Ex Parte Nicholson

Board of Patent Appeals and Interferences

May 30, 2012

11254624 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte G. RANDY NICHOLSON
____________

Appeal 2011-005645
Application 11/254,624
Technology Center 3600
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005645
Application 11/254,624

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 5 to 10, and 25. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b). A telephonic hearing was held on May 9,
2012.
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to a system and method for
influencing customer behavior by providing an incentive to the customer
behavior (Spec., para. [0002]).
Claim 1 is illustrative:
1. A computer-implemented method of influencing
customer behavior, comprising the steps of:
offering the customer a price-per-unit (PPU) discount for
a future purchase of fuel as a reward for purchasing a cross-
marketed product and performing a debit-type transaction;
determining by using a computer to check records stored
in a database related to said merchant that the customer
purchased a cross-marketed product and performed a debit-type
transaction at the merchant; and
awarding the PPU discount for the future purchase of fuel
to the customer.

Appellant appeals the following rejections:
Claims 1, 5 to 7, and 9 under 35 U.S.C. § 103(a) as unpatentable over
Wilson (US 6,813,609 B2, iss. Nov. 2, 2004).
Claims 1, 5 to 10, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Jacoves (US 6,741,968 B2, iss. May 25, 2004).
Claims 1, 5 to 10, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Nicholson (US 6,332,128 B1, iss. Dec. 18, 2001).
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Application 11/254,624

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FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Ans. 3 to 19, 22, and
26 to 30. Additional findings of fact may appear in the Analysis that
follows.

ANALYSIS
Obviousness over Wilson
We adopt the Examiner’s answers to the various arguments of the
Appellant with respect to this rejection found in the Answer (37 to 40). We
add the following for emphasis only:
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner interpreted the claims contrary to its
plain language. In this regard, the Appellant argues that the Examiner
interprets the limitation “and performing a debit-type transaction” to mean
“during a debit-type transaction.” As such, the Appellant argues that the
Examiner’s interpretation provides a discount when a debit card is used in a
transaction rather than accruing discounts for a subsequent transaction. The
argument is not persuasive because the Examiner found that Wilson
discloses discounts awarded in a subsequent visit (Ans. 5).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Wilson does not disclose awarding a discount for
the use of a debit card. We find that Wilson discloses that discounts can be
awarded for the use of cards such as debit, credit, or smartcards (col. 18, ll.
23 to 25), and that those skilled in the art would recognize the benefits
inherent in certain payment methods and would encourage payments
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beneficial to the station operator (col. 18, ll. 52 to 56). As such, we agree
with the Examiner that it would have been obvious to offer discounts for the
use of any desired payment card.
We also not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner has improperly relied on the
principle of inherency to meet the price-per-unit discount feature of the
claims. The Examiner relied on Official Notice, not inherency, to meet this
aspect of the claims.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to claims 5 to 7
and 9 because these claims stand or fall with claim 1 (Br. 7).

Obviousness in view of Jacoves
We adopt the Examiner’s responses to the Appellant’s arguments in
regard to the rejection (Ans. 40 to 42). We add the following for emphasis
only.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument, as was argued above, that the Examiner interprets the
claims to require that the discount is received for using a debit card during a
transaction. We agree with the Examiner that Jacoves, like Wilson,
discloses giving a discount subsequent to a qualifying purchase (col. 4, ll. 19
to 28).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Examiner’s reliance on Official Notice is
improper. We do not find in this record any challenge by Appellant of the
facts of which the Examiner took Official Notice. Appellant has not come
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forth with any information or argument that, on its face, casts reasonable
doubt regarding the justification of the Official Notice. See In re Boon, 439
F.2d 724, 728 (CCPA 1971) (an applicant has the right to challenge the
official notice and demand production of evidence in support thereof,
provided such challenge is accompanied by adequate information or
argument that, on its face, creates a reasonable doubt regarding the
circumstances justifying the official notice). Thus, we hold that the
Appellant has not adequately traversed the Examiner's taking of Official
Notice, so as to require the Examiner to produce documentary evidence in
support thereof. Where, as here, the Appellant has failed to challenge a fact
judicially noticed and it is clear that he has been amply apprised of such
finding so as to have the opportunity to make such challenge, the finding
will be considered conclusive. In re Perkins, 346 F.2d 981, 985 (CCPA
1965). In view of the foregoing, we will sustain the rejection of claim 1.
We will also sustain the rejection as it is directed to claims 5 to 10 and 25
because these claims stand or fall with claim 1 (Br. 10).

Obviousness in view of Nicholson
We adopt the Examiner’s response to the various arguments in
response to this rejection (Ans. 42 to 43). We add the following for
emphasis only.
The Appellant has once again argued that the Examiner did not
properly interpret the claims. In this regard, we find that Nicholson, like
Wilson and Jacoves, discloses that after a customer makes a qualifying
purchase, a discount is stored in a database and may be later used to
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purchase gasoline (col. 3, ll. 12 to 18). As such, the Examiner has properly
found that a discount is awarded for a qualifying purchase not just during a
qualifying purchase.
The Appellant has not addressed the facts of the Official Notice relied
on by the Examiner and therefore, as we discussed above, the facts of the
Official Notice are considered conclusive.
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1 and 25 as unpatentable over Nicholson. We will also sustain this
rejection as it is directed to claims 5 to 10 because these claims stand or fall
with claim 1 (Br. 12).

DECISION
The decision of the Examiner is affirmed.
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) (2011).

AFFIRMED

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