Ex Parte Martin et al

Patent Trials and Appeals Board

Apr 3, 2019

14089420 - (D) (P.T.A.B. Apr. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/089,420 11/25/2013
98665 7590 04/03/2019
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
FIRST NAMED INVENTOR
Lane R. Martin
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.
P00513-US-CON 7605
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
04/03/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LANE R. MARTIN, ALEC S. WILKINS, and
JENNIFER W. VANDERWALL
Appeal2018-001279
Application 14/089,420
Technology Center 3600
Before CAROLYN D. THOMAS, JOSEPHP. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 2-12, 14, 16-18, 20, 22-32, 34, 35, 38,
and 42--49. Claims 1, 13, 15, 19, 21, 33, 36, 37, and39--41 have been
canceled. See Response to Notification of Non-Compliant Appeal Brief
(filed July 7, 2017) 2-22 (Claims Appendix). We have jurisdiction over the
pending claims under35 U.S.C. § 6(b).
We affrrm.
1 According to Appellants, the real party in interest is MasterCard
International Incorporated. App. Br. 3.
Appeal 2018-001279
Application 14/089,420
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "electronic payment
systems." Spec. 1 :25. Claim 2, which is illustrative of the claimed
invention, reads as follows:
2. A method comprising the steps of:
setting up a wellness program for employees of an
employer;
tracking participation in said program by at least a frrst
one of said employees of said employer, to determine if said at
least frrst one of said employees has earned a reward by said
participation, via:
an incentive platform module embodied in a frrst
non-transitory computer readable medium and executed
by a vendor entity upon a frrst hardware processor in a
frrst server; and
an incentive tracking database embodied by said
vendor entity in said frrst non-transitory computer
readable medium in said frrst server;
responsive to determining that said at least frrst one of
said employees has earned said reward by said participation, a
load module effectuating a processing platform module to
initiate a funds load, said load module being embodied in said
frrst non-transitory computer readable medium and executed by
said vendor entity upon said frrst hardware processor in said
frrst server, said processing platform module being embodied in
a second non-transitory computer readable medium and
executed by a payment-processing entity upon a second
hardware processor in a second server remote from said frrst
server;
responsive to said load module effectuating said
processing platform module to initiate said funds load,
determining whether said earning of said reward by said
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participation comprises an initial earned reward for said at least
frrst one of said employees, at least via an account creation
application programming interface of said processing platform
module embodied in said second non-transitory computer
readable medium and executed by said payment-processing
entity upon said second hardware processor in said second
server;
responsive to determining that said earning of said
reward by said participation comprises said initial earned
reward for said at least frrst one of said employees:
creating a reward payment card for said at least
frrst one of said employees, at least via a funds load
application programming interface of said processing
platform module executed by said payment-processing
entity upon said second hardware processor in said
second server;
initializing an amount associated with said reward
payment card for said at least frrst one of said employees,
via said funds load application programming interface of
said processing platform module executed by said
payment-processing entity upon said second hardware
processor in said second server exposed to a load module
of said incentive platform module executed by said
vendor entity upon said frrst hardware processor in said
frrst server; and
providing said reward payment card to said at least
frrst one of said employees, at least via said processing
platform module executed by said payment-processing
entity upon said second hardware processor in said
second server;
detecting subsequently-made purchases by said at least
frrst one of said employees with said reward payment card, at
least via said processing platform module executed by said
payment-processing entity upon said second hardware
processor in said second server detecting a predefmed
designated product code in at least one of authorization,
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clearing, and settlementtransactions in an ISO 8583 payment
card network;
based on purchase level data associated with said
subsequently-made purchases, determining if said at least frrst
one of said employees is eligible for a supplemental award by
comparing said purchase level data against supplemental award
parameters, via:
said processing platform module executed by said
payment-processing entity upon said second hardware
processor in said second server; and
a matching parameters database embodied by said
payment-processingentity in said second non-transitory
computer readable medium in said second server;
responsive to determining that said at least frrst one of
said employees is eligible for said supplemental award,
associating supplemental award value to said reward payment
card, at least via said funds load application programming
interface of said processing platform executed by said payment-
processing entity upon said second hardware processor in said
second server.
Rejections
Claims 2-12, 14, 16-18, 20, 22-32, 34, 35, 38, and 42--49 stand
rejected on the ground of non-statutory obviousness-type double patenting
over claims 1-39 of Martin et al. (US 8,595,063 B2; issued Nov. 26, 2013)
("Martin"). Final Act. 6-7.
