Ex Parte BYRD

Patent Trial and Appeal Board

Jul 9, 2018

13486274 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/486,274 06/01/2012
21839 7590 07/11/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Nathaniel BYRD
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.
0076412-000064 4721
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/11/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHANIEL BYRD
Appeal2017-003358
Application 13/486,27 4
Technology Center 3600
Before CARL W. WHITEHEAD JR., AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-15 and 41-55, which are all of the pending
claims. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies MasterCard International Incorporated as the real party
in interest. (App. Br. 3.)
2 Claims 16-40 and 56-80 have been canceled. (App. Br. 19, 21 (Claims
App'x).)
Appeal2017-003358
Application 13/486,274
STATEMENT OF THE CASE
Introduction
According to Appellant, "[t]he present disclosure relates to methods
and systems for processing variable redemption value electronic coupons,
specifically variable redemption value electronic coupons whose value is
unknown to the coupon holder until either at the merchant location or upon
committing to spend in a financial transaction." (Spec. ,r 1.)
Exemplary Claims
Claims 1, 6, 41, and 46 are independent. Claims 1 and 6, reproduced
below, are exemplary of the claimed subject matter:
1. A method for processing a financial transaction,
compnsmg:
receiving, by a receiving device and from a point of sale
terminal, an authorization request for a financial transaction
wherein the authorization request includes at least a transaction
amount and a coupon identifier, the coupon identifier being a
value unique to an electronic coupon;
identifying, in a database, coupon information based on
the coupon identifier, wherein the coupon information includes
at least a discount amount;
modifying the transaction amount based on at least the
discount amount;
processing, by a processing device, the authorization
request for the financial transaction based on the modified
transaction amount; and
transmitting, by a transmitting device, a response to the
authorization request, wherein the response includes at least the
modified transaction amount and discount amount.
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Application 13/486,274
6. A method for processing a financial transaction,
compnsmg:
reading, from a payer device, a machine-readable code,
wherein the machine-readable code is encoded with at least a
coupon identifier, wherein the coupon identifier is associated
with an electronic coupon;
transmitting, by a transmitting device, an authorization
request for a financial transaction, wherein the authorization
request includes at least a transaction amount and the coupon
identifier;
receiving, by a receiving device, a response to the
authorization request, the response including at least a modified
transaction amount and a discount amount; and
processing the financial transaction based on at least the
modified transaction amount, wherein the discount amount
associated with the electronic coupon is undiscoverable by the
payer device prior to the transmitting of the authorization
request.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yoo et al. ("Yoo")
Misra et al. ("Misra")
US 2012/0215609 Al
US 2013/0173372 Al
REJECTI0NS 3
Aug.23,2012
July 4, 2013
Claims 1-15 and 41-55 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. (Final Act. 7-8.)
Claims 1, 2, 5, 41, 42, and 45 stand rejected under 35 U.S.C. § I02(e)
as being anticipated by Yoo. (Final Act. 9-11.)
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011.
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Application 13/486,274
Claims 3, 4, 43, and 44 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yoo and the Examiner's Official Notice. (Final
Act. 12-13.)
Claims 6-15 and 46-55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yoo and Misra. (Final Act. 14--18.)
ISSUES
1. Whether the Examiner erred in rejecting claims 1-15 and 41-55
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
2. Whether the Examiner erred in finding Yoo discloses
"receiving, by a receiving device and from a point of sale terminal, an
authorization request for a financial transaction wherein the authorization
request includes at least a transaction amount and a coupon identifier, the
coupon identifier being a value unique to an electronic coupon[,]" as recited
in independent claim 1 and commensurately recited in independent claim 41.
3. Whether the Examiner erred in finding the combination of Yoo
and Official Notice teaches or suggests the subject matter of claims 3, 4, 43,
and 44.
4. Whether the Examiner erred in finding the combination of Yoo
and Misra teaches or suggests a "payer device" and a "discount amount
associated with the electronic coupon [that] is undiscoverable by the payer
device prior to the transmitting of the authorization request," as variously
recited in independent claims 6 and 46.
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ANALYSIS
A. Claims 1-15 and 41-55: Section 101 (Abstract Idea)
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "transform the nature of
the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355
( citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). In considering whether a claim is directed to
an abstract idea, we acknowledge-as did the Court in Mayo--that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
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nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that is itself the abstract idea and whether the claims merely invoke
generic processes and machinery. See Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
In applying the framework set out in Alice, and as the first step of that
analysis, the Examiner finds the claims are directed to the abstract idea of
"managing a coupon redemption process." (Final Act. 2.) The Examiner
further finds this concept is similar to "managing online product
distribution" as addressed by the Federal Circuit in Ultramercial. 4 (Id. at 2-
3, 7-8.)
Appellant raises several arguments challenging the Examiner's
finding that the claims are directed to an abstract idea. (See App. Br. 6-12.)
Appellant first argues the Examiner has failed to "consider the actual
wording of the claims," but is instead overly summarizing them. (Id. at 8.)
Appellant also asserts the Examiner did not consider any features of the
claims and, therefore, essentially skipped the first step of the analysis. (Id. at
8-9.) Appellant further contends the Examiner "asserts in conclusory
fashion that the claims are directed to the abstract idea." (Id.) Appellant
does not, however, provide an explanation of how the claims pass the first
step of the analysis, but merely regurgitates the language of the claims. (Id.)
This is not persuasive of Examiner error.
Appellant insists that "neither the Final Office Action nor the
Examiner's Answer provides any discussion or analysis of the recitations of
4 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
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the appealed claims which the Examiner believes to recite the abstract idea
of organizing human activities or managing a coupon redemption process."
(Reply Br. 3.) We disagree; the Examiner finds that the claims are similar to
those in Ultramercial, which were held to be directed to abstract ideas.
(Final Act. 3). In addition, the Examiner's characterization of the claims as
directed to "managing a coupon redemption process" (Final Act. 2), is
consistent with Appellant's statement in the Specification that "[t]he present
disclosure relates to methods and systems for processing variable
redemption value electronic coupons." (Spec. ,r 1.)
Our reviewing court has explained that claims directed to "the mere
formation and manipulation of economic relations" and "the performance of
certain financial transactions" have been held to be directed to abstract ideas.
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014); see also, e.g., Ultramercial, 772 F.3d
at 716 (computer-implemented system for "using advertising as a currency
[on] the Internet"); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352,
1355 (Fed. Cir. 2014) (computer-implemented system for guaranteeing
performance of an online transaction); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (computer-
implemented system for "verifying the validity of a credit card transaction[]
over the Internet"). This precedent supports the Examiner's rejection here,
and is not persuasively rebutted by Appellant.
Because we agree with the Examiner, at step one of the Alice analysis,
that the claims are directed to an abstract idea, we tum to the second step of
the Alice analysis, in which we must determine whether the additional
elements of the claims transform them into patent-eligible subject matter.
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Step Two: Whether Additional Elements Transform the Idea Into
Patent-Eligible Subject Matter
Having concluded the claims are directed to an abstract idea, the
Examiner also finds the additional elements or combinations of elements
beyond the abstract idea do not amount to "significantly more" than the
abstract idea itself. (Final Act. 3-5.) In particular, the Examiner finds
"Applicant's claims do not present a solution necessarily rooted in the
technology in order to overcome a problem specifically arising in the
computer network (or other technological) realm." (Id. at 4.) The Examiner
also finds "the system could be substituted with a human user and the
underlying invention would result in a similar solution to the problem at
hand." (Id. at 4.)
Appellant argues the Examiner's findings are in error because the
claims "address a problem related to electronic coupons that is necessarily
rooted in the computer technology implementing a payment network in
exemplary embodiments, and does not have a brick and mortar equivalent,"
as in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). (App. Br. 11-12.) Appellant does not, however, persuasively argue
why the cited claim limitations contain an inventive concept that transforms
the abstract idea into patent-eligible subject matter. The need for processing
variable redemption value coupons, as Appellant's claimed invention
purports to address, is not a technical problem; it is a business problem.
In DDR Holdings, in contrast, the Federal Circuit determined that,
although the patent claims at issue involved conventional computers and the
Internet, the claims addressed a challenge particular to the Internet, i.e.,
retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
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away from a host's website after "clicking" on an advertisement and
activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal
Circuit held that the claims were directed to statutory subject matter because
they claimed a solution "necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks." Id.
No such technological advance is evident in the present invention.
Unlike the situation in DDR Holdings, Appellant does not identify any
problem particular to computer networks and/or the Internet that the claims
allegedly overcome. (See Ans. 3-5.) As the Examiner finds, "[t]he claims
recite features such as the point of sale terminal, the payer device, the
machine readable code, the receiving device, the database, the processor, the
transmitting device, the authorization request, and the response to the
authorization request." (Id. at 12.) As Examiner further finds, and we agree,
the listed features are either elements of a generic computer or processes a
generic computer can be programmed to perform. (Final Act. 3-5.) Thus,
contrary to Appellant's argument, the solution here is not a technical
solution; rather, Appellant's claimed solution is rooted in routine use of
conventional computer technology to carry out the abstract idea of
addressing a business problem pertaining to processing coupons. As our
reviewing court has held, merely reciting "tangible components" does not
render claims non-abstract where, as here, "the components [are]
conventional and [are] used in conventional ways." Affinity Labs. of Texas,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (noting that
claims that recited "simply [] the use of cellular telephones as tools in the aid
of a process focused on an abstract idea" was "not enough to constitute
patentable subject matter").
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For at least the aforementioned reasons, Appellant has not persuaded
us the Examiner erred in rejecting independent claims 1, 6, 41, and 46 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter, or in rejecting
on the same basis dependent claims 2-5, 7-15, 42--45, and 47-55, which
Appellant argues collectively with the independent claims. (App. Br. 6-12.)
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims
1-15 and 41-55.
B. Claims 1, 2, 5, 41, 42, and 45: Section 102(e) over Yoo
The Examiner finds Yoo discloses all of the limitations of claims 1, 2,
5, 41, 42, and 45. (Final Act. 9-11.) With regard to independent claims 1
and 41, Appellant argues the Examiner's findings regarding Yoo are in error
because "Yoo fails to disclose the recited point of sale terminal, the recited
authorization request that is received by the receiving device from the point
of sale terminal, and the recited unique coupon identifier." (App. Br. 15.) In
particular, according to Appellant, Yoo does not disclose a point of sale
terminal sending the authorization request, wherein the authorization
request contains both a transaction amount and coupon ID, as recited in
independent claims 1 and 41. (Id. at 13.)
Although we agree with the Examiner's findings that Yoo discloses a
point of sale terminal that performs some of the functions required by the
claims at issue (Final Act. 9; Ans. 10; Yoo ,r 91), the Examiner does not
clearly explain the pertinence ofYoo's point of sale terminal sending an
authorization request with all of the required information as recited in claims
1 and 41. (Final Act. 9-10.) Yoo does disclose a request sent by the point of
sale device in the form of a charge request that is arguably analogous to the
claimed authorization request. In particular, in Yoo, "[t]he point-of-sale
device 278 transmits a charge request 284 to the merchant acquirer
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computer system 280. The charge request 284 includes the PAN 270 [and]
the terminal number of the point-of-sale device 278." (Yoo ,r 92 (emphasis
added).) Assuming the claimed authorization request maps to Yoo's "charge
request," such request as disclosed by Yoo does not include information that
maps to the transaction amount and coupon ID, as recited in claims 1 and
41. Nor does the Examiner point to any other request sent by the point of
sale device in Yoo that would satisfy the requirements of claims 1 and 41.
For these reasons, we are persuaded by Appellant's arguments that the
Examiner erred in finding Yoo discloses all of the limitations of independent
claims 1 and 41, and we, therefore, reverse the Examiner's 35 U.S.C.
§ 102( e) rejection of those claims, along with the rejection of claims 2, 5, 42,
and 45 dependent thereon.
C. Claims 3, 4, 43, and 44: Section 103(a) over Yoo and Official Notice
The Examiner rejects dependent claims 3, 4, 4 3, and 44 under 3 5
U.S.C. § 103(a) as unpatentable over the combination of Yoo and the
Examiner's Official Notice. (Final Act. 12-13.) Claims 3 and 4 are
dependent on claim 1 and claims 43 and 44 are dependent on claim 41. The
Examiner's rejection of these claims is partially based on the rejection of
claims 1 and 41 under 35 U.S.C. § 102(e), which we find deficient as noted
above. See id. For the reasons expressed as to independent claims 1 and 41,
therefore, we also reverse the Examiner's 35 U.S.C. § 103(a) rejection of
dependent claims 3, 4, 43, and 44.
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D. Claims 6-15 and 46-55: Section 103(a) Over Yoo and Misra
The Examiner rejects claims 6-15 and 46-55 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Yoo and Misra. (Final Act.
14--18.) Claims 6 and 46 are independent.
Appellant argues Yoo and Misra do not teach or suggest an
authorization request that includes a transaction amount and coupon
identifier. (App. Br. 15.) We disagree. Unlike claims 1 and 41, claims 6
and 46 do not require the authorization request to be sent by a point of sale
terminal. With regard to claims 6 and 46, the Examiner points to paragraphs
99--102 of Yoo as teaching this element. (Final Act. 14.) Yoo teaches a
module that "submits the voucher ID's A and D, the discounted amount of
$48 and the respective merchant account ID 130 to the transaction validation
or pass-through module 314." (Yoo ,r 102.) Therefore, Yoo does teach an
authorization request that includes a coupon identifier ("voucher ID") and
transaction amount ("discounted amount of $48").
Appellant also argues the Examiner's rejection is in error because the
combination of Yoo and Misra does not teach or suggest "the recited
discount amount that is undiscoverable by the payer device prior to the
transmission of the authorization request." (App. Br. 16.) Appellant also
argues the sections of Yoo cited by the Examiner do not disclose a payer
device. (Reply Br. 12.) We disagree.
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Yoo discloses a payer device in the form of a mobile communication
device. (See Final Act. 14--15, 17.) As the Examiner finds, and we agree,
Yoo discloses:
[The] payer's device does not have the discount amount stored
in the local device. Therefore it is unable to find out the discount
amount associated with the electronic coupon until the
transmitting step activates the voucher look module (320). The
voucher look module pulls the discount value after the user's
request for a financial transaction.
(Final Act. 14--15 (citing Yoo ,r,r 61---69 and 90-110).) The Examiner further
finds "Yoo's sequence would have suggested [to] one of ordinary in the art
to perform[] a two-step data acquiring process where the discount amount is
undiscoverable until the transmission of an authorization request." (Final
Act. 6; see also id. at 14--15.) In particular, Yoo discloses "the voucher ID's
204 can be transmitted to a mobile device 24 and be received by a mobile
application that has been logged into the respective consumer account."
(Yoo ,r 69.) Therefore, as the Examiner finds, and we agree, Yoo at least
suggests an embodiment wherein the mobile device ("payer device")
receives only the voucher ID' s and the discount amount associated with
those ID' s is undiscoverable until an authorization request is sent, as
required by claims 6 and 46.
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of independent claims 6 and 46, or
of claims 7-15 and 46-55, argued collectively with claims 6 and 46. We,
therefore, sustain the rejection of these claims.
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DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-15 and 41-55
is affirmed.
The Examiner's 35 U.S.C. § 102(e) rejection of claims 1, 2, 5, 41, 42,
and 45 is reversed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 3, 4, 43, and
44 is reversed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 6-15 and 46-
55 is affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.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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