Fortney, Paul Matthew. et al.

Patent Trials and Appeals Board

Apr 14, 2020

10959637 - (D) (P.T.A.B. Apr. 14, 2020)

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.
10/959,637 10/05/2004 Paul Matthew Fortney 087188-0686756
(058100US)
3188
20350 7590 04/14/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL MATTHEW FORTNEY,
STEPHEN JAY HUG, GLEN DAVID WORDEKEMPER,
RONALD L. PRCHAL, TIMOTHY JAMES HORTON,
and MARTIN G. STIVERS

Appeal 2019-004558
Application 10/959,637
Technology Center 3600

Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and set forth a NEW GROUND OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as The First Data
Corporation. Appeal Br. 2.
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STATEMENT OF THE CASE
Claim 1–6, 15, 16, 31, and 32 stand finally rejected by the Examiner
under 35 U.S.C. § 103(a) as obvious in view of Walker et al. (US 6,330,544
B1, issued Dec. 11, 2001) (“Walker”), Bennett et al. (US 2003/0088552 A1,
published May 8, 2003) (“Bennett”), and McCarthy (US 2004/0015404 A1,
published Jan. 22, 2004) (“McCarthy”). Final Act. 11–12.
Claim 1 is representative and reads as follows (bracketed numbering
added for reference to the limitations in the claims):
1. A method of including a gift card in a mailing to a
customer, comprising:
[1] at a host computer system, receiving a request to
include gift cards in mailings to customers, wherein the request
provides a recurring event associated with a plurality of gift
cards for the customers, the recurring event being specific to the
request, wherein the recurring event comprises one or both of a
birthday or a holiday;
[2] at the host computer, setting up the delivery schedule
based on the recurring event, with a gift card in each mailing;
[3] preparing the mailing by mail processing equipment,
wherein the mailing includes the gift card and wherein the gift
card is inactive, wherein preparing the mailing comprises:
[4] printing information on each of a plurality of
primary components, the information comprising a
unique identifier of each of the plurality of primary
components, wherein each of the plurality of primary
components comprises a card carrier having a card
section and instructions for activating the gift card;
[5] perforating the card carrier such that the
instructions are separated from the card section;
[6] transporting the plurality of primary
components to a stacking unit;
[7] stacking the plurality of primary components
using the stacking unit;
[8] sequentially drawing a primary component
from the stacking unit;
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[9] reading an identifier from the primary
component of the mailing using an optical reader;
[10] identifying the gift card to be matched to the
primary component based on the identifier of the primary
component;
[11] receiving the gift card;
[12] affixing the gift card to the card section of the
card carrier of the primary component of the mailing;
[13] determining whether the gift card and the
primary component are mismatched;
[14] deflecting the gift card and the primary
component into a bypass area if it is determined that the
gift card and the primary component are mismatched;
[15] transferring the primary component to a
folding unit if it is determined that the gift card and the
primary component are not mismatched;
[16] folding the primary component using the
folding unit;
[17] forwarding the primary component and the
gift card to a card detection assembly;
[18] determining whether any errors are present
with one or both of the primary component or the gift
card;
[19] deflecting the gift card and the primary
component into a bypass area if it is determined that
there are any errors are present with one or both of the
primary component or the gift card;
[20] transporting the folded primary component to
an envelope stuffing apparatus if it is determined that no
errors are present with one or both of the primary
component or the gift card;
[21] inserting the folded primary component into
an envelope using the envelope stuffing apparatus;
[22] transporting the stuffed envelope to an
envelope sealing unit; and
[23] applying a fluid to a flap of the envelope and
sealing the envelope;
[24] sending the mailing to a customer;
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[25] at a host computer system, receiving a request from
the customer to activate the gift card, wherein the request
includes an identifier of the gift card that identifies the gift card
and payment for an amount of value to be assigned to the gift
card; and
[26] thereafter, at the host computer, settling a
transaction involving the gift card and a recipient of the gift
card, wherein the recipient and the customer are different.

Rejection
The Examiner found that Walker discloses a method of gift card
mailing to a customer comprising steps of the claimed method. Final Act.
12–16. The Examiner identified the steps recited in claim 1 which are not
described in Walker’s method. Id. at 16–17 (listing steps 5–10, 13–15, 17–
20, 22, and 23 as missing from Walker). To meet these deficiencies, the
Examiner further cited Bennett and McCarthy. Id. at 18. The Examiner
found it obvious to implement the mail processing steps described in Bennet
in Walker’s method for its known and expected advantages of ensuring
accurate mailings. Id. at 19. The Examiner also found it obvious to provide
perforations as described in McCarthy for “allowing for easy detachment of
the affixed gift card, and for any unused or supplementary portions can be
removed or left behind via tearing at the perforated portions . . . and
maintaining the look and feel of a gift certificate while still provid[ing]
important supplementary information such as instructions.” Final Act. 20.
Appellant contends that the cited publications, and McCarthy in
particular, do not teach or suggest providing “a card section and instructions
for activating the gift card” as recited in step [4] of claim 1 and then
“perforating the card carrier such that the instructions are separated from the
card section” as in step [5]. Appeal Br. 15. Appellant states that McCarthy
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discloses providing templates to be printed upon that are already separated
by perforations, which is opposite to what is claimed. Id. Appellant argues
that perforating the card carrier after the instructions have been printed on it,
“provides a distinct benefit over the system of McCarthy.” Id. Specifically,
Appellant explains “by perforating after printing, the location of the
perforations may be customized to match the needs of a particular card
carrier (i.e. based on the relative sizes of the instructions and/or card carrier
portion) which prevents the possibility that a set of instructions extends
beyond a pre-perforated boundary.” Id. Appellant also states that “this
eliminates the need to use a single design of perforated card stock.” Id.
Appellant distinguishes McCarthy’s over the claimed system, arguing that
“proper care” must be taken in McCarthy’s system “to ensure that each item
to be printed is properly formatted to match the preset template design to
ensure that the printed material is matched with an appropriate portion of the
ticket.” Id. at 16.
The Examiner responded that there is no explicit requirement by the
claim language that the perforations are made before the instructions are
placed on the card carrier. Ans. 5 (“[T]here is no explicit requirement by the
claim language of any temporal ordering for the limitations in question. . . .
[The] perforation of the card carrier is not actually required to be performed
solely after the printing operation, nor does the claim prohibit an
implementation in which perforation has already occurred.”).
We begin with claim interpretation. During patent examination
proceedings, claim terms are given “the broadest reasonable meaning . . . in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
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otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
The Examiner’s interpretation of the claim is not the broadest
reasonable interpretation. Step [4] of the claim comprises a “card carrier
having a card section and instructions for activating the gift card.” Step [5]
of the claim recites “perforating the card carrier such that the instructions are
separated from the card section.” The instructions are therefore already
present on the card prior to perforating the card. The Examiner’s
interpretation of the claim ignores the limitation that the card is perforated
“such that the instructions are separated from the card section.” If the
perforation occurred after the instructions were placed on it, then the step of
the claim would not be met because the perforating would not separate the
instructions from the card section.
McCarthy, as discussed by Appellant, describes a sheet with
perforations (¶ 34; Fig 1) which is loaded into a printer and then a ticket is
printed on it (¶¶ 41, 42, 43). The printing is applied to printable areas on a
sheet which are defined by perforations (¶ 34; Fig. 1 showing a sheet with
square printable areas, each defined by perforations at the square perimeter).
Therefore, as argued by Appellant, McCarthy does not describe step [5] of
claim because the perforations are already present prior to it bearing printed
information. Because the Examiner’s determination that limitation of step
[5] is met by McCarthy was based on an improper interpretation of the
claim, we are compelled to reverse the rejection of claim 1, and dependent
claims 2–6, 15, 16, and 31. Independent claim 32 has the same requirement
as claim 1 and is reversed for the same reasons.
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NEW GROUND OF REJECTION
The only difference between Walker, Bennett, and McCarthy in the
rejection set forth by the Examiner is that these publications do not describe
making perforations on card carrier that already contains instructions for
activating the gift card. As discussed above, McCarthy describes forming
perforations in a sheet prior to printing on it. However, one of ordinary skill
in the art would have found it obvious to print on the paper prior to making
the perforations because “selection of any order of performing process steps
is prima facie obvious in the absence of new or unexpected results.” MPEP
2144.04 IV.C. (Ninth Ed., Revision 08.2017, last revised Jan. 2018) (citing
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959); In re Burhans, 154 F.2d
690 (CCPA 1946)). While there might be advantages in printing on the
paper before making the perforations as asserted by Appellant, it is not
unexpected to one of ordinary skill in the art that providing the perforations
after printing on the paper could prevent the possibility that a set of
instructions extends beyond a pre-perforated boundary.
Additionally, it was known prior to the invention that perforations can
be placed paper or card stock after applying printing to it. Scrymgeour et al.
(WO 01/23052 A1, published Apr. 5, 2001) (“Scrymgeour”) discloses
(bracketed numbers added for reference to the specific disclosure):
According to a first aspect of the invention, there is
provided a method of preparing a lottery ticket comprising:
[1] providing a first continuous substrate sheet material
in a first strip having a front surface and a rear surface;
[2] providing a second continuous substrate sheet
material in a second strip having a front surface and a rear
surface;
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[3] printing promotional graphics onto said front surface
of each of the first and second strips;
[4] printing lottery game indicia onto said rear surface of
said first strip wherein the lottery game indicia are applied by
variable image printing;
[5] connecting the rear surface of the first strip to the rear
surface of the second strip to form a row of connected tickets;
[6] providing between each ticket and the next a line of
weakness for separation of each ticket from the next . . . .
Scrymgeour 2.
This disclosure shows that “printing” is applied to a substrate (steps
[3], [4]) and, when the tickets are formed by connecting the two strips (steps
[1] and [2]) together (step [5]), “a line of weakness” is provided between the
tickets in order for them to be subsequently separated (step [6]). See also
Scrymgeour 6–7 (disclosing printing on the strips after which a “plurality of
lines of weakness 130 are then introduced into the front surface 116 of the
second strip 114 at regular intervals such that each line of weakness 130
extends around one of the lottery indicia 126 on the rear surface 106 of the
first strip 102, thereby forming a plurality of break-open windows 131 for
viewing the lottery indicia 126”).
Based on the obviousness of switching the order of steps described in
McCarthy and, alternatively, the disclosure in Scrymgeour that a substrate
can be printed on first and then perforated afterwards, we find that claim 1
would been obvious to one of ordinary skill in the art at the time of the
invention. One of ordinary skill in the art would also have had reason to
modify the order of steps in McCarthy because the selection of any order
would achieve the same result in producing perforated gift cards in which
the instructions could be separated from the card.
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While Appellant asserts the advantage of printing first, and
perforating second, to prevent instructions from extending beyond perforated
boundary and to ensure matching of the printing with the design, the
perforations also have to be aligned properly to avoid placing them on the
instructions or any design, if present. Moreover, as established by
Scrymgeour, this order of steps was known in the art.
Pursuant to 37 C.F.R. § 41.50(b), claims 1 and 31 are rejected under
35 U.S.C. §103(a) as obvious in view of Walker, Bennett, McCarthy, and
Scrymgeour. We leave it to the Examiner to determine whether dependent
claims 2–6, 15, 16, and 31 are obvious based on the cited combination of
prior art, e.g., for the same reasons set forth the rejection based on Walker,
Bennett, and McCarthy.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–6, 15,
16, 31,
32
103(a) Walker, Bennett,
McCarthy
1–6, 15,
16, 31,
32

1, 32 103(a) Walker, Bennett,
McCarthy,
Scrymgeour
1, 32
Overall
Outcome
1–6, 15,
16, 31,
32
1, 32

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
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37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.

REVERSED; 37 C.F.R. § 41.50(b)