Yair Goldfinger et al.

Patent Trials and Appeals Board

Mar 3, 2020

14315257 - (R) (P.T.A.B. Mar. 3, 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.
14/315,257 06/25/2014 Yair Goldfinger 2010190-0015 2356
24280 7590 03/03/2020
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
GLASS, RUSSELL S
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
jnease@choate.com
patentdocket@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAIR GOLDFINGER and AMICHAY OREN
Appeal 2018-001067
Application 14/315,257
Technology Center 3600

Before JENNIFER S. BISK, JOHN P. PINKERTON, and JOYCE CRAIG,
Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”), pursuant to
37 C.F.R. § 41.52, on December 19, 2019, seeking reconsideration of our
Decision on Appeal mailed October 31, 2019 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 27–33 under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.2 We have jurisdiction over the
Request under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42.
2 We reversed the Examiner’s rejection of claims 27–33 under 35 U.S.C.
§ 102(a).
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DISCUSSION
Appellant alleges in the Request that, in applying Step 2A, Prong 2 of
the patent eligibility test set forth in the U.S. Patent and Trademark Office’s
(the “USPTO’s”) 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “Office Guidance”), the Board
“overlooked limitations of the dependent claims and/or elements of claim
analysis.” Req. Reh’g 2.
Appellant submits that at least claims 30 and 31 recite additional
elements that appear to have been overlooked by the Board. Id. at 4.
Appellant contends that the Decision “does not provide any analysis of the
corresponding relevant claim limitations.” Id. Appellant explains that claim
30 recites a specific configuration of said I/O ports of the intermediary
device recited in claim 27, namely a configuration “wherein the second I/O
port is connected to the first I/O port such that data passed into the first I/O
port is allowed to pass through the apparatus to the second I/O port
unimpeded in at least a first operating mode.” Id. Appellant explains that
Claim 31 specifies that the intermediary device “extract[s] information
passed from the point of sale device connected to the first I/O port to the
purchase recording device connected to the second I/O port while the
information passes unimpeded to the purchase recording device.” Id.
On page 9 of the Decision, we identified and addressed the additional
elements in independent claim 27 and dependent claims 30 and 31. Decision
9. Thus, we disagree with Appellant that additional elements in claims 30
and 31 “appear to have been overlooked by the Board.”
Appellant also contends that the Decision “overlooked that an
‘improvement’ under Step 2A Prong 2 is not limited to improvements of a
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computer itself, but may be an ‘improvement to any other technology or
technical field.” Req. Reh’g 5 (citing MPEP § 2106.04(a)). Appellant asks
the Board to revisit arguments that Appellant made in the Appeal Brief. Id.
(citing Appeal Br. 11–12).
In the Decision, we agreed with the Examiner that none of the claims
on appeal integrates the abstract idea (mental processes) into a practical
application because the claims do not apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the exception.
Decision 8–11. The Decision explicitly identifies the additional elements
recited in claim 27, as well as the additional elements recited in claims 30
and 31. Decision 9. In addition, we addressed Appellant’s argument that
[t]he present claims describe a technological solution to problems
associated with allocating or redeeming rewards when
underlying transactions occurred in different locations or by
different vendors, or required the customer to be member of a
loyalty program. The automation is accomplished via a method
/ apparatus that involves extraction of point of sale data from a
data stream without impeding the flow of information ( a safety
feature) (see, e.g., claim 30), identification of a qualifying offer
and automatic application of the offer to a user’s electronic account
(see, e.g., claim 31 ).
Decision 9–10 (citing Appeal Br. 9, Reply Br. 5). While we determined that
Appellant had not persuaded us that the additional elements and the alleged
improvement “improve[s] on the capabilities of the computer itself,” we also
determined that the additional elements do “not impose any meaningful
limits on practicing the abstract idea.” Id. at 10. To the extent it may not be
clear from our Decision, “meaningful limits on practicing the abstract idea”
include (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
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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
§ 2106.05(e)). See Office Guidance, 84 Fed. Reg. at 55. Moreover, the
“mere automation of manual processes using generic computers . . . does not
constitute a patentable improvement in computer technology.” Trading
Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017)).
Appellant further contends that “[p]roper analysis of the claims
under Step 2A Prong 2 would have shown that the claims are directed
to patentable subject matter because any alleged judicial exception
recited in the claims is integrated in a practical application and
constitutes a technological improvement.” Req. Reh’g 6 (emphasis
omitted). Appellant argues for the first time in the Request that
[t]he intermediary device recited in the claims (e.g., claims 30
and 31) constitutes by no means a “generic computer” but is a
device configured as a passive listening device that can extract
and manipulate data without the risk of disrupting the operation
of electronic point-of-sale systems (operation of cash registers,
order entry terminals, internet merchant transaction servers, or
combinations thereof).
Id. Appellant, however, fails to provide any objective evidence that the
intermediary device recited in claims 30 and 31 is not generic. Nor has
Appellant persuasively argued or explained how extracting and manipulating
data without the risk of disrupting the operation of electronic point-of-sale
systems improves the functionality of a computer or other technology or
technical field, as opposed to the abstract idea itself. For example, the
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automatic deducting or crediting of reward points is part of the abstract idea
itself.
A request for rehearing is properly limited to previously addressed
matters that were misapprehended or overlooked. See 37 C.F.R. § 41.52(a).
It is not an opportunity to further develop the record through the introduction
of either new evidence and/or arguments.
Appellant also contends that “[p]roper analysis of the claims under
Step 2B would have shown that the claims are directed to patentable subject
matter because they provide ‘significantly more,’ i.e., an inventive concept.”
Req. Reh’g 6 (emphasis omitted).
On page 12 of the Decision, we agreed with the Examiner that “the
actions, functions, and/ or steps performed by the generically recited
computer elements would be routine and conventional in any computer
implementations.” Decision 12 (citing Ans. 4). Appellant has not
persuasively rebutted that determination. For example, Appellant has not
identified, and we do not find, where the Specification describes an
unconventional use of the intermediary device that is not well-understood or
routine.
We remind Appellant that the novelty of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter. Diamond v. Diehr, 450 U.S. 175, 188–89
(1981). Our reviewing court further guides that “[e]ligibility and novelty are
separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC,
874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven
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assuming” that a particular claimed feature was novel does not “avoid the
problem of abstractness”).
Moreover, a request for rehearing is not an opportunity to disagree
with the Board’s assessment of the arguments or to bolster an insufficient
argument already made.
We are not persuaded that we overlooked or misapprehended any
point of law or fact in rendering our Decision. Therefore, we decline to
modify our original Decision.
CONCLUSION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of Appellant’s Request, but is denied in
all other respects.
SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
27–33 101 Eligibility 27–33

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
27–33 101 Eligibility 27–33
27–33 102(a) Bohn 27–33
Overall
Outcome
27–33
DENIED