Ex Parte TEDESCO et al - Page 18




          Appeal No. 2004-0403                                                        
          Application 09/100,684                                                      

          implies that the offer is to pay part of the credit card bill.              
          This limitation has two parts: (1) the offer is provided with the           
          billing statement; and (2) the offer is to pay at least a portion           
          of the amount due on the billing statement if the individual                
          becomes a customer of the second entity.                                    
               The examiner responds (answer, p. 14):                                 
               The Examiner notes that the main references used to reject             
               the claims were the McNatt and Linnen references which                 
               clearly show AT&T sending their offer with the user's phone            
               bill; however the payment is given to the user, not directly           
               to the first party.  The references the Appellant cites                
               ("Wall Street Access" and "Crosskey") in the above argument            
               were used to show that it is [sic, was] well known for a               
               second party to pay a portion of the user's bill owed to a             
               first party directly to the first party.  Thus, in                     
               combination, the references show the user receiving a                  
               billing statement from a first party with an offer (from               
               AT&T) to pay the user for becoming a customer of the second            
               party (AT&T), and that payment which is at least a portion             
               of an amount due to the first party is paid directly to the            
               first party (Crosskey).                                                
               Appellants argue that it is clearly untrue that McNatt and             
          Linnen show AT&T sending their offer with the user's phone bill             
          and there is no indication that the entities sending the checks             
          even send bills to the recipients, whether or not separate from             
          the checks (reply brief, p. 4).  It is also argued that the                 
          examiner's new interpretation of McNatt and Linnen is                       
          inconsistent with statements in the examiner's answer (reply                
          brief, pp. 4-5).                                                            
               We agree with appellants that McNatt and Linnen do not show            
          AT&T sending their offer with the user's phone bill, as stated by           

                                       - 18 -                                         





Page:  Previous  9  10  11  12  13  14  15  16  17  18  19  20  21  22  23  Next 

Last modified: November 3, 2007