Ex Parte Algiene

Patent Trial and Appeal Board

Sep 22, 2017

11685676 (P.T.A.B. Sep. 22, 2017)

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. 11/685,676 03/13/2007 Ken Algiene 87188-720595 (077900US) 5042 20350 7590 09/26/2017 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER BEKERMAN, MICHAEL ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 09/26/2017 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEN ALGIENE Appeal 2016-008552 Application 11/685,676 Technology Center 3600 Before JOHN A. EVANS, AARON W. MOORE, and JASON M. REPKO, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of Claims 1, 7-9, 11-13, and 24-27, all of the claims pending in the application. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 Appellant states the real party in interest is First Data Corporation. App. Br. 3. 2 Rather than reiterate the arguments of the Appellant and the Examiner, we refer to the Appeal Brief (filed March 30, 2016, “App. Br.”), the Reply Brief (filed September 13, 2016, “Reply Br.”), the Examiner’s Answer (mailed July 29, 2016, “Ans.”), the Final Action (mailed October 6, 2015, “Final Appeal 2016-008552 Application 11/685,676 STATEMENT OF THE CASE The claims relate to a system for providing a coupon to a user. See Abstract. INVENTION Claims 1 and 13 are independent. An understanding of the invention can be derived from a reading of Claim 1, which is reproduced below with some formatting added: 1. A system for providing one or more coupons to a user, wherein the system comprises: a host computer system; a computer readable storage medium associated with the host computer system, wherein the computer readable storage medium comprises instructions executable by the host computer system to: receive a characteristic information set from each of a plurality of businesses, wherein each characteristic information set includes at least one characteristic of a business; receive a coupon set from each of the plurality of businesses, wherein each coupon set includes at least one coupon for at least one product or service; receive consumer loyalty program information from a user interface, wherein the consumer loyalty program information establishes the user’s membership in a consumer loyalty program tied to a particular payment method, the payment method resulting in awards for the user based on purchases made with the payment method; Act.”), and the Specification (filed March 13, 2007, “Spec.”) for their respective details. 2 Appeal 2016-008552 Application 11/685,676 receive a search request from the user interface, wherein the search request includes at least one characteristic or at least one identifier, and wherein the identifier represents a product or a service, the product or service characterized by a brand, a specific product or service type, and a general product or service category; select a first coupon from a first coupon set as provided by a particular business that provides at least one coupon which offers a discount to consumers using the particular payment method, and further based at least in part on: the consumer loyalty program information; and a comparison of at least some portion of the search request, the brand and the specific product or service type, and at least some portion of the characteristic information sets or some portion of the coupon sets; select a second coupon based at least in part on a comparison of at least some portion of the search request, the brand and general product or service category, but not the specific product or service type, and at least some portion of the characteristic information sets or some portion of the coupon sets; select a third coupon based at least in part on a comparison of at least some portion of the search request, the specific product or service type, but not the brand, and at least some portion of the characteristic information sets or some portion of the coupon sets; determine a relevance of the first coupon, the second coupon, and the third coupon, to the search request based at least in part on the comparison of at least some portion of the search request and at least some portion of the characteristic information sets or some portion of the coupon sets; sort the first coupon, the second coupon, and the third coupon, based at least in part on the relevance of each; and 3 Appeal 2016-008552 Application 11/685,676 transmit the first coupon, the second coupon, and the third coupon in order of the determined relevance. References and Rejections Awada et al. US 2002/0065713 Al May 30, 2002 US 2006/0178986 Al Aug. 10, 2006 US 2006/0282410 Al Dec. 14, 2006 Giordano et al. Weitzman et al. Hopp et al. US 2007/0156528 Al Filed Dec. 28, 2006 The claims stand rejected as follows:3 Claims 1, 7-9, 11-13, and 24-27 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 2-3. We have reviewed the rejections of Claims 1, 7-9, 11-13, and 24-27 in light of Appellant’s arguments that the Examiner erred. We have considered in this Decision only those arguments Appellant actually raised in the Brief. Any other arguments which Appellant could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We are not persuaded that Appellant identifies reversible error. Upon consideration of the arguments presented in the Appeal Brief, we do not agree with Appellant that the claims recite statutory subject matter 3 The Advisory Action (mailed Dec. 31, 2015) indicates the rejections under 35 U.S.C. § 103, as lodged in the Final Action, have been overcome. Ans. 2. ANALYSIS 4 Appeal 2016-008552 Application 11/685,676 under 35U.S.C. §101. We further agree with the Examiner that all the pending claims are unpatentable under 35 U.S.C. § 101. With respect to the rejections, we adopt as our own the findings and reasons set forth in the rejection from which this appeal is taken and in the Examiner’s Answer, to the extent consistent with our analysis below. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 6-12. Claims 1,7-9,11-13, and 24-27: Abstract Ideas Appellant argues all rejected claims as a group. See App. Br. 6-12. We choose Claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv). The rejection The Examiner finds the claims as a combination of steps or components, are directed to selecting coupons, sorting coupons, and transmitting coupons, which, the Examiner finds, is a fundamental economic practice, an idea of itself, and/or a method of organizing human activities. Ans. 2. The Examiner finds the claims do not include additional elements that amount to significantly more than the judicial exception because they do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Id. at 2-3. Interim guidance documents Appellant notes the USPTO has provided to Examiners various “Interim Guidance” documents on Patent Subject Matter Eligibility. App. 5 Appeal 2016-008552 Application 11/685,676 Br. 7. Appellant contends the Examiner has not properly applied the guidance. Id. at 8. We do not agree. The guidance materials themselves make clear that they create no rights or obligations and cannot form the basis for an argument on appeal: These guidance materials set out examination policy on rejections with respect to the Office’s interpretation of the subject matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). The guidance materials were developed as a matter of internal Office management and are not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Failure of Office personnel to follow the USPTO’s guidance materials is not, in itself, a proper basis for either an appeal or a petition. 37 CFR Part 1, May 2016 Subject Matter Eligibility Update, 3^4. We decide the present appeal based on 35 U.S.C. § 101 as interpreted by the Supreme Court and the Court of Appeals for the Federal Circuit. The Alice analysis I The Supreme Court has established a two-part test to distinguish patents that claim one of the patent-ineligible exceptions to statutory subject matter from those that claim patent-eligible applications of those concepts. See Alice Corp. Pty Ltd v. CLS Banklnt’l, 134 S. Ct. 2347, 2354 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73, 77-78 (2012)). 6 Appeal 2016-008552 Application 11/685,676 Our analysis begins with Alice step one. Although the two steps in the Alice framework “involve overlapping scrutiny of the content of the claims,” the “Supreme Court’s formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the § 101 inquiry.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). In this regard, we must articulate with specificity what the claims are directed to (Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1347 (Fed. Cir. 2017)), and “ask whether the claims are directed to [a technological improvement] versus being directed to an abstract idea.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (“[S]ome improvements in computer- related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like.”). “The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLCv. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1353); see also Enfish, 822 F.3d at 1335. There is no definitive rule to determine what constitutes an “abstract idea.” Rather, the Federal Circuit has explained that “both [it] and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.” Enfish, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are patent eligible under § 101, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel 7 Appeal 2016-008552 Application 11/685,676 descriptive nature can be seen-what prior cases were about, and which way they were decided”). Appellant contends “selecting coupons, storing coupons and transmitting coupons” is/are not analogous to any abstract idea, previously identified as such by the Courts. App. Br. 8. The Examiner finds the steps of the claimed method, are analogous to “comparing new and stored information and using rules to identify options,” (SmartGene Inc, v Advanced Biological Labs), “using categories to organize, store and transmit information” (Cyberfone Systems LLC v. CNN Interactive Group Inc), and “organizing information through mathematical correlations” (Digitech Image Techs. LLC v Electronics for Imaging Inc), which are all examples of abstract ideas. Ans. 4. Appellant contends the Examiner characterizes the claims at “a high level of abstraction and untethered from the language of the claims [which] all but ensures that the exceptions to [§] 101 swallow the rule.” Reply Br. 3 (quoting Enjish). We find, in agreement with the Examiner, that the claims recite an ordered combination of steps that “are directed to selecting coupons, sorting coupons, and transmitting coupons, which is a fundamental economic practice, an idea of itself, and/or a method of organizing human activities.” Ans. 2-3. We find the claimed activities relating to coupons may be fairly analogized to the “process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad,” which was found to be an abstract idea. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15 (Fed. Cir. 2014) 8 Appeal 2016-008552 Application 11/685,676 (“This ordered combination of steps recites an abstraction-an idea, having no particular concrete or tangible form”). II Because we find the claims are “directed to an abstract idea,” we analyze the claims to determine if the limitations, when considered both “individually and ‘as an ordered combination’” contain an “inventive concept” sufficient to transform the claimed “abstract idea” into a patent- eligible application. Alice, 134 S. Ct. at 2355-58. Appellant contends the claims include “specific limitations other than what is well understood, routine and conventional activities previously known in the industry.” App. Br. 9. Appellant argues the claims are entitled to such characterization because the Examiner has found the claims to be free of the prior art under 35 U.S.C. §§ 102 and 103. Id. Federal Circuit “precedent illustrates that pragmatic analysis of § 101 is facilitated by considerations analogous to those of §§ 102 and 103.” Internet Patents Corp. v. Active Networks, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015). However, “a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). So, although Appellant points to §§ 102 and 103 novelty and non-obviousness to support the argument, “[t]he search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty [and/or § 103 non-obviousness].” Id. Here, the question in step two of the Alice framework is not whether an additional feature is novel under § 102 but whether the implementation of the abstract idea on a computer involves “more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction & 9 Appeal 2016-008552 Application 11/685,676 Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359). We are not so persuaded. Appellant argues without proffer of evidence, that the claims as a whole recite “a specially programmed and designed device" and the claimed method is “an improvement to the functioning of computer devices involved in generating on-line coupons.” App. Br. 10. Appellant further argues, again without proffer of proof, the “use of a host computer and a user interface for receiving characteristic information ... is not a ‘computer network operating in its normal, expected manner,’ as in DDR Holdings." Id. at 12. Appellant maintains (without evidence) the claims include many, significant additional features that “ensure that the claims are much ‘more than a drafting effort designed to monopolize the abstract idea,’ as in DDR Holdings." App. Br. 12. We are not persuaded because arguments of counsel are not evidence and cannot take the place of factually supported objective evidence. See In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can attorney argument take the place of evidence lacking in the record. See Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Lawyer’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). 10 Appeal 2016-008552 Application 11/685,676 DECISION The rejection of Claims 1, 7-9, 11-13, and 24-27 under 35 U.S.C. §101 is AFFIRMED. 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11