Ex Parte Lee et al

Patent Trials and Appeals Board

Jun 19, 2019

10185938 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/185,938 06/27/2002
137610 7590 06/21/2019
Sheppard Mullin Richter & Hampton LLP -
Oracle International Corporation
379 Lytton Ave.
Palo Alto, CA 94301
FIRST NAMED INVENTOR
Yee-Ann Lee
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.
48KK-230036 6178
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/21/2019 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):
svpatents@sheppardmullin.com
jraynova@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YEE-ANN LEE, RAHUL VISW ANA THAN,
JUN GAO, and RAJAN! YELKUR1
Appeal2018-005686
Application 10/185,938
Technology Center 3600
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
NABEEL U. KHAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Oracle America, Inc.
See Appeal Br. 2.
Appeal2018-005686
Application 10/185,938
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-6, 8, 10, 19-22, 24, and 26-32. Claims 7, 9, 11-18, 23, and 25 are
canceled. In response to Appellants' Appeal Brief, the Examiner entered a
new ground of rejection under 35 U.S.C. § 101. Appellants requested the
appeal be maintained by filing a reply brief as set forth in 3 7 C.F .R. § 41.41.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 2
THE INVENTION
The claims are directed to creating promotional funds for a purveyor
of consumer goods. Spec. Abstract. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to perform operations comprising:
receiving a first input, wherein the first input specifies a
first amount of money shared by a plurality of promotional funds
for a promotion at a plurality of retailers;
receiving a second input, wherein the second input
specifies a percentage of the first amount of money for a first
promotional fund among the plurality of promotional funds;
allocating the first amount of money based at least on the
first and second inputs;
displaying and populating a list of products associated
with a manufacturer and with the plurality of promotional funds;
2 We refer to the Specification, filed June 27, 2002 as amended December 1,
2009 ("Spec."); Non-Final Office Action, mailed September 8, 2015 ("Non-
Final Act."); Appeal Brief, filed April 5, 2016 ("App. Br."); Examiner's
Answer, mailed July 18, 2016 ("Ans.") and the Reply Brief, filed January 3,
2018 ("Reply Br.").
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receiving a third input, wherein the third input specifies a
plurality of products associated with the plurality of promotional
funds;
providing a payment to a first retailer among the plurality
of retailers, wherein the first retailer corresponds to the first
promotional fund, and the payment is based at least on sales by
the first retailer of products among the plurality of products; and
deducting an amount of money based at least in part on the
payment from the first promotional fund.
REJECTION
The Examiner rejected claims 1-6, 8, 10, 19-22, 24 and 26-32 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Ans. 2-4.
ANALYSIS
Appellants' contentions are unpersuasive of reversible Examiner error.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Ans. 2-4) and (2) the reasons
set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief (Ans. 5-9) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The U.S. Supreme Court, however, 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,
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based on underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake 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. v. CLS Bank Int'!, 573 U.S. 208,217 (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 matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and "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, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Court describes the second step 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
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than a patent upon the [ineligible concept] itself."' Id. ( quoting Mayo, 566
U.S. at 72-73).
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under that guidance, we look to
whether the claim recites
( 1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
( c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101, and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, "if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception," then no further analysis is necessary. Id. at 53, 54.
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USPTO Step 2A, Prong 1
The Examiner finds:
Claims 1, 2 and 10 are directed to allocating or sharing a certain
amount of money (e.g., promotional funds as claimed) stored in
an account for a promotion associated with a product sold at a
plurality of retailers, providing a payment ( e.g., a credit
associated with the promotional funds) to the retailer
corresponding to a transaction of a product sold at the retailer and
deducting the payment ( e.g., a credit associated with the
promotional funds) from the amount of money stored in the
account corresponding to the transaction of the product.
Ans. 2. The Examiner maintains the claims "relate[] to a concept, plan or
scheme to incentivize retailers to accept discounts, promotions or items
associated with a manufacturer's product in exchange for monetary
compensation from the manufacturer." Id. at 3. The Examiner further finds
"Appellant[s'] invention can be implemented by a human using a pen and
paper to keep track of the promotional funds, products associated with the
promotional funds, payments to retailers and deductions from the accounts
associated with promotional funds" Id. According to the Examiner, the
claims are similar to concepts found to be abstract in Perkin-Elmer3,
Cybersource4, and SmartGene. 5 Thus, the Examiner determines the claims
3 Perkin-Elmer Inc. v Interna Ltd., 496 Fed. Appx. 65 (Fed. Cir. 2012)
( claims directed to an abstract idea of comparing data to determine a risk
level).
4 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.
Cir. 2011) ( computer-implemented system for "verifying the validity of a
credit card transaction over the Internet" directed to patent-ineligible abstract
idea of obtaining and comparing intangible data).
5 SmartGene, Inc. v. Advanced Biological Laboratories, S.A., 555 F. App'x
950, 954-56 (Fed. Cir. 2014) (claims drawn to abstract idea of comparing
new and stored information and using rules to identify options).
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are directed to "uninstantiated concept, plan or scheme, as well as a mental
process" and, as such, an abstract idea. Id. at 2-3. The Examiner further
determines the claims are also "directed to the concepts of advertising,
marketing and sales activities or behaviors under the abstract idea of certain
methods of organizing human activity." Id. at 6.
Appellants contend the claims are not directed to an abstract idea,
argumg:
1. "[T]he claimed features are not directed to 'an idea of itself or a
'mental process."' Reply Br. 6.
2. "[T]he claimed features have no resemblance to the ideas that were
identified as abstract in PerkinElmer, CyberSource, and SmartGene."
Id. at 9.
3. The Examiner's findings are inconsistent, maintaining both that the
claims are directed to (i) an idea of itself and a mental process, and
(ii) certain methods of organizing human activity including
advertising, marketing, and sales activity or behaviors of customers or
the retailers, the latter characterization further being an
oversimplification of the claims. Id. at 15.
4. "The claimed features ... have no relation to the abstract idea
identified in buySAFE nor are the claims directed to creating a
contractual relationship" as found by the Examiner and, therefore,
"the claimed features are not directed to an abstract idea." Id. at 16.
Appellants' contentions are not persuasive of Examiner error in
determining the claims recite an abstract idea under Prong 1 of our analysis.
Claim 1 requires: (1) receiving inputs specifying (a) an amount of money
shared by a plurality of promotional funds, (b) a percentage of the first
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amount of money for a first promotional fund among the plurality of
promotional funds, and ( c) a plurality of products associated with the
plurality of promotional funds; (2) allocating an amount of money based on
(l)(a) and (l)(b); (3) displaying and populating a list of products associated
with a manufacturer and with the plurality of promotional funds;
( 4) providing a payment to a first retailer corresponding to the first
promotional fund, the payment based at least on sales by the first retailer of
products among the plurality of products; and ( 5) deducting an amount of
money based at least in part on the payment from the first promotional fund.
Activities (1), (2), and (5) are examples of observation and evaluation that
are mental processes. In particular, the activities of (1) receiving, (2)
allocating (i.e., calculating by taking a percentage of a shared amount), and
(5) deducting a payment amount (i.e., subtracting to obtain a new balance)
mimic human thought processes, perhaps with paper and pencil, where the
data interpretation is perceptible in the human mind. See In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); Fair
Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). In connection with displaying activity (3), the Federal Circuit has
held claims ineligible as reciting an abstract idea when they merely collect
electronic information, display information, or embody mental processes
that could be performed by humans. Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1353-54 (Fed. Cir. 2016)6. Thus, displaying step (3) does not
6 "[M]erely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas." Elec. Power, 830 F.3d at
1355
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remove the claim from the category of mental processes. Addressing
payment activity ( 4), the amount paid is determined based on qualifying
product sales made by the retailer, which is an observation and/or
calculation that can be made in the human mind. The additional requirement
of providing payment can be performed by writing down on paper the details
of the payment (e.g., issuing a check or noting a credit). Thus, payment
activity ( 4) can be categorized as a mental process. Accordingly, we are not
persuaded the claims do not recite a mental process as contended by
Appellants. See Reply Br. 8.
We further agree with the Examiner that the claims are "directed to
the abstract ideas of certain methods of organizing human activity and a
fundamental economic practice" including "marketing, and sales activities or
behaviors." Ans. 5, 6. We agree with the Examiner in finding:
[T]he invention provides monetary compensation (e.g., payment
such as credits associated with the promotional funds) to a
plurality of retailers for acceptance of promotions, discounts or
items ( akin to advertising and marketing) of specific products
associated with an account during a purchase transaction ( akin to
sales activity or behaviors of customers or the retailers) at a point
of sale terminal at the retail store.
Ans. 6.
We also agree the claims are similar to those determined to be patent-
ineligible in Ultramercial7 wherein a "user views an advertisement in
exchange for a product or service and an advertiser pays the owner of
intellectual property (e.g., music or video) for allowing the user to access the
product or service through a facilitator." That is, Appellants' claims involve
sales promotion targeted at retailers, i.e., trade sales promotions. The
7 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)
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Specification supports our finding, the Abstract characterizing the disclosure
as describing "[a] facility for creating promotional funds for a purveyor or
consumer goods." Courts have regarded similar concepts as abstract ideas.
See Kray IP Holdings, LLC v. Safeway, Inc., 107 F. Supp. 3d 677, 690 (E.D.
Tex. 2015) ("The core idea of the '830 patent -- providing a computer-based
incentive award program -- is plainly an unpatentable abstract idea by itself.
Incentive award programs designed to encourage sales of products and
services have been familiar aspects of marketing for many years"), affd, 639
F. App'x 637 (Fed. Cir. 2016).
Appellants' contentions the claims have no resemblance or relation to
the abstract ideas identified in prior cases identified by the Examiner are also
unpersuasive. See Reply Br. 6-10. As explained by the Examiner, in
PerkinElmer, CyberSource, and SmartGene, the Court determined claims
directed to obtaining and comparing data and using results to identify
options recited abstract ideas. See fn. 3-5 above; Ans. 3.
Specifically, in connection with PerkinElmer, we are unpersuaded by
Appellants' contention the case is narrowly applicable to laws of nature and
otherwise has no relevance to the pending claims. See Reply Br. 9. Instead,
we are guided by the Court's determination that comparing data to determine
a risk level can be considered an abstract idea. 8
In connection with Appellants' contention the Examiner's reliance on
Cybersource is misplaced, for the reasons discussed above, we disagree with
8 PerkinElmer, 496 Fed. App'x 65, 70 ("The claims thus recite the mental
process of comparing data to determine a risk level: data are gathered in the
first trimester of pregnancy; data are gathered in the second trimester of
pregnancy; those data are compared to known statistical information. No
action beyond the comparison is required.").
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Appellants' argument the claims are not directed to a mental process, the
basis on which Appellants distinguish the pending claims over those found
patent-ineligible in that case. See id. at 8-9. Therefore, we disagree the case
is inapposite to Appellants' claims.
We are also unpersuaded the Court's determination in SmartGene is
limited to selecting a treatment regimen for a patient. See Reply. Br. 10. In
particular, Appellants provide insufficient evidence or argument that the
case is not more broadly applicable to claims drawn to comparing new and
stored information and using rules to identify options. SmartGene, 555 F.
App'x at 954-56.
We further disagree the decision in buySAFE9 is inapposite. Reply
Br. 16. In buySAFE, the Federal Circuit considered claims reciting sending
and receiving communications over a computer network to facilitate online
commercial transactions. buySAFE, 765 F.3d at 1351-52. The court
determined that "[t]he claims are squarely about creating a contractual
relationship" (id. at 1355), and because contractual relations are "intangible
entities" (id. at 1353) and "a fundamental economic practice" (id. at 1354)
the claims were directed to an abstract idea. See id. at 1353-55.
