Ex Parte Friedman

Patent Trials and Appeals Board

Mar 28, 2019

13469585 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/469,585 05/11/2012
75564 7590 04/01/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Michael J. Friedman
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.
21652-00218 9403
EXAMINER
BORLING HAUS, JASON M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. FRIEDMAN
Appeal2017-007049
Application 13/469,585
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT,
TARA L. HUTCHINGS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims methods and systems for managing a payment card
account and more particularly to network based methods and systems for
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Application 13/469,585
using game mechanics to incentivize positive account management
behaviors. (Spec. ,i 2, Title).
Claim 1 is representative of the subject matter on appeal.
1. A payment card account management system for use with a
payment card interchange network, said system comprising a
memory device and a processor in communication with the
memory device, the payment card account management system
is programmed to:
display a website configured to provide access to
payment card account information to a cardholder, the
cardholder associated with a payment card and a respective
payment card account, the payment card being issued by an
issuing bank, the payment card usable for tendering payment
for purchases from a plurality of different merchants associated
with the payment card interchange network;
store rules in said memory device that associate account
management activities processed through the payment card
interchange network with avatar moods, wherein at least some
of the account management activities include actions performed
by the cardholder and a third party outside of the payment card
account management system that affect, either positively or
negatively, the payment card account when data representing
the corresponding account management activity is processed
through the payment card interchange network;
access a transaction database at the payment card
interchange network, wherein the transaction database includes
purchases from the plurality of merchants;
identify, from the transaction database, data representing
at least one account management activity of the cardholder
affecting the payment card account, the data having been
processed through the payment card interchange network;
select one of the avatar moods based on the rules and the
data representing the at least one account management activity;
generate an avatar associated with the selected avatar
mood; and
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transmit the avatar to a computing device associated with
the cardholder.
Appeal Br. 13 (Claims Appendix).
THE REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. l 12(b) or 35 U.S.C. 112
(pre-AIA), second paragraph, as being indefinite.
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-20 are rejected under 35 U.S.C. 103(a) as obvious over
Okerlund (US 2013/0080239 Al, published Mar. 28, 2013), Schueller et al.
(US 2011/0244952 Al, published Oct. 6, 2001), and further in view of
Turner et al. (US 2003/0033231 Al, Feb. 13, 2003).
ANALYSIS
35 U.S.C. § 112, SECOND PARAGRAPH REJECTION
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We will not sustain this rejection because we agree with the Appellant
that the Specification at paragraphs 3 and 57 sufficiently explains what is
meant by actions that affect the payment card account positively or
negatively. In this regard, it is clear from the Specification that actions that
affect the account positively include knowing the balance of the account,
paying the account on time, and not exceeding the credit limits and actions
that affect the account negatively include going over the credit limit and
over drawing the account.
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-20.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, ... determine
whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, ... then
ask, "[ w ]hat else is there in the claims before us?" .
. . To answer that question, . . . consider the
elements of each claim both individually and "as
an ordered combination" to determine whether the
additional elements "transform the nature of the
claim" into a patent-eligible application .... [The
Court] described step two of this analysis as a
search for an "'inventive concept"'-i.e., 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."
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Alice Corp. Pty. Ltd. v. CLSBankint'l, 573 U.S. 208, 217-18 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)) ( citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50-57 (Jan. 7, 2019) ("Guidance").
The Examiner determines that the claims are directed to
communicating selected information by a financial provider to a cardholder
which is a fundamental economic practice and/or a method of organizing
human activities. (Final Act. 2). The Examiner finds the claims do not
include limitations amounting to significantly more than the abstract idea.
(Id.).
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We agree with the Examiner's determination that the claims are
directed to a fundamental economic practice which is a method of
organizing human activities.
Claim 1 recites a system that rewards cardholders for account
management activities by transmitting an avatar having a mood based on
rules and data representing management activity. In this regard, claim 1
recites an account management system programmed to "provide access to
payment card account information," "store rules in said memory device,"
"access a transaction database," "identify ... data representing at least one
account management activity," "select one of the avatar moods" based on
the rules and the data, "generate an avatar associated with the mood" and
"transmit the avatar to a computing device associated with the cardholder."
