Daniel Rosskamm et al.

Patent Trials and Appeals Board

Jan 8, 2020

13932354 - (D) (P.T.A.B. Jan. 8, 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.
13/932,354 07/01/2013 Daniel Rosskamm 201301261 9954
91547 7590 01/08/2020
Target Brands Inc.
1000 Nicollet Mall
TPS-3165
Minneapolis, MN 55403
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/08/2020 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):
USPTO.Mail@target.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL ROSSKAMM, JOSEPH BRENNY,
STEVEN ORZEL, and STEPHEN L. EASTMAN

Appeal 2018-005203
Application 13/932,354
Technology Center 3600

Before JEAN R. HOMERE, ERIC B. CHEN, and
JAMES B. ARPIN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6, 14, 16, and 18. Claims App.
Claims 5, 15, 17, 19, and 20 are canceled. Id. Claims 7–13 are withdrawn.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer to the Specification, filed July 1, 2013 (“Spec.”); Final Office
Action, mailed June 26, 2017 (“Final Act.”); Appeal Brief, filed November
7, 2017 (“Appeal Br.”); Examiner’s Answer, mailed March 9, 2018
(“Ans.”), and Reply Brief, filed April 20, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Target
Brands, Inc. Appeal Br. 3.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for automatically enrolling an eligible primary product
in a service plan product. Spec. ¶ 6. In particular, the service plan
product (10) includes a tag (14) referencing information linking the primary
product to the service plan product at a single point of sale (POS) during
purchase of the primary product. Id. ¶¶ 6, 20, Fig. 4.
Claims 1 and 14 are independent. Claim 1, reproduced below with
disputed limitations emphasized in italics, is illustrative of the claimed
subject matter:
1. A method of enrolling a primary product in a service
plan, the method comprising:
processing the primary product for purchase at a point-
of-sale (POS) terminal;
processing a separate, tangible service plan product
associated with the service plan for purchase at said POS
terminal while conducting the processing of the primary
product for purchase, wherein the service plan product includes
a tag having account identification means, the tag being
configured to be attached to the primary product, wherein the
POS terminal automatically stores information relating to the
primary product linked to the account identification means from
the tag in a database and automatically activates a service plan
account corresponding to the account identification means for
a predefined term, thereby linking the service plan product with
the primary product; and
displaying the service plan product as one of a plurality
of service plan products as part of a retail display readily
accessible by consumers and spaced from the POS terminal,
each of the plurality of service plan products is associated with
one of a first service plan price tier and a second service plan
price tier, each service plan product associated with the first
service plan price tier being at least partially a first color and
each service plan product associated with the second service
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plan price tier being at least partially a second color to visually
differentiate the service plan products associated with the first
and second service plan price tiers, wherein displaying the
service plan product occurs prior to processing the primary
product and processing the separate service plan product.
III. REFERENCES
The Examiner relies upon the following references:
Name3 Number Published Filed
Pederson US 2002/0133425 A1 Sept. 19, 2002 Mar. 19, 2002
Frangiosa US 2005/0228724 A1 Oct. 13, 2005 Jan. 7, 2005
Ehling US 2008/0040176 A1 Feb. 14, 2008 July 31, 2006

IV. REJECTIONS4
The Examiner rejects the claims as follows:
1. Claims 1–4, 6, 14, 16, and 18 are rejected under 35 U.S.C. § 101 as not
directed to patent eligible subject matter. Final Act. 2–8.
2. Claims 1–4, 6, 14, 16, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Ehling, Frangiosa, Official Notice,
and Pederson. Id. at 8–14.
V. ANALYSIS
1. Patent Eligibility Rejection
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to

3 All reference citations are to the first named inventor only.
4 The Examiner withdrew the §112, second paragraph rejections. Ans. 3.
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include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “[a] claim drawn to subject matter otherwise statutory does
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not become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook), id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The Office published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 PEG”). Recently, the Office
published an update to that guidance. October 2019 Patent Eligibility
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Guidance Update, 84 Fed. Reg. 55,942 (hereinafter “PEG Update”). Under
the 2019 PEG and PEG Update, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes); and

