MASTERCARD INTERNATIONAL INCORPORATED

Patent Trials and Appeals Board

Aug 6, 2020

13895123 - (D) (P.T.A.B. Aug. 6, 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.
13/895,123 05/15/2013 Brian Maw 37537.0014U4- 8810
126944 7590 08/06/2020
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/06/2020 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN MAW and JENNIFER DOGIN
Appeal 2020-002517
Application 13/895,123
Technology Center 3600
Before JOSEPH L. DIXON, JOHN A. EVANS, and
LARRY J. HUME, Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 8, 11–15, 18–20, 22, 24, 25, 27,
and 28, which are all claims pending in the application. Appellant has
canceled claims 1–7, 9, 10, 16, 17, 21, 23, and 26. See Appeal Br. 10–14
(Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Mastercard
International, Inc. Appeal Br. 1.
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Application 13/895,123

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STATEMENT OF THE CASE2
The claims are directed to a merchant voucher offer processing
method and apparatus. See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention “relate in general to financial
services. Aspects include an apparatus, system, method and computer-
readable storage medium to enable the linkage of electronic offer vouchers.
Other aspects include presenting and using the linked electronic offer
vouchers in payment transactions.” Spec. ¶ 2.
Exemplary Claims
Claims 8, reproduced below, is representative of the subject matter on
Appeal (emphases added to dispositive prior-art limitation):
8. An apparatus comprising:
a network interface configured to receive, from a user
device, a proposed electronic voucher comprising a first
merchant identifier and a second merchant identifier; and
a processor configured to:
transmit to a first merchant computer associated with the
first merchant identifier, the proposed electronic voucher and a
time limit for accepting the proposed electronic voucher via the
network interface;
transmit via the network interface, to a second merchant
computer associated with the second merchant identifier, the

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 29, 2020); Reply Brief (“Reply Br.,” filed Feb. 10, 2020); Examiner’s
Answer (“Ans.,” mailed Dec. 13, 2019); Final Office Action (“Final Act.,”
mailed Mar. 28, 2019); and the original Specification (“Spec.,” filed
May 15, 2013) (claiming benefit of US 13/858,616, filed Apr. 8, 2013, now
abandoned).
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proposed electronic voucher and a time limit for accepting the
proposed electronic voucher;
receive via the network interface, prior to the time limit,
a first response indicative of an approval of the proposed
electronic voucher from the first merchant computer;
receive via the network interface, prior to the time limit,
a second response indicative of an approval of the proposed
electronic voucher from the second merchant computer;
determining, based on the first merchant identifier and
the second merchant identifier, that the first merchant identifier
and the second merchant identifier are not linked in a merchant
database; and
generate an association in the merchant database between
the first merchant identifier and the second merchant identifier
based on the proposed electronic voucher, the first response
indicative of the approval of the proposed electronic voucher,
and the second response indicative of the approval of the
proposed electronic voucher.
REFERENCE
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Harniman et al. (“Harniman”) US 7,848,940 B1 Dec. 7, 2010
REJECTION
Claims 8, 11–15, 18–20, 22, 24, 25, 27, and 28 stand rejected under
35 U.S.C. § 102(a)(1) as being anticipated by Harniman. Final Act. 7;
Ans. 3.

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ISSUES
Appellant argues (Appeal Br. 4–8; Reply Br. 2–4) the Examiner’s
rejection of claim 8 under 35 U.S.C. § 102(a)(1) as being anticipated by
Harniman is in error. These contentions present us with the following
issues:
Did the Examiner err in finding the cited prior art discloses an
apparatus that includes, inter alia, the limitation of “determining, based on
the first merchant identifier and the second merchant identifier, that the first
merchant identifier and the second merchant identifier are not linked in a
merchant database,” as recited in claim 8?3
PRINCIPLES OF LAW
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). “Inherency,
however, may not be established by probabilities or possibilities. The mere

3 Appellant makes further arguments with respect to the “generat[ing] an
association in the merchant database between the first merchant identifier
and the second merchant identifier” limitation of claim 8 in the Appeal Brief
(see Appeal Br. 6–8), but does not renew this particular argument or
otherwise rebut the Examiner’s findings in the Reply Brief in response to the
Examiner’s findings in the Answer. See Ans. 8–9.
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fact that a certain thing may result from a given set of circumstances is not
sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can Co. USA,
Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
ANALYSIS
We agree with particular arguments set forth by Appellant with
respect to claims 8, 11–15, 18–20, 22, 24, 25, 27, and 28 and we highlight
and address specific findings and arguments regarding claim 8 for emphasis
as follows.
The Examiner initially cites Harniman in Figure 8 (elements 4040 to
4090) and Figure 9 as disclosing the contested “determining” step. Final
Act. 9. In the Answer, the Examiner adds additional findings that Figure 7
and column 6, lines 54–67 of Harniman are relevant to anticipation of the
“determining” step. The cited disclosure of Harniman states:
The supplier-partners 220, 230 and CPO central server 160 are
in communication with one another to effectuate the partner
allocation process and the partner fulfillment process. The
partner allocation process identifies which supplier-partners
220, 230 offer service from the airport or hotel location
identified in the customer CPO, and determines the order of the
supplier-partners (if more than one) that may view or make the
offer. The partner fulfillment process is where the supplier-
partner 220, 230 informs the principal-partner of a successful
bounce back rental and the associated data (including referral
and commission information) is transferred to the principal and
executed. Both of these processes are described more fully
below with reference to FIGS. 7 and 9, respectively.
Harniman col. 6, ll. 54–67.
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Appellant contends “Harniman generally teaches a system for
generating ‘bounce back’ offers based on accepted ‘conditional purchase
offers.’” Appeal Br. 5. Appellant further argues:
[E]lements 4040 to 4090 in Figure 8 of Harniman simply show
a flowchart of how a “bounce back” offer for a purchase at a
“supplier-partner” (e.g., an automobile rental company) is
generated in response to a conditional purchase offer being
accepted by a seller (e.g., an airline). See Harniman at FIG. 8
and 12:32-57 (describing “[b]ounce back page construction”).
Additionally, Figure 9 of Harniman simply shows a flowchart
illustrating the “partner fulfillment process” that is triggered
once a conditional purchase offer is accepted. See id. at FIG. 9
and 13:40-56. Harniman briefly teaches that databases are
consulted in certain steps shown in Figure 8, such as when the
CPO management system determines whether a vendor (e.g., a
“supplier-partner”) meets the customer’s requirements. See id.
at 12:58-60 (“Selecting a vendor (supplier-partner) (step 4040),
involves determining the vendor’s technical capabilities by
accessing (step 4050) data in the Vendor Capability Table
Database 430. In one embodiment, the minimal requirements
for a vendor to participate is the ability to serve the principal’s
customer in the destination location or to provide negotiated
rates to the principal’s customers.”). However, Harniman does
not teach determining that two merchants are not linked in a
database.
Appeal Br. 5–6.
We have reviewed the cited portions of Harniman and, in agreement
with Appellant, we find no disclosure in the cited prior art portions that the
two merchant identifiers are determined not to be linked in a merchant
database as claimed.
For essentially the same reasons argued by Appellant (id.), we reverse
the Examiner’s anticipation rejection of independent claim 8, and also the
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anticipation rejection of independent claim 15, which recites the disputed
limitation in commensurate form. For the same reasons, we also reverse the
rejections of all claims 11–14, 18–20, 22, 24, 25, 27, and 28 that variously
depend therefrom.
CONCLUSIONS
The Examiner erred with respect to the anticipation rejection of claims
8, 11–15, 18–20, 22, 24, 25, 27, and 28 under 35 U.S.C. § 102(a)(1), and we
do not sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
8, 11–15, 18–20,
22, 24, 25, 27, 28 102(a)(1) Harniman
8, 11–15, 18–20,
22, 24, 25, 27,
28
REVERSED