Rohit Chauhan

Patent Trials and Appeals Board

Jul 31, 2019

14172311 - (D) (P.T.A.B. Jul. 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.
14/172,311 02/04/2014 Rohit Chauhan P01358-US-
UTIL (M01.261)
9388
28062 7590 07/31/2019
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
Martin@BMTPATENT.COM
colabella@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROHIT CHAUHAN
____________________

Appeal 2018-000245
Application 14/172,3111
Technology Center 3600
____________________

Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–7. Appellant has canceled claims 8–20. See App. Br. 24. We
have jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies MasterCard International Incorporated as the real party
in interest. App. Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to a
warranty registration process wherein at the point-of-sale (POS), a customer
is queried as to whether they wish to register the product with the
manufacturer. Spec. 2:13–15; see also Spec. 3:23–4:10. In a disclosed
embodiment, when a customer presents a product to be purchased at a POS
device and uses a payment card (e.g., credit or debit card) for payment, the
POS device reads information from the product to determine whether the
product is eligible for warranty registration and from the payment card to
determine customer information. Spec. 3:23–4:4. The POS device may
query the customer to determine whether the customer wishes to proceed
with warranty registration and, if so, sends a message to a server with the
appropriate information to process warranty registration. Spec. 4:1–6. In
some embodiments, a customer may have previously enabled (i.e., enrolled
or opted in) streamlined warranty registration. Spec. 15:15–22.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method comprising:
reading purchased-item information by a point-of-sale
(POS) device from a purchased item presented to the POS
device;
determining by the POS device that the purchased item is
eligible for warranty registration, said determining including the
POS device referring to a flag in a database relative to the
purchased item;
reading a payment card by the POS device, the payment
card presented by a customer;
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determining by the POS device that the customer has
enabled a streamlined warranty registration process;
after said determining steps, querying the customer by the
POS device as to whether the customer wishes to trigger
warranty registration for the purchased item, said querying
including the POS device displaying a prompt on a display
element of the POS device;
receiving by the POS device an indication from the
customer to trigger warranty registration for the purchased item;
sending by the POS device a message to a customer profile
server to trigger warranty registration of the purchased item; and
printing a receipt by the POS device, the printed receipt
including an indication that warranty registration has occurred
for the purchased item.

The Examiner’s Rejections
1. Claims 1–7 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–5.
2. Claims 1–7 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 6.
3. Claims 1, 2, 6, and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Roper et al. (US 8,768,775 B1; July 1, 2014)
(“Roper”) and Kirkpatrick et al. (US 2001/0042022 A1; Nov. 15, 2001)
(“Kirkpatrick”). Final Act. 7–9.
4. Claims 3–5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Roper, Kirkpatrick, and Carlson et al. (US 2011/0131135
A1; June 2, 2011) (“Carlson”). Final Act. 10–11.

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ANALYSIS2
Rejection under 35 U.S.C. § 112(b)
In rejecting independent claim 1 (as well as dependent claims 2–7)
under 35 U.S.C. § 112(b), the Examiner concludes the claim is indefinite
because there is insufficient antecedent basis for the claim element
“warranty registration.” Final Act. 6. More specifically, the Examiner
determines it is unclear “if these limitations are referring to the same, or
different, ‘warranty registration’ data.” Ans. 3.
The test for definiteness under 35 U.S.C. § 112(b) is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986).
In the Specification, Appellant describes that manufacturers may
request customers that purchase a product to register the product with the
manufacturer. Spec. 1:2–4. According to the Specification, the registration
may correlate customer information with a particular product. Spec. 1:4–6.
Moreover, when the registration process also is linked with the
manufacturer’s warranty policies for the product being registered, the
Specification refers to this as “warranty registration.” Spec. 1:4–8.
In view of the Specification, Appellant asserts, and we agree, that one
of ordinary skill in the art would understand “warranty registration,” as
recited in the claims, refers to the act (or process) of registering for a product

2 Throughout this Decision, we have considered the Appeal Brief, filed
June 1, 2017 (“App. Br.”); the Reply Brief, filed October 10, 2017 (“Reply
Br.”); the Examiner’s Answer, mailed August 11, 2017 (“Ans.”); and the
Final Office Action, mailed January 9, 2017 (“Final Act.”), from which this
Appeal is taken.
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in which the registration is linked to a manufacturer’s warranty policy for
the product. See App. Br. 5; Reply Br. 2. As Appellant explains, “warranty
registration” is not a particular data item, but rather the act of registering a
product for warranty. Reply Br. 2.
Because the scope of the claims would be “reasonably ascertainable”
by one of skill in the art, we conclude the lack of explicit antecedent basis
does not render the claims indefinite. See Manual of Patent Examining
Procedure (“MPEP”) § 2173.05(e) (9th ed. Rev. 08.2017, Jan. 2018).
Accordingly, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 112(b) of claims 1–7.

Rejections under 35 U.S.C. § 103
Appellant argues, inter alia, the Examiner erred in finding Roper
teaches “determining by the POS device that the customer has enabled a
streamlined warranty registration process,” as recited in claim 1. App. Br. 6,
10–11. Rather, Appellant asserts the auto-registration taught by Roper
occurs without consideration for whether a customer has enabled a
streamlined warranty registration process. App. Br. 10–11 (citing Roper,
col. 7, ll. 17–46, Fig. 1).
In response, the Examiner finds Roper teaches the disputed limitation
because “when the customer brings the item to the checkout POS device that
the customer has enabled a streamlined warranty process. . . .” Ans. 5
(internal quotation omitted) (citing Roper, Fig 1 (102, 104, 106)). In other
words, the Examiner finds that by merely having the merchant enter the
product into the POS system, the POS device determines that the customer
has enabled a streamlined warranty process. Ans. 5.
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Although we are mindful not to import limitations from the
Specification into the language of the claims (see In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993)), our review of the Specification informs our
understanding of determining whether a customer has enabled a streamlined
warranty registration process. According to the Specification, cardholders
(i.e., customers) may receive an inquiry to ask whether the cardholder would
like to enroll in a process in which certain products may be registered with
the manufacturer when purchased. Spec. 11:16–19, Fig. 4. If the cardholder
agrees to enroll in the streamlined registration (i.e., warranty registration)
process, relevant cardholder information (e.g., name, address, e-mail
address) may be entered into a customer profile server computer.
Spec. 12:19–13:10, Fig. 4. At the time of purchase, the POS device may
query the customer profile server computer (for example) to determine
whether the cardholder (i.e., customer) has enrolled previously in the
streamlined registration process. Spec. 15:15–22, Fig. 5.
We disagree with the Examiner that by having the merchant enter the
product into the POS device, the POS device is making a determination that
the customer has enabled (i.e., enrolled in) the streamlined warranty process.
Roper describes an auto-registration process based on whether auto-
registration is available for the product and, if so, then queries the customer
to authorize the auto-registration. See Roper, Abstract. The Examiner has
not identified sufficient evidence or set forth persuasive technical reasoning
that Roper teaches the POS determining whether the customer has enabled
streamlined warranty process prior to querying whether the customer wishes
to trigger warranty registration for the purchased item, as recited in the
claims. Additionally, the Examiner does not rely on the other prior art of
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record to teach or suggest, alone or in combination with Roper, this
limitation. See Final Act. 7–9.
Because we find it dispositive that Roper, as relied on by the
Examiner, does not teach “determining by the POS device that the customer
has enabled a streamlined warranty registration process,” we do not address
other issues raised by Appellant’s arguments. See Beloit Corp. v. Valmet
Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency
is at liberty to reach a decision based on “a single dispositive issue”).
For the reasons discussed supra, and constrained by the record before
us, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103 of
independent claim 1. For similar reasons, we do not sustain the Examiner’s
rejections under 35 U.S.C. § 103 of claims 2–7, which depend directly or
indirectly therefrom.

