Ex Parte Antao et alDownload PDFPatent Trial and Appeal BoardAug 10, 201612041036 (P.T.A.B. Aug. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/041,036 03/03/2008 29052 7590 08/12/2016 SUTHERLAND ASBILL & BRENNAN LLP 999 PEACHTREE STREET, N.E. Suite 2300 ATLANTA, GA 30309 FIRST NAMED INVENTOR Leonard F. Antao 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. 25040-2712 1627 EXAMINER GREGG, MARY M ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 08/12/2016 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): patent. docket@sutherland.com pair_sutherland@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte LEONARD F. ANTAO, ANTHONY J. PHILLIPS, GERARD E. INSOLIA, and H. BROCK KOLLS Appeal2014-002648 1 Application 12/041,0362 Technology Center 3600 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and ROBERT J. SILVERMAN, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 4--14, 16-18, 20, 21, 23, and 24. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("Br.," filed July 29, 2013), and the Examiner's Answer ("Ans.," mailed October 2, 2013) and Final Office Action ("Final Act.," mailed March 28, 2013). 2 Appellants identify The Coca-Cola Company of Atlanta, Georgia as the real party in interest. Br. 1. Appeal2014-002648 Application 12/041,036 CLAIMED fNVENTION Appellants' claimed invention "generally relates to incentive programs, and more particularly relates to systems and methods for providing a personal terminal for a loyalty program" (Spec. i-f 1 ). Claim 1, reproduced below, is the sole independent claim and representative of the subject matter on appeal: 1. A personal terminal for obtaining loyalty rewards, the personal terminal comprising: a housing sized and shaped to be transported by or with a user so that the housing is accessible when the user is physically nearby one of a product, a piece of equipment, and a promotional object; a processor positioned in the housing; a memory positioned in the housing; an interaction terminal interface associated with the housing, the interaction terminal interface operable to receive a communication transmitted by an interaction terminal, the interaction terminal physically associated with the product, equipment, or promotional object, the communication comprising an indication that the personal terminal is physically nearby the interaction terminal and associated product, equipment, or promotional object; and a loyalty management engine stored on the memory and executable by the processor, the loyalty management engine operable to: determine a loyalty reward based at least in part on the communication with the interaction terminal interface, store an indication of the loyalty reward in the memory; and transmit an instruction operable to redeem or store the loyalty reward. 2 Appeal2014-002648 Application 12/041,036 REJECTIONS Claims 1, 4--14, 21, 23, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hayes (US 2004/0073497 Al, pub. Apr. 15, 2004), and Birch (US 7,213,742 Bl, iss. May 8, 2007). Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hayes, Birch, and Smits (US 7,551,814 Bl, iss. June 23, 2009). Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hayes, Birch, and Challa (US 2006/0202035 Al, pub. Sept. 14, 2006). Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hayes, Birch, and Daniels (US 2007/0014916 Al, pub. Jan. 18, 2007). Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hayes, Birch, and Huang (US 2003/0094031 Al, pub. May 22, 2003). 3 ANALYSIS Independent Claim 1 and Dependent Claims 4-14, 21, 23, and 24 We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because neither Hayes nor Birch, individually or in combination, discloses or suggests "a loyalty management engine ... operable to[] determine a loyalty reward based at least in part on the communication with the interaction terminal interface," as recited in claim 1 (Br. 3-7). Hayes is directed to an electronic purchasing system in which a user communicates with a system server and at least one partner system over a network (Hayes, Abstract). The user is provided with an electronic wallet 3 The Examiner mistakenly identifies the Huang publication as "Renyolds" on page 23 of the Final Office Action. 3 Appeal2014-002648 Application 12/041,036 and a smart card (id. il 8). The smart card includes a microprocessor and a memory; the memory stores an electronic coupon book containing special offers or incentives that the user may use when shopping over the network, graphic tools, and website recognition tools (id. i-fi-1 30, 31, Fig. 2A). The website recognition tools are capable of recognizing a partner system, e.g., by its URL address or other indicia, and when a partner system is recognized, other tools search for and download coupons applicable to the partner system to the smart card (id. i132). Additionally, when a coupon exists for a partner system being visited by the user, discount display tools cause the offer to appear on the user system (id.; see also id. i-fi-19, 36). Hayes describes that once coupons have been loaded into the electronic coupon book, the coupons may be used, i.e., redeemed, online or within a partner's "brick-and-mortar" establishment (id. i1 47). In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner cites paragraphs 9, 30-32, and 36 and Figure 2A of Hayes as disclosing "a loyalty management engine ... operable to[] determine a loyalty reward based at least in part on the communication with the interaction terminal interface," as recited in claim 1 (Final Act. 10-11 ). However, we agree with Appellants that there is nothing in the cited portions of Hayes that discloses or suggests that a user receives a coupon based on the user's physical proximity to a product, equipment, or promotional object, i.e., that the physical proximity of a personal terminal to a product, equipment, or promotional object is a factor in receiving a loyalty reward, as called for in claim 1. Nor, for that matter, does the Examiner ostensibly contend otherwise. Responding to Appellants' argument, the Examiner maintains that "[ t ]here is no determination of any kind with respect to reward and the 4 Appeal2014-002648 Application 12/041,036 physical proximity"; that the claims recite that "the loyalty reward is based in part on the communication with the interaction interface"; and that "Hayes teaches ... that the personal terminal [i.e., the smart card] is physically associated with the interaction terminal (vendor POS) which is associated with the product, equipment or promotional object in that the vendor is a participating vendor in the promotion, product or equipment" (Final Act. 8-9 (citing Hayes i-f 9); see also id. at 8 ("The applicant is arguing a feature (i.e. that the physical proximity of the product, equipment or promotion determines the loyalty program) not presented in the claims.")). We cannot agree. Claim 1 recites that "a loyalty reward [is determined] based at least in part on the communication with the interaction terminal interface" and also plainly recites that the communication with the interaction terminal interface "compris[ es] an indication that the personal terminal is physically nearby the interaction terminal and associated product, equipment, or promotional object." In other words, the loyalty reward is determined based at least in part on the personal terminal being physically nearby the product, equipment, or promotional object. The Examiner has not established on this record that Hayes and Birch, whether considered individually or in combination, disclose or suggest this feature. Therefore, we do not sustain the Examiner's rejection of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner's rejection of dependent claims 4--14, 21, 23, and 24. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are no no bvious"). 5 Appeal2014-002648 Application 12/041,036 Dependent Claims 16-18 and 20 None of the rejections of claims 16-18 and 20 based on Smits (claim 16), Challa (claim 17), Daniels (claim 18), and Huang (claim 20), in combination with Hayes and Birch, cures the deficiency in the Examiner's rejection of independent claim 1. Therefore, we do not sustain the Examiner's rejections of claims 16-18 and 20 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to claim 1. DECISION The Examiner's rejections of claims 1, 4--14, 16-18, 20, 21, 23, and 24 under 35 U.S.C. § 103(a) are reversed. REVERSED 6 Copy with citationCopy as parenthetical citation