The Specification teaches that card account behaviors that are determined to
be positive result in a beneficial effect on the consumer's point value and the
avatar's behavior or environment. For example, behaviors such as meeting
responsible purchase and balance management targets may make an avatar
happy as an incentive to encourage the behavior. (Spec. ,-J 57). As the
subject matter relates to behaviors of card holders in regard to their financial
accounts, the subject matter relates to a fundamental economic practice
which is a certain method of organizing human activity. It follows that the
claims are directed to a judicial exception. See Guidance, 84 Fed. Reg. at
52.
Turning to the second prong of the "directed to test", claim I merely
requires a "processor." The recitation of the words "memory device" and
"processor" do not impose "a meaningful limit on the judicial exception,
such that the claim is more than a drafting effort designed to monopolize the
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judicial exception." Guidance, 84 Fed. Reg. at 53. In this regard, the
recitation does not affect an improvement in the functioning of a memory
device or processor or other technology, does not recite a particular machine
or manufacture that is integral to the claims, and does not transform or
reduce a particular article to a different state or thing. Id. Thus, claim 1
does not include a practical application and is directed to an "abstract idea."
Turning to the second step of the Alice analysis, because we find that
the claim 1 is directed to an abstract idea, the claim must include an
"inventive concept" in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 218 (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)); See Guidance.
The introduction of a memory device and processor and a computing
device associated with the cardholder into the claim does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if 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. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
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process is more than a drafting effort designed to monopolize
the [ abstract idea] its elf."
Alice, 573 U.S. at 223-24 (alterations in original) ( citations omitted).
Instead, "the relevant question is whether the claim here does more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 225. It does not.
Taking the claim elements separately, the functions performed by the
memory device and processor and the computing device at each step of the
process are purely conventional. Using a processor to retrieve, store, select,
and apply decision criteria to data and modify the data as a result amounts to
electronic data query and retrieval-one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the trading industry. See Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d at 1354; see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) ("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming"). In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the steps are
considered separately.
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The claims do not, for example, purport to improve the functioning of
the memory device and processors. As we stated above, the claims do not
affect an improvement in any other technology or technical field. The
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. (See, e.g., Spec. ,i,i 52, 61 ). Thus, the
claims at issue amount to nothing significantly more than instructions to
apply the abstract idea using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225-26.
We have reviewed all the arguments (Appeal Br. 5----1 O; Reply Br. 1----
5) that AppeUant has submitted concen1ing the patent eligibility of the
claims before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the Examiner did not identify the additional
elements that are beyond the judicial exception. (App. Brief 5). The
Examiner clearly identifies the additional elements as computer elements
that perform generic computer functions and as such clearly identifies the
recitations in claim 1, for example, of the memory device, the processor, and
the computing device of the cardholder. (Final Act. 5).
We are also not persuaded of error on the part of the Examiner by
Appellant's argument that the claims are similar to the claims in BASCOM
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Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016} (Appeal Br. 6----7; Reply Br. 3---4} Appellant asserts that, like the
claims in BA5XX)1'/l, the present claims, as an ordered combination, recite an
inventive concept under the second step of the patent-eligibiHty analysis
because the clairns represent a specific method for managing a payment card
account and include an ordered combination of clairn limitations that
transform the alleged abstract idea into a particular, practical application.
(Appeal Br. 6).
Contrary to Appellant's argmnents, the Federal Circuit did not find
that the claims in BASCOl'vf recited an inventive concept because the claims
recited a specific method of perfonning filtering. Rather, in BASCOAf, the
Federal Circuit followed the Supreme Courf s guidance for determining
whether the clairns recite an inventive concept set forth in Alice Corp. Pty.
Ltd. v. CLS Bank International, 573 U.S. 208, 220-27 (2014).
