Ex Parte Gamel et al

Patent Trials and Appeals Board

Mar 22, 2019

14207870 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/207,870 03/13/2014
75564 7590 03/26/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
John Gamel
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.
21652-00351 5192
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN GAMEL and MICHAEL BERRY
Appeal2017-010705
Application 14/207,870
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection2 of claims 1, 3-10, and 12-20, which constitute all the
claims pending in this application. Claims 2 and 11 are cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is MasterCard
International Inc. App. Br. 1.
2 Herein, we refer to the Specification, filed Mar. 13, 2014 ("Spec."); Final
Office Action, mailed Sept. 29, 2016 ("Final Act."); Appeal Brief, filed Mar.
15, 2017 ("App. Br."); Examiner's Answer, mailed June 14, 2017 ("Ans.");
and the Reply Brief, filed Aug. 14, 2017 ("Reply Br.").
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Application 14/207,870
STATEMENT OF THE CASE
Embodiments of Appellants' invention relate to "processing payment
transactions, and more specifically to applying a reward to an account
associated with a cardholder based on a comparison of prices for a product
in a geographic region." Spec. ,r 1.
Exemplary Claim
1. A computer-implemented method for providing a reward
based on a price differential for a product, said method
implemented using a computing device in communication with
one or more memory devices, said method comprising:
initiating a transaction at a location of a first merchant
using a payment card of a cardholder account associated with a
cardholder;
receiving, by the computing device, a reward
determination request message including an identification of the
first merchant and product data for a product purchased in the
transaction by the cardholder from the first merchant, the
reward determination request message based on an
authorization request message sent from an electronic device of
the first merchant;
determining, by the computing device, a location of the
first merchant;
determining, using the one or more memory devices, the
price differential between a first price for the product from the
first merchant and at least a second price for the product from at
least a second merchant within a predetermined geographic
distance of the location of the first merchant; and
applying, in response to the reward determination
request message, a reward to the cardholder account, wherein
the reward is based on the determination of the price
differential by the computing device.
App. Br. 18 (Claims App'x) (Contested§ 103 limitation emphasized).
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Rejections
A. Claims 1, 3-10, and 12-20 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more.
Final Act. 2.
B. Claims 1, 3, 5-10, 12, 13, and 15-20 are rejected under 35 U.S.C.
§ 103 as being obvious over the combined teachings and
suggestions of Sharma et al. (US 9,105,022 Bl, issued Aug. 11,
2015) (hereinafter "Sharma"), and Litle (US 8,892,468 B 1, issued
Nov. 18, 2014). Final Act. 6.
C. Claims 4 and 14 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Sharma,
Litle, and Shuster (US 8,577,698 B2, issued Nov. 5, 2013). Final
Act. 16.
Issues on Appeal
A. Did the Examiner err in rejecting claims 1, 3-10, and 12-20 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
B. Did the Examiner err in rejecting claims 1, 3, 5-10, 12, 13, and
15-20, under 35 U.S.C. § 103, as being obvious over the cited
combination of prior art?
C. Did the Examiner err in rejecting claims 4 and 14 under
35 U.S.C. § 103, as being obvious over the cited combination of
prior art?
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection A under 35 USC§ 101
Principles of Law
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). 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 );
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. 175, 193
( 1981) ); "tanning, dyeing, making waterproof 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 187; 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 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 ( quotation marks omitted). "A
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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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
USPTO Patent Subject Matter Eligibility 2019 Revised Guidance
The USPTO recently published revised policy guidance on the
application of§ 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised
Guidance"). This revised guidance is applied in this opinion. Under the
2019 Revised Guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain methods of
organizing human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions between
people); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure ("MPEP")
§§ 2106.05(a}-(c), (e}-(h)). 3 2019 Revised Guidance, 84 Fed. Reg.
at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
3 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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drafting effort designed to monopolize the judicial exception. 2019 Revised
Guidance at 54. When the judicial exception is so integrated, then the claim
is not directed to a judicial exception and is patent eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 2019 Revised Guidance,
84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18. For example, we look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg.
at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
2. Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
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agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
According to the 2019 Revised Guidance, "claims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, additional limitations that are indicative of "integration
into a practical application" include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field-see MPEP § 2106.0S(a);
2. Applying the judicial exception with, or by use of, a particular
machine -see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular article to
a different state or thing-see MPEP § 2106.0S(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception-see MPEP § 2106.0S(e).
