Visa International Service AssociationDownload PDFPatent Trials and Appeals BoardMay 18, 202014290134 - (D) (P.T.A.B. May. 18, 2020) Copy Citation 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. 14/290,134 05/29/2014 Aparna Krishnan Girish 543US02/090426-30362 6380 113349 7590 05/18/2020 LOEB & LOEB, LLP 321 North Clark Street Suite 2300 Chicago, IL 60654-4746 EXAMINER STOLTENBERG, DAVID J ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 05/18/2020 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): chpatent@loeb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte APARNA KRISHNAN GIRISH ____________ Appeal 2019-005542 Application 14/290,134 Technology Center 3600 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–4 and 6–22 under 35 U.S.C. § 103 as unpatentable over Navar (US 2012/0150606 A1, pub. June 14, 2012), Alexander (US 5,986,654, iss. Nov. 16, 1999), Griffiths (US 2012/0166268 A1, pub. June 28, 2012), and Pasa (US 9,799,027 B2, iss. Oct. 24, 2017).2 Final Act. 2–7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Visa International Service Association as the real party in interest. Appeal Br. 2. 2 Claim 5 is canceled. Appeal Br. 20 (Claims App.). Appeal 2019-005542 Application 14/290,134 2 THE CLAIMED SUBJECT MATTER Claims 1, 21, and 22 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A dynamic checkout button processor-implemented method, the method being implemented by a dynamic checkout button (DCB) computing device having a memory storing instructions in the form of computer executable instructions and one or more data processors physically configured by executing the computer executable instructions, comprising: receiving, via the DCB computing device, a user input message in relation to a product page checkout request received from a portable user device associated with a user, wherein the product page checkout request includes login information for a user’s wallet account; in response to receiving the user input message, querying, using the DCB computing device, a merchant loyalty database for a user merchant loyalty level associated with a merchant and the user; accessing, using the DCB computing device, the user’s wallet account via the login information and determining user specific behavior based on information stored in the user’s wallet account; determining, using the DCB computing device, a product discount value based on the user merchant loyalty level and the user specific behavior; generating, using the DCB computing device, a product discount value message to be embedded into a dynamic checkout button associated with the user’s wallet account based on the product discount value, wherein the product discount value message includes a timer; and transmitting the product discount value message to the portable user device, wherein receipt by the portable user device of the transmitted product discount value message causes the portable user device to display the dynamic checkout button and the embedded product Appeal 2019-005542 Application 14/290,134 3 discount value message on a display of the portable user device, wherein the product discount value message is dynamic and changes as the timer counts down. OPINION In contesting the rejection, Appellant references certain limitations recited in independent claims 1, 21, and 22, but otherwise presents arguments without regard to any particular claim. See Appeal Br. 9–18. Thus, we select independent claim 1 as the representative claim, and claims 2–4 and 6–22 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). In rejecting claim 1, the Examiner finds that Navar teaches the following: • querying, using the computing device, a merchant loyalty database (fig. 1 element 130; 0022; 0023) for a user merchant loyalty level associated with a merchant and the user (0033); • determining, using the computing device, a product discount value based on the user merchant loyalty level and user specific behavior (0033); • generating, using the computing device, a product discount value message based on the product discount value (0033); . . . • wherein the product discount value message includes a timer (i.e. a “countdown clock”) (0035); and • transmitting the product discount value message to the portable user device (0039), wherein receipt by the portable user device of the transmitted product discount value message causes the portable user device to display the product discount value message on a display of the portable user device (0035). Final Act. 2–3. The Examiner finds that Griffiths teaches what Navar does not, namely that the discount is triggered after[:] Appeal 2019-005542 Application 14/290,134 4 receiving, via the computing device, a user input message in relation to a product page checkout request received from a user device associated with a user (i.e. browsing to a checkout page) (0009); wherein the product discount value message is dynamic and changes as the timer counts down (0071; 0051; 0067); and that the checkout apparatus is associated with a wallet (e.g. “credit card information”) (0069). Id. at 3. The Examiner determines that it would have been “obvious to combine Navar with the timer and changing discount in Griffiths to better ‘create[] in the consumer a sense of urgency’ (0051) at the point of checkout.” Id. (alteration in original). The Examiner finds that, “[w]hile Navar teaches creating messages for portable devices based on customer loyalty, and Griffiths teaches associating the discount with [a] checkout button, neither of them specifically teach embedding the message into the button itself.” Final Act. 3. However, the Examiner finds that Alexander teaches embedding the message in a dynamic button, transmitting the discount message, and displaying the dynamic button on a user device. Id. at 4 (citing Alexander, 2:59–62, 8:3–8, 18–34). The Examiner determines that it would have been obvious “to have modified Navar to place the discount message into the button itself to better ‘[offer] more distinctive information, especially over repeated use.’ (Alexander: 1:39–41).” Id. (alteration in original). The Examiner also finds that Pasa teaches that all of this can occur in a system of wallet accounts wherein the product page checkout request includes login information for a user’s wallet account (Fig. 3A; 4:60; 8:23; 12:42) which results in accessing, using the computing device, the user’s wallet account via the login information and determining user specific behavior based on information stored Appeal 2019-005542 Application 14/290,134 5 in the user’s wallet account (e.g. “coupon or offer associated with one of the plurality of digital wallets” or “balance of available funds” or “contact information” including “tracking wallet usage and expenditures” in the “profile of the consumer”) (3:20–21, 26–32; 3:40; 8:50–57; 9:3–5; 14:53; 13:57; 15:24–31). Final Act. 4. The Examiner determines that it would have been obvious “to integrate secure wallet technology as the source of consumer information, as is taught by Pasa. . . . One would have been motivated to incorporate digital wallet data to better gather the consumer information relevant to the offer.” Id. (citing Pasa, 5:63–6:1). Appellant argues that the Examiner’s proposed modifications would render Navar unsatisfactory for its intended purpose and change its principle of operation. Appeal Br. 11–15. In particular, Appellant asserts that, [i]f Navar is modified as suggested by the examiner, then the coupon offer would be associated with an electronic wallet and a dynamic checkout button that, when activated, applies the coupon to a customer’s online/mobile order instantaneously. This would completely eliminate the critical step of displaying the coupon on a coupon display interface for merchant verification before the coupon is redeemed. Without verification, a nefarious user could create false coupons as the coupons would not be verified. Id. at 12–13 (citing Navar ¶ 41, Fig. 4E); see also id. at 13 (asserting that the Examiner’s proposed modifications “completely change the way Navar’s customer loyalty system operates and renders it unfit for its intended purpose”). According to Appellant, “[a]ll of these suggested modifications[] change the principle [of] operation of the customer loyalty application disclosed in Navar from a basic coupon offering application to a sophisticated application and interface having integrated electronic wallet and dynamic checkout button capabilities.” Id. at 15; see also id. at 14 Appeal 2019-005542 Application 14/290,134 6 (asserting that “Navar must be substantially modified” in order to have an electronic wallet and dynamic checkout button with embedded discount value message). We are not persuaded by Appellant’s argument in that it too narrowly defines the principle of operation of Navar. The “principle of operation” referred to by Appellant relates to the “basic principles” under which the prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.”) (emphasis added). Under Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. Here, Appellant does not provide factual evidence or persuasive technical reasoning to explain how or why adding an electronic wallet and a dynamic checkout button embedded discount value message to Navar’s customer loyalty application, as proposed by the Examiner, would result in a change in the basic principles of Navar’s customer loyalty application, or otherwise render it unsatisfactory for its intended purpose of providing rewards, especially those that are tailored for the customer, to attract and retain customers. Navar, Abstract, ¶¶ 3, 8; see also Ans. 6–7 (explaining that each proposed modification based on the teachings of Griffiths, Alexander, and Pasa is “an incremental improvement to the disclosure[] of Navar rather than a fundamental change in the system disclosed by Navar”). Appeal 2019-005542 Application 14/290,134 7 Appellant argues that Alexander does not “teach a button that has text that continues to change once displayed. Rather, Alexander discloses a system and method for creating a display button object that appears to a viewer to be a unified graphic image of a button having text and graphics, where the text can be changed.” Appeal Br. 17 (citing Alexander, 6:38–46). Appellant asserts that Alexander’s “modifications that are made to the text happen before the button is displayed.” Id. (citing Alexander, 2:63–65, 7:9–12). According to Appellant, “[t]his is different from the present disclosure where the text is embedded into and displayed with the button and then the text changes as a timer counts down.” Id. We are not persuaded by this argument because it attacks Alexander individually, rather than the combination of reference teachings relied on by the Examiner in the rejection. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness by attacking references individually when the rejection is based on a combination of the references). As discussed above, the Examiner relies on Griffiths for teaching a product discount value message that is dynamic and changes as a timer counts down. Final Act. 3 (citing Griffiths ¶¶ 51, 67, 71); see also Ans. 9 (explaining that “Griffiths is relied upon to disclose the changing of a text message as a part of a display element or button while the user views the display (i.e., analogous to a real- time changing stock price feed)”). The Examiner relies on Alexander for teaching embedding the message in the button itself. Final Act. 4. In this regard, Appellant’s argument against Alexander individually does not apprise us of error in the Examiner’s determination that the disputed limitation is rendered obvious by the combination of reference teachings presented in the rejection. Appeal 2019-005542 Application 14/290,134 8 Appellant argues that “Alexander . . . teaches away from the use of textual messages in a dynamic button in favor of the use of icons only.” Appeal Br. 17. In particular, Appellant asserts that Alexander “states that ‘a button with an icon (e.g., an iconic button) is faster to locate and recognize than a text only button because it offers more distinctive information especially over repeated use.’” Id. (quoting Alexander, 1:37–43). This argument is unconvincing. In order to “teach away,” a reference must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant has not identified where Alexander criticizes, discredits, or discourages the use of a dynamic button with embedded message text. Alexander’s teaching that an iconic button has advantages over a text only button does not teach away from embedding textual messages in a dynamic button. See Ans. 8 (explaining that “Alexander is not restricted to only iconic equipped buttons and also includes the display of textual information which a person of skill in the art would appreciate is also directed to enhancing the marketing appeal of displayed buttons”). For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s conclusion of obviousness with respect to claim 1. Accordingly, we sustain the rejection of claim 1, and claims 2–4 and 6–22 falling therewith, under 35 U.S.C. § 103 as unpatentable over Navar, Alexander, Griffiths, and Pasa. Appeal 2019-005542 Application 14/290,134 9 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–4, 6–22 103 Navar, Alexander, Griffiths, Pasa 1–4, 6–22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation