Ex Parte 7925531 et al

Patent Trial and Appeal Board

Mar 27, 2015

95002029 (P.T.A.B. Mar. 27, 2015)

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.
95/002,029 06/22/2012 7925531 055609.00001 6728
24112 7590 03/27/2015
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
LEE, CHRISTOPHER E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/27/2015 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
________________

PSKW, LLC.
Third Party Requester

v.

TRIALCARD INCORPORATED
Patent Owner
____________

Appeal 2014-007364
Reexamination Control 95/002,029
Patent US 7,925,531 B1
Technology Center 3900
________________

Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
The Invention
This proceeding arose from a request by PSKW, LLC. for an inter
partes reexamination of US Patent 7,925,531 B1, entitled “METHOD OF
DELIVERING GOODS AND SERVICES VIA MEDIA” (issued to David
W. Cunningham et al. on Apr. 12, 2011 from Application 10/098,700, filed
Mar. 15, 2002) (“the ’531 Patent” or “the ’700 Application”). We have
jurisdiction under 35 U.S.C. §§ 134 and 315.
The ’531 Patent describes the invention as follows:
A method of providing goods and services to individuals or
entities via media entails assigning at least one good or service
to a medium and assigning a unique identifier to the medium.
Recording information in a database relative to the medium and
linking the one or more goods or services assigned to the
medium with the identifier of the medium. Thereafter, the
medium is distributed to an individual or entity and the
individual or entity presents the medium to a provider of goods
or services assigned to the medium. Upon presentment the
provider delivers one or more of the assigned goods to the
individual or entity making presentment. At an appropriate
point in the process, a communication is directed to the
database recording the results of the transaction between the
provider and the individual or entity presenting the medium.
Abstract. See also, the ’531 Patent’s FIELD OF INVENTION section,
which further explains the present invention as follows:
The present invention relates generally to the distribution
of pharmaceutical products and more particularly to an
improved method of dispensing, tracking, and managing
pharmaceutical products by communicatively linking
prescribers and pharmacies to a central computing station in
such a manner that variable values may be provided to different
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individuals based on selected variables such as location and/or
volume purchased.
’531 Patent, col. 1, ll.18-25 (emphasis added).
The ’531 Patent claims continuation-in-part priority to application
09/558,260, filed Apr. 25, 2000, now US Pat No. 6,859,780 B1
(Cunningham ’780). Cunningham ’780, in turn, claims priority via a chain
of continuation-in-part and divisional applications to its grandparent
application 08/556,466, filed Nov. 13, 1995, now US Pat No. 5,832,449,
issued to Cunningham et al. (“Cunningham ’449”). The present invention
differs from Cunningham ’449 and Cunningham ’780 (together “the priority
patents”), at least in part, because while the priority patents disclose media
having fixed value, as just noted the present ’531 Patent additionally
discloses that at least some of the media’s value may be varied. See
’531 Patent, col. 12, l. 7–col. 19, l. 67 (adding further disclosure regarding
the varying of the media’s value); see especially col. 12, ll. 49-51 (stating
that the media according to the parent applications assumes a fixed value).
Independent claim 1 is illustrative of the claimed subject matter on
appeal. This claim is reproduced with the disputed limitation emphasized:
1. A method of promoting goods and services, comprising:
issuing a non-transitory media in which each medium has
at least one good or service associated therewith:
identifying each medium with an identifier and recording
the identifier in a database such that the at least one good or
service associated with each medium can be determined;
assigning an inactive status to the media such that while
assuming the inactive status the goods or services associated
with the medium may not be redeemed;
recording the inactive status in a database;
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activating at least some of the media by changing the
status of the media from an inactive state to an active state and
recording the change of the status in the database;
varying the value of at least some of the media such that
the value of the media varies according to selected conditions;
and
distributing the media to holders wherein the holders
present the media to providers that deliver the goods or services
associated with the presented media to the holders.

