Ex Parte Shastry

Patent Trial and Appeal Board

Dec 18, 2013

11964232 (P.T.A.B. Dec. 18, 2013)

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.
11/964,232 12/26/2007 Vishwanath Shastry 70481.21 1465
116452 7590 12/18/2013
Haynes & Boone, LLP
2323 Victory Ave., Suite 700
Dallas, TX 75219
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
12/18/2013 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VISHWANATH SHASTRY
____________

Appeal 2011-013200
Application 11/964,232
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and HYUN J. JUNG,
Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Vishwanath Shastry (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-4, 8-11, 14, 15, 17, 19, 21, and
22. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appeal 2011-013200
Application 11/964,232

2
SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
receiving transaction data during a purchase transaction
between a merchant and a user;
accessing from a database during the purchase transaction data
representing one or more value programs associated with a plurality of
merchants and one or more funding instruments associated with the
user;
selecting one or more value programs for the user based on the
transaction data;
selecting one or more funding instruments for the user based on
the transaction data;
applying all or a partial part of the selected one or more value
programs to reduce a purchase price of the item during the purchase
transaction, and
retaining any unused partial part of the one or more value
programs,
wherein the method is performed by one or more processor
adapted to execute instructions stored on one or more memory
components of a computer.

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed May 9, 2011) and the Examiner’s Answer (“Answer,” mailed Jun. 9,
2011).
Appeal 2011-013200
Application 11/964,232

3
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Warwick
Walker

US 2002/0082918 A1
US 7,194,423 B2
Jun. 27, 2002
Mar. 20, 2007
The following rejection is before us for review:
Claims 1-4, 8-11, 14, 15, 17, 19, 21, and 22 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Walker and Warwick.

ISSUE
Did the Examiner err in rejecting the claimed subject matter as
obvious under § 103 over the cited prior art combination?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Appellant argues claims 1-4, 8-11, 14, 15, 17, 19, 21, and 22 as a
group (Br. 5-8). We select claim 1 as the representative claim for this group,
and the remaining claims 2-4, 8-11, 14, 15, 17, 19, 21, and 22 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Appellant argues that the cited prior art does not disclose or lead
one of ordinary skill in the art to “select[ ] one or more funding instruments
for [a] user based on [ ] transaction data” (claim 1). Br. 5-8. The Examiner
Appeal 2011-013200
Application 11/964,232

4
found this claim limitation disclosed in Walker at col. 4, l. 34 – col. 6, l. 55
(Ans. 4) and col. 2, l. 61 – col. 4, l. 67 (Ans. 14). The Appellant disputes
this: “Appellant contends that under no possible interpretation can Walker
be shown to teach or suggest ‘selecting one or more funding instruments
based on the transaction data for the user’ or similar limitations in the
independent claims.” Br. 7.
In light of the Specification, the claim phrase “funding instruments”
encompasses credit cards, debit accounts, and deposit accounts “and similar
type accounts”. Specification 16, lines 5-9. Accordingly, the limitation at
issue is reasonably broadly construed to cover “selecting [a credit card] for
[a] user based on [ ] transaction data” (claim 1).
Claim 1 is not limited so that “information about [a] transaction,
including the user’s different funding instruments, are conveyed to a
payment provider system” (Br. 7). Nor is the claim limited to that “[a]
system access[es] a database of funding instruments for the user, based on
information conveyed during the transaction, and then selects one or more
possible funding instruments for the user to choose from” (Br. 8). The claim
requires simply selecting a funding instrument that is based on transaction
data received during a purchase transaction between a merchant and a user.
The claim also does not limit the conditions (e.g., who or what) for selecting
a funding instrument as long as it is based on transaction data. As
reasonably construed, it is sufficient to meet the claim limitation at issue that
a user selects a credit card based on the transaction data.
In other words, a user paying a transaction with a credit card would
meet the claim limitation at issue. And that is what Walker discloses at col.
Appeal 2011-013200
Application 11/964,232

5
3, lines 1-10. Specifically, Walker discloses a point-of-sale (POS) terminal
that receives transaction data as well as credit card information. The
presentment of the credit card information by the user based on the
transaction data is implicit in the use of Walker’s POS during a transaction.
In evaluating references it is proper to take into account not only the specific
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d
825, 826 (CCPA 1968).
Accordingly, the preponderance of the evidence does not support the
Appellant’s argument that the cited prior art does not disclose or lead one of
ordinary skill in the art to “select[ ] one or more funding instruments for [a]
user based on [ ] transaction data” (claim 1). There are no other arguments
persuasive as to error in the rejection, and the rejection is sustained.

DECISION
The decision of the Examiner to reject claims 1-4, 8-11, 14, 15, 17,
19, 21, and 22 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)(1)(iv).

AFFIRMED

llw