Ex Parte Soldate

Patent Trial and Appeal Board

Oct 22, 2018

13523932 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/523,932 06/15/2012
118627 7590 10/24/2018
McCarter & English, LLP / W almart Apollo, LLC
265 Franklin Street
Boston, MA 02110
David W. Soldate
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.
114826-51102 1028
EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
docket@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID W. SOLDATE
Appeal2017-007497
Application 13/523,932
Technology Center 3600
Before JOSEPH DIXON, ST. JOHN COURTENAY III, and
ERIC S. FRAHM, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-12 and 34--37. Claims 13-33 are cancelled. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Embodiments of Appellant's invention "relate generally to systems
and methods for interactive retail shopping, and more particularly,
1 According to Appellant, the real party in interest is Wal-Mart Stores Inc.
which is the assignee of the present application. App. Br. 3.
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Application 13/523,932
computer-implemented techniques for integrated creation and management
of shopping lists, coupon lists and/or electronic shopping carts." Spec. 6-8.
Exemplary Claim
1. A computer-implemented method for building an
electronic shopping cart in response to images captured by a
mobile electronic device and controlling a use of electronic
coupons, the method comprising:
providing a downloadable user interface readable on a mobile
electronic device wherein execution of the downloadable user
interface by the mobile electronic device allows the mobile
electronic device to:
display shopping list data representing items in an electronic
shopping list associated with the customer via the
downloadable user interface, the shopping list including items
from an inventory database associated with a retail store in
response to selection of the items by the customer via the
downloadable user interface prior to entering a retail store;
generate, via the downloadable user interface, an association
between stored coupon data representing coupons held by the
customer and one or more of the items in the electronic
shopping list;
capture images of product codes for items within a retail store
via a camera of the mobile electronic device;
automatically add the items to an electronic shopping cart in
response to capturing the image of the product codes within the
retail store by the camera of the mobile electronic device;
automatically delete items from the electronic shopping list in
response to capturing the image of the product codes within the
retail store by the camera of the mobile electronic device;
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update the downloadable user interface to display a graphical
indication of an association between stored coupon data and
one or more of the items in the electronic shopping list or the
electronic shopping cart;
store, at a database remote to the mobile electronic device, data
representative of the items in the electronic shopping cart and a
first subset of the stored coupon data associated with the items
in the electronic shopping cart;
receiving, at a point of sale terminal, an identification code
associated with the electronic shopping cart from the mobile
electronic device;
retrieving from the database, by the point of sale terminal, the
data representative of the items in the electronic shopping cart
and the first subset of the stored coupon data associated
with the items in the electronic shopping cart; and
in response to completing a transaction involving the one or
more items in the electronic shopping cart, modifying the first
subset of stored coupon data to add a marker that prevents
subsequent use of the first subset of stored coupon data by the
mobile electronic device.
App. Br. 15-16 (Claims Appendix) (Contested limitation emphasized).
Rejections
A. Claims 1-12 and 34--37 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more. 2
Final Act. 2.
2 See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 706.03(a) (9th
Ed., Rev. 08.2017, Jan. 2018).
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Application 13/523,932
B. Claims 1-10, 12, and 34--37 are rejected under pre-AIA § I03(a)
as being obvious over the combined teachings and suggestions of
Smith (US 2013/0254114 Al; Sept. 26, 2013), in view of de
Rubertis et al. (US 2010/0153209 Al; June 17, 2010) (hereinafter
"de Rubertis"), in view of Berstis et al. (US 6,618,683 B 1; Sept. 9,
2003) (hereinafter "Berstis"), and in further view of Gemaat et al.
(US 2012/0284107 Al; Nov. 8, 2012) (hereinafter "Gemaat").
Final Act. 4.
C. Claim 11 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Smith,
de Rubertis, Berstis, Gemaat, and Official Notice (see also NPL
Walmart In-Store Pick-Up as evidence in support of Official
Notice). Final Act. 9.
