Ex Parte Corner

Patent Trials and Appeals Board

May 20, 2019

13356277 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/356,277
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
01/23/2012
05/22/2019
FIRST NAMED INVENTOR
Katherine Ann Corner
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.
BOKU-P060 5157
EXAMINER
PEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/22/2019 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):
ariana@matterlightip.com
s tephen @matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KA THERINE ANN CORNER
Appeal 2017-011716
Application 13/356,277
Technology Center 3600
Before JASON V. MORGAN, ERIC B. CHEN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3, 4, 6-8, 10-12, 14, 15, and 17-21. Claims 2, 5, 9, 13, and 16
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
Appellant's invention relates to managing electronic transactions,
such that an applied dynamic amount (e.g., discount) is based on historic
transaction data of multiple charge requests of a consumer account.
(Abstract.)
Appeal 2017-011716
Application 13/356,277
Claim 1 is exemplary, with disputed limitations in italics:
1. A computer system for generating dynamic offers,
compnsmg:
a server computer system including:
a processor;
a non-transitory computer-readable medium connected to
the processor;
a network interface device connected to the processor;
and
a set of instructions on the non-transitory computer-
readable medium, the set of instructions being executable by the
processor and including:
a data store;
a plurality of respective consumer accounts in the data
store, each consumer account having a first consumer account
identifier, the consumer accounts including at least first and
second consumer accounts;
a transaction processing system that includes an account
lookup and debit module (i) generating historic transaction data,
the historic transaction data including amounts, for each one of
the consumer accounts, including receiving, with the processor,
a first charge request over the network interface device, the first
charge request including an amount and a second consumer
account identifier, identifying, with the processor, a selected
one of the consumer accounts by associating one of the first
consumer account identifiers with the second consumer account
identifier, and processing, with the processor, the first charge
request based on an account detail of the selected consumer
account, and (ii) storing the historic transaction data in the
respective consumer account in the data store such that data
store includes the respective consumer account and the
respective consumer account includes the respective consumer
account identifier and the respective historic transaction data;
a plurality of merchant accounts in the data store, each
merchant account having a merchant account identifier;
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a merchant account management system generating
voucher entry data for one of the merchant accounts, including
receiving, with the processor, a voucher entry from a merchant
computer system over the network interface device, and storing,
with the processor, the voucher entry in the data store in
association with the merchant account having the respective
merchant account identifier wherein the merchant account
management system, with the processor, receives and stores an
offer limit;
a dynamic discount amount calculation module
dynamically determining a dynamic discount amount associated
with the voucher entry and the dynamic discount amount is
limited to fall within the offer limit, the dynamic discount
amount being calculated based on at least one of the amounts
in the historic transaction data of the first consumer account
and being different for the first consumer account based on the
amounts in the historic transaction data of the first consumer
account than for the second consumer account based on the
amount in the historic transaction data of the second consumer
account;
a push module associating, with the processor, the
voucher entry with the first consumer account identifier of the
first consumer account, the voucher entry including the
dynamic discount amount calculated for the first consumer
account such that data store includes the respective consumer
account and the respective consumer account includes the
respective consumer account identifier, the respective historic
transaction data, and the respective voucher entry including the
dynamic discount amount calculated based on the respective
historic transaction data; and
a voucher redemption system identifying a selected one
of the voucher entries, the transaction processing system
processing a transaction, including receiving, with the
processor, a second charge request over the network interface
device, the second charge request including a first amount and a
second consumer account identifier, identifying, with the
processor, a selected one of the consumer accounts by
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associating one of the first consumer account identifiers with
the second consumer account identifier, and
processing, with the processor, the second charge request
based on the dynamic discount amount of the selected
consumer account, wherein the transaction processing system
includes an account lookup and debit module that adjusts the
first amount to a second amount that is less than the first
amount based on the dynamic discount amount of the selected
voucher entry calculated for the respective consumer account,
and processes the second amount based on the account detail of
the selected consumer account.
Claims 1, 3, 4, 6-8, 10-12, 14, 15, and 17-21 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
Claims 1, 4, 6-8, 10-12, 15, and 17-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Arthur (US 2008/0208762 Al; Aug. 28,
2008), Fordyce (US 2011/0093327 Al; Apr. 21, 2011), and Bemmel
(US 2008/0097851 Al; Apr. 24, 2008).
Claims 3 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arthur, Fordyce, Bemmel, and Nakashima (US
2005/0033675 Al; Feb. 10, 2005).
ANALYSIS
§ 1 OJ Rejection
We are persuaded by Appellant's arguments (Br. 21) that the
Examiner has not satisfied the proper burden for making a prima facie case
for patent ineligibility under 35 U.S.C. § 101.
With respect to independent claims 1 and 12, the Examiner
determined the claims are directed to "generating dynamic offers," including
"the abstract concepts of a fundamental economic practice based on
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processing financial transactions and collecting, comparing and storing
data," as in Electric Power Group. (Final Act. 4-5; see also Ans. 18.) The
Examiner further determined:
The step of generating historic transaction data for consumer
accounts data gathering activity as well as collecting and
comparing data as in Classen ( e.g. receiving a charge request
and associating account identifiers). The step of generating
merchant off er data, receiving a voucher entry and storing in
associating with a merchant account is data gathering and
storage activity. The step of dynamically determining a
discount amount associated with a voucher by calculating based
on an amount in historic transaction data is comparing data and
rules to determine a result as in Smartgene. The step of
associating the voucher entry with the consumer account
identifier comparing and organizing information. The step of
processing a transaction including receiving a charge request,
identifying a selected consumer account, identifying a voucher
entry and adjusting the charge amount is similar to collecting
and comparing data as in Classen and as a financial transaction
it is reflective of a fundamental economic practice.
(Ans. 3-4; see also Final Act. 4-5.) Similarly, the Examiner determined that
"a financial transaction ... is reflective of a fundamental economic practice
similar to OIP Tech involving price optimization." (Ans. 18.) We agree that
the Examiner has not satisfied the proper burden for a prima facie case.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014) ( citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
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and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
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protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77, (alterations in
original)). "[M]erely requir[ing] generic computer implementation[] fail[s]
to transform that abstract idea into a patent-eligible invention." Id.
The United States Patent and Trademark Office recently published
revised guidance on the application of§ 101. USPTO's 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed.
2018).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Although the Examiner provides several generalized statements with
citations to multiple Federal Circuit cases (see Ans. 18), these statements
neither: (a) identify the specific limitations in the claims under examination
that the Examiner believes recites an abstract idea; nor (b) demonstrate the
identified limitations fall within the subject matter groupings of abstract
ideas of mathematical concepts, certain methods of organizing human
activity, or mental processes. See 84 Fed. Reg. at 56. In particular, the
Examiner neither accounts for all the limitations recited in claim 1, nor
adequately articulates why the claimed concepts are analogous to the facts of
Classen, Smartgene, Electric Power, and OIP Technologies.
Accordingly, we are persuaded by Appellant's arguments that
"describing the claims [ as to the abstract idea of' generating
dynamic offers'] at such a high level of abstraction and untethered from the
language of the claims all but ensures that the exceptions to § 101 swallow
the rule." (Br. 21.)
Thus, we do not sustain the rejection of independent claim 1 under
35 U.S.C. § 101. Claims 3, 4, 6-8, 10, and 11 depend from independent
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claim 1. We do not sustain the rejection of claims 3, 4, 6-8, 10, and 11
under 35 U.S.C. § 101 for the same reasons discussed with respect to
independent claim 1.
Independent claim 12 recites limitations similar to those discussed
with respect to independent claim 1. We do not sustain the rejection of
claim 12, as well as dependent claims 14, 15, and 17-21, for the same
reasons discussed with respect to claim 1.
§ 103 Rejection-Arthur, Fordyce, and Bemmel
We are unpersuaded by Appellant's arguments (Br. 3 0-31) that the
combination of Arthur, Fordyce, and Bemmel would not have rendered
obvious independent claim 1, which includes the limitation "the dynamic
discount amount being calculated based on at least one of the amounts in the
historic transaction data of the first consumer account."
The Examiner found that the mobile advertisements of Fordyce, in
which coupons are generated based on prior purchases, correspond to the
limitation "the dynamic discount amount being calculated based on at least
one of the amounts in the historic transaction data of the first consumer
account." (Ans. 20-21; see also Final Act 10-11.) We agree with the
Examiner's findings.
Fordyce relates to "the processing of transaction data, such as records
of payments made via credit cards" and "providing information based on the
processing of the transaction data." (,-J 2.) Fordyce explains that "[i]n one
embodiment, mobile advertisements, such as offers and coupons, are
generated and disseminated based on aspects of prior purchases, such as
timing, location, and nature of the purchases, etc." (,-J 70.) Because Fordyce
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explains that mobile advertisements, including coupons, 1 are generated and
disseminated based on aspects of prior purchases, Fordyce teaches the
limitation "the dynamic discount amount being calculated based on at least
one of the amounts in the historic transaction data of the first consumer
account."
Appellant argues that "Fordyce does not appear to disclose that
discount amounts are calculated based on historic transaction data," because
"Fordyce only appears to disclose that distribution of offers is controlled
using spending profiles." (Br. 30 (emphasis omitted).) In particular,
Appellant argues that "Fordyce [paragraph 70] does not suggest that an
amount of the discount is calculated based on historic transaction data." (Id.
(emphasis omitted).) Contrary to Appellant's arguments, Fordyce explains
that "mobile advertisements, such as ... coupons, are generated and
disseminated based on aspects of prior purchases, such as timing, location,
and nature of the purchases .... " (ii 70.) Accordingly, the limitation
"historic transaction data of the first consumer account" is broad enough to
encompass prior purchases of Fordyce, such as timing, location, and nature
of the purchases.
Appellant further argues "that claim 1 defines a discount as a first
amount that is adjusted to a second amount with the discount" and "[ n Jot
every offer or reward is a discount." (Br. 31.) However, Fordyce further
explains that "mobile advertisements, such as ... coupons, are generated and
1 A "coupon" is defined as "a small piece of paper that allows one to get a
service or product for free or at a lower price." MERRIAM-WEBSTER'S
COLLEGIATE DICTIONARY 266 (10th ed. 1999).
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disseminated." (ii 70.) One of ordinary skill in the art would recognize that
a coupon permits a buyer to receive a discount on goods or services.
Thus, we agree with the Examiner that the combination of Arthur,
Fordyce, and Bemmel would have rendered obvious independent claim 1,
which includes the limitation "the dynamic discount amount being
calculated based on at least one of the amounts in the historic transaction
data of the first consumer account."
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103(a). Claims 4, 6-8, 10, and 11 depend from claim 1, and
Appellant has not presented any additional substantive arguments with
respect to these claims. Therefore, we sustain the rejection of claims 4, 6-8,
10, and 11 under 35 U.S.C. § 103(a), for the same reasons discussed with
respect to independent claim 1.
Independent claim 12 recites limitations similar to those discussed
with respect to independent claim 1, and Appellant has not presented any
substantive arguments with respect to this claim. We sustain the rejection of
claim 12, as well as dependent claims 15 and 17-21 for the same reasons
discussed with respect to claim 1.
§ 103 Rejection-Arthur, Fordyce, Bemmel, and Nakashima
Although Appellant nominally argues the rejection of dependent
claims 3 and 14 separately (Br. 32), the arguments presented do not point out
with particularity or explain why the limitations of these dependent claims
are separately patentable. Instead, Appellant merely argues: (i) "[ c ]laim 3
depends from claim 1 and should be allowable for at least the same reasons
as claim l "; and"[ c ]laim 14 depends from claim 12 and should be allowable
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for at least the same reasons as claim 12." (Id.) We are not persuaded by
these arguments for the reasons discussed with respect to claims 1 and 12,
from which claims 3 and 14 depend. Accordingly, we sustain this rejection.
DECISION
The Examiner's decision rejecting claims 1, 3, 4, 6-8, 10-12, 14, 15,
and 1 7-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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