Claims 2-12, 14, 16-18, 20, 22-32, 34, 35, 38, and 42--49 stand
rejected under 35 U.S.C. § 101 because the claimed subject matter is
judicially-excepted from patent eligibility under § 101. Final Act. 8-10.
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ANALYSIS
Double-Patenting Rejection
The Examiner finds:
Although the claims at issue are not identical, they are not
patentably distinct from each other because the instant claims
are broader than the patented claims and fully encompass the
scope of the parent claims now patented. The instant claims, if
allowed, would unjustly extend the rights granted by the patent.
The portion of the patent in independent claim 1 that states,
"determining if said at least frrst one of said employees is
eligible for said supplemental award further comprises
comparing a monetary amount of those of said subsequently-
made purchases having appropriate purchase-level data against
a threshold" is equivalently found in the independent claims of
the instant application claims which describes comparing
purchase level data against supplemental award parameters.
Comparing award parameters against purchase level data is
equivalent to comparing a threshold against purchase level data.
Final Act. 6-7.
Appellants argue the double-patenting rejection is improper because
the Examiner applies and improper legal standard. App. Br. 18 ( citing
MPEP § 804(II)). Appellants further argue the independent claims of the
present application recite limitations not recited in any of the claims of
Martin and, therefore, the Examiner's findings are factually erroneous
because "the claims of the present application are not 'broader than the
patented claims' such that they 'fully encompass the scope of the parent
claims now patented. "' Id.
In response, the Examiner fmds:
The nonstatutory double patenting grounds have been clearly
identified in this rejection does not describe that the
Appellant[ s '] claims fully encompass or teach the claims of the
patent, but rather the scope of part of the Appellant[ s '] claims
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encompass the same function with the requirement of other
prior art to teach all of the limitations, not the entirety of the
claim language. Examiner is pointing out that the independent
claims of the patent describe determining if employees are
eligible for a supplemental award based on comparison of
monetary value of purchases against a threshold which is very
close to comparing purchase level data against supplemental
award parameters. Parameters is a broader term than a
threshold, but that is not the singular difference in the claims.
Appealed claims are not identical, but they would have been
obvious over the patented claims and that is why Examiner
fmds the nonstatutory double patenting rejection to be proper.
With respect to further argument about this rejection,
Appellants state that the "incentive tracking database, an
account creation application programming interface," etc. that
makes these claims different from those patented. Those are
simple hardware and software additions that is only a slightly
different implementation from the patent claim language.
Ans. 3--4.
An obviousness-type double patenting analysis involves two steps:
"First, the court 'construes the claim[ s] in the earlier patent and the claim[ s]
in the later patent and determines the differences.' Second, the court
'determines whether those differences render the claims patentably
distinct."' Abbvie Inc. v. Mathilda & Terence Kennedy Inst. of
Rheumatology Tr., 764 F.3d 1366, 1374 (Fed. Cir. 2014) (quoting Sun
Pharm. Indus., Ltd. v. Eli Lilly& Co.,611 F.3d 1381, 1385 (Fed. Cir.
2010)). The second part of this analysis is analogous to the obviousness
inquiry under 35 U.S.C. § 103 in the sense that if an earlier claim renders
obvious or anticipates a later claim, the later claim is not patentably distinct
and is, thus, invalid for obviousness-type double patenting. Id. at 1378-79.
Although the Examiner fmds "the independent claims of the [Martin]
patent describe determining if employees are eligible for a supplemental
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award based on comparison of monetary value of purchases against a
threshold which is very close to comparing purchase level data against
supplemental award parameters" and thatthe '"incentive tracking database,
an account creation application programming interface,' etc." recited in the
pending claims "are simple hardware and software additions that [are] only a
slightly different implementation from the patent claim language" (Ans. 3-
4), these fmdings fail to provide any reasoning sufficient to show that the
claims of Martin render obvious or anticipate the currently pending claims.
As such, we are constrained by the record to not sustain the
Examiner's non-statutory obviousness-type double patenting rejection of
claims 2-12, 14, 16-18, 20, 22-32, 34, 35, 38, and 42--49 over claims 1-39
ofMartin.
Rejection under 3 5 US. C. § 101
Appellants do not argue the claims separately with particularity,
except as noted below. Instead, Appellants rely upon the same arguments
for most of the claims. See App. Br. 18-32. We select claim 2 as
representative of this group, and claims 3-12, 14, 16-18, 20, 22-32, 34, 35,
38, and 42--45 stand or fall with claim 2. 37 C.F.R. § 41.37( c )(1 )(iv).
Appellants provide separate arguments for claims 46 and 4 7 and claims 48
and 49 (App. Br. 32-33), which we address below under separate sub-
headings.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S. C. § 101.
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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.,AliceCorp. v. CLSBankint'l, 573 U.S. 208,
216 (2014) (internal quotation marks and citation omitted).
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. at217-18 (citing Mayo CollaborativeServs. v. Prometheus
Labs., Inc., 566U.S. 66, 75-77 (2012)). Inaccordancewiththat framework,
we frrst 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.").
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 (Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubberproducts"(Diamondv. Diehr,450U.S. 175,191
(1981)); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 183 n. 7 (quoting Corningv. Burden, 56 U.S.
252, 267---68 (1854))); andmanufacturingflour (Benson, 409U.S. at69
(citing Cochranev. Deener, 94 U.S. 780, 785 (1876))).
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In Di ehr, 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,450U.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 andFlook); 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
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. at221 (internal citation 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. USPT0,2019 RevisedPatentSubjectMatter Eligibility Guidance,
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84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Underthat guidance, we
frrst 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 MANUAL OF p ATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54--55. 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.
See Memorandum, 84 Fed. Reg. at 56.
Claim 2
STEP 1
Under "Step 1" of the analysis, we determine whether the claimed
subject matter falls within the four categories of patentable subject matter
identified by 35 U.S.C. § 101. Id. at 53-54. Claim 2 is directed to a method
and, therefore, falls within the four categories of patentable subjectmatter-
a process.
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STEP 2A, PRONG 1
Under "Step 2A, Prong One" of the analysis, we determine whether
the claim recites ajudicial exception. Id. at 54.
Claim 2 recites in pertinent part:
setting up a wellness program for employees of an
employer;
tracking participation in said program by at least a frrst
one of said employees of said employer, to determine if said at
least frrst one of said employees has earned a reward by said
participation,
responsive to determining that said at least frrst one of
said employees has earned said reward by said participation, a
load module effectuating a processing platform module to
initiate a funds load,
responsive to said load module effectuating said
processing platform module to initiate said funds load,
determining whether said earning of said reward by said
participation comprises an initial earned reward for said at least
frrst one of said employees, at least via an account creation
application programming interface of said processing platform
module embodied in said second non-transitory computer
readable medium and executed by said payment-processing
entity upon said second hardware processor in said second
server;
responsive to determining that said earning of said
reward by said participation comprises said initial earned
reward for said at least frrst one of said employees:
initializing an amount associated with said reward
payment card for said at least frrst one of said employees, via
said funds load application programming interface of said
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processing platform module executed by said payment-
processing entity upon said second hardware processor in said
second server exposed to a load module of said incentive
platform module executed by said vendor entity upon said frrst
hardware processor in said frrst server;
detecting subsequently-made purchases by said at least
frrst one of said employees with said reward payment card,
based on purchase level data associated with said
subsequently-made purchases, determining if said at least frrst
one of said employees is eligible for a supplemental award by
comparing said purchase level data against supplemental award
parameters, [ and]
responsive to determining that said at least frrst one of
said employees is eligible for said supplemental award,
associating supplemental award value to said reward payment
card, at least via said funds load application programming
interface of said processing platform executed by said payment-
processing entity upon said second hardware processor in said
second server.
Consistent with the Examiner's fmdings (Final Act. 8), we conclude these
limitations, as drafted, are processes that, under their broadest reasonable
interpretation, are commercial interactions similar to certain methods of
organizing human activity found to be abstract ideas. See Smart Sys.
Innovations, Inc. v. Chi. Transit Authority, 873 F.3d 1364, 1371-72 (Fed.
Cir. 2017) (Forming and collecting data for fmancial transactions in a certain
field.); Inventor Holdings, LLCv. Bed Bath & Beyond, Inc., 876 F.3d 1372,
1378-79 (Fed. Cir. 2017) (Local processing of payments for remotely
purchased goods.). We also agree with the Examiner (Final Act. 9) that
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these limitations can be performed mentally or by a human using pen and
paper. See Memorandum, 84 Fed. Reg. at 52; cf Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper."); Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) (Holding that computer-
implemented method for "anonymous loan shopping" was an abstract idea
because it could be "performed by humans without a computer."); Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) ("Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person's mind."). As such, the claim recites an abstract idea
(e.g., certain methods of organizing human activity, mental processes). See
Memorandum, 84 Fed. Reg. at 54--55.
That the claim requires certain steps to be performed via "an incentive
platform module," "an incentive tracking database," and "a matching
parameters database" fails to take the claim limitations out of certain
methods of organizing human activity because an abstract idea is not
rendered patent-eligible merely by coupling it to a machine or manufacture.
