Ex Parte FriedmanDownload PDFPatent Trials and Appeals BoardMar 28, 201913469585 - (D) (P.T.A.B. Mar. 28, 2019) Copy Citation 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 Appeal2017-007049 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 2 Appeal2017-007049 Application 13/469,585 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 3 Appeal2017-007049 Application 13/469,585 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." 4 Appeal2017-007049 Application 13/469,585 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.). 5 Appeal2017-007049 Application 13/469,585 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 6 Appeal2017-007049 Application 13/469,585 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 7 Appeal2017-007049 Application 13/469,585 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. 8 Appeal2017-007049 Application 13/469,585 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 9 Appeal2017-007049 Application 13/469,585 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 10 Appeal2017-007049 Application 13/469,585 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 11 Appeal2017-007049 Application 13/469,585 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 12 Appeal2017-007049 Application 13/469,585 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). 13 Appeal2017-007049 Application 13/469,585 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 14 Copy with citationCopy as parenthetical citation