Michael J. Cleary et al.

Patent Trials and Appeals Board

Jan 31, 2020

13869246 - (D) (P.T.A.B. Jan. 31, 2020)

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.
13/869,246 04/24/2013 Michael J. Cleary P57790 3232
157693 7590 01/31/2020
JPMorgan Chase / Greenblum & Bernstein
1950 Roland Clarke Place
Reston, VA 20191
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
gbpatent@gbpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL J. CLEARY, DAVID A. CLIFTON, DEAN ILIJASIC,
DAVID C. COHEN, and KRISTINE K. RODGERS
__________

Appeal 2018-009095
Application 13/869,246
Technology Center 3600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 41–76. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states that “[t]he real party in interest is JPMorgan
Chase Bank, N.A. having a place of business at 277 Park Ave., New York,
NY 10017.” Appeal Br. 4 (entered April 27, 2018).
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STATEMENT OF THE CASE
The Specification explains that, for “a number of reasons, consumers
tend to be much less willing to switch their bank accounts (or open new ones
in addition to their existing bank accounts) than their credit accounts.” Spec.
2.
Accordingly, whereas credit card issuing banks “find an active market
of consumers ready to switch their credit accounts and/or open up new credit
accounts, savings/checking account issuing banks are finding it increasingly
hard to sign up new bank account holders so as to maintain or increase the
customer base.” Id.
Thus, “[w]hat is needed is a system and method that makes it easier
and more attractive to consumers to open new bank accounts.” Id.
Appellant’s claim 41 is representative of the subject matter on appeal,
and reads as follows:
41. A system for distributing bank cards, the system
comprising:
at least one computer memory storing at least one
database; and
at least one computer processor, accessing the computer
memory and executing instructions to perform steps including:
identifying a pool of potential new bank deposit
account holders for a bank; determining if a person from
the pool is an existing bank deposit account holder;
determining whether the person is eligible for opening a
new bank deposit account if the person is not an existing
bank account holder;
creating and encoding a dead bank card that is a
physical payment device
comprising at least a machine-readable portion,
wherein the dead bank card is configured as a stored
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value card associated only with an inactive stored value
account and not previously associated with an existing
activated bank account, the dead bank card and the
inactive stored value account being unsolicited; and
distributing the dead bank card from the issuing
bank to the person.
Appeal Br. 26.
The following rejections are before us for review:
(1) Claims 41–76, under 35 U.S.C. § 101, as being directed to subject
matter not eligible for patenting (Final Act. 11–15);2
(2) Claims 41–62 and 64–66, under 35 U.S.C. § 103(a) as being
unpatentable over Melchione,3 Walker,4 and Chen5 (Final Act. 16–22);
(3) Claim 63, under 35 U.S.C. § 103(a) as being unpatentable over
Melchione, Walker, Chen, and Strock6 (Final Act. 22–23);
(4) Claims 67–72, under 35 U.S.C. § 103(a) as being unpatentable
over Jones,7 Walker, and Chen (Final Act. 23–26); and
(5) Claims 73–76, under 35 U.S.C. § 103(a) as being unpatentable
over Jones, Walker, Chen, and Strock (Final Act. 26–27).
35 U.S.C. § 101—
ELIGIBILITY FOR PATENTING
The Examiner’s Rejection
The Examiner determined that the claims’ recitation of “[i]dentifying
potential customers to market card products and creating and distributing an

2 Final Action entered August 2, 2017.
3 US 5,930,764 (issued July 27, 1999).
4 US 6,144,948 (issued Nov. 7, 2000).
5 US 2005/0015332 A1 (published Jan. 20, 2005).
6 US 2004/0122736 A1 (published June 24, 2004).
7 US 2004/0117300 A1 (published June 17, 2004).
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unsolicited inactive card associated with an inactive bank account is a
fundamental economic practice and ‘an idea of itself’, thus the claims
include an abstract idea.” Final Act. 11; see also id. at 13 (“Targeted
advertising was a longstanding economic practice thus an abstract concept.
For the same reason, the claimed concept of distributing unsolicited bank
cards to targeted customers is an abstract idea.”).
The Examiner also determined that “the present claims do not
improve another technology or technical field beyond the marketing and the
banking arts, and the present claims do not improve the functioning of the
computer itself.” Id. at 14 (finding Appellant’s claims similar to those at
issue in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)).
Therefore, the Examiner reasoned, “[s]ince the present claims are
directed to a longstanding economic practice and an idea of itself, they are
clearly directed to an abstract idea.” Final Act. 14.
The Examiner further determined that the additional elements recited
in the claims, a computer memory and processor, “amount[] to mere
instructions to implement the abstract idea on a computer. Taking the
additional elements individually and in combination, the computer
components at each step of the management process perform purely generic
computer functions.” Id. at 15.
Therefore, the Examiner reasoned, “there is no inventive concept
sufficient to transform the claimed subject matter into a patent-eligible
application. The claims do not amount to significantly more than the
abstract idea itself. Accordingly, the claims are not patent eligible.” Id.

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Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. 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
Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66
(2012) and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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.”).
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 v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is “directed to” an abstract idea, we turn 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 (citation omitted).
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Early in 2019, the PTO published revised guidance on the application
of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Memorandum” or “2019 Office
Guidance” or “Office Guidance”).8 In light of comments received in
response to the Office Guidance, the PTO subsequently issued the October
2019 Patent Eligibility Guidance Update (“October 2019 Update”).9
Following the Office Guidance and the October 2019 Update, under
Revised Step 2A, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, under Step 2B of the
Office Guidance, to whether the claim:
(3) adds specific limitations beyond the judicial exception that
are 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.

8 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
9 Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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Analysis
Office Guidance—Revised Step 2A, Prong 1
Claim 41 is illustrative for the purposes of our eligibility analysis.
Claim 41 recites “[a] system for distributing bank cards.” Appeal Br. 26.
The system of claim 41 has two components: (1) a computer memory that
stores at least one database, and (2) a computer processor that accesses the
memory and executes instructions to perform a series of steps. Appeal Br.
26.
The processor of claim 41 executes instructions causing the following
steps to be performed:
(a) “identifying a pool of potential new bank deposit account holders
for a bank”;
(b) “determining if a person from the pool is an existing bank deposit
account holder”;
(c) “determining whether the person is eligible for opening a new
bank deposit account if the person is not an existing bank account holder”;
(d) “creating and encoding a dead bank card that is a physical
payment device comprising at least a machine-readable portion . . . the dead
bank card and the inactive stored value account being unsolicited”; and
(e) “distributing the dead bank card from the issuing bank to the
person.” Appeal Br. 26.
Applying Revised Step 2A, Prong 1, of the 2019 Office Guidance, we
agree with the Examiner that Appellant’s claim 41 recites abstract ideas in a
number of instances. Specifically, although claim 41 recites the use of a
processor, each of the claimed steps of (a) identifying a pool of potential
new bank account holders, (b) determining if a person from the pool is an
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existing account holder, and (c) determining whether the person is eligible
for a new account if the person is not an existing account holder, can be
performed in the human mind.
Because they can be performed in the human mind, claim 41’s
identifying and determining steps are mental processes that constitute
abstract ideas. See Office Guidance (84 Fed. Reg. at 52 (abstract ideas
include “(c) Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion”) (citations
omitted); see also id. n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”)
(Citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016)).
Office Guidance—Revised Step 2A, Prong 2
Having determined that Appellant’s claim 41 recites abstract ideas
under Revised Step 2A, Prong 1, of the 2019 Office Guidance, we turn to
Revised Step 2A, Prong 2, of the Office Guidance to determine whether
claim 41 recites additional elements that integrate the judicial exceptions
into a practical application. See Office Guidance (84 Fed. Reg. at 54–55).
We find that Appellant’s claim 41 recites additional elements
sufficient to integrate the judicial exceptions into a practical application.
Specifically, as noted above, claim 41 recites a step of “creating and
encoding a dead bank card that is a physical payment device comprising at
least a machine-readable portion . . . the dead bank card and the inactive
stored value account being unsolicited.” Appeal Br. 26.
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As explained in Appellant’s Specification, bank cards are tangible
physical objects that are known in the art. See Spec. 2 (“As described
herein, ATM cards, debit cards, check cards, and stored value cards can be
collectively referred to as ‘bank cards.’”).
Claim 41, moreover, recites that the dead bank card must have a
specific configuration, “as a stored value card associated only with an
inactive stored value account and not previously associated with an existing
activated bank account.” Appeal Br. 26. The Specification explains further:
As referred to herein, “dead” bank cards refer to bank
cards which are physically identical to a live bank card (i.e., are
embossed or otherwise inscribed with the account holder’s
name, account number, and the like, and which include the
appropriate magnetic stripe data), but which reflect a bank
account that is not yet activated because the customer has not
accepted the bank’s offer for a new bank account.
Spec. 7.
Thus, while the processor of claim 41 instructs execution of a process
that includes abstract ideas (mental processes), the claimed abstract ideas
ultimately yield a physical result—creation of a bank card having tangible
physical attributes and a specific required configuration. And, as noted
above, the last step of claim 41 recites distributing the bank card to the
potential customer, in accordance with the preamble-recited purpose of the
claimed system.
We find, therefore, that Appellant’s claim 41 recites additional
elements sufficient to integrate the judicial exceptions recited in the claim
into a practical application, under Revised Step 2A, Prong 2, of the Office
Guidance. See Office Guidance (84 Fed. Reg. at 55) (example of additional
element that integrates a judicial exception into a practical application
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includes a situation in which “an additional element implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim”).
Although we note the Examiner’s contention that bank cards and their
distribution though targeted marketing were known in the art, those facts do
not persuade us that claim 41 fails to recite additional elements that integrate
the judicial exceptions into a practical application. The 2019 Office
Guidance explains that additional claimed elements that are conventional in
the art may serve to integrate a judicial exception into a practical
application:
[R]evised Step 2A specifically excludes consideration of
whether the additional elements represent well-understood,
routine, conventional activity. . . . Accordingly, in revised Step
2A examiners should ensure that they give weight to all
additional elements, whether or not they are conventional, when
evaluating whether a judicial exception has been integrated into
a practical application. . . .
Because revised Step 2A does not evaluate whether an
additional element is well-understood, routine, conventional
activity, examiners are reminded that a claim that includes
conventional elements may still integrate an exception into a
practical application, thereby satisfying the subject matter
eligibility requirement of Section 101.
84 Fed. Reg. at 55.
Eligibility Conclusion
Because we find that claim 41 integrates the abstract ideas recited in
the claim into a practical application, we are not persuaded that claim 41
recites subject matter ineligible for patenting. We therefore reverse the
Examiner’s rejection of claim 41, and its dependent claims, on that ground.
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As to the remaining independent claims, claims 57 and 67 recite
systems that include instructions resulting in distribution of dead bank cards
similar to claim 41. See Appeal Br. 28, 30. Accordingly, for essentially the
same reasons discussed as to claim 41, we also reverse the Examiner’s
rejections of claims 57, 67, and their dependent claims, on the ground of
ineligibility for patenting.
OBVIOUSNESS—
CLAIMS 41–62 AND 64–66
The Examiner’s Rejection
The Examiner cited Melchione as describing systems having nearly
all of the features required by Appellant’s claims 41–62 and 64–66,
including the creation of a dead bank card. Final Act. 16–22.
The Examiner conceded that Melchione differed from the rejected
claims in that Melchione did not teach configuring the dead bank card as a
“stored value card associated only with an inactive stored value account and
not previously associated with an existing activated bank account, the dead
bank card and the inactive stored value account being unsolicited; and [did
not teach] distributing the dead bank card from the issuing bank to the
person” as recited in Appellant’s claim 41. Id. at 17.
The Examiner cited Walker and Chen as evidence that it was known
in the art to configure dead bank cards in the manner required by claim 41.
Id. Based on the references’ combined teachings, the Examiner concluded
that it would have been obvious
to modify Melchione with teaching from Walker ’948
and Chen to include wherein the dead bank card is configured
as a stored value card associated only with an inactive stored
value account and not previously associated with an existing
activated bank account, the dead bank card and the inactive
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stored value account being unsolicited; and distributing the
dead bank card from the issuing bank to the person.
Id. at 18.
The Examiner reasoned that it would have been obvious to modify
Melchione’s system according to the teachings in Walker and Chen because
doing so
merely appl[ies] a known technique (i.e. creating an inactive
stored value card associated with an inactive account to a
customer who did not request the card) to a known system (i.e.
identifying and marketing card product to potential customers)
ready to provide predictable result (i.e. enhance security level
of the card and present others from committing fraudulent
activity with the card).
Final Act. 18.
The Examiner also conceded that Melchione differed from the
rejected claims in that Melchione did not teach that the pool of potential new
bank account customers was “identified based on the region or regions
served by the bank issuing the new bank accounts” as recited in Appellant’s
claim 42. Id.
As evidence that the system recited in Appellant’s claim 42
nonetheless would have been obvious, the Examiner cited Walker as
identifying a pool of potential new customers, “where potential new
account[s] are identified through the routine hotel reservation process served
by the issuing bank; hotel reservation is associated with a particular region
or regions[.]” Id.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(citations omitted):
[T]he examiner bears the initial burden . . . of presenting a
