Ex Parte Abraham

Patent Trial and Appeal Board

May 12, 2017

13211733 (P.T.A.B. May. 12, 2017)

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.
13/211,733 08/17/2011 SUBIL M. ABRAHAM CHA920110016US1_8134-0162 4823
73109 7590 05/16/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/16/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUBIL M. ABRAHAM
Appeal 2015-008104
Application 13/211,73 31
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Subil M. Abraham (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Final Rejection of claims 1—25. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies International Business Machines Corporation as
the real party in interest. Br. 3.
Appeal 2015-008104
Application 13/211,733
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for maximizing product discounts comprising:
a computing device receiving of user-entered shopping
data by an independent discount management system, wherein
said user-entered shopping data comprises at least one of a
product selection and data for an existing discount;
the computing device aggregating a plurality of discount
data and discount handling rules from a plurality of discount
providers for the received user-entered shopping data, wherein
said independent discount management system has a pre­
existing agreement with the plurality of discount providers to
access said plurality of discount data and discount handling
rules;
the computing device synthesizing a discount-maximized
shopping plan from the aggregated discount data and discount
handling rules, wherein the discount-maximized shopping plan
defines a combination of discount data, a date, a time, and a
retailer that affords a maximum discount for each product
selection contained in the received user-entered shopping data;
the computing device, upon user-acceptance of contents
of the discount-maximized shopping plan, generating an
aggregate discount code for the discount-maximized shopping
plan, wherein said aggregate discount code represents the
aggregated discount data of the user-accepted discount-
maximized shopping plan;
the computing device storing the generated aggregate
discount code and the corresponding discount-maximized
shopping plan in a data store, wherein the data store is
configured as a virtual centralized repository for storing and
accessing discount data and discount handling rules for the
plurality of discount providers, active discount data and
2
Appeal 2015-008104
Application 13/211,733
transaction data for a plurality of retailers and the user-entered
shopping data;
the computing device receiving notification from the
retailer that the aggregate discount code has been redeemed in a
purchase transaction; and
the computing device coordinating compensation
between the retailer and corresponding discount providers for
use of the aggregate discount code in the purchase transaction,
wherein said compensation is only coordinated for discount
data applicable to products included in the purchase transaction.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ofer US 2008/0167969 A1 July 10, 2008
Gillies US 2010/0122274 A1 May 13,2010
Wall US 2012/0143703 A1 June 7, 2012
Main US 2013/0024261 A1 Jan. 24, 2013
The following rejections are before us for review:
1. Claims 1—25 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1—3, 9—17, and 20—22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ofer, Main, and Gillies.
3. Claims 4—8, 18, 19, and 23—25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ofer, Main, Gillies, and Wall.
ISSUES
Did the Examiner err in rejecting claims 1—25 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
3
Appeal 2015-008104
Application 13/211,733
Did the Examiner err in rejecting claims 1—3, 9—17, and 20—22 under
35 U.S.C. § 103(a) as being unpatentable over Ofer, Main, and Gillies?
Did the Examiner err in rejecting claims 4—8, 18, 19, and 23—25 under
35 U.S.C. § 103(a) as being unpatentable over Ofer, Main, Gillies, and
Wall?
ANALYSIS
The rejection of claims 1—25 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner
determined that the claims are directed to maximizing product discounts and
that maximizing product discounts is an abstract idea and thus the claims are
directed to an abstract idea. Final Act. 5—7.
The Appellant challenges the Examiner’s articulation of what the
claims are directed to, but the challenge is unfounded. See Br. 35—36. For
example, the fact that the claims are drafted to include a computing
environment is not dispositive. The question is not whether claims mention
a computing environment but what they are “directed to.”
[T]he “directed to” inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether “their
character as a whole is directed to excluded subject matter.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
4
Appeal 2015-008104
Application 13/211,733
1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. MerialL.L.C.,
818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(inquiring into “the focus of the claimed advance over the prior
art”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to 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 Texas v.
DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). “In
determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Taking claim 1 as representative, it sets out seven steps whereby (1)
user-entered shopping data is received; (2) a plurality of discount data and
discount handling rules from a plurality of discount providers for the
received user-entered shopping data are aggregated; (3) a discount-
maximized shopping plan is synthesized; (4) an aggregate discount code for
the discount maximized shopping plan is generated upon user-acceptance;
(5) the generated aggregate discount code and the corresponding discount-
maximized shopping plan are stored in a data store; (6) notification from a
retailer that the aggregate discount code has been redeemed in a purchase
transaction is received; and (7) compensation between the retailer and
corresponding discount providers for use of the aggregate discount code in
the purchase transaction is coordinated. These steps involve discount
providers who provide a plurality of discount data and discount handling
rules from which a discount-maximized shopping plan is derived. A code
5
Appeal 2015-008104
Application 13/211,733
representing said plan can then be redeemed in a purchase transaction. To
put it simply, the method is a scheme to obtain a maximum discount for a
transaction available from a plurality of discount providers. The claimed
steps are directed to maximizing discounts, albeit involving a plurality of
discount providers. In terms of what they are directed to, the other
independent claims are no different.
The Specification supports this view. The Specification states the
problem this way: “Currently, it is left to the consumer to be aware of the
variety discounts and promotions offered, as well as determine how to utilize
the available discounts to maximize their savings.” Paragraph 4. “With this
current environment, discount providers struggle to effectively promote
products through discounts and consumers struggle to effectively use the
available discounts.” Paragraph 7. The inventive solution is to provide a
method (paragraph 8), system (paragraph 9), and computer program product
(paragraph 10) for “maximizing product discounts.” Thus, maximizing
discounts is a reasonable expression of the focus of the claimed advance
over the prior art.
Accordingly, the claims as a whole, in light of the Specification, are
directed to maximizing product discounts, which is consistent with the
Examiner’s position (Final Act. 5—7). There appears to be no dispute that
maximizing product discounts is an abstract idea. Cf. OIP Technologies,
Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (“offer-based price
optimization” is an abstract idea), cert, denied, 136 S. Ct. 701 (2015).
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
6
Appeal 2015-008104
Application 13/211,733
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73
(2012)). In this regard, the Examiner determined that, with respect to claim
1, “the method steps of claim 1 are not enough to qualify as ‘significantly
more.’” Final Act. 5. “Specifically, sending, receiving, storing, and
transferring data are well-understood, routine and conventional activities
previously known in the industry.” Final Act. 5.
The Appellant argues that “our claims are only applicable in
a computing environment, as was the case with [DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)].” Br. 36. But that is not a
good argument. In DDR, the claims at issue involved, inter alia, “web pages
displays [with] at least one active link associated with a commerce object
associated with a buying opportunity of a selected one of a plurality of
merchants” (claim 1 of US 7,818,399). There is no such web page with an
active link in the claims here before us. All that is required is a “computing
device” and an “independent discount management system.” The
Specification supports the view that said device/system are conventional.
See, e.g., paragraph 19. “[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 if” is not enough for
patent eligibility.” Alice, 134 S. Ct. 2358 (citation omitted).
The Appellant further argues that there are “material claimed
limitations” (Br. 36) in the claims which provide “meaningful limitation[s]
beyond linking the ‘abstract idea’ to a technological environment” (Br. 37).
7
Appeal 2015-008104
Application 13/211,733
To make the case they are meaningful, the Appellant does little more than
reproduce every step in claim 1 and every dependent claim. Br. 37-41.
We appreciate that the claims provide for a more specific approach to
maximizing discounts (e.g., dependent claim 12 calls for “the plurality of
discount providers [to comprise] a product manufacturer, a financial
institution, a retailer, a social networking discount service, and a third-party
clearinghouse”). But the specifics rest not so much in any underlying
computer technology but in practicing the resulting particular scheme itself.
Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
“Generally, a claim that merely describes an ‘effect or result dissociated
from any method by which [it] is accomplished’ is not directed to patent-
eligible subject matter.” Id. at 1244 (alteration in original) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir.
2015)).
The patents claim systems including menus with particular
features. They do not claim a particular way of programming or
designing the software to create menus that have these features,
but instead merely claim the resulting systems. [McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016) (“directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery”).]
Essentially, the claims are directed to certain functionality—
here, the ability to generate menus with certain features.
Alternatively, the claims are not directed to a specific
improvement in the way computers operate. Cf. Enflsh, 822 F.3d
at 1335—36.
Id. at 1241.
For the foregoing reasons, the Appellant has not shown error in the
Examiner’s Alice step two determination that the claims do not include an
8
Appeal 2015-008104
Application 13/211,733
element or combination of elements sufficient to ensure that in practice they
amount to significantly more than to be upon the ineligible concept itself.
The remaining arguments have been carefully considered but are
unpersuasive as to error in the rejection.
The rejection is sustained.
The rejection of claims 1—3, 9—17, and 20—22 under 35 U.S.C. § 103(a) as
being unpatentable over Ofer, Main, and Gillies.
The rejection of claims 4 8, 18, 19, and 23—25 under 35 U.S.C. § 103(a) as
being unpatentable over Ofer, Main, Gillies, and Wall.
The Appellant argues that the cited prior art does not disclose “an
aggregate discount code” as claimed (Br. 30). All the independent claims
(claims 1, 10, 16, and 21) require generating one.
The Examiner relied on Main, specifically the “coupon identification
code 18” discussed on page 2, paragraphs 21—23, as evidence that the prior
art discloses “an aggregate discount code” as claimed. Final Act. 11.
Paragraph 23, the most relevant disclosure of Main, discloses the
following:
Coupon 12 may be any linked to any suitable promotion or other
presentation and includes details regarding a plurality of offers
for commercial advantage. In one embodiment, in order to
facilitate redemption of the offers, coupon 12 includes or is
otherwise associated with a corresponding coupon identification
code 18. Coupon identification code 18 is stored in database 14
and is linked to the particular details of the offers, etc. associated
with a particular coupon 12. As such, coupon identification code
18 is one example of means for linking each of the plurality of
offers to a single coupon identification code.
9
Appeal 2015-008104
Application 13/211,733
We do not see in said passage disclosure of “an aggregate discount code” as
claimed. The instant claims call for an aggregate code that “represents the
aggregated discount data of the user-accepted discount-maximized shopping
plan,” not a code linking a coupon with details of offers. As the Appellant
points out, “[Main’s] coupon identification code is not generated by
‘aggregating’ discount offers from plurality of discount providers for
maximizing product discounts.” Br. 30.
Accordingly, a prima facie case of obviousness has not been made out
in the first instance.
CONCLUSIONS
The rejection of claims 1—25 under 35U.S.C. § 101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1—3, 9—17, and 20-22 under 35 U.S.C.
§ 103(a) as being unpatentable over Ofer, Main, and Gillies is reversed.
The rejection of claims 4—8, 18, 19, and 23—25 under 35 U.S.C.
§ 103(a) as being unpatentable over Ofer, Main, Gillies, and Wall is
reversed.
DECISION
The decision of the Examiner to reject claims 1—25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
10