Independent claim 10, the sole other independent claim, similarly
recites (emphasis added) “varying the value of each medium such that the
value of the media varies according to selected conditions.” For brevity,
these respective limitations of claims 1 and 10 are referred to as “the varying
step.” See, e.g., 3PR Reb. Br. 3, n.1.
Statement of Rejections
The Examiner adopted the following grounds of rejection of pending
claims 1-16 (RAN 28-531):

1 Throughout this opinion, we refer to (1) the Inter Partes Reexamination
Request for U.S. Patent No. 7,925,531 filed June 22, 2012 (“Request”);
(2) the Right of Appeal Notice mailed September 18, 2013 (“RAN”);
(3) Patent Owners’ Appeal Brief filed December 30, 2013 (“PO App. Br.”);
(4) Requester’s Appeal Brief filed December 30, 2013 (“3PR App. Br.”);
(5) Patent Owner’s Respondent Brief filed March 10, 2014 (“PO Resp.
Br.”); (6) Requester’s Respondent Brief filed January 30, 2014 (“3PR Resp.
Br.”); (7) the Examiner’s Answer mailed April 9, 2014 (incorporating the
RAN by reference) (“Ans.”); (8) Patent Owner’s Rebuttal Brief filed
May 9, 2014 (PO Reb. Br.”); and (9) Requester’s Rebuttal Brief filed
May 9, 2014 (“3PR Reb. Br.”).
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B1. Claims 1-16 stand rejected under §103(a) as being unpatentable over
Deaton (US 5,644,723; issued July 1, 1997) in view of Cotten
(US 7,444,305 B2; issued Oct. 28, 2008);
B2. Claims 1-16 stand rejected under §103(a) as being unpatentable over
Deaton in view of Dorf (US 6,000,608; issued Dec. 14, 1999);
B3. Claims 1-4, 6-13, 15, and 16 stand rejected under §103(a) as being
unpatentable over Deaton in view of Smith (US 5,777,305; issued
July 7, 1998);
B4. Claims 1, 2, 6-8, 10, 11, and 15 stand rejected under §103(a) as being
unpatentable over Deaton in view of Phillips (US 7,398,248 B2;
issued July 8, 2008);
B5. Claims 1-3, 5-7, 10-12, and 14 stand rejected under §103(a) as being
unpatentable over Deaton in view of Fite (US 6,467,684 B2; issued
Oct. 22, 2002);
B6. Claims 1-4, 6-8, 10-13, and 15 stand rejected under §103(a) as being
unpatentable over Deaton in view of Cohen (US 6,505,171 B1; issued
Jan. 7, 2003);
C1. Claims 1-16 stand rejected under §102(e) as anticipated by Cotten;
C2. Claims 1-16 stand rejected under § 102(b) as anticipated by Dorf; and
C3. Claims 1, 2, 6-8, 10, 11, and 15 stand rejected under §102(e) as
anticipated by Phillips.
Patent Owner, TrialCard Incorporated (“Owner”), appeals under
35 U.S.C. §§ 134(b) and 315(a) from only a subset of the Examiner’s
rejections—the rejections of claims 1-7 and 10-14 (PO App. Br. 4.). Owner
does not appeal any of the rejections of claims 8, 9, 15, or 16. Id.
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Third Party Requester, PKSW, LLC (“Requester”), appeals the
Examiner’s determination not to adopt twelve additionally proposed
rejections. 3PR App. Br. 7-22 (setting forth the twelve additionally proposed
rejections, A1-A12).
Related Litigation and Proceedings
According to Owner,
There are two pending litigations involving U.S. Patent
No. 7,925,531 (“the ’531 Patent”). The first litigation was filed
in the U.S. District Court for the District of New Jersey, on
September 30, 2011, docket no. 3: 11-cv-05693. The second
litigation was filed in the U.S. District Court for the District of
New Jersey, on December 16, 2011, docket no. 3: 11-cv-07341.
On February 16, 2012, the District Court consolidated both
cases for discovery purposes under docket number
3: 11-cv-05693.
App. Br. 3.
Standard of Review and Decision
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm.

