Ex Parte Guiney et al

Patent Trial and Appeal Board

Jun 12, 2018

14058548 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/058,548 10/21/2013
21839 7590 06/14/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Christopher Andrew GUINEY
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.
0076412-000166 3582
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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 CHRISTOPHER ANDREW GUINEY and
JENSEN JAMES E. PASTRANA 1
Appeal2017-002962
Application 14/058,548
Technology Center 3600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
SCOTT B. HOWARD, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Illustrative Claim
1. A computer-implemented method for automatically initiating a
rebate for a payment transaction funded using a reward account,
compnsmg:
electronically storing, in a database of a processing server, a
plurality of account data entries, wherein each account data entry
includes data related to a consumer reward account including at least
an account identifier and a reward balance;
1 According to Appellants, MasterCard International Incorporated is the real
party of interest in this application. See App. Br. 2.
Appeal2017-002962
Application 14/058,548
electronically storing, in a memory device of the processing
server, a plurality of conversion rules for converting transaction
amounts to corresponding transaction reward values and for
calculating rebate amounts;
electronically receiving, by a receiving device of the processing
server, from a merchant, an authorization request for a payment
transaction involving the merchant, wherein (i) the authorization
request is received via a financial transaction network by which the
processing server is conured to communicate with the merchant and
(ii) the authorization request includes at least payment information
and a transaction amount;
electronically identifying, by a processing device of the
processing server, a specific account data entry stored in the database
of the processing server and associated with a reward account used to
fund the payment transaction;
converting, by a processing device of the processing server, the
transaction amount, included in the authorization request
electronically received from the merchant, to a corresponding
transaction reward value based on at least one conversion rule from
the plurality of conversion rules electronically stored in the memory
device of the processing [server], wherein said transaction reward
value is a representation of a value of rewards in the reward account
that is required to fund the payment transaction via rewards;
electronically identifying, by the processing device of the
processing server, a reduction amount by which the reward balance,
included in the specific account data entry stored in the database of
the processing server, is to be reduced, wherein the reduction amount
is a lesser of the transaction reward value and the reward balance
included in the specific account data entry stored in the database
where the included account identifier corresponds to the payment
information;
electronically updating, in the database of the processing server,
the reward balance included in the specific account data entry by
reducing the reward balance by the identified reduction amount;
2
Appeal2017-002962
Application 14/058,548
after (i) converting the transaction amount to the transaction
reward value, (ii) identifying the reduction amount and (iii) updating
the reward balance by reducing the reward balance by the identified
reduction amount, calculating, by the processing device of the
processing server, a rebate amount for a rebate to be processed on the
reward account for the payment transaction based on the transaction
reward value, the identified reduction amount, and the at least one
conversion rule, from the plurality of conversion rules stored in the
memory device, wherein said calculated rebate amount is a calculated
amount that is separate from said identified reduction amount; and
electronically transmitting, by a transmitting device of the
processing server, a rebate request, to the financial transaction
network, for the calculated rebate amount from a payment account
associated with the merchant to a payment account corresponding to
the payment information.
Rejections
Claims 1-20 are rejected under 35 U.S.C. § 101 as unpatentable
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 2.
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable
in view of White et al. (US 2008/0133351 Al; June 5, 2008) in further view
of Bies et al. (US 2008/0103968 Al; May 1, 2008). Final Act. 4.
3
Appeal2017-002962
Application 14/058,548
Issues on Appeal
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101,
as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1-20 under pre-AIA
35 U.S.C. § 103(a), as being obvious over the cited combinations of
references?
Grouping of Claims
Based on Appellants' arguments (App. Br. 6-36), we decide the
appeal on the basis of representative claim 1.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments and we adopt as our
own the findings, legal conclusions, and explanations, as set forth in the
Answer (2-14) 2 in response to Appellants' arguments. (App. Br. 6-36;
Reply Br. 1-9). We highlight and address specific findings and arguments
for emphasis in our analysis below.
2 Our reference to page numbers is based upon the cover page of the Answer
being page 1, as the Answer does not contain any page numbers.
4
Appeal2017-002962
Application 14/058,548
Rejection of Claims 1-20 under 35 U.S. C. § 1 OJ
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the
Alice/Mayo analysis, we determine whether the claims at issue are "directed
to" a judicial exception, such as an abstract idea. Alice, 134 S. Ct. at 2355.
If not, the inquiry ends. Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346
(Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016). If the claims are determined to be directed to an abstract idea,
then we consider under the second step of the Alice/Mayo analysis the
elements of the claims "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
(citing Mayo, 566 U.S. at 79, 78). In other words, the second step is to
"search for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ ineligible concept] itself.'" Id.
(citing Mayo, 566 U.S. at 72-73).
In rejecting independent claims 1-20, the Examiner determines (1) the
claims are directed to the abstract idea of processing a rebate at the time of a
transaction (i.e., a fundamental economic practice) and that (2) the additional
elements in the claim do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea such that
5
Appeal2017-002962
Application 14/058,548
the claims amount to significantly more than the abstract idea itself. Final
Act. 2.
Appellants argue the Examiner has failed to establish a prima facie
case of patent-ineligibility under§ 101 because there is no evidence to
support the Examiner's findings that the claims are directed to a patent-
ineligible abstract idea. App. Br. 20.
Appellants' argument is not persuasive because patent eligibility is a
question of law. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir.
2012). We are aware of no controlling authority that requires the Office to
provide factual evidence to support a finding that a claim is directed to an
abstract idea. 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
court has held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, "together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application." In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id., see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is
violated when [t]he rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.").
6
Appeal2017-002962
Application 14/058,548
Alice - Step One
Turning now to the first step of the Alice inquiry, Appellants argue the
claims do not contain abstract idea because the claims recite at least one
transformation of data. App. Br. 22. In particular, Appellants contend the
claims recite "a transaction amount ( e.g., dollar amount) included in an
authorization request [that] is converted to a transaction reward (e.g., reward
points) using at least one conversion rule." Id.
Appellants' argument is not persuasive. The title of Appellants'
Specification provides the invention is directed to "METHOD AND
SYSTEM FOR PROCESSING OF A REAL-TIME REBATE AT
TRANSACTION AUTHORIZATION." The Specification further provides
embodiments for initiating a rebate on a reward account following the
processing of a payment transaction based on a reward balance. Spec. ,r,r 5-
7. Thus, we agree with the Examiner (see Final Act. 2) that the claim is
directed to the abstract idea of rebate processing in transactions, which is a
fundamental economic practice. Such activities are squarely within the
realm of abstract ideas. The use of rewards in payment transactions is a
fundamental business practice long prevalent in our system of commerce,
like the risk hedging in Bilski (see Bilski v. Kappas, 561 U.S. 593 (2010)),
the intermediated settlement in Alice (see Alice, 134 S. Ct. at 2356-57),
verifying credit card transactions in CyberSource (see CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), collecting and
analyzing information to detect and notify of misuses in FairWarning (see
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016)), and guaranteeing transactions in buySafe (see buySAFE, Inc. v.
7
Appeal2017-002962
Application 14/058,548
Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)). Rebate processing is
also a building block of a market economy. Thus, rebate processing, like
risk hedging, intermediated settlement, and verifying credit card
transactions, is an "abstract idea" beyond the scope of§ 101. See Alice, 134
S. Ct. at 2356.
Appellants cite Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016) ("Enfish") and contend, inter alia, "[t]his application describes
similarly patent eligible subject matter." App. Br. 31-32.
However, rebate processing is not an improvement to computer
capabilities akin to Enfish 's self-referential table for a computer database
(see Enfish 822 F.3d at 1335-36). Rather, it is an improvement to a process
where computers are invoked merely as a tool, which qualifies as an abstract
idea. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334
(Fed. Cir. 2015) (collecting cases).
The Examiner finds, and we agree
Claim 1 is directed to processing a rebate at the time of a
transaction through storing account data entries and
conversion rules, receiving an authorization request for a
payment, identifying an account entry associated with a
reward account used to fund the payment transaction,
converting the transaction amount to a transaction reward
value, identifying a reduction amount, updating the reward
balance, and after the conversion/identifying/updating the
reward balance account, calculating the rebate amount,
and transmitting the rebate request, which is considered to
be drawn to the abstract idea.
Ans. 6.
Thus, we conclude claim 1 is directed to a method for processing
rebates, a fundamental economic practice. See Enfish, 822 F.3d at 1335
8
Appeal2017-002962
Application 14/058,548
(fundamental economic and conventional business practices are often found
to be abstract ideas, even if performed on a computer); OIP Techs., Inc. v.
Amazon.com Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015).
For at least these reasons, we conclude representative claim 1 is
directed to an abstract idea.
Alice - Step Two
Proceeding to step two of the Alice test articulated by the Supreme
Court, we further "consider the elements of each claim both individually and
'as an ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Regarding step two of the Alice analysis, Appellants cite to DDR
Holdings, LLC v. Hotels.com., 773 F.3d 1245, 1257 (Fed. Cir. 2014), and
contend, inter alia:
Independent claim 1, similar to those claims found to be patent
eligible in DDR Holdings, is "necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks." In DDR Holdings, the
representative claim recited only two computer components: a
computer store and a computer server. The Court of Appeals,
however, determined that the claim stood apart because it did not
"merely recite the performance of some business practice known
from the pre-[Internet] world along with the requirement to
perform it [on the Internet]." Id. at 20. The claim at issue in
DDR Holdings, rather, specified "how interactions ... are
manipulated to yield a desired result- a result that overrides the
routine and conventional sequence of events [ ordinarily triggered
by the click of a hyperlink]." Id. at 22. The Court further noted
that "Instead of the computer network operating in its normal,
expected manner . . . the claims recite an invention that is not
merely the routine or conventional use [ of the Internet]. Id. at 23.
9
Appeal2017-002962
Application 14/058,548
App. Br. 24.
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at 1259, the
subject claim was held patent-eligible because it encompassed "an inventive
concept" for resolving a "particular Internet-centric problem." In contrast,
we find Appellants' method for "automatically initiating a rebate for a
payment transaction funded using a reward account" does not provide a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." DDR, 773
F.3d at 1257.
Because we find all claims on appeal merely use a generic computer
or processor as a tool which is used in the way a computer normally
functions, we conclude claim 1 fails to impart any discernible improvement
upon the computer or processor, nor do Appellants' claims solve "a
challenge particular to the Internet" as considered by the court in DDR, 773
F.3d at 1256-57.
Thus, we conclude none of Appellants' claims are like the claim held
patent-eligible by the court in DDR, in which the claimed invention was
directed to the "challenge of retaining control over the attention of the
customer in the context of the Internet," such that
Instead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-party
website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual "look and
feel" elements from the host website.
DDR, 773 F.3d at 1258-59.
10
Appeal2017-002962
Application 14/058,548
Regarding step two of the Alice test, we find nothing in claims 1-20
that adds anything "'significantly more'" to transform the abstract concept
of rebate processing into a patent-eligible application. See Alice, 134 S. Ct.
at 2357. Appellants do not argue that each of the steps or functions recited
in claims 18, 20, 22, 26, and 28-30 is individually inventive. Nor have
Appellants shown that the claims ( directed to rebate processing) improve the
functioning of the computer itself and amount to significantly more than the
abstract idea of a fundamental economic practice. See, e.g., BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016) ("An abstract idea on 'an Internet computer network' or on
a generic computer is still an abstract idea."); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) ("We have repeatedly
held that such invocations of computers and networks that are not even
arguably inventive are insufficient to pass the test of an inventive concept in
the application of an abstract idea.") (Internal quotation marks omitted).
Applying the aforementioned guidance here, we conclude Appellants'
claims are not directed to an improvement in computer functionality, or
database functionality, or network functionality. Therefore, we conclude that
none of the claim limitations, viewed "both individually and as an ordered
combination," amount to significantly more than the judicial exception in
order to sufficiently transform the nature of the claims into patent-eligible
subject matter. See Alice, 134 S. Ct. at 2355 (internal quotations omitted)
(quoting Mayo, 566 U.S. at 78).
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of representative claim 1, and
11
Appeal2017-002962
Application 14/058,548
grouped claims 2-20, as being directed to patent-ineligible subject matter in
light of Alice and its progeny. See Grouping of Claims, supra.
Preemption
Lastly, Appellants argue claim 1 "does not create any risk for
preemption of the alleged abstract idea as it does not limit someone from all
manners thereof. Nor does it wholly preempt any field." App. Br. 22-23.
Appellants' argument is unpersuasive because, 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). Moreover,
where, as here "a patent's claims are deemed only to disclose patent
ineligible subject matter" under the Alice/Mayo framework, "preemption
concerns are fully addressed and made moot." Id.
Because Appellants' claims 1-20 are directed to a patent-ineligible
abstract concept, and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
Prior Art Rejection under 35 U.S.C. § 103(a)3
Independent claims 1 and 11 recite, inter alia,
after (i) converting the transaction amount to the
transaction reward value, (ii) identifying the reduction amount
3 Appellants did not provide separate arguments for dependent claims 2-20.
App. Br. 17.
12
Appeal2017-002962
Application 14/058,548
and (iii) updating the reward balance by reducing the reward
balance by the identified reduction amount, calculating, by the
processing device of the processing server, a rebate amount for a
rebate to be processed on the reward account for the payment
transaction based on the transaction reward value, the identified
reduction amount, and the at least one conversion rule.
(Claim Appendix, pages 39, 43, hereinafter "the disputed limitations").
The Examiner has identified the relevant portions of White and Bies
and has provided sufficient explanation with corresponding citations to
various parts of the references for teaching the disputed limitations.
In particular, the Examiner finds, and we agree:
It would have been obvious for someone skilled in the art at the
time of the effective filing date of the invention to modify
White's features of storing accounts/receiving an authorization
request/ calculating a transaction reward/updating the reward
balance/calculating and transmitting a rebate amount, with Bies 's
feature of identifying a reduction amount by which the reward
balance is to be reduced, wherein the reduction amount is a lesser
of the transaction reward value and the reward balance included
in the specific account data entry stored in a database where the
included account identifier corresponds to the payment
information, in order to allow a user to pay for a transaction at a
merchant's point of sale using credit/reward funds through the
use of credit/reward funds accounts and communicating devices
(i.e.[,] POS terminal device, a network that communicated with
the terminal device and the issuer}- Bies, para 11.
Ans. 5 ( emphasis in original).
We agree with the Examiner's findings because "In the patentability
context, claims are to be given their broadest reasonable interpretations ...
limitations are not to be read into the claims from the specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any
13
Appeal2017-002962
Application 14/058,548
special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description."). Absent an express "intent to impart a novel meaning to a
claim term[ s], the words are presumed to take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art." Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
( citation omitted).
The Examiner, giving the claim its broadest reasonable interpretation
consistent with the Specification, has properly found that the disputed
limitations reads upon the combined teachings of White and Bies, as
explained above.
We have considered Appellants' Reply Brief but find it unpersuasive
in rebutting the Examiner's responses because Appellants provide no
persuasive evidence of the alleged error.
It follows that Appellants have not shown error in the Examiner's
rejection of independent claims 1 and 11. Thus, we sustain the rejection of
claims 1-20 under 35 U.S.C. § 103.
DECISION
14
Appeal2017-002962
Application 14/058,548
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 101.
We affirm the Examiner's § 103(a) rejection of claims 1-20.
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
15