Ex Parte BERNTSSON

Patent Trial and Appeal Board

Jun 5, 2018

14030620 (P.T.A.B. Jun. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/030,620 09/18/2013
150180 7590 06/07/2018
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
FIRST NAMED INVENTOR
Kent Olof Niklas BERNTSSON
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.
50535 7441
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/07/2018 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT OLOF NIKLAS
Appeal2017-000856
Application 14/030,620
Technology Center 3600
Before JUSTIN BUSCH, MONICA S. ULLAGADDI, and
SCOTT B. HOWARD, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-21, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
Appellant's invention is directed to a "system, device, method and
computer-readable medium to target payment cardholders with offers based
on their propensity to travel." Spec. i-f 5; see id. i-f 1. Appellant's claimed
invention receives a customer's payment data that includes travel
information, extracts certain travel information from the payment data,
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Application 14/030,620
matches the travel information with a travel offer and transmits the offer to
the customer. Id. i-f 6. Claims 1, 8, and 15 are independent claims. Claim 1
is illustrative and reproduced below:
1. A method comprising:
receiving, via a network interface, payment card
transaction data from a merchant bank, the transaction data
including a cardholder identifier associated with a customer,
addenda for the transaction data, and a vendor;
extracting, with a processor, travel information from the
addenda, the travel information including an anticipated date of
travel and an anticipated location;
matching, with the processor, the travel information with
a travel offer stored in a vendor offer database, resulting in a
matched travel offer;
transmitting to the customer, via the network interface, the
matched travel offer.
REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 2--4.
Claims 1-21 stand rejected under 35 U.S.C. § 103 as obvious in view
of Ferguson (US 2011/0208601 Al; Aug. 25, 2011) and Fordyce (US
8,744,906 B2; June 3, 2014). Final Act. 4--15.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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THE§ 101 REJECTION
The Examiner concludes claims 1-21 are directed to judicially
excepted subject matter. Final Act. 2--4; Ans. 3-7. In particular, the
Examiner finds the claims "are directed to targeting payment cardholders
with offers based on their propensity to travel which is an idea [in and] of
itself' and that the claims merely recite steps related to manipulating data,
"which is considered to be an abstract idea inasmuch as such activity is
considered [a] method of [organizing] human activity." Final Act. 3--4. The
Examiner concludes the particular elements recited in the claims, taken
alone or in combination, are merely well-understood, routine, and
conventional generic computer functions that do not impose sufficient
meaningful limitations to transform the abstract idea into patent-eligible
subject matter. Id. at 3; Ans. 6-7 (citing Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2357-58 (2014); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 713, 722-23 (Fed. Cir. 2014)).
Alice/Mayo Framework
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. There is no dispute that claims
1-21 are directed to one of these categories. See generally Final Act. 2-3;
Ans. 3.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012), and Alice, 134 S. Ct. at 2354, the Supreme Court
explained that § 101 "contains an important implicit exception" for laws of
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nature, natural phenomena, and abstract ideas. See Diamond v. Diehr,
450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a two-step
analytical framework for evaluating patent-eligible subject matter:
(1) "determine whether the claims at issue are directed to" a patent-ineligible
concept, such as an abstract idea; and, if so, (2) "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements" add enough to transform the "nature of the
claim" into "significantly more" than a patent-ineligible concept. Alice, 134
S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Instead of using
a definition of an abstract idea, "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 (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (citing Elec. Power, 830 F.3d at 1353-54); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea.").
Step two involves the search for an "inventive concept." Alice, 134
S. Ct. at 2355; Elec. Power, 830 F.3d at 1353. For an inventive concept,
"more is required than 'well-understood, routine, conventional activity
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already engaged in"' by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79--80).
Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner finds the
claims merely recite steps (i.e., receiving customer payment data, extracting
travel information from the data, matching the travel information to an offer,
and sending the offer to the customer) involved in targeting payment
cardholders with offers based on their propensity to travel, which the
Examiner alternatively characterizes as "optimizing content targeting," and
concludes, therefore, the claims are directed to an abstract idea. Final
Act. 3--4. The Examiner finds the claims are similar to claims found
ineligible by the Federal Circuit. Ans. 3--4 (citing Alice, 134 S. Ct. at 2357;
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat'!
Assoc., 776 F.3d 1343, 1347 (Fed. Cir. 2014); SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014) (unpublished);
Cyberfone Sys., LLC v. CNN Interactive Group, Inc., 558 F. App'x 988
(Fed. Cir. 2014) (unpublished)).
Appellant argues the claims are not directed to an abstract idea
because Appellant's claims do not recite the same words the Examiner uses
to characterize what the claims are directed to and because Appellant's
claims do not recite a human performing any of its steps. Br. 6-7. This
argument is unavailing because the purpose of step one is to determine what
the claims are directed to or focused on, which does not necessarily require
using the words from the claims themselves. In fact, the Examiner
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characterizes Appellant's invention using language from Appellant's
Specification. Spec.i-fi-f l, 5, 10.
The Federal Circuit has "treated collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas." Elec. Power, 830 F.3d
at 13 5 3-54 (concluding collecting, analyzing, and displaying information,
regardless of particular content, is an abstract idea); Content Extraction, 776
F.3d at 1347 (concluding collecting, recognizing, and storing information is
an abstract idea). The Federal Circuit also has concluded claims directed to
collecting, organizing or categorizing, and transmitting information
ineligible as being directed to abstract ideas. Digitech, 758 F.3d at 1350
("The method in the '415 patent claims an abstract idea because it describes
a process of organizing information through mathematical correlations and is
not tied to a specific structure or machine."); Cyberfone, 558 F. App'x at
991-92 (unpublished) (concluding "using categories to organize, store, and
transmit information," or "categorical data storage" was an abstract idea). In
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375-76 (Fed.
Cir. 2011 ), the Federal Circuit also explained that "purely mental processes
can be unpatentable, even when performed by a computer." Id. at 1375-76
(citing Gottschalkv. Benson, 409 U.S. 63, 65----67, 71, 73-74 (1972)). Our
reviewing court also recently concluded that acts of parsing, comparing,
storing, and editing data are abstract ideas. Berkheimer v. HP Inc., 881 F .3d
1360, 1366 (Fed. Cir. 2018).
In particular, the steps of receiving, analyzing, and providing
information (e.g., receiving payment travel data and providing a matching
offer based on an analysis (i.e., extracting travel information and matching it
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to an offer) of the received information) via a network interface are similar
to ideas that our reviewing court previously determined were abstract. See
Elec. Power, 830 F.3d at 1353 (concluding "collecting information,
analyzing it, and displaying certain results of the collection and analysis" is
abstract); Content Extraction, 776 F.3d at 1347 (concluding "[t]he concept
of data collection, recognition, and storage" is an abstract idea); Digitech,
758 F.3d at 1351 (concluding "taking existing information ... and
organizing this information into a new form" is an abstract idea). Further,
analyzing information either by steps that one may perform in their mind or
by mathematical algorithm has also been determined to be abstract. Elec.
Power, 830 F.3d at 1354.
The Federal Circuit also has consistently determined that claims
directed to similar fundamental economic practices are ineligible abstract
ideas. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed.
Cir. 2015) (concluding the claimed "concept of offer-based price
optimization" was an abstract idea); Ultramercial, 772 F.3d at 715
(concluding the claim was directed to "only the abstract idea of showing an
advertisement before delivering free content"); Alice, 134 S. Ct. at 2357
(concluding intermediated settlement was an abstract idea); Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344
(Fed. Cir. 2013) (concluding generating tasks based on rules in response to
an event was an abstract idea).
We agree with the Examiner that claim 1, as a whole, is directed to
optimizing content targeting or, more specifically, targeting payment
cardholders with offers based on their propensity to travel. We also agree
that the claims, as a whole, are merely directed to collecting customer
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payment data, extracting travel information from the payment data, matching
the extracted travel information to an offer, and transmitting the matched
offer to the customer. See Ans. 3--4; see also Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract idea can generally be
described at different levels of abstraction.").
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
For the above reasons, we are unpersuaded the Examiner erred in
concluding the claims are directed to an abstract idea.
Step Two of Alice Framework
Next, we tum to step two of Alice to determine whether 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. The Examiner finds the claims merely recite performing the
abstract idea on a computer using a generic computer system--i.e., "a
particular, albeit well-understood, routine and conventional technological
environment." Final Act. 3--4. The Examiner explains that there is no
inventive concept because no element or combination of elements recited in
the claims transform the abstract idea into significantly more than the idea
itself. Ans. 5. The Examiner finds the claims recite only common computer
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elements without requiring specialized hardware and that the generic
computers and processors are insufficient to transform the abstract idea into
a patent-eligible invention. Id. at 6 (citing Alice, 134 S. Ct. at 2357;
Ultramercial, 772 F.3d at 713, 722-23).
Appellant argues that the claims "address a business challenge ... that
arises due to technical limitations imposed by the standardized transmission
of such payment card transaction data among entities on a network." Br. 8.
Appellant asserts the claims are similar to the claims in DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), contending Appellant's
claims "do not 'merely recite the performance of some business practice
known from the pre-Internet world with the requirement to perform it on
[the] Internet,"' but rather are "'necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks."' Br. 8 (quoting DDR, 773 F.3d at 1257).
Appellant's claims merely recite receiving a customer's payment
transaction data, extracting travel information within the data, matching an
offer to the travel information, and sending the offer to the customer. The
claims also recite a generic network interface to receive and transmit
information and a generic processor to extract certain information from the
received data and match the information to an offer.
Appellant's steps are nothing more than the routine use of a
conventional computer. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36 ("[T]he first step ... asks whether the focus of the claims is on the
specific asserted improvement in computer capabilities ... or, instead, on a
process that qualifies as an 'abstract idea' for which computers are invoked
merely as a tool."); see also Alice, 134 S. Ct. at 2358-59. Here, the focus of
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the claims is not on an improvement in computers as tools or upon an
innovative way to use computers or other devices, but is focused on an
independently abstract idea that uses generic, well-understood, conventional,
and routine computer and networking elements as tools for their intended
purposes.
More specifically, Appellant's claims utilize generic computing
hardware to perform mental steps-i.e., receiving data, identifying travel
information within the data, matching the travel information to an offer, and
providing the customer with the matched offer. However, simply improving
the speed at which a process can be done by automating that process does
not render an ineligible subject matter eligible. See OIP Techs., 788 F.3d at
1363 ("[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible."); see also
Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed.
Cir. 2015) ("[O]ur precedent is clear that merely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea."); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive.").
The fact that the recited process and systems can more efficiently
perform a human process does not improve a computer or technology, but
rather improves the process itself. See Gottschalk v. Benson, 409 U.S. 63,
67 (1972) (explaining that the claimed steps could easily "be carried out in
existing computers long in use, no new machinery being necessary.").
Accordingly, the claimed limitations, considered both individually and
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together, do not add significantly more to the abstract idea and, therefore, do
not render the subject matter patent eligible.
Appellant also argues the claims "do not attempt to tie up any
exception." Br. 9. "'[W]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."' Fair Warning IP, 839 F.3d at 1098 (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63
(Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract."). Further, "[w]here a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa, 788 F.3d at 1379.
Summary
For the above reasons, Appellant has not persuaded us the Examiner
erred in rejecting claims 1-22 under 35 U.S.C. § 101 as being directed to
merely an abstract idea, rendering the claimed subject matter ineligible.
THE § 103 REJECTION
The Examiner finds Ferguson teaches or suggests the receiving and
extracting steps and Fordyce teaches or suggests the matching and
transmitting steps recited in independent claims 1, 8, and 15. Final Act. 4--5,
8-9, 12 (citing Ferguson i-f 15; Fordyce 2:55, 2:60-62, 5:24--31, 15:23-25).
The Examiner concludes it would have been obvious to combine Ferguson
and Fordyce' s teachings "to better use the information that is mined from
payment companies." Final Act. 5 (citing Fordyce 1:31-32). Of particular
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note with respect to the independent claims, the Examiner finds Ferguson
teaches or suggests "receiving, via a network interface, payment card
transaction data from a merchant bank." Final Act. 4 (citing Ferguson i-f 15).
Among other arguments, Appellant contends Ferguson teaches
sending posting data from an issuer bank to a travel analysis system, but
does not teach receiving "payment card transaction data/ram a merchant
bank," as recited in the independent claims. Br. 9 (citing Ferguson i-f 15).
Appellant asserts Ferguson explicitly distinguishes between an issuer bank
and a merchant bank and the Examiner relies on Ferguson's disclosure of
receiving payment transaction data from the issuer bank rather than the
merchant bank. Id.
The Examiner responds that "[t]he functional limitation is receiving
payment card transaction data" and "Ferguson teaches posting transaction
data to a bank," which is relied on to teach "transaction data can be extracted
and analyzed from a financial institution." Ans. 7. The Examiner does not
explain whether or why the recited limitation of "from a merchant bank" is
being given patentable weight. Furthermore, to the extent that limitation is
given patentable weight, the Examiner provides no explanation of how
Ferguson would have taught or suggested the limitation to a person of
ordinary skill in the art or why a person of ordinary skill in the art would
have modified Ferguson's teachings to result in the recited limitation. For
example, the Examiner provides no explanation whether Ferguson would
have suggested to an ordinarily skilled artisan that the disclosed merchant
bank would have been involved in a transaction initiated at a particular
merchant and, if so whether it would have been obvious to a person of
ordinary skill in the art to modify Ferguson to receive the data from the
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merchant bank instead of the issuer bank. See Ferguson i-f 15. Other than
the explicit disclosure of receiving a money transfer from Ferguson's issuer
bank, the Examiner has provided no explanation or evidence regarding other
roles in which an ordinarily skilled artisan would have understood
Ferguson's merchant bank to serve.
Without such explanations or evidence from the Examiner, we are
unable to sustain the Examiner's rejection. Accordingly, constrained by this
record, we are persuaded the Examiner erred in rejecting claims 1-22 as
obvious under 35 U.S.C. § 103 in view of the combination of Ferguson and
Fordyce.
DECISION
We affirm the Examiner's decision to rejection claims 1-22 as
directed to ineligible subject matter under 35 U.S.C. § 101.
We reverse the Examiner's decision to reject claims 1-22 under
35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 41.50(a)(l).
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).
AFFIRMED
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