Ex Parte Smith et al

Patent Trial and Appeal Board

Nov 7, 2018

13408659 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/408,659 02/29/2012
150308 7590 11/09/2018
TROUTMAN SANDERS LLP/CAPITAL ONE
600 Peachtree St., NE, Suite 5200
Atlanta, GA 30308
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Duane Smith JR.
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.
COF5055 (029424.000724) 6387
EXAMINER
SINGH, GURKANW ALJIT
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
chris. fors tner@troutmansanders.com
patents@troutmansanders.com
chianti.humphrey@troutmansanders.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUANE SMITH JR., RICARDO ALVAREZ, MICHAEL K.
NOLAN, KRISTI S. HEBNER, and CATHRYN H. "KATIE" HARLOW
Appeal2017-001955
Application 13/408,659 1
Technology Center 3600
Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7, 9-17, 19, and 20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify "Capital One Financial Corporation and its
subsidiary companies" as the real parties in interest. Appeal Br. 3.
Appeal2017-001955
Application 13/408,659
ILLUSTRATIVE CLAIM
1. A computer-implemented method for providing
account holders with a reward based on similar rewards
previously obtained through other accounts, comprising:
identifying, using one or more computer processors
configured to access an account database, an eligible account
based on eligibility criteria, wherein the eligible account is
associated with an account of an account holder stored in the
account database;
receiving identifying data that identifies the eligible
account;
associating, using one or more computer processors, a
customer identifier with the identifying data from the eligible
account;
for each customer identifier, receiving confirmation data
associated with a separate account of the account holder,
wherein the confirmation data comprises a reward variable and
a date the confirmation data was sent, wherein the reward
variable comprises rewards points previously accumulated at
the separate account;
validating, using one or more computer processors, the
confirmation data, wherein validating the confirmation data
comprises determining whether the account holder has spent a
threshold amount using their eligible account during a first
period of time and determining whether the account holder has
spent the threshold amount using their eligible account after the
date the confirmation data was sent; and
rewarding, using the one or more computer processors,
the eligible account with a matching variable if the account
holder spent the threshold amount using their eligible account
during the first period of time and after the date the
confirmation data was sent, wherein the matching variable is
approximately equal to the reward variable.
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Application 13/408,659
REJECTION
Claims 1-7, 9-17, 19, and 20 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
I. Whether Claims 11-17, 19, and 20 Belong to a Statutory
Category of Patent-Eligible Subject Matter
Independent claim 11 recites:
11. A system for providing account holders with rewards
based on rewards previously obtained through other accounts,
the system comprising:
an account database server that is accessed to identify an
eligible account based on eligibility criteria, wherein the
eligible account is associated with an account of an account
holder;
an eligibility processor to receive identifying data that
identifies the eligible account in the account database via a
network;
a confirmation processor to, for each customer identifier,
receive confirmation data associated with a separate account of
the account holder, the confirmation data comprising a reward
variable and a date the confirmation data was sent, wherein the
reward variable comprises rewards points previously
accumulated at the separate account;
the confirmation processor to validate the confirmation
data, wherein to validate the confirmation data, the
confirmation processor determines whether the account holder
has spent a threshold amount using their eligible account during
a first period of time and determines whether the account holder
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Application 13/408,659
has spent the threshold amount using their eligible account after
the date the confirmation data was sent; and
a match processor to reward the eligible account in the
account database with a matching variable if the account holder
spent the threshold amount using their eligible account during
the first period of time and after the date the confirmation data
was sent, wherein the matching variable is approximately equal
to the reward variable.
The subject matter eligible for patenting is limited, by statute, to the
following categories: "process, machine, manufacture, [and] composition of
matter." 35 U.S.C. § 101.
Independent claim 11 and its dependent claims (claims 12-17, 19, and
20) stand rejected under § 101, in part, as not belonging to any of the
statutory categories. See Final Action 6. According to the Examiner,
independent claim 11 is "drawn to a computer program per se." Id. The
Examiner further states that claim 11 "recite[ s] a system comprising a
plurality of modules to perform a plurality of steps" and that "[ t ]hese
recitations amount to mere data structures as they do not positively recite
any structural components of the system in the body of the claim, and
therefore could merely comprise the program/software code or modules for
performing the steps of the invention." Id.
