Ex Parte Gilman et al

Patent Trial and Appeal Board

Sep 14, 2018

13622129 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/622, 129 09/18/2012
21839 7590 09/18/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Andrea Christine Gilman
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.
0076412-000096 6179
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA CHRISTINE GILMAN,
ANDREW GUINEY, and LISA YATES
Appeal2017-005127
Application 13/622, 129
Technology Center 3600
Before CARLA M. KRIVAK, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-18, which are all the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Introduction
Appellants' disclosed and claimed invention relates to "processing a
real-time discount for a deal or offer by adjusting the purchase amount by
the payment processor prior to authorization." Spec. ,r 1. Appellants
1 Appellants identify MasterCard International Incorporated as the real party
in interest. App. Br. 2.
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explain that, for the convenience of consumers, electronic coupons and deals
can be associated with a payment card belonging to the consumer. Spec ,r 4.
Thus, "[ w ]hen the consumer engages in a transaction and uses the payment
card, a payment card processor can identify that the consumer has a deal
and, once the transaction is processed, issue a credit to the consumer for the
value of the deal." Id.
However, the issuing of a credit on the consumer's account
means that the transaction is still for the full amount, and that
the discount is not seen by the consumer until after the
transaction, and sometimes not until the next account statement.
In such methods, it may both needlessly tie up funds on a
consumer's account, and may confuse the consumer to know
whether or not a certain deal has already been redeemed.
Thus, there is a need for a technical solution to
processing a discount associated with a consumer account at the
point-of-sale without the need for the processing of a second
financial transaction.
Spec. ,r,r 4--5.
Claims 1 and 10 are independent, of which claim 1 is representative of
the claims on appeal:
1. A method for processing a real-time discount at a
point of sale, comprising:
storing, in a database of a financial transaction processing
server, a plurality of deals, wherein each deal includes at least a
consumer identification and a transaction modifier;
receiving, by a receiving device of the financial
transaction processing server, an authorization request for a
financial transaction, wherein the authorization request includes
at least a consumer identifier and a transaction amount;
verifying, by a processing device of the financial
transaction processing server, enrollment in a discount service
of a consumer associated with the consumer identifier;
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identifying, in the database of the financial transaction
processing server, at least one deal of the plurality of deals
where the included consumer identification corresponds to the
consumer identifier;
calculating, by the processing device of the financial
transaction processing server, a new transaction amount based
on the transaction amount and the transaction modifier included
in the at least one deal;
transmitting, by a transmitting device of the financial
transaction processing server, an authorization response for the
financial transaction, wherein the authorization response is an
authorization for the new transaction amount, and wherein the
authorization response is indicated as being a final authorization
rather than a partial authorization; and
transmitting, by the transmitting device of the financial
transaction processing server, a redemption message to a
mobile communication device associated with the consumer
associated with the consumer identifier.
App. Br., Claims App'x 1-2 (disputed limitation emphasized).
Re} ections and References
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception (i.e., an abstract idea), without reciting significantly more.
Final Act. 17-22.
Claims 1-18 stand rejected underpre-AIA 35 U.S.C. § I03(a) as
unpatentable over White (US 2008/0133350 Al; June 5, 2008) and Byerley
(US 2009/0036103 Al; Feb. 5, 2009). Final Act. 23-33.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions of reversible error. We disagree with Appellant's conclusions.
Rather, as consistent with our discussion below, we adopt the Examiner's
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findings and reasons as set forth in the Final Office Action from which this
appeal is taken and as set forth in the Answer. We highlight the following
for emphasis.
The § 101 Re} ection
Section 101 defines patentable subject matter, however, the Supreme
Court has "long held that this provision contains an important implicit
exception" that "[l]aws of nature, natural phenomena, and abstract ideas are
not patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 70 (2012) (quotation omitted). "Eligibility under 35 U.S.C. § 101 is
a question of law, based on underlying facts." SAP Am., Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1020 (Fed. Cir. 2018). To determine patentable subject
matter, the Supreme Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355
(2014). "The inquiry often is whether the claims are directed to 'a specific
means or method' for improving technology or whether they are simply
directed to an abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1326 (Fed. Cir. 2017). A court must be cognizant 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), and
"describing the claims at ... a high level of abstraction and untethered from
the language of the claims all but ensures that the exceptions to § 101
swallow the rule." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337
(Fed. Cir. 2016). Instead, "the claims are considered in their entirety to
ascertain whether their character as a whole is directed to excluded subject
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matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015).
