Patrick James. Hunt

Patent Trials and Appeals Board

Oct 31, 2019

13948588 - (D) (P.T.A.B. Oct. 31, 2019)

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.
13/948,588 07/23/2013 Patrick James Hunt 21652-00290 6730
75564 7590 10/31/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK JAMES HUNT
Appeal 2018-005212
Application 13/948,588
Technology Center 3600
Before CAROLYN D. THOMAS, ERIC B. CHEN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 MasterCard International
Incorporated, appeals from the Examiner’s decision to reject claims 1–5, 8–
15 and 17–22. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
MasterCard International Incorporated. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a system and method for electronic
geocaching. Spec., Title. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-based method for transferring electronic units
of value to a mobile electronic geocaching device, the method
comprising:
establishing a transfer account associated with the mobile
electronic geocaching device;
activating a display application of the mobile electronic
geocaching device to display instructions for locating a geo.Chip
separate from the mobile electronic geocaching device;
positioning the mobile electronic geocaching device
within a predefined distance from the geo.Chip based on the
displayed instructions;
interrogating, after the step of positioning, the geo.Chip by
the mobile electronic geocaching device;
transferring, upon initiation of the step of interrogating, an
identifier encoded in the geo.Chip from the geo.Chip directly to
the mobile electronic geocaching device when the mobile
electronic geocaching device is within the predefined distance
from the geo.Chip, the identifier uniquely identifying the
geo.Chip;
receiving the transferred identifier and a geolocation of the
mobile electronic geocaching device at the time of interrogation;
verifying that the received geolocation matches a location
of the geo.Chip associated with the transferred identifier;
associating units of value with the geo.Chip location; and
receiving, by the mobile electronic geocaching device, an
indication of the units of value associated with the geo.Chip
location, based on the step of verifying, other than during a
purchase transaction.
Appeal Br. 18–19 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Rajan
Wooden
US 2009/0076912 A1
US 2010/0079338 A1
Mar. 19, 2009
Apr. 1, 2010
REJECTIONS
Claims 1–5, 8–15, and 17–22 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2–5.
Claims 1–5, 8–15, and 17–22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rajan and Wooden. Final Act. 5–22.
REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” Id. at 217–18, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes
the second step as a search for “an ‘“inventive concept”’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
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The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(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) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then move to Step 2B of the
Guidance. There, we 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 Guidance, 84 Fed. Reg. at 52.
Examiner’s Findings and Conclusion
The Examiner rejects claims 1–5, 8–15, and 17–22 as being directed
to a judicial exception without significantly more under Alice. Final Act. 2–
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5. In the first step of the Alice inquiry, the Examiner determines the claims
“are directed to the abstract idea of providing units of value or incentive or
reward points . . . which is a fundamental economic activity.” Final Act. 2
(emphasis omitted). The Examiner further determines that the claims “fall[]
into the abstract category of organizing human activities between buyers,
sellers, and one or more third parties . . . involved in a commercial
transaction, as the units of value earned by the user can be redeemed for a
product or service or used as currency.” Final Act. 2–3. The Examiner also
determines the claims are directed to an abstract idea because they constitute
“an idea of itself . . . similar to scavenger hunt or Easter egg hunt type
games.” Final Act. 3 (emphasis omitted).
Under Alice step 2, the Examiner determines that the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception. Final Act. 4. More specifically, the
Examiner determines:
Under step 2B, the abstract idea of providing units of value
or incentive or reward points, note receiving . . . the units of value
which is a fundamental economic activity (and also falls into
other abstract categories), has not been applied in an eligible
manner. The claim elements in addition to the abstract idea at
least include one or more computing device; a mobile electronic
geocaching device; one or more geocaching semiconductor
chips; one or more servers; one or websites; mobile device; NFC
technology which are simply utilized as tools to implement the
abstract idea or plan as “apply it” instructions. The computing
devices are generic and would continue to function in the same
manner pre and post implementation of the abstract idea.
Furthermore, claims recite making use of existing NFC, RFID,
or proximity based communication/data transmission
technology, however this additional element is not significant as
it is ubiquitous in the art and utilized to conduct fundamental
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economic practice of conducting business transactions e.g. make
payment using Apple pay for instance.
Final Act. 4 (emphasis omitted).
Appellant’s Contentions
Appellant argues that there are several deficiencies in the rejection.
Appeal Br. 6–11.2 Appellant argues the claims are not directed to an
abstract idea under Alice step 1 because they are analogous to those found
eligible in Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir.
2017). Final Act. 7. More specifically, Appellant contends that “directed to
a new and useful technique for using mobile electronic geocaching devices
and geo.Chips to more effectively guide a user to a location to transfer units
of value to the mobile electronic geocaching device.” Final Act. 6–7.
Appellant asserts that like the invention in Thales, the rejected claims
“utilize[] a particular configuration of sensor elements to perform location-
specific processes.” Appeal Br. 7.
Under Alice step 2, Appellant argues the Federal Circuit’s decision in
BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016) supports eligibility because the claims include a
technological improvement. More specifically, Appellant contends:

2 Appellant alleges procedural error, asserting that the Examiner has failed to
establish a prima facie case of ineligibility because “[t]he rejection does not
consider all of the language of the claims as an ordered whole.” Appeal Br.
6. We do not find this argument persuasive because the Examiner provides
a thorough explanation of the substantive basis for the rejection as well as
the pertinent sections of the MPEP supporting the rejection. The Examiner
has satisfied the initial burden to explain why a claim or claims are ineligible
for patenting clearly and specifically, so that the applicant has sufficient
notice and is able to effectively respond.
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The specification (see e.g., paragraph [0060]) describes how the
unique identifier, encoded in the structural architecture of the
geo.Chip, significantly improves the functionality of the system
by the non-conventional process of separately verifying the
authenticity of the interrogation of the geo.Chip by the mobile
electronic geocaching device. This innovative process is
described as reducing potential fraud experienced by
conventional systems. More particularly, the unique identifier,
when transferred, is advantageously used to both match the
geographic coordinates with those of the mobile device, and also
to determine a value associated with the interrogated chip.
Appeal Br. 9–10.
Our Review
Applying the guidance set forth in the Guidance, we are persuaded the
Examiner has erred in rejecting the claims as being directed to patent-
ineligible subject matter. The Guidance instructs us first to determine
whether any judicial exception to patent eligibility is recited in the claim.
The Guidance identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. We
focus our analysis on the second grouping—certain methods of organizing
human activity such as fundamental economic practices.3
Claim 1 recites the following limitations: (1) “method for transferring
electronic units of value,” (2) “establishing a transfer account,”

