Ex Parte Satyavolu et al

Patent Trial and Appeal Board

Aug 2, 2016

13180533 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/180,533 07 /11/2011
123897 7590 08/04/2016
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-U 10 2609
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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
Appeal2014-005962 1
Application 13/180,5332
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, 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 1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
November 8, 2013) and Reply Brief ("Reply Br.," filed April 14, 2014), and
the Examiner's Answer ("Ans.," mailed February 24, 2014) and Final Office
Action ("Final Act.," mailed April 3, 2013).
2 Appellants identify Truaxis Inc. as the real party in interest. App. Br. 2.
Appeal2014-005962
Application 13/180,533
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 claim and
representative of the subject matter on appeal:
1. A method, comprising:
gathering transaction data by at least one computer from
a user's financial account, wherein the user's financial account
is a financial institution account that is maintained on behalf of
the user;
analyzing the transaction data of the user with a first
merchant by the at least one computer for a savings opportunity
indication, wherein the transaction data of the user meet one or
more criteria set by the first merchant or a second merchant;
obtaining by the at least one computer third party census
data related to the user;
matching a savings opportunity from a database of
savings opportunities to the user based on the savings
opportunity indication and the third party census data, wherein
the step of matching requires matching criteria set by the first
merchant or the second merchant for the third party census data;
and
causing the matched savings opportunity to be displayed
in association with a statement of the user's financial account,
wherein the displayed matched savings opportunity comprises a
savings opportunity from the first merchant or the second
merchant.
2
Appeal2014-005962
Application 13/180,533
REJECTIONS
Claims 1-7, 9, 13, 14, 16-18, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Berardi (US 2005/0160003 Al, pub. July 21,
2005), Schmitt (US 2007/0156530 Al, pub. July 5, 2007), and Ryan
(US 2002/0198775 Al, pub. Dec. 26, 2002).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berardi, Schmitt, Ryan, and Grimes (US 2010/0106577 Al, pub. Apr. 29,
2010).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berardi, Schmitt, Ryan, and Moore (US 2009/0006525 Al, pub. Jan. 1,
2009).
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berardi, Schmitt, Ryan, and Mitchell
(US 2004/0217585 Al, pub. Nov. 4, 2004).
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berardi, Schmitt, Ryan, and Hart (US 2009/0234742 Al, pub. Sept. 17,
2009).
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berardi, Schmitt, Ryan, and Matthews (US 7,857,212 Bl,
iss. Dec. 28, 2010).
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Berardi, Schmitt, Ryan, and Scherpa (US 2010/0017325 Al, pub. Jan. 21,
2010).
Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berardi, Schmitt, Ryan, Talavera (US 2007/0050246 Al,
pub. Mar. 1, 2007), and Mankoff (US 7 ,870,021 B2, iss. Jan. 11, 2011 ).
3
Appeal2014-005962
Application 13/180,533
ANALYSIS
Independent claim 1 and dependent claims 2-7, 9, 13, 14, 16--18, and 22
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Berardi, on
which the Examiner relies, does not disclose or suggest "matching a savings
opportunity from a database of savings opportunities to the user based on the
savings opportunity indication ... wherein the step of matching requires
matching criteria set by the first merchant or the second merchant," as
recited in claim 1 (App. Br. 13-14; see also Reply Br. 7-8).
Berardi is directed to a system and method for providing incentives,
e.g., coupons, discounts, reward points, at a merchant location based on the
customer's use of an RFID transaction device to complete the sales
transaction (Berardi, Abstract). Berardi discloses an exemplary method,
with reference to Figure 2, for awarding loyalty points, and describes that
the process begins with the user's presentation of his/her RFID transaction
device to an RFID reader at the merchant location (id. i-f 41 ). A unique
RFID transaction device identifier is read from the RFID device and
provided to the merchant point-of-sale ("POS") device (id. i-f 42). The
merchant system compares the RFID transaction device identifier to those
previously stored in the merchant system database (id. i-f 45). And, if a
match exists (i.e., indicating that the user has conducted other transactions
with this merchant), the merchant system locates the corresponding
matching transaction account number, transaction history, and loyalty
reward file in its database (id. i-f 47). The current transaction then is
processed and evaluated, with the transaction history, in accordance with the
4
Appeal2014-005962
Application 13/180,533
merchant's predetermined criteria, to determine whether loyalty points or
incentives should be provided to the RFID transaction device user (id. i-f 48)
The Examiner takes the position that "matching a savings opportunity
from a database of savings opportunities to the user based on the savings
opportunity indication," as recited in claim 1, reads on
"determining/matching to provide the RFID transaction device
102 user with loyalty points or incentives from the loyalty reward
file of the merchant database 126 to the user based on the
corresponding matching RFID transaction account number" in
Berardi (please see the entire of the disclosure and at least
paragraphs 4 7--48)
(Ans. 15). However, we fail to see how, and the Examiner does not
adequately explain how, matching the customer's RFID transaction device
identifier with customer records in the merchant system database (which is
the only matching that Berardi discloses in paragraphs 4 7 and 48) discloses
or suggests "matching a savings opportunity from a database of savings
opportunities;" as recited in claim 1.
The Examiner further asserts that "wherein the step of matching
requires matching criteria set by the first merchant or the second merchant"
reads on "'wherein the step of determining/matching requires
matching/evaluating merchant predetermined criteria set by the merchant' in
Berardi (please see the entire of the disclosure and at least paragraphs 4 7-
48)" (id.). But again, the only matching that Berardi discloses in
paragraphs 4 7 and 48 is matching the customer's RFID transaction device
identifier with customer records in the merchant system database and that
"matching" does not require "matching criteria set by the first merchant or
the second merchant," as recited in claim 1.
5
Appeal2014-005962
Application 13/180,533
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 2-7, 9, 13, 14, 16-18,
and 22. 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
nonobvious").
Dependentclaims8, 10--12, 15, 19-21, 23, and24
Each of claims 8, 10-12, 15, 19-21, 23, and 24 ultimately depends
from independent claim 1. None of the Examiner's rejections of claims 8,
10-12, 15, 19-21, 23, and 24 cures the deficiency in the Examiner's
rejection of claim 1. Therefore, we do not sustain the Examiner's rejections
under 35 U.S.C. § 103(a) of claims 8, 10-12, 15, 19-21, 23, and 24 for the
same reasons set forth above with respect to claim 1.
DECISION
The Examiner's rejections of claims 1-24 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
6