Ex Parte Bender

Board of Patent Appeals and Interferences

Mar 14, 2011

11243050 (B.P.A.I. Mar. 14, 2011)

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.
11/243,050 10/04/2005 Neil Carmichael Bender II 050767/297493 7241
826 7590 03/14/2011
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
03/14/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NEIL CARMICHAEL BENDER II
____________

Appeal 2010-002460
Application 11/243,050
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-002460
Application 11/243,050

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-27. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is generally directed to incentive systems for
providing premiums to customers to reward and encourage customer
transactions with a business entity such as a bank, insurance company, or
other business (Spec. 1:4-6). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A method for encouraging transactions
between a customer and a business entity, each of
at least one transaction having an assigned value,
the method comprising:
detecting the at least one transaction
between at least one of the plurality of customers
and the business entity;
correlating the detected at least one
transaction with an earned voucher; and
issuing the earned voucher to the at least one
customer in response to the detected at least one
transaction, the earned voucher having a unique
indicia and a redemption value corresponding to
the value of the at least one transaction, the earned
voucher being instantly and singularly redeemable,
according to the unique indicia, in exchange for a
reward selectively determined by the at least one
customer and corresponding to the redemption
value of the earned voucher, so as to encourage the
at least one customer to engage in additional
transactions with the business entity.
Claims 1-18 stand rejected under 35 U.S.C. § 101 for being directed
to non-statutory subject matter; claims 1-6, 9-15, 18-24, and 27 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Walker (US
6,330,544 B1, iss. Dec. 11, 2001) in view of Mitchell (US 2004/0068438
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A1, pub. Apr. 8, 2004) and Freiberg (US Pub. 2004/0238622 A1, iss. Dec. 2,
2004); and claims 7, 8, 16, 17, 25, and 26 stands rejected under 35 U.S.C. §
103(a) as unpatentable over Walker in view of Mitchell, Freiberg, and
Eggleston (US Pat. 6,061,660, iss. May 9, 2000).
We AFFIRM.

ISSUES
Did the Examiner err in asserting that “transforming a detected
transaction into an earned voucher having a unique indicia and a redemption
value corresponding to the value of the detected transaction,” as recited in
claims 1-18, is an abstract idea and is not a transformation sufficient to
constitute statutory subject matter under 35 U.S.C. § 101?
Did the Examiner err in asserting that a gift certificates issued by a
credit card company in Walker renders obvious an earned voucher issued by
a business entity, as set forth in independent claims 1, 10, and 19?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 21-32
of the Examiner’s Answer.

ANALYSIS
101 Rejection
We are not persuaded that the Examiner erred in asserting that
“transforming a detected transaction into an earned voucher having a unique
indicia and a redemption value corresponding to the value of the detected
transaction,” as recited in claims 1-18, is an abstract idea and is not a
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transformation sufficient to constitute statutory subject matter under 35
U.S.C. § 101 (App. Br. 5-10; Reply Br. 1-3). Appellant relies on the
transformation prong of the machine-or-transformation test to assert that
claims 1-18 recite statutory subject matter (App. Br. 5-6, 8-9; Reply Br. 1-2).
The transformation prong requires that in order to constitute statutory
subject matter, a particular article needs to be transformed into a different
state or thing. See Diamond v. Diehr, 450 U.S. 175, 192 (1981) (holding
that use of mathematical formula in process “transforming or reducing an
article to a different state or thing” constitutes patent-eligible subject
matter); see also Parker v. Flook, 437 U.S. 584, 589 n.9 (1978) (“An
argument can be made [that the Supreme] Court has only recognized a
process as within the statutory definition when it either was tied to a
particular apparatus or operated to change materials to a ‘different state or
thing’”); Cochrane v. Deener, 94 U.S. 780, 788 (1876) (“A process is ... an
act, or a series of acts, performed upon the subject-matter to be transformed
and reduced to a different state or thing.”) The transformation must be of a
physical or tangible object or something representative of a physical or
tangible object. See In re Abele, 684 F.2d 902, 909 (CCPA 1982). In
independent claims 1 and 10, the only possible physical object recited is an
earned voucher, and there is no indication in the claims that the earned
voucher is transformed into a different state or thing. Indeed, in some
embodiments the earned voucher is not even a physical object, as it is
merely emailed or displaying on a computer screen, and thus are not eligible
for transformation. The detected transaction is also not a physical object.
Moreover, the Supreme Court recently reaffirmed that abstract ideas
are not patentable subject matter. See Bilski v. Kappos, 130 S. Ct. 3218,
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3229 (2010) (“[i]n searching for a limiting principle, this Court’s precedents
on the unpatentability of abstract ideas provide useful tools”). In particular,
the Supreme Court approvingly cited Flook for “the proposition that the
prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity.’” See Id. at
3230.
Similar to the petitioner’s attempts to patent risk hedging in Bilski,
Appellant is attempting to patent the intangible abstract idea of issuing a
customer reward based on a detected transaction. While Appellant may
assert that this abstract idea is limited to a customer-business entity
environment, Bilski and Flook recite that such an attempt to limit the idea to
a particular technological environment is inadequate. Moreover, the issuing
of the earned voucher itself is an insignificant postsolution activity to the
core of the invention, and is also disfavored by Bilski and Flook. To hold
otherwise would allow Appellant to easily circumvent the unpatentability of
abstract ideas by merely displaying a formula or algorithm on a screen or
printing it on a piece of paper.
Accordingly, we sustain this rejection of claims 1-18.

Prior Art Rejections
We are not persuaded that the Examiner erred in asserting that a
combination of Walker, Mitchell, and Freiberg renders obvious the subject
matter of independent claims 1, 10, and 19 (App. Br. 10-34; Reply Br. 4-14).
Appellant attempts to distinguish between payment methods and
transactions between a consumer and a qualifying business (App. Br. 11-12,
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14-16, 19, 22-24, 27, 30-32). However, a credit card company is a business
entity, and payment via a credit card is a transaction between a customer and
a business entity under a broadest reasonable construction. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (during
examination of a patent application, a pending claim is given the broadest
reasonable construction consistent with the specification and should be read
in light of the specification as it would be interpreted by one of ordinary skill
in the art). Indeed, column 1, lines 4-6 of the Specification recite that the
business entity may be a bank. Accordingly, since the credit card company
is a business entity, the issuance of gift certificates in Walker would
encourage the customer to continue making payments/transactions with the
particular credit card company, thus meeting the asserted advantages of the
claimed invention.
Appellant asserts that the gift certificate of Walker is not “instantly
and singularly redeemable,” as recited in independent claims 1, 10, and 19,
because the recited earned voucher is issued in response to a transaction,
while Walker and the other references rely on an accumulated points system
that issue vouchers at the discretion of the customer (App. Br. 12, 15-16, 19,
23-24, 27, 31-32). However, independent claims 1, 10, and 19 recite
“detecting the at least one transaction,” meaning that the detection of
“points” in multiple transactions would meet that aspect. Furthermore,
independent claims 1, 10, and 19 are silent as to who initiates the issuing of
the earned voucher, meaning that the customer may initiate the issuing when
enough points have been accumulated. Additionally, column 2, line 56
through column 3, line 4 of Walker disclose automatically issuing $5 printed
vouchers for every $100 worth of charges.
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Accordingly, we sustain these rejections of independent claims 1, 10,
and 19. As Appellant does not present additionally distinguishable
arguments for the patentability of dependent claims 2-9, 11-18, and 20-27
(App. Br. 17-18, 25-26, 33-34), we sustain the rejections of those claims as
well.
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) (2007).

AFFIRMED

hh

ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000