(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).5

See 2019 PEG, 52, and 55–56. Only if a claim: (1) recites a judicial
exception; and (2) does not integrate that exception into a practical
application, does the office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 PEG 56.
We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
In the first part of the Alice inquiry, the Examiner determines claims
1–4, 6, 14, 16, and 18 are directed to the abstract idea of “selling and
activating an extended service/warranty for a purchased product,” which is a
fundamental economic practice long prevalent in our system of commerce.
Final Act. 2–3. According to the Examiner, the underlying steps of

5 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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processing a primary product for a purchase at a POS terminal, processing a
separate service plan associated with the purchased product to display a
service product plan associated with a service plan price tier are all steps,
which are tantamount to organizing human behavior. Id. at 3–5. Further,
the Examiner determines that the claims are not directed to an improvement
of computer technology, but to the abstract idea itself. Id. In particular, the
Examiner analogizes the claimed limitations to the following:
[A] cashier gathering these items so that they can be sold to a
customer, or a cashier looking for a price for these items at the
cash register, or a customer purchasing both of these products at
the POS. The steps directed to displaying the service plan
product, could be interpreted as a human setting up a shelf with
these products. . . .
[I]t is respectfully submitted that Appellant admits that the
problem the present invention attempts to solve is not rooted in
technology (e.g., “existing retail extended warranty or other
service plan products are not consumer friendly as consumers
are subjected to high-pressure sales of such plans, and
consumers are often confused as to the terms and/or hidden fees
of such plans” Brief, page 11) as required in Enfish; and unlike
Diehr, there is no abstract idea with limitations that are
“significantly more.” The present case requires routine
computer elements to perform routine functions: i.e., gather,
store and retrieve data. Unlike Enfish, there is nothing in the
Specification of the present application that states or explains
that a technology is being improved. Instead, similar to Electric
Power Group (830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir.
2016)).
Ans. 3–4.
In the second part of the Alice inquiry, the Examiner determines the
claims do not recite additional elements sufficient to amount to significantly
more than the abstract idea of “selling and activating an extended
service/warranty for a purchased product.” Final Act. 2. The Examiner
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determines that the recitation of using a computer at a POS to link
information obtained from a database is directed to using a generic computer
to perform functions that are routine, conventional, and well-understood to
one of ordinary skill in the art. Id. at 6–7.
Appellant’s Contentions
Appellant argues while the claims may be related to the idea of
“enrolling a primary product in a service plan,” the recited features or the
combination of the POS terminal, tangible service plan product, service plan
product tag and retail display defined in the claims provide “significantly
more than the alleged abstract idea of ‘selling an extended warranty for a
product.’” Appeal Br. 11. Further, Appellant argues that the methodology
of processing the primary product and service plan at the POS terminal to
automatically activate the service plan account thereby linking the service
plan product with the primary product, as defined in the claims, provides a
technological solution that confines the claims to a particular useful
application. Id. at 11–12. According to Appellant, the claims are patent
eligible not because they are implemented on a computer, but because they
improve the processing and administration of service plan/warranty
products. Id. at 12.
Our Review
Applying the guidance set forth in the 2019 PEG, we determine
whether the Examiner has erred in rejecting the claims as directed to patent
ineligible subject matter.
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
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subject matter identified by 35 U.S.C. § 101: process, machine,
manufacture, or composition of matter. Because independent claims 1 and
14 recite a “method” including a number of steps, claims 1 and 14 fall within
the “process” category of patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, such as fundamental economic practices; and (3) mental processes.
Independent claim 1 recites, inter alia, the following claim steps performed
by a computer:
(1) Processing at a POS terminal a primary product for
purchase;
(2) Displaying a tangible service plan associated with the
primary product having an identification tag linking in
a database the service plan and the primary product;
and
(3) Processing to activate automatically the service plan at
purchase of primary product.
At the outset, we note Appellant does not dispute the Examiner’s
determination that these limitations relate to the idea of “selling and
activating an extended service/warranty for a purchased product,” which is a
fundamental economic practice long prevalent in commerce. Appeal Br. 11.
Instead, Appellant merely asserts that the recited claim steps are
significantly more than the asserted abstract idea. Id. Therefore, we find
unrebutted the Examiner’s determination that the cited limitations are steps
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of “managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions),” which the 2019 PEG provides are directed to “[c]ertain
methods of organizing human activity.” 84 Fed. Reg. 52. Accordingly, we
agree with the Examiner that independent claims 1 and 14 recite the judicial
exception of a method of organizing human activity.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h).6 “Integration into a
practical application” requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. 84 Fed. Reg. at 53.
Appellant’s claims 1 and 14 recite computer-related limitations (e.g., a
POS terminal, a database). Appellant argues the following:

6 Specifically, we determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a
mobile device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
Id.
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The methodology defined in the claims thus provides a physical
technological solution (i.e., by processing the primary product
and service plan product at the POS terminal, automatically
activating the service plan account and linking the service plan
product with the primary product) to address the shortcomings
in the existing systems. Indeed, the claimed limitations are not
simply an attempt to generally link the alleged abstract idea to
the technological environment of a computer system; rather, the
claims define meaningful limitations that confine the claims to
a particular useful application. Like the claims in Diehr,
Appellants submit that the claims are patent eligible because
they improve an existing technological process (a process for
processing and administering service plan/warranty products),
not because they are implemented on a computer. With
reference to the Federal Circuit’s Enfish decision, claim 1
focuses on a specific means or method that improves the
relevant technology rather than being directed merely to a result
or effect that itself is the abstract idea invoking generic
processes and machinery.
Appeal Br. 11–12.
We do not find the computer-related limitations are sufficient to
integrate the judicial exception into a practical application. The
Specification does not provide additional details about the POS terminal or
the database that would distinguish them from any generic processing device
with storage in a stand-alone or network environment. Spec. ¶ 18. Although
we do not dispute that the POS terminal includes specific instructions for
performing the recited steps, Appellant has not explained persuasively how
the claimed data structures and thresholds improve the way the computer
stores and retrieves data in memory. See MPEP § 2106.05(a). Rather, the
claims merely adapt the method of organizing the human activity of selling
and activating an extended service/warranty for a purchased product in a
series of steps performed by the POS terminal and the database. See Credit
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Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
(“Our prior cases have made clear that mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.”); see also Bancorp Services, L.L.C. v. Sun Life
Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A
computer “employed only for its most basic function . . . does not impose
meaningful limits on the scope of those claims.”). Further, Appellant’s
identified improvements are improvements to the abstract idea, not
improvements to a technology or computer functionality. Thus, on the
record before us, the cited claim limitations do not improve the functionality
of the computer system by performing operations to sell and activate an
extended service/warranty for a purchased product, nor do they achieve an
improved technological result in conventional industry practice. McRO, Inc.
v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
Because claim steps 1–3, outlined above, do not (1) provide any
technical solution to a technical problem as required by DDR Holdings;7
(2) provide any particular practical application as required by BASCOM;8 or

7 See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR's claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR, 773 F.3d at
1257.
8 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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(3) entail an unconventional technological solution to a technological
problem as required by Amdocs,9 we agree with the Examiner’s
determination that Appellant’s claims 1 and 14 are directed to an abstract
idea that is not integrated into a practical application.
Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).
Appellant argues the following:
[T]he POS terminal, tangible service plan product, service plan
product tag and retail display in combination similarly provide
significantly more than the alleged abstract idea. As described
in the specification, existing retail extended warranty or other
service plan products are not consumer friendly as consumers
are subjected to high-pressure sales of such plans, and
consumers are often confused as to the terms and/or hidden fees
of such plans. As such, instead of evaluating the benefits
offered by service plans, many consumers categorically refuse
such service plans to avoid the associated record-keeping
burden, possible hidden fees, and/or possible hidden service