CONTENTIONS AND ANALYSIS
I.
The threshold issue is whether the appealed claims are entitled to the
priority filing date of either Cunningham ’449 or Cunningham ‘780. See
PO App. Br. 7 (stating the first of “three issues that are most relevant to the
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obviousness rejections for claims 1-7, 10-14 [is] whether claims 1, 4-6, 10,
12, 13 and 14 are entitled to priority to . . . [either of Cunningham ’449 or
Cunningham ’780]”). This issue, in turn, depends on whether the original
specification of either of these Cunningham priority patents sufficiently
discloses varying the value of the media as recited in the appealed
independent claims 1 and 10.
Owner contends that Cunningham ’449 does disclose “varying the
value of at least some of the media such that the value of the media varies
according to selected conditions.” E.g., PO App. Br. 7-22. Owner
acknowledges that during prosecution of the ’700 Application, prior to
issuance as the ’531 Patent, Owner originally did assert “that the ‘varying’
step requires ‘the medium itself, after it is created or issued, varies in value
where varying the value depends on various conditions.” PO App. Br. 8
(citing 2009-005222 Appeal Br. 9, filed July 23, 2007). According to
Owner, though, the Panel of the Board deciding the prosecution appeal of
the ’700 Application rejected this narrow construction of the varying step
and adopted a broader construction. PO App. Br. 8. See 2009-005222
Decision on Request for Reconsideration 4 (BPAI Nov. 18, 2010) (internal
citation omitted) (holding “[o]ur claim construction of [the varying step]
encompasses any type of variation in the value of the media”).
Based upon this construction adopted by the Board, Owner now
contends that Cunningham ’449 must be interpreted as disclosing the
claimed media varying step because “Cunningham ’449 discloses a card
with a value that is fixed after it is generated yet can be redeemed only for
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certain products at certain times and in certain product sizes that can vary
from card to card prior to the card being generated.” PO App. Br. 15.
To support this assertion, Owner cites the following passage of
Cunningham ’449:
Although the type and quantity of encoded information on the
product trial media 18 can vary, it is contemplated that each
individual product trial media 18 would be encoded with at
least the following information:
a) media identification number;
b) product identification number;
c) product name;
d) product form;
e) product size;
f) product quantity;
g) media type;
h) a series of manufacturer I.D. numbers;
i) a date range
Id. (citing Cunningham ’449, col. 5, ll. 13–27) (emphasis added by Owner).
We disagree that the cited passage provides evidence that
Cunningham ’449 teaches or provides support for varying the media. Owner
is simply mischaracterizing this cited passage. The quoted passage does not
say that encoded information itself can vary. Rather, it says that “the type
and quantity of encoded information on the product trial media 18 can vary.”
Cunningham ’449, col. 5, ll. 13-14.
That is, Cunningham ’449 discloses one can vary how many data
fields are encoded on the media, as well as which specific fields are selected
for encoding. For example, media can be encoded so as to contain various
desired candidate fields such as selected combinations of the fields, product
form, product size, and product quantity. The ability to preselect various
information fields to be encoded on the media is not the same thing as
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varying the information contained within those fields—and hence vary the
value of the media—once the information field is preselected.
We likewise find unpersuasive Owner’s more general argument that
Cunningham ’449 teaches the claimed step of varying the media. We
instead are persuaded by Owner’s earlier explanation appearing in the
’531 Patent itself of what constitutes varying the media. See Phillips v.
AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (internal
quotation marks and citations omitted) (noting that the Specification is the
single best guide to a disputed term’s meaning and acts as a dictionary when
it expressly defines terms recited in the claims).
In the ’531 Patent, Owner expressly distinguishes between what
constitutes fixed media and varying media:
[After activation, the] media assumes a value (block
504). Financial rules are put in place that govern the use of the
media. This [assumed value?] may be a fixed value, wherein
the media only has one value and assumes this fixed value upon
activation as described in the [plural] parent applications and
above; or may be a variable value, wherein the media assumes
different values based on predetermined business rules,
selected criteria, or other selected circumstances, conditions,
or occurrences. For example, the value may be based on a
patient’s co-payment, activity based rewards, location, date and
time of activation, how the media was activated, and/or whether
the media is being concurrently used to purchase one or more
products.
’531 Patent, col. 12, ll. 47-58 (emphasis added).
This explanation makes reasonably clear that Owner has defined the
functionalities disclosed in the Cunningham priority patents as
corresponding to media with a fixed value; only the functionalities newly
disclosed in the ’531 Patent correspond to varying the value of the media
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such that the media varies according to selected conditions. As such,
Cunningham ’449’s disclosure of varying the type and quantity of
information encoded on the media (Cunningham ’449, col. 5, ll. 13–27) does
not constitute varying the value of the media within the meaning of
’531 Patent. Likewise, Cunningham ’780’s additional disclosure of setting
forth the number of refills on the media and decrementing that field after
each authorization (e.g., Cunningham ’780, col. 5, ll. 52-55; col. 10,
ll. 55-56) also does not constitute varying the media.
Instead, the step of varying the media corresponds to functionalities
newly set forth in the specification of the ’531 Patent. For example,
The system and method described hereafter relates to the
disclosures found in the parent applications.2 In particular, the
methods and systems disclosed below are designed to help
maximize profits, gather and collect important marketing data
and information, and reward consumers and the public in the
process. To this end, the manner of activation of the media 18,
or other conditions or criteria, may determine, in part, the
value of the media. Thus, the value of the media 18 may
vary. For the purposes of this disclosure “the value of the
media” can relate to any value and may, for example, be in the
form of goods, services, discounts for goods or services, etc.
The media 18 can also be utilized to promote and deliver
services. As will be discussed below, when used in a service
context, the value of the services that are delivered via the
media can also vary. Further, where or when the media is
redeemed may determine, in part, the value of the media.
Further still, the media may provide different values depending
on how the media is activated or reactivated. By varying the
value of the media 18, different prescribers and pharmacies, in

2 We note that Owner merely asserts that the newly disclosed functionalities
merely relate to the parent applications’ disclosures. Owner does not assert
that the newly functionalities are disclosed in the parent applications.
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a pharmaceutical context, may be preferentially treated in such
a manner that it builds loyalty to a particular pharmaceutical
company or distribution channel. The present invention has
been described in the context of pharmaceutical and medical
products. However, it should be appreciated that the basic
invention described herein can be utilized to promote and
advertise any good or service. Consequently, the invention can
be described in terms of not only prescribers and pharmacies,
but can be described in terms of providers of goods, products
and services as well as in terms of those individuals and
businesses that play a part in the manufacture, distribution, and
sale of such products or services.
’531 Patent, col. 12, ll. 7-39 (emphasis added).
This passage, as well as the other newly added passages of the
’531 Patent, makes reasonably clear that the claimed step of varying the
media does encompass, as the prior Panel of the Board previously found,
“any type of variation in the value of the media.” 2009-005222 Decision on
Appeal 4 (BPAI June 21, 2010). For example, the value of the media may
vary based upon a condition occurring prior to media activation. See, e.g.,
’531 Patent, col. 12, ll. 25-26 (disclosing varying the value based on the
particular prescriber).3 The value may vary based upon a condition
occurring upon activation. See, e.g., ’531 Patent, col. 12, ll. 56-57
(disclosing varying the value based on the manner of media activation).
Alternatively, the value may vary based upon a condition occurring
subsequent to activation. See, e.g., ’531 Patent, col. 12, ll. 22-23 (disclosing
varying the value based on “where or when the media is redeemed”).

