Ex Parte Catania et al

Patent Trial and Appeal Board

Jul 26, 2018

12783666 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/783,666 05/20/2010 William M. Catania
27975 7590 07/30/2018
ADD&G - 27975
1401 CITRUS CENTER 255 SOUTH ORANGE A VENUE
P.O. BOX 3791
ORLANDO, FL 32802-3791
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
60731 7265
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
creganoa@allendyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM M. CATANIA, MICHAEL J. KA VIS, and
GREGORY H. RAPP
Appeal2017-003742
Application 12/783,666
Technology Center 3600
Before CARL W. WHITEHEAD, JR., BRADLEY W. BAUMEISTER, and
JEFFREYS. SMITH, Administrative Patent Judges.
WHITEHEAD, JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 61-81 under
35 U.S.C. § 134(a). Appeal Brief 8-16. We have jurisdiction under
35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to, "A system and method for issuance,
redemption, and reimbursement of digital incentives." Abstract.
Illustrative Claim
61. A method for issuance, redemption, and reimbursement of
digital incentives comprising:
Appeal2017-003742
Application 12/783,666
adding a message broker to cooperate with a given existing
point-of-sale (POS) terminal in a retail environment to provide
compatibility with a central database, the given existing POS terminal
being of a given type from among a plurality of different types of POS
terminals associated with a plurality of different retailers, the given
existing POS terminal having an identifiable attribute associated
therewith, the message broker operating independently from the
plurality of different types of POS terminals and independently from a
respective loyalty program associated with the plurality of different
retailers;
storing in the central database that is connected to a
communications network a unique customer identifier in association
with each of a plurality of customers;
storing in the central database information about one or more
digital incentives in association with one or more of the unique
customer identifiers;
storing in the central database information about the given
existing POS terminal;
receiving, via the message broker via the communications
network, a unique customer identifier associated with a customer that
has selected one or more items for purchase;
obtaining, via the message broker from the given existing POS
terminal, information identifying the one or more items selected for
purchase by the customer associated with the unique customer
identifier that was received;
transmitting, via the message broker, to the central database the
unique customer identifier and the information identifying the items
that the customer has selected for purchase;
authenticating, via the central database, the given existing POS
terminal based upon the associated identifiable attribute;
validating, via the central database, the unique customer
identifier;
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identifying, via the central database, each digital incentive that
is associated with the unique customer identifier and that is applicable
to at least one of the items that the customer has selected for purchase;
receiving, from the central database, via the message broker,
information about each of the applicable digital incentives; and
transmitting, via the message broker, to the authenticated given
existing POS terminal information identifying the one or more
applicable digital incentives for redemption.
Rejections on Appeal
Claims 61-81 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Claims
61-81 are directed to the concept of managing and authorizing transactions
and incentives in a retail environment using the point of sale system and a
central server system, which is a fundamental economic practice as it is
managing and authorizing promotions in a retail network environment.
Final Action 2-3.
Claims 61---65, 67, 71-74, 77, 79, and 81 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Fravel (US Patent
Application Publication 2003/0130889 Al; published July 10, 2003),
Byerley (US Patent Application Publication 2006/0224449 Al; published
October 5, 2006), James (US Patent Application Publication 2009/0106115
Al; published April 23, 2009) and Morioka (US Patent Application
Publication 2003/0125977 Al; published July 3, 2003). Final Action 3-21.
Claims 66 and 70 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Fravel, Byerley, James, Morioka, and Leming
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Application 12/783,666
(US Patent Application Publication 2008/0319846 Al; published
December 25, 2008). Final Action 21-25.
Claims 68 and 69 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Fravel, Byerley, James, Morioka, and Beach
(US Patent Application Publication 2002/0107738 Al; published August 8,
2002). Final Action 25-27.
Claims 75 and 76 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Fravel, Byerley, James, Morioka, and Johnson
(US Patent Application Publication 2002/0124170 Al; published September
5, 2002). Final Action 28-32.
Claims 78 and 80 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Fravel, Byerley, James, Morioka, and Michaelis
(US Patent Application Publication 2008/0262928 Al; published October
23, 2008). Final Action 32-35.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed June 23, 2016), the Reply Brief (filed
January 11, 2017), the Answer (mailed December 1, 2016) and the Final
Action (mailed March 23, 2016) for the respective details.
35 U.S.C. § 101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
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71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "transform the nature of
the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355
( quotations and citation omitted).
Noting that the two stages of the inquiry involve "overlapping
scrutiny of the content of the claims," the Federal Circuit has described "the
first-stage inquiry" as "looking at the 'focus' of the claims, their 'character
as a whole,"' and "the second-stage inquiry (where reached)" as "looking
more precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to: (1) whether the claims focus on a specific means or method that
improves the relevant technology, or (2) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfzsh, 822 F.3d at 1336.
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Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that "[ c ]laims 61-81 are directed to the concept
of managing and authorizing transactions and incentives in a retail
environment using the point of sale system and a central server system,
which is a fundamental economic practice as it is managing and authorizing
promotions in a retail network environment." Final Action 2. Appellants
argue that the claims are not directed to an abstract idea because:
the claims are directed to interoperability among different POS
systems associated with different retailers with a central
database for the issuance, redemption, and reimbursement of
digital incentives, and independent Claim 61 recites a message
broker being added to cooperate with a given existing POS
terminal to address the interoperability.
Appeal Brief 8-9.
Appellants also contend the claims are not directed to an abstract idea
because:
the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea. More
particularly, the claims are directed to the improvement in the
functionality of the overall system by providing interoperability
among different POS systems associated with different retailers
with a central database for the issuance, redemption, and
reimbursement of digital incentives.
Appeal Brief 9.
Appellants further contend "the claimed invention is directed to a
method for issuance, redemption, and reimbursement of digital incentives
that includes the addition of a message broker. This concept is inextricably
tied to computer technology" wherein:
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the claimed message broker is a technical approach to a
technical problem, and not a business approach to a business
problem. The message broker addresses the technical problem
of interoperability among different POS systems associated with
different retailers with a central database for the issuance.
redemption, and reimbursement of digital incentives. This leads
to significantly more than an abstract idea and not simply a
method of e-couponing.
Declaration 4. 1
Appellants disclose, "[a] piece of software called a message broker 16
manages communications from the authenticated existing point-of-sale
terminal 12 to the central database 10" wherein "[t]he message broker routes
the unique identifier" and "purchases made by the customer" to the central
database. Specification 3, 8.
We do not find Appellants' arguments persuasive. Our reviewing
court has explained that claims directed to "the mere formation and
manipulation of economic relations" and "the performance of certain
financial transactions" are properly held to be directed to abstract ideas.
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014); see also, e.g., Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (finding computer-
implemented system for "using advertising as a currency [on] the Internet"
to be ineligible); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355
(Fed. Cir. 2014) (finding computer-implemented system for guaranteeing
performance of an online transaction to be ineligible.); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (finding
1 Declaration filed December 30, 2015.
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computer-implemented system for "verifying the validity of a credit card
transaction [] over the Internet" to be ineligible).
Also, our reviewing court has repeatedly held that information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F.3d at
1353 (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to
collecting information and analyzing it according to certain rules were
directed to an abstract idea); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d at 1370 (computer-implemented system for "verifying the validity
of a credit card transaction[] over the Internet" was patent-ineligible).
We agree with the Examiner's determination that at step one of the
Alice analysis, the claims are directed to one or more abstract ideas. We
therefore tum to the second step of the Alice analysis, in which we must
determine whether the additional elements of the claims transform them into
patent-eligible subject matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellants argue that:
[I]f the claims can somehow be determined to be directed to an
abstract idea, at least one element in the claim is sufficient to
ensure that the claim amounts to significantly more than the
abstract idea itself, as supported by the Rule 132 Declaration. In
particular, the claimed message broker is a technical approach
to a technical problem, and not a business approach to a business
problem. The message broker addresses the technical problem
of interoperability among different POS systems associated with
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different retailers with a central database for the issuance,
redemption, and reimbursement of digital incentives. This leads
to significantly more than an abstract idea as independent
Claim 61 is not simply directed to a method of e-couponing.
Appeal Brief 10.
The Examiner finds:
[W]hile the claims indicate the claimed invention to be
compatible with a plurality of point of sale systems associated
with a plurality of merchants, the Examiner notes the claim
language only states the claimed message broker to be
compatible with a plurality of different POS, different retailers,
and independent of loyalty programs. That is, while the claims
recite these features, these features are merely intended
functionality of the claimed invention as the rest of the claim
does not include limitations [that] support this claimed
functionality. The claims do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the abstract idea is performed by generic
computer components.
Final Action 2-3.
Appellants' argument that the claimed invention is rooted in computer
technology in order to overcome a problem specifically arising in the realm
of interoperability among different POS systems associated with different
retailers with a central database for the issuance is not persuasive of
Examiner error because the mere application of an abstract idea on a
computer system does not make a claimed invention patentable. See Alice
Corp., 134 S. Ct. at 2358 ("[I]f a patent's recitation of a computer amounts
to a mere instruction to 'implemen[t]' an abstract idea 'on ... a computer,'
[]that addition cannot impart patent eligibility.") ( citations omitted).
Appellants do not argue, nor does Appellants' Specification state, that the
claimed message broker requires specialized or improved technology.
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Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 61-81.
35 U.S.C. § 103 Rejection
Appellants argue that "[i]ndependent Claim 61 recites adding a
message broker to cooperate with a given existing point-of-sale (POS)
terminal in a retail environment to provide compatibility with a central
database" and "while Byerley et al. does address the problem of
incorporating additional rewards programs into existing POS systems,"
"Byerley et al. fails to disclose adding a message broker to cooperate with a
given existing point-of-sale (POS) terminal in a retail environment to
provide compatibility with a central database." Appeal Brief 13.
Appellants contend "Byerley et al. communicates with different databases or
rewards programs, i.e. transaction data networks, and not a central database
with operations that are independent from a plurality of different types of
POS terminals and independent from [a] respective loyalty program
associated with the plurality of different retailers." Appeal Brief 14.
Appellants argue, "[a]s supported by the Rule 132 Declaration, Byerley et al.
teaches away from a combination with Morioka. Byerley et al. teaches that
there is no central database or central processing for all loyalty
programs/POS terminals of different retailer[s]." Appeal Brief 14.
The Examiner finds that it is the combination of Fravel and Morioka
that discloses "the concept of POS systems communicating with a central
system to perform coupon redemption" and "although the combination does
not explicitly disclose the system to be independent of loyalty programs[,]
Byerley further teaches that it [was] old and well known to add modules to
existing POS systems to provide network communication services."
Answer 8 (citing Fravel, paragraph 25; Byerley, paragraph 3).
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We find Appellants' arguments unpersuasive of Examiner error. The
Examiner did not rely upon Byerley alone to disclose the claimed central
data base. See Final Action 4--8. "Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck, 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (Fed. Cir.
1981)).
We also do not find Appellants' argument that Byerley teaches away
from a combination with Morioka persuasive of Examiner error because
Byerley does not discourage employing a central database. "A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
( citations and internal quotation marks omitted). We therefore sustain the
Examiner's obviousness rejection of independent claim 61.
Appellants argue that the obviousness rejections of claims 66, 68-70,
75, 76, 78, and 80 are erroneous because of the "reasons set forth" with
respect to independent claim 61. Appeal Brief 15-16. We did not find the
obliviousness rejection of claim 61 erroneous. Accordingly, we likewise
sustain the Examiner's obviousness rejection of dependent claims 66, 68-70,
75, 76, 78, and 80, as well as claims 62-65, 67, 71-74, 77, 79, and 81, not
argued separately by Appellants. See Appeal Brief 12-16.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 61-81 is
affirmed.
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The Examiner's 35 U.S.C. § 103 rejections of claims 61-81 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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