Issues on Appeal
Did the Examiner err in rejecting claims 1-12 and 34--37 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
Did the Examiner err in rejecting claims 1-12 and 34--37 under
pre-AIA 35 U.S.C. § I03(a), as being obvious over the cited combinations of
references?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Rejection A under 35 US.C. § 101
Mayo/Alice Analysis
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409
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U.S. at 67). Moreover, if a method can be performed by human thought
alone, or by a human using pen and paper, it is merely an abstract idea and is
not patent eligible under§ 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "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). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two, whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfish, 822 F.3d at 1336.
The Examiner's Rejection A under 35 US.C. § 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 1-12 and 34--37 are directed to a judicial exception,
i.e., an abstract idea, because the claims are directed to:
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the method of managing a shopping list by displaying the list,
associating coupons to items, adding items to the list by
scanning them, displaying the associated coupons with the item
in the list, and marking a coupon used after a transaction is a
certain method of organizing human activities, fundamental
economic practice, and an idea of itself.
Final Act. 2. 3
In determining whether claims are patent-eligible under Section 101,
our reviewing court guides: "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided."
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). The Federal Circuit also guides that "[E]xaminers are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
In support, the Examiner cites several Federal Circuit cases that
contain claims similar to Appellant's claims in which the Courts have held
the subject claims to be ineligible under § 101: "Classen 4( collecting and
comparing known information); SmartGene5 (comparing new and stored
3 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
4 The Examiner is referring to Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (processing data about vaccination
schedules and then vaccinating).
5 The Examiner is referring to SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950, 955 (Fed. Cir. 2014) (nonprecedential)
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information and using rules to identify options); Cybeifone6 (using
categories to organize, store and transmit information); Content Extraction
( data recognition and storage); and Ultramercial 7 ( an idea, having no
particular concrete or tangible form)." Final Act. 2-3.
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
There is no improvement to another technology or technical
field, no improvements to the functioning of the computer
itself, and no meaningful limitations beyond generally linking
the use of an abstract idea to a particular technical environment.
The invention is merely presenting content, providing a
("Whatever the boundaries of the 'abstract ideas' category, the claim at
issue here involves a mental process excluded from section 101: the mental
steps of comparing new and stored information and using rules to identify
medical options."). In SmartGene, step (c) of Advanced Biological
Laboratories' claim 1 recites: "generating in said computing device advisory
information for one or more therapeutic treatment regimens in said ranked
listing based on said patient information and said expert rules." Id. at 952.
6 The Examiner is referring to Cyberfone Systems, LLC v. CNN Interactive
Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014) (nonprecedential)
(receiving or transmitting data over a network, e.g., using the Internet to
gather data, is abstract).
7 The Examiner is referring to Ultramercial Inc. v. Hulu LLC, 722 F.3d
1335, 1346 (Fed. Cir. 2013) ("[T]he Supreme Court has stated that, even if a
claim does not wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or post-solution
activity-such as identifying a relevant audience, a category of use, field of
use, or technological environment."), vacated and remanded, WildTangent,
Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014) (remanding for
consideration in light of Alice, 134 S. Ct. 2347).
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downloadable user interface readable on a mobile electronic
device, displaying shopping list data, generating an
association between coupon data and item data, adding items to
the list by scanning, removing items, displaying the associated
coupons in the list, and marking coupons used/redeemed.
Performing these functions are already well-understood in the
industry. Furthermore, the steps of presenting content,
providing a downloadable user interface readable on a mobile
electronic device, displaying shopping list data, generating an
association between coupon data and item data,
adding/removing items to the list by scanning, displaying the
associated coupons in the list, and marking coupons
used/redeemed are all steps able to be performed by a human.
At most Applicant is simply applying these steps to a computer
environment by having a generic computer performing generic
computer functions. Specifically, providing, receiving,
displaying, generating, and managing content/data are well-
understood, routine and conventional activities previously
known in the industry.
