Ex Parte CHAUHAN

Patent Trial and Appeal Board

Sep 14, 2018

14310424 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/310,424 06/20/2014
21839 7590 09/18/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Rohit CHAUHAN
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.
0076412-000271 1310
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT CHAUHAN
Appeal2017-003599
Application 14/310,424 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
Per curiam.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is MasterCard
International Incorporated (App. Br. 2).
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CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to assigning a spend
profile to a user's mobile device by matching locations visited by the user's
mobile device to locations included in a particular spend profile (Spec.
,r,r 43--45, Abstract). Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A method for assigning a spend profile to a mobile device
based on location and transaction data, comprising:
storing, in a profile database of a processing server, at least
one spend profile, wherein each of the at least one spend profile
includes a plurality of transaction data entries, each transaction
data entry including data related to a payment transaction
involving a common consumer and including at least a location
identifier indicative of a geographic location at which the
payment transaction occurred, transaction data associated with
the payment transaction, and timing information indicative of a
time at which the transaction occurred;
receiving, by a receiving device of the processing server,
a plurality of location data entries, wherein each location data
entry (i) includes data related to a mobile communication device
that is not associated with transaction data included in any spend
profile of the at least one spend profile stored in the profile
database and (ii) includes at least a geographic location of the
mobile communication device and a time and/or date at which
the corresponding geographic location of the mobile
communication device was identified;
identifying, by a processing device of the processing
server, a specific spend profile of the at least one spend profile
stored in the profile database for association with the mobile
communication device by matching location data entries of the
mobile communication device, received by the processing
device, to transaction data entries included in the specific spend
profile based on (i) a comparison between the geographic
location and time and/or date included in respective location data
entries, received by the processmg device, and the location
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identifier and timing information included in respective
transaction data entries, and (ii) a predetermined tolerance level;
and
storing, in a mobile information database of the processing
server, the mobile communication device in association with the
identified specific spend profile.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Blackhurst et al. US 2011/0246306 Al
Falkenborg et al. US 2012/0022945 Al
REJECTIONS
Oct. 6, 2011
Jan.26,2012
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter (Final Act. 2-5).
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Blackhurst and Falkenborg (id. at 5-18).
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l).
ISSUE 1
35 U.S.C. §101: Claims 1-20
Appellant argues the invention as recited in claims 1-20 is directed to
patent-eligible matter (App. Br. 5-19). The issue presented by the
arguments is:
Issue 1: Has the Examiner erred in concluding the claims are directed
to patent-ineligible subject matter?
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ANALYSIS
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts" (Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1296-97 (2012))). The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts" (id.). If so, the second step is to consider the elements of the
claims "individually and 'as an ordered combination' to determine whether
the additional elements 'transform the nature of the claim' into a patent-
eligible application" (id. ( quoting Mayo, 132 S. Ct. at 1297-98)). In other
words, the second step is to "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" (id. (brackets in original) (quoting Mayo, 132 S.
Ct. at 1294)).
First Step
We agree with the Examiner's conclusion that independent claims 1
and 11 are directed to patent-ineligible subject matter. We first observe that
independent claim 1 is directed a method claim and independent claim 11 is
a system claim. As such, claims 1 and 11 are each are each directed to
statutory subject matter within the meaning of 3 5 U.S. C. § 101.
Next, we analyze the claims to determine whether they are directed to
any judicial exception, e.g., an abstract idea. Addressing the claim
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limitations as a whole and as an ordered combination, we agree with the
Examiner that the claims recite an ordered combination of abstract-idea
processes (see Ans. 3). Our reviewing court has reiterated that "claims
focused on 'collecting information, analyzing it, and displaying certain
results of the collection and analysis' are directed to an abstract idea"' (SAP
Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) (quoting
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016))). Our reviewing court has further determined that "classifying and
storing" data is directed to an abstract idea (In re TL! Commc 'ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)). Here, the Examiner determines
that the "claims provide steps for compiling and storing consumer data" and
further analyze that data by "recit[ing] steps for comparing information (i.e.
consumer location and transaction data) and us[ing] rules (i.e. matching
criteria) to identify options (i.e. which spend profile a mobile
communication should be associated with)" (Ans. 3). Indeed, the claims
recite steps for collecting information, i.e., "storing ... at least one spend
profile ... includ[ing] a plurality of transaction data entries" and
"receiving ... a plurality of location data entries." The next step recited by
the claims, is for analyzing that collected information, i.e., "identifying ... a
specific spend profile ... by matching location data entries ... to transaction
data entries." Moreover, the final step recited by the claims requires nothing
more than storing results of that analysis, i.e., "storing, in a mobile
information database." The claims, thus, recite the combination of those
abstract-idea processes to provide a process of analyzing consumer data
valuable for marketing. As such, the claims are directed to an abstract idea
(Elec. Power, 830 F.3d at 1354).
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That the "claims allow for analytics to be implemented on merchant
data and cellular data to generate a particular type of consumer profile which
may be dependent upon activity conducted by a consumer" (App. Br. 9)
does not change the abstract nature of the claims. "As many cases make
clear, 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, 890 F .3d at 1022 ( citations
omitted)). Here, specifying that the data is consumer activity data
categorizes the abstract idea but does not serve to make the claims less
abstract (id.).
Further, we disagree with Appellant that the claims "reflect[] a
technical solution to a technical problem" (App. Br. 6, 9-10, 18; Reply
Br. 3--4) or that the "claims are directed to providing a technical solution that
is inextricably tied to (inseparable from) a computer-implemented
environment" (App. Br. 13-14 (emphasis omitted)). The subject matter of
the application addresses "privacy issues for consumers" to improve the
"low success rate" of certain advertisements and offers (Spec. ,r,r 2-3),
which is directed to a business problem, not a technical problem. In
particular, the focus of the claims is not any improved computer or network,
but the improved matching of a spending profile to a user's mobile device to
provide relevant advertisements to the user (see id.). Matching spending
propensities, i.e., a profile, to a user via the user's mobile device does not
improve computing systems; rather it uses computing systems only to
implement the match. Indeed, the Specification discloses that off-the-shelf
and generic computer technology is usable to carry out the analysis that
matches a profile to the user's mobile device (Spec. ,r,r 57 ("such logic may
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execute on a commercially available processing platform"), 60 ("Processor
device 704 may be ... a general purpose processor device")). The claims
here "fit into the familiar class of claims that do not 'focus ... on [ ] an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools'" (SAP, 890 F.3d at 1022 (citing Elec.
Power, 830 F.3d at 1354)).
Second Step
Because the claims are directed to an abstract idea, we next consider
whether the additional elements recited by the claims transform the claims
into a patent-eligible application of the claimed subject matter. We agree
with the Examiner that the claims do not (Final Act. 5).
Appellant argues that "[t]he record does not suggest that the various
functional features of Claim 1 or Claim 11 be implemented on a generic,
unspecified computer, as a generic computer is not capable of performing
the functional features recited in the claims" (App. Br. 16 ( emphasis
omitted)). However, neither the claims nor the Specification support that
assertion. As discussed supra, the Specification teaches (Spec. ,r,r 57, 60)
the abstract idea is implemented using already available computers, with
their already available functions. Further, the "claims at issue do not require
any nonconventional computer" components or functions and instead
"merely call for performance of the claimed information collection [ and]
analysis ... 'on a set of generic computer components"' (Elec. Power, 830
F.3d at 1355 (citing Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016))). In particular, the claims recite
databases and servers with processors that perform their routine functions,
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i.e., databases to store data and processors to process data. And our
reviewing "court has ruled many times that 'such invocations of computers
and networks that are not even arguably inventive are insufficient to pass the
test of an inventive concept in the application of an abstract idea" (SAP, 890
F.3d at 1023 (citing Elec. Power, 830 F.3d at 1355)).
Additionally, Appellant's argument that "the present claims do not
pre-empt all manners in which spend profiles are assigned to mobile
devices" (App. Br. 12 (emphasis omitted); Reply Br. 4) does not persuade us
that the claims are directed to patent-eligible subject matter. Although
preemption is characterized as a driving concern for patent eligibility,
preemption itself is not the test for patent eligibility. Rather, "[ w ]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility" (Ariosa
Diagnostics, Inc. v. Sequenom, 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Where claims are deemed to recite only patent-ineligible subject matter
under the two-step Alice analysis, as they are here, "preemption concerns are
fully addressed and made moot" (id.).
Accordingly, Appellant has not persuaded us independent claims 1
and 11 are directed to patent-eligible subject matter. Further, Appellant has
not proffered sufficient evidence or argument to persuade us that any of the
limitations in the dependent claims provide a meaningful limitation that
transforms the claims into a patent eligible application. Therefore, we
sustain the rejection of claims 1-20 under 35 U.S.C. § 101 as not being
directed to patent-eligible subject matter.
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ISSUE 2
35 U.S.C. § 103(a): Claims l, 3, 5, 7, 11, 13, 15, and 17
Appellant contends the invention as recited in claims 1 and 11 is
patentable over Blackhurst and Falkenborg (App. Br. 19-25). The issues
presented by the arguments are:
Issue 2a: Has the Examiner shown Blackhurst teaches each of:
at least one spend profile includ[ing] a plurality of transaction
data entries, each transaction data entry including ... transaction
data ... and timing information indicative of a time at which the
transaction occurred ... [and]
a plurality of location data entries, wherein each location data
entry (i) includes data related to a mobile communication device
that is not associated with transaction data included in any spend
profile of the at least one spend profile stored in the profile
database and (ii) includes at least a geographic location of the
mobile communication device and a time and/or date at which
the corresponding geographic location of the mobile
communication device was identified,
as recited in claim 1 and similarly recited in claim 11?
Issue 2b: Has the Examiner shown Falkenborg teaches
identifying ... a specific spend profile ... by matching location
data entries of the mobile communication device . . . to
transaction data entries included in the specific spend profile
based on (i) a comparison between the geographic location and
time and/or date included in respective location data entries ...
and the location identifier and timing information included in
respective transaction data entries, and (ii) a predetermined
tolerance level,
as recited in claim 1 and similarly recited in claim 11?
Issue 2c: Has the Examiner shown the combination of Blackhurst and
Falkenborg teaches "storing ... the mobile communication device in
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association with the identified specific spend profile," as recited in claim 1
and similarly recited in claim 11?
ANALYSIS
Issue 2a
Appellant argues "[i]n the present claims, a mobile communication device,
from which location data entries are received, is not initially associated with
any transaction data," but "[i]n Blackhurst, the consumer's mobile phone is
linked [to] his/her financial accounts" (App. Br. 21; Reply Br. 7-8).
Appellant further argues Blackhurst does not teach "a plurality of transaction
data entries, where each of the transaction data entries include a location
identifier and transaction data along with timing information" (Reply Br. 6-
7).
We are not persuaded. The Examiner relies on two non-mutually
exclusive embodiments in Blackhurst to describe "two separate sources" of
data, i.e., 1) spend profile data including transaction data entries and 2)
location data from a user's mobile device (Ans. 8-9; see Blackhurst claims
1-5). We agree with the Examiner's finding that the first "embodiment in
paragraph [0006]" of Blackhurst (Ans. 9), disclosing "a financial institution
based merchant offer program that works in connection with the customer's
financial accounts" (Blackhurst ,r 6), teaches "at least one spend profile."
We also agree with the Examiner's finding that that the second "embodiment
in paragraph [0007]" of Blackhurst (Ans. 9), disclosing a "merchant offer
program identif[ying] the position of the customer through location
determining devices ... in the mobile device" (Blackhurst ,r 7), teaches "a
plurality of location data entries."
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Appellant's argument that "[i]n Blackhurst, the consumer's mobile
phone is linked [to] his/her financial accounts" but "[i]n the present claims, a
mobile communication device, from which location data entries are
received, is not initially associated with any transaction data" (App. Br. 21;
Reply Br. 7-8) is not commensurate with the scope of the claim. The claims
recite the mobile device's "location data entry ... is not associated with
transaction data included in any spend profile of the at least one spend
profile stored in the profile database" ( emphasis added). Thus, the claims
only preclude location data entries from being associated with a particular
set of transaction data, namely, the transaction data specific to the spend
profile stored in the profile database.
As the Examiner points out, Blackhurst describes multiple sources of
generated data, i.e., embodiments, which are not associated with each other
(Ans. 8-9 (citing Blackhurst ,r,r 6-7)). Indeed, Blackhurst describes that
each customer has his or her "own merchant offer program account in the
merchant offer program application" (Blackhurst ,r 83, claim 7), and, as
such, Blackhurst generates distinct sets of customer data that are not
associated with each other. For example, in accordance with one of
Blackhurst's embodiments (Blackhurst ,r 6), a first customer generates
"transaction data entries" for the first customer's account ( spend profile)
and, in accordance with a second embodiment of Blackhurst, (Blackhurst
,r 7), a second customer generates "location data entries" for the second
customer's account. The second customer's data entries, i.e., "location data
entries," are "not associated with transaction data" entries stored in the first
customer's spend profile because each respective customer generates,
separately, the customer's own respective data.
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Further, we disagree with Appellant's argument that Blackhurst does
not teach "a plurality of transaction data entries, where each of the
transaction data entries include a location identifier and transaction data
along with timing information" (Reply Br. 6-7). The Examiner relies on
(Ans. 5; Final Act. 6) Blackhurst's "financial institution[] merchant offer
program system 3" which "stores or receives customer profile data and data
related to offline and online transactions from the account management
applications 30" (Blackhurst ,r,r 39--40) to teach a "spend profile includ[ing]
a plurality of transaction data entries." As the Examiner points out (Ans. 6),
the merchant offer program system includes, "customer transaction history
information," i.e., transaction data entries for each transaction, that
"include[s] the purchases the customer 6 has made at various stores," i.e.,
location identifiers, "the costs of the purchases," i.e., transaction data, and
"time of year and day they were made," i.e., timing information (Blackhurst
,r 85).
Issue 2b
Appellant contends the Examiner erred in finding Falkenborg teaches
identifying ... a specific spend profile ... by matching location
data entries of the mobile communication device . . . to
transaction data entries included in the specific spend profile
based on (i) a comparison between the geographic location and
time and/or date included in respective location data entries ...
and the location identifier and timing information included in
respective transaction data entries, and (ii) a predetermined
tolerance level,
as recited in claim 1 and similarly recited in claim 11 (App. Br. 22-23;
Reply Br. 8). Specifically, Appellant argues "Falkenborg compares user
data with transaction profiles, [but] this information is not specifically
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compared to location and time information of transaction data entries stored
in a profile database" (App. Br. 22-23 (emphasis omitted)).
We disagree with Appellant's argument. Instead, we agree with the
Examiner's finding that F alkenborg' s profile matching feature teaches
the disputed limitation (Ans. 9-11; Final Act. 7). In particular, the
Examiner relies on (Ans. 10) Falkenborg's description of a "select[ion of] a
user specific profile ( 13 1) from the set of transaction profiles ( 12 7) ... based
on matching the characteristics of the transaction profiles (127) and the
characteristics of the user data (125)" (Falkenborg ,r 73). Those matched
profile and user data characteristics include a "geographical location" and
the "time of day" (Falkenborg ,r 78). For example, Falkenborg describes
that transaction profiles are generated from transaction records that include
"information about the particular transaction, such as ... the date (303)
(and/or time) of the transaction ... [and] the ID (305) of the merchant who
receives the payment" (Falkenborg ,r,r 367-368, 370). That is, Falkenborg
describes matching user data to a user specific profile based on comparing
"characteristics" that include location and time/date information, as required
by the claims.
Additionally, Appellant's argument that "the threshold described
by ... Falkenborg is a measurement of the number of the frequency of
sales" rather than "a predetermined tolerance between the values contained
in the location data entries of the mobile communications device[] and the
information in the transaction data entries included in the spend profile"
(Reply Br. 8) does not persuade us of Examiner error. The Examiner
highlights (Ans. 11; Final Act. 7) that the profile matching described by
Falkenborg "may match different profiles at a different granularity or
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resolution ... with different degrees of certainty" (Falkenborg ,r 78). The
profile selector (129) and/or the profile generator (121) may determine or
select the user specific profile ( 131) with the finest granularity or resolution
with acceptable certainty" (Falkenborg ,r 79), i.e., a predetermined tolerance
level as claimed. Appellant's argument that the frequency of sales does not
teach a "predetermined tolerance level" (Reply Br. 8) does not address
Falkenborg's matching based on "a different granularity or resolution ...
with different degrees of certainty" (Falkenborg ,r 78).
Issue 2c
Appellant contends the Examiner erred in finding Blackhurst teaches
"storing ... the mobile communication device in association with the
identified specific spend profile," as recited in claim 1 and similarly recited
in claim 11 (App. Br. 23-25). Specifically, Appellant argues "according to
the present claims, because the processing server utilizes location and time
information (for matching purposes), a mobile phone need not transmit
transaction data ( or other PII to the processing server) in order to be assigned
to a specific spend profile" (id. at 25).
We are not persuaded. As discussed supra, we agree with the
Examiner's finding that Falkenborg teaches "matching location data entries
of the mobile communication device ... to transaction data entries included
in the specific spend profile" (Ans. 11). We further agree with the Examiner
that Blackhurst describes the storage of spend profiles (Final Act. 7-8). For
example, Blackhurst discloses "a datastore 19 for storing data related to the
financial institution's merchant offer program system 3" and further
discloses that "the merchant offer program application 10 stores or receives
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customer profile data and data related to offline and online transactions"
(Blackhurst ,r,r 39--40).
Appellant's argument that "a mobile phone need not transmit
transaction data ... in order to be assigned to a specific spend profile" (App.
Br. 25) is not commensurate with the scope of the claims. The claims do not
recite language which precludes the transmission of transaction data by the
mobile device for the assignment of a spend profile. Therefore, even if
transaction data are transmitted by a mobile device, the claims do not limit
the mobile device from doing so. Moreover, that argument merely proffers
an unduly narrow construction of the claims without addressing the
Examiner's combination of Blackhurst and Falkenborg. In particular, that
argument does not explain why the Examiner's finding that the combination
of Blackhurst, teaching storing spend profiles, and Falkenborg, teaching
identifying a specific spend profile, fails to teach "storing ... the mobile
communication device in association with the identified specific spend
profile" (Final Act. 7-8). Furthermore, Appellant's argument that
"Blackhurst cannot be cited to store a specific spend profile" (Ans. 24)
inappropriately attacks Blackhurst individually when the rejection is based
on the previously described combination Blackhurst and Falkenborg (In re
Keller, 642 F.2d 413,426 (CCPA 1981) (citation omitted)).
Accordingly, we are not persuaded the Examiner fails to show the
combination of Blackhurst and Falkenborg teaches or suggests the
limitations as recited in claim 1 and claim 11. Therefore, we sustain the
rejection of claims 1 and 11 under 35 U.S.C. § 103(a) as being unpatentable
over Blackhurst and Falkenborg. It follows, we also sustain the Examiner's
rejection of claims 3, 5, 7, 13, 15, and 17 under 35 U.S.C. § 103(a) as being
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unpatentable over Blackhurst and Falkenborg, for which Appellant offers no
additional persuasive arguments for patentability (see App. Br. 19-32).
ISSUE 3
35 U.S.C. § 103(a): Claims 2, 4, 6, 12, 14, and 16
Appellant contends the invention as recited in claims 2, 4, 6, 12, 14,
and 16 is patentable over Blackhurst and Falkenborg (App. Br. 26-29). The
issue presented by the argument is:
Issue 3: Has the Examiner shown the combination of Blackhurst and
Falkenborg teaches "identifying, by the processing device, at least one
content item associated with the specific spend profile; and transmitting, by
a transmitting device of the processing server, the at least one content item
to the mobile communication device," as recited in claim 2 and similarly
recited in claim 12?
ANALYSIS
Appellant contends the Examiner erred in finding Blackhurst teaches
"identifying, by the processing device, at least one content item associated
with the specific spend profile; and transmitting, by a transmitting device of
the processing server, the at least one content item to the mobile
communication device," as recited in claim 2 and similarly recited in claim
12 (App. Br. 26-27; Reply Br. 9-10). Specifically, Appellant argues
"Blackhurst is not concerned with privacy of a user because it discloses that
the consumer's mobile phone is linked [to] his/her financial accounts which
is what is used to determine the offers to make to a particular user" (App.
Br. 26).
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We are not persuaded. As discussed supra, the claims do not preclude
mobile device data from being associated with transaction data. Moreover,
Appellant's argument discussing the manner in which Blackhurst presents
offers, i.e., content, does not address the Examiner's combination of
Blackhurst and Falkenborg. The Examiner's combination (Final Act. 9)
relies on Falkenborg's description of presenting offers based on a matched
profile (Falkenborg ,r 80 ("advertisement selector (133)" uses the selected
"the user specific profile (131) to provide benefits or offers to a user")). As
such, we are not persuaded the Examiner erred in finding the combination of
Blackhurst and Falkenborg identifies and transmits "at least one content item
associated with the specific spend profile," as recited in claims 2 and 12.
Additionally, Appellant's contentions that the Examiner erred in
rejecting claims 4, 6, 14, and 16 are similar to arguments presented supra
(App. Br. 27-29) and are similarly unpersuasive. In particular, Appellant
argues "Blackhurst does not match location data entries of the mobile
communication device, to transaction data entries included in the specific
spend profile and then identify at least one content item to transmit to the
mobile communication device" (id. at 28). But, as discussed supra, that
argument does not address the Examiner's rejection over the combination of
Blackhurst and Falkenborg. Furthermore, Appellant's argument that
Blackhurst "teaches away from protecting privacy concerns for a
consumer[]" (id. at 28) is premised on Appellant's improperly narrow
interpretation of the claim, as discussed supra. Even further, that argument
is not persuasive because Appellant has not identified where Blackhurst
"criticize[ s ], discredit[ s ], or otherwise discourage[ s] the solution" (In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
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Accordingly, we are not persuaded the Examiner fails to show the
combination of Blackhurst and Falkenborg teaches or suggests the
limitations as recited in claims 2, 4, 6, 12, 14, and 16. Therefore, we sustain
the rejection 2, 4, 6, 12, 14, and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Blackhurst and Falkenborg.
ISSUE 4
35 U.S.C. § 103(a): Claims 8-10 and 18-20
Appellant contends the invention as recited in claims 8-10 and 18-20
is patentable over Blackhurst and Falkenborg (App. Br. 29-32). The issue
presented by the arguments is:
Issue 4: Has the Examiner shown Blackhurst teaches "identifying ...
a plurality of payment data entry subsets, wherein each payment data entry
subset includes each payment data entry of the plurality of payment data
entries including a common consumer identifier," as recited in claim 8 and
similarly recited in claim 18?
ANALYSIS
Appellant contends the Examiner erred in finding Blackhurst teaches
"identifying ... a plurality of payment data entry subsets, wherein each
payment data entry subset includes each payment data entry of the plurality
of payment data entries including a common consumer identifier," as recited
in claim 8 and similarly recited in claim 18 (App. Br. 29-30). Specifically,
Appellant argues "Blackhurst does not ever need to identify any plurality of
payment data entry subsets where each payment data entry of the plurality of
payment data entries includes a common consumer identifier" (id. at 29).
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We are not persuaded. Appellant argues that Blackhurst "does not
ever need" to perform the recited limitation (id.). But, whether or not
Blackhurst "need[s]" to perform the limitation does not address the
Examiner's determination that Blackhurst does perform the limitation (Final
Act. 14--15). The Examiner relies on (id.) Blackhurst's "merchant offer
program application," which is provided to a customer, to analyze
"information related to the customer's ... customer transaction history [ and]
customer profile" (Blackhurst ,r 7). That customer profile identifies "what
accounts the customer 6 has at the financial institution ( checking, savings,
equity line, etc.)" (Blackhurst ,r 47), i.e., "payment data entry subsets" which
"include a common consumer identifier."
Further, Appellant repeats the argument that Blackhurst "teaches
away from protecting privacy concerns for a consumers" (App. Br. 30). We
are not persuaded for the reasons discussed supra.
Additionally, Appellant's contention that the Examiner erred in
rejecting claims 9, 10, 19, and 20 are based on arguments that we did not
find persuasive supra (App. Br. 30-31 ). In particular, Appellant similarly
argues "Blackhurst does not identify common transaction data included in
the plurality of payment data entries included in each subset because
Blackhurst tracks a consumer via enrollment in its merchant program" (id. at
31 ). However, as discussed supra, the claims do not preclude tracking a
consumer via enrollment in a merchant program, i.e., associating a user's
mobile device location data with the user's own transaction data.
Furthermore, Appellant again repeats the argument that Blackhurst "teaches
away from protecting privacy concerns for a consumers" (App. Br. 31 ). As
discussed supra, we are not persuaded by that argument.
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Accordingly, we are not persuaded the Examiner fails to show the
combination of Blackhurst and Falkenborg teaches or suggests the
limitations as recited in claims 8-10 and 18-20. Therefore, we sustain the
rejection of claims 8-10 and 18-20 under 35 U.S.C. § 103(a) as being
unpatentable over Blackhurst and Falkenborg.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter is affirmed.
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a) as
being unpatentable over Blackhurst and Falkenborg 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.
§ 41.50(±).
AFFIRMED
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