Ex Parte POOLE et al

Patent Trial and Appeal Board

Feb 28, 2019

14288069 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/288,069 05/27/2014 Thomas S. POOLE
22852 7590 03/04/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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.
05793.3349-00000 7791
EXAMINER
NETZLOFF, ERIC R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS S. POOLE, DAVIDE. KEATING,
DREW JACOBS, JANUSZ M. NICZYPORUK, and
LUKE A. HAMMOCK
Appeal2017-007733
Application 14/288,069 1
Technology Center 3600
Before CARL W. WHITEHEAD JR., IRVINE. BRANCH, and
JON M. JURGOV AN, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to offering an account with a merchant based
on having received a product identifier from a consumer. See Spec.
Abstract.
1 According to Appellants, the real party in interest is Capital One Financial
Corporation. App. Br. 3.
Appeal2017-007733
Application 14/288,069
Illustrative Claim2
Claim 1 is illustrative and is reproduced below:
1. A system for providing offers for accounts associated with
a merchant, the system comprising:
one or more memory devices storing software instructions;
and
one or more processors configured to execute the software
instructions to:
receive, over a communications network, a product
identifier from a mobile computing device associated with
a consumer, the product identifier identifying a product
available from a merchant and acquired by the mobile
computing device based on a scan of a product code using
the mobile computing device;
determine, responsive to receiving the product
identifier, whether the consumer has a current financial
service account associated with the merchant;
determine one or more incentives to offer the
consumer to apply for a new financial service account
associated with the merchant when the consumer does not
have a current financial service account associated with
the merchant, the one or more incentives being targeted at
the consumer based at least in part on a purchase of the
product associated with the product identifier;
generate an invitation to apply for the new financial
service account associated with the merchant, the
invitation identifying the one or more incentives;
communicate, over the communications network,
instructions to the mobile computing device associated
with the consumer enabling the consumer to apply, using
2 Because Appellants argue the rejections based on claim 1 only (see Appeal
Br. 8, 48), our decision with respect to claim 1 is dispositive of this appeal.
Accordingly, except for our ultimate decision, we do not address the
remaining claims.
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the mobile computing device, for the new financial service
account associated with the merchant; and
apply the one or more incentives to a transaction
using the new financial service account associated with the
merchant, responsive to receiving a request from the
mobile computing device to purchase the product using
the new financial service account associated with the
merchant.
References and Rejections3,4
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 3-6.
Claims 1-20 are rejected under 35 U.S.C. § 103 as unpatentable over
Sanchez (US 2014/0070001 Al; pub. Mar. 13, 2014) and Dessert
(US 2012/0296725 Al; pub. Nov. 22, 2012). Final Act. 6-35.
ISSUES
1. Did the Examiner err in determining that the claims are directed
to patent-ineligible subject matter?
2. Did the Examiner err in finding the combination of Sanchez
and Dessert renders the claims obvious?
3 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief filed December
20, 2016 ("App. Br."), as well as the following documents for their
respective details: the Final Office Action mailed June 17, 2016 ("Final
Act."), the Examiner's Answer mailed February 27, 2017 ("Ans."), and
Appellants' Reply Brief filed April 27, 2017 ("Reply Br.").
4 The Examiner withdrew a rejection of claims 1-20 under 35 U.S.C. § 112,
second paragraph. Ans. 3; see Final Act. 2-3.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants. Except as noted below, we adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner's Answer in response to Appellants' Appeal Brief arguments.
We concur with the conclusions reached by the Examiner. We highlight the
following points.
A. Section 101
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
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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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 ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof 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 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id.
at 187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
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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 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( 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.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first
look to whether the claim recites:
( 1) (see Memorandum Step 2A - Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental
processes); and
(2) (see Memorandum Step 2A - Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a}-(c), (e}-(h)). 5
5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See USPTO's January
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum Step 2B.
C. Examiner's § 101 Rejection - Alice/Mayo - Steps 1 and 2
C. l. USPTO Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea. The Examiner determines:
the claims are directed to the abstract idea of receiving data about
a product, determining a consumer and determining whether a
consumer has a financial service account associated with the
merchant and determining an incentive to target to the consumer
based on the product when the consumer does not have a
financial service account associated with the merchant then
generating an offer to provide financial service account which is
communicated to consumers and the incentive is given to
consumers that accept the invitation.
Ans. 5 ( determining the claims are similar to those found unpatentable in
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
and Affinity Labs Of Texas v. Amazon.Com (Fed Cir, 2015-2080, 9/23/2016).
Appellants contend:
At the outset, it is clear that simply restating the language
of a claim as the purported "concept" of the claim results in the
logical absurdity that the claim is directed to itself, an absurdity
7, 2019 Memorandum, "2019 Revised Patent Subject Matter Eligibility
Guidance."
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which would preclude any process or method claim from ever
being patentable, which is clearly contrary to the mandate of
§ 101, which explicitly states that processes and methods are
patentable. The obligation is thus that the identified concept has
to be established to be "a judicial exception to patentability."