See Alice, 537 U.S. at 223.
STEP 2A, PRONG 2
Under "Step 2A, Prong Two," because the claims recite an abstract
idea, we determine whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.
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Memorandum, 84 Fed. Reg. at 54. Claim 2 recites the following additional
elements: (1) "an incentive platform module embodied in a first non-
transitory computer readable medium and executed by a vendor entity upon
a frrst hardware processor in a frrst server;" (2) "an incentive tracking
database embodied by said vendor entity in said frrst non-transitory
computer readable medium in said frrst server;" (3) "said load module being
embodied in said frrst non-transitory computer readable medium and
executed by said vendor entity upon said frrst hardware processor in said
frrst server;" ( 4) "said processing platform module being embodied in a
second non-transitory computer readable medium and executed by a
payment-processing entity upon a second hardware processor in a second
server remote from said frrst server;" (5) "creating a reward payment card
for said at least frrst one of said employees, at least via a funds load
application programming interface of said processing platform module
executed by said payment-processing entity upon said second hardware
processor in said second server;" ( 6) "providing said reward payment card to
said at least frrst one of said employees, at least via said processing platform
module executed by said payment-processing entity upon said second
hardware processor in said second server;" (7) that the detection of
subsequently-made purchases by said at least frrst one of said employees
with said reward payment card is performed "at least via said processing
platform module executed by said payment-processing entity upon said
second hardware processor in said second server detecting a predefmed
designated product code in at least one of authorization, clearing, and
settlement transactions in an ISO 8583 payment card network;" and (8) that
the determining if said at least frrst one of said employees is eligible for a
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supplemental award is performed via "said processing platform module
executed by said payment-processing entity upon said second hardware
processor in said second server" and "a matching parameters database
embodied by said payment-processingentity in said second non-transitory
computer readable medium in said second server."
We find these additional limitations do not integrate the judicial
exception into a practical application. For example, the additional
limitations do not ( 1) improve the functioning of a computer or other
technology, (2) are not applied with any particular machine ( except for
generic computer components), (3) do not effect a transformation of a
particular article to a different state, and ( 4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
Memorandum, 84 Fed. Reg. at 54--55; MPEP §§ 2106.05(a}-(c), (e}-(h).
These limitations do not impose any meaningful limits on practicing the
recited abstract idea and, therefore, do not integrate the abstract idea into a
practical application.
Appellants argue the claim provides specific technological
improvements to computer-related technologies in the marketplace. App.
Br. 25-31. We disagree that Appellants have identified a technological
improvement.
For example, in McRO, the Federal Circuit concluded that the claim,
when considered as a whole, was directed to a "technological improvement
over the existing, manual 3-D animation techniques" through the "use [ ofJ
limited rules ... specifically designed to achieve an improved technological
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result in conventional industry practice." McRO, Inc. v. Bandai Namco
Games Am. Inc., 837F.3d 1299, 1316(Fed. Cir. 2016).
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they defme morph
weight sets as a function of phoneme sub-sequences. Id. at 1313. In
contrast, here, Appellants have not identified any analogous technological
improvement attributable to the claimed invention.
Also, in Enfish, for example, the court noted that "[ s ]oftware can
make non-abstract improvements to computer technology just as hardware
improvements can." SeeEnfish, LLCv. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016). The court put the question as being "whetherthe
focus of the claims is on [a] specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Id. at 1335-36. In
Enfish, the court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
The present case differs from Enfish because the focus of the claims
here is not on an improvement in computers as tools or upon an innovative
way to use computers or other devices, but is focused on a method for
setting up and implementing a wellness program that uses generic and
routine equipment as tools. Appellants have not adequately explained or
directed our attention to anything in the claims that resembles the inventive
self-referential data structure at issue in Enfish, i.e., an improvement to
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computer functionality itself. Appellants also do not point to anything in the
Specification to indicate that the invention provides an improvement in the
recited hardware's technical functionality. Instead, the claim recites generic
computer components that are invoked merely as a tool to implement the
claimed process.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 573 U.S. at 223,225 (Concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" are not patent eligible.).
Regarding Appellants' contention that claim 2 poses no risk of pre-
emption (App. Br. 25), we highlight that "the absence of complete
preemption does not demonstrate patent eligibility." Ari osa Di agnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover,
because we fmd the claimed subject matter covers patent-ineligible subject
matter, the pre-emption concern is necessarily addressed.
We are also not persuaded by Appellants' argument that the claims
"meet the machine-or-transformation test because each of the claimed
methods 'transforms a particular article [ e.g., a 'reward payment card'] into
a different state or thing." App. Br. 31 (brackets in original). Appellants do
not provide any explanation persuasive to show that the claimed steps of
"initializing an amount associated with said reward payment card for said at
least frrst one of said employees" and "providing said reward payment card
to said at least frrst one of said employees" transforms the reward payment
card into a different state or thing sufficient to satisfy the machine-or-
transf ormation test.
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For the foregoing reasons, claim 2 is directed to an abstract idea (e.g.,
a method of organizing human activity, mental processes).
STEP2B
Because the claim is directed to an abstract idea, we next evaluate the
claim under "Step 2B" to determine whether the claim provides an
"inventive concept" (e.g., recites significantly more than the abstract idea).
Memorandum, 84 Fed. Reg. at 56. As recognized by the Memorandum, an
"inventive concept" can be evaluated based on whether an additional
element or combination of elements:
( 1) adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present (see MPEP § 2106.05(d)); or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which
is indicative that an inventive concept may not be
present.
See Memorandum, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellants' claim that contains any "inventive concept" or adds
anything "significantly more" to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at221-22. The Specification describes
the claimed components as implemented with generic computing equipment.
Spec. 30:15-34:18. As such, we agree with the Examiner that "the machines
claimed to implement the abstract idea are merely generic computer
components" (Final Act. 9) and, therefore, fail to cause the claim to recite
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significantly more than the abstract idea to which the claim is directed. See
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014).
For the foregoing reasons, we sustain the Examiner's 35 U.S.C. § 101
rejection of claim 2 and claims 3-12, 14, 16-18, 20, 22-32, 34, 35, 38, and
42--45, which fall with claim 1.
Claims 46--49
Regarding claims 46 and 4 7, Appellants present a separate argument
under Step 2A, Prong 2:
Claim 46 specifies that the first server and second server are
interconnected by one or more networks, and wherein said
origination file is communicated via said one or more networks.
Claim 4 7 further specifies that the first server and second server
are interconnected by an EDI layer, and wherein said
origination file is communicated via said EDI layer.
Accordingly, claims 46 and 47 more clearly indicate that "the
claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm
of computer networks."
App. Br. 32 (citing DDR, 773 F.3dat 1257).
Regarding claims 48 and 49, Appellants present a separate argument
under Step 2A, Prong 2:
Claim 48 specifies that said processing platform and at least
one of said incentive platform and said load module exist
independently as stand alone modules. Claim 49 further
specifies leveraging said stand alone modules. Embodiments
according to claims 48 and 49 provide additional benefits, as
discussed in the [ S ]pecification at page 3 3, lines 2 7 -31 ("In a
preferred but non-limiting embodiment, regardless of which
entities operate the platforms or modules, the platforms or
modules exist independently as stand alone modules which can
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Application 14/089,420
be leveraged. Modules or platforms existing within a single
company or other entity may be more tightly integrated. The
stand-alone architecture is believed to enable greater
leveraging.")
Thus, claims 48 and 49 recite "limitations that when
considered individually and as an ordered combination recite an
inventive concept through the system's distributed
architecture."
App. Br. 32-33 ( citing Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016)).
We do not find Appellants' arguments persuasive. Appellants'
arguments overlook that the argued "solution" must be a technical solution.
Appellants' argument does not explain how either the problem or solution
are technical. Unlike the claims at issue in cases such as DDR (773 F.3d at
1257 ( claims at issue are "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks")) andEnfish (822 F.3dat 1339 (claims at issue are "directed to a
specific implementation of a solution to a problem in the software arts")),
the claims here merely address a business challenge (e.g., setting up and
implementing a wellness program for employees of an employer) through
the use of generic, computer-related recitations that do not add meaningful
limitations to steps otherwise directed to an abstract idea.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 46-49under35 U.S.C. § 101.
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Appeal 2018-001279
Application 14/089,420
DECISION
We reverse the Examiner's non-statutory obviousness-type double-
patentingrejection of claims 2-12, 14, 16-18, 20, 22-32, 34, 35, 38, and 42-
49.
We affrrm the Examiner's rejection of claims 2-12, 14, 16-18, 20,
22-32, 34, 35, 38, and 42--49 under 35 U.S.C. § 101.
Since at least one rejection encompassing all claims on appeal is
affrrmed, the decision of the Examiner is affrrmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C. F. R. § 1. 13 6( a)( 1 )(iv).
AFFIRMED
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