In contrast, additional limitations that are not indicative of
"integration into a practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the judicial
exception, or merely include instructions to implement an
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abstract idea on a computer, or merely uses a computer as a tool
to perform an abstract idea-see MPEP § 2106.05([);
2. Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
The Examiner's Rejection A under 35 US.C. § 101
The Examiner concludes claims 1, 3-10, and 12-20 recite "a method
for rewarding a user based on a price differential between two merchants for
the same product which is an abstract idea." Final Act. 2. The Examiner
further concludes the abstract idea is a method of organizing human
activities comprising advertising and marketing." Id. ( emphasis added).
The Examiner finds: "the computing device and the memory recited in
the claims and identified as additional elements are generic computing
devices ... that are performing the recited claim limitations in a routine
manner." (emphasis omitted). Final Act. 4.
The Examiner concludes the additional elements do not: ( 1) improve
another technology or technical field, (2) improve the functioning of the
computer itself, (3) add a specific limitation other than what is well-
understood, routine, and conventional in the field, and ( 4) add meaningful
limitations that amount to more than generally linking the use of the
exception to a particular technological environment. See Final Act. 4--5.
For the aforementioned reasons, the Examiner concludes that
claims 1, 3-10, and 12-20 are not patent eligible under 35 U.S.C. § 101.
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The Judicial Exception
Under the 2019 Revised Guidance ( 1 ), we consider whether the
claims are directed to any judicial exceptions, including certain groupings of
abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and
( c) certain methods of organizing human activities.
In considering Appellants' independent claim 1 as a whole, and also
the language of independent claims 10 and 19, we note Appellants'
invention recites a fundamental economic practice under the 2019
Revised Guidance ( emphasized below in italics):
A computer-implemented method/or providing a reward based
on a price differential for a product, said method implemented
using a computing device in communication with one or more
memory devices, said method comprising:
initiating a transaction at a location of a first merchant using a
payment card of a cardholder account associated with a
cardholder;
receiving, by the computing device, a reward determination
request message including an identification of the first
merchant and product data for a product purchased in the
transaction by the cardholder from the first merchant, the
reward determination request message based on an
authorization request message sent from an electronic device of
the first merchant;
Claim 1 ( emphasis added). Similar language of commensurate scope is
recited in independent claims 10 and 19. 4
4 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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For example, economic transactions ( sales activities) using payment
cards ( e.g., credit or debit cards) that may offer various types and levels of
reward incentives typically occur whenever a person pays with a card
instead of using cash or a check. Rewards provide a marketing incentive
for a customer to use a particular brand of credit card over other competing
brands. Reward incentives are often used to promote and advertise credit
card brands to new potential customers. Appellants' independent claims
apply a reward if a lower price for a product purchased with a payment card
from a first merchant is found available for the same product that is offered
by a second merchant located "within a predetermined geographic distance
of the location of the first merchant." Claim 1.
In applying the 2019 Revised Guidance, it is our view that the
Examiner did not err in concluding that each of claims 1, 3-10, and 12-20
on appeal recites an abstract idea that falls into the category of "a method of
organizing human activities comprising advertising and marketing" (Final
Act. 2), which we conclude is a certain method of organizing human
activities, i.e., a fundamental economic practice, including advertising,
marketing or sales activities, as set forth under the 2019 Revised Guidance.
Integration of the Judicial Exception into a Practical Application
MPEP § 2106.0S(e) Other Meaningful Limitations [R-08.2017].
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. 450
U.S. 175, 209 USPQ 1 (1981). In Diehr, the claim was directed
to the use of the Arrhenius equation ( an abstract idea or law of
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nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated
additional elements such as the steps of installing rubber in a
press, closing the mold, constantly measuring the temperature in
the mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184, 187,
209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS
Bank International did not meaningfully limit the abstract idea
of mitigating settlement risk. 573 U.S. 134 S. Ct. 2347, 110
USPQ2d 1976 (2014). In particular, the Court concluded that the
additional elements such as the data processing system and
communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked
the use of the abstract idea to a particular technological
environment (i.e., "implementation via computers'') or were
well-understood, routine, conventional activity ...
MPEP § 2106.05( e) ( emphasis added).
We find MPEP § 2106.05(e) is dispositive in this appeal, regarding
the rejection under 35 U.S.C. § 101.
If the claims recite an abstract idea, as we conclude above, we proceed
to the "practical application" step in our analysis under the 2019 Revised
Guidance, in which we determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception( s ); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
Regarding (a), in addition to the abstract limitations identified above,
claim 1 recites steps of: (1) "determining, using the one or more memory
devices, the price differential between a first price for the product from the
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first merchant and at least a second price for the product from at least a
second merchant within a predetermined geographic distance of the location
of the first merchant," and, (2) "applying, in response to the reward
determination request message, a reward to the cardholder account,
wherein the reward is based on the determination of the price differential by
the computing device." ( emphasis added).
As to claim 1 's specific limitations (1) and (2), we conclude these
additional limitations integrate the judicial exception into a "practical
application" because they fall into the MPEP § 2106.0S(e) category of
"other meaningful limitations." Considering the claim as a whole, we
conclude the "determining" and "applying" steps apply or use the abstract
idea in a meaningful way such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.
In particular, we conclude the abstract idea is integrated into a
practical application, because of the convenience of the payment card to
the user, who no longer has to survey the competitive market to compare
prices for the same product as offered ( with possibly lower prices) by other
nearby merchants (i.e. "a second merchant located within a predetermined
geographic distance of the location of the first merchant."). Claim 1.
In accordance with Appellants' claimed invention, if another
merchant (located within a predetermined geographic distance from the first
merchant) offers the same product for a lower price, the customer will
receive a payment card reward based on the price difference. Claim 1.
We conclude this convenience is a useful practical application to the
payment card owner who receives assurance of potentially receiving a
reward if a lower price for the same product is available from a second
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merchant who is located within a predetermined geographic distance of the
location of the first merchant. Thus, we conclude the abstract idea is
applied in a meaningful way that integrates the abstract idea into a
practical application.
Because claim 1 integrates the recited judicial exception into a
practical application, it is not "directed to" a judicial exception under the
2019 Revised Guidance and, therefore, our inquiry ends.
For these reasons, and under the 2019 Guidance, we are persuaded the
Examiner erred in concluding claims 1, 3-10, and 12-20 are patent
ineligible.
Accordingly, under the 2019 Guidance, we reverse the Examiner's
§ 101 Rejection A of independent claims 1, 10, and 19, as well as the
Examiner's Rejection A of dependent claims 3-9, 12-18, and 20, which
stand with the respective independent claim from which they depend.
Rejection B under 35 US.C. § 103
Independent Claim 1
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Sharma and Litle would have taught or suggested the
contested limitation:
applying, in response to the reward determination request
message, a reward to the cardholder account, wherein the
reward is based on the determination of the price differential by
the computing device[,]
within the meaning of representative claim 1? 5 ( emphasis added).
5 See supra, n.4.
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We have reviewed Appellants' arguments in the Briefs, the
Examiner's obviousness rejections, and the Examiner's response to
Appellants' arguments. The Examiner finds Sharma (at Fig. 1, Col. 8,
11. 25-35, Col. 4, 11. 15-17, and Col. 8, 11. 25-35) teaches or suggests the
contested limitation of claim 1. See Final Act. 7.
Appellants disagree with the Examiner's findings, and contend:
[NJ either of the cited references, individually or in combination, teaches or
suggests all of the limitations of the pending claims. App. Br. 12.
Appellants note "Sharma teaches a system where a price differential
is only applied to a customer after the customer submits a claim form, after
a transaction has been completed, and then only if the customer
himselflherself discovers the price differential and submits the claim." App.
Br. 12-13 (citing Sharma at col. 4, lines 4-17) (emphasis added).
Appellants note Litle teaches a system where a refund for a purchase
may be electronically authorized to a customer, but only after "the purchase
is authorized," and then the customer "contact[s] the merchant first to
attempt to resolve the dispute" over the authorized purchase. App. Br. 13
( citing Litle at column 2, lines 12-16) ( emphasis added).
Thus, Appellants urge that all of the language of the claims has not
been given full patentable consideration, nor have the limitations been
considered within the context of the claims considered as a whole. App. Br.
12-13 ( emphasis added).
In response, the Examiner further explains the basis for the rejection:
The Examiner asserts that the claims do not explicitly exclude
the customer from interacting with the system. The remarks are
improperly inserting words into the claims that are more
limiting than the recited claims. The cardholder not needing to
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expend time or energy to shop for a better price is not recited in
the claims and therefore not considered in view of the
combination of prior art references.
Ans. 7 (emphasis added).
Based upon our review of the record, including the Specification, we
conclude the Examiner's mapping of the disputed claim limitation of
"applying, in response to the reward determination reward message, a
reward to the cardholder account, wherein the reward is based on the
determination of the price differential by the computing device" is not fully
developed by the Examiner in the record. Claim 1 ( emphasis added). 6 On
this record, we find some degree of speculation would be required to affirm
the Examiner. We decline to engage in speculation. 7
The Examiner's statement is accurate that "[ t ]he cardholder not
needing to expend time or energy to shop for a better price is not recited in
the claims." (Ans. 7). The Examiner thus interprets the claims as not
precluding the cardholder from expending time or energy to shop for a better
price for the same product at a nearby competing merchant. However, we
6 See the mapping rule: 37 C.F.R. § 1.104(c)(2) ("When a reference is
complex or shows or describes inventions other than that claimed by the
applicant, the particular part relied on must be designated as nearly as
practicable. The pertinence of each reference, if not apparent, must be
clearly explained and each rejected claim specified." ( emphasis added).
