and20- 26 under 35 U.S.C. § 103(a) is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation