Safeway Inc.

Patent Trials and Appeals Board

Sep 15, 2020

13943600 - (D) (P.T.A.B. Sep. 15, 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.
13/943,600 07/16/2013 Kent L. BRADLEY 4189-03403 5368
30652 7590 09/15/2020
Conley Rose, P.C.
5601 Granite Parkway
Suite 500
Plano, TX 75024
EXAMINER
LONG, MEREDITH A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/15/2020 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):
dallaspatents@dfw.conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT L. BRADLEY and BRAD WOLFSEN
Appeal 2020-001912
Application 13/943,600
Technology Center 3600
Before ROBERT E. NAPPI, BETH Z. SHAW, and JAMES W. DEJMEK,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–8, 11–15, 18, and 21–25. See
Final Act. 1. 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 (2018). Appellant identifies the real party in interest as Safeway Inc.
Appeal Br. 3.
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Application 13/943,600

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CLAIMED SUBJECT MATTER
The claims are directed to a consumer health incentive program.
Claim 1, reproduced below, is illustrative of the claimed subject matter, with
certain disputed limitations italicized:
1 A computer implemented system comprising:
a database, wherein the database contains pricing
information for a medical service;
a server comprising a non-transitory memory, a processor,
and an application stored in the memory and executable by the
processor, wherein the server is connected to the database,
wherein the application is in communication with the database
and causes the server to:
determine a reference price for the medical service;
store the reference price in the database;
allow a mobile electronic device to access the database in
order to view the reference price for the medical service which
is stored in the database, wherein the mobile electronic device
connects to the database via a network and via the server;
receive an input for a purchase price of the medical service
from a mobile electronic device via the network;
receive healthcare policy information from the mobile
electronic device via the network;
determine the purchase price of the medical service is
lower than the reference price;
calculate a credit based on the purchase price of the
medical service being lower than the reference price; and
deliver the credit to a bank account associated with the
healthcare policy via the network.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bogdan US 2011/0054990 A1 Mar. 3, 2011
Slen US 2011/0153353 A1 June 23, 2011
Bravata US 2012/0232936 A1 Sept. 13, 2012
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Name Reference Date
Behm US 9,152,974 B1 Oct. 6, 2015
Appleby Employee Incentives
Drive Lower-Cost
Health Care
Sept. 22, 2011

REJECTIONS
Claims 1–4, 6–8, 11–15, 18, 21–25 are rejected under 35 U.S.C.
§ 101.
Claims 1–4, 6–8, 11–15, 18, 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Appleby, Slen, and Bravata.
Claims 21, 23 are rejected under 35 U.S.C. § 103 as unpatentable over
Appleby, Slen, Bravata, and Bogdan.
Claims 24 and 25 are rejected under 35 U.S.C. § 103 as unpatentable
over Appleby, Slen, Bravata, Behm.

OPINION
Section 103
Appellant argues that Bravata fails to teach or suggest the following
limitations of independent claim 1, “allow a mobile electronic device to
access the database in order to view the reference price for the medical
service which is stored in the database, wherein the mobile electronic device
connects to the database via a network and via the server.” Appeal Br. 9, 10.
In particular, Appellant argues that in Bravata, it is the platform server, not
the user computer device, which retrieves the reference price. Appeal Br.
13–14. Appellant argues:
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Thus, Bravata’s server does not include the router functionality
that is claimed because Bravata’s user computer device does not
access the database to view the reference price since i) the
platform server is the intermediary between the database and the
user computer device, and ii) the platform server itself accesses
the database and then provides the reference price information to
the user computer device. As such, Bravata does not disclose that
the server functions as a router by allowing “a mobile electronic
device to access the database in order to view the reference price
for the medical service that is stored in the database” as recited
in claims 1 and 7 because the platform server accesses the
database and not the user computer device. Further, because
Bravata’s server functions only to serve information, Bravata
also fails to disclose “the mobile electronic device connects to
the database via a network and via the server” as recited in claims
1 and 7.

Appeal Br. 14.
First, we note that the claim does not recite a “router,” nor does the
Specification mention a “router.” As the Examiner determines, and we
agree, Appellant’s arguments are not commensurate in scope with claim 1.
The limitation of a server to “allow a mobile electronic device to access the
database” does not preclude use of such server as an intermediary to
facilitate the claimed access. Ans. 4. Allowing access does not equate to
allowing direct access without an intermediary. Id. The feature upon which
Appellant relies (i.e., router functionality, access/retrieval without an
intermediary) is not recited in the claims. Id. Moreover, as the Examiner
determines, the Specification also does not preclude the use of a server as an
intermediary. Id.
We are not persuaded by Appellant’s argument that the user device in
Bravata is not allowed to access the database (Reply Br. 4), because Bravata
teaches that “reference prices” can be stored in a “reference price database
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130” and are “available, for example, for access by a user.” See Ans. 5
(citing Bravata ¶ 26). Bravata teaches “receiving, by the platform server
[110], a health care deliverable request from a user (for example from a
computing device of the user that is networked to the platform server [110])
. . . retrieving the set reference price corresponding to the health care
deliverable request . . . providing the set reference price to the user [114] . . .
.” Id. (citing Bravata ¶ 50); see also Bravata ¶ 71, Figs. 5, 6. We, therefore,
agree with the Examiner’s findings that the user's device is allowed to access
the database wherein the device connects to the database via a network and
via the server.
Accordingly, we sustain the rejection of § 103 claim 1. For the same
reasons, we sustain the § 103 rejection of independent claim 7, which was
argued together with claim 1.
We also sustain the Examiner’s obviousness rejections of the
remaining pending claims. Despite nominally arguing these claims
separately, Appellant reiterates similar arguments made in connection with
claim 1, and alleges that the additional cited prior art fails to cure those
purported deficiencies. Appeal Br. 15–16. We are not persuaded by these
arguments for the reasons previously discussed.

Section 101 Rejection
A. Section 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against 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, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
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Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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, to whether the claim:

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Abstract Idea
For the following reasons, we conclude the claims recite a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus, an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52, 53 (listing
“[c]ertain methods of organizing human activity—fundamental economic
principles or practices” as one of the “enumerated groupings of abstract
ideas”).
Appellant addresses the claims as a group, and we treat claim 7 as
representative. The claim is recites abstract idea because it sets forth a
fundamental economic practice, which is one of certain methods of
organizing human activity, as discussed below. The steps of claim 7, include,
with italics:
compiling, by the server, pricing information about a
range of prices charged for a medical service by a plurality of
medical service providers;
establishing, by the server, a reference price for the
medical service based on the pricing information for the
medical service;
storing, by the server, the reference price in the database;
allowing, by the server, mobile electronic device to
access the database in order to view the reference price for the
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medical service that is stored in the database, wherein the
mobile electronic device connects to the database via a network
and via the server;
receiving, by the server, an input for a purchase price of
the medical service from the mobile electronic device via the
network;
receive, by the server, healthcare policy information
from the mobile electronic device via the network;
analyzing, by the server, a price differential between the
reference price for the medical service and the purchase price;
calculate, by the server, a credit based on the purchase
price of the medical service being lower than the reference
price; and
deliver, by the server, the credit to a bank account
associated with the healthcare policy via the network.

Appellant’s claimed invention is directed to compiling pricing
information, establishing a reference price for a medical service, receiving a
purchase price and healthcare policy information, analyzing a price
differentials between the reference prices for the medical service and the
purchase price, calculating a credit, and delivering the credit.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic practices, such as the concept of intermediated settlement in Alice,
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and the concept of hedging in Bilski. Like those concepts, claim 1 also
recites a fundamental economic practice.
Specifically, the italicized steps fall under the umbrella of economic
practices, because the steps, including at least “compiling. . . pricing
information about a range of prices charged for a medical service by a
plurality of medical service providers,” “establishing. . . a reference price
for the medical service based on the pricing information for the medical
service,” “storing . . . the reference price,” “allowing, . . . to view the
reference price for the medical service”, “receiving. . . an input for a
purchase price of the medical service from the mobile electronic device via
the network,” “receive. . . healthcare policy information,” “analyzing . . , a
price differential between the reference price for the medical service and the
purchase price,” “calculate, . . . a credit based on the purchase price of the
medical service being lower than the reference price;” and “deliver . . . the
credit,” would ordinarily take place in purchasing a medical service, which
occurs in our system of commerce. See Spec. ¶ 2 (discussing deductible,
health plans, procedures, and payments).
In Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1369 (Fed. Cir. 2015), an advertisement taking into account the time
of day and tailoring the information presented to the user based on that
information was considered another “fundamental . . . practice long
prevalent in our system.” In Credit Acceptance Corporation v. Westlake
Services, 859 F.3d 1044 (Fed. Cir. 2017), patent claims directed to a system
and method for providing financing to allow a customer to purchase a
product selected from an inventory of products maintained by a dealer were
considered patent ineligible as directed to the abstract idea of processing an
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application for financing a purchase, an economic practice long prevalent in
commerce. Like the claims at issue in Intellectual Ventures I and Credit
Acceptance, the claimed crediting method is “a fundamental economic
practice long prevalent in our system of commerce.” Credit Acceptance, 859
F.3d at 1054. Thus, we conclude claim 7 recites a fundamental economic
practice, which is one of certain methods of organizing human activity
identified in the Revised Guidance, and thus an abstract idea.
In accordance with the Revised Guidance, and looking to MPEP
§ 2106.05(a)–(c) and (e)–(h), we determine that claim 7 does not integrate a
judicial exception, in this case the abstract idea of a fundamental economic
practice, into a practical application.
In addition to the steps discussed above, claim 7 recites a “server,” a
“database,” and a “mobile electronic device.” The recited server, database,
and mobile electronic device are generic components. See, e.g., Spec. Fig. 2;
Ans. 5–6; 2019 Eligibility Guidance, 84 Fed. Reg. at 55 (identifying “merely
includ[ing] instructions to implement an abstract idea on a computer” as an
example of when an abstract idea has not been integrated into a practical
application).
Accordingly, the claim as a whole does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
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technological environment, such that the claim, as a whole, is more than a
drafting effort designed to monopolize the exception. See MPEP
§ 2106.05(a)–(c), (e)–(h).
Inventive Concept
Because we determine that claim 7 is “directed to” an abstract idea,
we next consider whether claim 7 recites an “inventive concept.” The
Examiner determined that claim 7 does not recite an inventive concept
because the additional elements in the claim do not amount to “significantly
more” than an abstract idea. See Ans. 6. We agree with the Examiner’s
determination in this regard. Id. Using generic computer components to
perform abstract ideas does not provide the necessary inventive concept. See
Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”);
see also In re Warmerdam, 33 F.3d 1354, 1361–62 (Fed. Cir. 1994) (quoting
computer dictionary definition of “data structure” as “[a] physical or logical
relationship among data elements, designed to support specific data
manipulation functions”) (emphasis omitted); Intellectual Ventures, 792
F.3d at 1368 (noting that a recited user profile (i.e., a profile keyed to a user
identity), database, and communication medium are generic computer
elements); Mortgage Grader Inc. v. First Choice Loan Services, Inc., 811
F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such an
“interface,” “network,” and “database” are generic computer components
that do not satisfy the inventive concept requirement); buySAFE v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”).
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Thus, the elements of claim 1 do not amount to “significantly more”
than the abstract idea itself.
Preemption is a driving concern when determining patent eligibility.
See Alice, 573 U.S. at 216–17. Patent law cannot inhibit further discovery by
improperly tying up the future use of the building blocks of human
ingenuity. See id. (citing Mayo, 566 U.S. at 85–86). Although preemption is
characterized as a driving concern for patent eligibility, preemption itself is
not the test for patent eligibility. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two, these limitations are not additional elements beyond
the abstract idea, but rather are directed to the abstract idea as noted
previously. See Revised Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)). These elements form part of the
recited abstract ideas and thus are not “additional elements” that “‘transform
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the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo, 566 U.S. at 78); see also Revised Guidance, 84 Fed.
Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’ to
refer to claim features, limitations, and/or steps that are recited in the claim
beyond the identified judicial exception.” (Emphasis added)).
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution, we
disagree. Even assuming, without deciding, that the claimed invention can
calculate a credit based on the purchase of a medical service and credit bank
accounts faster than before, any speed increase comes from the capabilities
of the generic computer components—not the recited process itself. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”)); see
also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012,
1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to
accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[ ] not materially alter the
patent eligibility of the claimed subject matter.’”). Like the claims in
FairWarning, the focus of claim 7 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted).
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Accordingly, we sustain the Examiner’s rejection of the pending
claims under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–8,
11–15, 18,
21–25
101 1–4, 6–8,
11–15, 18,
21–25

1–4, 6–8,
11–15, 18,
22
103 Appleby, Slen,
Bravata
1–4, 6–8,
11–15, 18,
22

21, 23 103 Appleby, Slen,
Bravata, Bogdan
21, 23
24, 25 103 Appleby, Slen,
Bravata, Behm
24, 25
Overall
Outcome
1–4, 6–8,
11–15, 18,
21–25

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