Ex Parte Boyer et al

Patent Trial and Appeal Board

Jul 28, 2017

13437591 (P.T.A.B. Jul. 28, 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.
13/437,591 04/02/2012 R. Steven Boyer G1064.10019US01 2365
97149 7590
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
docket @ mabr. com
info@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte R. STEVEN BOYER and PETER K. GEHRKE
Appeal 2016-0033341
Application 13/437,591
Technology Center 3600
Before CARLA M. KRIVAK, ADAM J. PYONIN, and
MICHAEL M. BARRY, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Introduction
The Application relates to “electronic payments and to . . .
determining whether a consumer qualifies for an incentive, and to providing
such an incentive, based on . . . product level data.” Spec. 11. Claims 1, 8,
1 R. Steven Boyer and Peter K. Gehrke are identified as the real parties in
interest. See Appeal Brief, filed May 8, 2015 (“App. Br.”).
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Application 13/437,591
and 17 are independent. Claim 172 is reproduced below for reference
(emphasis added):
17. In a computing system including a processing unit and a
database accessible by the processing unit, a method of providing
an incentive to a consumer based on product level data including
an identifier used by a merchant to describe the one or more items
included in an inventory of the merchant, the method comprising:
storing incentive information defined by a sponsor using
the database, the incentive information including a product
identifier corresponding to a particular product for which the
sponsor is offering the incentive;
receiving transaction information from a merchant, the
transaction information relating to a transaction between the
merchant and the consumer in which a payment medium for
which the consumer holds an account with an issuer is used,
wherein the transaction information includes product level data
describing the one or more items which were purchased by the
consumer during the transaction;
obtaining payment information from the issuer of the
payment medium using the processing unit, the payment
information including information related to transactions
executed with the payment system;
comparing, using the processing unit, the payment
information with the transaction information to verily the
transaction using the payment medium occurred between the
merchant and the consumer;
comparing, using the processing unit, the incentive
information with the product level data to determine if the
product level data includes the product identifier indicating that
the consumer is entitled to the incentive offered by the sponsor;
and
determining, by a processor-based computing device
programmed to perform the determining, that the consumer is
entitled to the incentive offered by the sponsor based on the
determination that the product level data includes the product
identifier, wherein the incentive includes providing virtual
2 See Amended Appeal Brief, filed August 13, 2015.
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currency to the customer for use in a virtual gaming service and
wherein the processor-based computing device is associated
with the processing unit and communicatively coupled to the
database and wherein the computing system is communicatively
coupled to the virtual gaming service.
References and Rejections
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Van Luchene
Postrel
Senghore
Tietzen
Pinsonneault
US 2008/0207327 A1
US 7,761,378 B2
US 2011/0078011 A1
US 2011/0112897 A1
US 8,639,523 B1
Aug. 28, 2008
July 20, 2010
Mar. 31,2011
May 12, 2011
Jan. 28, 2014
Claims 1—20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. See Final Act. 6;
Adv. Act. 2.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. See Final Act. 5.
Claims 1 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tietzen, Senghore, and Pinsonneault. See Final Act. 11.
Claims 2—5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tietzen, Senghore, Pinsonneault, and Postrel. See Final
Act. 25.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tietzen, Senghore, Pinsonneault, and Van Fuchene. See
Final Act. 33.
Claims 8—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Senghore and Van Fuchene. See Final Act. 36.
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ANALYSIS
Appellants do not separately argue the claims. See, e.g., App. Br. 30.
Thus, we select claim 17 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. Any arguments Appellants could have made but chose not to
make are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We are not
persuaded the Examiner erred; we adopt the Examiner’s findings and
conclusions as our own, and we add the following primarily for emphasis.
A. 35 U.S.C. § 112, first paragraph
In the Advisory Action, the Examiner withdraws some, but not all, of
the pending written description rejections. See Adv. Act. 2 (stating,
“Applicant’s reply has overcome some of the following rejection(s)”
regarding claims 1 and 2 (emphasis added)). For example, in the Final
Office Action, the Examiner finds no written description support for the
limitation “an inventory of the merchant,” as recited by independent claims
1,8, and 17; this rejection is not withdrawn in the Advisory Action. Final
Act. 6—10; Adv. Act. 2. Thus, the Examiner’s written description rejection
is pending and on Appeal; however, Appellants do not challenge this
rejection. See App. Br. 4. Accordingly, we summarily sustain the
Examiner’s 35 U.S.C. § 112, first paragraph, rejection of independent claims
1, 8, and 17. See 37 C.F.R. § 41.37(c)(l)(iv).
B. 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
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Supreme Court, however, has long interpreted § 101 to include an implicit
exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. See Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347,
2354 (2014) (internal citation and quotation marks omitted). The Supreme
Court, in Alice, reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 79
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
that analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts,” e.g., to an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the inquiry proceeds to the
second step, where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology, or instead are directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellants argue the Examiner “fails to establish a prima facie case
that the claim is for an abstract idea,” as the Examiner “ignore[s] the specific
claim limitations.” App. Br. 9—10 (emphasis omitted). Particularly,
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Appellants contend claim 17—including limitations such as a “virtual
gaming service” and directed to a computing system performing particular
steps, including “providing virtual currency to the customer for use in [the]
virtual gaming service”—is not abstract (App. Br. 10—12, 15) and is “not
directed toward a concept similar to what the courts have found to be”
abstract concepts such as fundamental economic practices or organizing
human behavior (Reply Br. 2—3).
We are not persuaded the Examiner erred. In rejecting independent
claim 17 under 35 U.S.C. § 101, the Examiner finds the claimed invention is
unpatentable pursuant to the two-step framework of Alice. See Final Act. 2—
3, 5; Adv. Act. 2; Ans. 2—8. The Examiner finds the claimed invention is
directed to an abstract idea of “payment information and providing
incentives to consumers and as whether a consumer qualifies for an
incentive . . . which is considered an abstract idea of fundamental economic
practices and organizing human activities.” Ans. 3. The Examiner further
finds “[considered as a whole, the limitations of these claims do not do
significantly more than recite the abstract idea implemented using generic
computer technology .... [tjherefore, . . . there are no limitations in any of
the claims that transform the exception (i.e., the abstract idea) into a patent
eligible application.” Ans. 7—8. The Examiner, thus, performed a proper
§101 analysis such that the burden shifted to Appellants to explain why the
claims are patent-eligible.
Appellants also do not persuade us the Examiner’s findings and
conclusions are in error. Claim 17 is directed to, and recites, “a method of
providing an incentive to a consumer based on product level data including
an identifier used by a merchant to describe the one or more items included
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in an inventory of the merchant.” We agree with the Examiner that the
“claimed invention [is] non-statutory because it is merely the adaptation of
an age old practice of using advertising as an exchange or currency with the
requirement to perform it on a computer” (Ans. 3) — a finding fully
consistent with Appellants’ Specification. See Spec. 122 (“sponsor 110
may decide to offer an incentive, such as a rebate, discount or reward, based
on the purchase of a particular item (a good or service)”). We also agree
with the Examiner that the additional “specific claim limitations” recited by
claim 17 (App. Br. 10; see also App. Br. 9-11 (referring to steps performed
by various computers, virtual currency, and virtual gaming)) are
conventional steps, specified at a high level of generality, that do not
“ensure[] the claim amounts to significantly more than the abstract ideas
identified above.” See Ans. 5—7.
The Examiner’s findings are also consistent with prior case law,
which found claims that are similarly directed to transaction and incentive
related activities fall squarely within the realm of abstract ideas implemented
on computers. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011) (verifying credit card transactions); NexusCard,
Inc. v. Kroger Co., 173 F. Supp. 3d 462, 467 (E.D. Tex. 2016), aff’d, No.
2016-2074, 2017 WL 1908190 (Fed. Cir. 2017) (collecting customer
information and membership discount programs); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (Methods of offer-
based price optimization in an e-commerce environment); Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising as an
exchange or currency).
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Although Appellants argue that “claim 17 does not recite mere
instructions to implement on a generic computer” (App. Br. 15) (internal
citation and quotation marks omitted), Appellants do not persuasively show
the claims require anything other than generic computer functionality. See
Spec. 19-21 (describing known computing devices for processing data);
see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed.
Cir. 2016) (merely implementing an old practice in a new environment is
abstract). Accordingly, we agree with the Examiner the claims are directed
to an abstract idea. See Ans. 8.
Appellants further argue that, even if “the mere presence of an
abstract idea in the claims (information) necessarily places the claim into
part two of the test, then it is respectfully submitted that claim 17 passes
muster under part two” of the Alice framework. App. Br. 15. Appellants
contend that, “[cjlearly, Appellants’ claim 17 acts to narrow, confine, and
otherwise tie down the claim so as not to cover the general abstract idea
identified by the Examiner,” as the claim recites “very particular steps
[which] must be carried out” (id. at 16) (emphasis omitted), such as “a series
of comparisons . . . using various information to determine if a consumer is
entitled to an incentive which includes providing virtual currency to the
customer for use in a virtual gaming service” {id. at 17).
We are not persuaded the claims recite elements that transform the
nature of claim 17 into a patent-eligible application. As correctly noted by
the Examiner, “the limitations of these claims do not do significantly more
than recite the abstract idea implemented using generic computer
technology,” and there are “no improvements to another technology or field,
no improvements to the function of the computer itself, and no meaningful
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limitations beyond generally linking the use of an abstract idea to a
particular technological environment.” Ans. 7—8. That an abstract idea may
be described in greater detail does make the idea any less abstract. The
limitations comprise, at most, insignificant post-solution activities that do
not support the invention having an inventive concept. See, e.g., Mayo, 566
U.S. at 72—73 (“[T]he prohibition against patenting abstract ideas cannot be
circumvented by . . . adding insignificant post-solution activity”) (internal
citations and quotation marks omitted); see also Intellectual Ventures ILLC
v. Erie Indent. Co., 850 F.3d 1315, 1328—29 (Fed. Cir. 2017) (“[wjhile
limiting the index to XML tags certainly narrows the scope of the claims, in
this instance, it is simply akin to limiting an abstract idea to one field of use
or adding token post solution components that do not convert the otherwise
ineligible concept into an inventive concept”). It also is insufficient that the
resultant functionality, i.e., the particular operations recited in the claims,
may not be routine or conventional when, as here, the limitations are merely
part of the abstract idea implemented by generic computer components. See
Ans. 7. A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. Further, “under
the Mayo/Alice framework, a claim directed to a newly discovered law of
nature (or natural phenomenon or abstract idea) cannot rely on the novelty of
that discovery for the inventive concept necessary for patent eligibility.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
We also are not persuaded of Examiner error by Appellants’ argument
that claim 173 is patent-eligible because it does not preempt the field of the
3 Within the argument regarding lack of preemption of independent claim 17
(see App. Br. 17—19), Appellants additionally state independent claim 1
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abstract idea embodied therein. See App. Br. 18. Although the Supreme
Court has described “the concern that drives this exclusionary principle [i.e.,
the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption” {see Alice Corp., 134 S. Ct. at 2354), characterizing pre­
emption as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, 788 F.3d at 1379 (citing Alice Corp., 134 S. Ct. at 2354). Yet
although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Accordingly, we are not persuaded the Examiner erred in determining claim
17 is directed to a patent-ineligible invention. See Adv. Act. 2.
