EX 2014
`
`REMARKS
`
`This Amendment is made in response to the Office Action dated June 13, 2005. A
`
`Request for an Extension of Time is submitted herewith to permit the filing of this Amendment
`
`'
`
`in the third month. Applicants appreciate the courtesies that were extended to the undersigned in
`
`a first interview of September 7, 2005 with Examiner Lastra and in second interview of
`
`November 16, 2005 with Examiner Lastra and SPE Raquel Alvarez. In the following, the
`
`undersigned will respond to each rejection and objection by paragraph number as appears in the '
`
`outstanding Office Action.
`
`With regard to paragraphs 2 and 5, Applicants appreciate the withdrawal of the rejection
`
`under 35 U.S.C. § 101 of claims 1-4 and 13-14 as being non-statutory subject matter, as
`
`indicated at first interview with Examiner Daniel Lastra on September 7, 2005.
`
`With regard to paragraph 3, Applicants have amended each of claims 5—12 and 15-20 as
`
`being withdrawn. The undersigned apologizes for any inconvenience for the Examiner in view
`
`of this oversight.
`
`With respect to paragraph 4, the undersigned and the Examiner discussed at the noted
`
`interview whether complete Information Disclosure Statements were filed on July 28, 2004 and
`
`November 17, 2004. The Examiner indicated that there were no forms PTO-1449 to be found in
`
`the Office’s file of this application. The undersigned confirmed that such PTO—1449 forms were,
`in fact, submitted to the Patent Office. To reconcile this matter, the Examiner suggested that
`-
`
`copies of the PTO-1449 forms that Applicant has retained in his file be forwarded to the
`
`Examiner, whereby the Office’s record Swill be made complete and this objection overcome.
`
`With respect to paragraph 6, Applicants respectfully traverse and request reconsideration
`
`of the rejection of claims 1-4 and 13-14 as being definite under 35 U.S.C. § 112, second
`
`Pagelof9
`24349/000/6987993
`
`14
`
`Loyalty 2033
`
`Delta, et al. V. Loyalty
`
`CBM2014-00096
`
`

`

`paragraph. In particular, the Examiner has objected to the terms “permitting” and “facilitating”.
`
`In response, Applicant by this Amendment has amended claims 1-4 and 13-14 to avoid the use of
`
`“permitting” and “facilitating”, whereby the terms objected to by the Examiner have been
`
`removed.
`
`With regard to paragraph 7, Applicants respectfully traverse and request reconsideration ‘
`
`of the rejection of claims 1-4 and 13-14 as being anticipated under 35 U.S.C. § 102(e) in view of
`
`US. Patent No. 6,594,640 of Postrel (herein “the Postrel Patent”).
`
`In particular, Applicants respectfiilly traverse and request reconsideration of the
`
`Examiner’s assertion that the Postrel Patent teaches as recited in paragraphs (b) and (c) of
`
`Claim 1 that “(b) permitting the first and second point issuers to set the point withdrawal and
`
`deposit rates of their first and second points respectively (see column 4, lines 3-45; column 3,
`
`lines 35-45; column 5, lines 35-40; column 6, lines 37-47”; and “(c) determining an equivalent
`
`number of the second points based upon the point withdrawal and deposit rates of the first and
`
`second point issuers respectively, and the first number of the first points (see column 4, lines 3-
`
`45; column 3, lines 35-45; column 5, lines 35-40; column 6, lines 37-47; column 7, lines 35-40;
`
`column 7, lines 63-67.” By contrast to the Examiner’s above cited statement, the Postrel Patent
`
`. is silent as to permitting its point issuers to set withdrawal and deposit exchange rates, much less
`
`to use such withdrawal rates and deposit rates to calculate an equivalent number of second
`
`points. Further, the undersigned has studied the above cited portions of the Postrel specification
`
`that were relied upon by the Examiner for his alleged disclosure of paragraphs (b) and (c) of
`
`Claim 1 without finding any indication or teaching of the use of point withdrawal and deposit
`
`rates. If the Examiner should persist that the Postrel Patent discloses point withdrawal and
`
`deposit rates as recited in paragraph (b) of claim 1, or the uses of such rates to determine the
`
`Page 2 of 9
`
`24349/000/698799.3
`
`15
`
`