9 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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plan terms. Still further, typical service plans require the
consumer to provide personal profile information, product
information, purchase date, store information, receipt
information, etc., which can be time-consuming and which
further contributes to consumer frustration. The record keeping
requirements along with the existing service plan and warranty
administration are often sufficient to discourage a consumer
from purchasing the product.
Appeal Br. 11.
We discern no additional element or combination of elements recited
in Appellant’s independent claims 1 and 14 that contain any “inventive
concept” or add anything “significantly more” to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221. We are
not persuaded by Appellant’s remarks, noted above, alleging the claims are
directed to a non-conventional method because they involve automated
evaluation and selection of a service plan associated with a customer’s
purchase of a primary product. These comments overlook the analogue
method proffered by the Examiner wherein a cashier at a POS terminal in a
retail store looks up available service contracts suitable for a product being
purchased by a customer. Ans. 4. We agree with the Examiner that a sale
and activation of a service contract associated with a product purchased in
the manner suggested is a routine and conventional approach to selling and
activating such service contracts. Id. Appellant does not direct our attention
to any portion of the Specification indicating that the claimed processor
performs anything other than well-understood, routine, and conventional
functions, such as receiving and processing. See Elec. Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims,
understood in light of the [S]pecification, requires anything other than off-
the-shelf, conventional computer, network, and display technology for
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gathering, sending, and presenting the desired information.”); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”); Alice, 573 U.S. at
224–26 (receiving, storing, sending information over networks insufficient
to add an inventive concept). Instead, Appellant’s claimed subject matter
simply uses generic computer components (computer system) to perform the
abstract idea of selling and activating an extended service/warranty for a
purchased product. Appeal Br. 11; see also Spec. ¶ 18. As noted above, the
use of a generic computer does not alone transform an otherwise abstract
idea into patent-eligible subject matter. As our reviewing court has
observed, “after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, the claim is
devoid of an inventive concept. See Alice, 573 U.S. at 217. Appellant is
reminded that “the ‘inventive concept’ [under the second part of the
Mayo/Alice test] cannot be the abstract idea itself” and “Berkheimer . . .
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore,
J., concurring). “It has been clear since Alice that a claimed invention’s use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
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Cir. 2018). We, therefore, agree with the Examiner that the computer
functions recited in the claims were, in fact, generic, and are met by
numerous precedent establishing that using a generic computer to expedite
and automate processes traditionally performed manually, or that are
otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Final Act. 10; see also, e.g., Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information); Bancorp Services,
L.L.C., 687 F.3d at 1278 (“The computer required by some of Bancorp’s
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims.”). Therefore, we conclude that claim 1’s elements,
both individually and as an ordered combination, do not provide an
inventive concept. See 84 Fed. Reg. 56; Berkheimer v. HP Inc., 881 F.3d
1360, 1370 (Fed. Cir. 2018) (“The limitations amount to no more than
performing the abstract idea of parsing and comparing data with
conventional computer components.”); Bancorp, 687 F.3d at 1278 (“[T]he
use of a computer in an otherwise patent-ineligible process for no more than
its most basic function—making calculations or computations—fails to
circumvent the prohibition against patenting abstract ideas and mental
processes.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
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non-obviousness, but, rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 217–218 (quoting Mayo 566 U.S. 72–73). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
Appellant is further reminded that, in many cases, “relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice,
573 U.S. at 224) (“[U]se of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” is not an
inventive concept.); see also, e.g., Intellectual Ventures I LLC v. Capital
One Bank, 792 F.3d at 1370 (“[M]erely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.”). Therefore, the functions recited
in independent claims 1 and 14 do not add meaningful limitations beyond
generally linking the abstract idea to the particular technological
environment. See Final Act 6–7.
Because Appellant’s claims 1 and 14 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second part of the Alice analysis, we sustain the Examiner’s rejection of
independent claims 1 and 14 under 35 U.S.C. § 101.
Appellant does not present additional arguments for dependent claims
2–4, 6, 16, and 18. Accordingly, for the same reasons as set forth for
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independent claims 1 and 14, we sustain the Examiner’s 35 U.S.C. § 101
rejection of dependent claims 2–4, 6, 16, and 18.
2. Obviousness Rejection
Appellant argues that the Examiner erred in finding that the
combination of Ehling, Frangiosa, Official Notice, and Pederson teaches or
suggests processing a separate and tangible service plan including a tag
configured to be attached to a primary product purchased at a POS terminal
that stores information linking the primary product with the protection plan,