In Alice, the Supreme Court explained that under the second step of the
patent-eligibility analysis, "the relevant question is whether the claims here
do rnore than sirnply instruct the practitioner to implement the abstract idea
of intermediated settlement on a generic computer." Alice, 573 U.S. at 225
(2014). The Supreme Court also provided examples of claims that represent
more than instructions to implement an abstract idea on a generic computer,
such as claims that purport to improve the functioning of the computer itself
and claims that effect an improvement in any other technology or technical
field. Id. at 224-27.
Turning to BASCOM, the Federal Circuit held "[t]he inventive
concept described and claimed in the '606 patent is the installation of a
filtering tool at a specific location, remote from end-users, with
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customizable filtering features specific to each end user." 827 F.3d at 1350.
In determining this feature to be an inventive concept, the Federal Circuit
explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server and
is a technical improvement over prior art ways of filtering content. Id. at
1350-51. Notably, the Federal Circuit specifically determined that "the
claims may be read to 'improve[] an existing technological process."' Id. at
1351 ( citing Alice, 573 U.S. at 223).
Here, the claims are not directed to improving an existing technology.
There is no irnprovement to the memory device or processor recited in claim
1.
\Ve do not agree vdth the Appellant that the clairns are analogous to
the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014), where the Court noted that a claim may amount to more
than any abstract idea recited in the claims when it addresses a business
challenge, such as "'retaining website visitors," where that challenge is
particular to a specific technological environment, such as the Internet.
Appellant contends that the clairned subject matter solves the problem
of electronically monitoring account management activities perfi..1rmed over
a payment card interchange network (App. Brief 9}
In DDR, the court stated that "the [] patent's claims address the
problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website afi.er 'clicking' on an advertisernent
and activating a hyperlink." DDR Holdings, 773 F.3d at 1257. This was
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done in the claim by serving a composite page with content based on the link
that was activated to serve the page.
In contras( claim l performs a process that identifies account
managernent activity and in response to such activity provides an avatar
mood and sends it to the account holder. The problem solved by the instant
application is the business problem of negative behavior of card holders and
its effect on the credit of the card holder and the business of the card
provider. (see 1/ 3). There is no technical problem that is solved by the
subject matter of claim 1. That the solution to this business problem rnay
assisted by using a rnerno1y device and a processor is not pertinent to
detennining whether the clahn itself provides a technical solution to a
technical problem. For example, sirnple mathematical algorithm such as
addition is equally useful in solving technical problems, but simply
automating it is insufficient to make it not an abstract idea. And, unlike the
situation in DDR Holdings, we find no indication in the record, nor do
Appellant points us to any indication, that the memory device and the
processor are used other than in the normal, expected, and routine manner,
e.g., for receiving, storing and transmitting information.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. \Ve will also sustain the Examiner's rejection of the remaining
claims because the Appellant has not argued the separate eligibility of these
claims.
35 U.S.C. §103(a) REJECTION
\Ve are not persuaded of en-or on the part of the Examiner Appellant's
argument that neither Okerlund nor Schueller discloses management
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activities that include actions performed by the cardholder and a third party
because the Appellant argues the teachings of the references separately. The
rejection is based on the combined teachings of the references.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In this regard, we find that the teaching in Okerlund that incentives
are awarded based in data generated by a cellular phone or vehicle tracking
device. The data may be created and maintained by third party social
networking sites (ii 53). This a teaching of basing incentives on account
activities which include activities by cardholders in regard to third parties
outside the payment card account management system. As such, Okerlund
teaches the subject matter of claim 1 except for the teaching that the
incentives are avatar moods. The Examiner relies on Shueller for teaching
this subject matter.
In view of the foregoing, we will sustain this rejection of the
Examiner as it relates to claim 1. We will also sustain the rejection as it is
directed to the remaining claims because the Appellant has not argued the
separate patentability of these claims.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-20 under 35
U.S.C. § 112, second paragraph.
We conclude that the Examiner did not err in rejecting claims 1-2 0
under 35 U.S.C. § 101 and claims 1-20 under 35 U.S.C. § 103(a).
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DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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