`

`equivalent number of second points, applicant respectfully requests the Examiner to identify the
`
`specific language within the Postrel Patent upon which he relies.
`
`‘
`
`Further, Applicants respectfully traverse and request reconsideration of the Examiner’s
`statement that paragraph (d) of Claim 1 is taught by Postrel and, in particular, that the
`V
`
`“exchanging the first number of first points for a second equivalent number of second points (see
`
`column 4, lines 3-45, column 3, lines 35-45; column 5, lines 35-40; column 6, lines 37-47;
`
`column 10-12; column 15—20).” The undersigned has carefully considered the above portions of
`
`the Postrel Patent as applied by the Examiner to paragraph (d) of claim 1 without finding any
`
`teaching of the recited exchange of first points for second points. In contrast to the teachings of _
`
`the Postrel Patent, Applicants teach the exchange or transmission of award points from one of it
`
`issuer terminals 130a, b and c to another of the these terminals 130a, b and c. However, the
`
`specification of the Postrel Patent is clear that in contract to the Examiner’s interpretation of the
`
`Postrel Patent, Postrel teaches that reward points as issued from each of the servers 10, 12 and 14
`
`are transmitted via the network 2 to be stored in a reward exchange account, appreciating that a
`
`plurality of such reward exchange accounts for the various members are stored in corresponding
`
`ones of the files within the second database 54.
`
`It is clear that the Postrel Patent does not
`
`disclose transmitting reward points from one of the servers 10, 12 and 14 to another of the
`
`servers or issuers 10, 12 or 14. See column 6, lines 1 to 53 of the Postrel Patent.
`
`For reasons similar to those stated above with respect to Claim 1, Applicants respectfully
`
`traverse and request reconsideration of the Examiner’s statement that the Postrel Patent teaches
`
`that the first and second point issuers set respectively the point withdrawal and deposit rates as
`
`recited in applicant’s claim 3. Further, Applicant respectfully traverses and requests .
`
`Page 3 of 9
`
`24349/000/698799.3
`
`16
`
`

`

`reconsideration of the Examiner’s assertion that the Postrel Patent teaches the determining an
`
`equivalent number of the second points based upon the point withdrawal and deposit rates of the
`
`first and second point issuers as recited in step (iii) of paragraph (c) of Claim 3.
`
`Further, Applicants respectfully assert that the Postrel Patent discloses none of the
`
`following recitations of Claim 13 of the Postrel Patent: the preamble, paragraph (a), paragraph
`
`(c) and paragraph (d). In particular, Applicant respectfully traverses and requests reconsideration
`
`of the Examiner’s assertion that Postrel teaches the following recitations that correspond to: 1)
`
`the preamble of Applicant’s. claim 13, “A method of exchanging first points that are issued by a
`
`first point issuer for second, different points that are issued by a second point issuer at exchange
`
`rates set by the first and second point issuers respectively;” and 2) paragraph (a) entering the
`
`“first and second exchange rates by the first and second point issuers respectively (see column 3,
`
`line 33 - column 4, line 45; column 6, lines 35-67; column 10, lines 15-20.” By contrast, the
`
`Postrel Patent discloses in its Figure 4 a plurality of reward servers 10, 12 and 14, each of which
`
`serves as an issuer of points. Even so, the Postrel Patent fails to disclose that each of the servers
`
`or issuers 10, 12 and 14 is able to issue different points with different exchange rates as set by
`
`each of the issuers 10, 12 and 14. The undersigned has carefully considered those portions of the
`
`Postrel Patent set out above, upon which the Examiner has relied on for his characterization of
`
`the preamble and paragraph (a) of Claim 13. The most relevant portion of the Postrel Patent as
`
`identified by the Examiner is found at column 10, lines 18-20, which reads: “(t)he system can
`
`prioritize the order of points being traded based on a predetermined set of rules such as in higher
`
`value points being issued before those with a lower value.” This single cited sentence does not
`
`teach whether the referred to values are being used as exchange rates, much less that these points
`
`are being set by the respective issuers from which the points are issued.
`
`Page 4 of 9
`24349/000/698799.3
`
`17
`
`

