Ex Parte Burke

Board of Patent Appeals and Interferences

Sep 21, 2010

09314424 (B.P.A.I. Sep. 21, 2010)

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.
09/314,424 05/18/1999 BERTRAM V. BURKE 1357-3U (EPC 71) 5182
7590 09/22/2010
Bertram V. Burke
3338 Charles MacDonald Drive
Sarasota, FL 34240
EXAMINER
JANVIER, JEAN D
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
09/22/2010 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)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERTRAM V. BURKE
____________

Appeal 2010-000437
Application 09/314,424
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI and BIBHU
R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the
Examiner’s final rejection of claims 1-28 and 30-46. Claims 29 and 47-54
are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). (2002)

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method for operating a customer based
voucher rebate system. (Specification 1:14-15)
Claim 7, reproduced below, is representative of the subject matter on
appeal.

7. A computerized method comprising the steps of:

maintaining, in a system and in computer code, individual
identifications assigned to one or more organizations and individual
identifications assigned to one or more supporters and individual
identifications assigned to one or more merchants, the identifications
assigned to one or more supporters incorporated into a transaction
card, the transaction card not associated with a traditional credit card;

in the system and in computer code, maintaining a schedule of
rebates determined to be contributed by each of the one or more the
merchants;

in the system, collecting from the merchant, in computer code,
during a transaction between a supporter and a merchant, the
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identifications of the supporter and the merchant;
determining, at the time of the transaction, if the transaction
involves a rebate to one or more of the one or more organizations;

calculating, in computer code, the rebates due from the merchant;
and

in the system, crediting the amount of rebates determined by the
one or more merchants, to the one or more organizations selected by
the one or more supporters.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hovakimian US 5,466,919 Nov. 14, 1995

“Flowers As A Double Gift” (Flowers), New York Times (May 5,
1990); ProQuest Historical Newspapers The New York Times (1851-
2006)

The following rejections are before us for review.
1. The Examiner rejected claims 1, 2, 7, 8 and 31 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
2. The Examiner rejected claims 1-28 and 30-46 under 35 U.S.C.
§103(a) as being unpatentable over Hovakimian in view of Flowers.
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3. The Examiner rejected claims 1-2, 7-8 and 31 under 35 U.S.C.
§103(a) as being unpatentable over Flowers in view of Hovakimian.
ISSUES
Has Appellant shown that the Examiner erred in rejecting
claims 1-28 and 30-46 on appeal as being unpatentable under 35
U.S.C. § 103(a) over Hovakimian in view of "Flowers as a Double
Gift" on the grounds that a person with ordinary skill in the art would
understand that the BAX number on the credit card in Hovakimian
could be used separately from the credit card on which it is disclosed?
Has Appellant shown that the Examiner erred in rejecting
claims 1, 2, 7, 8 and 31 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification describes a transaction card only as a means of
inputting the user ID at the POS stating:
The network, instead of issuing and handling scrip,
provides each supporter with an individual
account, a secure personal identification number
(PIN), and a card/device means to enter their ID
and purchasing activity into an entry terminal
(cash register). At the time of store purchasing the
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supporter will hand the clerk a transaction card
(TC) transaction card (TC) with the ID being: (a.)
bar code encoded, (b) mag stripe encoded, or (c)
numerically printed on the card, activate a radio
frequency device (FQ), or keystroke in their
account number.
(Specification 6:19-27).
2. Hovakimian discloses:
On the back side of the card 10, there are usually
located a magnetic strip 15 containing
magnetically encoded account identification, and a
separate non-magnetic strip for the cardholder
signature 17. It is proposed to add to the magnetic
strip 15, magnetically encoded alpha numeric data
16 indicating a selected charity to receive a
donation. It is not imperative that the added alpha
numeric ‘charity ID’ data be placed at one end of
the magnetic strip. The data may be placed at any
location along the strip determined as convenient
for the card reader equipment.
(Col.2 ll. 31-40).
3. An ordinary and customary definition of the term “associated” as
defined inter alia by Merriam Webster’s Collegiate Dictionary (10th ed.) is:
“ to join or connect together”.
(http://www.merriam-webster.com/dictionary/associate)
4. The Examiner found with respect to the limitation of a central
clearinghouse that:
…Hovakimian discloses, inter alia, a "bank card-
expedited system" or BAX or independent central
clearinghouse, which performs the functions of a
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(independent) central clearinghouse for processing
a card user's (donor's) purchase during a
transaction at a participating or identified
merchant's/vendor's POS, once the merchant's POS
system establishes a connection with the bank
card-expedited system or BAX or clearinghouse
and paying a previously decided or determined
amount (calculated rebate) to the identified charity
or charities resulting from an identified customer's
or card bearer's purchase at the identified merchant
or POS (fig.3). Here, the central clearinghouse or
BAX is independent from or not being controlled
by the non-profit organizations, the
donors/purchasers and the vendors or
retailers/merchants themselves.
(Answer 26).