3 The ’531 Patent’s disclosure of varying the media’s value based upon the
particular prescriber indicates that, contrary to Owner’s assertion (PO App.
Br. 23), in at least some circumstances varying the value can mean “just that
different mediums have different values from each other.”
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The construction of varying the media we set forth today, then, does
not conflict with or alter the construction that was adopted by the prior Panel
of the Board during the prosecution of the ’531 Patent. Granted, we do
clarify that functionalities disclosed in the Cunningham priority patents
(such as Cunningham ’780’s disclosure of media having refill fields and the
field being decremented upon each authorization) do not correspond to
varying the media. However, this clarification is based upon Owner’s
express usage of the terms fixed and varying. That is, we reaffirm that the
step of varying the value encompasses any type of variation not specifically
defined to correspond to fixed media.
In summary, Owner’s explanation in the ’531 Patent makes
reasonably clear that whatever scope Owner intended the claim’s varying
step to have, and whatever subject matter is covered by the description
“different values based on predetermined business rules, selected criteria, or
other selected circumstances, conditions, or occurrences,” neither of the
Cunningham priority patents provides adequate written-description support
for varying the value of the media as used in the ’531 Patent.
For these reasons, then, we disagree with Owner that the present
claims are entitled to the filing date of either of the Cunningham priority
patents. As such, the rejections at issue on appeal are not mooted, and we
next consider Owner’s other arguments regarding the rejections.
II.
As explained above, claims 1-16 stand rejected as anticipated by
Cotten. Claims 1, 2, 6-8, 10, 11, and 15 stand rejected as anticipated by
Phillips. Ans. 1 (incorporating by reference the RAN); RAN 44-47, 50-53).
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Owner does not challenge these anticipation rejections with respect to all of
the claims. See, e.g., PO App. Br. 4 (stating that only the rejections of
claims 1-7 and 10-14 are appealed). With respect to those claims that are
being appealed, Owner does not dispute whether certain cited prior art
references disclose all of the limitations of certain claims. For example,
Owner does not dispute that Cotten and Phillips disclose all of the
limitations of, inter alia, the independent claims. Owner instead challenges
whether Cotten or Phillips constitutes prior art because, according to Owner,
the appealed claims should be afforded the benefit of the Cunningham
priority patents’ filing dates. PO App. Br. 33, 39.
Owner only challenges the merits of the anticipation rejection based
upon Phillips (“the Phillips rejection”) as the rejection applies to dependent
claims 2, 7, and 11. PO App. Br. 39-41; PO Reb. Br. 14-17. Owner only
challenges the merits of the anticipation rejection over Cotten as that
rejection applies to dependent claims 2, 6, 7, and 11. PO App. Br. 34-35;
PO Reb. Br. 15-17.
Because we find the appealed claims are not entitled to the filing dates
of the Cunningham priority patents (see Section I, supra), and because the
Phillips rejection only challenges the rejection of claims 2, 7, and 11, we
affirm the anticipation rejection of claims 1, 6, 8-10, and 15 over Phillips.
We likewise affirm the anticipation rejection of claims 1, 3-5, 8-10, and
12-16 over Cotten.
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III.
Dependent claim 2 reads as follows:
2. The method of claim 1 including varying the value of the
media based on the manner of activation, the location of the
provider, or the identity of the holder or provider.
Dependent claims 7 and 11, which respectively depend from claims 6 and
10, recite the same language as claim 2.
Owner contends that Phillips fails to disclose varying the value of the
media based upon any of the three recited bases—the manner of activation,
the location of the provider or the identity of the holder or provider.
PO App. Br. 39-41; Reb. Br. 14-17. With respect to the latter two
conditions, Owner (e.g., PO App. Br. 39-41) and the Examiner (e.g.,
RAN 51-52) focus on the following passage of Phillips, which discusses
means of modifying customer accounts:
Modification to accounts associated with a CID may be
contingent upon a number of different types of conditions.
These conditions may be imposed by the sponsor of the
marketing program, conditions imposed by a retailer or
manufacturer in addition to those imposed by the sponsor, and
conditions imposed by a marketing company in addition to
those imposed by the sponsor. These conditions include:
purchase of particular items or services; purchase of items or
services in certain categories; purchase in certain time periods;
purchase in certain stores, associations of stores, locations,
and chains of stores; currency (e.g., dollar amount) of
associated purchase transaction or cumulative dollar amount of
associated purchase transactions in a specified time period or
for all recorded associated transactions; receipt by rebate
fulfillment service of rebate forms with complete information,
of receipt of proof of purchase, and receipt of secondary
identification, such as driver's license or credit card number.
Amounts of account changes or inventive [sic: incentive]
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offers may depend upon prior product purchase history
associated with the CID, such as frequent or infrequent
purchases of a product, of products in a category, consistent
purchase for one brand over another, or inconsistent
purchase of one brand over another brand.
Phillips, col. 4, line 57–col. 5, l. 12 (emphasis added).
Owner contends that while Phillips does disclose the account can be
modified based upon the location of the provider of the goods or services,
modifying the account is different from varying the value of the media or
card. PO App. Br. 40. According to owner, “There is no disclosure that the
value of the card can be modified according to the location of the provider,
the identity of the holder or the identity of the provider.” Id. Owner further
urges that
the amount of the account change is [alternatively] addressed
[in the last sentence] of the cited passage in Phillips. The
conditions upon which the amount of account changes may
depend do NOT include the location of the provider, the
identity of the holder or the identity of the provider. Instead,
those changes are based only upon purchasing history.
Id. (citing Phillips, col. 4, ll. 7-12).
This argument is not persuasive. Owner has not suggested what
modifications to the account Phillips could be envisioning other than a
modification that affects the value of the media. See PO App. Br. 40.
Furthermore, we do not read the last sentence of the cited Phillips passage as
intending to state that an amount of an account change is something distinct
from an account modification. Rather, we understand this sentence to be
setting forth additional conditions that may be the basis for varying the
account. That is, we understand this sentence to support the position implied
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by the Examiner’s rejection—that changing the amount or value associated
with a media is synonymous with modifying an account.
Owner also disputes that Phillips discloses varying the value based
upon the identity of a holder. PO App. Br. 40-41. Owner asserts that the
’531 Patent defines the claim term “holder”: “Those skilled in the art will
readily appreciate, however, that end users, sometimes referred to as
individuals or holders, are anyone presenting the media to a provider for
any goods or services.” PO App. Br. 26 (quoting ’531 Patent, col. 14,
ll. 32-35). Also, as argued earlier in relation to a different rejection,
A historical purchase is not the same as the identity of the
holder as that term is defined in the ’531 Patent. Even where
the purchasing history is linked in a database to a particular
person, there is no disclosure in Deaton where the value of a
coupon is based on the identity of the person presenting the
coupon to a provider for goods or services. In order for a
coupon value to be based on the identity of the holder of the
coupon, the value of the coupon must be different when the
coupon is presented for redemption by different people. There
is no such disclosure in Deaton. Once the Deaton coupon
issues it is redeemable for same price regardless of the person
presenting the coupon.
PO App. Br. 26-27; see also App. Br. 40, fn. 11 (asserting that the
discussion of the meaning of the term “holder” applies to the rejection based
upon Phillips as well as the rejection based upon Deaton).
Owner summarizes that “Varying the value of media based upon
purchase history associated with a CID is different from varying value of
media based upon the identity of the holder or provider. ‘Purchasing
history’ refers to what a person does. “Identity” refers to who a person is.”
PO App. Br. 40-41. According to Owner, then, the functionality disclosed in
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Phillips “does not suggest that the modification of accounts is contingent
upon [the] identity of the holder or provider much less that the value of an
account may be depend on the identity of the holder or provider.” Id. at 40.
We acknowledge and adopt Owner’s proffered definition of holder:
“anyone presenting the media to a provider for any goods or services.” We
nonetheless find Owner’s argument to be unpersuasive.
Nothing in Owner’s definition precludes Phillips’s passage from being
interpreted as disclosing a holder. The card identifies a holder because it is
associated with a person who (rightfully or otherwise) is in possession of the
card and who is presenting it to the provider for any goods or services. In
fact, Owner acknowledges (PO App. Br. 40-41) that Phillips’ card is
associated with a CID—a customer identification.
The fact that Phillips additionally explains that the holder of the card
may be given varying discounts based upon the card’s usage history does not
negate the fact that the discount is being given to the person who is
identified as being in possession of the particular card. The claim requires
no more specific form of holder identification.
Moreover, even if we were to accept Owner’s position that
determining a “holder’s identity” requires further identifying who the person
holding the card actually is (as opposed to merely identifying the person as
being the holder of a specific card), we would still find that the Examiner
established Phillips teaches this claim term. While the Examiner does cite
column 5, lines 7-12, as support for finding Phillips discloses varying the
value based upon the identity of the holder (see RAN 52), the Examiner does
not rely solely on this subportion of the Phillips passage that is reproduced
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supra. Rather, the Examiner additionally cites columns 4, lines 57-58 and
column 4, line 63 through column 5, line 8 as supporting the finding that
Phillips discloses varying the value of the media according to selected
conditions. RAN 51-52. This includes the disclosure that the condition for
varying the value of the media can be contingent upon “receipt of secondary
identification, such as driver’s license or credit card number.” Phillips
col. 5, ll. 5-6. As such, Phillips discloses not only identifying that a person
holds a specific card, but further identifying who the holder of the card
specifically is.

