Michael A. Racusin

Patent Trials and Appeals Board

Mar 6, 2020

15184083 - (R) (P.T.A.B. Mar. 6, 2020)

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

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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