Ex Parte Boal

Patent Trial and Appeal Board

Sep 24, 2018

13332317 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/332,317 12/20/2011
124871 7590 09/26/2018
Hickman Palermo Becker Bingham/ Quotient
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
FIRST NAMED INVENTOR
Steven R. Boal
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.
60202-0098 4372
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN R. BOAL
Appeal2017-006596
Application 13/332,317 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A.
FISCHETTI, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32 and
37. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Quotient Technology Inc., as the real party in interest.
App. Br. 1.
Appeal2017-006596
Application 13/332,317
THE INVENTION
Appellant's claims relate "generally to coupon distribution, and, more
specifically, to techniques for distributing coupons in association with
electronic receipts". Spec. ,r 2.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
at a retailer terminal computer comprising a microprocessor and a
memory, receiving input specifying items for purchase in
transactions with customers;
at least partially responsive to receiving a first input via an
interface of the retailer terminal computer that is configured
to accept at least a first customer identifier associated with a
first transaction, storing the first input in the memory of the
retailer terminal computer, using the microprocessor to
access at least one record that stores customer identifiers in
association with respective known customer identities, and
to determine that the first customer identifier is associated
with a known customer identity;
using the retailer terminal computer, identifying one or more
digital coupons stored in the memory in association with the
first customer identifier;
using the retailer terminal computer, at least partially responsive to
receiving the first input and determining that the first
customer identifier is associated with a known customer
identity:
using a credit card reader of the retailer terminal computer,
causing performance of the first transaction, in which a
first set of one or more items are purchased and causing
redemption of the one or more digital coupons
associated with the particular customer identifier;
using the retailer terminal computer, causing generating
an electronic receipt including, adjacent to information
about a first item of a plurality of items that were
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purchased in the transaction, data describing a new
coupon offer that is available for the customer, the new
coupon offer having been selected based on the first
item and including, at the end of the electronic receipt,
data describing a second coupon offer, the second
coupon offer having been selected based on payment
information included within the electronic receipt and
the use of which is conditioned upon a type of payment
used in a subsequent transaction that is different from
the type of payment displayed in the payment
information, the second coupon displayed in the
electronic receipt directly adjacent to the payment
information;
using the retailer terminal computer, causing communicating the
electronic receipt for the first transaction via at least one
of an email message or a web- based application,
using the retailer terminal computer, at least partially responsive
to not receiving, via the interface, in association with a
second transaction, any input that indicates any
customer identifier associated with any known customer
identity: causing performance of the second transaction,
in which a second set of one or
more items are purchased;
causing provision of a printed receipt for the second
transaction.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Khan
Lay et al.
Schultz
Song et al.
Walker et al.
US 2012/0084132 Al
US 2009/0271265 Al
US 2010/0121708 Al
US 2011/0137719 Al
US 6,876,978 Bl
3
Apr. 5, 2012
Oct. 29, 2009
May 8, 2010
June 9, 2011
Apr. 5, 2005
Appeal2017-006596
Application 13/332,317
The following rejections are before us for review:
Claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 are
rejected under 35 U.S.C. § 112(a). Final Act. 3-5.
Claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 are
rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter. Final Act. 6-11.
Claims 1-3, 7, 8, 10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Lay, Shultz
Walker, Song and Khan.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-3, 7, 8, 10, 11, 13, 21, 22,
24, 25, 28-30, 32, and 37 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, 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
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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 Int 'l, 134 S. Ct. 2347, 2355 (2014)
(internal citations omitted) ( quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we determine that this case's claims themselves and
the Specification provide enough information to inform one as to what they
are directed to.
The steps in claim 1 result in:
at least partially responsive to not receiving, via the interface, in
association with a second transaction, any input that indicates any customer
identifier associated with any known customer identity:
causing performance of the second transaction, in which a second set
of one or more items are purchased;
causing provision of a printed receipt for the second transaction.
The Examiner determined that the claims are similar to the concept of,
"comparing new and stored information and using rules to identify options"
as in the "abstract idea in SmartGene" and "are directed to Targeted
Advertising which is a 'fundamental economic practice.'" Final Act. 8-9.
The Specification states:
In general, a coupon 1s a certificate or other
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Spec, ,r 4.
document that entitles its holder to accept an offer
described or referenced by the coupon. The offer,
also subsequently referred to as the 'coupon offer,'
may be any type of offer, but typically is an offer
by the coupon provider to provide a customer with
one or more goods or services at a particular price
or discount, or to provide the customer with a gift
in exchange for the performance of an act, such as
purchasing a good or service. A coupon often
takes a 'hard copy' form, such as a paper
certificate, with printed images and/ or text
describing terms of the offer. The process of the
customer accepting a coupon offer by presenting,
referencing, or otherwise providing a coupon while
purchasing, contracting, or otherwise transacting
with another party is 'redeeming' the coupon. For
example, a customer may redeem a hard copy of a
coupon by handing the copy to a clerk during a
purchase at a retail store. The clerk may then
provide the customer with the offered discounted
price or gift.
Thus, all this evidence shows that claim 1 is directed to using a
customer identifier to match the customer to a coupon, redeem those
coupons, and provide a receipt with new coupons if the identity of the user
can be discerned. It follows from prior Supreme Court cases, and
Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that the claims at
issue here are directed to an abstract idea. Using a customer identifier to
match the customer to a coupon, redeem those coupons, and provide a
receipt with new coupons if the identity of the user can be discerned is a
fundamental economic principle because it matches buyer and seller to
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products which are desired by customer. The patent-ineligible end of the 35
U.S.C. § 101 spectrum includes fundamental economic principles. See Alice
Corp. Pty. Ltd., 134 S. Ct. at 2357. Thus, using a customer identifier to
match the customer to a coupon, redeem those coupons, and provide a
receipt with new coupons if the identity of the user can be discerned is an
"abstract idea" beyond the scope of§ 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of using a customer identifier to match the customer to a coupon, redeem
those coupons, and provide a receipt with new coupons if the identity of the
user can be discerned, at issue here. Both are squarely within the realm of
"abstract ideas" as the Court has used that term. That the claims do not
preempt all forms of the abstraction or may be limited to coupon
distribution, does not make them any less abstract. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
Claim 1, unlike the claims held non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission, and
linkage and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (determining claims not abstract
because they "focused on a specific asserted improvement in computer
animation").
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The introduction of a computer into the claims does not alter the
analysis at Mayo 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 pre-emption
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 Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (internal
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." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer 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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industry. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 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) (internal citation omitted).
Considered as an ordered combination, the computer components of
Appellant's method 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) (holding that the 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), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, 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.
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The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field. The 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. ,r,r
22-30, 80-94, 98, 200 (paragraph 92 describing, "retail server 540, coupon
server 510, or any other server described herein may include or be coupled
to a variety of different components for implementing the techniques
described herein;" paragraph 98 disclosing, "[i]n one embodiment, coupon
server 510 is a general-purpose computer that comprises one or more
processors, and memory, mass storage device, or other non-transitory
computer-readable storage media storing instructions which, when loaded
and executed, cause the one or more processors to perform the operations
that are further described herein; paragraph 200 describing, "Hardware
processor 904 may be, for example, a general purpose microprocessor.")
The Specification does not describe any particular improvement in the
manner a computer functions, at least with respect to the claims in the
instant application. Instead, the claims at issue amount to nothing
significantly more than instructions to apply the abstract idea of information
access and retrieval using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We have reviewed all the arguments (Appeal Br. 10-28) that the
Appellant has submitted concerning the patent eligibility of the claims
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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 completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues, "The Office Action Fails to State a Prima Facie
Case of Ineligibility under the Office's Examining Guidance." (Appeal
Br. 10).
We disagree with the Appellant. We understand the Examiner,
through citation to the July 2015 Update (Final Act. 9, Ans. 6-7), to rely on
prior court decisions finding that certain computer functions are
well-understood, routine, and conventional functions. These prior court
decisions adequately support this finding to satisfy the requirement to set
forth a prima facie case ofunpatentability under 35 U.S.C. § 101. The
Examiner's analysis was thus sufficient to put Appellant on notice of the
basis for the ground of rejection and to allow Appellant to recognize and
seek to counter the grounds of rejection. See In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011).
In this regard too, there is no requirement that examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See, e.g., section IV, "JULY 2015
UPDATE: SUBJECT MATTER ELIGIBILITY" to 2014 INTERIM GUIDANCE ON
PATENT SUBJECT MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) ("The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
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do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings." (emphasis added) (footnote omitted)). We
agree that evidence may be helpful in certain situations where, for instance,
facts are in dispute. 2 But, it is not always necessary. Based on the above
analysis and that set forth by the Examiner (Final Act. 6-10), we are
unpersuaded it is necessary in this case.
As to Appellant's argument that:
The Federal Circuit panel stated unequivocally that
the abstract idea there was limited to the circumstances of
the case, 'in which every step is a familiar part of the
conscious process that doctors can and do perform in
their heads.' Slip op. at 9. The court further clarified
that 'Whatever the boundaries of the 'abstract ideas'
category, the claim at issue here involves a mental
process excluded from section 101.' Id. Thus SmartGene
is limited to cases where the claimed process consists of
mental steps.
Appeal Br. 14.
We disagree with Appellant. Whether a claim is found patent
ineligible based on one of either mental activity or abstraction is not
dispositive because in both cases the ultimate result is patent ineligibility.
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
2 See, e.g., MPEP § 2106. 07 ( a )(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require 'evidence' that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues." (citations omitted)).
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Cir. 2011). In fact, the Federal Circuit confirmed that Appellant's argument
is a distinction without a difference stating that it "recognized that 'mental
processes' and 'abstract ideas' ( whatever may be the precise definition and
relation of those concepts) are excluded from section 101." SmartGene,
Inc., 555 Fed. Appx. at 955.
Appellant argues, "if the claims recite limitations that are not generic
computer functions and go beyond the Alleged Abstract Idea, then the
claims cannot be rejected as lacking 'significantly more' than the abstract
idea." Appeal Br. 21.
As found supra, we fail to find anything in the claims before us which
shows that the claims recite limitations that are not generic computer
functions. A general purpose computer programmed to perform
conventional functions does not amount to an inventive concept such that the
claims are significantly more than the abstract idea. See EON Corp. IP
Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015).
Appellant's Specification does not support a computer system which is
employed to effect the claimed ratings, as anything more than a generic
computer. See, e.g., Spec. ,r,r 80-94 (i-f 84 describing generically "Terminal
542 is a computing device operated by a retailer for conducting in-store (i.e.
'point of sale' or 'brick and mortar') transactions.") Claim 1 recites at best
and only generically, a retailer computer with a microprocessor and a
memory, and a card reader. The recitation of a practical application for an
abstract idea is not sufficient to transform the abstract idea into a patent-
eligible invention. See Cy her Source Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S.
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584 (1978)] rejected the notion that the recitation of a practical application
for the calculation could alone make the invention patentable."). A claim for
a new abstract idea is still an abstract idea. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151. Also, "[a]n abstract idea can
generally be described at different levels of abstraction." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016).
On pages 22 through 26, Appellant sets forth a list of limitations from
independent claims 1, 7, and 21 alleging that the "recitations are not
generic". Appeal Br. 22, 24, 25. Appellant maintains that, "[t]hese
limitations per se are recited specifically rather than generically, and
therefore qualify as 'significantly more'". Id. at 26.
We disagree with Appellant because Appellant's recitations merely
comingle abstraction idea steps with generic computer processing which
cannot effect patent eligibility from an otherwise mental process. "[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." Alice, 134
S. Ct. 2358 ( citation omitted).
Nor do we agree with Appellant that the claims before us are similar to
those in Enfish v Microsoft and Bascom Global Internet to warrant a finding
of patent eligibility. Appeal Br. 26, 27. The court in Enfish 3 put the
question as being "whether the focus of the claims is on [a] specific asserted
3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfzsh, 822 F.3d at 1335-1336. The Enfzsh court found that the
"plain focus of the claims" was on "an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity." Id. at 1336. Here we find and the
Specification, e.g., ,r 2, supports that the plain focus of the claims is to
coupon distribution. In Bascom Global Internet v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016), an intermediary is inserted between two
otherwise conventional computer nodes to move the location where a
process is otherwise ordinarily executed. Thus, in Bascom it was filtering
between computer nodes which was the plain focus of the claims and the
improvement was rooted in the ways of internet technology. No such
improvement in technology is apparent from the Appellant's claims or
Specification.
Appellant argues, "Limitations that are so specific as to distinguish
all art of record cannot properly be deemed as so generic that they are a
"generic computer function". (Appeal Br. 26).
We disagree with Appellant. A claim for a new abstract idea is still an
abstract idea. See Synopsys, 839 F.3d at 1151. Also, "[a]n abstract idea can
generally be described at different levels of abstraction." Apple, 842 F.3d at
1240-41. A general purpose computer programmed to perform
conventional functions does not amount to an inventive concept such that the
claims are significantly more than the abstract idea. See EON Corp., 785
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F.3d at 623. Appellant's Specification does not support a computer system
which is employed to effect the claimed offers, as anything more than a
generic computer. (See, e.g., Spec. ,r 199 describing the system "may
include one or more general purpose hardware processors programmed to
perform the techniques pursuant to program instructions in firmware,
memory, other storage, or a combination.)
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims based on the record before us.
35 U.S.C. § 112 REJECTION
Examiner rejected claims 1-3, 7, 8,10,11,13, 21, 22, 24, 25, 28-30,
32, and 37 under 35 U.S.C. § 112 as failing the written description
requirement in "that the appellant does not have support specification for
excluding a payment type which is a negative limitation and MPEP §
2173.05(i) provides direction that the negative limitation must be either
explicit or so obvious it is inherent." Final Act. 3.
Appellant however argues, "claim 1 recites 'the use of [the second
coupon offer] is conditioned upon a type of payment used in a subsequent
transaction that is different from the type of payment displayed in the
payment information."' Answer 8.
We agree with Appellant. Claim 1 requires "electronic receipt and the
use of which is conditioned upon a type of payment used in a subsequent
transaction that is different from the type of payment displayed in the
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payment information," which is different from what the Examiner recites as
the problematic language, i.e., "excluding a payment type", and thus we will
not sustain this rejection. Therefore, we will not sustain the rejection under
35 U.S.C. § 112(a).
35 U.S.C. § 103(a) REJECTION
Each of independent claims 1, 7 and 21 recite in one form or another:
the new coupon offer having been selected based on the
first item and including, at the end of the electronic
receipt, data describing a second coupon offer, the
second coupon offer having been selected based on
payment information included within the electronic
receipt and the use of which is conditioned upon a type of
payment used in a subsequent transaction that is different
from the type of payment displayed in the payment
information, the second coupon displayed in the
electronic receipt directly adjacent to the payment
information;
Claim 1, Claims App 'x.
The Examiner found that "Song teaches generating a coupon for a
competitive product (a different payment type is a competitive product) in at
paragraph O 101." Final Act. 16.
Appellant argues:
The Office Action alleges that Song "teaches generating
a coupon for a competitive product (a different payment
type is a competitive product)". Office Action at 16.
However, the Office Action improperly assumes that a
payment type is a product. The Examiner has provided
no support for this contention or argument indicating that
a purchased product is equivalent to a payment type. In
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Song, when "a purchase of a specific product" is
detected, an advertisement for another competitive
product is transmitted. Song at [O 101]. Therefore, the
ability to purchase a product is an essential characteristic
of the products in Song. However, a payment type, unlike
a product, is not purchased. For example, people do not
"purchase" cash or credit cards. Rather, payment types
are services provided by a retailer, a credit card company,
a bank, or other financial entity. Because payment types
are not purchased like the products in Song, they are not
interchangeable with the products of Song.
Appeal Br. 30.
We agree with Appellant. Our review of Song at paragraph 101
reveals that it is "the purchase of a specific product ( a famous brand of a
product) may be defined as a composite event and an advertisement for
another competitive product or a discount coupon may be transmitted when
such an event is detected." Thus, Song discloses basing the second offer on
the brand of a product, and not a payment type that "is different from the
type of payment displayed in the payment information." It is not apparent
and the Examiner has not explained how this is an obvious difference.
Therefore, we will not sustain the rejection of independent claims 1, 7 and
21 under 35 U.S.C. § 103 or the claims which depend therefrom.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-3, 7, 8,
10, 11, 13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 101.
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We conclude the Examiner did err in rejecting claims 1-3, 7, 8, 10,
11, 13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 112 first
paragraph.
We conclude the Examiner did err in rejecting claims 1-3, 7, 8, 10,
11, 13, 21, 22, 24, 25, 28-30, 32, and 37 under 35 U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1-3, 7, 8, 10, 11, 13, 21,
22, 24, 25, 28-30, 32 and 37 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED.
19