Ex Parte Spaeth et al

Patent Trial and Appeal Board

Apr 24, 2017

10660328 (P.T.A.B. Apr. 24, 2017)

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.
10/660,328 09/10/2003 Paul Spaeth 80083-659021(011310US) 5961
66945 7590 04/26/2017
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
ipefiling@kilpatricktownsend.com
EDurrell @ kilpatrickto wnsend .com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL SPAETH, BRYAN SHIMKO, PHILIPPE LEVY,
LIZ TOIBERO, BENJAMIN GARTON, MARC BLACK,
MICHAEL SALTERS, and JAMES MAZOUR
Appeal 2015-0059501
Application 10/660,32 82
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from a rejection of claims 1,
4, 7, 9-16, 18-20, 35—42, 46, 48, 50, 51, 56, and 6A-72. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
1 Our Decision considers Appellants’ Appeal Brief (“Appeal Br.,” filed
Nov. 24, 2014) and Reply Brief (“Reply Br.,” filed May 22, 2015), as well
as the Examiner’s Final Office Action (“Final Act.,” mailed June 30, 2014)
and Answer (“Ans.,” mailed Mar. 26, 2015).
2 Appellants identify Visa U.S.A. Inc. as the real party in interest.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed invention “generally relates to financial transactions and
more specifically to a system and method for changing participation status in
a loyalty program on a portable device.” Spec. 12. Claims 1, 13, 35, 39,
and 46 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for allowing a loyalty program participant that
is a user of a portable consumer device to change a participation
status in a loyalty program for the portable device, after the
portable device has been activated, the method comprising:
receiving, by an acceptance point device comprising an
electronic cash register and an open program engine comprising
software components that are dedicated to loyalty programs, an
indication from the loyalty program participant using a keypad
associated with the acceptance point device, to change the
participation status in the loyalty program associated with the
activated portable device from a first status to a second status,
wherein the first status is an opt-out status associated with the
loyalty program and the second status is an opt-in status
associated with the loyalty program;
receiving, at the acceptance point device, card image data
from the activated portable device, the card image data including
a parameter having a first value indicating the loyalty program
participation status as having the first status, and information that
allows loyalty transactions to be processed;
modifying, by the acceptance point device, the parameter
in the card image data received from the activated portable
device, from the first value indicating the loyalty program
participation status as having the first status to a second value
indicating the loyalty program participation status as having the
second status;
sending, by the acceptance point device, the card image
data received from the activated portable device, with the
modified parameter indicating the loyalty program participation
status to the activated portable device and replacing the card
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image data on the activated portable device with the modified
card image data;
building, by the acceptance point device, a transaction
record that indicates the loyalty program participation status;
storing, by the acceptance point device, the transaction
record; and
sending, by the acceptance point device, the transaction
record to a host.
REJECTIONS
Claims 1, 4, 7, 9-16, 18-20, 35^12, 46, 48, 50, 51, 56, 6A-67, and 69-
72 are rejected under 35 U.S.C. § 103(a) as unpatentable over DiRaimondo
(US 7,032,047 B2, iss. Apr. 18, 2006) and Andrews (US 2003/0085272 Al,
pub. May 8, 2003).3
Claim 68 is rejected under 35 U.S.C. § 103(a) as unpatentable over
DiRaimondo, Andrews, and Sert (US 2003/0052864 Al, pub. Mar. 20,
2003).
3 The heading for this rejection omits claim 7 (Final Act. 2), but the body of
the rejection addresses claim 7 {id. at 4). Moreover, the heading lists
claims 55 and 68. Id. at 2. Claim 55 has been canceled. Amendment filed
Apr. 24, 2014. Claim 68 is not discussed in the body of the rejection and is
subject to another ground of rejection (Final Act. 10). As such, we
understand the omission of claim 7 and the inclusion of claims 55 and 68 in
the heading of the rejection are typographical errors, and our understanding
is consistent with Appellants’ discussion of the status of the claims on
appeal (Appeal Br. 3).
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ANALYSIS
Obviousness based on DiRaimondo and Andrews
Independent claims 1, 35, and 46 and dependent claims 4, 7, 9, 12, 36—38,
48. 5ft 5L 56. 64-67, and 69-71
Appellants argue independent claims 1, 35, and 46 and dependent
claims 4, 7, 9, 12, 36—38, 48, 50, 51, 56, 64—67, and 69-71 as a group.
Appeal Br. 12. We select independent claim 1 as representative. The
remaining claims of the group stand or fall with independent claim 1.
37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds that DiRaimondo’s system for regulating smart
card usage for a loyalty program discloses the claimed invention, except for
receiving an indication from the loyalty program participant using a keypad
to change the participation status in the loyalty program. Final Act. 2—3.
For this, the Examiner relies on Andrews’s teaching of a patron using a
smart card at a vending machine to withdraw from an autoload program. Id.
Appellants argue that combination of DiRaimondo and Andrews
would not result in several limitations of independent claim 1.
Appeal Br. 12—18; Reply Br. 2—6. For the reasons discussed below,
Appellants’ arguments do not persuade us of error in the Examiner’s
rejection of independent claim 1.
First “receiving ” step
Appellants argue that Andrews fails to disclose “an indication from
the loyalty program participant using a keypad associated with the
acceptance point device, to change the participation status in the loyalty
program,” as recited in the first “receiving” step of independent claim 1.
Appeal Br. 13—14; Reply Br. 2-4. According to Appellants, Andrews does
not describe anything related to loyalty programs, and Andrews teaches an
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employer, not a smart card user, requests to change participation status in a
program. Appeal Br. 13—14; Reply Br. 3^4 (citing Andrews 1 50).
Appellants’ arguments are not persuasive.
At the outset, we note that the Examiner is not relying on Andrews,
but rather on DiRaimondo, for teaching a loyalty program. Ans. 2 (citing
DiRaimondo 8:49—9:67). As such, Appellants’ argument regarding
Andrews’s failure to disclose a loyalty program is misplaced. Moreover, we
disagree with Appellants that Andrews fails to disclose a smart card user
requesting a change in participation status. Andrews teaches autoload
programs for a smart card, including a benefits autoload program (Andrews
1147—50) and a credit card autoload program (id. H 65—71). Appellants
focus on the benefits autoload program and do not address the Examiner’s
reliance on the credit card autoload program. Final Act. 3 (citing Andrews
1171—73; Ans. 3 (citing Andrews H 65, 70-72). In regard to the credit card
autoload program, Andrews teaches that a patron, i.e., participant in the
program and smart card user, may withdraw from the program, i.e., change
participation status, by visiting a vending machine to remove the setup bit
from the smart card via a menu specification. Andrews 171. Accordingly,
in light of DiRaimondo’s teaching of a loyalty program and Andrews’s
teaching of a program participant’s use of a vending machine to change the
participation status in the program, we fail to see error in the Examiner’s
determination that the combined teachings of DiRaimondo and Andrews
would result in “an indication from the loyalty program participant using a
keypad associated with the acceptance point device, to change the
participation status in the loyalty program,” as recited in independent
claim 1.
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Appellants also argue that DiRaimondo does not disclose “an
acceptance point device comprising an electronic cash register and an open
program engine comprising software components that are dedicated to
loyalty programs,” as recited in the first “receiving” step. Appeal Br. 14.
We disagree.
DiRaimondo teaches a smart card system comprising front office
components, including smart: cards and smart card readers, which
communicate with back office components lor processing the smart card
transactions. DiRaimondo 2:24-44, Figs. 1,5. As the Examiner points out,
DiRaimondo includes an embodiment of the smart card system for use with
loyalty programs, which is shown in Figures 5 -6B. DiRaimondo 8:49-56,
10:32—34; Final Act. 2—3, As shown in Figure 5, the back office
components are networked via a LAN and include card reader interface 170,
a financial processing system (EPS), card holder account processing system
(CHAPS) 310, and smart card processing system (SCPS) 330. Figure 6A
shows a flow chart for the method performed by the back office components
to update loyalty parameters for smart cards. DiRaimondo 10:32—11:7;
Final Act. 2—3; Ans. 2—3. As such, DiRaimondo’s back office components,
which include an FPS and other networked components for processing smart
card transactions associated with a loyalty program, teach “an acceptance
point device comprising an electronic cash register and an open program
engine comprising software components that are dedicated to loyalty
programs,” as recited in this limitation of independent claim 1.
Appellants further argue that the cited references do not disclose
“wherein the first status is an opt-out status associated with the loyalty
program and the second status is an opt-in status associated with the loyalty
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program.” Appeal Br. 14; Reply Br. 3—5. In particular, Appellants assert
that Andrews’s teaching of a user adding a new credit card after a previous
credit card expired is not opting-in or out of a program. Reply Br. 3^4
(citing Andrews 65, 70—71). Appellants’ arguments are not persuasive.
We need not address whether re-initializing the credit card autoload
process by adding a valid credit card is opting-in or out of the program
because Andrews explicitly teaches that a user may request to participate in
credit card autoload program and withdrawal therefrom. As set forth above,
Andrews teaches that a patron may withdraw from the program by visiting a
vending machine to remove the setup bit from the smart card via a menu
specification. Andrews 171. Andrews similarly teaches that a patron can
begin participation in the credit card autoload program by registering the
patron’s smart card at a transit vending machine. Id. 1 52. As such,
Appellants do not persuade us that Andrews fails to disclose “wherein the
first status is an opt-out status associated with the loyalty program and the
second status is an opt-in status associated with the loyalty program” as
claimed.
Accordingly, Appellants do not apprise us of error in the Examiner’s
determination that the combined teachings of DiRaimondo and Andrews
would result in the first “receiving” step of independent claim 1.
Second “receiving, ” “modifying, ” and “sending ” steps
Appellants argue that DiRaimondo does not disclose these steps of
independent claim 1. Appeal Br. 15—17. In particular, Appellants contend
that DiRaimondo’s teaching of checking the status of a smart card and then
disabling it to prevent further use is not the same as changing the
participation status in a loyalty program. Id. at 15—16 (citing DiRaimondo
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5:34—65). Appellants further contend that DiRaimondo does not teach
receiving card image data from a smart card. Id. at 16—17.
Appellants’ arguments are not persuasive because they are not aligned
with the Examiner’s rejection. As set forth above, the Examiner is relying
on Andrews, not DiRaimondo, for teaching a change in participation status
and receiving card image data from the smart card. Final Act. 3; Ans. 4—5.
Appellants also argue that Andrews fails to teach these steps.
Appeal Br. 17—18; Reply Br. 6. In particular, Appellants allege that
Andrews only discloses autoloading a value to a smart card and does not
describe anything regarding changing a participation status on the smart
card. Appeal Br. 17—18. Appellants further argue that Andrews’s teaching
of turning a bit from “on” to “off’ is not the same as receiving, modifying,
and sending card image data. Reply Br. 6.
Although we agree with Appellants that Andrews’s teaching of
turning a bit from “on” to “off’ is not the same as receiving, modifying, and
sending card image data, the Examiner is not relying on Andrews, but rather
on the combined teachings of DiRaimondo and Andrews, for these
limitations. In particular, the Examiner finds that DiRaimondo teaches an
acceptance point device that processes changes to the participation status in
a loyalty program by modifying a loyalty program parameter and sending
the updated parameter to a smart card. Final Act. 2. The Examiner is
relying on Andrews only for disclosing receiving a request from a smart card
user to change participation status in a program. Final Act. 3; Ans. 4—5.
As discussed above, Andrews teaches that a patron may request to
change participation status in an autoload program by presenting the smart
card to a vending machine in a transit facility. Andrews H 52, 71.
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Appellants are correct that, in making changes to participation status, the
vending machine changes the autoload bit on the smart card. Id. Tflf 22, 24.
In addition to changing the autoload bit, however, there are related
transmissions of data, i.e. card image data, between the vending machine and
a central computer. Id. Tflf 52—64, 71, Fig. 5. In view of Andrews’s teaching
of a central computer that receives card image data relating to participation
status and DiRaimondo’s teaching of an acceptance point device that
modifies card image data and sends the modified card image data to a smart
card, Appellants’ arguments do not apprise us of error in the Examiner’s
determination that the combined teachings of DiRaimondo and Andrews
would result in the second “receiving,” “modifying,” and “sending” steps of
independent claim 1.
In view of the foregoing, we sustain the rejection of independent
claim 1. Claims 4, 7, 9, 12, 35—38, 46, 48, 50, 51, 56, 64—67, and 69—71 fall
with independent claim 1.
