Bor Sun et al.

Patent Trials and Appeals Board

Apr 1, 2021

2020006313 (P.T.A.B. Apr. 1, 2021)

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.
14/097,894 12/05/2013 Bor J. Sun 05793.3287-00000 2823
22852 7590 04/01/2021
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
JESSEN, DEREK
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)

STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BOR J. SUN, MARK MENDEZ, JONATHAN R. TURFBOER,
PHILIP KEDY, GEORGE H. WILLIAMS, and
MATTHEW S. BUTTERWORTH
____________

Appeal 2020-006313
Application 14/097,894
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–5, 11–14, and 20. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Capital One
Services, LLC. (Appeal Br. 3.)
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THE INVENTION
Appellant claims a method for customer rewards offered by financial-
service providers and more particularly to processes and systems for
providing incentives to customers for their referrals. (Spec. ¶ 2).
Claim 1 is representative of the subject matter on appeal.
1. A computer-implemented method of providing
rewards to customers based on social-media influence and
performed by one or more processors, the method comprising:
tracking transactions initiated by a customer;
determining a potential reward corresponding to at least
one of said tracked transactions;
determining a total-reward modifier based on social-media
influence and referral data, the determination
comprising:
receiving social-network data related to the customer;
determining a social-media influence level for the
customer;
receiving referral data related to the customer comprising
at least a number of website postings made by the
customer, a number of new customers referred to a
financial institution associated with the customer
via the website postings, a number of social network
postings, and a number of social network users who
interacted with the social network postings;
determining a referral-reward modifier for the customer,
based at least on the received referral data; and
combining the level of social-media influence with the
referral reward modifier to obtain a total-reward
modifier, obtaining the total rewards modifier
further comprising:
calculating a score corresponding to the determined
social media influence level;
determining a rewards adjustment that corresponds
to the score; and
adding the rewards adjustment to the referral-
reward modifier, or multiplying the referral-
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reward modifier by the rewards adjustment;
and
recalculating an amount of the potential reward based on
the total-reward modifier.

THE REJECTIONS
Claims 1–5, 11–14, and 20 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1–5, 11–14, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Atazky (US 2007/0121843 A1;
published May 31, 2007) in view of Canetto (US 2012/0215604 A1;
published Aug. 23, 2012)

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–5, 11–14, and 20 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is
there in the claims before us?” . . . To answer that question, . . .
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. . . . [The Court] described step two of this
analysis 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.”
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Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to steps
involved in the commercial interactions between a merchant and a customer
who has initiated some type of transaction to determine a reward based on
social media influence and referral data and therefore recite a certain method
of organizing human activities. (Final Act. 3; Ans. 4). The Examiner finds
the judicial exception is not integrated into a practical application because
the additional elements are recited at a high level of generality (i.e., a
generic computer sending and outputting a signal and a terminal for
displaying) such that it amounts to no more than mere instructions to apply
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the exception using a generic computer component. (Final Act. 3–4).
Finally, the Examiner finds that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception. (Final Act. 4).
The Specification discloses that many financial service providers such
as banks and credit-card companies offer customer rewards for using their
services, such as making purchases or balance transfers, obtaining loans,
making direct deposits or paying bills through the financial-service provider.
Customer rewards are offered in various forms, such as cash, points,
discounts and miles for airline travel. (Spec. 3). Through the use of social
media, the present invention offers a way for customers to benefit from their
social media influence and referrals, which provides increased community
awareness of the financial-service provider and generates new customers for
financial service providers. As such, the invention relates to a method for
marketing financial services.
We thus agree with the Examiner’s findings that claim 1 recites
steps involved in commercial interactions between a merchant and a
customer who has initiated some type of transaction to determine a reward
based on social media influence and referral data. The recited steps relate to
marketing and are therefore are steps in a certain method of organizing
human activity. Guidance 84 Fed. Reg. 52.
Thus, we find that the claim 1 recites the judicial exception of a
method of organizing human activity.
Turning to the second prong of the “directed to test,” claim 1 requires
a “one or more processors.” This recitation does not impose “a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Guidance at 52. We
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find no indication in the Specification, nor does Appellant directs us to any
indication, that the operations recited in independent claim 1 invoke any
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention of claim 1 affects a transformation or reduction of a particular
article to a different state or thing. Nor do we find anything of record, short
of attorney argument, that attributes any improvement in computer
technology and/or functionality to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
“practical application,” as that phrase is used in the revised Guidance. See
Guidance, 84 Fed. Reg. at 55.
In this regard, the recitation does not affect an improvement in the
functioning of the one or more processors or other technology, does not
recite a particular machine or manufacture that is integral to the claim, and
does not transform or reduce a particular article to a different state or thing.
Id. Thus, claim 1 recites a judicial exception that is not integrated into a
practical application and thus claim 1 is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
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combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of one or more processors into the claim does not
alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether claim 1 here does more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
processor at each step of the process is purely conventional. Using a
processor to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
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trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the one or more processors. As we stated above, the claim 1 does not affect
an improvement in any other technology or technical field. The
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Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. (See, e.g., Spec. ¶¶ 21-23). Thus, claim 1
at issue amounts to nothing significantly more than instructions to apply the
abstract idea recited in claim 1 using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 12–21; Reply Br. 1–
6) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims recite much more than mere methods
of organizing human activity. The Appellant directs our attention to the
steps of “determining a social-media influence level for the customer,”
“determining a referral-reward modifier for the customer,” and “determining
a rewards adjustment.” (Appeal Br. 13). Appellant argues that the
Guidance limits the groupings of “certain methods of organizing human
activity,” to certain enumerated sub-groupings. We do not read the
Guidance to limit the groupings of certain methods of organizing human
activity. Rather, the Guidance states that fundamental economic practices
are judicial exceptions. The Guidance gives examples of fundamental
economic practices but does not state that these examples are the only
fundamental economic practices that are characterized as judicial exceptions.
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In any case, the Examiner determines that claim 1 recites commercial
interactions between a merchant and a customer who has initiated some type
of transaction to provide a reward based on some form of social media
influence and referral data. As such, the recitations in claim 1 fall clearly
into the fundamental economic practices enumerated in the Guidance, i.e.,
marketing. This is clear from the disclosure in paragraph 5 of the
Specification which states that the invention allows companies to invite
individuals to participate in promotional programs to receive rewards for
their influence on others so that the company can acquire new customers.
The two determining steps that Appellant draws our attention to are part of
the overall method recited in the claims to acquire new customers.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that any alleged judicial exception recited in the
claims is integrated into a practical application because the claims provide a
way for customers to benefit from their awareness of the financial service
provider and generate new customers for financial service providers.
Appellant argues that the invention includes mechanisms that assist in
gathering information about business interactions and the social media
influence of the customer, and that determine rewards that the customer is
eligible to receive. (Appeal Br. 16). Although the Appellant argues that
these features of the claimed subject matter reflect an improvement in
computer functionality, Appellant does not explain why this is so. In our
view, the advantages touted by the Appellant flow from the ineligible
concept itself. But, “[n]o matter how much of an advance in the finance
field the claims recite, the advance lies entirely in the realm of abstract ideas,
with no plausibly alleged innovation in the non-abstract application realm.”
SAP America, Inc., 898 F.3d at 1163; see also id. at 1168.
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Appellant argues that the claims are similar to the claims in Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir.
2018). We do not consider claim 1 to improve a particular technology as
were the claims in Core Wireless. In Core Wireless, the court held that
claims which recited an interface were patent eligible as the claims recited
specific limitations of the interface such as: an application summary that can
be reached through a menu, the data being in a list and being selectable to
launch an application, and additional limitations directed to the actual user
interface displayed and how it functions. Core Wireless, 880 F.3d at 1363.
The court found that the claims were directed to an improved user interface
and not the abstract concept of an index as the claim “limitations disclose a
specific manner of displaying a limited set of information to the user, rather
than using conventional user interface methods to display a generic index on
a computer.” Id. We agree with the Examiner’s response to this argument
found on pages 8–9 of the Answer that the claimed invention is not directed
to an improvement in a user interface as in Core Wireless but rather the
invention may provide some business improvements but does not improve
the functionality of the user interface on which information is presented. We
also agree with the Examiner that claim 1 may provide a specific manner of
displaying and presenting information on electronic devices but Appellant
has not identified any particular difficulty in displaying the data with
existing prior art systems that is solved by the invention of claim 1.
Appellant argues that several recitations in claim 1 are not well
understood, routine, and conventional. This argument is not persuasive
because Appellant directs our attention to recitations in the claims that are
part of the abstract idea of commercial interactions between a merchant and
a customer who has initiated some type of transaction to determine a reward
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based on some form of social media influence and referral data. In this
regard, the determining and recalculating steps are part of the abstract idea.
As we discussed above, the only elements recited in claim 1 in addition to
the abstract idea are the one or more processors. As such, the determination
about what is well understood, routine, and conventional is focused on the
processors not on the steps of the claim that form a part of the abstract idea.
In addition, it is these processors that are the subject of any analysis
pursuant to the holding in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018). Specifically, the analysis focuses on whether the elements in addition
to the abstract idea or the processors that are analyzed to determine if the
recitations are well understood, routine, and conventional. The Examiner
finds on page 4 of the Final Office Action that the processors are generic
processors and thus the Examiner has determined that the processors recited
are well understood, routine, and conventional. We note that this finding is
consistent with the Specification which teaches that the processors are
generic processors. (Spec. ¶¶ 21–23).
In view of the foregoing, we will sustain the rejection of claim 1. We
will also sustain this rejection as it is directed to the remaining claims
because Appellant has not argued the separate eligibility of these claims.
REJECTION UNDER 35 U.S.C. §103
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose referral data that comprises the number of
social network users who interacted with the social network postings. The
Specification discloses that referral data includes the number of social-
network users who clicked the message links but did not sign up. (Spec.
¶ 42). As such, the Specification teaches that the referral data includes the
number of social network users who at least clicked on (interacted with) the
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message link.
The Examiner relies on Figure 4 of Atazky for teaching this subject
matter. Specifically the Examiner finds that the depiction in the figure of the
new replies to “Looking for Dentists” and “Looking for Restaurants” are
depictions of a number of network users who interacted with the social
network posting.
However, it is not clear from the figure that the number of replies is
the same as the number of users that interacted with the posting because this
number is associated only with those who replied to the recommendations
(referrals) of the user and not to those that clicked on or otherwise interacted
with the posting. In addition, the number of new replies relates only to
replies left since the last log on of the user and may not represent the total
number of replies even if the replies are considered interactions.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1 and claims 2–5 dependent therefrom. We will also not
sustain the rejection as it is directed to the remaining claims because each of
these claims includes the subject matter we found missing in the prior art.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–5, 11–14,
and 20 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1–5, 11–14, and
20 under 35 U.S.C. § 103.

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DECISION
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 11–14,
20
101 Eligibility 1–5, 11–14,
20

1–5, 11–14,
20
103 Atazky, Canetto 1–5, 11–14,
20
Overall
Outcome
1–5, 11–14,
20

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