CONCLUSIONS
Owner does not appeal the rejections of claims 8, 9, 15, and 16.
Owner has not provided sufficient persuasive evidence or argument
that the remaining claims, claims 1-7 and 10-14, are entitled to any earlier
priority filing date. As such, Owner has not reasonably persuaded us that
any of the relied upon references fail to constitute prior art.
Owner does not dispute that at least one of Phillips and Cotten
discloses all of the limitations of claims 1, 3-6, 8-10, and 12-16.
Accordingly, we sustain the Examiner’s anticipation rejection of claims 1,
3-5, 8-10, and 12-16 based upon Cotten. We sustain the Examiner’s
anticipation rejection of claims 1, 6, 10, and 15 based upon Phillips.
Owner has not reasonably demonstrated that the Examiner erred in
finding claims 2, 7, and 11 anticipated by Phillips. Accordingly, we sustain
the Examiner’s anticipation rejection of these claims by Phillips.
Appeal 2014-007364
Control No. 95/002,029
US Patent No. 7,925,531 B1

19
In view of our sustaining the anticipation rejections of claims 1-16
over at least one of Phillips and Cotten, we do not reach the remaining
rejections appealed by Owner. We likewise do not reach Requester’s cross-
appeal of the Examiner’s refusal to adopt additionally proposed rejections.
See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other
rejections after upholding an anticipation rejection); see also Beloit Corp. v.
Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single
dispositive issue of numerous resolved by the presiding officer; there is no
need for the Commission to decide all issues decided by the presiding
officer).
In the event neither party files a request for rehearing within the time
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.

DECISION
The Examiner’s decision rejecting claims 1-16 is affirmed.

AFFIRMED

Coats & Bennett, PLLC
1400 Crescent Green
Suite 300
Cary, NC 27518

Appeal 2014-007364
Control No. 95/002,029
US Patent No. 7,925,531 B1

20
Third Party Requester:

Hodgson Russ, LLP
The Guaranty Building
140 Pearl Street
Suite 100
Buffalo, NY 14202-4040