Ex Parte COOKE

Patent Trial and Appeal Board

Sep 24, 2018

13622775 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/622,775 09/19/2012
21839 7590 09/26/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Alan COOKE
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.
0076412-000091 9325
EXAMINER
BAGGOT, BREFFNI
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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 ALAN COOKE
Appeal2017-007230
Application 13/622, 77 51
Technology Center 3600
Before MARC S. HOFF, JENNIFER S. BISK, and LARRY J. HUME,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 6, 8-13, 19, and 21-26, which are all claims pending in
the application. Appellant has canceled claims 1-5, 7, 14--18, and 20. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is MasterCard
International Inc. App. Br. 2.
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Application 13/622,775
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention "relate[] to
a technical solution in the form of a system and method for the limiting of
distribution of coupons to consumers based on risk, specifically limiting
coupon distribution to consumers based on a real-time evaluation of a risk
profile based on transactional data and credit information." Spec. ,r 1.
Exemplary Claim
Claim 6, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
6. A method of distributing coupons based on risk,
compnsmg:
storing, in a coupon database, a plurality of coupons,
wherein each coupon includes at least a coupon identifier, a
merchant identifier, and a propensity to spend beyond
acceptable levels threshold;
storing, in a consumer database, a plurality of consumer
profiles, wherein each consumer profile is associated with a
consumer and includes at least a consumer identifier and a
method of distribution;
receiving, by a receiving device, an indicator of
propensity to spend beyond acceptable levels for a specified
consumer at a specified merchant;
identifying, in the consumer database, a consumer profile
associated with the specified consumer; and
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Jan. 26, 2016); Reply Brief ("Reply Br.," filed Apr. 10, 2017); Examiner's
Answer ("Ans.," mailed Feb. 9, 2017); Final Office Action ("Final Act.,"
mailed July 24, 2015); and the original Specification ("Spec.," filed
Sept. 19, 2012).
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distributing, by the method of distribution corresponding
to the identified consumer profile, at least one coupon stored in
the coupon database to the specified consumer,
wherein the received indicator of propensity to spend
beyond acceptable levels for the specified consumer does not
exceed the corresponding propensity to spend beyond
acceptable levels threshold for each coupon of the at least one
coupon distributed to the specified consumer, and
the merchant identifier corresponding to each of the at
least one coupon is associated with the specified merchant.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Chen US 2005/0222906 Al Oct. 6, 2005
Bufford et al. ("Bufford") US 2007/0094114 Al Apr. 26, 2007
Knudson et al. ("Knudson") US 2010/0175078 Al July 8, 2010
LeBlanc et al. ("LeBlanc") US 2012/0005019 Al Jan.5,2012
Cameo et al. ("Cameo") US 8,606,714 Bl Dec. 10, 2013
Rejections on Appeal
RI. Claims 6, 8-13, 19, and 21-26 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 3.
R2. Claims 6, 8-10, 19, and 21-24 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Bufford, Knudson,
LeBlanc, and Cameo. Final Act. 5.
R2. Claims 11-13 and 24--26 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Bufford, Knudson,
and Chen. Final Act. 9.
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CLAIM GROUPING
Based on Appellant's arguments (App. Br. 6-21 ), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 6, 8-13, 19,
and 21-26 on the basis of representative claim 6; and we also decide the
appeal of obviousness Rejection R2 of claims 6, 8-10, 19, and 21-24 on the
basis of representative claim 6.
Remaining claims 11-13 and 24--26 in Rejection R3, not argued
separately, stand or fall with the respective independent claim from which
they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 6,
8-13, 19, and 21-26 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: ( 1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner's Answer in response to
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Appellant's arguments. We highlight and address specific findings and
arguments regarding claim 6 for emphasis as follows.
1. § 101 Rejection RI of Claims 6, 8-13, 19, and 21-26
Issue 1
Appellant argues (App. Br. 6-12; Reply Br. 2-3) the Examiner's
rejection of claim 6 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice, 134 S. Ct. at 2354.
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The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). Although the two steps of the
Alice framework are related, 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). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice, 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
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articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "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., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
The Examiner concludes the claims are directed to the abstract idea of
"targeting content based on suitability." Final Act. 4 ( emphasis omitted).
"For example, targeting ads related to home ownership in an upscale
neighborhood to those on public assistance at risk of being unable to make
payments is obvious to avoid. The converse is also a long prevalent
practice." Id.
Appellant generally contends, "the Examiner's rejection of the claims
as being directed toward an abstract idea ... constitutes clear error, as the
Examiner has failed to provide any support or analysis regarding the
allegation, and has thus failed to 'clearly articulate' the reasoning behind the
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rejection, as required .... " App. Br. 6 (citing MPEP § 707.07(d)).
"Appellant respectfully submits that the Examiner's rejection of claims 6, 8-
13, 19, and 21-26 is improper for both the failure to properly support the
rejection, as well as the failure to use the appropriate standard." App. Br. 7.
Under the "abstract idea" step we must evaluate "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, 838 F.3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 6 recites: " [a] method of
distributing coupons based on risk." Claim 6 (preamble). The limitations of
method claim 6 also require the steps of:
(a) "storing, in a coupon database ... coupons";
(b) "storing, in a consumer database ... consumer
profiles";
( c) "receiving ... an indicator";
(d) "identifying ... a consumer profile"; and
( e) "distributing ... at least one coupon ... to the
specified consumer .... "
Under step one, we agree with the Examiner that the invention
claimed in independent claim 6 is directed to an abstract idea, i.e., targeting
content based on suitability, which we also conclude is a method of
organizing human activity, specifically, tailoring content based on
information about the user. See Ans. 3.
We conclude claim 6 is directed to an abstract idea because, in
Intellectual Ventures I, similar in key respects to the claims before us on
appeal, tailoring content based on information about the user was determined
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by our reviewing court as being directed to an abstract idea and, thus, patent-
ineligible.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a "fundamental ... practice
long prevalent in our system .... " Alice, 134 S. Ct. at 2356. As
noted, the claim relates to customizing information based on ( 1)
information known about the user and (2) navigation data ....
[T]ailoring is "a fundamental ... practice long prevalent in our
system ... . "Id.There is no dispute that newspaper inserts had
often been tailored based on information known about the
customer-for example, a newspaper might advertise based on
the customer's location. Providing this minimal tailoring----e.g.,
providing different newspaper inserts based upon the location
of the individual-is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015).
As the Specification discloses, " [ t ]he present disclosure provides a
description of a systems and methods for limiting the distribution of coupons
to consumers based on risk profiles." Spec. ,r 5. 4 We find this type of
4 See also Spec. 36 ("Abstract"):
A method for limiting coupon distribution based on risk
includes: storing consumer profiles, each including an
identifier; receiving data for transactions involving a consumer;
receiving credit information for the consumer; generating
variables to identify patterns of behavior based on the data;
creating a behavioral profile for the consumer based on the
variables; analyzing the credit information and the behavioral
profile to determine a risk profile; and distributing coupons to
the consumer based on the consumer's risk profile. Another
method includes: storing coupons, each including a coupon
identifier and a propensity to spend beyond acceptable levels
threshold; storing consumer profiles, each including a consumer
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activity, i.e., targeting or tailoring content based upon suitability, for
example, includes longstanding conduct that existed well before the advent
of computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 5
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, the Federal Circuit has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
identifier; receiving a propensity to spend beyond acceptable
levels for a consumer; identifying a consumer profile for the
consumer; and distributing a coupon to the consumer, wherein
the consumer's indicator of propensity to spend beyond
acceptable levels does not exceed the coupon's propensity to
spend beyond acceptable levels threshold.
5 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power Grp., 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category"). 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).
Also, collecting and comparing known information has been determined to
be an abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea
of collecting and comparing known information"). 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). Also, more
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellant also alleges claim 6 is patent-eligible because its practice
does not preempt practice by others. App. Br. 8-9. We agree with the
Examiner's response, which we incorporate herein by reference. Ans. 4.
Regarding preemption, "[w]hi1e preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Afayo framework, as they are in
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this case, preemption concerns are fully addressed and made moot" 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) ("that 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").
Therefore, in agreement with the Examiner, we conclude claim 6
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 6
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step of the Alice
analysis. For that step we must "look with more specificity at what the
claim elements add, in order to determine 'whether they identify an
"inventive concept" in the application of the ineligible subject matter' to
which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec.
Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
6 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
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describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 6 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of targeting or tailoring content based on
suitability into a patent-eligible application of that abstract idea. See
Ans. 3--4. 7
The Examiner further concludes:
[T]he additional element(s) or combination of elements in the
claim( s) other than the abstract idea per se amount( s) to no
more than generic limitations: database, claims 6, 19. Viewed
as a whole, these additional element(s) do not provide
meaningful limitation( s) to transform the abstract idea into
significantly more than the abstract idea itself. ...
7 The Examiner concludes:
[The] Examiner disagrees. That which applicant says is
significantly more (BRIEF p 11) is storage of data (coupons).
Further, that which applicant says is significantly more (BRIEF
p 11) is data labels (merchant identifiers). Further, that which
applicant says is significantly more (BRIEF p 11) is business
rules (riskiness of consumer's spending) for identifying options,
Ans. 3--4.
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Moreover, mere recitation of a machine or medium in the
preamble does not make a claim statutory under 35 U.S.C. 101.
Final Act. 4 ( citation omitted).
Further, Appellant's reliance on DDR (App. Br. 10) is misplaced as
the recited claims do not improve the computer. In DDR, the claims at issue
involved, inter alia, "web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants" (claim 1 of US 7,818,399). The
Federal Circuit found the claims in DDR to be patent-eligible under the
Mayo/Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). Specifically, the Federal Circuit
found the claims addressed the "challenge of retaining control over the
attention of the customer in the context of the Internet." Id. at 1258. We
find the rejected claims are dissimilar to DDR's web page with an active
link, and the Specification does not support the view that the computer
related claim elements are unconventional. See Spec. ,r,r 34--4 7 and 71-80. 8
8 Appellant alleges:
The appealed claims use computer technology in order to
overcome a problem specifically arising in the realm of
computer networks and the distribution of coupons, namely the
selective distribution of coupons to only those consumers for
which there is not a risk that the consumer will spend beyond
an acceptable level as a result of the coupon. The recitations of
the appealed claims are improvements on hardware, improve
technology, and are meaningful limitations to a particular
technology.
App. Br. 10.
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We also note the patent eligibility inquiry may contain underlying
issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note Appellant's Specification description of
the computer system architecture in paragraphs 52 through 60. For example:
[0054] A processor device as discussed herein may be a single
processor, a plurality of processors, or combinations thereof.
Processor devices may have one or more processor "cores." The
terms "computer program medium," "non-transitory computer
readable medium," and "computer usable medium" as discussed
herein are used to generally refer to tangible media such as a
removable storage unit 618, a removable storage unit 622, and a
hard disk installed in hard disk drive 612.
* * *
[0056] Processor device 604 may be a special purpose or a
general purpose processor device. The processor device 604
may be connected to a communication infrastructure 606, such
as a bus, message queue, network ( e.g., the network 108),
multi-core message-passing scheme, etc. The computer system
800 may also include a main memory 608 (e.g., random access
memory, read-only memory, etc.), and may also include a
secondary memory 610. The secondary memory 610 may
include the hard disk drive 612 and a removable storage drive
614, such as a floppy disk drive, a magnetic tape drive, an
optical disk drive, a flash memory, etc.
[0057] The removable storage drive 614 may read from and/or
write to the removable storage unit 618 in a well-known
manner. The removable storage unit 618 may include a
removable storage media that may be read by and written to by
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the removable storage drive 614. For example, if the removable
storage drive 614 is a floppy disk drive, the removable storage
unit 618 may be a floppy disk. In one embodiment, the
removable storage unit 618 may be non-transitory computer
readable recording media.
Spec. ,r,r 54, 56, and 57.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as quoted
above. 9
Thus, with respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either a "method of distributing
coupons based on risk" by comparing data in a "coupon database" with data
in a "consumer database" (claim 6); or a corresponding "system for
distributing coupons based on risk" including the aforementioned databases
and a processing device ( claim 19), is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require generic computer
9 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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implementation, fail to transform [an] abstract idea into a patent-eligible
invention."). 10
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 6, and grouped claims
8-13, 19, and 21-26, not argued separately, and which fall therewith. See
Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 6, 8-10, 19, and 21-24
Issue 2
Appellant argues (App. Br. 12-21; Reply Br. 4--5) the Examiner's
rejection of claim 6 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bufford, Knudson, LeBlanc, and Cameo is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method of distributing coupons based on risk" that includes
storing a plurality of coupons, wherein inter alia, "each coupon includes ...
a propensity to spend beyond acceptable levels," and "an indicator of
propensity to spend beyond acceptable levels for a specified consumer at a
specified merchant," as recited in claim 6?
10 Appellant merely alleges:
Appellant has specifically identified a technological problem
arising in the realm of computer networks that is solved by the
claimed invention ... [based on] on the use of computing
technology to accomplish the solution.
Reply Br. 3.
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Analysis
The Examiner finds Bufford teaches or suggests a coupon that
includes the contested "propensity to spend beyond acceptable levels
threshold." Final Act. 5; Ans. 4--5. 11
Bufford judges risk in a number of ways: pay beyond a
threshold amount of money (overcharge Bufford ,r 36, 54), pay
beyond a threshold amount of time (Bufford ,r 36), exceed
credit limit, credit report, payment history ... spend beyond
redemption ratio ,r 52 spent at specified merchants) ....
Therefore, Bufford shows ''propensity to spend beyond a
threshold" amount.
Also Bufford ,r 3 6 shows risk of potential for late payment,
indicating propensity to spend beyond a threshold time.
Ans. 5. 12
11 The Examiner further states: "The claim is indefinite as to threshold as to
what. It could be threshold as to money, time, space, other." Ans. 5. We
disagree that the claim term "threshold" is indefinite. Instead, we find the
term is broad, and thus can reasonably be construed as relating to risk, as
stated by the Examiner. Ans. 4.
12 We tum to Appellant's Specification in an effort to ascertain an explicit
definition of the phrase "propensity to spend beyond acceptable levels
threshold." Appellant points to paragraph 30 of the Specification (Reply Br.
4), as purportedly providing a definition. Paragraph 30 discloses:
The indicator of propensity to spend beyond acceptable levels
may be an indication that the consumer 102 may spend beyond
one or more acceptable limits including spending beyond their
means such that if receiving a coupon, the consumer 102 may
engage in a financial transaction using that coupon to their
detriment by spending more than they should or have by virtue
of the resulting financial transaction ..
Spec. ,r 30 (emphasis added). We find, however, this disclosure merely
provides exemplary embodiments of the recited "propensity to spend beyond
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Appeal2017-007230
Application 13/622,775
Appellant contends, "[t]he Examiner entirely ignores the additional
limitation recited in the present claims, that each coupon includes 'a
propensity to spend beyond acceptable levels threshold."' App. Br. 14.
Appellant also asserts the additional references cited by the Examiner fails to
remedy the alleged deficiencies of Bufford. App. Br. 15.
Appellant further argues claim 6 recites "receiving, by a receiving
device, an indicator of propensity to spend beyond acceptable levels for a
specified consumer at a specified merchant." App. Br. 15 ( emphasis in
original).
In response, the Examiner finds, the combination of Bufford with
LeBlanc "shows coupons based on propensity to overcharge at a specific
merchant." Ans. 5; see also Final Act. 7 ("Leblanc (US 2012/0005019)
Abstract nevertheless shows using specific merchant purchase for targeting
content, ,r 262 .... It would have been obvious to combine Bufford and
LeBlanc.").
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 6, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 6, and grouped claims 8-10, 19, and 21-24 which fall therewith. See
Claim Grouping, supra.
acceptable levels threshold," that do not rise to the level of an explicit
definition that would overcome the Examiner's interpretation. See Ans. 5.
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Appeal2017-007230
Application 13/622,775
3. Rejection R3 of Claims 11-13 and 24--26
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 11-13 and 24--26 under§ 103 (see
App. Br. 12-21), we sustain the Examiner's rejection of these claims.
Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2-5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 6, 8-13, 19, and 21-26 under 35
U.S.C. § 101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 6, 8-13, 19, and 21-26 under 35 U.S.C.
§ I03(a) over the cited prior art combinations of record, and we sustain the
rejections.
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Appeal2017-007230
Application 13/622,775
DECISION
We affirm the Examiner's decision rejecting claims 6, 8-13, 19,
and 21-26.
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. § 41.50(±).
AFFIRMED
21