We are also unpersuaded the rejection is improper because the
Examiner determines the claimed steps recite more than one category of
concepts the courts have identified as abstract ideas or that the Examiner's
characterization of the claims is an oversimplification. Reply Br. 15. Our
reviewing court recognizes that "[ a ]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
9 BuySAFE, Inc. v. Google Inc., 765 F.3d 1350 (Fed. Cir. 2014).
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not, "impact the patentability analysis." Id. at 1241. Further,
"An abstract idea can generally be described at different levels of abstraction
... The Board's slight revision of its abstract idea analysis does not impact
the patentability analysis." Id. Moreover, merely combining several
abstract ideas does not render the combination any less
abstract. RecogniCorp, 855 F.3d at 1327 ("Adding one abstract idea (math)
to another abstract idea ... does not render the claim non-abstract."); see
also Fair Warning IP, 839 F.3d at 1093-94 (determining the pending claims
were directed to a combination of abstract ideas). Thus, the patentability
analysis in this Appeal does not tum on exactly how various limitations are
characterized as being abstract, i.e., as either an abstract "mathematical
concepts," "mental processes," or "certain methods of organizing human
activity." For example, in addition to being mental processes for the reasons
discussed above, all of the claim elements involve marketing or sales
activities implementing trade sales promotions including:
( 1) receiving inputs specifying
(a) an amount of money shared by a plurality of promotional funds,
(b) a percentage of the first amount of money for a first
promotional fund among the plurality of promotional funds, and
( c) a plurality of products associated with the plurality of
promotional funds;
(2) allocating an amount of money based on (l)(a) and (l)(b);
(3) displaying and populating a list of products associated with a
manufacturer and with the plurality of promotional funds;
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( 4) providing a payment to a first retailer corresponding to the first
promotional fund, the payment based at least on sales by the first
retailer of products among the plurality of products; and
( 5) deducting an amount of money based at least in part on the
payment from the first promotional fund.
The end result remains the same in this Appeal-the claim as a whole still
recites an abstract idea.
Because we conclude the independent claims recite certain methods of
organizing human activity and/or mental processes, both of which are
abstract ideas, we proceed to Prong 2 to determine whether the claims are
"directed to" the judicial exception, or whether the judicial exception is
integrated into a practical application.
USPTO Step 2A, Prong 2
The Examiner finds:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the steps or acts performed in independent
claims 1, 2 and 10 are a mere instruction[ s] to apply the abstract
idea and require no more than a generic computer to perform
generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.
Ans. 3. The Examiner explains:
Appellant[ s'] claimed limitations do not demonstrate an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, effecting
a transformation or reduction of particular article to a different
state or thing, a specific limitation other than what is well-
understood, routine and conventional in the field and meaningful
limitations beyond generally linking use of the judicial exception
to a particular technological environment.
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Id. at 4.
Appellants contend:
1. "The claimed features ... address known problems and, therefore,
are not merely directed to an 'uninstantiated concept, plan or scheme.'
Rather, the claimed features specifically implement technological
features that allow manufacturers to manage their promotional funds."
Reply Br. 8.
2. "[T]he claimed features address problems that specifically arise in the
realm of computer technology." Reply Br. 9-10 ( citing DDR
Holdings 10, Enfish 11 , and McR0 12).
3. "[T]he claimed features do not simply recite well-understood, routine,
conventional activities." Reply Br. 12-13
4. "[T]he the claimed features improve other technologies or technical
fields, such as electronic promotions management." Id. at 13.
5. "[NJ one of the claimed features attempt to monopolize or "tie up" any
alleged abstract idea." Id. at 17.
Appellants conclude "the claimed inventions are 'significantly more' than
any alleged abstract idea." Id. at 19-20.
We are unpersuaded by Appellants' contentions. We agree with the
Examiner in finding the claims "require no more than a generic device to
perform generic computer functions." Ans. 9. The additional claim
elements specifying amounts of money shared by and allocated to one of a
plurality of promotional funds for a promotion at a plurality of retailers,
10 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
11 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
12 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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displaying a list of products associated with a manufacturer and the funds, an
input specifying a plurality of products, and providing a payment
corresponding to the promotional fund only generally link the use of the
judicial exceptions to a particular technological environment (i.e., a
computer readable medium having instructions executable by a computer) or
a field of use (i.e., trade sales promotions which are a type of marketing and
sales activities and behaviors). A claim directed to a judicial exception
cannot be made eligible "simply by having the applicant acquiesce to
limiting the reach of the patent for the formula to a particular technological
use." Diamond v. Diehr, 450 U.S. 175, 192 n.14 (1981); see also Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1373 (Fed. Cir.
201 7) ("merely limiting the field of use of the abstract idea to a particular
environment does not render the claims any less abstract"); Bilski v. Kappas,
561 U.S. 593, 612 (2010) ("limiting an abstract idea to one field of use ...
did not make the concept patentable"); MPEP § 2106.05(h) ( claims only
generally linking the use of a judicial exception to a particular technological
environment or field of use are insufficient to constitute significantly more
than a judicial exception).
We are also unpersuaded the decisions in DDR Holdings, Enfzsh, and
McRO are on point. See Reply Br. 9. In DDR Holdings the claims at issue
involved "web pages displays [with] at least one active link associated with
a commerce object associated with a buying opportunity of a selected one of
a plurality of merchants." DDR Holdings, 773 F.3d at 1249. In determining
the claims in DDR Holdings were not abstract, the court noted
these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
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Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1257. Here, Appellants' identified problem of manual entry of
manufacturer, product, and promotional fund data into a system for
managing promotional funds is addressed by "creating promotional funds
within the [promotional] software application that minimize[ s] the amount of
manual data entry required." Spec. ,i 7. Although Appellants assert the
"claimed features are all rooted in computer technology to overcome a
problem that specifically arises in the realm of that technology" (Reply Br.
10), Appellants fail to explain what technological improvements are part of
the claims. Instead, rather than directed to a technology, we find the claims
are directed to an improvement to the underlying concept of incentivizing
retailers to accept discounts, promotions or items associated with a
manufacturer's product in exchange for monetary compensation from the
manufacturer. See Ans. 3.
Addressing the Enfzsh decision (see Reply Br. 10), the Federal Circuit
relied on the distinction made in Alice between improvements to computer
functionality and uses of existing computers as tools in aid of processes
focused on "abstract ideas." See Enfish, 822 F.3d at 1335-36; see also
Alice, 134 S. Ct. at 2358-59. The present case is different from Enfzsh
because the focus of the claims here is not on an improvement in computers
as tools or upon an innovative way to use computers or other devices;
instead, the claims are directed to concept of incentivizing retailers that uses
generic and routinely used computer equipment as tools.
We further find the subject matter of the claims is not analogous to
that presented in McRO. The claims in McRO recited a "specific ...
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improvement in computer animation" using "unconventional rules that
relate[d] sub-sequences of phonemes, timings, and morph weight sets."
McRO, 837 F.3d at 1302-03, 1307-08, 1314-15. In contrast to McRO, we
are unpersuaded the rejected claims produce an improvement in computer-
related technology. Moreover, it was not the mere presence of
unconventional rules in McRO that led to patent eligibility; rather, it was that
the rules were used "in a process specifically designed to achieve an
improved technological result." Id. at 1316. Here, Appellants have not
shown how the claimed creation of promotional funds is used in a process to
achieve improved technological results.
We are also unpersuaded by Appellants' contention "the claimed
features do not simply recite well-understood, routine, conventional
activities." Reply Br. 12-13. Our analysis under 35 U.S.C. § 101 does not
depend on whether the claims describe novel or nonobvious subject matter,
but whether the claims include additional elements and whether those
additional elements are well-understood, routine, and conventional.
Whether the subject matter of the claims is novel is not dispositive with
respect to the patent eligibility inquiry. Mayo, 566 U.S. at 78, 88 (even a
truly groundbreaking abstract idea, like Einstein's theory of relativity,
cannot make a claim patent-eligible). Appellants' contention is further
unpersuasive for lack of identification of specific features that are not well-
understood, routine, or conventional.
Appellants' contention the claims do not attempt to monopolize the
abstract idea is also unpersuasive. See Reply Br. 17. As an initial matter,
the claims are so broad as to seemingly cover substantially all methods of
providing promotional funds for a purveyor of consumer goods using a
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computer or processor. Furthermore, even if otherwise, we agree with the
Examiner "the courts do not use preemption as a stand-alone test for
eligibility." Ans. 7. Although preemption "'might tend to impede
innovation more than it would tend to promote it,' thereby thwarting the
primary object of the patent laws" (Alice, 573 U.S. at 216 (quoting Mayo,
566 U.S. at 71)), "the absence of complete preemption does not demonstrate
patent eligibility" (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015)). See also OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.").
We further disagree with Appellants that "the claimed inventions are
'significantly more' than any alleged abstract idea." Reply Br. 19. In
support of their contention, Appellants argue "the claimed features do not
merely recite generic computer components performing generic computer
functions." Id. However, Appellants fail to elaborate or otherwise identify
non-generic computer components or specialized functions performed by
any such components. For example, claim 1 recites a non-transitory
computer readable medium having instructions stored thereon that, when
executed by a processor, cause the processor to perform operations including
receiving, processing, and displaying information and providing a payment
to a retailer. Appellants fail to explain which of these steps are anything
other than generic computer functions performed by generic computer
components. Likewise, Appellants' contention that "the claimed features
improve other technologies or technical fields, such as electronic promotions
management" is unpersuasive for failure to identify specific technical
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improvements. Instead, as discussed above, any improvement is, at most,
directed to the underlying concept of incentivizing retailers to accept
discounts, promotions or items associated with a manufacturer's product in
exchange for monetary compensation from the manufacturer.
For the reasons discussed, we agree with the Examiner the claims do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements do not
effect an improvement to another technology, technical field, or to the
functioning of a computer itself. Thus, we conclude that claim 1 does not
integrate the judicial exception into a practical application. See MPEP
§ 2106.0S(a). We further determine claim 1 does not recite:
(i) an application of the abstract idea with, or by use of, a
particular machine;
(ii) a transformation or reduction of a particular article to a
different state or thing; or
(iii) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.0S(b), (c), (e)-(h). Instead, any improvement is to the
underlying idea of incentivizing retailers. Thus, claim 1 does not integrate
the judicial exception into a practical application.
USPTO Step 2B
Finally, we agree with the Examiner that:
The claim does not include additional elements or limitations
individually or in combination that are sufficient to amount to
significantly more than the judicial exception. Specifically, the
individual elements of a computer, processor, non-transitory
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computer readable medium, memory and instructions are well
understood, routine and conventional elements that amount to no
more than implementing an idea with a computerized system.
The additional elements taken in combination add nothing more
than what is present when the elements are considered
individually. In addition, the combination does not provide any
effect regarding improving the functioning of the computer or
any improvement to another technology.
Ans. 8-9. We further agree "[b]ased on the Appellant[s'] [S]pecification,
elements in [the] claims ... require no more than a generic device to
perform generic computer functions." Appellants' naked contention to the
contrary is insufficient to persuade us the processor of claim 1 is otherwise.
In particular, the processor is specified at a high level of generality for
performing what are well-understood, routine, and conventional functions of
receiving, processing, and displaying information and providing a payment
to a retailer. As the Federal Circuit has held, "the use of conventional
computer components, such as a database and processors, operating in a
conventional manner ... do[es] not confer patent eligibility." Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015). This is because "mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology." Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017).
We, therefore, determine the limitations of claim 1 do not add
significantly more to the patent-ineligible abstract idea. Thus, for the
reasons discussed, the claims are directed to (i) mental processes and/or (ii)
certain methods of organizing human activity, i.e., commercial or legal
interactions including marketing or sales activities or behaviors. Both
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mental processes and managing personal behavior are identified in the
Memorandum as abstract ideas. Furthermore, the claims do not recite
limitations that amount to significantly more than the abstract idea itself.
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 101 and, for the same reasons, the rejection of independent claims
2 and 10, together with dependent claims 3-6, 8, 19-22, 24, and 26-32,
which are not argued separately with particularity.
DECISION
We affirm the Examiner's decision to reject claims 1-6, 8, 10, 19-22,
24, and 26-32 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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