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prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Having carefully considered the evidence and arguments advanced by
Appellant and the Examiner, Appellant does not persuade us that the
preponderance of the evidence fails to support the Examiner’s conclusion of
obviousness as to representative claim 41 over Melchione, Walker, and
Chen. In particular, we are not persuaded that Melchione fails to teach or
suggest a system that determines whether a person from a pool of potential
new customers is an existing customer, as recited in claim 41. See Appeal
Br. 23 (citing Melchione 44:10–14, Figs. 10A, 10B).
Specifically, Appellant’s claim 41 recites a system that performs the
steps of “identifying a pool of potential new bank deposit account holders
for a bank [and] determining if a person from the pool is an existing bank
deposit account holder.” Appeal Br. 26.
Melchione discloses a system for marketing financial services, such as
deposit accounts. See Melchione 1:25–52. Figures 10A and 10B of
Melchione disclose that Melchione’s system executes different account-
creation steps, depending on whether a potential customer is a new customer
or existing customer:
FIGS. 10A and 10B show one currently preferred sequence
of the account opening process of the present invention at a high
level. Specifically, FIG. 10A shows the process for a new
customer and FIG. 10B shows the process for an existing
customer. The processes are naturally quite similar. The
differences reflect the fact that the bank already has basic
information concerning existing customers and the fact that
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existing customers typically have some familiarity with the
services and access devices offered by the bank.
Melchione 44:10–18.
Because Melchione discloses that its system executes different
account-creation steps, depending on whether the potential account holder is
an existing or new customer, Appellant does not persuade us that Melchione
fails to teach or suggest claim 41’s step of determining if a person from the
pool of new account holders is an existing bank deposit account holder.
Indeed, as the Examiner found, Melchione includes additional disclosures in
which the system determines whether a potential customer is an existing
account holder, or a new customer. See Melchione 4:54–57 (noting that
“sales campaigns typically only target easily ascertainable groups of new or
existing customers, such as all new customers, or all existing customers with
certain types of accounts”).
Representative claim 41 also recites “determining whether the person
is eligible for opening a new bank deposit account if the person is not an
existing bank account holder.” Appeal Br. 26. Appellant does not persuade
us that Melchione does not disclose using a credit check to determine if a
new customer is eligible for a new bank deposit account. See id. at 23.
As the Examiner found, Melchione discloses collecting personal
information from a potential new account holder, as opposed to an existing
account holder, in order to perform a credit check, and eligibility for a new
account is based on the credit check:
In some cases, the credit check will be executed during
this step if not previously executed. Following personal
information, any employment information that has not yet been
collected will be completed. There will be one screen (per
signer on the account) to capture personal information and one
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screen (again, per signer) to capture employment information.
Information included on the employment screen will be name
and address of current and previous employer, time at current
and previous employer, occupation selector) from a pick list of
catalogues. A field to input the method of employment
verification, if performed, will be provided on this screen and,
if input, will be transmitted to the credit bureau with the
application so that the verification will not have to be
performed when reviewing the credit decision. . . .
Based on the results of the credit bureau report, a
determination is made as to whether the account is approved.
Melchione 48:61–49:61. Appellant does not persuade us, therefore, that
Melchione does not disclose using a credit check to determine if a new
customer is eligible for a new bank deposit account.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner failed to show, by a preponderance of the evidence, that the
combined teachings of Melchione, Walker, and Chen teach or suggest a
system having all of the features required by Appellant’s representative
claim 41. We therefore affirm the Examiner’s rejection of claim 41 for
obviousness over Melchione, Walker, and Chen. Claims 43–62 and 64–66
fall with claim 41, because they were not argued separately. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant’s claim 42 recites, “[t]he system of claim 41, wherein the
pool is identified based on the region or regions served by the bank issuing
the new bank accounts.” Appeal Br. 26.
We note that Appellant has attempted to present separate argument as
to claim 42. See id. at 23–24. Technically, however, to argue claims
separately under our rules, “[u]nder each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a subgroup
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shall be argued under a separate subheading that identifies the claim(s) by
number.” 37 C.F.R. § 41.37(c)(1)(iv). Appellant has not provided a
separate subheading as required by rule and, therefore, has not properly
presented separate argument as to claim 42.