Claims 10 and 11
Claim 10 depends from independent claim 1 and recites “wherein the
participation status includes one of a plurality of levels.” Appeal Br.,
Claims App. Claim 11 depends from claim 10 and recites “the plurality of
levels include an account level, a card level, a program level and a
transaction level.” Id. We are not persuaded by Appellants’ arguments that
DiRaimondo and Andrews fail to disclose the subject matter of these claims.
Appeal Br. 19-20; Reply Br. 8.
As Appellants point out, Andrews teaches that the autoload programs
use purse codes to identify specific uses for the funds, e.g., bus, parking.
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Andrews H 41, 64; Appeal Br. 20. Appellants do not persuasively explain
why the different distributions of funds pursuant to an autoload program are
not a plurality of levels for the participation status. As such, Appellants do
not apprise us of error in the Examiner’s rejection of claim 10.
Turning to claim 11, Appellants’ argument that the recited levels of
participation status are not found in the prior art (Appeal Br. 19—20) is not
persuasive at least because the particular labels attributed to the plurality of
levels do not limit or otherwise affect the function of the claimed method
and, as such, constitute nonfunctional descriptive material that may not be
relied on to distinguish over the prior art for purposes of patentability. In
other words, the claimed method would be performed in the same way
whether the plurality of l evels are designated as “an account level, a card
level, a program level and a transaction level” or identified by some other
designation. As such, the labels constitute non-functional descriptive
material that is not entitled to patentable weight. In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); cf In re GuiacL 703 F.2d 1381, 1385 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms of patentability). Given that Appellants’ argument relies on
nonfunctional descriptive material to distinguish the claimed invention from
the prior art, Appellants do not apprise us of error in the Examiner’s
rejection of claim 11.
In review of the foregoing, we sustain the Examiner’s rejection of
claims 10 and 11.
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Independent claims 13 and 39 and dependent claims 14—16, 18—20, 40—42,
and 72
Independent claims 13 and 39 recite a “transaction ID.” Appeal Br.,
Claims App. These claims also recite a response message including the
transaction ID, a requested operation to change participation status, and card
image data. Id. As such, we understand that the claims require a transaction
ID and card image data. With this understanding in mind, we are persuaded
by Appellants’ argument that DiRaimondo and Andrews do not disclose the
claimed “transaction ID.” Appeal Br. 18—19; Reply Br. 6—7.
At the outset, we note that it is unclear whether the Examiner is
relying on DiRaimondo or Andrews as disclosing a “transaction ID”
(Final Act 4, 6; Ans. 5), and we agree with Appellants that neither reference
teaches the claimed “transaction ID.” Beginning with Andrews, although
Andrews teaches that a patron may request to withdraw from an autoload
program by sending the request to the central computer via an Internet link
(Andrews 1 50; Ans. 5), Andrews does not disclose assigning an ID to the
request. Turning to DiRaimondo, we agree with the Examiner that
DiRaimondo teaches transaction lists including the UID of each smart card.
Final Act. 6; DiRaimondo 8:1—9:19; 10:7—11:7. The UID, however,
identifies a smart card, and the Examiner does not explain how the UID is a
“transaction ID” apart from card image data, as required by the claims.
In view of the foregoing, we do not sustain the rejection of
independent claims 13 and 39. We similarly do not sustain the rejection
claims 14—16, 18—20, 40-42, and 72 depending therefrom.
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Obviousness based on DiRaimondo, Andrews, and Sert
Appellants do not argue claim 68 apart from independent claim 1.
Appeal Br. 12, 19. Accordingly, we sustain the rejection of claim 68 for the
same reasons as independent claim 1.
DECISION
The Examiner’s decision to reject claims 1, 4, 7, 9-12, 35—38, 46, 48,
50, 51, 56, 64—67, and 69—71 under 35 U.S.C. § 103(a) as unpatentable over
DiRaimondo and Andrews is affirmed.
The Examiner’s decision to reject claims 13—16, 18—20, 39-42, and
72 under 35 U.S.C. § 103(a) as unpatentable DiRaimondo and Andrews is
reversed.
The Examiner’s decision to reject claim 68 under 35 U.S.C. § 103(a)
as unpatentable over DiRaimondo, Andrews, and Sert 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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