7 "A rejection ... must rest on a factual basis." In re Warner, 379 F.2d
1011, 1017 (CCP A 1967). "The Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not ... resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis." Id.
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conclude that reading such affirmative cardholder interaction into the claims
is unreasonable and inconsistent with the Specification, because that is
exactly the problem found in the prior art that the invention is addressing. 8
Contrary to the Examiner's claim interpretation, we conclude the
broadest reasonable interpretation of claim 1 does not contemplate requiring
a cardholder to spend time and effort to shop for a lower price for the same
item from a nearby merchant. 9
Instead, the computer-implemented method of claim 1 avoids such
affirmative cardholder interaction by interacting with "a reward
8 For example, see Spec. ,r 2 "BACKGROUND":
In many instances, the same product may be sold by two or
more merchants for different prices. For example, within a city,
multiple gas stations may sell the same grade of gasoline for
different prices. As another example, the same model of
computer may be sold by two or more different merchants at
different prices. Accordingly, a consumer may spend time and
effort comparing prices for the same product from the different
merchants, in order to find the best price for the product. In
many instances, the time and effort involved in comparing
prices for the product outweighs any cost savings resulting from
purchasing the product from a merchant who sells the product
at a lower price than another merchant.
( emphasis added).
9 For example, see Spec. ,r 15.
For example, if the reward determination system determines
from the transaction that the cardholder purchased ten gallons
of gas at $3.50 per gallon at the first gas station, and the second
gas station offers the same grade of gasoline for $3.47, the
reward determination system is configured to apply a credit of
$0.30 to the cardholder's account. Accordingly, in such
implementations, the cardholder effectively receives the lower
price of gas from the second gas station, without having to
actually purchase the gasoline from the second gas station.
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determination request message based on an authorization request message
sent from an electronic device of the first merchant" regarding the sale (i.e.,
first) price of the product, and determines ... "the price differential between
a first price for the product from the first merchant and at least a second
price for the product from at least a second merchant within a predetermined
geographic distance of the location of the first merchant." Claim 1.
Thus, the claimed invention enables the cardholder to avoid the time
and effort of surveying the competitive market to shop for a lower price for
the same item, as may be available from a second merchant located within a
predetermined geographic distance from the first merchant.
Based upon our review of the record, we find a preponderance of the
evidence supports Appellants' contentions that the disputed limitation is not
taught or suggested by the cited references, which teach the cardholder must
expend time and energy by submitting forms (Sharma, col 2, 11. 14--15), or
must initiate disputes by phone, or by using a website, (Litle, col. 4, 11. 26-
29), to receive a refund based upon a price differential.
Therefore, Appellants have persuaded us the Examiner erred in
concluding that the cited combination of Sharma and Litle renders obvious
Appellants' independent claim 1.
Accordingly, we are constrained on this record to reverse the
Examiner's§ 103 Rejection B of independent claim 1, and for the same
reasons, we also reverse Rejection B of remaining independent claims 10
and 19, which recite the contested limitation using similar language of
commensurate scope. Because we have reversed the obviousness rejection
of all independent claims on appeal, we reverse the Examiner's§ 103
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rejection of all dependent claims 3, 5-9, 12, 13, 15-18, and 20, which were
also rejected under Rejection B.
Rejection C under 35 USC§ 103
Regarding the remaining dependent claims 4 and 14, rejected under
§ 103 Rejection C, the Examiner has cited one additional reference, Shuster,
in addition to Sharma and Litle, which were cited as evidence in support of
Rejection B. On this record, we find the Examiner has not shown how
Shuster overcomes the deficiencies of the Sharma and Litle combination, as
discussed above regarding Rejection B of independent claims 1, 10, and 19.
Therefore, we are constrained on this record to also reverse § 103 Rejection
C of remaining dependent claims 4 and 14.
CONCLUSIONS
The Examiner erred in rejecting claims 1, 3-10, and 12-20 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner erred in rejecting claims 1, 3, 5-10, 12, 13, and 15-20
under 35 U.S.C. § 103, as being obvious over the cited combination of Litle
and Sharma.
The Examiner erred in rejecting claims 4 and 14 under 35 U.S.C.
§ 103, as being obvious over the cited combination of Litle, Sharma and
Shuster.
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DECISION
We reverse the Examiner's decision rejecting claims 1, 3-10, and
12-20 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1, 3-10, and
12-20 under 35 U.S.C. § 103.
REVERSED
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