In any event, Appellant does not persuade us that the Examiner erred
in finding that the cited references suggest the system of Appellant’s claim
42. As noted above, the Examiner cited Walker’s disclosure of identifying
potential new customers based on hotel reservations as suggesting
identification of potential new deposit account customers based on region.
See Final Act. 18.
Appellant argues:
[I]nstead of being located in a particular region identified by the
location of the hotel, potential customers making hotel
reservations are more likely to be not be located in regions in
which the hotel is located, thus necessitating the need for a
hotel. There is no discussion in Walker of these regions being
served by a bank, only that a potential customer may be staying
in the region of the hotel. Thus, Walker does not disclose
identifying a pool of potential customers based on the region or
regions served by the bank, only that the region is in the
vicinity of a hotel.
Appeal Br. 23–24.
The Examiner responds:
[C]laim 42 does not clearly define the boundary of region,
which can be a country or a continent. In that case, the hotel
and the bank could be in the same physical region. For
example, if a bank and its partner hotel are both in United
States, the banks [sic] service region is the same as the hotel’s
region.
Ans. 15.
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We find that the Examiner has the better position. As the Examiner
found, and Appellant does not dispute, Walker discloses a method of
identifying new bank customers, through a relationship between a hotel and
the bank. See Walker 5:17–24 (disclosing bank credit card issuance based
on hotel reservations).
Appellant does not identify error in the Examiner’s interpretation of
claim 42 as encompassing the situation in which Walker’s hotel and related
bank are in the same country, or even in the same continent. We note, in
particular, that claim 42 does not limit the size or extent of the region served
by the bank. Nor does Appellant point to any definition of region in the
Specification that excludes the very large regions posited by the Examiner.
We note, moreover, that because the bank in Walker serves the hotel, the
bank serves the region in which the hotel is situated. We are not persuaded,
therefore, that when claim 42 is given its broadest reasonable interpretation
consistent with Appellant’s Specification, claim 42 excludes identifying
potential customers based on hotel reservations, when that hotel (and region)
are served by a bank as taught in Walker.
Accordingly, for the reasons discussed, Appellant does not persuade
us that the Examiner erred in concluding that the system of claim 42 would
have been obvious over Melchione, Walker, and Chen. We therefore also
affirm the Examiner’s rejection of claim 42 for obviousness.
OBVIOUSNESS—CLAIM 63
Appellant’s claim 63 depends from claim 61, which in turn depends
from independent claim 57. See Appeal Br. 29. As discussed above,
Appellant does not persuade us that the Examiner erred in concluding that
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Melchione, Walker, and Chen render the systems recited in claims 57 and 61
obvious.
In rejecting claim 63 the Examiner relied on Melchione, Walker, and
Chen for the teachings discussed above, and cited Strock as evidence that the
additional features recited in claim 63 would have been obvious elements of
the system suggested by Melchione, Walker, and Chen. See Final Act. 22–
23.
In traversing the Examiner’s rejection of claim 63, Appellant argues
only that Strock fails to remedy the alleged deficiencies of the combination
of Melchione, Walker, and Chen in relation to claims 41 and 57. See Appeal
Br. 24. As discussed above, however, Appellant does not persuade us that
the combination of references cited against claims 41 and 57, including
Melchione, fails to teach or suggest a system having all of the features
required by claims 41 and 57. Because Appellant’s arguments, therefore, do
not persuade us that the Examiner erred in rejecting claim 63 over
Melchione, Walker, Chen, and Strock, we affirm the Examiner’s rejection of
claim 63 over those references.
OBVIOUSNESS—CLAIMS 67–76
The Examiner rejected claims 67–72 under 35 U.S.C. § 103(a) as
being unpatentable over Jones, Walker, and Chen. Final Act. 23–26; see
also Ans. 3 (listing obviousness rejection of claims 67–72 over Jones,
Walker, and Chen among maintained rejections).
The Examiner rejected claims 73–76 under 35 U.S.C. § 103(a) as
being unpatentable over Jones, Walker, Chen, and Strock. Final Act. 26–27;
see also Ans. 3 (listing obviousness rejection of claims 73–76 over Jones,
Walker, Chen, and Strock among maintained rejections).
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In its Appeal Brief, Appellant does not address the Examiner’s
obviousness rejections of claims 67–76. See Appeal Br., generally; see also
id. at 25 (“Appellant respectfully requests that the Board reverse the
rejection of claims 41–76 under 35 U.S.C. §101 and also the rejection of
claims 41–66 under 35 U.S.C. §103.” (Emphasis added)).
Accordingly, we summarily affirm the Examiner’s obviousness
rejections of claims 67–76. See MPEP § 1205.02 (“If a ground of rejection
stated by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
41–76 101 Eligibility 41–76
41–62, 64–66 103(a) Melchione,
Walker, Chen
41–62, 64–66
63 103(a) Melchione,
Walker, Chen,
Strock
63
67–72 103(a) Jones, Walker,
Chen
67–72
73–76 103(a) Jones, Walker,
Chen, Strock
73–76
Overall
Outcome
41–76

Appeal 2018-009095
Application 13/869,246

20
TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED