Ex Parte Greenberg et al

Patent Trial and Appeal Board

Sep 28, 2018

10706952 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/706,952 11/14/2003
121629 7590 10/02/2018
Finnegan/Capital One
901 New York Ave., NW
Washington, DC 20001
FIRST NAMED INVENTOR
Robert J. Greenberg
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.
05793.3093-00000 7773
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
CapOne_USPTO@finnegan.com
regional-desk@finnegan.com
terri.mcmillan-solomon @finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. GREENBERG, FRANCO D. HARRIS, and
SARAH. KAMP COLLINS
Appeal2017-006869
Application 10/706,952
Technology Center 3600
Before JOHN A. EV ANS, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, and Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-31, 33, 36,
38--41 and 43--45. Claims 2, 4, 5, 7, 12, 17, 19, 20, 22, 27, 32, 34, 35, 37
and 42 are cancelled. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is CAPITAL ONE
FINANCIAL CORPORATION. App. Br. 3.
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Application 10/706,952
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention "relates generally
to systems and methods for managing a financial account, and more
particularly, to systems and methods for managing a financial account based
on non-credit behavior." Spec. ,r 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method, implemented by a computing system, for
managing a financial account at a financial institution having a
relationship with an enterprise to reward persons engaging in
charitable behavior for the enterprise, the method comprising:
associating a financial account of a person, the financial
account managed by the financial institution, with the enterprise
to reward the person for engaging in charitable behavior for the
enterprise;
receiving notification of the person engaging in a
charitable behavior for the enterprise;
determining whether a frequency of performance of the
charitable behavior by the person meets or exceeds a
predetermined threshold;
associating a lower credit risk to the financial account for
the person based on the frequency of the charitable behavior
performed by the person;
granting, by the computing system, a benefit to the
financial account of the person when the frequency of
performance of the charitable behavior by the person meets or
exceeds the predetermined threshold, wherein the benefit is
associated with the lower credit risk; and
notifying the person of the granted benefit.
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THE REJECTI0NS 2
The Examiner rejected claims 1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-
31, 33, 36, 38--41 and 43--45 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter. Final Act. 3--4.
The Examiner rejected claims 1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-
31, 33, 36, 38--41 and 43--45 under 35 U.S.C. § 103 as unpatentable over
Marshall (US 2002/0116266 Al, published Aug. 22, 2002) and Walker (US
6,018,718, issued Jan. 25, 2000). Final Act. 5-11.
ANALYSIS
THE REJECTIONS UNDER 35 U.S.C. § 101
Claims 1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-31, 33, 36, 38-41, and 43-45
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-31, 33, 36,
38--41 and 43--45 as directed to patent-ineligible subject matter.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), "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. Pty.
Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to "determine whether the claims at issue are directed to one of
2 Because the written description rejection (Final Act. 2-3) was not repeated
in the Answer, we are constrained from deciding the issues and must
consider the rejection withdrawn. See Ex Parte Emm, 118 USPQ 180 (Bd.
App. 1957).
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those patent-ineligible concepts" (id.), for example, to an abstract idea. If
the claims are directed to one of the patent-ineligible concepts, the inquiry
proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 132 S.
Ct. at 1297).
Under step one of the eligibility analysis, the Examiner determines
that the claims are directed to a fundamental economic practice, namely a
form of compensation or "awarding an individual in exchange for a resource
from the individual." Ans. 3--4. Specifically, the Examiner explains that the
claims "are directed towards a computer-implemented method for enticing
charitable behavior from account holders. In exchange, account holders are
rewarded with lower credit risk." Ans. 4. The Examiner points out that this
is "a fundamental economic practice long prevalent in our system of
commerce." Ans. 4 (citing Alice, 134 S. Ct. 2347). The Examiner also
identifies that the claimed "commercial transaction or commercial exchange
between two or more parties" is a method of organizing human activity. Id.
Appellants, on the other hand, argue that the Examiner erred by
(1) overly simplifying or overgeneralizing the claims, (2) ignoring key
limitations of the claim and failing to analyze the claims as a whole,
(3) focusing on the result of the claims rather than the claimed process, and
(4) failing to consider that there is no pre-emption by the claims. App.
Br. 15; Reply Br. 4--26. Appellants additionally argue that the claims are
directed to a technological improvement and, as such, are patent eligible.
Reply Br. 26-30.
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According to Appellants, the Examiner fails to consider the "character
as a whole" of the claims and considers only whether the claims involve a
patent-ineligible concept, not whether the claims are directed to a patent-
ineligible concept. Reply Br 6-7. For example, Appellants maintain that the
Examiner's "characterizations of the claims are improper[] because they are
divorced from the claim elements themselves, ignore key claim elements,
and impermissibly reduce the claims to not what practicing the invention
requires but instead to the potential economic benefits of its practice."
Reply Br. 10; see also Reply Br. 12 (asserting that the Examiner construed
the benefits as representative of the claim and read out nearly all elements of
the claim), Reply Br. 13 (alleging that the Examiner focused on the ancillary
benefits of the claim rather than the character of the claims and specific
claim elements).
Appellants allege that the claims, in contrast to the Examiner's
findings, recite "specific novel and nonobvious means and methods for
improving computerized account management that goes well beyond merely
the economic benefits or other concepts alleged in the Examiner's Answer
and provide an improved result." Reply Br. 24. Appellants assert that the
novel, specific steps are the claimed receiving, determining, associating, and
granting steps. Reply Br. 24--25. According to Appellants, then, "[i]t is
clear that claim 1 does not merely recite the alleged abstract ideas of
'compensation' or 'enticing charitable behavior' but recite particular
elements for managing an account in a specific way that go well-beyond
these mere concepts." Reply Br. 25.
We find Appellants arguments unpersuasive. Namely, we agree with
the Examiner that "[ t ]he claims are directed to the abstract idea of
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compensation, awarding an individual in exchange for a resource from the
individual, which is a fundamental economic practice." Ans. 3--4. The
Examiner does not ignore limitations, but considers the claim as a whole to
identify that the steps together merely perform a transaction of granting a
benefit to an individual's account for performing charitable behavior.
Although the claim may also recite there must be a certain amount of the
charitable behavior to receive the benefit, this does not alter the character, as
a whole, of the claim. Appellants repeatedly allege that the claims are
directed to a particular method, but do not persuasively support these
arguments and merely recite the claim language. See, e.g., Reply Br. 24--
25.
Moreover, as the Examiner identifies, the claims here are similar to
the claims of Alice. See Ans. 4. Specifically, in Alice the claims were
directed to a transaction between parties to mitigate settlement risk, which
was a fundamental economic principle being applied to a computer. See
Alice, 134 S. Ct. 2347. Similarly, the claims here are for a transaction
between parties where one performs charitable behavior and in return is
granted a benefit to their account. As such, we are not persuaded that the
Examiner erred in finding that the claims are directed to a fundamental
economic principle. See also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
(Fed. Cir. 2014) (concluding claims directed to the economic principle of
creating contracts are patent ineligible); see also Bilski v. Kappas, 130 S. Ct.
3218 (2010); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir.
2017). We also agree with the Examiner that the claims are directed to a
method of organizing human activity. See Ans. 4. See also, e.g., Bancorp
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Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266 (Fed. Cir.
2012).
Appellants' contention that a lack of pre-emption renders the claims
patent eligible is equally unpersuasive to identify error. Appellants, for
example, assert that,
the focus of the specific means or method question is not whether
the claims merely utilize an abstract idea within a recited process
or apparatus, but whether they claim a monopoly on the outcome
of the abstract idea, i.e., "pre-empt" the use of the purported
abstract idea.
Reply Br. 7; see also App. Br. 17 (arguing that the claims do not pose a
preemptive risk that the abstract idea judicial exception is meant to protect
against); Reply Br. 11 (asserting that the "Examiner must demonstrate the
claims effectively monopolize the outcome of these abstract ideas, i.e.,
'preempt' the use of these purported abstract ideas").
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). We are instructed that "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the [Alice] framework ... ,
preemption concerns are fully addressed and made moot." Id.
Likewise unavailing is Appellants argument that "the Examiner has
provided no reasoning properly reconsidering at step 2A whether the claims
are directed to an improvement in computer-related technology or a specific
way of achieving a desired outcome or end result, as opposed to merely the
idea of the outcome." Reply Br. 17. Notably, Appellants do not
persuasively identify any such "improvement in computer-related
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technology or a specific way of achieving a desired outcome or end result."
For example, Appellants assert that
Conventional systems are known for appealing to the
charitable traits of a user that do not touch on the specific
requirements of the claims. For example, conventional charity
cards are known that donate a percentage of all transactions of a
card to a selected charity. (Specification at ,r [05].) But, such
known systems, like the systems the cited art to Walker, for
example, are based entirely on transactions associated with the
account. Recognizing the need for an improved, more effective
system, the pending claims describe distinct unconventional
steps for managing a financial account in a particular way to
provide a benefit based on a "frequency of performance of the
charitable behavior" for an enterprise-i.e., not based on
transactions associated with an account.
Reply Br. 27-28. In other words, Appellants allege that considering an
individual's charitable actions, instead of, or in addition to, considering an
individual's charitable donations, is the technical improvement that renders
the claims patent eligible. Considering an individual's actions is in no way
related to computer technology or a technological improvement. Moreover,
we note that the claimed system merely receives a notification that the
charitable actions were performed and, as such, the computer system merely
analyzes data like the conventional system described by Appellants.
Therefore, we find Appellants' argument unpersuasive and agree with the
Examiner that the claims are directed to an abstract idea.
Under step two of the eligibility analysis, the Examiner determines
that "the additional limitations do not provide meaningful limitations to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the abstract idea
itself." Final Act. 4. Moreover, the claimed steps "represent conventional
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functions that can be performed by a generic computer without any novel
programming or improvement in the operation of the computer itself. Many
of these steps are merely extra-solution activity." Ans. 5.
Appellants argue that the claims are directed to significantly more.
App. Br. 18-21; Reply Br. 30-39. Appellants, in particular, assert that the
Examiner failed to consider the combination of elements as a whole. For
example, Appellants assert that "nowhere has the Examiner articulated why
the particular claim elements do not amount to significantly more than the
alleged abstract idea of 'compensation."' App. Br. 19. Specifically,
Appellants maintain that the determining, associating, and granting
limitations amount to significantly more than the alleged abstract idea and
it cannot be said that the claims practice only well-understood,
routine, or conventional activities. Rather, these elements, as
recited in the claim as a whole, describe an 'inventive concept'
that the Supreme Court explained is sufficient to meet the patent
eligibility threshold of§ 101. See Alice, 134 S. Ct. at 2355."
App. Br. 19-20; see also Reply Br. 38. Appellants, then, assert that
Appellant's claims recite meaningful steps that '[go] beyond the
mere concept of simply retrieving and combining data using a
computer.' [] In other words, Appellant's claims recite
'significantly more' than an abstract idea, not merely because the
claims include a computer. Indeed the above-noted claim
elements, notwithstanding their implementation using a
computer hardware or processor, extend significantly beyond the
alleged abstract idea of 'compensation' or 'awarding an
individual in exchange for a resource from the individual.'
App. Br. 21.
We disagree. Namely, Appellants' argument lack any explanation as
to why or how the claims include "significantly more." Merely reciting the
claims is not persuasive. Rather, as the Examiner explains, "[t]he only other
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features within the claims are generic references to computing elements that
merely facilitate the claimed judicial exception." Final Act. 12. In the
Answer, the Examiner elaborates
Additional elements are: a computing system comprising
a processor operating over a network such as the Internet,
configured to implement the above abstract ideas by merely
performing steps of: receiving and transmitting information,
accessing a database of values, using a computer to track data, to
perform calculations and to perform comparisons/ correlations
(i.e., threshold determinations), cross-referencing tracked
behavior data and account information, manipulating that
information making determinations as the result of some of these
steps and displaying the results. However all these steps
represent conventional functions that can be performed by a
generic computer without any novel programming or
improvement in the operation of the computer itself. Many of
these steps are merely extra-solution activity.
The claimed invention merely uses a computer to conduct
human affairs represented by steps which as indicated above, can
be seen as mere mental processes, gaining only the benefit of
automation of further tasks.
Ans. 5. The Specification also supports the Examiner's determination that
the claimed invention is performed on a generic computer. See Spec. ,r 21
( describing that the invention may be practiced on any wide variety of
generic computing systems including hand-held devices, personal
computers, or multiprocessor systems); ,r 62 ( disclosing that storing and
transferring information within the invention is done in a conventional
manner).
Appellants' arguments with respect to BASCOM Global Internet
Servs., Inc. v. A.T.&T Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016) is
similarly unavailing. See Reply Br. 35-37. Namely, as Appellants point
out, BASCOM was found to be significantly more than the abstract idea
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because it was found to be a "technology-based solution." See Reply Br. 30
( discussing BASCOM). Appellants do not identify any similar technology
based solution here. As such, we are not persuaded of error in the Examiner
determination.
Accordingly, we affirm the Examiner's rejection of claims 1, 3, 6, 8-
11, 13-16, 18, 21, 23-26, 28-31, 33, 36, 38--41, and 43--45 as directed to
patent-ineligible subject matter.
THE OBVIOUSNESS REJECTION BASED ON MARSHALL AND WALKER
Claims 1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-31, 33, 36, 38-41 and 43-45
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-31, 33, 36,
38--41 and 43--45 as unpatentable over Marshall and Walker.
Appellants contend that neither Marshall nor Walker teach or suggest
"associating a lower credit risk to the financial account for the person based
on the frequency of the charitable behavior performed by the person fails to
teach a financial account managed by a financial institution." Reply Br. 40-
42. Specifically, Appellants assert that "even if Walker's reward of 'more
beneficial credit terms' is associated with a credit score, as alleged, there is
no teaching or suggestion in Walker of 'associating a lower credit risk to the
financial account ... based on the frequency of the charitable behavior
performed by the person,' as required by claim 1." Reply Br. 41. Similarly
with respect to Marshall, Appellants allege that "even if Marshall teaches a
loyalty program reward based on 'non-credit behavior,' there is no teaching
or suggestion in Marshall of 'associating a lower credit risk to the financial
account for the person' based on any non-credit behavior." Reply Br. 41.
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These arguments, though, attack the references individually and fail to
consider the combination of teachings. See In re Keller, 642 F.2d 413,426
( CCP A 1981 )( finding that one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references); see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Considering the combination here, Marshall teaches a reward system
that rewards individuals based on charitable behavior and Walker teaches
providing a lower credit score in reward for certain activities. Together,
then, the references would teach the limitation of associating a lower credit
risk to the financial account for the person based on any non-credit behavior.
Nevertheless, we find error in the rejection because the Examiner fails
to sufficiently explain the rationale to support the combination of Marshall
and Walker. For example, the Examiner merely states that
The Office action formulates a 35 U.S.C. 103 type-A
rationale obviousness KSR rejection ("Combining Prior Art
Elements According To Known Methods to Yield Predictable
Results"). The rationale to support a conclusion that the claim
would have been obvious is that all the claimed elements were
known in the prior art and one skilled in the art could have
combined the elements as claimed by known methods with no
change in their respective functions, and the combination would
have yielded nothing more than predictable results to one of
ordinary skill in the art at the time of the invention.
Ans. 14. Although we agree with the Examiner the rejection combines "old
elements" from Marshall and "old elements" from Walker (Ans. 14), merely
stating they were known, old elements is insufficient to support the
combination. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007)( citations omitted)("[R ]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
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articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.").
Accordingly, we reverse the Examiner's rejection of claims 1, 3, 6, 8-
11, 13- 16, 18, 21, 23-26, 28-31, 33, 36, 38--41 and 43--45 as unpatentable
over Marshall and Walker.
DECISION
We affirm the Examiner's decision to reject claims 1, 3, 6, 8-11, 13-
16, 18, 21, 23-26, 28-31, 33, 36, 38--41 and 43--45 as directed to non-
statutory subject matter and reverse the Examiner's decision to reject claims
1, 3, 6, 8-11, 13-16, 18, 21, 23-26, 28-31, 33, 36, 38--41 and 43--45 as
unpatentable over Marshall and Walker.
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(±) (2015).
AFFIRMED
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