as recited independent claim 1. Appeal Br. 14. In particular, Appellant
argues that Ehling’s disclosure of using code 121 enables a consumer to
access online supplemental services associated with a protection plan, as
opposed to a tag linking a purchased product with a protection plan. Id.
Further, Appellant argues that Pederson’s disclosure of associating in a
database the serial number of a product with the purchase date thereof to
facilitate processing customer’s returns and warranty claims does not teach a
storing in the database information linking a primary product with a
purchasable service contract. Id. at 14–15 (citing Pederson ¶¶ 26, 30–32).
These arguments are not persuasive of reversible Examiner error
because they are tantamount to an individual attack against the references as
opposed to the combination thereof. One cannot show non-obviousness by
attacking the references individually where the rejections are based on
combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this
case, the Examiner relies upon Ehling for its teaching of a customer using a
unique code (e.g., planID, PlanCode, PlanName, WarrantyProgamID)
obtained from a furniture retailer to look up/register at a POS terminal
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connected to a database a protection plan suitable for a uniquely identified
product purchased by the customer. Final Act. 8– 9 (citing Ehling ¶¶ 31, 32,
38, 40, 52, 62 and 64); Ans. 8. Further, the Examiner relies upon Pederson’s
disclosure of an electronic registration (ER) system storing in a database the
unique identification collected from a tag affixed on a purchased product, as
well as registration information (e.g. purchase date, price paid) along with
applicable warranty policies associated with the purchased product. Final
Act. 10–11 (citing Pederson ¶¶ 4, 32); Ans. 8–10. Furthermore, the
Examiner concludes the following:
[I]t would have been obvious to a person having ordinary skill
in the art at the time of the invention to modify the invention as
disclosed by Ehling and include the teachings of Pederson in
order to facilitate product and service registration and since the
claimed invention is merely a combination of old elements, and
in the combination each element merely would have performed
the same function as it did separately, and one of ordinary skill
in the art would have recognized that the results of the
combination were predictable.
Final Act. 10–11. Additionally, the Examiner finds the following:
Frangiosa was cited as disclosing the feature of “the tag being
configured to be attached to the primary product.” The Final
Action specifically states on page 10 that “Frangiosa teaches
selling service plan products at a POS [0036] and using
different colors to indicate different types and prices of service
plan products ([0031]), well as a tag being configured to be
attached to the primary product (Figure 1A).” (emphasis
added). Although this recitation has been addressed with prior
art, it is only to evidence the breadth of knowledge in the art,
and not as a tacit agreement that the recitation further limits the
claimed structure.
Ans. 6.
We agree with the Examiner that the proposed combination of the
cited references would predictably result in a POS terminal at a furniture
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retailer storing in a database unique identification information regarding a
product purchased by the customer, as well as uniquely identifiable
purchasable protection plans and warranty policies associated with the
purchased product to thereby facilitate the registration of the product along
with the protection plan. Final Act. 10–11. We find the Examiner’s
proposed combination of the cited teachings of Ehling, Frangiosa, Official
Notice, and Pederson is no more than a simple arrangement of old elements
with each performing the same function it had been known to perform,
yielding no more than one would expect from such an arrangement. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Therefore, the ordinarily
skilled artisan, being “a person of ordinary creativity, not an automaton,”
would be able to fit the teachings of the cited references together like pieces
of a puzzle to predictably result in a POS terminal at a furniture retailer that
stores a database unique identification information regarding a product
purchased by the customer, uniquely identifiable purchasable protection
plans and warranty policies associated with the purchased product to thereby
facilitate the registration of the product as well as the protection plan. Id. at
420–21. Because Appellant has not demonstrated that the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” we agree with the Examiner that the
proposed modification would have been within the purview of the ordinarily
skilled artisan. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we are
satisfied that, on the record before us, the Examiner has established by a
preponderance of the evidence that the combination of Ehling, Frangiosa,
Official Notice, and Pederson renders claim 1 unpatentable. Accordingly,
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we are not persuaded of error in the Examiner’s obviousness rejection of
claim 1.
Regarding the rejection of claims 2–4, 6, 14, 16, and 18, Appellant
has not presented separate patentability arguments or reiterated substantially
the same arguments as those previously discussed for patentability of claim
1. As such, claims 2–4, 6, 14, 16, and 18 fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
VI. CONCLUSION
We affirm the Examiner’s patent eligibility rejections of claims 1–4, 6,
14, 16, and 18 under 35 U.S.C. § 101. We likewise affirm the Examiner’s
obviousness rejection of claims 1–4, 6, 14, 16, and 18 under 35 U.S.C.
§ 103(a).
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 14, 16, 18 101 Eligibility 1–4, 6, 14, 16, 18
1–4, 6, 14, 16, 18 103(a)
Ehling, Official
Notice, Frangiosa,
Pederson
1–4, 6, 14,
16, 18
Overall Outcome 1–4, 6, 14, 16, 18

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED