Ex Parte McCann et al

Patent Trial and Appeal Board

Jul 11, 2018

12608673 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/608,673 10/29/2009
71247 7590 07/13/2018
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Monica Theresa McCann
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.
170103-1190 6911
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
uspatents@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MONICA THERESA MCCANN, WILLIAM W. ALLOCCA,
BRANDON R.I. CHANG, HENRY ROBERT NICKERSON,
MARKS. GULBRANDSEN, DOUGLAS J. HERRINGTON,
DILIP S. KUMAR, JAMES J. SHIMADA, and PAUL D. DEMARCO
Appeal2017-004624
Application 12/608,673
Technology Center 3600
Before ROBERT E. NAPPI, SCOTT B. HOW ARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-9, 11-14, and 16-25, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Amazon Technologies, Inc.
App. Br. 2.
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Application 12/608,673
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns the sale of
goods and/or services over a network. Spec. ,r,r 1, 9-11, 14, Fig. 1. 2 The
Specification explains that: ( 1) a "coupon campaign[] comprises one or more
digital coupons"; (2) "[ c ]oupon campaigns are implemented in a computing
device for a plurality of vendors in association with" an "electronic
commerce system"; (3) "automated submission of each of the campaigns is
facilitated in the computing device ... through a self-service portal" for
vendors; and (4) "[v]endor control is facilitated through the self-service
portal," e.g., to manage "the digital coupons associated with" a campaign.
Abstract.
Exemplary Claims
Independent claims 1 and 4 exemplify the claims at issue and read as
follows (with formatting added for clarity):
1. A system, comprising:
at least one computing device comprising a hardware
processor, the at least one computing device being in
communication with an electronic data store;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed October 29, 2009; "Final Act." for the Final Office
Action, mailed December 3, 2015; "1st Adv. Act." for the Advisory Action,
mailed March 23, 2016; "2nd Adv. Act." for the Advisory Action, mailed
May 26, 2016; "App. Br." for the Appeal Brief, filed July 18, 2016; "Ans."
for the Examiner's Answer, mailed December 1, 2016; and "Reply Br." for
the Reply Brief, filed January 20, 2017.
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Application 12/608,673
an electronic commerce system implemented in the at
least one computing device, the electronic commerce system
facilitating interaction with a plurality of client computing
devices over a computer network to facilitate a purchase of a
plurality of items; and
a self-service portal implemented in the at least one
computing device, the self-service portal facilitating vendor
access to a plurality of coupon campaigns employed in
association with an operation of the electronic commerce
system, the self-service portal being configured to allow a
vendor to:
perform an automated submission of the plurality
of coupon campaigns to be employed in association with
the operation of the electronic commerce system, the
plurality of coupon campaigns comprising a plurality of
digital coupons, wherein the automated submission
comprises a bulk submission of the plurality of coupon
campaigns from a file;
perform an analysis to identify one or more errors
associated with a plurality of terms of at least one of the
plurality of digital coupons, the plurality of terms
comprising a start date, an end date, and a discount
amount;
view a listing of at least one of the plurality of
coupon campaigns submitted by the vendor through the
self-service portal;
estimate an amount of a maximum expenditure
limit for one of the plurality of coupon campaigns based
at least in part on a rate of redemption of a plurality of
outstanding digital coupons associated with the one of
the plurality of coupon campaigns by the plurality of
client computing devices over the computer network, the
plurality of outstanding digital coupons having been
previously sent to the plurality of client computing
devices over the computer network; and
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deactivate at least one of the plurality of
outstanding digital coupons associated with the one of
the plurality of coupon campaigns in response to an
expenditure under the one of the plurality of coupon
campaigns reaching the amount of the maximum
expenditure limit.