The Federal Circuit has explained that, "[f]or all categories except
process claims, the eligible subject matter must exist in some physical or
tangible form":
To qualify as a machine under section 101, the claimed
invention must be a "concrete thing, consisting of parts, or of
certain devices and combination of devices." Burr v. Duryee,
68 U.S. 531,570, 1 Wall. 531, 17 L. Ed. 650 (1863). To
qualify as a manufacture, the invention must be a tangible
article that is given a new form, quality, property, or
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combination through man-made or artificial means. Diamond
v. Chakrabarty, 447 U.S. 303, 308, 100 S. Ct. 2204, 65
L. Ed. 2d 144 (1980). Likewise, a composition of matter
requires the combination of two or more substances and
includes all composite articles. Id.
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
1348--49 (Fed. Cir. 2014). Digitech considered the patent-eligibility of a
claimed "device profile," which the court characterized as "a collection of
information; specifically, a description of a device dependent transformation
of spatial and color information." Id. at 1349. Consequently, the court
determined that the "device profile" "is not a tangible or physical thing and
thus does not fall within any of the categories of eligible subject matter." Id.
"Data in its ethereal, non-physical form is simply information that does not
fall under any of the categories of eligible subject matter under section 101."
Id. at 1350.
In the present Appeal, the Appellants argue (Appeal Br. 23-24) that
the claimed "account database server," "eligibility processor," "confirmation
processor," and "match processor," should be understood as hardware
components, in view of the Specification's characterization of these
elements as having particular tangible hardware embodiments in "various
network-enabled computer systems, including, as depicted in Figure IA for
example, an eligibility processor 103, a confirmation processor 104, and a
match processor 106, which may be included as separate processors or
combined into a single processor or device having multiple processors"
(Spec. ,r 13). Further, the Specification identifies particular devices for
embodying the disclosed system:
As referred to herein, a network-enabled computer system may
include, but is not limited to: e.g., any computer device, or
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Id.
communications device including, e.g., a server, a network
appliance, a personal computer (PC), a workstation, a mobile
device, a phone, a handheld PC, a personal digital assistant
(PDA), a thin client, a fat client, an Internet browser, or other
device.
In view of the Specification, a person of ordinary skill in the relevant
art would properly understand the claimed system to possess a tangible
form, as a machine ( or collection of machines) that is a patent-eligible
category of subject matter of§ 101. Accordingly, we do not sustain the
rejection of independent claim 11 (and its dependent claims 12-17, 19, and
20) under 35 U.S.C. § 101, on the basis that these claims do not belong to
any statutory category of patent-eligible subject matter.
II. Whether the Subject Matter of Claims 1-7, 9-17, 19, and 20
Should be Judicially Excluded from Patent Eligibility
Claimed subject matter belonging one of the statutory categories of
§ 101 may nevertheless be ineligible for patenting. In particular, the
Supreme Court has interpreted § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, because they are regarded as the basic tools
of scientific and technological work, such that including them within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013) ("Myriad"). Of course, "[a]t some level, 'all
inventions ... embody, use, reflect, rest upon, or apply"' these basic tools of
scientific and technological work. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014) (citation omitted). Accordingly, evaluating ineligible
subject matter, under this judicial exclusion, involves a two-step framework
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for "distinguish[ing] between patents that claim the buildin[g] block[ s] of
human ingenuity and those that integrate the building blocks into something
more, ... thereby transform[ing] them into a patent-eligible invention." Id.
(internal quotation marks and citations omitted). The first step determines
whether the claim is directed to judicially excluded subject matter (such as a
so-called "abstract idea"); the second step determines whether there are any
"additional elements" recited in the claim that ( either individually or as an
"ordered combination") amount to "significantly more" than the identified
judicially excepted subject matter itself. Id. at 2355.
All claims involved in this Appeal- independent claims 1 and 11,
along with dependent claims 2-7, 9, 10, 12-17, 19, and 20- stand rejected
under the Alice analytical framework. Final Action 5---6.
According to the Examiner, with regard to the first Alice step, the
claims are directed to "the economic practice of financial account holder
management that includes rewards/incentives based on monitoring online
consumer activity/occurrences" (Final Action 5) or, more succinctly,
"rewarding customers/clients based on their account history" (id. at 2),
which the Examiner regards as an abstract idea - amounting to either a
fundamental economic practice or "mathematical/algorithmic relationships"
(id. at 5).
The Appellants argue that the Examiner has not made out a prima
facie case of ineligibility, because the rejection does not "include an analysis
of the claim language itself' or "compare any alleged abstract idea or the
claims to any legal precedent as required." Appeal Br. 13. This argument is
not persuasive, because 35 U.S.C. § 132 sets forth a general notice
requirement for notifying an applicant of the reasons for a rejection together
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with such information as may be useful in judging the propriety of
continuing with prosecution of the application. See, e.g., In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011). In this case, the Examiner has provided
an adequate explanation to meet the notice requirement, by applying the
Alice framework and providing a predicate for the Appellants' response.
Moreover, the Examiner's characterization of the claimed subject matter is
similar to concepts that courts have regarded as abstract ideas. See Kray IP
Holdings, LLC v. Safeway, Inc., 107 F. Supp. 3d 677, 690 (E.D. Tex. 2015)
("The core idea of the '830 patent-providing a computer-based incentive
award program - is plainly an unpatentable abstract idea by itself'), a.ff' d,
639 F. App'x 637 (Fed. Cir. 2016).
Further, the Appellants contend that the Examiner's characterization
of the abstract idea does not fairly represent the claim, because it does not
address certain claim features. Appeal Br. 16-17. This argument is
unpersuasive. Although the first Alice step considers the character of the
claim, as a whole, see Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015), it need not include every claimed feature,
because "[ a ]n abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016).
Additionally, the Appellants argue that the claims are not directed to a
fundamental concept, because the prior-art rejections have been withdrawn
and evidence to the contrary is lacking. Appeal Br. 18. However, a
determination of novelty or nonobviousness does not necessarily lead to the
conclusion that subject matter is patent-eligible. "Groundbreaking,
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innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Myriad, 569 U.S. at 591.
Further, the Appellants argue that the public would not suffer from
any preemption by the claims. Appeal Br. 19, Reply Br. 7. Yet, "[ w ]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
As to the second Alice step, the Examiner regards the additional claim
elements as mere instructions to implement the abstract idea in a computer
environment and/or generic computer structure performing generic functions
that do not amount to significantly more than the abstract idea itself. Final
Action 6.
The Appellants argue that any of various identified limitations of
claim 1, for example, amount to significantly more than the identified
abstract idea:
(1) "receiv[ e] confirmation data associated with a separate
account of the account holder, wherein the confirmation data
comprises a reward variable and a date the confirmation data
was sent, wherein the reward variable comprises rewards
points previously accumulated at the separate account,"
(2) "validat[ e ], using one or more computer processors, the
confirmation data, wherein validating the confirmation data
comprises determining whether the account holder has spent
a threshold amount using their eligible account during a first
period of time and determining whether the account holder
has spent the threshold amount using their eligible account
after the date the confirmation data was sent," or
(3) "reward[], using the one or more computer processors, the
eligible account with a matching variable if the account holder
spent the threshold amount using their eligible account during
the first period of time and after the date the confirmation data
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Application 13/408,659
was sent, wherein the matching variable is approximately
equal to the reward variable."
Appeal Br. 21. See also Reply Br. 14. However, the features that the
Appellants emphasize are intertwined substantially with the identified
abstract idea itself (i.e., providing rewards based upon prior usage), such that
these features could not amount to "significantly more." BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) ("It has been clear
since Alice that a claimed invention's use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
'significantly more' than that ineligible concept.")
Additionally, the Appellants argue that the claimed subject matter is
rooted in computer technology, akin to DDR Holdings, LLC v. Hotels.com,
LP, 773 F.3d 1245 (Fed. Cir. 2014). See Appeal Br. 22-23. See also Reply
Br. 11-12. Yet, the Appellants provide no explanation of how the claimed
subject matter might "override[ ] the routine and conventional sequence of
events ordinarily triggered by" the use of the identified equipment, as
discussed in DDR, 773 F.3d at 1258. Simply invoking computer technology
does not subvert, or obviate, the requisite analysis under the Alice
framework.
The foregoing analysis applies to all the claims in the Appeal, as no
dependent claim is argued separately, and notwithstanding the determination
(in Section I, above) that claims 11-17, 19, and 20 belong to a statutory
category of subject matter. Therefore, we are not persuaded of error in the
rejection of any of claims 1-7, 9-17, 19, and 20 under 35 U.S.C. § 101, on
the basis of being directed to judicially excluded subject matter.
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DECISION
We AFFIRM the Examiner's decision rejecting claims 1-7, 9-17, 19,
and 20 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).
AFFIRMED
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