`

`Further with regard to paragraph (b) of Claim 13, Applicants respectfully traverse and
`
`request consideration of the Examiner’s assertion that the Postrel Patent teaches the entering “of
`
`a customer’s order for exchanging first points for second points (see column 3, line 35 — column
`
`4, line 43; column 6, lines 35-67; column 10, lines 15-20).” The undersigned has carefully
`
`studied each of these portions of the Postrel Patent that were identified by the Examiner as being
`
`relevant to paragraph (b) of Claim 13, without finding any teaching of exchanging first points for
`
`second points, much less than facilitating the entry of first and second exchange rates to make
`
`such a transaction.
`
`In this regard, the Examiners’ attention is drawn to Figure 4, Where the
`
`Postrel Patent discloses that each of the reward servers or issuers 10, 12 and 14 transmits over a
`
`network 2 its corresponding points to be inputted into one of the reward exchange accounts
`
`making up the second data base 54. Applicant respectfully asserts that though there are a variety
`
`of points issued from the corresponding servers or issuers 10, 12 and 14 that are disposed in a
`
`reward exchange account, there is no teaching in the Postrel Patent that the points inputted into a'
`
`reward exchange accounts are exchanged for each other._ The processing and transferring of
`
`points from each of the server issuers 10, 12 and 14 to the trading server 20 and eventually to the
`
`corresponding reward exchange account (as stored in the database 54) of the member are best
`
`disclosed in column 6 and Figure 4 of the Postrel Patent. Study of this portion of the Postrel
`
`Patent clearly fails to identify any teaching of Applicant’s recited “exchanging first points for
`
`second points”.
`
`Further as recited with respect to paragraphs (c) and (d) of Claim 13, Applicant
`
`respectfully traverses and requests reconsideration of the Examiner’s statement that the Postrel
`
`Patent teaches, “(c) determining the presence or absence of each of the first and second exchange
`
`rates (see column 4, lines 1-45); and (d) blocking the exchange of points in the absence of either
`
`Page 5 of 9
`24349/000/6987993
`
`18
`
`

`

`of the first or second exchange rates (see column 4, lines 1-45).” The undersigned respectfully
`
`and emphatically states that the relied upon portion of column 4, lines 1-45 contains no teaching
`
`of determining the presence or absence of the exchange rates, much less the blocking of the
`
`exchange of points in the absence of entry of either of the first or second exchange rates. If the
`
`Examiner persists in this interpretation of the Postrel Patent, he is respectfully requested to
`
`identify the specific language upon which he relies to reject recitations (c) and (d) of Claim 13 of
`
`the Postrel Patent.
`
`Appreciating that independent claim 14 is similar to claim 13, Applicants respectfully
`
`traverse and request reconsideration of the rejection of claim 14 for the various reasons stated
`
`above with respect to claim 13. In particular, applicant respectfully traverses and requests
`
`reconsideration of the Examiner’s statement that the Postrel Patent teaches the subject matter of
`
`the following recitations of Claim 14: the preamble; paragraph (a), step (iii); and paragraph (b),
`
`step (ii).
`
`At the second interview, SPE Alvarez indicated that the cited Postrel Patent disclosed and
`
`claimed that each loyalty point issuer could select its own deposit rate and withdrawal rate,
`
`whereby each issuer could control the prices at which points could be sold and purchased.
`
`In the
`
`following, the parts of the Postrel Patent that SPE Alvarez deemed to be pertinent to the
`
`Applicants’ rates are reproduced and commented on by the undersigned:
`
`a) C01. 3, lines 33-35: “An exchange rate will be established for the
`relative consideration received by the companies involved in the transaction.”
`
`The above quoted part merely mentions “exchange rate.” Even so the quoted portion
`
`does not disclose the problem that Applicants’ invention solves, namely enabling each point
`
`issuer to control the price at which its points are sold and/or purchased, much less the use of the
`
`Page 6 of9
`24349/000/698799.3
`
`19
`
`

`

`withdrawal rate and deposit rate that enable the issuers to control the prices at which they sell
`
`and buy their points.
`
`b) Col. 7, lines 62 — 66: ”If for instance, a frequent flyer program supports
`multiple classifications of miles that may be redeemed differently, the user may
`optionally define how those resources should be managed during redemption.”
`
`Though this part describes that a program or issuer may support different kinds of points
`
`or miles and may redeem its miles differently, it fails to disclose Applicants’ use of withdrawal
`
`'
`
`and deposit rates to enable an issuer to control the price of its points.
`
`0) Col. 7, lines 49-54: “For example, if a user has a preferred air carrier
`where the user would like to retain mileage in that reward system, the user may
`specify a priority of use indicating the reward resources that should be exhausted
`prior to accessing the most desirable rewards. Following the selection of an item
`to be acquired, the server may contact all of the reward resources according to this
`profile to selectively redeem each as required to meet the purchase price.”
`
`This part describes a system that permits a user to rank each of a set of programs, issuers
`
`or reward systems to determine the order in which points will be redeemed from the programs to
`
`purchase a selected reward. This part is silent as to enabling each user to control the purchase
`
`and selling prices of it points.
`
`d) Col. 11, line 61 to C01. 12, line 7; “The interface would allow a user to
`login using the frequent flyer account information or preferably, the trading server
`account login id and password, where the user may use points awarded from
`another air carrier or point server to ’pay’ for the services accessed. The account
`balance from the trading server may be transferred to the local controller prior to
`take off for each user that logs in to the trading server. Once the plane has
`departed, depending on the linking or access capability afforded by the air carrier
`or service provider, the user’s account may be modified in real time or upon
`reconnection following landing, based on services selected by the traveler. If a
`real time link is supported, the user’s exchange account may be periodically
`debited according to the services selected and duration of use.”
`
`This part relates to a system that permits in flight services to be paid for by redeeming
`
`loyalty points from the user’s issuer even when the issuer is another airway. Provision is made
`
`Page 7 of 9
`24349/000/698799.3
`
`20
`
`

`

`to transfer the user’s account to an onboard local controller prior to take off. After takeoff, the
`
`user’s account may be debited in flight if there is a suitable link or, after landing, by
`
`reconnection. This part is not at all relevant to Applicants’ use of their withdrawal and deposit
`
`exchange rates.
`
`e) Col. 8, lines 13-26, Figure 9, step 906: “The trading server has the
`ability to receive offers from reward servers or merchants (step 806 and 808)
`which may the be directed to users based on the database profile information
`provide by the user (Fig. 9). At step 900, the reward server contacts the trading
`server with an offer to redeem points. Similarly, a merchant may contact the
`trading server with an offer to be distributed to members (step 902). The trading
`server records the offer in a database (step 906), and the trading server may record
`a limited conversion rate in its database (step 906). The reward server may then
`contact the user with an offer at step 908. Optionally, the process may branch to
`the flow diagram in Fig. 6 discussed above (step 910).
`
`Figure 9 and. the above quote describe generally a process by which a user redeems its
`
`points. Step 906, as identified by SPE Alvarez, records a redeeming order for redemption before
`
`the trading server stores a “limited conversion rate” it in database. Postrel is silent as to how to A
`
`use that stored conversion rate to redeem points, much less as to how to transfer points from one
`
`user to another in a manner that enables the user to control the price at which the points are
`
`withdrawn and subsequently deposited, as taught by Applicants.
`
`In summary, Applicants respectfully state that the. Postrel Patent does not teach their
`
`claimed invention, much less the entry by the program reward points and storage in that terminal
`
`data base of exchange rates for the points of the selected one royalty program, detect the absence
`
`of exchange rates for the selected one point program to transmit a blocking signal, and to
`
`respond to the blocking signal to prevent the transmission of the command.
`
`Page 8 of 9
`
`24349/000/698799.3
`
`21
`
`

`

`If the Examiner is unable to allow this application, he is requested to place a call to the
`
`undersigned to suggest those Amendments whereby this application may be passed to issuance.
`
`Respectfully submitted,
`
`COWAN, LIEBOWITZ & LATMAN, P.C.
`
`
`
`1133 Avenue of the Americas
`
`New York, NY 10036-6799
`Telephone: (212) 790—9228
`Fax: (212) 575-0671
`
`Page 9 of 9
`
`24349/000/698799.3
`
`22
`
`