Ex Parte Mount et al

Patent Trial and Appeal Board

Oct 31, 2017

11554095 (P.T.A.B. Oct. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/554,095 10/30/2006 Jeffrey R. Mount 097016-0337 4884
1923 7590 11/02/2017
MCDERMOTT, WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
mweipdocket @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY R. MOUNT and JUSTIN A. SUMMER
Appeal 2016-0048381
Application 11/554,0952
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision to reject claims 23—26, 29-36, 41—44, 46, and 47. We have
jurisdiction under § 6(b). We AFFIRM.
1 Our Decision references Appellants’ Specification (“Spec.,” filed Oct. 30,
2006), Appeal Brief (“Appeal Br.,” filed Oct. 14, 2015), and Reply Brief
(“Reply Br.,” filed Apr. 12, 2016), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed May 22, 2015) and Answer (“Ans.,” mailed
Feb. 12,2016).
2 Appellants identify Catalina Marketing Corporation as the real party in
interest. Appeal Br. 2.
Appeal 2016-004838
Application 11/554,095
SUBJECT MATTER ON APPEAL
The invention relates generally to “computer systems using personal
portable consumer devices therein for storing, securing, communicating, and
processing transactions data.” Spec. 1:11—12. Claims 23 and 31 are the
independent claims on appeal. Independent claim 23, reproduced below, is
illustrative of the claimed subject matter:
23. A portable device for storing information relating to
purchase transactions involving a consumer at a plurality of retail
stores across different retail chains and facilitating the
redemption of incentives that are determined based on the
purchase transactions, comprising:
a memory configured to store a consumer identification
that identifies the consumer;
a physical processor programmed by one or more
computer program instructions to:
receive, via a first communication link with a first
point of sale terminal at a first checkout lane associated
with a first retail store of a first retail chain, a first retail
store identification that identifies the first retail store and
first purchase information for a first purchase transaction
from the first point of sale terminal of the first retail store,
wherein the first purchase information identifies one or
more first items associated with the first purchase
transaction;
generate a first association between the consumer
identification, the retail store identification, and the
purchase information;
receive, via a second communication link with a
second point of sale terminal at a second checkout lane
associated with a second retail store of a second retail
chain, a second retail store identification that identifies the
second retail store and second purchase information for a
second purchase transaction from the second point of sale
terminal of the second retail store, wherein the second
purchase information identifies one or more second items
associated with the second purchase transaction;
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generate a second association between the
consumer identification, the second retail store
identification, and the second purchase information;
store the first association in the memory, wherein
the first association represents the first purchase
transaction between the consumer and the first retail store;
store the second association in the memory, wherein
the second association represents the second purchase
transaction between the consumer and the second retail
store;
cause the first association and the second
association to be communicated to a central computer
remote from the first point of sale terminal, the second
point of sale terminal and the portable device; and
receive an incentive from the central computer,
wherein the incentive is determined based on the first
association and the second association such that the
incentive is determined based on at least the one or more
first items purchased in association with the first retail
chain and the one or more second items purchased in
association with the second retail chain.
REJECTION
The Examiner rejects claims 23—26, 29-36, 41—44, 46, and 47 under
35 U.S.C. § 101 as non-statutory subject matter.
ANALYSIS
As an initial matter, we disagree with Appellants’ assertion that the
Examiner’s rejection fails to set forth a prima facie case of patent-ineligible
subject matter under 35 U.S.C. § 101. Appeal Br. 6; Reply Br. 3. The
Federal Circuit has held that
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant... [by] stating the reasons for [its]
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rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(quoting § 132). All that is required of the Office is to set forth the statutory
basis of the rejection, as well as any reference on which the rejection relies,
in a sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Id. at 1363; see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (“Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Here, in rejecting the claims under § 101, the Examiner analyzes the
claims using the two-step framework set forth in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012)
and reiterated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014), which, in the first step, considers whether the claims are
directed to a patent-ineligible concept, e.g., an abstract idea, and, if so,
considers, in the second step, whether the claims recite an inventive
concept—an element or combination of elements sufficient to ensure the
claims amount to significantly more than the abstract idea and transform the
nature of the claims into a patent-eligible concept. Final Act. 4. More
specifically, pursuant to the first step, the Examiner finds the claims are
directed to “determining incentives based on purchases/transactions,” which
is a fundamental economic practice and a method of organizing human
activities and, therefore, an abstract idea. Id. Under the second step, the
Examiner finds the claims do not include elements amounting to
significantly more than the abstract idea because the claims do not recite an
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improvement to another technology, technical field, or the functioning of the
computer itself. Id. The Examiner also finds the claims do not recite
meaningful limitations beyond generally linking the use of an abstract to a
particular technological environment. Id. The Examiner further finds the
claim limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. Id.
Given the Examiner notifies Appellants that the claims are ineligible
pursuant to the two-step framework for determining patent-eligibility, the
Examiner’s rejection satisfies the notice requirement of § 132. Furthermore,
there is no indication that Appellants do not recognize or understand the
Examiner’s rejection, as Appellants’ understanding is manifested in their
arguments traversing it. Accordingly, the Examiner has established a prima
facie case of patent-ineligible subject matter so as to shift the burden to
Appellants. We have carefully considered Appellants’ arguments, and for
the reasons discussed below, Appellants do not apprise us of error in the
Examiner’s rejection under § 101.
Independent claim 23
At the outset, Appellants’ argument that independent claim 23 does
not preempt every application of the abstract idea of “determining incentives
based on purchases/transactions” does not apprise us of error in the
Examiner’s determination that the claim is patent-ineligible. Appeal Br. 12—
14; Reply Br. 4—5. Although preemption may be the concern driving the
exclusion of abstract ideas from patent-eligible subject matter, preemption is
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not the test for eligibility. See Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) (“The Supreme Court has made clear
that the principle of preemption is the basis for the judicial exceptions to
patentability. For this reason, questions on preemption are inherent in and
resolved by the § 101 analysis.” (citation omitted)).
Turning to Appellants’ arguments under the two-step analysis for
patent-eligibility under § 101, Appellants contend independent claim 23
does not recite an abstract idea pursuant to the first step. Appeal Br. 14—15;
Reply Br. 6. According to Appellants, the claim recites a portable device
that stores purchase information related to transactions from different retail
stores, generates associations of a consumer identification, retail store
identification, and the purchase information, communicates the associations
to a remote computer, and receives incentives based on the associations such
that the claim includes limitations that go beyond a fundamental economic
practice and a method of organizing human activities. Appeal Br. 14—15;
Reply Br. 6. Appellants’ argument is not persuasive of error.
Beginning with the recited functions of storing purchase information
related to transactions from different retail stores, generating associations of
a consumer identification, retail store identification, and the purchase
information, communicating the associations to a remote computer, and
receiving incentives based on the associations, Appellants do not explain
how these functions separate the claimed invention from the abstract idea of
“determining incentives based on purchases/transactions.” Said differently,
storing purchase information related to transactions from different retail
stores, generating associations of a consumer identification, retail store
identification, and the purchase information, communicating the associations
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to a remote computer, and receiving incentives based on the associations
make up a particular way of “determining incentives based on
purchases/transactions.” Rather than distinguishing the claimed invention
from the abstract idea, the specific limitations are tied to the abstract idea
and simply suggest that the Examiner’s characterization is at a high level of
abstraction, which is not persuasive of error. See Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An abstract idea can
generally be described at different levels of abstraction. As the Board has
done, the claimed abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and sending the
second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”).
Although independent claim 23 is mostly functional in nature,
independent claim 23 is directed to a portable device comprising a memory
and a physical processor. The Supreme Court, however, has explained that
system claims reciting generic computer components to implement the
abstract idea are not patent-eligible. According to the Supreme Court:
Put another way, the system claims are no different from the
method claims in substance. The method claims recite the
abstract idea implemented on a generic computer; the system
claims recite a handful of generic computer components
configured to implement the same idea. This Court has long
“wam[ed] ... against” interpreting § 101 “in ways that make
patent eligibility ‘depend simply on the draftsman’s art.’”
Alice, 134 S. Ct. at 2360 (alteration in original) (citing Mayo, 132 S. Ct. at
1294 (quoting Parker v. Flook, 98 S. Ct. 2522, 2527 (1978))). Here, there is
no indication that the recited computing hardware components are
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something other than generic computing components which generally link
the recited functions to a particular technological environment, i.e., a
portable computing device. Id. For example, the Specification explains that
personal portable device (PPD) 200 may be in the form of a digital processor
and memory stick having a USB data connection plug but no user I/O, a
smart card, cell phone, PDA, or similar small portable memory storage
device enabling data input and output to a computer system having human
I/O capabilities. Spec. 6:10-22. Given that the recited hardware
components are generic components for performing the claimed functions,
which, as set forth above, do not separate the claimed invention from the
abstract idea, Appellants do not apprise us of error in the Examiner’s finding
that independent claim 23 is directed to “determining incentives based on
purchase s/transactions. ’ ’
We are also unpersuaded that the Examiner erred in finding
“determining incentives based on purchases/transactions” is a fundamental
economic practice and a method of organizing human activities and,
therefore, an abstract idea. Final Act. 4; Appeal Br. 16—17. In the Answer,
the Examiner compares the concept of “determining incentives based on
purchases/transactions” to concepts held to be abstract ideas. Ans. 3, 4; see
also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (“[T]he decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided.”).
Appellants do not differentiate the concept to which independent claim 23 is
directed, i.e., “determining incentives based on purchases/transactions” from
these abstract ideas, and we fail to see any meaningful distinction. For
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example, in buy SAFE, Inc. v. Google, Inc., the Federal Circuit found the
concept of “transaction performance guaranty” to be an abstract idea. 765
F.3d 1350, 1355 (Fed. Cir. 2014). Like the concept of “transaction
performance guaranty,” the concept of “determining incentives based on
purchases/transactions” is a practice long prevalent in our system of
commerce. Id. at 1353—54, 1355. Accordingly, Appellants do not apprise us
of error in the Examiner’s finding that independent claim 23 is directed to
the abstract idea of “determining incentives based on
purchase s/transactions. ’ ’
Appellants also argue independent claim 23 is not directed to an
abstract idea because, like the patent-eligible claims in DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), independent claim 23
addresses a business challenge, namely giving consumers access to
transactional information, which is particular to computer incentive systems.
Appeal Br. 15—16; Reply Br. 7. We, however, see no parallel between
independent claim 23 and the patent-eligible claims in DDR Holdings.
In DDR Holdings, the Federal Circuit determined that the claims
address the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. 773 F.3d at 1257. The Federal
Circuit, thus, held that the claims are directed to statutory subject matter
because they claim a solution “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” Id.
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Unlike the problem of retaining visitors to a website, giving
consumers access to transactional information is not a problem unique to
computers or rooted in computer technology. Said differently, giving
consumers access to transactional information is an issue arising in any form
of commerce, not just online commerce. Accordingly, Appellants’ reliance
on DDR Holdings does not apprise us of Examiner error.
After considering Appellants’ arguments pursuant to the first step of
the patent-eligibility analysis, we are not persuaded that the Examiner erred
in finding independent claim 23 is directed to the abstract idea.
Accordingly, we turn to Appellants’ arguments under the second step.
Appellants contend independent claim 23 recites significantly more
than the abstract idea because the claim includes features that are not
required for the abstract idea. Appeal Br. 19; Reply Br. 9-10. According to
Appellants, the Examiner does not explain why these additional features are
not significantly more than the abstract idea. Appeal Br. 19. We disagree.
The second step of the patent eligibility analysis does not simply
inquire whether the claims recite additional elements apart from the abstract
idea. Rather, the second step considers “the elements of each claim both
individually and as ‘an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298,
1297).
Contrary to Appellants’ argument, the Examiner does not ignore the
additional elements of independent claim 23. Rather, as set forth above, the
Examiner finds independent claim 23 does not recite additional elements
that transform the nature of the claim into a patent-eligible application
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because the claim does not recite an improvement to another technology,
technical field, or the functioning of the computer itself. Final Act. 4. The
Examiner also finds independent claim 23 does not recite meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment. Id.
Appellants also argue independent claim 23 does more than simply
implement the abstract idea on a generic computer because it recites a
special purpose computer. Appeal Br. 19-21, 24; Reply Br. 10-11.
According to Appellants, a generic computer with specific programming
instructions transforms the generic computer into a special purpose
computer. Appeal Br. 19 (citing In reAlappat, 33 F.3d 1526, 1543 (Fed.
Cir. 1994).3 Appellants’ argument is not persuasive.
The Supreme Court has made clear that the mere implementation of
an abstract idea on a computer is insufficient to transform a claim into a
patent-eligible application. Alice, 134 S. Ct. at 2358 (“Thus, if a patent ’s
recitation of a computer amounts to a mere instruction to ‘implemenft]’ an
abstract idea 4on ... a computer,’ that addition cannot impart patent
eligibility.” (alteration in original) (citation omitted) (quoting Mayo, 132
S. Ct. at 1301)). Even if we agree with Appellants that the claimed
computing components are specially programmed, Appellants do not
explain, and we fail to see, how the programming is something apart from
the implementation of the abstract idea on a computer. For example, there is
no indication that the programming results in an improvement to the
functioning of the computer or to some technological process. Final Act. 4.
3 The Federal Circuit abrogated this decision in Bilski v. Kappos, 545 F.3d
943, 959-60 (Fed. Cir. 2008) (enbanc), affd 130 S. Ct. 3218 (2010).
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Appellants further argue independent claim 23 does not recite
computer functions that are well-understood, routine, and conventional
activities previously known in the industry. Appeal Br. 21—23;
Reply Br. 11—12. We do not find Appellants’ argument persuasive of error.
Under the second step of the patent-eligibility analysis, the question is
not whether a function performed on a computer is unconventional, hut
rather, whether the implementation of the abstract idea invol ves “more than
performance of “well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction &, Transmission
LLC v, Wells Fargo Bank, Natl Ass % 776 F.3d 1343, 1347—48
(Fed. Cir, 2014) (alteration in original) (quoting Alice. 134 S. Ct. at 2359).
Flere, Appellants do not explain how the implementation of the abstract idea
requires something apart from generic computing components and generic
computer functionality. To the contrary, the allegedly unconventional
features of independent claim 23 regard the abstract idea of “determining
incentives based on purchases/transactions.” See, e.g., Synopsys, Inc. v.
Meritor Graphics Carp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim
for a new abstract idea is still an abstract idea,”).
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that independent claim 23 is directed to non-
statutory subject matter. We, therefore, sustain the rejection of independent
claim 23 under 35 U.S.C. § 101.
Claims 24—26, 29, 30, 33—36, 41, 42, and 46
Appellants contend the Examiner’s rejection of the dependent claims
is improper because the Examiner does not provide a claim-by-claim
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analysis of the dependent claims. Appeal Br. 23, 25; Reply Br. 12.
Appellants’ argument does not apprise us of error.
Here, the Examiner finds that all of the pending claims are directed to
the abstract idea of “determining incentives based on
purchases/transactions.” Final Act. 4. The Examiner further finds that the
claims do not recite limitations that are significantly more than the abstract
idea. Id. Indeed, the dependent claims recite additional steps the physical
processor is programmed to perform and more specifically describe how the
processor “determin[es] incentives based on purchases/transactions.”
Consequently, the fact that the Examiner does not explicitly reference the
subject matter of each dependent claim does not persuade us that the
Examiner improperly rejects the dependent claims. See Content Extraction,
776 F.3d at 1348 (explaining that when all claims are directed to the same
abstract idea. each asserted patents [is]
unnecessary.”).
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that the dependent claims are directed to non-
statutory subject matter. We, therefore, sustain the rejection of claims 24—
26, 29, 30, 33-36, 41, 42, and 46 under 35 U.S.C. § 101.
Claim 32
Appellants argue claim 32 recites significantly more than the abstract
idea. Appeal Br. 23; Reply Br. 13. According to Appellants, claim 32
recites limitations that are not required for the abstract idea of “determining
incentives based on purchases/transactions.” Appellants’ argument is not
persuasive.
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As set forth above, the second step of the patent-eligibility analysis
does not simply inquire whether the claims recite additional elements apart
from the abstract idea. Rather, the second step considers “whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298,
1297).
Claim 32 recites the physical processor is further programmed to:
receive an identification of a portion of information that
is stored in the memory that a particular retailer has permission
to access;
receive a request from the particular retailer for
information that is stored in the memory; and
provide only the portion of the information to the
particular retailer based on the identification.
Appeal Br., Claims App. These limitations further describe how the system
“determin[es] incentives based on purchases/transactions,” as opposed to
transforming the nature of the claim into a patent-eligible application.
Appellants further argue the limitations of claim 32 are not well-
understood, routine, conventional activities previously known in the
industry. Appeal Br. 24; Reply Br. 13. We find this argument unpersuasive
for the same reasons we find this argument unpersuasive in regard to
independent claim 23. Namely, Appellants do not explain how the
implementation of the abstract idea requires something apart from generic
computing components and generic computer functionality.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that claim 32 is directed to non-statutory subject
matter. We, therefore, sustain the rejection of claim 32 under 35 U.S.C.
§101.
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Independent claim 31 and claims 43, 44, and 47
Appellants make the same arguments as independent claim 23 for
independent claim 31 (Appeal Br. 14—23; Reply Br. 6—12), and we do not
find these arguments persuasive of error in the Examiner’s rejection of
independent claim 31 for the reasons discussed above in regard to
independent claim 23. In regard to claims 43, 44, and 47, which depend
from independent claim 31, Appellants rely on the argument that the
Examiner’s rejection is improper because the Examiner does not provide a
claim-by-claim analysis of the dependent claims. Appeal Br. 23, 25;
Reply Br. 12. This argument is unpersuasive for the reasons discussed
above in regard to claims 24—26, 29, 30, 33—36, 41, 42, and 46.
Appellants additionally assert that independent claim 31 and
dependent claims 43, 44, and 47, namely, the method claims, are patent-
eligible under the machine-or-transformation test set forth in Bilski, 545 F.3d
at 952. Appeal Br. 9-12; Reply Br. 3^4. According to Appellants, the
method claims are tied to a particular machine, i.e., a portable device.
Appeal Br. 9—12; Reply Br. 3^4. Appellants’ argument is not persuasive.
Even if the claimed invention is tied to a portable device, the claimed
portable device is insufficient to confer patent-eligibility. The Federal
Circuit has explained that “satisfying the machine-or-transformation test, by
itself, is not sufficient to render a claim patent-eligible, as not all
transformations or machine implementations infuse an otherwise ineligible
claim with an ‘inventive concept.’” DDR Holdings, 773 F.3d at 1256. The
Federal Circuit has also made clear that “after Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
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ineligible claim patent-eligible.” Id. (citing Alice, 134 S. Ct, at 2358). As
discussed above, there is no indication that the claimed portable device is
something other than a generic computing device performing well-
understood, routine, and conventional computing functions to execute the
recited method steps, which is insufficient to confer patent-eligibility.
Accordingly, Appellants do not apprise us of error in the Examiner’s
determination that the method claims are directed to non-statutory subject
matter. We, therefore, sustain the rejection of claims 31, 43, 44, and 47
under 35 U.S.C. § 101.
DECISION
The Examiner’s decision to reject claims 23—26, 29—36, 41—44, 46,
and 47 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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