3 Appellant’s arguments are made to the claims generally.
We treat claim 1 as representative. 37 C.F.R. § 41.37(c)(iv) (“When
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by Appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
with respect to the group or subgroup on the basis of the selected claim
alone.”).
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(3) “receiving . . . a geolocation,” (4) “verifying that the received
geolocation matches a location,” (5) “associating units of value with the . . .
location,” (6) “receiving . . . an indication of the units of value associated
with the . . . location, based on the step of verifying, other than during a
purchase transaction.” Appeal Br. 18–19 (Claims Appendix).
We conclude that these limitations, under their broadest reasonable
interpretation, recite certain methods of organizing human activity, for
example, a commercial interaction as defined in the Guidance. More
specifically, these limitations recite a commercial interaction by which a
person’s location is used as the basis for an exchange of value or currency.
See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714–15 (Fed.
Cir. 2014) (using advertising as an exchange or currency). Accordingly, we
conclude the claims recite a judicial exception of a fundamental economic
practice.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)). Appellant’s claim 1 recites a plethora of
elements additional to those identified above. These limitations include
(a) receiving the electronic units of value “to a mobile electronic geocaching
device,” (b) the transfer account is “associated with the mobile electronic
geocaching device,” (c) “activating a display application of the mobile
electronic geocaching device to display instructions for locating a geo.Chip
separate from the mobile electronic geocaching device,” (d) “positioning the
mobile electronic geocaching device within a predefined distance from the
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geo.Chip based on the displayed instructions,” (e) “interrogating, after the
step of positioning, the geo.Chip by the mobile electronic geocaching
device,” (f) “transferring, upon initiation of the step of interrogating, an
identifier encoded in the geo.Chip from the geo.Chip directly to the mobile
electronic geocaching device when the mobile electronic geocaching device
is within the predefined distance from the geo.Chip, the identifier uniquely
identifying the geo.Chip,” (g) “receiving the transferred identifier and a
geolocation of the mobile electronic geocaching device at the time of
interrogation,” (h) “the geo.Chip associated with the transferred identifier,”
(i) associating the units of value with the “geo.Chip location,” and (j) the
units of value are received “by the mobile electronic geocaching device” and
are associated with the “geo.Chip location.” Appeal Br. 18–19 (Claims
Appendix).
We conclude that these limitations integrate the recited judicial
exception into a practical application because they reflect a technological
improvement and thus impose a meaningful limit on the recited judicial
exception. MPEP § 2106.05(a). In particular, we agree with Appellant that
the use of a unique identifier encoded into the geo.Chip itself, “improves the
functionality of the system by the non-conventional process of separately
verifying the authenticity of the interrogation of the geo.Chip by the mobile
electronic geocaching device . . . [and] reducing potential fraud experienced
by conventional systems.” Appeal Br. 9. By encoding an identifier into the
geo.Chip, and associating that identifier with the units of value to be
transferred, a separate an additional verification is provided to ensure that
three separate conditions must be met in order to complete the transfer: (1)
the transfer of the unique identifier of the geo.Chip to the mobile device; (2)
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a server verification of the identifier being associated with the desired value
transfer, and (3) verification of the geolocation of the mobile device.
As explained in the Specification:
The unique identifier can be used to determine a value associated
with the interrogated geo.Chip 42 and the geographic coordinates
of mobile device 36 at the time the unique identifier is acquired
can be used to verify the authenticity of the interrogation and
facilitate reducing potential fraud in acquiring the unique
identifiers. When the value associated with the interrogated
geo.Chip 42 is determined, the value can be credited to the
account associated with mobile device 36 if the geographic
coordinates match geographic coordinates of the interrogated
geo.Chip 42.
Spec. ¶ 60. Thus, the use of the claimed identifier in the geo.Chip provides
a specific technological improvement over prior systems. Accordingly, we
conclude claim 1 is integrated into a practical application, and under the
Guidance, the claim is patent-eligible because it is not directed to the recited
judicial exception.4 We do not sustain the rejection of representative claim 1
under 35 U.S.C. § 101.
REJECTION UNDER 35 U.S.C. § 103
The Examiner rejects claim 1 as being obvious over Rajan and
Wooden. Final Act. 5–12. Relevant here, the Examiner finds the limitation
“initiating, by the mobile electronic geocaching device, a transfer of an
identifier encoded in the geo.Chip from the geo.Chip directly to the mobile
electronic geocaching device when the mobile electronic geocaching device

4 Because we have determined the claim is not directed to the recited judicial
exception, we need not reach Step 2B of the Guidance and the question of
whether the claim provides an inventive concept under the second step of the
Alice inquiry.
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is within the predefined distance from the geo.Chip,” is taught by Wooden.
Final Act. 9. More specifically, the Examiner finds this limitation taught by
Wooden’s use of an RFID chip to identify and track locations of items in
connection with geocaching promotions. Final Act. 9–10 (citing Wooden ¶¶
45–47, 50, 53, 54, and 61–64).
Appellant argues that “neither of the cited references Rajan and
Wooden, whether taken alone or in combination, discloses or suggests the
transmission to a mobile electronic geocaching device of an identifier
uniquely identifying a geo.Chip.” Appeal Br. 12 (emphasis omitted).
Appellant asserts that “the rejection fails to indicate where either of the
references teaches or suggests an identifier that uniquely identifies the
structural semiconductor chip, separately from an identifier of the offer or
incentive that is associated with the chip.” Id. We agree.
The identifier described in Wooden is not used to identify a geo.Chip,
but instead is “used to identify a particular promotional item.” Wooden
¶ 54. We discern no teaching in either cited reference that a geo.Chip is
assigned a unique identifier that is transferred from the geo.Chip to the
mobile device as claimed.
Accordingly, we are persuaded the Examiner erred, and we reverse
the rejection of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also reverse the rejections of claims 9 and 15 which recite similar
limitations, as well as of the remaining claims which depend therefrom.
CONCLUSION
The Examiner’s rejections are reversed.
More specifically:
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We reverse the Examiner’s decision to reject claims 1–5, 8–15 and
17–22 under 35 U.S.C. § 101.
We reverse the Examiner’s decision to reject claims 1–5, 8–15 and
17–22 under 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–15,
17–22
101 patent eligibility 1–5, 8–15,
17–22
1–5, 8–15,
17–22
103 Rajan, Wooden 1–5, 8–15,
17–22
Overall
Outcome
1–5, 8–15,
17–22

REVERSED