4. A computer implemented method, comprising:
implementing, with at least one computing device, a
plurality of coupon campaigns for a plurality of vendors in
association with an electronic commerce system;
facilitating, with the at least one computing device, an
automated submission of the plurality of coupon campaigns
from the plurality of vendors through a self-service portal,
wherein the automated submission comprises data indicating a
group of target customers;
analyzing, with the at least one computing device, the
plurality of coupon campaigns submitted through the self-
service portal for at least one error associated with at least one
term of the plurality of coupon campaigns;
estimating, with the at least one computing device, an
amount of a maximum expenditure limit for one of the plurality
of coupon campaigns based at least in part on a rate of
redemption of a plurality of outstanding digital coupons
associated with the one of the plurality of coupon campaigns by
a plurality of client computing devices over a computer
network, the plurality of outstanding digital coupons having
been previously sent to the plurality of client computing devices
over the computer network; and
controlling, with the at least one computing device,
whether at least one of the plurality of outstanding digital
coupons associated with the one of the plurality of coupon
campaigns is active to be applied to purchase of an item
through the electronic commerce system in response to an
expenditure under the one of the plurality of coupon campaigns
reaching the amount of the maximum expenditure limit.
App. Br. 41--44 (Claims App'x).
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The Rejection on Appeal
Claims 1-9, 11-14, and 16-25 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 2--4.
ANALYSIS
We have reviewed the rejection in light of Appellants' arguments that
the Examiner erred. For the reasons explained below, we concur with the
Examiner's conclusion concerning ineligibility under § 101. We adopt the
Examiner's findings and reasoning in the Final Office Action (Final Act.
2--4 (rejection) and 5-7 (response to arguments)), the Advisory Actions
(1st Adv. Act. 2; 2nd Adv. Act. 2), and the Answer (Ans. 2-10). We add the
following to address and emphasize specific findings and arguments.
The§ 101 Rejection of Claims 1-9, 11-14, and 16--25
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. In Mayo and Alice,
the Court set forth a two-step analytical framework for evaluating patent-
eligible subject matter: First, "determine whether the claims at issue are
directed to" a patent-ineligible concept, such as an abstract idea. Alice,
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134 S. Ct. at 2355. If so, "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than a patent-ineligible concept. Id. at 2355, 2357
(quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Under step two, "an inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE
The Examiner determines that the claims at issue are directed to an
abstract idea, i.e., "the implementation, execution, and management of
coupon campaigns." Final Act. 2; Ans. 2. The Examiner explains that the
abstract idea constitutes a "fundamental economic practice" and a "method
of organizing human activity." Final Act. 2, 6-7; 1st Adv. Act. 2; Ans. 2-3,
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5, 7. As support, the Examiner cites the July 2015 Update: Subject Matter
Eligibility ("July 2015 Update"). Ans. 2. The July 2015 Update states:
(1) "[t]he phrase 'fundamental economic practices' is used to describe
concepts relating to the economy and commerce, such as agreements
between people in the form of contracts, legal obligations, and business
relations"; and (2) "[t]he term 'fundamental' is used in the sense of being
foundational or basic, and not in the sense of necessarily being 'old' or
'well-known."' July 2015 Update 4. Illustrating this, claim 23 recites
"a component for an electronic signing with respect to a contract." App.
Br. 48 (Claims App'x).
Appellants dispute the Examiner's determination that the claims are
directed to a patent-ineligible abstract idea. See App. Br. 12-23; Reply
Br. 3-15. Based on a statement in a May 2016 Memorandum3 from Deputy
Commissioner Bahr regarding§ 101 rejections ("May 2016 Update"),
Appellants assert that the Examiner's "approach in this case was ... to 'go
beyond those concepts ... the courts have identified as abstract ideas."'
App. Br. 13; see Reply Br. 3. Appellants then contend that the Examiner
improperly "raises an entirely new type, category, or class of abstract ideas
by finding that 'the implementation, execution, and management of coupon
campaigns' is a 'fundamental economic practice."' App. Br. 13-14
(emphasis omitted); see id. at 31, 35-36.
Appellants' arguments do not persuade us of Examiner error. The
May 2016 Update notes that "Examiners should not go beyond those
concepts that are similar to what the courts have identified as abstract ideas."
3 https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-
memo.pdf.
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May 2016 Update 3. Here, the Examiner identifies court decisions
addressing patent-ineligible concepts that are similar to "the implementation,
execution, and management of coupon campaigns." See, e.g., Ans. 2--4,
6, 10. In the Answer, for example, the Examiner cites OIP Technologies,
Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), and explains that
the claims there were "directed towards automated pricing in electronic
commerce" and-like the claims here-included steps for "collecting
information over a network" and "performing estimations on the collected
data." Ans. 10. In the Reply Brief, Appellants make no attempt to
distinguish OIP Technologies. Reply Br. 3-15.
Further, Appellants cite the PTO's May 2016 Federal Register notice
concerning subject-matter eligibility. App. Br. 9. That notice explains that
the PTO' s § 101 guidance materials "were developed as a matter of internal
Office management," "do not constitute substantive rulemaking," "do not
have the force and effect of law," and instead "set out examination policy"
regarding§ 101 rejections. 81 Fed. Reg. 27,381, 27,382 (May 6, 2016).
That notice also explains that "[r]ejections will continue to be based upon
the substantive law, and it is these rejections that are appealable." Id. Thus,
an Examiner's failure to follow the§ 101 guidance materials is appealable
only to the extent there has been a failure follow statutory or decisional law.
If the guidance materials exceed statutory or decisional law with additional
restrictions, an Examiner's failure to comply with those additional
restrictions may warrant a petition to the Director.
Appellants argue that independent claims 1, 4, and 13 are not directed
to an abstract idea and instead recite "specific improvements in computer
technology," in particular, "a specific technical approach to self-service
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management of digital coupon campaigns." See App. Br. 16-17, 31-32, 37;
Reply Br. 4, 6, 7, 9, 11, 13. Appellants assert that "the Specification
demonstrates that the claimed invention": (1) "is rooted in computer
technology because it describes every embodiment in the context of a
'networked computing environment'"; and (2) "is directed to overcome a
problem specifically arising in field of coupon campaign management in the
realm of computer networks and focuses on a specific way to use computer
capabilities to accomplish that goal." App. Br. 20-21, 31-32, 36-37 ( citing
Spec. ,r,r 3-10, 27). In addition, Appellants contend that the claimed
solution "is technical in nature because it relies upon an estimation or
forecast of an amount of a limit driven by data obtained via computer
networks." Id. at 11, 28, 32, 34, 37, 38 (emphasis omitted). Appellants also
contend that the "calculation of an estimate based on a rate of redemption is
for a concrete and not abstract purpose." Id. at 21.
Appellants' arguments do not persuade us of Examiner error.
Claims 1, 4, and 13 cover the collection, manipulation, and display of data.
App. Br. 41--46 (Claims App'x); see 1st Adv. Act. 2; 2nd Adv. Act. 2;
Ans. 8. The Federal Circuit has ruled that claims covering the collection,
manipulation, and display of data were directed to abstract ideas. See, e.g.,
SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1019-22 (Fed. Cir. 2018);
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1339--41 (Fed. Cir. 2017); Elec. Power Grp., 830 F.3d at 1351-54; OIP
Techs., 788 F.3d at 1361---63.
Appellants misplace their reliance on the "calculation of an estimate
based on a rate of redemption" because that calculation simply involves the
manipulation of data. See Ans. 10. Moreover, a human could perform that
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calculation mentally or with pencil and paper. See Spec. ,r,r 27, 66-67; Final
Act. 6; 1st Adv. Act. 2; 2nd Adv. Act. 2. Steps and functions that may be
performed in the human mind constitute abstract ideas. CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1371-73 (Fed. Cir. 2011). And
adding one abstract idea to another abstract idea does not render the claims
non-abstract. See RecogniCorp, 855 F.3d at 1327; see also FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)
( determining that the claims were directed to a combination of abstract
ideas).
That the claims here employ a "computer network" to collect data
does not render them non-abstract. See Ans. 6, 10. Using conventional
computer or network technology as a tool to accomplish abstract-idea
processes does not make the ideas any less abstract. See Elec. Power Grp.,
830 F.3d at 1354.
Based on Enfish, Appellants assert that the "specific, novel elements"
recited in the claims demonstrate they are not directed to an abstract idea.
App. Br. 18-19, 32, 37. But Enfish does not help Appellants.
The claims in Enfish were directed to a "specific improvement to the
way computers operate," i.e., an improved database configuration that
permitted faster and more efficient searching. Enfish, 822 F.3d at 1330-33,
1336. Further, the Federal Circuit has explained that the claims "in Enfish
did more than allow computers to perform familiar tasks with greater speed
and efficiency" by "permitt[ing] users to launch and construct databases in a
new way." Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305
(Fed. Cir. 2018).
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Here, in contrast to Enfzsh, claims 1, 4, and 13 lack technical detail
regarding a "computing device," an "electronic data store" or memory, and a
"computer network." In addition, the Specification describes those system
components generically by explaining that: (1) a server "computing device"
may "comprise, for example, a server computer or like system," "may
represent multiple servers arranged, for example, in one or more server
banks or other arrangements," and "may be viewed as a server 'cloud' that
represents the computing capacity of multiple servers"; (2) a client
"computing device" may "comprise, for example, a processor-based system
such as computer system"; (3) an "electronic data store" or memory may
"comprise, for example, random access memory (RAM), read-only memory
(ROM), hard disk drives, solid-state drives, USB flash drives, memory cards
accessed via a memory card reader, floppy disks accessed via an associated
floppy disk drive, optical discs accessed via an optical disc drive, magnetic
tapes accessed via an appropriate tape drive, and/or other memory
components, or a combination of any two or more of these memory
components"; and ( 4) a "computer network" may "comprise, for example,
the Internet, intranets, extranets, wide area networks (WAN s ), local area
networks (LAN s ), wired networks, wireless networks, or other suitable
networks, etc., or any combination of two or more such networks." Spec.
,r,r 10-11, 19, 70, 73; see id. ,r,r 72, 74--76, 79, Fig. 5.
In contrast to Enfzsh, Appellants do not describe an advance in
hardware or software that, for example, causes a computer itself or a
network itself to operate faster or more efficiently. The alleged
improvement in coupon-campaign management does not parallel the
improvement in Enfzsh and does not impart patent eligibility under
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Mayo/Alice step one. See Secured Mail Sols. LLC v. Universal Wilde, Inc.,
873 F.3d 905, 910 (Fed. Cir. 2017) (explaining that the claims in Enfish
"focused on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity"). The claims here use computers and networks in their ordinary
capacities. Accordingly, the Examiner determines that "the present
invention does not provide a technological benefit such as improved
flexibility or less system storage space" and "the claims are not directed
towards an advancement in computer technology." Ans. 8.
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants assert that claims 1, 4, and 13 are "rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." App. Br. 17, 20, 22, 31, 35 (quoting DDR
Holdings, 773 F.3d at 1257). Appellants misplace their reliance on DDR
Holdings.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied Mayo/Alice step two, not step one, because "the claimed solution
amount[ed] to an inventive concept for resolving [a] particular Internet-
centric problem," i.e., a challenge unique to the Internet. DDR Holdings,
773 F.3d at 1257-59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (noting that "[i]n DDR Holdings, we held that
claims 'directed to systems and methods of generating a composite web page
that combines certain visual elements of a 'host' website with content of a
third-party merchant' contained the requisite inventive concept"). In DDR
Holdings, the Federal Circuit explained that the patent-eligible claims
specified "how interactions with the Internet are manipulated to yield a
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desired result ... that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink." DDR Holdings,
773 F.3d at 1258. The court reasoned that those claims recited a
technological solution "necessarily rooted in computer technology" that
addressed a "problem specifically arising in the realm of computer
networks." Id. at 1257.
According to the Federal Circuit, "DDR Holdings does not apply
when ... the asserted claims do not 'attempt to solve a challenge particular
to the Internet.'" Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). The claims here do not
attempt to solve a challenge particular to the Internet and do not contain a
similar inventive concept as the patent-eligible claims in DDR Holdings.
In addition, claims 1, 4, and 13 recite a series of steps for managing a
coupon campaign including controlling a digital coupon's activation and
deactivation. App. Br. 41--46 (Claims App'x); see Spec. ,r,r 23-32, 36, 41,
44--45, 51, 64---69, Figs. 2, 3, 4A, 4B. The claimed series of steps resembles
the claimed "series of steps instructing how to hedge risk" in a commodities
market in Bilski v. Kappas, 561 U.S. 593, 599 (2010). In Alice, the Supreme
Court explained that the claims in Bilski concerned a method of organizing
human activity. Alice, 134 S. Ct. at 2356; see also Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)
( deeming the claim at issue "not meaningfully different from the ideas found
to be abstract in other cases before the Supreme Court and our court
involving methods of organizing human activity").
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Appellants contend that computer-implemented systems according to
the claims are "concrete and tangible" and, therefore, not abstract. App.
Br. 21. But "not every claim that recites concrete, tangible components
escapes the reach of the abstract-idea inquiry." TL! Commc 'ns, 823 F.3d
at 611. Simply implementing an abstract idea using a "physical machine"
does not impart patent eligibility. See Mayo, 566 U.S. at 84. In Alice, for
example, "[a]ll of the claims [we]re implemented using a computer."
134 S. Ct. at 2353, 2360.
MAYO/ALICE STEP Two
Appellants assert that "a determination that a claimed invention is
patentable or distinguished from the prior art under § § 102 and 103
necessarily leads to the conclusion that the invention is patent-eligible under
§ 101." App. Br. 26, 33, 38; see Reply Br. 15-16. Appellants then contend
that the § 101 rejection of claims 1, 4, and 13 "should be reversed" because
they were "allowed over the prior art" and that determination "resolves or
moots any question of eligibility." App. Br. 26-27, 33, 37-38.
Appellants' arguments do not persuade us of Examiner error. The
Supreme Court has noted that "[t]he 'novelty' of any element[s] or steps" in
a claim or even the claim itself "is of no relevance in determining whether
the subject matter of a claim" satisfies § 101 because the question "whether
a particular invention is novel is 'wholly apart from whether the invention
falls into a category of statutory subject matter."' Diamond v. Diehr,
450 U.S. 175, 189-90 (1981) (quoting In re Bergy, 596 F.2d 952, 961
(CCPA 1979)).
Further, the Federal Circuit has explained that "[t]he search for a
§ 101 inventive concept is ... distinct from demonstrating§ 102 novelty."
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Synopsys, 839 F.3d at 1151; see Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017). "[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility." Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
"[A] claim for a new abstract idea is still an abstract idea." Synopsys,
839 F .3d at 1151. Similarly, a claim for a beneficial abstract idea is still an
abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379-80 (Fed. Cir. 2015). Additionally, the Federal Circuit has
expressly rejected the notion that "abstract ideas remain patent-eligible
under§ 101 as long as they are new ideas, not previously well known, and
not routine activity." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--16
(Fed. Cir. 2014). Thus, the claims' alleged novelty and nonobviousness fail
to provide an "inventive concept" needed to satisfy Mayo/Alice step two.
Appellants argue that the Examiner erred in rejecting claims 1, 4,
and 13 because they do not "pre-empt all effects that could stem from the
management of coupon campaigns, much less all effects that could stem
from fundamental economic practices." App. Br. 24, 31, 35. Appellants
also argue that computer-implemented systems according to the claims "are
not even directed to and could not possibly pre-empt all effects of
fundamental economic practices." Id. at 25 ( emphasis omitted).
Appellants' arguments do not persuade us of Examiner error. See
Ans. 7-8 (addressing preemption). While preemption may denote patent
ineligibility, its absence does not demonstrate patent eligibility. See
FairWarning, 839 F.3d at 1098; see also OIP Techs., 788 F.3d at 1362---63.
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For claims covering a patent-ineligible concept, preemption concerns "are
fully addressed and made moot" by an analysis under the Mayo/Alice
framework. Ariosa, 788 F.3d at 1379.
Appellants assert that the Examiner erred in rejecting claims 1, 4,
and 13 because they recite "elements that amount to significantly more than
an abstract idea itself." See App. Br. 11-13, 27-30, 33, 35, 37, 39; Reply
Br. 15-16. In particular, Appellants contend that the claimed "computing
device" that "estimate[ s] an amount of a maximum expenditure limit" based
on a "rate of redemption" for digital coupons "solv[ es] the problem of
undesirably exceeding an expenditure limit of a promotional campaign
administered via computer-implemented devices and networks" and
achieves a technical solution. App. Br. 27-28. Appellants add that the
Examiner's analysis under Mayo/Alice step two "looks similar to an
obviousness analysis under 35 U.S.C. § 103, except lacking an explanation
of a reason to combine the limitations as claimed." Id. at 29 ( quoting
BASCOM, 827 F.3d at 1350).
Appellants' arguments do not persuade us of Examiner error because
the Examiner determines that the claims employ "generic computer
components executing" the abstract idea and "each component performs
routine functions by executing instructions for performing the abstract idea."
Final Act. 4; see 1st Adv. Act. 2; 2nd Adv. Act. 2; Ans. 4--5. Further, the
Examiner finds that the generic computer components perform "routine and
conventional steps." Final Act. 4; see 1st Adv. Act. 2; 2nd Adv. Act. 2;
Ans. 4--6, 9-10. Accordingly, the Examiner reasons that the claims lack an
"inventive concept" sufficient to transform them into significantly more than
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a patent-ineligible abstract idea. Final Act. 4, 7; see 1st Adv. Act. 2;
2nd Adv. Act. 2; Ans. 7-10.
As additional elements, claims 1, 4, and 13 recite a server "computing
device," a "plurality of client computing devices," an "electronic data store"
or memory, and a "computer network." App. Br. 41--46 (Claims App'x).
As explained above, the Specification describes those system components
generically. Spec. ,r,r 10-11, 19, 70, 73; see id. ,r,r 72, 74--76, 79, Fig. 5.
"That a computer receives and sends the information over a network ... is
not even arguably inventive." buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014). Further, the Specification notes that the technologies
for implementing the claimed "self-service portal" and "electronic
commerce system" are "generally well known by those skilled in the art."
Spec. ,r 76.
In addition, court decisions have recognized that generic computer
components operating to collect, manipulate, and display data are well
understood, routine, and conventional to a skilled artisan. See, e.g., Alice,
134 S. Ct. at 2360; SAP Am., 890 F.3d at 1019-20, 1023; Intellectual
Ventures Iv. Symantec Corp., 838 F.3d 1307, 1318-20 (Fed. Cir. 2016);
Versata Dev. Grp., Inc. v. SAP Am., Inc.,793 F.3d 1306, 1334 (Fed. Cir.
2015); Ultramercial, 772 F.3d at 715-16; buySAFE, 765 F.3d at 1355;
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 993
(Fed. Cir. 2014).
Based on BASCOM, Appellants contend that the claims include an
"inventive concept" due to the non-conventional and non-generic
arrangement of elements for managing or administering coupon campaigns.
App. Br. 29-30, 34--35, 39. But BASCOM does not help Appellants.
17
Appeal2017-004624
Application 12/608,673
The claims in BASCOM recited a "specific method of filtering Internet
content" requiring "the installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user." BASCOM, 827 F.3d at 1345--46, 1350. The Federal Circuit
reasoned that the claims covered "a technology-based solution ... to filter
content on the Internet that overcomes existing problems with other Internet
filtering systems" and "improve[ s] an existing technological process." Id.
at 1351 (citing Alice, 134 S. Ct. at 2358); see Alice, 134 S. Ct. at 2358
( explaining that "the claims in Diehr were patent eligible because they
improved an existing technological process").
In contrast to BASCOM, the claims here do not cover a technology-
based solution that improves an existing technological process. Ans. 5-9;
see 2nd Adv. Act. 2. Among other things, they do not require any
uncommon computer arrangements or any unconventional network
configurations. As the Examiner reasons, "the present invention utilizes the
computer network to provide a specific business benefit of managing cost."
Ans. 7. "[C]laiming the improved speed or efficiency inherent with
applying the abstract idea on a computer" does not "provide a sufficient
inventive concept." Intellectual Ventures, 792 F.3d at 1367.
SUMMARY FOR INDEPENDENT CLAIMS 1, 4, AND 13
For the reasons discussed above, Appellants' arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
claims 1, 4, and 13.
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Appeal2017-004624
Application 12/608,673
DEPENDENT CLAIMS 2, 3, 5-9, 11, 12, 14, AND 16-25
Appellants do not argue patentability separately for dependent
claims 2, 3, 5-9, 11, 12, 14, and 16-25. App. Br. 12--40; Reply Br. 2-16;
see In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (explaining that the
applicable rules "require more substantive arguments in an appeal brief than
a mere recitation of the claim elements and a naked assertion" of
patentability). Because Appellants do not argue the claims separately, we
sustain the§ 101 rejection of claims 2, 3, 5-9, 11, 12, 14, and 16-25 for the
same reasons as the independent claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision to reject claims 1-9, 11-14, and
16-25 under 35 U.S.C. § 101.
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. § 4I.50(f).
AFFIRMED
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