If the claims are directed to a patent-ineligible concept then the
analysis proceeds to a second step, in which we "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." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 79, 78). The Supreme Court has "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." Id.
( quotation omitted).
Step One
In rejecting the claims under § 101, the Examiner determines claim 1
is representative and "includes the abstract ideas of processing a real-time
discount for a transaction, i.e., transaction processing and promotion
redemption. In particular, the claimed method enables the processing of a
real-time discount associated with a consumer account at the point-of-sale."
Final Act. 17. We agree with this determination. While we disagree with
the Examiner's identification of claim 1 as directed to advertising, see id. at
18, the Examiner correctly identifies that "[t]he problem to be solved by the
instant invention involves processing a discount associated with a consumer
account at the point-of-sale without the need for the processing of a second
financial transaction. This is a business practice problem and not a
technological one." Id. at 19. Thus, the Examiner's characterization of
claim 1 as directed to the abstract idea of advertising is considered harmless
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error, because the Examiner also correctly identifies claim 1 is directed to
the abstract business practice (idea) of processing a discounted transaction at
the point-of-sale as a single financial transaction, i.e., an issue or idea that is
"a business practice problem and not a technological one." Id.
Appellants argue the Examiner errs because, to the extent the claims
involve abstract ideas, they recite a specific application of such ideas "to a
new and useful end." App. Br. 4 (quoting Alice, 134 S. Ct. at 2354 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972))). Appellants also argue the
Examiner's relied-on proposition from Ultramercial-that claims directed to
advertising are patent-ineligibly directed to an abstract concept-is
inapplicable to Appellants' claims, which "do not recite the advertisement of
anything." App. Br. 5 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014)).
Appellants' arguments are unpersuasive. Patent eligibility is an issue
of law. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012);
seealsoBerkheimerv. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)
( clarifying that there may also be underlying fact-related issues, such as
"[ t ]he question of whether a claim element or combination of elements is
well-understood, routine and conventional to a skilled artisan in the relevant
field"). Here, as a matter of law, the Examiner's characterization of the
claim as directed to advertising is harmless error, since the Examiner also
correctly characterizes the claim as directed to the idea of processing a
discount associated with a consumer account at the point-of-sale: a
fundamental economic practice. See Final Act. 17. Processing a discount at
the time of sale is a business practice long prevalent in our system of
commerce, similar to other economic practices also determined to be
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abstract ideas such as hedging in Bilski v. Kappas, 561 U.S. 593, 591, 611-
12 (2010), intermediated settlement in Alice, 134 S. Ct. at 2356-57, and
verifying credit card transactions in CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Processing discounts is a
building block of our market economy and, thus, similar to risk hedging,
intermediated settlement, and verifying credit card transactions, is an
"abstract idea" beyond the scope of§ 101. See Alice, 134 S. Ct. at 2356.
Appellants' argument that the claims merely involve the abstract ideas
such as "deals" and "financial transactions" is unpersuasive. That the claims
recite limitations for "a financial transaction processing server of a payment
network to modify a transaction amount once an authorization request has
already been received in conjunction with the other features and limitations"
(App. Br. 4) goes to the question of whether the claims recite "significantly
more" than the abstract idea to which they are directed. Accordingly, we
proceed to the second step of the Alice analysis.
Step Two
Appellants contend the claims recite significantly more than an
abstract idea for several reasons, and specifically because they
[ 1] require the financial transaction processing server to store
offer data, [2] verify consumer enrollment in a server, [3]
identify applicable deals, [ 4] calculate new transaction amounts,
and [5] transmit redemption messages to a mobile
communication device using different communication networks
and protocols than those utilized in the transmission and receipt
of transaction messages, all of which are functions that standard
financial transaction processing servers are unable to perform.
As such, the claims recite functions that are not generic,
routine, or well-understood by either generic networked
computer systems []or traditional financial transaction
processmg servers.
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App. Br. 7 (bracketed numbers added). The reasons argued by Appellants
are unpersuasive.
As the Examiner finds, and we agree, requiring the financial
transaction processing server to store offer data is simply a well-known,
routine and conventional step of using a computer, and amounts to mere
computerization of a basic aspect of the idea of processing a discounted
financial transaction. Ans. 6 ( citing Content Extraction and Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014)).
Appellants' argument that "verify(ing) consumer enrollment in a
server" and "identify(ing) applicable deals" add significantly more (App. Br.
7) is unpersuasive. The recited limitations of "verifying ... enrollment in a
discount service of a consumer associated with the consumer identifier" and
"identifying ... at least one deal [that] corresponds to the consumer
identifier" essentially recite broad, functional steps for the idea of qualifying
a particular consumer for a discount. This is itself a well-known abstract
idea that is an aspect of ( or refinement to) the broader idea of discounted
transactions. Cf RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) (explaining that adding one abstract idea to another "does
not render the claim non-abstract"); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (stating "the combination of those
abstract-idea processes .... are therefore directed to an abstract idea"). We
agree with the Examiner that these "additional elements are recited at a high
level of generality and are recited as performing conventional, routine,
generic and well-understood computer functions routinely used in computer
applications." Ans. 10.
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Appellants' argument that "calculat[ing] new transaction amounts"
adds significantly more (App. Br. 7) is also unpersuasive----determining the
discounted transaction amount inherently is part and parcel of the idea of
processing a discounted financial transaction. Appellants' argument that
claim 1 recites significantly more because it requires "transmit[ ting]
redemption messages to a mobile communication device using different
communication networks and protocols than those utilized in the
transmission and receipt of transaction messages" (App. Br. 7) is
unpersuasive-the argument is not commensurate with the scope of the
claim in that there is no requirement for using different networks and
protocols. Moreover, this limitation essentially recites the idea of informing
a consumer about the discounted transaction, without reciting any significant
technological limitations. Furthermore, limiting the claims use to mobile
devices and communication networks for both mobile devices and financial
transaction processing servers amounts to limiting the claim to a particular
field of use, which by itself is insufficient to constitute significantly more
than the abstract idea. See Bilski v. Kappas, 561 U.S. at 612 (explaining that
"limiting an abstract idea to one field of use ... does not make the concept
patentable").
Thus, we agree with the Examiner that "[ t ]he fact that the claimed
invention uses 'a system' comprising 'a database,' 'a receiving device,' and
'a processing device' of a 'financial transaction processing server' to carry
out the method does not qualify as 'significantly more."' Ans. 10. We agree
that "these additional elements are recited at a high level of generality and
are recited as performing conventional, routine, generic and well-understood
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computer functions routinely used in computer applications." Id. We
further agree that
Id.
looking at the claim elements as an ordered combination adds
nothing that is not already present in the claim when looking at
the elements taken individually. There is no indication that the
combination of elements improves the functioning of a
computer itself or improves any other technology. The
collective functions of the claim elements merely provide
conventional, routine, generic and well-understood computer
implementation. Generic computer components recited as
performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system. The claimed invention as currently claimed merely
implement( s) abstract idea( s) in a particular technological
environment ( e.g. network computing).
Accordingly, we sustain the§ 101 rejection of claims 1-18.
The § 103 Rejection
In rejecting claim 1, the Examiner finds White teaches all recited
limitations except for "transmitting, by the transmitting device of the
financial transaction processing server, a redemption message to a mobile
communication device associated with the consumer associated with the
consumer identifier" (the "disputed limitation), which the Examiner then
finds Byerley teaches. See Final Act. 24--28. Appellants argue that the
Examiner errs in finding Byerley teaches this disputed limitation because, in
Byerley's system for redeeming and reporting coupons, a "target device"
sends the redemption message to the mobile device, which the target device
does "before the point of sale submits the transaction for processing" (the
"timing" argument), and further, the target device is "separate from a
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transaction processing server" (the "separateness" argument). App. Br. 8, 9.
Appellants' arguments are unpersuasive.
Regarding the timing argument, the disputed limitation of transmitting
a redemption message to a mobile device associated with the consumer does
not include a timing requirement. "Unless the steps of a method actually
recite an order, the steps are not ordinarily construed to require one."
Interactive Gift Express, Inc. v. CompuServe Inc., 231 F.3d 859, 875 (Fed.
Cir. 2000). To the extent such a timing requirement is implicit in the recited
sequence of steps, or an ordinarily skilled artisan would have understood the
steps to include such a timing requirement in view of the Specification, we
note the Examiner relies on White, not Byerley, for the remaining steps.
Appellants' timing argument focuses on the disclosure of Byerley while
ignoring the disclosure of White. Each reference cited by the Examiner
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,425 (CCPA
1981 ). The relevant inquiry is whether the claimed subject matter would
have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. In re Keller, 642 F.2d at 425. In
view of the combined teachings of White and Byerley, Appellants do not
persuade us the Examiner errs in finding it would have been obvious to the
ordinarily skilled artisan to have added a step of transmitting a redemption
message, as taught by Byerley, to the remaining steps as taught by White, in
the order recited by the claims.
Regarding the separateness argument, Appellants read Byerley too
narrowly. As the Examiner responds, and we agree, although Byerley' s
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Figure 4A shows the target device as a separate component, Byerley teaches
that the target device may alternatively be combined with the other devices
shown in Figure 4A. See Ans. 19 ( citing Byerley ,r 66). Specifically,
Byerley broadly states "the target device 401 may be communicatively
coupled with an acquirer system 312 or other element of the system 400." In
addition to including the point-of sale system 310, system 400 ofByerley's
Figure 4A includes an acquirer system 312 and financial institutions 316-18.
Byerley ,r 66. The financial institutions provide financial transaction
processing, such as transaction authorizations. See, e.g., Byerley 58---65.
Thus, Byerley's "target device" may be part of the financial institution's
systems that perform transaction authorizations. Appellants do not explain
how or why Byerley' s disclosure of including the target device as part of any
of these other systems fails to teach or suggest including the target device as
part of a financial transaction processing server.
Appellants also argue the Examiner errs in rejecting claims 1-18 by
finding an ordinarily skilled artisan would have been motivated to modify
the system of White based on the teachings of Byerley. See App. Br. 9-12.
This argument is unpersuasive. Contrary to Appellants' contention that "[i]t
goes against the objectives of White to modify the system to combine the
payment transaction authorization systems with the 'separate rewards
system computer"' (App. Br. 11 (citing White ,r 28)), we note White
specifically discloses that a rewards system may either be separate from or
combined with the authorization system. See White ,r 44 ( discussing that
"[ o ]ther data implementations may also be used so long as authorization
systems 110, 210 have access to current rewards program data, reward
details, and qualifying information").
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Contrary to Appellants' contention that "[i]t goes against the
objectives of White ... to further modify the payment transaction
authorization system to communicate directly to the mobile communication
device" (App. Br. 11 ), we note there is no recited requirement for "directly"
communicating with the mobile device. Regardless, we discern no teaching
in Byerley that discourages such direct communication. As for modifying
White based on the teachings of Byerley so that the transaction processing
server communicates with a mobile communications device, "[ c ]ombining
the teachings of references does not involve an ability to combine their
specific structures" (In re Nievelt, 482 F.2d 965,968 (CCPA 1973)).
We recognize that the Examiner must articulate some "reasoning with
some rational underpinning to support the legal conclusion of obviousness."
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, the reasoning
need not be expressly described-a reason to combine teachings from the
prior art "may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
the nature of the problem to be solved." WMS Gaming Inc. v. Int'! Game
Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d
1350, 1357 (Fed. Cir. 1998)). "Under the correct [obviousness] analysis,
any need or problem known in the field of endeavor at the time of invention
and addressed by the patent can provide a reason for combining the elements
in the manner claimed." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420
(2007).
Here, both White and Byerley relate to processing of rewards, such as
coupons, during a transaction with a consumer at a point of sale. See, e.g.,
White Title, Abstract, ,r 2, Figs. 1-5, claim 1; Byerley ,r 41. As discussed
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supra, Byerley broadly teaches sending redemption messages to a mobile
device from a variety of systems, including specifically teaching that the
device that sends the message to the mobile device may be within the system
that provides transaction authorization (Byerley ,r 66). In view of the
relevant and overlapping teachings of White and Byerley, Appellants do not
persuade us the Examiner errs in finding there would have been motivation
for an ordinarily skilled artisan to have modified the disclosure of White to
add "transmitting, by ... the financial transaction processing server, a
redemption message ... associated with the consumer," as taught by
Byerley.
Accordingly, we sustain the§ 103 rejection of claim 1. We also
sustain the rejection of claims 2-18, for which Appellants provide no
arguments separate from claim 1.
DECISION
We affirm the Examiner's rejections of claims 1-18 under 35 U.S.C.
§§ 101 and 103.
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)(iv).
AFFIRMED
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