Ex Parte Maw et al

Patent Trials and Appeals Board

Apr 24, 2019

13858616 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/858,616 04/08/2013
126944 7590 04/26/2019
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
FIRST NAMED INVENTOR
Brian Maw
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.
37537.0014Ul- 5095
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
04/26/2019 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN MAW and JENNIFER DOGIN
Appeal2018-003096
Application 13/858,616
Technology Center 3600
Before JEAN R. HOMERE, DANIEL N. FISHMAN,
and JOSEPH P. LENTIVECH, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3 7, which constitute all claims pending in this
application. 1 App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify MasterCard International Inc., as the real party in
interest. App. Br. 2.
Appeal2018-003096
Application 13/858,616
Introduction
According to Appellants, the claimed subject matter relates to a
computer-implemented method (1000) for electronically redeeming at a
merchant (1200) a voucher (1250) stored on a customer mobile device
(2000) where the monetary value of the voucher is insufficient to cover a
payment transaction at the merchant location. Spec. ,r,r 7, 23-25, Fig. 1. In
particular, upon receiving a request to redeem the electronic voucher (1250),
a payment processor (3000) verifies that the voucher (1250) qualifies for
payment, which it applies towards the payment transaction, and combines
the redeemed monetary value of the voucher with the excess monetary value
paid by the customer to cover the full amount of the payment transaction.
Id. ,r,r 7, 26, and 27.
Representative Claim
Claims 1, 8, 15, 22, 27 and 32 are independent. Independent claim 1
is representative, and reads as follows:
1. A payment processor method comprising:
receiving at the payment processor, via a network interface, a
request to redeem an electronic voucher as part of a payment
transaction with a merchant, the payment transaction having a
transaction value, the electronic voucher having a voucher value;
verifying, with a microprocessor, that the electronic voucher
qualifies for the payment transaction;
applying the electronic voucher when the electronic voucher
qualifies for the payment transaction;
combining, as part of the payment transaction, the electronic
voucher redemption with electronically paying an exceeded amount
when the transaction value exceeds the voucher value via the network
interface.
2
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Rejections on Appeal
Claims 1-37 stand rejected under 35 U.S.C. §101 as being directed to
patent ineligible material. Final Act. 2-5.
Claims 1-37 stand rejected under 35 U.S.C. §102 (a)(l) as being
anticipated by Postrel, Pub No. US 2011/0153403 Al, June 23, 2011. Final
Act. 5-13.
ANALYSIS 2
Patent Ineligibility Rejection
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
2 We refer to Appellants' arguments and the Examiner's findings and
conclusions set forth in the Final Action (mailed September 29, 2016, "Final
Act."), the Appeal Brief (filed June 14, 2017, "App. Br."), the Answer
(mailed September 12, 2017, "Ans.") for the respective details.
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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 (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (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 (1854))); 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, 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), and 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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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. at 221. "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
section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50-57 (Jan. 7, 2019) ("2019 PEG"). Under the 2019 PEG, 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)). 3
See 2019 PEG, 52, 55-56. Only if a claim: (1) recites a judicial exceptional
and (2) does not integrate that exception into a practical application, does the
office then look to whether the claim:
3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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(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 2019 PEG at 56.
Examiner's Findings and Conclusions
In the first step of the Alice inquiry, the Examiner determines
independent claims 1, 8, 15, 22, 27, and 32 are directed to the abstract idea
of consolidating the redemption of electronic vouchers and payment
transaction. Ans. 5. According to the Examiner, processing and approving
an electronic voucher in a payment transaction is akin to creating a
contractual relationship between two parties, which the court has identified
as a method of organizing human activity-a fundamental economic
practice. Id. 5---6 (citing buySafe, Classen, and Cybersource).
At Alice step 2, the Examiner determines the claims do not recite
additional elements sufficient to amount to significantly more than the
abstract idea. Id. at 6. According to the Examiner, the recited step of
receiving a request to redeem an electronic voucher as part of a payment
transaction with a merchant is simply directed to gathering data. Id. The
Examiner avers that the claims merely implement the abstract idea on a
generic payment processor/microprocessor, which is simply performing
routine, well-understood, and conventional functions. Id. The Examiner
notes that the recitation of the term "electronic" in the claim does not
convert the abstract idea of "processing a request to redeem a voucher in a
transaction" into patent-eligible subject matter. Id. Additionally, the
Examiner determines that, unlike DDR Holdings, the claimed invention does
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not provide a technical solution to a technological problem. Id. at 10-14.
Instead, the Examiner avers that the claimed invention uses a typical or
conventional hardware architecture to carry out conventional instructions.
Id. at 14.
Appellants ' Contentions
Appellants argue the Examiner has not made a prima facie case that
the claims are directed to patent-ineligible subject matter. App. Br. 7-8. In
particular, Appellants argue that the "subject matter of linking redemption of
electronic vouchers offers with payment card transactions on payment card
infrastructure is not similar to any idea previously found to be abstract." Id.
at 9. According to Appellants, unlike claims that have been found to be
directed to a method of organizing human activity such as a fundamental
economic practice long prevalent in our system of commerce, the claims are
directed to a payment processing system for processing the redemption of an
electronic voucher. Id. at 10. Appellants argue a "determination that claim
includes a method of organizing human activity should require more than
merely identifying an economic component in the claim." Id. at 11
( emphasis omitted). Appellants further argue that the Examiner ignores key
limitations and mischaracterizes the claims as being directed an abstract idea
without any proof to support the position that the claimed redemption of e-
vouchers is directed to organizing a human activity. Id. Furthermore,
Appellants argue that even if the claims are directed to an abstract idea, they
are patent eligible because the claimed solution addresses an internet-centric
problem, and it is thus "necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of
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payment networks and specifying how interactions between computer
components are manipulated to yield a desired result, which is non-routine
and non-conventional." Id. at 12-13 (citing DDR Holdings). Additionally,
Appellants argue:
It is further emphasized that the claims do not merely
implement the alleged abstract idea on a generic computer, but rather,
specifies how the user interface acts in a very specific manner,
communicate/receive specific information, evaluates and allocates
data in a specific manner. It should be apparent that this not how a
generic computer operates "in its normal, expected manner. ... "
Rather, these activities go well beyond what is routine and
conventional.
Id. at 13.
[I]t is apparent that the claims of the present application are rather
directed to using particular computer technology and devices in a very
specific way to achieve new and useful results. Appellants submit
that the recited elements cannot be separated from the computer-
implemented environment ( e.g., specific tangible parts programmed in
specific ways to communicate very specific data) of the claims and
"presents functional and palpable applications in the field of computer
technology." See also Research Corp. Techs., Inc. v. Microsoft Corp.,
627 F.3d 859, 867-68 (Fed. Cir. 2010) (citing Gottschalkv. Benson,
409 U.S. 63, 67, 93 S. ct. 253, 34 L.Ed.2d 273 (1972)). The novelty
and advantage of Appellants' claims lies within the technology recited
therein.
Id. at 13-14.
Appellants' claims result in the requirement of a computer system
with improved functionality over a "" generic" computer. Because the
recitations of the present claims would require specific programming,
the resulting computer would be a specific purpose computer, which
is in contrast to the claims of Alice. See In re Alappat, 33 F .3d 1526
(Fed. Cir. 1994) (providing that "a general purpose computer in effect
becomes a special purpose computer once it is programmed to
perform particular functions ... ").
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Id. at 14.
Our Review
Alice/Mayo--Step 1 (Abstract Idea)
Applying the guidance set forth in the 2019 PEG, we determine the
Examiner has not erred in rejecting the claims as being directed to patent
ineligible subject matter. The 2019 PEG instructs us first to determine
whether any judicial exception to patent eligibility is recited in the claim.
The guidance identifies three judicially-excepted groupings: (1)
mathematical concepts; (2) certain methods of organizing human activity
such as fundamental economic practices; and (3) mental processes. We
focus our attention on the second grouping, certain methods of organizing
human behavior such as fundamental economic practices. Claim 1 recites,
inter alia, a payment processor/microprocessor performing the following
steps:
1) receiving a request to redeem an e-voucher as part of a
payment transaction with a merchant;
2) verifying that the voucher qualifies for the payment
transaction;
3) applying the voucher when the voucher qualifies for the
payment transaction;
4) combining, as part of the payment transaction, the voucher
redemption with paying an exceeded amount when the transaction
value exceeds the voucher value.
As noted above, the claimed subject matter relates to a computer-
implemented method ( 1000) for electronically redeeming at a merchant
(1200) a voucher (1250) stored on a customer mobile device (2000) where
the monetary value of the voucher is insufficient to cover a payment
transaction at the merchant location. Spec. ,r,r 7, 23-25, Fig. 1. Each of
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independent claims 1, 8, 15, 22, 27, and 32 recites a series of steps
performed by a processor during the process of redeeming the electronic
voucher as part of the payment transaction with a merchant. We agree with
the Examiner that the claims, as a whole, merely involve the processing of
an electronic voucher as part of the payment transaction. Because the claim
limitations recite the types of operations (receiving, validating, applying, and
combining) that would ordinarily take place during the processing of an e-
voucher, the claims, as a whole, recite the fundamental economic practice of
redeeming an e-voucher as part of a payment transaction-a method for
organizing human activity that falls within the abstract ideas identified by
the 2019 PEG. Furthermore, although the claim recites applying the value
of the voucher and combining its redeemed value with the excess amount to
cover the payment transaction, such processing of the voucher as part of the
payment transaction falls squarely within the type of routinely performed
operations in the field of e-voucher processing. Therefore, as correctly
noted by the Examiner, like the concepts of hedging in Bilski, and the
concept of mitigating settlement risk in Alice, the concept of processing an
e-voucher as part of a payment transaction is a fundamental economic
practice long prevalent in our system of commerce. Ans. 5---6. 4
4 See, e.g., Alice, 573 U.S. at 221 (intermediated settlement); Bilski, 561
U.S. at 611-12 (risk hedging); Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1054 (Fed. Cir. 2017) ("[P]rocessing an application for
financing a purchase" is a fundamental economic practice long prevalent in
our system of commerce.); LendingTree, LLC v. Zillow, Inc., 656 F.Appx.
991, 996 (Fed. Cir. 2016) (Like the concept of risk hedging in Bilski and
intermediated settlement in Alice, "the concept of applying for loans and
receiving offers is also long prevalent in our financial system."); Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed.
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Accordingly, we conclude independent claims 1, 8, 15, 22, 27, and 32 recite
a judicial exception of a fundamental economic practice.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
"additional elements that integrate the judicial exception into a practical
application." See MPEP § 2106.05(a}-(c), (e}-(h). "Integration into a
practical application" requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. 84 Fed. Reg., 53.
Appellants' claims 1, 8, 15, 22, 27, and 32 recite a computer-related
limitation, (e.g., payment processor, computing device, mobile device). We
do not find the computer-related limitation is sufficient to integrate the
judicial exception into a practical application. Besides indicating that the
processor may be any central processing unit, a server that runs a
multitasking operation system, a microprocessor, microcontroller, a
computational device known in the art implemented as part of a network
infrastructure, Appellants' Specification provides no meaningful detail about
the structure of the processor or its configuration. Spec. ,r,r 39, 56, and 57.
The Specification also discusses problems arising in the context of
processing the voucher and the excess payment as separate transactions. Id.
,r,r 5 and 6. Additionally, the Specification indicates that the processor may
be used to perform steps 1--4 of claim 1 recited above. Id. ,r 7. However,
Cir. 2016) (finding claims directed to the "anonymous loan shopping" to be
abstract).
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the cited portions of the Specification do not indicate that in performing the
recited steps, the functionality of the processor is improved. Although we
do not dispute Appellants' argument that the computer has specific logic to
combine the processing of thee-voucher and excess payment as a single
transaction, such logic is similar to logic generally used in a generic
computer for processing coupons/vouchers along with the balance for the
payment transaction. App. Br. 13. Appellants do not persuasively explain
why the claims improve the functioning of a computer or improve the
financial transaction processing technology. See MPEP § 2106.0S(a).
Rather, the claims merely adapt the abstract idea to an execution of steps
performed by a processor. See Credit Acceptance, 859 F.3d at 1055 ("Our
prior cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology."); see also Bancorp Services, L.L. C. v. Sun Life Assurance Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A computer
"employed only for its most basic function ... does not impose meaningful
limits on the scope of those claims."). Further, Appellants' identified
improvements are improvements to the abstract idea, not improvements to a
technology or computer functionality. Thus, on the record before us, the
cited claim limitations do not improve the functionality of the processor by
performing the cited operations to combine the redeemed value of an e-
voucher with the balance of the payment transaction, nor do they achieve an
improved technological result in conventional industry practice. McRO, Inc.
v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
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Because claim steps 1--4, outlined above, do not (1) provide any
technical solution to a technical problem as required by DDR Holdings; 5 (2)
provide any particular practical application as required by BASCOM; 6 or (3)
entail an unconventional technological solution to a technological problem
as required by Amdocs, 7 we agree with the Examiner's determination that
Appellants' claims 1-37 are directed to an abstract idea that is not integrated
into a practical application.
Alice/Mayo--Step 2 (Inventive Concept)
Turning to step 2 of the Alice/lvfayo framework, we look to whether
the claim: (a) recites a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field; or (b)
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. 2019 PEG, 56. We discern no additional element or combination
of elements recited in Appellants' independent claims 1, 8, 15, 22, 27, and
32 that contains any "inventive concept" or adds anything "significantly
more" to transform the abstract concept into a patent-eligible application.
Alice, 573 U.S. at 221. Appellants do not direct our attention to any portion
5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
The Federal Circuit found DDR 's claims are patent-eligible under§ 101
because DDR 's claims: (1) do not merely recite "the performance of some
business practice known from the pre-Internet world" previously disclosed
in Bilski and Alice; but instead (2) provide a technical solution to a technical
problem unique to the Internet, i.e., 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.
6 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
7 Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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of the Specification indicating that the claimed processor performs anything
other than well-understood, routine, and conventional functions, such as
receiving, processing, and combining. See Elec. Po\'1/er Group, 830 F.3d at
1355 ("Nothing in the claims, understood in light of the specification,
requires anything other than off-the-shelf: conventional computer, network,
and display technology for gathering, sending, and presenting the desired
information."); buy,'J"',4FE, inc. v. Google, inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2015) ("That a computer receives and sends information over a
network-with no further specification-is not even arguably inventive."); and
Alice, 573 U.S. at 224-26 (receiving, storing, sending information over
networks insufficient to add an inventive concept). Instead, Appellants'
claimed subject matter simply uses generic computer components ( e.g., a
server, processor, microprocessor, mobile device) to perform the
fundamental economic practice of redeeming an e-voucher as part of a
payment transaction. As noted above, the use of a generic computer ( e.g.,
server, processor, mobile device, microprocessor) does not alone transform
an otherwise abstract idea into patent-eligible subject matter. As our
reviewing court has observed, "after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR, 773 F.3d at 1256 (citing Alice, 573
U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, the claim is
devoid of an inventive concept. See Alice, 573 U.S. at 217. Appellants are
reminded that "the 'inventive concept' [under step two of the Mayo/Alice
test] cannot be the abstract idea itself' and "Berkheimer . .. leave[s]
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untouched the numerous cases from this court which have held claims
ineligible because the only alleged 'inventive concept' is the abstract idea."
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). "It has been clear since Alice that a claimed invention's use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018). We, therefore, agree with the Examiner that the computer
functions recited in the claims were, in fact, generic, and are met by
numerous case law establishing that using a generic computer to expedite
and automate processes traditionally performed manually, or that are
otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Non-Final Act. 7; see also, e.g., Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information); Bancorp Services,
L.L.C., 687 F.3d at 1278 ("The computer required by some of Bancorp's
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims.").
To the extent that Appellants argue the claims necessarily contain an
"inventive concept" based on their alleged novelty or non-obviousness over
the cited references, Appellants misapprehend the controlling precedent.
Although the second step in the Alice/ Mayo framework is termed a search
for an "inventive concept," the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for "an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
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significantly more than a patent upon the [ineligible concept] itself."' Alice,
573 U.S. at 217-218 (alteration in original). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90.
Appellants are further reminded that "relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 ( citing Alice, 573 U.S. at 224 ("[U]se of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept.)); see also, e.g., Intellectual
Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 ("[M]erely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea.").
Therefore, the functions recited in independent claims 1, 8, 15, 22, 27, and
32 do not add any meaningful limitations beyond generally linking the
abstract idea to the particular technological environment. Id.
Because Appellants' claims 1, 8, 15, 22, 27, and 32 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 claims 1, 8, 15, 22, 27, and 32 under 35 U.S.C.
§ 101.
Appellants do not present additional arguments for dependent claims
2-7, 9-14, 16-21, 23-26, and 28-31. Accordingly, for the same reasons as
set forth for independent clairns 1, 8, 15, 22, 27, and 32, we sustain the
Examiner's 35 U.S.C. § 101 rejection of dependent claims 2-7, 9-14, 16-21,
23-26, and 28-31.
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Anticipation Rejection
Appellants argue that the Examiner erred in finding that Postrel
anticipates claims 1-37. App. Br. 14. In particular, Appellants argue that
Postrel's disclosure of reward points does not describe the vouchers, as
recited in independent claim L Id. According to Appellants, Postrel's
reward points pertains to merchant-sponsored reward point exchange
programs that "enable users to exchange, redeem, and manage reward points
amongst various reward programs via an online exchange service", whereas
the Specification defines a voucher as "a certificate which is worth a certain
monetary value and which may be spent only for specific reasons or on
specific goods." Id. (citing Postrel ,r,r 2, 3, 129, 239, and Spec. ,r 3).
Further, Appellants argue that Postrel does not describe "combining, as part
of the payment transaction, the electronic voucher redemption with
electronically paying an exceeded amount," as recited in claim 1. Id. at 15.
According to Appellants, Postrel discloses that arnounts not covered by the
reward payment are handled by a separate payment transaction, ( e.g., cash,
debit card, check, etc.) Id. ( citing Postrel ,r 239). Appellants' argurnents are
not persuasive.
We agree with the Examiner that "reward points," as disclosed in
Postrel, explicitly describes a "voucher" as recited in the claim. Ans. 14--15.
As correctly noted by the Examiner, and uncontested by Appellants, Postrel
defines "reward points" to encompass "coupons," which is defined in the
Oxford dictionary as a "voucher." Id. at 15 (citing Postrel ,r 139). Next, we
likewise agree with the Examiner that Postrel' s disclosure of combining a
redeemed reward payment portion (i.e., voucher) and a monetary
consideration portion (e.g., cash, check or credit) as payment for a
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Application 13/858,616
merchant's purchase price describes combining two sub-transactions or
payment portions as a single financial transaction (i.e., paying the purchase
price). Id. at 18 ( citing Postrel ,r 239). While the cited portions of Postrel
discuss two separate payment portions, we do not agree with Appellants that
these portions are separate transactions. We are in accord with the Examiner
that Postrel' s payment portions can be reasonably construed as being parts of
a single transaction to defray the purchase price. Consequently, we are not
persuaded of error in the Examiner's rejection of independent claim 1.
Because Appellants reiterate those same arguments for independent claims
8, 15, 22, 27, and 32, we are likewise unpersuaded of error in the Examiner's
anticipation rejection of independent claims 8, 15, 22, 27, and 32.
Regarding dependent claims 2, 3, 9, 10, 16, 17, 23, 24, 28, 33, and 37,
Appellants argue that Postrel does not describe "receiving payment
transaction details via the network interface." App. Br. 17. This argument is
not persuasive. We agree with the Examiner that Postrel' s disclosure of a
screen shot depicting a checkout page for payment with reward points and a
credit card for extra costs describes the claimed network interface. Ans. 19-
20 ( citing Postrel, Fig. 24). Accordingly, we are not persuaded of error in
the Examiner's anticipation rejection of claims 2, 3, 9, 10, 16, 17, 23, 24, 28,
33, and 37.
Because Appellants do not separately argue claims 7, 14, and 21, we
are not persuaded of error in the Examiner's anticipation rejection of those
claims.
Regarding dependent claims 4---6, 11-13, 18-20, 25, 26, 29-31, and
34--36, Appellants argue that Postrel does not describe "the electronic
voucher comprises a unique identifier." App. Br. 17. This argument is
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Application 13/858,616
persuasive. We do not agree with the Examiner that Postrel' s disclosure of a
promotional wallet associated with the unique ID of a user teaches a voucher
having a unique ID. Ans. 21 (citing Postrel ,r,r 23, 29, and 150). Although
the user ID identifies the individual associated with a particular wallet, it
does not uniquely identify the wallet or voucher itself. Accordingly, we are
persuaded of error in the Examiner's anticipation rejection of claims 4---6,
11-13, 18-20, 25, 26, 29-31, and 34--36.
DECISION
For the above reasons, we sustain the Examiner's patent ineligibility
rejection of claims 1-37. We also sustain the Examiner's anticipation
rejection of claims 1-3, 7-10, 14--17, 21-24, 27, 28, 32, 33, and 37.
However, we do not sustain the Examiner's anticipation rejection of
claims 4---6, 11-13, 18-20, 25, 26, 29-31, and 34--36.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
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).
AFFIRMED
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