VISA U.S.A. INC.Download PDFPatent Trials and Appeals BoardMay 6, 20212020004052 (P.T.A.B. May. 6, 2021) Copy Citation 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. 15/972,318 05/07/2018 Brian Jeffrey Maw 8223-1803576(P-40025US04) 4167 144885 7590 05/06/2021 The Webb Law Firm / Visa International ONE GATEWAY CENTER 420 FT. DUQUESNE BLVD, SUITE 1200 PITTSBURGH, PA 15222 EXAMINER ST CYR, DANIEL ART UNIT PAPER NUMBER 2876 NOTIFICATION DATE DELIVERY MODE 05/06/2021 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): patents@webblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN JEFFREY MAW Appeal 2020-004052 Application 15/972,318 Technology Center 2800 Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and LILAN REN, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–2, 4–10, and 12–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 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 Visa International Service Association. Appeal Br. 3. Appeal 2020-004052 Application 15/972,318 2 CLAIMED SUBJECT MATTER The claims are directed to a system and method for opting into non- financial programs (e.g., rewards or loyalty programs) at a point of sale. Spec. ¶¶ 2, 3. Claim 1, reproduced below, is illustrative of the claimed subject matter (formatting and emphasis added to highlight key disputed limitation): 1. An opt-in system comprising a point-of-sale device including a payment device reader, the point-of-sale device configured to: receive, from a payment device associated with a user, payment device information for conducting a transaction; present, through at least one user interface, at least one offer to opt-in to a rewards or loyalty program associated with a commercial entity; receive a user response to the at least one offer to opt-in to the rewards or loyalty program; in response to receiving the user response, automatically fill out an application for the rewards or loyalty program based on the payment device information received from the payment device; and generate a transaction authorization request message based on the user response and transaction information associated with the transaction, wherein generating the transaction authorization request message comprises: combining and formatting the transaction information and the user response into formatted information, and including the formatted information in the transaction authorization request message. Independent claim 9 recites a computer-implemented method for opting-in to a rewards or loyalty program that corresponds to the system Appeal 2020-004052 Application 15/972,318 3 recited in claim 1 (Claims App. 19, 20). Independent claim 17 recites a point-of-sale device similar to that recited in claim 1 (Claims App. 20, 21). The key limitation in dispute as italicized in claim 1 is common to all three independent claims.2 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Cohagan US 2005/0043992 A1 Feb. 24, 2005 Maw US 10,007,922 B2 June 26, 2018 REJECTIONS Claims 1–2, 4–10, 12–17, and 19–20 are rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Cohagan.3 Final Act. 2. Claims 2 and 10 are also rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Cohagan. Final Act. 4. At the outset, we note that the nonstatutory double patenting rejection made by the Examiner over Maw (Final Act. 6) has been overcome with the approved terminal disclaimer filed May 4, 2020 (see also Reply Br. 2). 2 The claims appear to be directed to an abstract idea without significantly more. The Board relies on the involved parties to focus the issues and decides those issues based on facts and arguments presented by the involved parties. See Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010 (precedential)). While the Board is authorized to enter a new ground of rejection, this authority is discretionary. See 37 C.F.R. § 41.50(b). We leave it to the Examiner to decide in any further prosecution of this case whether a new ground of rejection based on the claims being directed to an abstract idea without significantly more (nonstatutory subject matter) should be made. 3 We consider it harmless error that the Examiner characterized the rejection as “based on public use or sale” (Final Act. 2). Appeal 2020-004052 Application 15/972,318 4 OPINION After reviewing each of the Appellant’s arguments for patentability, we determine that a preponderance of the evidence supports the Examiner’s finding that the claimed subject matter of representative claim 1 (as well as any other claims argued separately) is anticipated within the meaning of § 102 in view of the applied prior art of Cohagan. Appellant has also not shown reversible error in the Examiner’s § 103 rejection of claims 2 and 10. Accordingly, we will sustain all of the Examiner’s rejections for essentially those reasons expressed in the Answer and Final Action. We add the following primarily for emphasis. The main dispute is whether the claim language “generating a transaction authorization request message”, that “comprises: combining and formatting the transaction information and the user response into formatted information, and including the formatted information in the transaction authorization request message” as recited in representative claim 1 (and corresponding language in claims 9 and 17), encompasses the instant enrollment and point of sale process and system as taught by Cohagan. (Appeal Br. 12–13; see also Reply Br. 3–4). Appellant argues that the Examiner has not shown that Cohagan teaches the required transaction authorization request message (Appeal Br. 12–13). These arguments are not persuasive of error in the Examiner’s rejection. “[T]he PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, Appeal 2020-004052 Application 15/972,318 5 a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. It is also established that in determining whether a reference anticipates the subject matter recited in a claim, “it is proper to take not account not only specific teachings of the reference 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). Cf. In re Schaumann, 572 F.2d 312, 315 (CCPA 1978) (In order to anticipate, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview of § 102). It is also well settled that specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, to anticipate, one skilled in the art must be able to “at once envisage” the claimed subject matter in the prior art disclosure. In re Petering, 301 F.2d 676, 681 (CCPA 1962). Specifically, Appellant argues that the Cohagan does not teach the claimed transaction authorization request to include the claimed combining transaction information and the user response (Appeal Br. 12–13; Reply Br. 3–4). While the Examiner cites Figure 2 of Cohagan as teaching the claimed transaction authorization request message (Final Act. 2–3), Appellant argues that Cohagan’s Figure 2 teaches away from such functionality by alleging that the user’s response in Cohagan is instead immediately communicated to the retailer system, instead of being combined with the transaction information within the transaction authorization request (Appeal Br. 12–13). Appellant contends that the Examiner’s citation of step 212 of Figure 2 Appeal 2020-004052 Application 15/972,318 6 (Final Act. 2–3) does not involve combining the user response with any sort of message. Id. The Examiner correctly points out that Cohagan’s Figure 2 teaches an instant enrollment process for a loyalty program involving an authorization request (see, e.g., Cohagan’s enrollment application, and waiting for approval response ¶¶ 90–93), and also teaches receiving the user’s affirmative response for participation in the loyalty program (Ans. 7–8). The Examiner explains that, without combining the user’s response and the transaction data, it would not be possible to know to issue instant coupons and temporary account numbers (Id.). A preponderance of the evidence supports the Examiner’s finding that in order to process the user’s enrollment, the user’s request to enroll must be combined with enrollment application (Ans. 8; see Cohagan ¶¶ 86–90). Appellant’s argument that Cohagan teaches away from a transaction authorization request is not persuasive, because Appellant fails to explain with any specificity how Appellant’s alleged immediate communication of Cohagan’s user response would somehow prevent Cohagan from later submitting an authorization request on behalf of the user and based on the user’s affirmative response to participate in the loyalty program (see Cohagan, Fig 2, 214, 216, and 218). Appellant de facto appears to contend that the checkout process and the authorization request of Figure 2 of Cohagan are mutually exclusive process steps (Appeal Br. 12–13, Reply Br. 4). However, Cohagan explains that the checkout process is happening at the same time as the request for loyalty membership, and information is shared among both processes (see Cohagan ¶¶ 86–90). Indeed, step 220 Appeal 2020-004052 Application 15/972,318 7 states “immediate participation” in the loyalty program is obtained during checkout. Notably, Appellant has not directed our attention to any limiting definitions in the Specification, nor does Appellant provide any persuasive reasoning or credible evidence to establish that the Examiner’s interpretation of the language of claim 1 (or corresponding claims 9 and 17) is unreasonable. Therefore, Appellant’s arguments are insufficient to show reversible error. With respect to dependent claims 2 and 10, Appellant argues that Cohagan does not inherently teach the recited printing “based on the user response” (Appeal Br. 13). However, Appellant has not shown reversible error in the Examiner’s position that any retail point-of-sale system has the inherent ability to generate a receipt, and that, in effect, a receipt is more often than not printed for the customer (Ans. 8). Further, since Cohagan allows for immediate participation in the loyalty program, one of ordinary skill would have immediately inferred that the receipt would indeed be based on the user response and include any relevant loyalty coupon(s). The Examiner points out that Cohagan de facto describes the consumer waiting for a receipt at the point-of-sale system (see Final Act. 3 citing Cohagan ¶ 92). The Examiner also points out that Cohagan teaches the ability to print out purchaser profiles, including combined consumer enrollment data and purchase data, which would also include coupons (Ans. 8; see Cohagan ¶¶ 146–148). Appellant has failed to show with any specificity how the printing and receipt elements of Cohagan are differentiated from the claimed printing Appeal 2020-004052 Application 15/972,318 8 recited in Appellant’s claims 2 and 10; thus, Appellant’s arguments are insufficient to show reversible error. With respect to dependent claims 8 and 16, Appellant asserts that Cohagan’s Figure 2 fails to teach or suggest including a user response in a transaction authorization request message, “even generally” (Appeal Br. 14). This is not persuasive or reversible error for reasons set out supra. Again, the Examiner points out that Cohagan teaches a request to approve a transaction and an immediate enrollment into a reward program based on a user’s affirmative response (Ans. 8). Further, the Examiner points to Cohagan’s Figure 2, steps 210-220 to show that the enrollment request and generation of an enrollment application is based on user’s affirmative response to enroll in the loyalty program (Final Act 3; see also Cohagan ¶¶ 86–90). Notably, we do not find—and Appellant has not directed our attention to—any limiting definitions in the Specification, nor does Appellant provide any persuasive reasoning or credible evidence to establish that the Examiner’s interpretation of the language of claims 8 and 16 is unreasonable. With respect to dependent claims 6 and 14, Appellant argues that that Cohagan fails to describe configuring a field on a payment device. In response, Examiner points out that once a user device is scanned, the user information is generated and communicated to appropriate entities so that the reader/scanner configures user information (Ans. 8). One of ordinary skill would have immediately inferred that the reader/scanner configures user information within at least the user fields of the enrollment application. Again, Appellant fails to provide with any specificity why Appellant’s claimed configuring a field on a payment device fails to encompass Appeal 2020-004052 Application 15/972,318 9 Cohagan’s collection of user data and generation of data fields within an enrollment application. With respect to dependent claims 7, 15, and 20, Appellant argues that Cohagan fails to teach or suggest that generating the transaction authorization request message comprises embedding the user response in the customer exclusive data field (Appeal Br. 14). The Examiner points out that Cohagan teaches an authorization request is generated when a user card is scanned at the POS terminal, in order to allow immediate participation in the loyalty program, including generating a temporary ID, and thus must accompany the transaction (Ans. 8). Appellant has not shown any error in the Examiner’s position that the fields of the enrollment application incorporate information from the customer, their transaction, and their loyalty membership identifying information (e.g., Ans. 7; see generally Appeal Br.). Therefore, one of ordinary skill would have readily appreciated or inferred that Copenhagen would necessarily have several fields that are embedded or incorporated into the loyalty enrollment based on the user’s affirmative response to enroll in the loyalty program. Appellant fails to provide with any specificity why Appellant’s claims 7, 15, and 20 fails to encompass Cohagan’s authorization request generation when a user card is scanned at the POS terminal, in order to allow immediate participation in the loyalty program.4 4 We also note that regarding the argued dependent claims, Appellant essentially restates various claim limitations and asserts that Cohagan fails to teach these limitations. Appeal Br. 13, 14. As such, Appellant’s statements may be considered to be nothing more than general allegations of patentability and are not considered separate patentability arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a Appeal 2020-004052 Application 15/972,318 10 Appellant further argues that Examiner’s alternative §103 rejection of claims 2 and 10 is improper because the Examiner fails to show how the claimed printing of a receipt is a known common practice (Reply Br. 15– 16). This argument is not persuasive of reversible error as the printing of a sales receipt and/or coupons at checkout at a store is ubiquitous (see Ans. 9 (pointing out that based on common practice with most retail point-of-sale systems, it is common practice to print customer receipts which summarize the transaction)). Accordingly, the Examiner’s §§ 102 and 103 rejections are affirmed. CONCLUSION The Examiner’s rejections are affirmed. claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Appeal 2020-004052 Application 15/972,318 11 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–10, 12–17, 19, 20 102(b) Cohagan 1, 2, 4–10, 12–17, 19, 20 2, 10 103(a) Cohagan 2, 10 Overall Outcome 1, 2, 4–10, 12–17, 19, 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation