Ex Parte Satyavolu et al

Patent Trial and Appeal Board

Jul 8, 2016

13180511 (P.T.A.B. Jul. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/180,511 07 /11/2011
123897 7590 07112/2016
GTC Law Group PC & Affiliates (Trnaxis, Inc,)
c/o CPA Global
900 Second A venue South
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Ramakrishna Satyavolu
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.
BILL-0004-UOl 2577
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/12/2016 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):
jmonocello@gtclawgroup.com
gtcdocketing@cpaglobal.com
lhohn@gtclawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMAKRISHNA SATYA VOLU, SAMIR KOTHARI,
SHEHZAD DAREDIA, BALA KRISHNA NAKSHATRALA, and
SARAVANAPERUMALSHANMUGAM
Appeal2014-005346 1
Application 13/180,511 2
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, 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 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
December 6, 2013) and Reply Brief ("Reply Br.," filed March 31, 2014),
and the Examiner's Answer ("Ans.," mailed February 7, 2014) and Final
Office Action ("Final Act.," mailed May 29, 2013).
2 According to Appellants, the real party in interest is Truaxis, Inc. App.
Br. 2.
Appeal2014-005346
Application 13/180,511
CLAIMED INVENTION
Appellants' claimed invention "is generally related to an in-statement
rewards platform" (Spec. i-f 4).
Claim 1, reproduced below, is the sole independent claims and is
representative of the subject matter on appeal:
1. A method, comprising:
gathering transaction data from a user's financial account
via at least one computer, wherein the user's financial account is
a financial institution account that is maintained on behalf of the
user;
analyzing the transaction data with the at least one
computer for a psychographic inference;
matching a savings opportunity from a database of savings
opportunities to the user based on the psychographic inference
using the at least one computer; and
displaying the savings opportunity in association with a
statement of the user's financial account.
REJECTIONS3
Claims 1, 3-5, 8, 12-14, 18, and 19 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Grimes (US 2010/0106577 Al, pub. Apr. 29,
2010; filed June 17, 2009, claiming priority to provisional application Serial
No. 61/108,332, filed Oct. 24, 2008).
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grimes and Schmitt (US 2007 /0156530 Al, pub. July 5, 2007).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grimes and CheckFree and Netonomy Sign Strategic Reseller Agreement,
PR Newswire (December 15, 2004) (hereinafter "PR Newswire").
3 We note that the Final Office Action does not include a rejection of
claim 7.
2
Appeal2014-005346
Application 13/180,511
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grimes and Forbes (US 2006/0111967 Al, pub. May 25, 2006).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grimes and Buis (US 6,631,007 Bl, iss. Oct. 7, 2003).
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grimes and Cook (US 2011/0047016 Al, pub. Feb. 24, 2011).
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Grimes and Joe Strupp, Gifts that keep on giving ... ad
dollars (Aug. 2008), available at http://search.proquest.com/printviewfile?
accountid=l4753 (hereinafter "Strupp").
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grimes, Strupp, and Cook.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Grimes, Veeneman (US 2012/0101896 Al, pub. Apr. 26, 2012), and Bull
(US 2009/0182597 Al, pub. July 16, 2009).
ANALYSIS
Anticipation
Independent claim 1 and dependent claims 3-5, 8, 12-14, 18, and 19
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1under35 U.S.C. § 102(e) because Grimes does not disclose
"analyzing the transaction data with the at least one computer for a
psychographic inference" and "matching a savings opportunity from a
database of savings opportunities to the user based on the psycho graphic
inference," as recited in claim 1 (App. Br. 6-13).
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Appeal2014-005346
Application 13/180,511
Grimes is directed to a system and method for delivering targeted
marketing offers to consumers during a session with an online Internet portal
(Grimes, Abstract), and discloses that consumers are segmented into classes
and subclasses based on age, gender, geography, socio-economic status,
types of purchases, and other indicia (id. i-f 12). Grimes discloses that
transactional data, i.e., sales data, can be invaluable for marketing and
profitability purposes, and discloses that in one example, a class of
consumers could be purchasers of home-delivered pizzas (id. i-f 16). In
another example, consumers may be segmented based on the dollar amount
of their respective transactions, i.e., the spend amount, and a merchant may
use the spend amount to match an offer to a particular consumer segment
(id. ,-r 226).
We agree with Appellants that rather than targeting consumers based
on inferences about their characteristics, e.g., age, gender, geography, socio-
economic status, made using available transaction data, Grimes identifies
classes and segments of consumers based on known characteristics, and then
then targets consumers based on those known characteristics. In other
words, Grimes does not identify consumer traits by inference from
transaction data; instead Grimes determines consumer traits directly from
information in its files (see, e.g., App. Br. 8-10).
Referencing paragraphs 22 and 182 of Appellants' Specification at
pages 16-18 of the Answer, the Examiner concludes "[i]t is clearly [sic] that
the Appellant[s'] paragraphs describe that the Appellant[s'] psychographic
inference concept is to analyze the past 'spend patterns', match, and display
an offer to the user and this is exactly what is taught by Grimes (see
paragraphs 19, 110, 114, 117, and 179)" (Ans. 18 (emphasis omitted)). Yet
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Appeal2014-005346
Application 13/180,511
rather than using a consumer's past spend pattern to identify a matching
offer, as disclosed in Grimes, Appellants describe in paragraph 182, that a
psychographic inference is made, e.g., regarding the consumer's gender,
credit rating, age group, life events, income level, psychographic state,
demographics and the like, based on transactional data, e.g., the consumer's
past spend pattern. This psychographic inference, e.g., the consumer's credit
rating, age group, life events, income level, psychographic state,
demographics and the like, and not the transactional data itself, e.g., the
consumer's spend pattern, is then used in matching a savings opportunity.
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1under35 U.S.C. § 102(e). For the same reasons, we also do not
sustain the Examiner's rejection of dependent claims 3-5, 8, 12-14, 18, and
19.
Obviousness
Dependent claims 2. 6. 9-11. 15-17. and 20
The Examiner's rejections of claims 2, 6, 9-11, 15-17, and 20 under
35 U.S.C. § 103(a) are based on the same erroneous findings described
above with respect to claim 1. Therefore, we do not sustain the Examiner's
rejections of claims 2, 6, 9-11, 15-17, and 20.
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Appeal2014-005346
Application 13/180,511
DECISION
The Examiner's rejection of claims 1, 3-5, 8, 12-14, 18, and 19 under
35 U.S.C. § 102(e) is reversed.
The Examiner's rejections of claims 2, 6, 9-11, 15-17, and 20 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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