Ex Parte Blagg

Patent Trials and Appeals Board

Jun 20, 2019

14099859 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/099,859 12/06/2013
20350 7590 06/24/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Lynn Holm Blagg
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
87188-894141 (02205 lUS) 7339
EXAMINER
BEKERMAN,MICHAEL
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYNN HOLM BLAGG
Appeal2018-001475
Application 14/099 ,859 1
Technology Center 3600
Before ANTON W. PETTING, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is First Data Corporation
(Appeal Br. 3).
Appeal2018-001475
Application 14/099,859
STATEMENT OF THE CASE2
Lynn Holm Blagg (Appellant) seeks review under 35 U.S.C. § 134 of
a final rejection of claims 43--47, 49-57, and 59-62, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellant invented a way of processing accounts corresponding
to different products that are members of a group, and more particularly to
processing a group of accounts that supports group level processing at the
group level while retaining independent processing of the accounts at the
account level. Specification para. 2. The claims in the instant application
are more narrowly drawn to a way of sharing reward points between
accounts of a group. Specification para. 155. See Appeal Brief 3--4,
Summary of Claimed Subject Matter.
An understanding of the invention can be derived from a reading of
exemplary claim 43, which is reproduced below (bracketed matter and some
paragraphing added).
43. A method for redeeming rewards, comprising:
[ 1] maintaining a first financial account at a data database
managed by a computer,
wherein the first financial account is associated with a
first party and a first reward,
wherein the first financial account is further associated
with a first account number and a first presentation
instrument having the first account number,
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed June 30, 2017) and Reply Brief ("Reply Br.," filed November 21,
2017), and the Examiner's Answer ("Ans.," mailed September 22, 2017),
and Final Action ("Final Act.," mailed March 10, 2017).
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and
wherein the first reward is at least partially accrued based
on use of the first presentation instrument;
[2] receiving at the computer a redemption request,
wherein the redemption request is initiated by a second
party having a second account,
wherein the second account is maintained at the data
database by the computer and is associated with a second
account number, a second presentation instrument and a
second reward,
wherein the second reward is at least partially accrued
based on use of the second presentation instrument,
and
wherein the first and second presentation instruments
comprise different presentation instrument products;
[3] in response to the redemption request,
determining at the computer that the redemption request
exceeds the second reward
and then
identifying by the computer the first account and a
relationship between the first account and the second
party;
[ 4] displaying at least the first account to permit an operator at
the computer to select how the first and second rewards are to
be applied from the first and second accounts;
and
[5] satisfying the redemption request,
wherein the redemption request is satisfied from at least a
portion of the first reward in the first account and the
second reward in the second account.
Claims 43--47, 49-57, and 59---62 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
STEP 12
Claim 43, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
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, we 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."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Revised Guidance").
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Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." Revised Guidance 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
Method claim 43 recites maintaining an account, receiving a request,
determining attributes of the request and account, displaying the account,
and satisfying the request. Determining attributes is a form of rudimentary
analysis, and claim 43 does not recite anything about what the request
represents other than some form of redemption, which may entail little more
than transmitting information. Thus, claim 43 recites receiving, analyzing,
displaying, and transmitting data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 43 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes 6. Revised Guidance 53. Among
those certain methods of organizing human activity listed in the Revised
Guidance are commercial or legal interactions. Id. Like those concepts,
claim 43 recites the concept of marketing promotion. Specifically, claim 43
recites operations that would ordinarily take place in advising one to
satisfying a redemption request after determining that the request meets
decision criteria and displaying a notice for applying rewards. The advice to
satisfy a redemption request after determining that the request meets
decision criteria and display a notice for applying rewards involves making a
marketing promotion redemption, which is an economic act, and instructing
how to perform the redemption, which is an act ordinarily performed in the
stream of commerce. For example, claim 43 recites "maintaining a first
financial account," which is an activity that would take place whenever one
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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is performing commercial transactions. Similarly, claim 1 recites "receiving
... a redemption request" and "satisfying the redemption request," which
are also characteristics of a commercial marketing promotion.
The Examiner determines the claims to be directed to incentive
redemption, which is a fundamental economic practice, an idea of itself,
and/or a method of organizing human activities. Final Act. 2.
The preamble to claim 43 recites that it is a method for redeeming
rewards. The steps in claim 43 result in satisfying a redemption request
absent any technological mechanism other than a conventional computer for
doing so.
As to the specific limitations, limitations 1 and 2 recite insignificant
receiving and storage of account and request data. Limitation 4 recites
insignificant data display. Limitations 3 and 5 are the only steps associated
with performing what the claim produces and recite performing determining
criteria for meeting the request and satisfying the request, which advise one
to apply generic functions to get to these results. These steps are simply
ascertaining whether to satisfy a request and then doing so. The limitations
thus recite advice for satisfying a redemption request after determining that
the request meets decision criteria and displaying a notice for applying
rewards. To advocate satisfying a redemption request after determining that
the request meets decision criteria and displaying a notice for applying
rewards is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 155 describes the claimed invention as
relating to a way of sharing reward points between accounts of a group.
Thus, all this intrinsic evidence shows that claim 43 is directed to offering
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reward points, i.e., marketing promotion. This is consistent with the
Examiner's determination.
This in tum is an example of commercial or legal interactions as a
certain method of organizing human activity because marketing promotion is
a major activity and goal of marketing personnel to promote sales from
customers. The concept of marketing promotion as advised to be done by
satisfying a redemption request after determining that the request meets
decision criteria and displaying a notice for applying rewards is an idea of
how such a promotion might be conceived so as to attract multiple
customers. The steps recited in claim 43 are part of how such an idea might
be conceptually performed.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367 (2015) (tracking financial
transactions to determine whether they exceed a pre-set spending limit).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
displaying, and transmitting data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 43, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, analysis,
display, and transmission and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
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Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 43 is directed to receiving, analyzing,
displaying, and transmitting data, and not a technological implementation or
application of that idea.
From this we conclude that, at least to this degree, claim 43 recites a
method for marketing promotion by satisfying a redemption request after
determining that the request meets decision criteria and displaying a notice
for applying rewards.
STEP 2A Prong 2
The next issue is whether claim 43 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A ]pplication[ s ]" of such
concepts "'to a new and useful end,'" we have said, remain
eligible for patent protection. Accordingly, in applying the§
101 exception, we must distinguish between patents that claim
the "'buildin[g] block[ s] "' of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the 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 "implement[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
feature[ 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 223-24 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1-2 are pure data gathering steps.
Limitations describing the nature of the data do not alter this. Step 4 is
insignificant post solution activity of displaying the results. Steps 3 and 5
recite generic computer processing expressed in functional terms to be
performed by any and all possible means and so present no more than
conceptual advice. All purported inventive aspects reside in how the data is
interpreted and the results desired, and not in how the process physically
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enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant's claim 43 simply recites the concept of
marketing promotion by satisfying a redemption request after determining
that the request meets decision criteria and displaying a notice for applying
rewards as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 43 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment8 and parameters that might be applied using this concept, and the
particular steps such conventional processing would entail based on the
concept of marketing promotion by satisfying a redemption request after
determining that the request meets decision criteria and displaying a notice
for applying rewards under different scenarios. It does not describe any
particular improvement in the manner a computer functions. Instead,
claim 43 amounts to nothing significantly more than an instruction to apply
marketing promotion by satisfying a redemption request after determining
that the request meets decision criteria and displaying a notice for applying
rewards 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 225-26.
8 The Specification describes a conventional computer. Spec. para. 58.
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None of the limitations reflects an improvement in the functioning of
a computer or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 43 is directed to achieving the result of
marketing promotion by advising one to satisfying a redemption request
after determining that the request meets decision criteria and displaying a
notice for applying rewards as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application. See Revised
Guidance 54--55.
STEP 2B
The next issue is whether claim 43 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
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displaying, and transmitting data amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz
Interactive Call Processing Patent Litigation, 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"). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellant does not contend they invented any of
these activities. 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 America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's claim 43 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-display-
transmission is equally generic and conventional. 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) (sequence of data
retrieval, analysis, modification, generation, display, and transmission),
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Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 43 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 43 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
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methods of organizing human activity as exemplified by marketing
promotion by advising one to satisfying a redemption request after
determining that the request meets decision criteria and displaying a notice
for applying rewards, without significantly more.
APPELLANT'S ARGUMENTS
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-5 and Answer 2-5 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellant's argument that "neither the Examiner-
characterized abstract idea ('incentive redemption'), nor the Examiner's
analysis of the claims as reciting 'collecting information,' 'analyzing it,'
and 'displaying certain results of the collection and analysis,' properly
considers the focus of the claimed advance over the prior art." Reply Br.
2. Analysis relative to the prior art is for a different inquiry. "A claim for a
new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating§ 102 novelty." Synopsys, Inc.
v. Mentor Graphics Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellant's argument that the "claimed
concept is directed to specially programmed computer systems and methods
for 'chasing' account rewards by facilitating redemption of rewards at one
account using rewards earned at another account (see, e.g., Specification,
paragraph O 156). More particularly, chasing is implemented by redeeming
rewards at two financial accounts." Reply Br. 3--4. As we determine supra,
the Specification describes the computer as a conventional computer.
Although it must be programmed, the claims recite no technological
implementation details for such programming. Instead, the claims recite
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results to be obtained by any and all possible means. This also addresses
Appellant's argument regarding the computer at Reply Brief 5.
Simply characterizing the recited data reads and writes as "chasing"
does not imbue the recited limitations with any further technological import.
The idea of redeeming rewards at two financial accounts remains just that,
abstract conceptual advice.
We are not persuaded by Appellant's argument that "The Examiner
cites neither prior art nor court decisions for finding the various features
beyond the characterized abstract idea are 'well-understood, routine and
conventional."' Reply Br. 5. We cite several court cases evidencing this
supra.
We are not persuaded by Appellant's argument that there is no
preemption. Id. "Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo [/Alice] 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).
CONCLUSIONS OF LAW
The rejection of claims 43--47, 49-57, and 59-62 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
DECISION
The rejection of claims 43--47, 49-57, and 59-62 is affirmed.
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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)(l)(iv) (2011).
AFFIRMED
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