Final Act. 3 ( emphasis added). 8
For the aforementioned reasons, the Examiner concludes that all
claims 1-12 and 34--37 on appeal are not patent eligible under 35 U.S.C.
§ 101.
8 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[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 is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellant contends that claims 1-12 and
34--37 satisfy step 1 because "they are directed to one of the statutory classes
set forth under 35 U.S.C. § 101." App. Br. 6.
However, we note that the issue of whether a claim is directed to a
judicial exception, such as an abstract idea, is separate and independent from
whether a claim is directed to statutory subject matter (i.e., "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof' -35 U.S.C. § 101). Claims that fall
within one of the four subject matter categories may nevertheless be
ineligible if they encompass laws of nature, physical phenomena, or abstract
ideas. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
Appellant also contends:
The problem of preventing fraudulent use of electronic coupons
does not exist outside the environment of a computer system
and poses unique technical problems as compared to paper
coupons, where such paper coupons are usually taken from the
customer at the time of purchase to prevent reuse. The claimed
technical solution of modifying a subset of data forming an
electronic coupon to prevent fraudulent use is a novel and non-
obvious solution to a computer-centric problem.
App. Br. 7.
In response, the Examiner disagrees, and further explains the basis for
the rejection:
Essentially, the claim limitation is just modifying/marking the
coupon data so that the coupon can be identified as used. This
certainly exists outside of computer technology in the form of
punching coupons with a hole punch, crossing them with a
permanent marker, or even tearing them in half. ([S]ee
Advisory Action, 6/27/2016, listing examples). The merchant
could even have a list of coupon reference number data on a
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piece of paper, and when a customer presents a coupon or
business card with a certain referral number, the merchant can
mark/cross the number off the list indicating that it has been as
being turned in or redeemed (without needing to physically take
the coupon/business card). Ultimately, the claims are just
collecting and organizing data, and this can be done without the
use of computer technology.
Ans. 4--5
We agree with the Examiner's findings that prevention of fraudulent
coupon use is not limited to electronic coupons, and also that such
prevention was well known in the art at the time of Appellant's invention.
See our discussion below regarding our affirmance of rejections B and C of
claims 1-12 and 34--37 under§ 103(a).
Moreover, our reviewing court has held that claims directed to data
collection, analysis, and display are directed to an abstract idea. Elec. Power
Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent
ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093-94 (Fed. Cir. 2016).
The Federal Circuit further guides that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364,
13 72 (Fed. Cir. 201 7) ( concluding "claims directed to the collection, storage,
and recognition of data are directed to an abstract idea"). The court also
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guides that data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
Although Appellant cites a list of Federal Circuit opinions and asserts
that "claim 1 is directed to subject matter similar in nature to subject matter
that has previously been identified as eligible for patenting," Appellant does
not substantively analogize the claims on appeal to the subject claims in
each of the listed cases. App. Br. 7-8
The Examiner also concludes:
For instance, "shopping list data" can be displayed on a piece of
paper; "images of product codes" can be captured simply by a
human looking at the product box; a human can use a pen and
paper to "add items" to the shopping cart list; a human can
"delete items" from the shopping list by crossing
out/ deleting/ erasing the listed items from the paper; and
a human can "add a marker to the stored coupon data" on the
paper containing the coupon data by using a pen to make a
mark (crossing it off, writing down a number, etc.).
Ans. 4.
But for the recitations of a mobile electronic device and generic
databases ( claim 1 ), we are of the view that the recited steps or acts
( excepting the use of the recited "camera") could be performed as mental
steps, or with the aid of pen and paper. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) ("While the
Supreme Court has altered the § 101 analysis since CyberSource in cases
like Mayo and Alice, we continue to 'treat[] analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category."'
(Brackets in original) (quoting Elec. Power Grp., 830 F.3d at 1354)); see
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also CyberSource, 654 F.3d at 1375 ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
"Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67
(1972). (Emphasis added). Moreover, "merely selecting information, by
content or source, for collection [and] analysis ... does nothing significant
to differentiate a process from ordinary mental processes .... " Elec. Power
Grp., 830 F.3d at 1355. Data gathering, such as receiving and analyzing (or
identifying data), by itself, does not transform an otherwise-abstract process
or system of information collection and analysis. See id.
For at least these reasons, we are not persuaded the Examiner erred in
concluding that each of claims 1-12 and 34--37 on appeal is directed to the
abstract ideas of a method of organizing human activities, a fundamental
economic practice, and an idea of itself, these being similar to the abstract
ideas identified by our reviewing courts ( as discussed above), that could
additionally be performed as mental steps, albeit with the aid of pen and
paper.
Appellant provides no further substantive arguments regarding Alice
Step 1. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Therefore, we proceed to Alice Step 2.
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Mayo/Alice Analysis - Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 2-3;
Ans. 3-5), we tum to the second part of the Alice/Mayo analysis. We
analyze the claims to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357
(internal quotations and citation omitted).
Regarding Alice Step 2, Appellant addresses the purported inventive
concept of the claims. Appellant urges:
Even if, assuming arguendo, the subject matter of
claim 1 is found to be abstract, the claimed subject matter
provides a sufficiently concrete transformation of a computing
system itself so as to ground the invention to a particular
inventive implementation. A claim that is directed to an abstract
idea is nevertheless eligible for patenting if it recites limitations
that provide significantly more than the abstract idea itself.
App. Br. 9.
In support, Appellant attempts to analogize their claims to the claims
considered by the court in: (1) BASCOM Glob. Internet Servs. Inc., v. AT&T
Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016), (2) McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), and Amdocs
(Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (2016). App. Br. 9-
11.
In response, the Examiner further explains the basis for the rejection:
it should be noted that each of the claim sets from BASCOM,
McRo, and Amdocs are all considerably different. The claim
sets from each of these cases were found to be eligible for
differing reasons. As such, it is essentially impossible for
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Appellant's claims to be analogous to all three of these cases.
Because of this, when Appellant is attempting to argue the
claims are analogous to one case, Appellant is seemingly
contradicting the arguments for the other two cases.
Ans. 5.
The Examiner explains in detail how the claims considered by the
court in BASCOM, McRo, and Amdocs are distinguished from Appellant's
claims. Ans. 6-11. Based upon our review of the record, we find no error
regarding the Examiner responsive explanations. Id.
However, Appellant also contends there is no preemption:
independent claim 1 is tied to structures to display shopping list
data, capture images of product codes, automatically add items
to an electronic shopping cart, automatically delete items from
an electronic shopping list, and add a marker to stored coupon
data to prevent subsequent use of electronic coupon data. Claim
1 is also narrowly drawn to not preempt other forms of
electronic coupon management, such as systems that merely
remove used coupons from a user's account or store
identification information related to used coupons.
App. Br. 11.
Our reviewing court provides applicable guidance: "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
Therefore, we are not persuaded by Appellant's argument regarding
the absence of complete preemption. See App. Br. 11.
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet. Therefore, we find Appellant's claimed invention does
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not provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as considered by the court in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014) (emphasis added).
Further regarding the use of the recited generic "mobile electronic
device" and databases ( claim 1 ), the Supreme Court held "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358; see also
BASCOM, 827 F.3d at 1348 ("An abstract idea on 'an Internet computer
network' or on a generic computer is still an abstract idea"). On this record,
we are of the view that Appellant's claims do not operate the recited generic
computer components in an unconventional manner to achieve an
improvement in computer functionality.