ANALYSIS
We affirm the rejection of claims 1-28 and 30-46 under 35 U.S.C. §
103(a); and we affirm-in-part the rejection of claims 1,2,7,8 and 31 made
under 35 U.S.C. 112, first paragraph.
The rejection under 35 U.S.C. §112, first paragraph
In rejecting claims 1,2,7,8, and 31 under 35 U.S.C. 112, first
paragraph, the Examiner maintains that the Specification does not
explicitly/immediately support the transaction card not associated with a
credit card, or that the transaction occurs independent of a credit card
transaction. (Answer 3)
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In reply, Appellant argues that the Specification implicitly provides
support for the involved claim limitations. (Appeal Br. 7-8)
We find that the Specification describes a transaction card only as a
means of inputting the user ID at the POS station (FF 1), and not as a means
for paying for the transaction as would be the case for a traditional credit
card. Therefore, the Specification does not associate the transaction card
with a credit card, and thus provides support for the limitation that the
transaction card is not associated with a credit card. Nor, are we persuaded
by the Examiner’s finding that the involved claim language need be
explicitly or immediately stated in the Specification in order to meet the 35
U.S.C. 112, first paragraph requirement. The factual inquiry for determining
whether a specification provides sufficient written description for the
claimed invention is whether the specification conveys with reasonable
clarity to those skilled in the art that, as of the filing date sought, applicant
was in possession of the invention as now claimed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In our view, the
Specification conveys with reasonable clarity to those skilled in the art that
the transaction card is not associated with a credit card, and thus we will not
sustain the rejection of claims 1, 2, 7, and 8 which recite this phrase.
However claim 31 is broader and only recites the transaction
occurring independent of a credit card transaction. Appellant argues that
this language means that the system identification information can be
entered into the entry terminal without a transaction or credit card (Appeal
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Br. 11) - but the claim language reads far broader than this. Rather, the
language here is sufficiently broad to preclude the use of a credit card even
to pay for the involved purchase which contradicts the check out description
in the Specification (FF 1). Thus, we fail to find where the Specification (FF
1) precludes a user from paying for an item with a credit card. Therefore,
we will sustain the rejection of claim 31 under 35 U.S.C. 112, first
paragraph.
The Rejection of Claims 1-28 and 30-46 under 35 U.S.C. §103(a)
Appellant’s arguments against the rejection of each of independent
claims 1, 2, 7 and 8 are based on perceived deficiencies of Hovakimian.
Inasmuch as Appellant raises the same issue to the transaction card not being
associated with a credit card, we thus collectively respond to Appellant’s
arguments.
We find that Hovakimian discloses a separate magnetic strip 16,
associated with a BAX (Bank Expedited Donation). The BAX indicates a
selected charity to receive a donation and can be added to the credit card (FF
4). The claims require the transaction card [is] not associated with a
traditional credit card. We find that an ordinary and customary definition of
the term “associated” is to join or connect together (FF 3). We do not find
that providing a card, such as Appellant’s transaction card, as a separate item
versus connecting it to a credit card, such as the BAX magnetic strip 16 and
the card 10 in Hovakimian, constitutes a patentable distinction. This is
because packaging the BAX with a credit card as opposed to providing the
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BAX data and credit data on two separate cards is not a novel or patentable
feature in the light of the well-known practice of packaging items in the
manner most convenient to the purchaser. See, Ormco Corp. v. Align
Technology, Inc. 463 F.3d 1299, 1309 (Fed.Cir. 2006); see also, In re
Larson, 340 F.2d 965, 968 (CCPA 1965) (the use of a one piece construction
instead of two or more would be merely a matter of obvious engineering
choice).
Claim 1 includes a further limitation of, a clearinghouse component, a
nonprofit component having one or more nonprofits, a supporter component
having one or more supporters, and a merchant component having one or
more merchants, with the clearinghouse component connecting the other
three components via a variety of entry terminals….
The Examiner found that the BAX clearinghouse in Hovakimian
meets this limitation (FF 4). Appellant however argues that the BAX does
not enroll all three components (Appeal Br. 9). We find this argument
unpersuasive because it is not based on limitations appearing in claim 1
which merely recites “connecting” and not enrolling as argued by
Appellants. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Moreover, even if Appellant did accurately restate the claim language
here, a statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See,
37 C.F.R. § 41.37 (c)(1)(vii) (2004).
Appellant argues that the limitation in claim 31 of “the transaction
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occurring independent of a credit card transaction” distinguishes over
Hovakimian because “Hovakimian requires the use of a credit card and is
initiated based on a credit card transaction.” (Appeal Br. 11). We find this
argument unpersuasive for the same reasons set forth above with respect to
claims 1, 2, 7 and 8.
We also affirm the rejections of dependent claims 3-6, 9-27, 28, 30
and 32-46 since Appellants have not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
For the same reasons set forth above we affirm the rejection of claims
1,2,7,8 and 31 over Flowers in view of Hovakimian.

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-28, and 30-46 under 35 U.S.C. § 103(a).
We conclude the Appellant has not shown that the Examiner erred in
rejecting claim 31 under 35 U.S.C. 112, first paragraph.
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 1, 2, 7 and 8 under 35 U.S.C. 112, first paragraph.

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DECISION
The decision of the Examiner to reject claims 1-28 and 30-46 is affirmed.

AFFIRMED

MP

Bertram V. Burke
3338 Charles MacDonald Drive
Sarasota FL 34240