Rejection under 35 U.S.C. § 101
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 16–21; Reply
Br. 3–4. In particular, Appellant argues the claims are directed to more than
just processing a warranty registration for a purchased item and provides a
seamless process for warranty registration for the customer that requires
“virtually no effort to achieve compliance.” App. Br. 17; see also Reply
Br. 3–4. Additionally, Appellant asserts the claims recite a specific
implementation of a technological solution to a particular technological
problem. App. Br. 18–19. Moreover, Appellant asserts the claims recite
significantly more than the alleged abstract idea and set forth an
unconventional arrangement of elements. App. Br. 20–21 (citing BASCOM
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Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016). Per Office Guidance, this first inquiry has two
prongs of analysis: (i) does the claim recite a judicial exception (e.g., an
abstract idea), and (ii) if so, is the judicial exception integrated into a
practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. 84 Fed. Reg. at 54–55. If the claim is
directed to a judicial exception (i.e., recites a judicial exception and does not
integrate the exception into a practical application), the next step is to
determine whether any element, or combination of elements, amounts to
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significantly more than the judicial exception. Alice, 573 U.S. at 217; 84
Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea. More
specifically, Appellant’s claims are generally directed to processing a
warranty registration for a product at a point-of-sale. This is consistent with
how Appellant describes the claimed invention. See Spec. 3:21–4:10,
Abstract; see also App. Br. 17 (“the present application is directed to a point
of sale (POS) device incorporates a warranty registration process seamlessly
with a purchase of a product”), App. Br. 18 (describing the focus of the
claims is to facilitate a warranty registration process). Processing a warranty
registration for a product at a point-of-sale is a certain method of organizing
human activity (e.g., a commercial interaction, such as marketing or sales
activities or business relations)—i.e., an abstract idea. See 84 Fed. Reg. at
52; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (holding the creation of a contractual relationship to be an abstract
idea); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1369 (Fed. Cir. 2015) (holding that “tailoring content based on the
viewer’s location” (i.e., a function of the user’s personal characteristics) is
the type of information tailoring that is a fundamental practice long
prevalent in our system and is an abstract idea); Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (holding that
“processing an application for financing a purchase” falls within certain
methods of organizing human activities and is, therefore, an abstract idea).
Moreover, processing a warranty registration based on user-specific
information (i.e., whether the customer has enabled, or wishes to proceed
with, a streamlined warranty registration) is similar to the processing of a
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transaction/contractual relationship held to fall within the category of
abstract ideas of certain methods of organizing human activities.
Claim 1 is reproduced below and includes the following claim
limitations that recite processing a warranty registration for a product at a
point-of-sale, emphasized in italics:
1. A method comprising:
reading purchased-item information by a point-of-sale
(POS) device from a purchased item presented to the POS
device;
determining by the POS device that the purchased item is
eligible for warranty registration, said determining including the
POS device referring to a flag in a database relative to the
purchased item;
reading a payment card by the POS device, the payment
card presented by a customer;
determining by the POS device that the customer has
enabled a streamlined warranty registration process;
after said determining steps, querying the customer by the
POS device as to whether the customer wishes to trigger
warranty registration for the purchased item, said querying
including the POS device displaying a prompt on a display
element of the POS device;
receiving by the POS device an indication from the
customer to trigger warranty registration for the purchased item;
sending by the POS device a message to a customer profile
server to trigger warranty registration of the purchased item;
and
printing a receipt by the POS device, the printed receipt
including an indication that warranty registration has occurred
for the purchased item.
More particularly, the concept of processing a warranty registration
for a product at a point-of-sale comprises (i) gathering information related to
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the product and the customer (i.e., the claimed steps of reading purchased
item information and reading payment card information); (ii) determining
that the product is eligible for warranty registration and that the customer
wishes to proceed with warranty registration (i.e., the claimed steps of
determining that the purchased item is eligible for warranty registration,
querying the customer to determine whether the customer wishes to proceed
with warranty registration, and receiving a response to the customer query);
and (iii) processing the warranty registration (i.e., the claimed step of
sending a message to a customer profile server to trigger warranty
registration of the purchased item).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c),
(e)–(h).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state (see
MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
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§ 2106.05(e)). See also 84 Fed. Reg. at 55. Rather, the additional elements
recite, inter alia, that the abstract idea is performed by a POS device. The
point-of-sale device is not a particular machine within the context of MPEP
§ 2106.05(b). Instead, we note Appellant describes the POS device as
“largely or entirely conventional.” Spec. 10:5. Additionally, the claimed
steps of determining whether the customer has enabled a streamlined
warranty process and printing on a receipt an indication that warranty
registration has been completed are the types of extra-solution activities (i.e.,
in addition to the judicial exception) the courts have determined insufficient
to transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); see also Parker v. Flook, 437 U.S.
584, 590 (1978) (explaining “[t]he notion that post-solution activity, no
matter how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance”); Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (recognizing
“that merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and
analysis”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771
F.Supp.2d 1054, 1065 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed. Cir.
2012) (explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”).
Additionally, we disagree with Appellant (see Reply Br. 3–4) that the
claims recite an advancement over conventional computer technology.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir.
2016) (distinguishing between claims wherein the focus of the claims is on
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an improvement in computer capabilities and those that invoke a computer
as a tool).
Further, by contrast, in DDR Holdings, the Federal Circuit determined
“the claimed solution amount[ed] to an inventive concept for resolving [a]
particular Internet-centric problem,” i.e., a challenge unique to the Internet.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir.
2014); see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that claims
‘directed to systems and methods of generating a composite web page that
combines certain visual elements of a ‘host’ website with content of a third-
party merchant’ contained the requisite inventive concept”). The Federal
Circuit explained that the patent-eligible claims specified “how interactions
with the Internet are manipulated to yield a desired result . . . that overrides
the routine and conventional sequence of events ordinarily triggered by the
click of a hyperlink.” DDR Holdings, 773 F.3d at 1258. The court reasoned
that those claims recited a technological solution “necessarily rooted in
computer technology” that addressed a “problem specifically arising in the
realm of computer networks.” DDR Holdings, 773 F.3d at 1257. Here,
unlike the claims at issue in DDR Holdings, Appellant’s claims relate to a
warranty registration process that does not arise in the realm of computer
networks.
Moreover, in BASCOM, the court found “the patent describes how its
particular arrangement of elements is a technical improvement,” and, when
construed in favor of BASCOM,3 the claims may be read to improve an

3 In BASCOM, BASCOM appealed the district court’s granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1341.
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existing technological process. BASCOM, 827 F.3d at 1350. As discussed
above, the claims do not improve an existing technological process, but
rather uses the existing process to perform the abstract idea. Additionally,
unlike the arrangement of elements (i.e., installation of a filtering tool at a
specific location) in BASCOM, 827 F.3d at 1349–50, and contrary to
Appellant’s arguments (see App. Br. 21), Appellant’s claims do not recite a
non-conventional and non-routine arrangement of known elements.
See Spec. 6:1–12 (describing the computing elements and payment network
as conventional).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As
stated in the Office Guidance, many of the considerations to determine
whether the claims amount to “significantly more” under step two of the
Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine if the claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or simply appends
well-understood, routine, conventional activities at a high level of generality.
84 Fed. Reg. at 56.
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Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. We agree with the Examiner that the claims recite generic
components performing generic computer functions. Ans. 7–8. As
Appellant acknowledges in the Specification, warranty registration processes
were known in the art. See Spec. 1:2–15. Further, Appellant describes the
claimed system “incorporates features of a conventional card-based payment
system.” Spec. 4:15–16. Additionally, Appellant describes the POS device
and reader component “may be entirely conventional in their hardware
aspects, and may also include conventional software to supply the usual
functionality for such devices.” Spec. 5:11–13; see also Spec. 10:5, 10:14–
11:5 (describing POS device and peripheral components as conventional).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 1–7 under
35 U.S.C. § 101.

DECISION
We reverse the Examiner’s decision rejecting claims 1–7 under
35 U.S.C. § 112(b).
We reverse the Examiner’s decision rejecting claims 1–7 under
35 U.S.C. § 103.
We affirm the Examiner’s decision rejecting claims 1–7 under
35 U.S.C. § 101.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1–7 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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(f).

AFFIRMED