Ex Parte CHAUHAN

Patent Trial and Appeal Board

Dec 28, 2018

14095020 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/095,020 12/03/2013
21839 7590 01/02/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Rohit CHAUHAN
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.
0076412-000201 5803
EXAMINER
CHOI, PETER H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
01/02/2019 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 ROHIT CHAUHAN
Appeal2017-009125
Application 14/095,020
Technology Center 3600
Before ELENI MANTIS MERCADER, JOYCE CRAIG, and
SCOTT E. BAIN, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-24, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Mastercard
International Incorporated. App. Br. 2.
Appeal2017-009125
Application 14/095,020
INVENTION
Appellant's invention relates to a method and system for
implementing limited use offers at point of sale devices. Abstract. Claim 1
is illustrative and reads as follows:
1. A computer-implemented method for validating
limited use offers, comprising:
storing, in an offer database of a processing server, a
plurality of offer data entries, each offer data entry including
data related to an offer for the purchase of goods or services,
wherein said data includes at least (i) an offer identifier, (ii) one
or more limitations on redemption that are required to be
satisfied in order for the offer to be redeemed, and (iii) a use
flag that indicates whether the offer has been redeemed more
than a specified number of times as predetermined by a
distributor of the offer;
receiving, by a receiving device of the processing server,
an offer validation request, from a point-of-sale device of a
merchant, over a communication network via a specified
network protocol, wherein the offer validation request includes
at least a specific offer identifier;
identifying, in the offer database of the processing server,
a specific offer data entry where the included offer identifier
corresponds to the specific off er identifier;
determining, by the processing device of the processing
server, at least one of (i) whether the use flag included in the
specific offer data entry indicates that that related offer has been
redeemed more than the specified number of times and (ii)
whether the at least one or more limitations on redemption have
been satisfied;
generating, by a processing device of the processing
server, a notification, wherein
(i) the notification indicates the offer related to the specific
offer data entry as being valid (a) when the use flag of the
specific offer data entry indicates that the related offer has not
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Application 14/095,020
been redeemed more than the specified number of times and (b)
when the one or more limitations on redemption of the specific
offer data entry are satisfied, and
(ii) the notification indicates the offer related to the specific
offer data entry as being invalid (a) when the use flag of the
specific offer data entry indicates that the related offer has been
redeemed more than the specified number of times or (b) when
at least one of the one or more limitations on redemption of the
specific offer data entry are not satisfied; and
transmitting, by a transmitting device of the processing
server, the generated notification to the merchant, over the
communication network via the specified network protocol, in
response to the received offer validation request.
REJECTIONS
Claims 1-24 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception to patentable subject
matter. Final Act. 2-5.
Claims 1-24 stand rejected under pre-AIA 35 U.S.C. I03(a) as
unpatentable over Cunningham et al. (US 7,877,288 Bl; issued Jan. 25,
2011) ("Cunningham") in view of Christensen (US 2014/0122207 Al;
published May 1, 2014). Final Act. 5-11.
ANALYSIS
We have reviewed the rejections of claims 1-24 in light of
Appellant's arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant's arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
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Application 14/095,020
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Rejection of Claims 1-24 under 35 USC§ 101
Appellant contends the Examiner did not make a prima facie case of
patent ineligibility because the Examiner failed to demonstrate that the
alleged abstract idea- "validating offers presented at a point-of-sale that are
only redeemable a limited number of times"-is similar to concepts the
courts have identified as abstract ideas previously. App. Br. 7-8.
We disagree. Patent eligibility under 35 U.S.C. § 101 is a question of
law that is reviewable de nova. See Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333 (Fed. Cir. 2012). We are aware of no controlling authority that
requires an examiner to provide factual evidence under step one of the Alice
framework to support a determination that a claim is directed to an abstract
idea. Instead, the Federal Circuit has repeatedly noted that "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Examiner satisfies the burden of establishing a prima facie case
under 35 U.S.C. § 132 by setting forth a rejection in a sufficiently articulate
and informative manner. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
If the Examiner "adequately explain[ s] the shortcomings ... the burden
shifts to the applicant to rebut the prima facie case with evidence and/or
argument." Hyatt, 492 F.3d at 1370. The Final Office Action adequately
explains the§ 101 rejection. See Final Act. 2-5. The Examiner's statements
satisfy§ 132(a) because they apply the Alice analytical framework and
apprise Appellant of the reasons for the§ 101 rejection under that
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framework. Appellant have not responded by alleging a failure to
understand the rejection. To the contrary, Appellant clearly identifies the
abstract idea identified by the Examiner. See App. Br. 8.
For these reasons, we are not persuaded that the Examiner failed to
make a prima facie case of patent invalidity under § 101.
Alice Step One: Abstract Idea
Appellant contends the claims are not directed to an abstract idea
because the Examiner oversimplified the claims. App. Br. 9. The table set
forth by Appellant (App. Br. 9--11 ), however, does not accurately reflect the
Examiner's findings and conclusions in the Final Action as to which claim
limitations make up the abstract idea. See Final Act. 3--4.
Appellant next argues that the claimed invention is not similar to the
concept in SmartGene Inc. v. Advanced. Biological Laboratories SA, 555 F.
App'x 950 (Fed. Cir. 2014). App. Br. 11. Appellant argues that, unlike the
claims in SmartGene, the pending claims are directed to solving a problem
which exists entirely within the realm of electronic transaction processing.
Id. at 12.
We are not persuaded. In SmartGene, the Federal Circuit concluded
claims were patent ineligible because they did "no more than call on a
'computing device,' with basic functionality for comparing stored and input
data and rules, to do what doctors do routinely." SmartGene, 555 F. App'x
at 954. In the instant case, the claims limit the use of offers by comparing
the redemption of an offer using predetermined rules stored in a database to
the redemption activity at a point of sale device to determine if the
redemption is valid. See Final Act. 4. In other words, data used in an
algorithm process that uses a central system (i.e., "processing devices" and
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"processing servers") to adjust the data using mathematical comparisons and
rule-based processes. The claims at issue in SmartGene relied upon "expert
rules" for "'evaluating and selecting' from a stored 'plurality of different
therapeutic treatment regimens."' SmartGene, 555 F. App'x at 955. The
"expert rules" in SmartGene are analogous to the conditions set forth in the
"determining" step of claim 1, for example.
We are not persuaded by Appellant's argument that SmartGene is
distinguishable because the pending claims are directed to solving a problem
that cannot be performed without a computer. App. Br. 12. The SmartGene
court noted
section 101 covers neither "mental processes"-associated with
or as part of a category of "abstract ideas"-nor processes that
merely invoke a computer and its basic functionality for
implementing such mental processes, without specifying even
arguably new physical components or specifying processes
defined other than by the mentally performable steps.
SmartGene, 555 F. App'x at 954. Here we are not persuaded the claims
require new physical components or processes defined other than by
mentally performable steps.
Appellant further argues the Examiner erred by improperly relying on
SmartGene because it is a nonprecedential case. App. Br. 12-13.
While SmartGene is not precedential, it is persuasive. We agree with
the Examiner that, in the instant case, the identified steps in claim 1 are
directed to data that is being used in an algorithm that uses a processing
device of a processing server for processing this data using mathematical
comparisons and rule-based processes. See Final Act. 3--4. In other words,
the claimed steps do not rely on an inventive device or technique for
displaying information or new techniques for analyzing information, but
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rather constitute a generic recitation of steps for mathematically
manipulating data. See id.
The collection of information and analysis of information ( e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
Similarly, "collecting, displaying, and manipulating data" is an abstract idea.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017). Further, a process that employs mathematical algorithms
to manipulate existing information to generate additional information is
abstract. Digitech Image Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014).
Appellant next argues the claims "do not run the risk o(preemption of
an abstract idea." App. Br. 13.
Appellant's preemption argument is also not persuasive. See id.
Preemption is not the sole test for patent eligibility, and any questions on
preemption in the instant case have been resolved by the Examiner's Alice
analysis. As our reviewing court has explained: "questions on preemption
are inherent in and resolved by the§ 101 analysis," and, although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
cf 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.").
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For these reasons, we are not persuaded the Examiner erred in
concluding claims 1-24 are directed to the abstract idea of "validating offers
presented at a point-of-sale that are only redeemable a limited number of
times."
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to "significantly more" than the abstract idea. Alice, 573
U.S. at 217-18. The implementation of the abstract idea involved must be
"more than [the] performance of 'well-understood, routine, [ and]
conventional activities previously known to the industry."' Content
Extraction, 776 F.3d at 1347--48 (quoting Alice, 573 U.S. at 224--25)
( alteration in original).
Alice Step Two: Significantly More
Turning to Alice step two, Appellant argues that "an unspecified,
generic computer would not be configured to execute the specific method
steps of the independent claims." App. Br. 14.
We are not persuaded by Appellant's argument. Although Appellant
asserts the claims require "improved functionality over and unspecified
'generic' computer," Appellant does not persuasively explain why this is the
case. The Specification does not indicate that the claim requires any
specialized computer, hardware, software, database, or server to store,
receive, identify, determine, generate, and transmit certain data recited in the
claim. See, e.g., Spec. ,r,r 9, 19-26, Figs. 1, 2. The law is clear that simply
programming a computer to perform what would otherwise be an abstract
idea is not sufficient to impart patent eligibility. See Alice, 573 U.S. at 224--
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25. In other words, the claim merely implements the abstract idea on a
generic computer. See id.
Appellant contends the claims are directed to an improvement in
computer functionality. App. Br. 15-17 (citing Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)). Specifically, Appellant
argues the "instant claims are directed to an improved method and system
for validating an offer presented at a POS device of a merchant, which
eliminates the requirement of merchants to update hardware and/ or
software, does not require significant resources for managing ( at a merchant
terminal), and provides efficiency and effective communication." App. Br.
16-17.
We disagree with Appellant because the Federal Circuit has found this
line of argument unavailing. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
13 59 (Fed. Cir. 2015) ("[R ]elying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible."). In OIP Technologies, the Federal Circuit explained that the
"concept of 'offer based pricing' is similar to other 'fundamental economic
concepts' found to be abstract ideas by the Supreme Court and this court."
OIP Techs., 788 F.3d at 1362 (citing Alice, 573 U.S. at 220-22; Bilski, 561
U.S. at 611 (risk hedging). Claim 1 does not recite specific computer
components or processes, let alone frame the method in terms of an
improvement to such components or processes. Rather, claim 1 merely
recites the augmentation of a human practice by computer automation,
which shows only the use of a computer as a tool, not an improvement to
computer capabilities as in Enfzsh. Appellant has not identified any portion
of the Specification, nor provided any evidence or technical reasoning,
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persuasively demonstrating claim 1 is directed to a technical advance or
improvement to computer functionality.
In view of Appellant's Specification, and consistent with the
Examiner's determinations, we determine the claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a different
state or thing;
( v) other meaningful limitations beyond generally linking the use
of the abstract idea to a particular technological environment; or
(vi) a specific limitation other than what is well-understood, routine,
conventional activity in the field or unconventional steps that confine
the claim to a particular useful application.
See Manual of Patent Examining Procedure ("MPEP") § 2106.05. Thus, the
claims are not directed to something significantly more than the abstract
idea.
For these reasons, we sustain the Examiner's§ 101 rejection of claim
1, as well as the Examiner's§ 101 rejection of claims 2-24, not argued
separately. See App. Br. 18. See 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection of Claims 1-24 under 35 US.C. § 103(a)
Appellant contends the Examiner erred in finding the combined
teachings of Cunningham and Christensen teach or suggest the "generating"
step of claim 1. App. Br. 19. Specifically, Appellant argues the cited
portions of the prior art do not teach or suggest "a notification is generated
that indicates the offer as being VALID when TWO conditions are met: (1)
when the use flag indicates that the offer has not yet been redeemed more
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than the specified number of times AND (2) when the limitations on
redemption are satisfied." Id.
Appellant's arguments are not persuasive. The Examiner found
Cunningham teaches an offer identifier "wherein in transmits the record
number of the manufacturer's offer." Ans. 7 (citing Cunningham col. 6:66-
col. 7:8). The Examiner also found Cunningham teaches one or more
limitations on redemption that must be satisfied in order for the offer to be
redeemed, wherein there must be a match between the encrypted identifier
(i.e. token) associated with the manufacturer offer (and the purchase by
association at the time of redemption) and the data maintained by offer
redemption clearinghouse. Id. (citing Cunningham Abstract). The
Examiner further found Cunningham teaches the concept of a use flag,
wherein the system destroys "the redeemed offer and limited redemption of
retailers' and cooperative offers to the authorized retailer(s)." Id. The
Examiner relied on Christensen as expressly teaching the concept of whether
the offer has been redeemed more than a specified number of times as
predetermined by a distributor of the offer. Id. (citing Christensen at ,r 37).
The Examiner does not contend, nor is the Examiner required to
demonstrate, that the identical text of rejected claim 1 appears in the cited
references. In re Bond, 910 F.2d 831,832 (Fed. Cir. 1990).
Appellant has not persuasively rebutted the Examiner's findings. The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413,425 (CCPA 1981). Appellant has not persuaded us that the disputed
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limitation would not have been obvious to an artisan of ordinary skill in light
of the combined teachings of Cunningham and Christensen. See Reply Br.
9--11.
For these reasons, we are not persuaded that the Examiner erred in
finding the combination of Cunningham and Christianson teaches or
suggests the disputed limitations of claim 1.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 1, as well as the Examiner's§ 103(a) rejection of
independent claim 13, which Appellant argues is patentable for similar
reasons. See App. Br. 22. We also sustain the Examiner's rejection of
dependent claims 2-12 and 14--24, not argued separately with particularity.
DECISION
We affirm the Examiner's decision rejecting claims 1-24.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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