Tillster, Inc.Download PDFPatent Trials and Appeals BoardMar 8, 20212020005334 (P.T.A.B. Mar. 8, 2021) 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. 14/269,020 05/02/2014 Bilal A. Chinoy EMN8.039A 1614 20995 7590 03/08/2021 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER FRUNZI, VICTORIA E. ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 03/08/2021 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): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BILAL A. CHINOY and ANTHONY KUA ____________ Appeal 2020-005334 Application 14/269,020 Technology Center 3600 ____________ Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and STEVEN M. AMUNDSON, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–14 and 23–38, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Tillster, Inc. Appeal Br. 3. Appeal 2020-005334 Application 14/269,020 2 STATEMENT OF THE CASE Appellant’s invention relates “generally to the field of mobile loyalty and payment systems, and specifically to mobile loyalty and payment systems using temporary short codes.” Spec. ¶ 1. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A system for managing temporary codes, comprising: a first processor configured to: receive, via a packet switched network, data from a wireless mobile electronic device, the data identifying a user of the mobile device, the mobile device comprising: a memory storing a mobile application, a second processor operatively connected and in data communication with the memory, the second processor configured to run the mobile application, a wireless communications capability that is also operatively connected and in data communication with the second processor and the memory, and a display configured to provide images; generate a first temporary code; transmit, via the packet switched network, the first temporary code to the mobile device; store the first temporary code in a database comprising a plurality of temporary codes, the database further storing information about the identified user associated with the first temporary code; receive, via the packet switched network, a second temporary code from a point of sale system comprising at least one point of sale terminal configured to execute application software; compare the second temporary code with the temporary codes stored in the database; Appeal 2020-005334 Application 14/269,020 3 upon identifying a match of the second temporary code and the first temporary code stored in the database, transmit, via the packet switched network, the information about the identified user to the application software in the point of sale system; and upon failing to identify a match between the second temporary code and one of the temporary codes stored in the database, transmit, via the packet switched network, an error message to the point of sale system. REJECTIONS Claims 1–14 and 23–38 stand rejected under 35 U.S.C. § 101 as directed to an abstract idea without significantly more. Final Act. 2. Claims 1, 8, 23, 24, 26, 27, and 29 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Jr. (US 2012/0129492 A1; published May 24, 2012) (“Mechaley”) and Mardikar et al. (US 8,630,907 B2; issued Jan. 14, 2014) (“Mardikar”). Final Act. 4. Claims 2, 3, 9, 10, 30, and 31 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, Faryna (US 2010/0218241 A1; published Aug. 26, 2010), and Goldfinger et al. (US 8,626,593 B2; issued Jan. 7, 2014) (“Goldfinger”). Final Act. 16. Claims 4, 5, 11, 12, 32, and 33 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, and Dowlatkhah (US 8,646,063 B2; issued Feb. 4, 2014). Final Act. 20. Claims 6, 13, and 34 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, and Wesby (US 2013/0173484 A1; published July 4, 2013). Final Act. 21. Claims 7, 14, and 35 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, Goldfinger, Appeal 2020-005334 Application 14/269,020 4 Wesby, and Jovicic et al. (US 8,514,968 B2; issued Aug. 20, 2013) (“Jovicic”). Final Act. 22. Claims 25 and 28 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, and Goldfinger. Final Act. 25. Claim 36 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, Goldfinger, Wesby, and Jovicic. Final Act. 27. Claim 37 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, and Van Luchene et al. (US 6,687,679 B1; issued Feb. 3, 2004) (“Van Luchene”). Final Act. 28. Claim 38 stands rejected under 35 U.S.C. § 103 as unpatentable over the combination of Mechaley, Mardikar, and LaPorte et al. (US 2011/0307318 A1; published Dec. 15, 2011) (“LaPorte”). Final Act. 30. ANALYSIS Section 101 Rejection An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Appeal 2020-005334 Application 14/269,020 5 Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77) Appeal 2020-005334 Application 14/269,020 6 (alterations in original). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO has published guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”); October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55,942 (available at the USPTO’s website) (“October 2019 PEG Update”). The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at Section 2106 (9th ed. rev. 10.2019 June 2020).2 Under the 2019 Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application. See 2019 Guidance, 84 Fed. Reg. at 52, 55–56; see also MPEP § 2106.04. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or 2 All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. Appeal 2020-005334 Application 14/269,020 7 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05. 2019 Guidance, Step 2A, Prong 1 Under the first step of the Alice/Mayo framework, the Examiner determines, and we agree, that the claimed invention is directed to a “‘mental process’ (matching two codes) and ‘commercial or legal interactions’ (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) (using the codes in performing a transaction).” Final Act. 2 Appellant contests the Examiner’s rejection generally, but does not directly address the Examiner’s determinations under Prong 1. See Appeal Br. 13–17. Accordingly, Appellant does not apprise us of error in the Examiner’s analysis under Prong 1. 2019 Guidance, Step 2A, Prong 2 In determining whether the claims are “directed to” the identified abstract idea, we next consider whether the claims recite additional elements that integrate the judicial exception into a practical application. For the reasons set forth below, we discern no additional elements (or combination of elements) recited in the claims that integrate the judicial exception into a practical application. See 2019 Guidance, 84 Fed. Reg. at 54–55. Appellant argues that the claims are “integrated into a practical application” and “reflect an improvement to another technology or technical field (e.g., a POS [point of sale] computer system technology).” Appeal Br. 13–15. Specifically, Appellant argues that “the specific use of the first and Appeal 2020-005334 Application 14/269,020 8 second temporary codes as defined by independent Claim 1 results in an improvement to the first processor’s ability to confirm the identity of the user.” Id. at 15. According to Appellant, [t]he matching of the first and second temporary codes enables the server to confirm the identity of the user by sending the temporary code only to the user’s mobile phone. Thus, other parties cannot impersonate the user by using other information associated with the user, such as the user’s phone number. Id. We are not persuaded by Appellant’s arguments and agree with the Examiner’s findings and conclusions. See Final Act. 3; Ans. 6. Appellant has not sufficiently shown that the claims are directed to an improvement to the computer system or technological process. Appellant’s Specification describes “customers us[ing] applications installed on their mobile devices” to “interact with the merchant on some level . . . before, during, or after a transaction with the merchant.” Spec. ¶ 3. The Specification further describes that “most [of these] applications only give customers access to extra payment options or access to a loyalty program, not both.” Id. The Specification explains that some of these applications “require a customer to give the merchant their personal telephone number before conducting a transaction,” which may “lead to security or privacy issues for the customer, which is not desirable in any system.” Id. ¶ 5. Some of these applications require customers “to carry a card containing their account number on them.” Id. ¶ 6. The present claims are directed to storing and maintaining “temporary codes and their associations to the customers, information about the customers’ transaction history, and information about the customers’ rewards or coupons.” Id. ¶ 8. The loyalty server is used to “find[] a matching code” and “transmit Appeal 2020-005334 Application 14/269,020 9 information about the customer matched to the code query back to the point of sale system.” Id. ¶ 8. Then, according to the Specification, “the temporary short code may be removed from the loyalty server,” and “a code that is removed from the loyalty server after it is used may not cause security issues.” Id. ¶¶ 10–11. We agree with the Examiner that the claims do not have any limitations “indicating an improvement to the efficiency, speed, or reduction in electric use or any other improvements.” See Ans. 6. As the Examiner correctly reasons, “[t]he alleged improvement of reducing security risk is only an alleged improvement to the process of comparing two data sets (temporary codes),” which “could also be accomplished in a manner of paper.” Id. Thus, the “use of the first and second temporary codes” reflects an improvement to the abstract idea, not to the point of sale system. Accordingly, the claims fail to integrate the abstract idea into a practical application. 2019 Guidance, Step 2B Turning to step 2 of the Alice/Mayo framework, we look to whether the claims (a) add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, or (b) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Guidance, 84 Fed. Reg. at 56. Appellant does not directly address the Examiner’s findings under Step 2B. See Appeal Br. 13–17. We agree with the Examiner that the claimed “additional elements and processors are recited at a high-level of generality (i.e., as a generic processor performing a generic computer Appeal 2020-005334 Application 14/269,020 10 function of processing data) such that it amounts to no more than mere instructions to apply the exception using a generic computer component” and also merely add “insignificant extra-solution activity to the judicial exception by generating, transmitting, comparing, and storing codes (i.e. data gathering).” Final Act. 3. The Specification explains that the “loyalty server 102 can contain a processor 104 configured to manage a database 106 through the use of various modules.” Spec. ¶ 29. The Specification further explains that the claimed invention “may be embodied in, and fully or partially automated by, code modules executed by one or more computers or computer processors.” Id. ¶ 77. Appellant does not direct our attention to anything in the Specification that indicates the claimed computer components perform anything other than the well-understood, routine, and conventional functions of collecting, storing, and transmitting data. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); Alice, 573 U.S. at 225–26 (receiving, storing, and sending information over networks insufficient to add an inventive concept). Given the claimed generic computer components performing generic computer functions, we conclude that the combination of limitations in each independent claim does not supply an “inventive concept” that renders the claim “significantly more” than an abstract idea. Thus, the claims do not satisfy § 101 under Mayo/Alice step two. Appeal 2020-005334 Application 14/269,020 11 For at least the above reasons, we sustain the Examiner’s rejection of independent claims 1, 8, 23, 26, and 29 as being directed to patent-ineligible subject matter, as well as dependent claims 2–7, 9–14, 24, 25, 27, 28, and 30–38, which were not separately argued. Section 103 Rejections Claim 1 recites, inter alia, “transmit, via the packet switched network, the information about the identified user to the application software in the point of sale system.” Appeal Br. 21, Claims App. Claims 8, 23, 26, and 29 recite commensurate limitations. Id. at 24, 26–28. The Examiner finds that Mardikar teaches this limitation. Final Act. 8. Specifically, the Examiner relies on Mardikar’s sending a message to the point of sale system to confirm the transaction. Id. (citing Mardikar 7:50–60); see also Ans. 8. According to the Examiner, the claimed “information about the identified user is a broad term,” and “any of the information being stored in the remote location about the user that is sent to the POS” in Mardikar teaches the transmission of “information about the identified user,” as claimed. Ans. 8. Appellant contends that the combination of Mechaley and Mardikar does not teach the disputed limitation. Appeal Br. 18; see Appeal Br. 19–20; Reply Br. 6–7. Specifically, Appellant argues that “Mardikar at most” sends “a confirmation message . . . to the POS,” and that this message “is sent so that the transaction is confirmed,” but that Mardikar’s message does not include “any data that could be considered information about the identified user that is stored in a database.” Appeal Br. 18; Reply Br. 7. We are persuaded by Appellant’s arguments. The cited section of Mardikar discloses “if the transmitted associated password matches, for Appeal 2020-005334 Application 14/269,020 12 example, an account number, a telephone number, a money amount limit, etc., as maintained in a database at the remote location, the remote location may send a message to the POS so that the transaction is confirmed.” Mardikar 7:55–59. In this example, Mardikar describes: (1) a database in the remote location maintains information such as account number, telephone number, money amount limit, etc.; (2) the transmitted associated password matches with the information maintained in the database; and (3) the remote location sends a message to the point of sale “so that the transaction is confirmed.” Although the Examiner finds that “sending account information to the POS when the passwords match would teach this limitation,” (Ans. 8) Mardikar does not disclose that any account information is sent in the transmission confirming the transaction. Mardikar simply states that the remote location “may send a message to the POS so that the transaction is confirmed.” Mardikar 7:50–51. Therefore, the Examiner has not sufficiently explained how Mardikar’s confirmation message sent “so that the transaction is confirmed” teaches “transmit[ting] . . . the information about the identified user” as claimed. Further, the Examiner has not sufficiently explained how the other cited references overcome this deficiency in Mardikar. Accordingly, on this record, we do not sustain the Examiner’s § 103 rejections of independent claims 1, 8, 23, 26, and 29, and dependent claims 2–7, 9–14, 24, 25, 27, 28, and 30–38. See Appeal Br. 20. CONCLUSION We affirm the Examiner’s rejection of claims 1–14 and 23–38 under 35 U.S.C. § 101. Appeal 2020-005334 Application 14/269,020 13 We reverse the Examiner’s rejections of claims 1–14 and 23–38 under 35 U.S.C. § 103. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–14, 23–38 101 Eligibility 1–14, 23–38 1, 8, 23, 24, 26, 27, 29 103 Mechaley, Mardikar 1, 8, 23, 24, 26, 27, 29 2, 3, 9, 10, 30, 31 103 Mechaley, Mardikar, Faryna, Goldfinger 2, 3, 9, 10, 30, 31 4, 5, 11, 12, 32, 33 103 Mechaley, Mardikar, Dowlatkhah 4, 5, 11, 12, 32, 33 6, 13, 34 103 Mechaley, Mardikar, Wesby 6, 13, 34 7, 14, 35 103 Mechaley, Mardikar, Goldfinger, Wesby, Jovicic 7, 14, 35 25, 28 103 Mechaley, Mardikar, Goldfinger 25, 28 36 103 Mechaley, Mardikar, Goldfinger, Wesby, Jovicic 36 37 103 Mechaley, Mardikar, Van Luchene 37 38 103 Mechaley, Mardikar, LaPorte 38 Overall Outcome 1–14, 23–38 Appeal 2020-005334 Application 14/269,020 14 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation