Ex Parte Satyavolu et al

Patent Trial and Appeal Board

Aug 3, 2016

13180531 (P.T.A.B. Aug. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/180,531 07 /11/2011
123897 7590 08/05/2016
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-U09 2606
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/05/2016 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
Appeal2014-003864 1
Application 13/180,531 2
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 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
September 9, 2013) and Reply Brief ("Reply Br.," filed February 12, 2013),
and the Examiner's Answer ("Ans.," mailed December 20, 2013) and Final
Office Action ("Final Act.," mailed January 22, 2013).
2 Appellants identify Truaxis Inc. as the real party in interest. App. Br. 2.
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Application 13/180,531
CLAIMED INVENTION
Appellants' claimed invention "is generally related to an in-statement
rewards platform" (Spec. i-f 4).
Claim 1, reproduced below with added bracketed notations, is the sole
independent claim and representative of the subject matter on appeal:
1. A method for a conditional purchase, comprising:
[(a)] gathering transaction data from a user's financial
account by one or more computers, wherein the user's financial
account is a financial institution account that is maintained on
behalf of the user;
[ (b)] analyzing the transaction data for a savings
opportunity indication from a merchant, by the one or more
computers;
[ ( c)] matching a savings opportunity from a database of
savings opportunities to the user based on the savings
opportunity indication;
[ ( d)] providing a conditional purchase offer from the user
for a good or service identified by the savings opportunity;
[( e )] receiving the conditional purchase offer, wherein
the conditional purchase offer specifies at least one of a desired
discount and an offer price;
[ ( t)] comparing the conditional purchase offer by the one
or more computers with at least one of an inventory and a pricing
information to determine if the conditional purchase offer is
acceptable;
[(g)] if the conditional purchase offer is acceptable,
optionally binding the customer to purchase the good or service,
wherein binding comprises automatically charging a financial
account of the user for the good or service; and
[(h)] if the conditional purchase offer is not acceptable,
allowing the user to modify at least one of the discount and offer
pnce.
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Application 13/180,531
REJECTIONS3
Claims 1-3, 6, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bies (US 2008/0103968 Al, pub. May 1, 2008) and
Walker '099 (US 2008/0010099 Al, pub. Jan. 10, 2008).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bies, Walker '099, and Walker '718 (US 6,018,718, iss. Jan. 25, 2000).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bies, Walker '099, and Roberts (US 2005/0209921 Al, pub. Sept. 22, 2005).
ANALYSIS
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because neither Bies nor Walker, alone or in
combination, discloses or suggests ( 1) "providing a conditional purchase
offer from the user for a good or service identified by the savings
opportunity" and/or (2) "if the conditional purchase offer is not acceptable,
allowing the user to modify at least one of the discount and offer price," i.e.,
limitations (d) and (h), as recited in claim 1 (App. Br. 6-12; see also Reply
Br. 2---6). Neither of these arguments is persuasive.
Addressing limitation ( d) first, we are not persuaded by Appellants'
argument that Bies, on which the Examiner relies, does not disclose or
suggest "providing a purchase offer from the user for a good or service
identified by the savings opportunity. "4 Instead, we agree with, and adopt
3 The rejections of claims 6 and 7 under 35 U.S.C. § 112, second paragraph,
and claims 1-7 under 35 U.S.C. § 101 have been withdrawn. Ans. 2.
4 The Examiner acknowledges that Bies does not disclose that the purchase
offer is a "conditional purchase," and cites Walker as curing this deficiency
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Application 13/180,531
the Examiner's response to Appellants' argument as set forth at pages 4---6 of
the Answer.
By way of background, Bies is directed to a system and method for
redeeming rewards at a merchant's point-of-sale, and discloses that the
system allows a customer to pay for a transaction of goods or services using
a combination of credit and reward funds (Bies, Abstract, i-f 12).
Bies discloses, with reference to Figure 2, that the process begins when a
customer is ready to purchase goods or services, e.g., at a merchant checkout
counter (id. i-f 36). The customer presents his/her credit card for payment of
the purchase and swipes the card through a card reader terminal device
(step 202); an authorization request is then sent from the terminal device to
the card issuer (step 204) and, if reward redemption is possible with this type
of card, the terminal device also includes a rewards redemption indicator in
the authorization request (id.). Upon receiving the authorization request, at
step 206, the issuer decrements the customer's available credit and obtains,
from the customer's rewards account, the maximum available reward funds
that may be used in connection with this transaction (id. i-f 37). If sufficient
credit is available, the issuer returns an approval for both the charge amount
of the purchase and for a rewards charge of the available amount (id.). Upon
receiving the approval at the terminal device, the customer is given the
option of redeeming rewards from his/her rewards account and is invited to
select an amount of rewards to be used for the transaction (id. i-f 38).
Bies discloses that in additional embodiments, after swiping his/her card, the
by teaching "providing a conditional purchase order from the user for a good
or service" in "the analogous art of facilitating a (financial) transaction
between a buyer and seller" (Final Act. 6-7).
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Application 13/180,531
customer may be presented with discounts/incentives based on any
combination of the merchant and/or the merchandise being purchased (id.
iTiT 46, 50).
Appellants argue that because, in Bies, the good or service has already
been selected at the time the customer is given the option of redeeming
rewards from his/her rewards account, Bies fails to disclose or suggest "a
good or service identified by the savings opportunity," and, therefore, fails
to disclose or suggest "providing a purchase offer from the user for a good
or service identified by the savings opportunity" (App. Br. 6-9). That
argument is not persuasive.
A person of ordinary skill in the art would reasonably understand that
a customer's presentation, in Bies, of an item or items for purchase
constitutes a "purchase offer," within the meaning of claim 1. Such a person
also would reasonably understand that the customer's utilization of rewards
toward the purchase and/or the presentation of discounts to the customer
constitute a "savings opportunity." Appellant argue that Bies fails to
disclose or suggest "a good or service identified by the savings opportunity"
because the "purchase [of the good or service] was selected before Bies' [ s]
rewards database comes into play" (App. Br. 6). But we find nothing in the
claim language that precludes the good or service from being selected before
identification of a savings opportunity.
Appellants argue that at least the first four steps of claim 1, steps (a)
through ( d), must be performed in the order set forth in the claim and that
because the purchase item in Bies has been selected by the time step ( d), i.e.,
"providing a conditional purchase offer from the user for a good or service
identified by the savings opportunity," is performed, the good or service
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previously selected by the customer is not "a good or service identified by
the savings opportunity" (App. Br. 6-7; see also Reply Br. 2-3). But the
fact that steps (a) through ( d) must be performed in that order does not mean
that the savings opportunity must be identified before the good or service
can be selected.
Claim 1 recites "providing a conditional purchase offer from the user
for a good or service identified by the savings opportunity." It does not
recite a step of "identifying the good or service" using or based on the
savings opportunity. We agree with the Examiner that, by linking the
rewards/discounts with the items being purchased, Bies discloses "a good or
service identified by the savings opportunity" under a broadest, reasonable
interpretation standard (Ans. 6).
We also are not persuaded of Examiner error by Appellants' argument
that the combination of Bies and Walker fails to disclose or suggest "if the
conditional purchase offer is not acceptable, allowing the user to modify at
least one of the discount and offer price," i.e., limitation (h), as recited in
claim 1 (App. Br. 9-12).
Walker is directed to a method for facilitating a transaction between a
buyer and a seller, and discloses that if an offer from a buyer is not accepted
by the seller, the seller may make a counteroffer to the buyer, which the
buyer may refuse or accept (Walker i-fi-157---60). Appellants argue that
claim 1 requires the buyer, not the merchant/seller or any other party, to
modify at least one of the discount and the price and that Walker discloses
the exact opposite (App. Br. 9-12). Yet even accepting Appellants'
argument, it is significant here that the step of "allowing the user to modify
at least one of the discount and offer price" is only performed if a certain
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condition is met, i.e., if the conditional purchase offer is not acceptable.
Stated differently, the step of "allowing the user to modify at least one of the
discount and offer price" is a conditional step that, in the broadest scenario,
i.e., when the conditional purchase offer is acceptable, will not be
performed.
During examination before the U.S. Patent and Trademark Office
(PTO), claims are given their broadest reasonable interpretation consistent
with the specification. In re Abbott Diabetes Care, Inc., 696 F.3d 1142,
1148 (Fed. Cir. 2012); In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
Moreover, conditional steps employed in a method claim need not be found
in the prior art if, under the broadest scenario, the method need not invoke
the steps. See Ex parte Katz, 2010-006083, 2011 WL 514314, at *4 (BP AI
2011) (non-precedential) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004)); see also Ex parte Masuda, 2016 WL 3036388
(PTAB May 11, 2016).
Here, when given its broadest reasonable interpretation, claim 1
covers a method that comprises steps (a) through (g), and that stops if the
conditional purchase offer is acceptable. Therefore, it is only necessary that
prior art disclose or suggest a method comprising steps (a) through (g). As
such, the step of "allowing the user to modify at least one of the discount
and offer price" need not be found in the combination of Bies and Walker
because, under the broadest reasonable scenario, claim 1 need not invoke
that step. See Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc.,
243 Fed. Appx. 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true
that method steps may be contingent. If the condition for performing a
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contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.").
We are not persuaded for the reasons set forth above that the
combination of Bies and Walker fails to disclose or suggest step ( d), as
recited in claim 1. And Appellants do not contend that the combination of
Bies and Walker fails to disclose or suggest optionally binding the customer
to purchase the good or service if the conditional purchase offer is
acceptable, i.e., limitation (g).
Therefore, we sustain the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a). We also sustain the rejections of dependent claims 2-7,
which are not argued separately except based on their dependence from
claim 1 (App. Br. 12).
DECISION
The Examiner's rejections of claims 1-7 under 35 U.S.C. § 103(a) are
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)(l )(iv).
AFFIRMED
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