Michael A. RacusinDownload PDFPatent Trials and Appeals BoardMar 6, 202015184083 - (R) (P.T.A.B. Mar. 6, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/184,083 06/16/2016 Michael A. Racusin 46607-197245 7065 279 7590 03/06/2020 IP Docket Clark Hill PLC 130 East Randolph Street Suite 3900 Chicago, IL 60601 EXAMINER REFAI, RAMSEY ART UNIT PAPER NUMBER 3668 NOTIFICATION DATE DELIVERY MODE 03/06/2020 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): IPDocket@clarkhill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL A. RACUSIN ____________ Appeal 2018-006875 Application 15/184,083 Technology Center 3600 ____________ Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and SCOTT E. BAIN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellant1 requests rehearing of our Decision dated September 30, 2019 (“Decision”), in which we affirmed the Examiner’s decision to reject claims 1–7 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.2 Request for Rehearing, dated November 26, 2019 (“Request”). We have reconsidered the Decision in light of Appellant’s Request and, for the reasons noted below, we decline to modify our Decision. Appellant argues that the Decision errs in determining that the 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Michael A. Racusin. Appeal Br. 1. 2 We note that in the Decision we also reversed the Examiner’s rejection of claims 1–7 as anticipated by Cox. Appeal 2018-006875 Application 15/184,083 2 claimed invention does not integrate the judicial exception into a practical application. Request 2–3. Specifically, Appellant argues that the Decision fails to consider the claims as a whole. Request 2. According to Appellant, the claims as a whole improve a point of sale (POS) terminal that controls the pump because the terminal “is programmed to automatically enable the pump in response to gas discount cards that provide a discount on only one of several components that make up the retail gas price per gallon.” Request 2–3. Appellant further explains that conventional POS terminals could not process cards that only discount one of several components that make up the retail price. Appellant argues that the claimed invention solves a technical problem and, therefore, the claimed judicial exception is integrated into a practical application. Request 3. We disagree. Namely, the claimed invention does not integrate the judicial exception into a practical application. For example, the claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for a generic computer), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Specifically, we are not persuaded that the claimed invention improves the POS device or solves a technical problem. As the Examiner explains, “[t]he claimed invention merely performs a simple ‘calculation’ to determine the number of gallons that can be pumped at the pre-paid discounted rate using simple mathematics (addition and subtraction).” Ans. Appeal 2018-006875 Application 15/184,083 3 6. In other words, although the claimed invention may recite a novel mathematical calculation method for a POS device, the underlying steps are merely basic mathematical calculations, i.e. addiction and subtraction, performed by a generic computer. As such, as discussed in the Decision, the claimed invention does not provide a technical improvement, but instead merely uses the computer as tool to perform the abstract idea, namely to calculate a discounted gas price and conduct the sales transaction. Decision 9; see also, e.g., Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017) (using a computer as a tool to process an application for financing a purchase). Accordingly, we determine that the additional limitations, alone or in combination, do not integrate the judicial exception into a practical application. CONCLUSION While we have considered the arguments raised by Appellant in the Request, we find them not persuasive to identify error in the original Decision. Based on the record before us now and in the original appeal, we are still of the view that the Examiner did not err in rejecting claims 1–7 as being directed to patent-ineligible subject matter. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–7 101 Eligibility 1–7 Overall Outcome 1–7 Appeal 2018-006875 Application 15/184,083 4 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7 101 Eligibility 1–7 1–7 102 Cox 1–7 Overall Outcome 1–7 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED Copy with citationCopy as parenthetical citation