Ex Parte GROARKE

Patent Trial and Appeal Board

Feb 22, 2019

13782385 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/782,385 03/01/2013
21839 7590 02/26/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Peter GROARKE
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.
0076412-000113 7131
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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 PETER GROARKE
Appeal2018-000600
Application 13/782,385
Technology Center 3600
Before DAVID M. KOHUT, BETH Z. SHAW, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
4--14, and 17-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a method and system for a hosted merchant
and cardholder transaction cache. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for hosting a cache of electronically processed
financial transaction data, comprising:
receiving, by a receiving device of a hosting server and
from a payment network, merchant and cardholder transaction
data;
storing, in a memory of a hosting server, a cache of the
received merchant and cardholder transaction data as a plurality
of transaction data entries, wherein each transaction data entry
Appeal2018-000600
Application 13/782,385
includes data related to a previously conducted financial
transaction involving at least one of a plurality of merchants and
includes at least a merchant identifier, a consumer identifier, a
transaction time and/or date, and transaction data;
receiving, by the receiving device of the hosting server,
via a communications network and from a first merchant point
of sale device or a first consumer device, a transaction cache
request, wherein the transaction cache request comprises at least
a first merchant identifier and a first consumer identifier, and
wherein the first merchant point of sale device corresponds to the
first merchant identifier and the first consumer device
corresponds to the first consumer identifier;
identifying, by a processing device of the hosting server
and based upon the received transaction cache request, a first
merchant-cardholder transaction subset, wherein the first
merchant-cardholder transaction subset comprises a subset of the
plurality of transaction data entries and where each transaction
data entry in the transaction data entry subset comprises at least
the first merchant identifier and the first consumer identifier;
transmitting, by a transmitting device of the hosting server
and via the communications network, the first merchant-
cardholder transaction subset to the first merchant point of sale
device or the first consumer device;
storing, in an off er database stored in the memory of the
hosting server, a plurality of offer data entries, wherein each offer
data entry includes data related to an off er and includes at least
an offer identifier and at least one predetermined criteria;
identifying, by the processing device of the hosting server,
at least one offer data entry in the plurality of offer data entries
where the included at least one predetermined criteria is satisfied
based on an analysis of the first merchant-cardholder transaction
subset; and
transmitting, by the transmitting device of the hosting
server and to one of the first merchant point of sale device and
the first consumer device, the offer related to each offer data
entry of the identified at least one offer data entry.
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Application 13/782,385
REJECTIONS
The Examiner made the following rejections:
Claims 1, 4--14, and 17-27 are rejected under 35 U.S.C. § 101.
Claims 1, 4, 6-8, 10-14, 17, 19-21, and 23-27 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Magpayo et al. (US
2013/0073464) ("Magpayo") in view of Blomeyer et al. (US 2013/0013386)
("B 1 omeyer").
Claims 5, 9, 18, and 22 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Magpayo, Blomeyer, and Strock et al. (US
2004/0122736) ("Strock").
CONTENTIONS AND ANALYSIS
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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Application 13/782,385
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
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Application 13/782,385
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we
first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (Rev.
08.2017 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
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Application 13/782,385
See Memorandum.
The Examiner determines claim 1 is directed to the abstract idea of
providing offers to consumers based on financial transaction information,
which is considered a fundamental economic practice, an idea of itself, and a
method of organizing human activities. Final Act. 2. Appellant argues the
Examiner mischaracterized the claim by failing to consider elements of the
claim and the claimed subject matter as a whole or as an ordered
combination of features. App. Br. 1 O; Reply Br. 2--4. Appellant addresses
the claims as a group (App. Br. 7-14; Reply Br. 2--4), and we treat claim 1 as
representative. Appellant argues "the appealed claims provide a technical
solution offering benefits over prior transaction record-keeping and offer
distribution systems and methods by providing a hosted cache, rather than a
locally managed merchant-bookkeeping system." Reply Br. 4.
In this case, we are not persuaded by Appellant's arguments. We
agree with the Examiner that the claim is directed to an abstract idea because
it is directed to a method of organizing human activity, including a
fundamental economic practice, as discussed below. The steps of claim 1,
including:
receiving, by a receiving device of a hosting server and
from a payment network, merchant and cardholder transaction
data;
storing, in a memory of a hosting server, a cache of the
received merchant and cardholder transaction data as a
plurality of transaction data entries, wherein each transaction
data entry includes data related to a previously conducted
financial transaction involving at least one of a plurality of
merchants and includes at least a merchant identifier, a consumer
identifier, a transaction time and/or date, and transaction data;
receiving, by the receiving device of the hosting server,
via a communications network and from a first merchant point
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Application 13/782,385
of sale device or a first consumer device, a transaction cache
request, wherein the transaction cache request comprises at least
a first merchant identifier and a first consumer identifier, and
wherein the first merchant point of sale device corresponds to the
first merchant identifier and the first consumer device
corresponds to the first consumer identifier;
identifying, by a processing device of the hosting server
and based upon the received transaction cache request, a first
merchant-cardholder transaction subset, wherein the first
merchant-cardholder transaction subset comprises a subset of
the plurality of transaction data entries and where each
transaction data entry in the transaction data entry subset
comprises at least the first merchant identifier and the first
consumer identifier;
transmitting, by a transmitting device of the hosting server
and via the communications network, the first merchant-
cardholder transaction subset to the first merchant point of sale
device or the first consumer device;
storing, in an offer database stored in the memory of the
hosting server, a plurality of offer data entries, wherein each
offer data entry includes data related to an offer and includes at
least an off er identifier and at least one predetermined criteria;
identifying, by the processing device of the hosting server,
at least one offer data entry in the plurality of offer data entries
where the included at least one predetermined criteria is satisfied
based on an analysis of the first merchant-cardholder transaction
subset; and
transmitting, by the transmitting device of the hosting
server and to one of the first merchant point of sale device and
the first consumer device, the offer related to each offer data
entry of the identified at least one offer data entry,
recite steps of receiving and storing financial data, identifying a subset of
financial transaction data, transmitting the data subset, storing offers,
identifying an offer, and transmitting the offer. These steps fall under the
umbrella of managing transactions or sales activities. The Federal Circuit
has determined that many patents relate to "a fundamental economic practice
long prevalent in our system of commerce." Alice, 573 U.S. at 219
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Application 13/782,385
(quoting Bilski, 561 U.S. at 611); see, e.g., Intellectual Ventures I LLC v.
Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015) (an advertisement taking
into account the time of day and tailoring the information presented to the
user based on that information is another "fundamental ... practice long
prevalent in our system"); Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044 (Fed. Cir. 2017) (patent claims directed to system and method for
providing financing to allow a customer to purchase a product selected from
an inventory of products maintained by a dealer patent ineligible as directed
to the abstract idea of processing an application for financing a purchase, an
economic practice long prevalent in commerce). Therefore, we agree with
the Examiner that claim 1 is directed to the abstract idea of providing offers
to consumers based on financial transaction information, which is a
fundamental economic practice similar to those in Intellectual Ventures I
LLC and Credit Acceptance Corp.
In accordance with the PTO' s policy guidance, and looking to MPEP
§ 2106.05(a)-(c) and (e)-(h), we determine that the additional elements of
claim 1, both individually and as an ordered combination, do not integrate a
judicial exception, in this case abstract concepts, into a practical application.
Claim 1 is directed to little more than the implementation of the abstract idea
on generic computer servers and devices. The claim as a whole merely
describes how to generally "apply" the concept of receiving, storing, and
transmitting financial transaction information in a computer environment.
The claimed computer components are recited at a high level of generality
and are merely invoked as tools to perform an existing offer process.
Simply implementing the abstract idea on a generic computer is not a
practical application of the abstract idea.
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Application 13/782,385
Accordingly, the claim as a whole does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea.
Appellant argues the claims are analogous to BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). App. Br. 12, 13. We have considered Appellant's
arguments in light of BASCOM, and, for the reasons set forth below, we
conclude BASCOM does not alter our determination that the claims do not
include an inventive concept-an element or combination of elements
sufficient to ensure that the claim amounts to significantly more than the
abstract idea and to transform the nature of the claim into a patent-eligible
concept.
In BASCOM, the court determined at the pleading stage and decided
in favor of the nonmovant,
The inventive concept described and claimed . . . is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter
on the ISP server. BASCOM explains that the inventive concept
rests on taking advantage of the ability of at least some ISPs to
identify individual accounts that communicate with the ISP
server, and to associate a request for Internet content with a
specific individual account.
Id. at 1350 (emphasis added).
The rejected claims are unlike the claims of Bascom because they are
not directed to an "installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user." Id. Nor do they "give[] the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server." Id.
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In fact, the pending claims do not even recite any filtering or ISP server.
Accordingly, we sustain the Examiner's rejection of claims 1, 4--14,
and 17-27 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
Section 103 Rejection
Appellant cites paragraphs 2 and 11-13 of Blomeyer and then states
nothing in Blomeyer teaches or suggests the receipt a "transaction cache
request" in claim 1. App. Br. 14; Reply Br. 4, 5. We are not persuaded by
this conclusory argument, which is unsupported by the record. Claim 1
recites, in part, receiving "a transaction cache request, wherein the
transaction cache request comprises at least a first merchant identifier and a
first consumer identifier." Appellant does not explain why Blomeyer fails to
teach this element. We agree with the Examiner that paragraphs 2 and 11-
13 of Blomeyer teach the claimed transaction cache request because
Blomeyer teaches receiving a specific customer identifier and a retailer
identifier. Blomeyer ,r,r 12, 13; Ans. 4, 5.
Appellant also argues Magpayo does not teach the claimed
"transmitting . . . the first merchant-cardholder transaction subset" to either
a merchant point of sale device or a consumer device. App. Br. 16. The
Examiner finds Magpayo teaches transmitting transactions and account
numbers along with merchant information to the merchant aggregator. Ans.
5, 6. Appellant argues the merchant aggregator is not sufficient to teach the
merchant point of sale device or a consumer device. App. Br. 16.
We agree that, on this record, the cited portions of Magpayo do not
appear to teach "transmitting ... the first merchant-cardholder transaction
subset" to either a merchant point of sale device or a consumer device.
Rather, in the cited portions of Magpayo, the system transmits the data to the
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Application 13/782,385
merchant aggregator, which is shown in communication with merchants.
The Examiner has not explained sufficiently on this record, however, how
transmitting the information to the merchant aggregator teaches transmitting
the information to either a merchant point of sale device or a consumer
device. Although transmitting the subset of information to a merchant point
of sale device or a consumer device instead of Magpayo' s "merchant
aggregator" may be have been obvious to one skilled in the art, constrained
as we are by the record before us, we do not sustain the rejection of claim 1
under Section 103. For the same reasons, and because the Examiner has not
shown that Strock cures the deficiencies discussed above, we do not sustain
the Section 103 rejection of claims 4--14 and 17-27.
DECISION
Because we affirm at least one ground of rejection, we affirm the
Examiner's rejection of claims 1, 4--14, and 17-27.
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) (2009).
AFFIRMED
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