Furthermore, this established concept must be consistently used
throughout the analysis.
Reply Br. 5.
We understand Appellants to contend that the claims are not directed
to methods of organizing human activity, such as fundamental economic
practices. Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611. We are not
persuaded.
Determining, based on receipt of a product identifier, an incentive to
offer a consumer for applying for a financial services account, then applying
the incentive to the purchase of the product, is a fundamental economic
practice, which has been determined to be a method of organizing human
activity that amounts to an abstract idea. Alice, 573 U.S. at 219-20; Bilski,
561 U.S. at 611. More specifically, claim 1 recites a "system for providing
offers for accounts associated with a merchant." The system is implemented
using "one or more memory devices" and "one or more processors." A
"mobile computing device" communicates with the memory and processor
"over a communications network." But for these hardware elements, the
claims amount to a checkout clerk, upon being presented with an item for
purchase at a point of sale, determining-by, for example, asking the
customer-whether the customer has a private label card of the merchant,
offering a discount on the item in exchange for the customer applying for the
card, then completing the sale, with the discount, if the customer applies.
Thus, Appellants' arguments (Reply Br. 5-30) do not persuasively establish
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that this process amounts to anything more that organized human activity,
such as marketing a private label card, a fundamental economic practice.
Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611.
Accordingly, for the foregoing reasons, we agree with the Examiner's
determination that the claims are directed to an abstract idea.
C.2. USPTO Memorandum Step 2A - Prong Two
Applying step 2 of the Alice/Mayo analysis, the Examiner asserts:
"improving an existing system by uniquely incentivizing consumers to apply
for a service based on information about the user is not an improved
technology result. In contrast it is the automation of a marketing technique."
Ans. 5.
Appellants contend the claims "recite specific novel and nonobvious
means and methods that require using specific unconventional information
and in an unconventional way to improve upon existing systems .... And
even if the Examiner's characterization were correct, which Appellant
disputes, improved automation of an improved marketing technique is not
necessarily precluded from patenting." Reply Br. 24. We are not
persuaded.
Appellants' Specification fails to describe the recited memory ( claim
1, "one or more memory devices storing software instructions") in anything
other than generic terms. See, e.g., Spec. ,r 28. Appellants' Specification
describes the recited processor ( claim 1, "one or more processors configured
to execute the software instructions") as follows:
Processor 321 may include one or more known processing
devices, such as a microprocessor from the Pentiumâ„¢ or Xeonâ„¢
family manufactured by Intelâ„¢, the Turionâ„¢ family
manufactured by AMDâ„¢, or any of various processors
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manufactured by Sun Microsystems. The disclosed
embodiments are not limited to any type of processor( s)
configured in server 3 11.
Id. at ,r 29. With respect to the recited mobile computing device (claim 1, "a
mobile computing device associated with a consumer ... based on a scan of
a product code using the mobile computing device"), Appellants'
Specification states "Client device 150 may be a mobile device that executes
mobile device applications and/or mobile device communication software
that allows client device 150 to communicate with components of system
100 over network 140. The disclosed embodiments are not limited to any
particular configuration of client device 150." Id. at ,r 20. With respect to
the recited "communications network" ( claim 1, "receive, over a
communications network"), Appellants' Specification states "Incentive
provider system 130 may be configured to provide incentives for applying
for private label cards or using private label cards via an interface( s)
accessible by consumers over a network (e.g., the Internet)." Id. at ,r 18.
Thus, because Appellants' Specification describes nothing more than
generic hardware into which the abstract idea is implemented, Appellants'
arguments do not persuasively establish that the claims require anything
more than generic computer implementation that might otherwise transform
the abstract idea into a patent-eligible invention. Reply Br. 5-30. We
therefore agree with the Examiner's determination that the claims do not
recite additional elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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C.3. USPTO Memorandum Step 2B
Further applying step 2 of the Alice/Mayo analysis, the Examiner
concludes:
The claims do not include additional elements that are
sufficient to amount to significantly more than the abstract idea
because the claims merely recite a combination of
communication networks, memory, mobile computing devices
and processors that implements the steps along with requiring a
mobile computing device having scanning capabilities.
The computing devices are recited at a high level of
generality and under the broadest reasonable interpretation
comprise only a microprocessor, memory and transmitter to
simply perform the generic computer functions of transmitting
and displaying data. At best the claimed databases are a
combination of software and/or hardware that performs the
generic computer function of comparing (i.e. processing) data to
implement the steps and the scanning is any generic device with
a camera. Therefore, generic computers performing generic
computer functions, alone, do not amount to significantly more
than the abstract idea.
Examiner respectfully, asserts that the claims [] merely use
technology to implement a series of steps describing a business
practice that opens a credit account associated with a merchant
with the additional requirement of an incentive for a specific
product targeted to a specific user, which leads to the conclusion
that the claims are not significantly more than the abstract idea.
Further, implementing these fundamental and abstract marketing
concepts using generic computerized software elements does not
transform the abstract idea [into] patent eligible subject matter
because these steps merely recite the performance of a business
practice with the requirement that computerized elements
automate the process by receiving a scanned image and returning
offers and incentive data to a mobile computer device instead of
another less automatic means.
Viewing the computerized elements as an ordered
combination with the abstract idea does not add anything further
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than looking at the limitations individually because the ordered
combination of steps merely invoke generic computerized
devices as tools to perform routine and customary functions to
implement the claimed steps. The order[ ed] combination merely
offers a communication network for providing cross benefits
during a transaction having mobile devices that perform the
operations of scanning data and receiving data, and computers
that perform the operations of making determinations based on
rules then communicating the results, which are routine and
conventional operations performed by these devices in a
communication network.
Viewing the limitations as an ordered combination does
not add anything further than looking at the limitations
individually. When viewed either individually, or as an ordered
combination, the additional limitations do not amount to a claim
as a whole that is significantly more than the abstract idea. The
claims are not patent eligible.
Ans. 6-7.
For the reasons discussed previously, we do not find Appellants to
have persuasively rebutted the Examiner's determination that the claims lack
an inventive step that amounts to "significantly more" than the judicial
exception itself.
D. Appellants '§ 103 Arguments
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because "neither Sanchez nor Dessert teaches or suggests
'responsive to receiving the product identifier,' determining an incentive 'to
apply for a new financial service account' when it is determined that the
'consumer does not have a current financial service account,"' as required
by claim 1, and also because "the FOA has provided no motivation for one
of ordinary skill in the art to modify the teachings of the cited art to achieve
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the claimed combinations that overcomes the deficiencies in the cited art."
App. Br. 46, 47; see id. 42--48, Reply Br. 30-37.
The Examiner cites, inter alia, Dessert's disclosure that a machine-
readable tag may be coupled to individual products within a merchant's
premises (Ans. 8-9 (citing Dessert ,r 75)) and Sanchez's disclosure that,
upon scanning a QR code in a merchant's location, "an offer to apply for a
credit card can be transmitted to the consumer's mobile device along with
any discount or promotion associated with the credit application offer" (id.
at 9 (citing Sanchez ,r 34)). The Examiner finds that "to issue a new credit
card and number requires determining that the consumer does not already
have that current financial service account associated with the merchant."
Id. The Examiner concludes that:
from the teaching of Dessert, it would have been obvious to one
having ordinary skill in the art before the effective filing date of
the claimed invention for the product identifiers stored on the
mobile device and that mobile device that scans a code used to
initiate the issuance of a financial account and incentive as
disclosed by Sanchez, to be coupled to individual products and
target incentives based on the product and the customer as taught
by Dessert, for the purpose of facilitating transaction between the
consumer, merchant and credit issuer.
Final Act. 12.
We are not persuaded of error in the Examiner's findings and
conclusion.
Appellants' argument that "the QR code of Sanchez is distinct from
any product code or product identifier, and is described exclusively for
enabling a consumer to apply for a credit card associated with the merchant"
(Reply Br. 33) is unpersuasive of error because the Examiner cites Dessert
for the received code being a product identifier (Ans. 8-9). Appellants'
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argument that "Dessert, like Sanchez, also fails to teach or suggest any
determination of an incentive based on a product identifier 'to apply for a
new financial service account associated with the merchant"' (Reply Br. 33)
also is unpersuasive of error because the Examiner cites Sanchez for offering
an incentive to apply for a new financial service account upon the consumer
scanning a QR code (Ans. 9 (citing Sanchez ,r 34)). Appellants' arguments
unpersuasively attack the references individually when the Examiner's
rejection is based on their combined teachings. One cannot show non-
obviousness by attacking references individually when the rejection is based
on a combination of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,425 (CCPA
1981 ).
Appellants argue that, "[b ]ecause the user in Sanchez requests the
offer to apply for the merchant credit card, there is no determination in
Sanchez as to 'whether the consumer has a current financial service
account."' App. Br. 45; see also Reply Br. 34--36. This argument is
unpersuasive because it overlooks the teachings of Sanchez at paragraph 34
("Upon scanning the QR code, [] an offer to apply for a credit card can be
transmitted to the consumer's mobile device along with any discount or
promotion associated with the credit application offer."). Moreover,
Appellants' argument does not convincingly rebut the Examiner's finding
that "to issue a new credit card and number requires determining that the
consumer does not already have that current financial service account
associated with the merchant." Ans. 9 ( emphasis added).
Appellants' argument that "the FOA has provided no motivation for
one of ordinary skill in the art to modify the teachings of the cited art to
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achieve the claimed combinations that overcomes the deficiencies in the
cited art" (App. Br. 47) is unpersuasive because it does not squarely rebut
the Examiner's reasoning quoted above. See Final Act. 12.
Accordingly, we are unpersuaded of error in the Examiner's rejection
of claim 1 as obvious over Sanchez and Dessert.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-2 0.
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.
§ 41.50(±).
AFFIRMED
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