Our reviewing court provides additional guidance: See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter."); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) ( claims reciting, inter alia, sending messages over a network,
gathering statistics, using a computerized system to automatically determine
an estimated outcome, and presenting offers to potential customers found to
merely recite "'well-understood, routine conventional activities"' by either
requiring conventional computer activities or routine data-gathering steps)
(internal citation omitted); see also Elec. Power Grp., 830 F.3d at 1355
("We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are 'insufficient to pass the test of an
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inventive concept in the application' of an abstract idea" ( quoting buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014)));
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic computer
element-a processor-and a series of generic computer 'components' that
merely restate their individual functions .... That is to say, they merely
describe the functions of the abstract idea itself, without particularity. This is
simply not enough under step two").
The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
Because we find Appellant has not established that claims 1-12 and
34--37 are directed to an improvement in the recited generic mobile
electronic device and databases ( claim 1 ), we conclude that none of the
claim limitations, viewed both individually and as an ordered combination,
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellant's claims 1-12 and 34--37, considered as a whole, is
directed to a patent-ineligible abstract idea (under step one), and under step
two, does not recite something significantly more to transform the nature of
the claim into a patent-eligible application.
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Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection A under 35 U.S.C. § 101 of claims 1-12 and 34--37, as
being directed to a judicial exception, without significantly more. 9
Rejection B of Independent Claim 1 under 35 US.C. § 103(a)
Issues: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of Smith, de Rubertis, Berstis, and Gemaat
teaches or suggests the contested limitation:
in response to completing a transaction involving the one or
more items in the electronic shopping cart, modifying the first
subset of stored coupon data to add a marker that prevents
subsequent use of the first subset of stored coupon data by the
mobile electronic device[,]
within the meaning of representative claim 1? 10 (emphasis added).
9 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
10 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec. 19, 11. 15-19 ("Having
thus described several exemplary embodiments of the invention, it is to be
appreciated various alterations, modifications, and improvements will
readily occur to those skilled in the art. Such alterations, modifications, and
improvements are intended to be part of this disclosure, and are intended to
be within the scope of the invention. Accordingly, the foregoing description
and drawings are by way of example only.") ( emphasis added).
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Contested Limitation (Claim 1)
Appellant contends:
Contrary to the teachings of claim 1, Gemaat does not disclose,
teach, or suggest modifying or altering stored coupon data.
Gemaat describes a retail server and a coupon server, but makes
no mention of modifying stored coupon data or adding a marker
to stored coupon data to prevent repeated use of an electronic
coupon. According to the teachings of Gemaat, once an
electronic coupon has been used, that coupon is merely
removed form a user's account.
App. Br. 12.
Appellant cites Gemaat, paragraphs 66, 79, 111, 119, and 157 in
support. Id. Appellant specifically indicates that Gemaat ,r 79 indicates that
"[ c ]oupon usage data indicates the redemption of one or more coupon offers,
along with unique identifiers associated with the redemptions, so that
coupons may be removed from the redeeming user's account(s)." App. Br.
12.
Appellant urges:
Notably, because the electronic coupon data in Gemaat is not
modified, there is no marker associated with the coupon itself
that prevents future use of the coupon. Rather, it is the removal
from the user's account that Gemaat relies on to prevent future
use of the coupon. In contrast to Gemaat, it is the modification
of the electronic coupon itself via the marker recited in
[Appellant's] claim 1, which is absent from Gemaat, that
prevents repeated use of an electronic coupon, not only by the
original user, but also by any other subsequent user who may
attempt to use the marked electronic coupon.
App. Br. 13.
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In response, the Examiner further explains the basis for the rejection:
Appellant [] makes the erroneous and irrelevant argument that
"it is the modification of the electronic coupon itself via the
marker recited in [Appellant's] claim 1, which is absent from
Gemaat, that prevents repeated use of an electronic coupon, not
only by the original user, but also by any other subsequent user
who may attempt to use the marked electronic coupon." ( see
Appeal Brief, pg. 13). This statement is erroneous because,
according to the actual claim language, the invention does not
claim to prevent subsequent use of the coupon by "any other
subsequent user," it ONLY prevents subsequent use by THE
mobile electronic device. For reference claim 1 recites:
"modifying the ... stored coupon data to add a marker that
prevents subsequent use of the ... stored coupon data by the
mobile electronic device." Appellant's statement is irrelevant
because we are only concerned with whether the electronic
mobile device is prevented from subsequent use of the coupon,
not whether "any other subsequent user" can subsequently use
the coupon. Regardless, Gemaat most certainly teaches
modifying the coupon data to prevent subsequent use by the
electronic device: [the Examiner cites Gemaat paragraphs 126,
132, 144, 157, and 158 is support].
Ans. 12-13.
We agree with the Examiner that Appellant's arguments are not
commensurate with the scope of claim 1. 11 The disputed portion of claim 1
merely requires, in pertinent part "modifying the first subset of stored
coupon data to add a marker that prevents subsequent use of the first subset
of stored coupon data by the mobile electronic device." (emphasis added).
11 Because '"applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (internal citation omitted).
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Appellant focuses on paragraph 79 of Gemaat in support of the
argument that "because the electronic coupon data in Gemaat is not
modified, there is no marker associated with the coupon itself that prevents
future use of the coupon." App. Br. 13. However, we find the "coupon
usage data that indicates the redemption of one or more coupon offers"
(Gemaat, ,r 79) teaches or at least suggests: "modifying the first subset of
stored coupon data to add a marker that prevents subsequent use of the first
subset of stored coupon data by the mobile electronic device." Claim 1
( emphasis added).
Embodiments described in other paragraphs of Gemaat teach, for
example, at paragraph 39, that "the server marks the particular coupon as
redeemed." ( emphasis added). Paragraph 81 of Gemaat describes, in
pertinent part:
retail server 140 sends data indicating the coupon identifier of
each coupon redeemed during the period. The data may also
include data describing the transaction( s) in which the coupon
was redeemed, including one or more of sales price( s ),
transaction date(s) and time(s ), and identifiers of product(s) or
service( s) included in each transaction.
( emphasis added).
Similarly, paragraph 157 of Gemaat describes: "The coupon server
further utilizes a coupon's unique identifier in a report of redeemed coupons
to log that the particular coupon has been redeemed." 12 (emphasis added).
12 An obviousness inquiry is not limited to the prior art's preferred
embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370
(Fed. Cir. 2007). Moreover, "[c]ombining two embodiments disclosed
adjacent to each other in a prior art patent does not require a leap of
inventiveness." Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d
982,991 (Fed. Cir. 2009). "[I]n a section 103 inquiry, 'the fact that a
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Further, we emphasize that our reviewing court guides: "'the question
under 35 USC 103 is not merely what the references expressly teach but
what they would have suggested to one of ordinary skill in the art at the time
the invention was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750
( CCP A 197 6) ). (Emphasis added); see also MPEP § 2123.
Applying this reasoning here, we find a preponderance of the
evidence supports the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness. Accordingly, we sustain the Examiner's
rejection B under§ 103(a) of representative independent claim 1.
Associated dependent claims 2-10, 12 and 34--37 (not argued separately) fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
Remaining Claim 11 rejected under§ 103 Rejection C
Appellant does not advance separate, substantive arguments traversing
rejection C of claim 11. See App. Br. 13-14. Arguments not made are
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (quoting In re Lamberti, 545 F.2d 747,750 (CCPA 1976)).
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Reply Brief
To the extent Appellant may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-12 and 34--37 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner did not err in rejecting claims 1-12 and 34--37 under
35 U.S.C. § 103(a), as being obvious over the cited combinations of
references.
DECISION
We affirm the Examiner's decision rejecting claims 1-12 and 34--37
under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-12 and 34--37
under pre-AIA 35 U.S.C. § 103(a).
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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