In the Reply Brief, Appellants present new arguments that the
Examiner’s 35 U.S.C. § 101 rejection is in error, because “[t]he claims are
explicitly tied to social networks.” Reply Br. 3; see also Reply Br. 4—5
(referring to social networks). Appellants’ new arguments could have been
raised in the opening brief; the sole mention of a “social network” in the
would only be infringed by a process that “includes a signal that causes the
social network to display (1) a promotion associated with at least one
sponsor and (2) an incentive which is available for a limited time and a
limited number of customers,” and that also includes “every other element of
claim 1.” App. Br. 18. Appellants do not otherwise refer to claim 1.
Although it appears Appellants do not separately argue claim 1 with respect
to preemption {see, e.g., App. Br. 19), we note that we do not find claim 1 to
be patent eligible due to preemption, for the same reasons provided for claim
17 discussed herein. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015).
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“Response to Arguments” section of the Appeal Brief, however, is with
respect to requirements for infringement of claim 1. See App. Br. 18. These
Reply Brief arguments are thus waived because they were not presented in
the opening brief and no showing of good cause was made to explain why
the late arguments should be considered by the Board. See 37 C.F.R.
§ 41.41(b)(2).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claim 17 as being directed to patent-ineligible subject
matter. Therefore, we sustain the Examiner’s 35 U.S.C. § 101 rejection.
C. 35 U.S.C. § 103(a)
Appellants argue the Examiner erred in finding claim 17 obvious in
view of Senghore and Van Luchene. See App. Br. 19—29. Particularly,
Appellants contend “[t]he cited references do not disclose or suggest an
incentive that includes ‘providing virtual currency to the customer for use in
a virtual gaming service’ as recited by claim 17,” nor do the references
disclose or suggest the following limitations of claim 17:
(1) “comparing, using the processing unit, the payment
information with the transaction information to verily the
transaction using the payment medium occurred between the
merchant and the consumer”[;]
(2) “determining, by a processor-based computing device
programmed to perform the determining, that the consumer is
entitled to the incentive offered by the sponsor based on the
determination that the product level data includes the product
identifier”; or
(3) A “computing system is communicatively coupled to the
virtual gaming service.”
App. Br. 19-20.
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We are not persuaded the Examiner erred. Although Appellants have
provided quotations of Senghore and Van Luchene along with restatements
of the claim limitations (see App. Br. 19—29), Appellants’ arguments fail to
compare and contrast the claim limitations with the Examiner’s specific
findings to show error therein. See Final Act. 45—54; Adv. Act. 2; Ans. 8—
12.
Particularly, Appellants do not challenge the Examiner’s findings that:
Van Luchene teaches selling “virtual currency and/or virtual items for one or
more virtual games or virtual worlds” (Ans. 8; Van Luchene 1447);
Senghore teaches verifying a transaction by comparing “the transaction data
(includes payment information) to the loyalty program data (transaction
information) to determine if a correlation exists between one or more
elements of each data set” (Ans. 9; Senghore Fig. 4, | 54); and Senghore
teaches “capturing and processing POS SKU [(point of sale stock keeping
unit)] data” for “determining whether the purchase transaction qualifies an
initiating purchaser for a reward” (Ans. 12; Senghore Figs. 4, 6, ^fl[ 14—15;
93). We also agree with the Examiner that Senghore in view of Van
Luchene teaches or suggests a computing system is communicatively
coupled to the virtual gaming service, as Senghore teaches communicatively
coupling computing systems (see Senghore Figs. 1, 4) and Van Luchene
teaches a virtual gaming service communicatively coupled to computing
systems (see Van Luchene ^fl[ 182, 447). See Final Act. 51—54; Ans. 8.
Accordingly, we are not persuaded the Examiner erred in finding the
limitations of independent claim 17 to be taught or suggested by the
combination of Senghore and Van Luchene. See Final Act. 54. Therefore,
we sustain the Examiner’s 35 U.S.C. § 103(a) rejections.
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DECISION
The Examiner’s decision rejecting claims 1—20 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
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