William JohnsonDownload PDFPatent Trials and Appeals BoardJan 14, 20212020004579 (P.T.A.B. Jan. 14, 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. 12/289,675 10/31/2008 William Johnson CITI-0333 2022 13708 7590 01/14/2021 Johnson, Marcou, Isaacs & Nix, LLC PO Box 691 Hoschton, GA 30548 EXAMINER OJIAKU, CHIKAODINAKA ART UNIT PAPER NUMBER 3696 MAIL DATE DELIVERY MODE 01/14/2021 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 WILLIAM JOHNSON Appeal 2020-004579 Application 12/289,675 Technology Center 3600 Before JEAN R. HOMERE, CAROLYN D. THOMAS, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4–6, 10–11, 15, and 17, which are all of the claims 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Citicorp Credit Services, Inc. (USA) as the real party in interest. Appeal Br. 3. This appeal relates to Appeal No 2017-004862 (mailed July 31, 2018) in which an earlier panel of the Board reversed a § 101 rejection but affirmed a § 103 rejection of claims 1, 3–8, 10, 11, 15, and 17 over the combination of Mendelovich, Akella, Kulcsar, and Franklin. Dec. 3, 10. Appeal 2020-004579 Application 12/289,675 2 pending in the application. Appeal Br. 8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. TECHNOLOGY The application relates to “posting customer transactions performed with a single . . . relationship number . . . to any number of pre-designated . . . accounts according to pre-defined transaction parameters.” Spec. ¶ 2. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below with the limitations at issue emphasized: 1. A method, comprising: providing a non-programmable relationship presentment card to a customer having a plurality of financial institution transaction accounts, the relationship presentment card having a relationship identifier unique to the customer that remains with the customer throughout a lifetime of the customer's relationship with the financial institution, and the relationship presentment card storing only the unique relationship identifier and storing no data for any of said customer's plurality of financial institution transaction accounts; linking, by a financial institution platform computer having a processor coupled to memory, the unique relationship identifier of the non-programmable relationship presentment card that remains with the customer throughout the lifetime of the customer's relationship with the financial institution to said plurality of the customer's transaction accounts with the financial institution for all transactions via a determination made exclusively by the customer in advance at the time the relationship presentment card is linked based exclusively on transaction data comprising at least one of a merchant category or an industry category for each transaction and without a determination at any time of customer-preferred benefits or Appeal 2020-004579 Application 12/289,675 3 customer-ranked preferred benefits, for all transactions with the relationship presentment card, to which one of the plurality of customer's linked accounts to post each transaction with the relationship presentment card, wherein the financial institution and the customer are two different entities, said unique relationship identifier of the non-programmable relationship presentment card remaining with the customer throughout the lifetime of the customer's relationship with the financial institution regardless of changes or modifications in any of said plurality of the customer's linked transaction accounts with the financial institution; receiving, by the financial institution platform computer, data for a transaction entered at a merchant's transaction terminal having a card reader through which the relationship presentment card is swiped in connection with a transaction, the transaction data consisting at least in part of the unique relationship identifier and being received via a merchant acquirer and a card association processing network; identifying, by the financial institution platform computer, a particular account of the customer with the financial institution to which the unique relationship identifier is linked and to which the transaction should be posted based exclusively on said determination in advance by the customer and the transaction data without requiring a selection by the customer at the time of the transaction of the particular financial institution account to which the transaction should be posted; and posting, by the financial institution platform computer, the transaction exclusively to the identified financial institution account of the customer and a reward in connection with the transaction exclusively to the same financial institution account of the customer to which the transaction with the customer's relationship presentment card is posted. Appeal 2020-004579 Application 12/289,675 4 REFERENCES The Examiner relies on the following references as prior art: Name Reference Date Akella US 2009/0119204 A1 May 7, 2009 Franklin US 5,883,810 Mar. 16, 1999 Kulcsar US 2005/0097039 A1 May 5, 2005 Mendelovich US 2006/0208065 A1 Sept. 21, 2006 REJECTION ON APPEAL Claims 1, 4–6, 10, 11, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over Mendelovich, Akella, Kulcsar, and Franklin. Final Act. 4.2 ANALYSIS Claim 1 recites a “relationship presentment card having a relationship identifier unique to the customer” and the unique relationship identifier “remaining with the customer throughout the lifetime of the customer’s relationship with the financial institution regardless of changes or modifications in any of said plurality of the customer’s linked transaction accounts with the financial institution.” Appellant argues that none of the four prior art references teaches this limitation of the identifier remaining with the customer. Appeal Br. 9–10. However, we agree with the Examiner that this limitation would have been obvious to a person of ordinary skill in the art in view of the cited references. The Examiner cites both Mendelovich and Akella for assigning a unique identifier. Final Act. 2 (citing Akella Abstract), 3 (citing Mendelovich ¶¶ 9, 51–57, Abstract). The Examiner further finds, and we 2 As indicated in footnote 1 above, an earlier panel of the Board previously affirmed an obviousness rejection of the same claims over the same prior art. Appeal 2020-004579 Application 12/289,675 5 agree, that “[g]enerally, it is well-known that a customer relationship with a financial institution is until such a time as either the customer or the bank chooses to terminate the relationship.” Ans. 5. The disputed limitation is essentially a negative limitation because the claimed verb “remaining” is the absence of action, which is equivalent to the negative of an action verb, such as “not changing.” See also Spec. ¶ 22 (“While the physical accounts which the customer 120 has with the financial institution 130 may be changed and modified from time-to-time as the customer’s relationship with the financial institution 130 grows over time, the relationship number remains the same.” (emphasis added)). Applying this to the prior art, absent any change, the unique identifiers in Mendelovich and Akella would remain the same indefinitely, and Appellant has not identified any reason—whether in Mendelovich, Akella, or elsewhere—why a person of ordinary skill in the art would have expected those unique identifiers to change. Therefore, from the perspective of a person of ordinary skill in the art, the unique identifiers assigned in Mendelovich and Akella teach or suggest the disputed “remaining” limitation. Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 4–6, 10, 11, 15, and 17, which Appellant argues are patentable for similar reasons. See Appeal Br. 11–12; 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004579 Application 12/289,675 6 OUTCOME The following table summarizes the outcome of the rejection: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 4–6, 10, 11, 15, 17 103(a) Mendelovich, Akella, Kulcsar, Franklin 1, 4–6, 10, 11, 15, 17 TIME TO RESPOND 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. § 1.36(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation