Ex Parte Paulos et al

Patent Trial and Appeal Board

Dec 3, 2018

13033195 (P.T.A.B. Dec. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/033, 195 02/23/2011 William J. Paulos
39564 7590 12/05/2018
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30328
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.
007283.00lUSl/RLP 8363
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/05/2018 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):
docketing@fisherbroy les .com
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM J. PAULOS,
JERRY A. EPSTEIN,
and BRADY J. BEUTLER
Appeal2017-004052
Application 13/033,195
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
William J. Paulos, Jerry A. Epstein, and Brady J. Beutler (Appellants)
seek review under 35 U.S.C. § 134 of a non-final rejection of claims 1-15,
the only claims pending in the application on appeal. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed February 29, 2016) and Reply Brief ("Reply Br.," filed January 4,
2017), and the Examiner's Answer ("Ans.," mailed November 4, 2016), and
Non-Final Action ("Non-Final Act.," mailed May 7, 2015).
Appeal2017-004052
Application 13/033,195
The Appellants invented a reward point system that reward customers
for participation in online activities. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of operating a reward point program in
conjunction with a website and a vendor, the method which
requires no purchase by a user to encourage the user to visit one
of more physical locations of a business, the method
compnsmg:
[ 1] providing a web server having a processor and memory
adapted to serve the website;
[2] providing a database that stores a user account on the web
server,
said user account associated with the user and including
an account balance that represents an accumulation of
earned web credits of said user;
[3] utilizing the web server to permit the user to participate for
free in an online activity associated with the web site to earn
non-purchased web credits;
[ 4] utilizing the web server to determine the number of earned
web credits associated with the user based upon the user's
activity on the associated web site according to a rule set;
[ 5] utilizing the web server to add the determined web credits to
the account balance of the user;
[ 6] once a sufficient number of web-credits have been earned
via the online activities, utilizing the web server
and
to create a voucher based upon the earned web-credit
account balance of the user,
the voucher representative of a reward selected by the
user on the web site in return for the web credits;
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[7] creating the voucher consisting of digital form, tangible
paper form or player card form,
the voucher redeemable for the reward at the one or more
physical locations of the business.
The Examiner relies upon the following prior art:
Jiang US 2005/0251446 Al
Mitchell US 2006/0047573 Al
Barhydt US 2006/0270478 Al
Wang US 2009/0299820 Al
Nov. 10, 2005
Mar. 2, 2006
Nov. 30, 2006
Dec. 3, 2009
Claims 1-15 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-15 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Jiang, Barhydt, Wang, and Mitchell.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether the references
show it was predictable to assemble the invention as recited.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Facts Related to the Prior Art
Jiang
01. Jiang is directed to integration of multiple loyalty or rewards
programs. Jiang para. 2.
02. Jiang provides a rewards currency which card members can use
directly at the point of sale, either offline or online, for example, at
an online merchant. Jiang para. 6.
03. Jiang creates a log for the virtual account number with
information consisting at least in part of the purchase amount and
the selected payment method by a virtual account number engine,
which also accesses a single currency rewards database to
determine whether the card member has a sufficient balance of
single currency rewards units for the payment of the purchase
amount. Jiang para. 12.
04. Jiang decrements the card member's single currency reward
account, upon receiving the settlement request, by an amount
equal to any portion of the purchase amount to be paid with single
currency reward units in response to a communication of the
amount of the portion of the purchase amount to be paid with
single currency reward units to the single currency rewards
database. Jiang para. 14.
Barhydt
05. Barhydt is directed to implementing mobile loyalty programs.
Barhydt para. 2.
06. Barhydt offers a suite of mobile games that customers can
download onto their mobile handsets or phones. When a customer
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Wang
plays one of the mobile games, Barhydt issues points to the
customer based on the customer's performance on the game (e.g.,
level reached within a game, game score, etc.), and stores the
points in a customer account. Customers can redeem these points
for valuable prizes from a prize catalog. Barhydt para. 7.
07. Wang is directed to selling, promoting, collecting payment for
and syndicating advertisements using an on-line system. Wang
para. 3.
08. Once the registered consumer accepts an ad offer in a discrete
ad acceptance event, the registered consumer becomes a referred
consumer, and the service provider refers him to the selling
merchant affiliate. When the purchase transaction occurs it is in a
merchant affiliate "establishment" and between this registered
consumer and the selling merchant affiliate who published the
offer. The actual purchase transaction can occur in the merchant
affiliate establishment that can be, for example, online in a Web
store or offline in a brick-and-mortar store. Wang para. 103.
Mitchell
09. Mitchell is directed to coupon and sweepstakes dispensing
system. Mitchell para. 2.
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ANALYSIS
Claims 1-15 rejected under 35 US.C. § 101 as directed to a judicial
exception without significantly more
The Examiner finds
Claims 1-15 are rejected under 35 U.S.C. [§] 101 because the
claimed invention is directed to non-statutory subject matter
because the claim(s) as a whole, considering all claim elements
both individually and in combination, do not amount to
significantly more than an abstract idea. The claim(s) is/are
directed to the abstract idea of:
(i) a fundamental economic practice,
(ii) a method of organizing human activities,
(iii) an idea of itself, or
(iv) a mathematical relationship or formula.
For instance, in Alice Corp. the court found that
"intermediated settlement" was a fundamental economic
practice, which is an abstract idea. The additional element(s) or
combination of elements in the claim( s) other than the abstract
idea per se amount( s) to no more than:
(i) mere instructions to implement the idea on a
computer, and/or
(ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry.
Viewed as a whole, these additional claim element(s) do
not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such
that the claim( s) amounts to significantly more than the abstract
idea itself. Therefore, the claim(s) are rejected under 35 U.S.C.
[§] 101 as being directed to non-statutory subject matter.
Non-Final Act. 5-6 (emphasis added). The Examiner expands on this by
determining "[ t ]he relevant question is whether the claims here do more than
collect, store, display, and compare data to create incentives resulting in
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users going to physical locations to redeem the incentives through the use of
a generic computer. They do not." Non-Final Act. 2.
The Examiner goes on to determine:
Considering claim 1 as a whole, wherein rece1vmg,
storing and calculating web credits is considered an abstract
idea of comparing new and old information, something that
could be done by a person and therefore a method of organizing
human activities. As a whole, the claim does not include
additional elements that sufficiently amount to significantly
more than the judicial exception because the elements do not
effect an improvement to another technology or technical field;
the claim elements do not amount to an improvement to the
functioning of a computer itself; and the claim elements do not
move beyond a general link of the use of an abstract idea to a
particular technological environment. Here, the additional
elements of the claim serve to identify, receive, determine,
generate and provide with what is conventional in the art (i.e.,
transmitting data to and from a server). In other words, the
claim as a whole may be considered to merely apply the
abstract idea of comparing new and stored information and
using rule to identify options by a generic computing device
(e.g., a portable electronic device, smart phone, or tablet), with
the additional elements adding insignificant extra-solution
activity (e.g., merely collecting data which is well understood,
routine, and conventional activities). Thus, the additional
elements generally link the use of the abstract idea to a
particular technological environment, without significantly
more. Accordingly, the Examiner concludes that there are no
meaningful limitations in the claim that transform the judicial
exception into a patent eligible application such that the claim
amounts to significantly more than the judicial exception itself.
Non-Final Act. 6-7.
We are not persuaded by Appellants' argument that
Such claim elements go beyond simply organizing and
analyzing data related to existing customers using some
unspecified, generic computer. That is, a user (e.g., potential
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customer or patron of a business with a physical location)
performs certain online tasks (e.g., plays and learns casino
games) which earns the user web-credits. The web-credits are
then converted into a reward, redeemable via a digital voucher,
printed version of the digital voucher or player card, at the
physical location only of an associated business ( e.g., brick and
mortar casino). The conversion of the web credits into a reward
is undertaken by the user via the website. That is, the user may
decide the reward based on the number of web credits earned.
The current claims are directed to much more than
organizing and analyzing data related to existing customers
using some unspecified, generic computer given the user is
required to perform online tasks to earn web-credits and then
must redeem a selected reward based on the earned web credits
at the physical location of an associated business. Organizing
and analyzing data related to existing customers using some
unspecified, generic computer does not encompass a user
performing online tasks, converting earned web credits to a
reward or redeeming a voucher representative of the reward at a
physical location.
App. Br. 10. Appellants recite the claim 1 limitations and assert that of
those, at least those reciting a user performing online tasks, converting
earned web credits to a reward, and redeeming a voucher representative of
the reward at a physical location, are more than organizing and analyzing
data.
The actual corresponding limitations are utilizing the web server to
permit the user to participate for free in an online activity associated with the
web site to earn non-purchased web credits; utilizing the web server to
determine the number of earned web credits associated with the user based
upon the user's activity on the associated web site according to a rule set;
and creating the voucher consisting of digital form, tangible paper form or
player card form, the voucher redeemable for the reward at the one or more
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physical locations of the business. The problem for Appellants is they do
not recite any technological implementation for doing so.
The first limitation only "permit[ s] the user to participate" absent any
implementation details. As such this is no more than the concept of
allowing a user to participate and does not even encompass actual data entry,
but only permitting the data entry. Even so, data entry by a user is no more
than collecting data.
The second limitation only determines a number of credits from other
data and a set of rules. This is not a conversion but a determination, and in
any event, is no more than generic data analysis, again absent specific
implementation details.
The third limitation records data or potentially prints it out, but either
way does no more than the generic low level computer processes of data
storage and printing, which requires no specific implementation details
because every generic computer has such capacity.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). App. Br. 10-11. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent-eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
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however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings the
Court distinguished the patent-eligible claims at issue from claims found
patent-ineligible in Ultramercial. See id. at 1258-59 (citing Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 7 0 9, 715-16 (Fed. Cir. 2014)). As noted
there, the Ultramercial claims were "directed to a specific method of
advertising and content distribution that was previously unknown and
never employed on the Internet before." Id. at 1258 (quoting
Ultramercial, 772 F.3d at 714). Nevertheless, those claims were patent-
ineligible because they "merely recite[d] the abstract idea of 'offering
media content in exchange for viewing an advertisement,' along with
'routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website"; "restricting general public access to said
media product"; "receiving from the consumer a request to view [a]
sponsor message"; and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
reading, receiving, analyzing, writing, and printing data. This is precisely
the type of Internet activity found ineligible in Ultramercial.
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We are not persuaded by Appellants' argument that the claims would not
preempt the idea. App. Br. 11. "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo[/Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
Claims 1-15 rejected under 35 US. C. § 103 (a) as unpatentable over Jiang,
Barhydt, Wang, and Mitchell
Examiner applies Jiang for the basic hardware and supporting software
for a promotional rewards program, including converting data in a rewards
account into something that may be used for a reward. Examiner applies
Barhydt for basing such a rewards program on a free activity, such as a
game. Examiner applies Wang to show that such rewards may be for brick
and mortar stores in addition to online stores, and Mitchell to show it was
known to print hard copy evidence of such rewards. Non-Final Act. 8-10.
We are not persuaded by Appellants' argument that "any attempt to
manipulate the method and system of Jiang with the disclosures of Barhydt,
Wang and Fotevski eliminates the inventive purpose of Jiang." App. Br. 12.
Appellants contend that Jiang's particular loyalty rewards program is
incompatible with game points and brick and mortar stores. Id.
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413,425 (CCPA 1981). See also In re Sneed, 710 F.2d
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1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining
the teachings of references does not involve an ability to combine their
specific structures."). Again, Examiner applies Jiang only for the
infrastructure that most rewards programs would have. Thus, Jiang evinces
part of the infrastructure in Barhydt, and Wang only shows that brick and
mortar stores would also be interested in the rewards in Barhydt.
Appellants' argument regarding operability (App. Br. 13) is just a
variation on the prior argument and is equally unpersuasive. Appellants'
argument that Jiang's claim 12 fails to describe printing a voucher (id.) is
answered by the Examiner that Mitchell describes printing vouchers. Non-
Final Act. 9--10. Appellants' argument regarding Fotevski2 (App. Br. 13) is
moot as Fotevski is not applied as prior art.
CONCLUSIONS OF LAW
The rejection of claims 1-15 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1-15 under 35 U.S.C. § I03(a) as unpatentable
over Jiang, Barhydt, Wang, and Mitchell is proper.
DECISION
The rejection of claims 1-15 is affirmed.
2 Fotevski, US 2007/0105612 Al, published May 10, 2007.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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