Ex Parte Grossman et al

Patent Trial and Appeal Board

Nov 29, 2017

13301983 (P.T.A.B. Nov. 29, 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.
13/301,983 11/22/2011 David M. GROSSMAN 0076412-000031 1160
21839 7590 12/01/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/01/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. GROSSMAN and ENGELBERT FELBERTHANN
Appeal 2016-006013
Application 13/301,9831
Technology Center 3600
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—7, 9, 13, 14, 16—18, 20, 22—31, and 33. We have
jurisdiction under 35 U.S.C. § 6(b). Oral arguments were presented on
October 24, 2017.
We AFFIRM.
1 The Appellants identify MasterCard International Incorporated as the real
party in interest. Appeal Br. 2.
Appeal 2016-006013
Application 13/301,983
ILLUSTRATIVE CLAIM
1. A method for providing real-time consumer surveys,
comprising:
storing, in a database of a financial processing system, (i)
personal account numbers of consumers and (ii) predetermined
survey criteria and distribution time-frame requirements
associated with surveys received from a survey provider,
wherein (i) said survey provider is an entity separate from both
merchants and said financial processing system and (ii) said
financial processing system is an entity separate from
merchants and card issuers;
linking, in said database of the financial processing
system, general and merchant-specific spending characteristics
of said consumers to respective personal account numbers;
receiving, by a processor of the financial processing
system, from a merchant, an authorization request including
financial transaction information pertaining to an electronic
financial transaction conducted by a consumer at the merchant;
transmitting, by said financial processing system, said
authorization request received from said merchant to a card
issuer for authorization of said transaction;
receiving, by said financial processing system, from said
card issuer, authorization or denial of said financial transaction;
receiving, by said financial processing system, an
electronic consumer survey, from the survey provider, based
upon said predetermined survey criteria received from the
survey provider and stored in said database of the financial
processing system; and
transmitting, by said financial processing system, said
electronic consumer survey, received from said survey
provider, to said consumer via a mode of electronic messaging
within a predetermined time from said time of financial
transaction completion at said merchant, wherein said
predetermined time at which said survey is transmitted to said
customer is based on a distribution time-frame requirement,
associated with the survey, predetermined by said survey
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Application 13/301,983
provider and stored in said database of said financial processing
system.
CITED REFERENCES
The Examiner relies upon the following references:
Morsberger US 2010/0324971 A1
Bortolin et al. US 2011/0191155 A1
(hereinafter “Bortolin”)
Maher US 2012/0290484 Al
Tietzen WO 2011/054071 Al
REJECTIONS
Dec. 23,2010
Aug. 4,2011
Nov. 15,2012
May 12,2011
I. Claims 1—7, 9, 13, 14, 16—18, 20, 22—31, and 33 are rejected
under 35U.S.C. § 101 as ineligible subject matter.2
II. Claims 1—7, 13, 14, 16—18, 22—30, and 31 are rejected under
35 U.S.C. § 103(a) as unpatentable over Maher, Morsberger, and Tietzen.3
III. Claims 9, 20, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maher, Morsberger, Tietzen, and Bortolin.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject Matter Eligibility
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
2 We regard as inadvertent the inclusion of canceled claim 15 in the Final
Rejection (page 10). See Appeal Br. 1 n.l.
3 We regard as inadvertent the inclusion of claims 20 and 33, in the
introductory paragraph of Rejection II, on page 12 of the Final Rejection.
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Application 13/301,983
rejection states that the appealed claims are directed to the abstract idea of
“providing customer surveys” (Final Action 6, 10) and, more particularly, a
“method and system for providing real-time consumer surveys following a
financial transaction” (Answer 37—38). Per the rejection, this abstract idea
can be characterized as a method of organizing human activities (Final
Action 6; Answer 38) or an “idea of itself’ (Answer 38). The rejection also
characterizes the claims as using categories to organize, store, and transmit
information, akin to activities determined to constitute an abstract idea in
Cyberfone Sys. v. CNN Interactive Grp., 558 F. App’x 988 (Fed. Cir. 2014)
(nonprecedential). Final Action 6—7. Under the second Alice step, the
rejection states that the claims do not contain meaningful limitations beyond
generally linking the use of the identified abstract idea to a particular
technical environment, such that the claims are not patent-eligible. Id. at 7—
11; see also Answer 6, 42-48.
In regard to the first Alice step, although the Appellants purport to
dispute the determination that claim 1 is directed to an abstract idea, the
Appellants do not identity a flaw in the Examiner’s characterization of
claim 1 as such. Rather, the Appellants argue that “while the overall
objective of the combination of elements of independent claim 1 may be to
provide a customer survey, such an objective is not the sum and substance of
what is being claimed.” Appeal Br. 22. See also Answer 9-12. The
Appellants also contend that, in identifying an abstract idea, the Examiner
“oversimplified” the claimed invention. Answer 10. Yet, “[a]n abstract idea
can generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Accordingly, we are
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Application 13/301,983
not persuaded of error in the Examiner’s characterization of claim 1 as
directed to an abstract idea. See Answer 37—38.
As to the second Alice step, the Appellants argue that the claim 1
recites elements amounting to “significantly more” than the identified
abstract idea. Appeal Br. 23—31; see also Answer 13—20.
Relying upon In reAlappat, 33 F.3d 1526, 1543 (Fed. Cir. 1994), the
Appellants maintain that claim 1 requires unique equipment, on account of
particular computer programming. See Appeal Br. 27—30. However, the
Federal Circuit, in Eon Corp. v. AT&T Mobility LLC, 785 F.3d 616, 623
(Fed. Cir. 2015), explicitly acknowledged that this aspect of Alappat has
been superseded by Bilski v. Kappos, 561 U.S. 593 (2010) and Alice.
In addition, the Appellants contend that the embodiment of claim 1
utilizes a consumer’s account information, so as to deliver a survey in the
ideal manner and time for obtaining optimal consumer responses. See
Appeal Br. 24, 29-31. Yet, the proposed critical feature — i.e., that
different surveys have different intervals between the respective transaction
and the delivery of the survey — is not set forth in the claim language.
Claim 1 recites “transmitting . . . said electronic consumer survey . . . within
a predetermined time from said time of financial transaction completion,”
“wherein said predetermined time ... is based on a distribution time-frame
requirement, associated with the survey.” However, nothing in claim 1
requires a plurality of different “survey[s]” or a plurality of different
“predetermined time[s].”
The Appellants also argue that claim 1 does not preempt others from
using the proposed abstract idea. Appeal Br. 23; Reply Br. 12—13. Yet,
“[wjhile preemption may signal patent ineligible subject matter, the absence
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Application 13/301,983
of complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In view of the foregoing, we are not persuaded of error in the
Examiner’s determination that claim 1 is not patent-eligible subject matter.
As to independent claims 14 and 23, the Appellants rely upon the same
arguments presented for claim 1 (see Appeal Br. 31—34) and no separate
arguments are provided for the dependent claims (see id. at 34). Therefore,
we sustain the rejection of claims 1—7, 9, 13, 14, 16—18, 20, 22—31, and 33
under 35 U.S.C. § 101.
Obviousness
The Appellants argue that independent claim 1 was rejected
erroneously, on the ground of obviousness, because neither Maher nor
Morsberger teaches the recited “distribution time-frame requirement,
associated with the survey,. . . stored in said database of said financial
processing system.” Appeal Br. 16.
According to the rejection, this Maher teaches this feature. Final
Action 17—18 (citing Maher || 44, 45, 68); see also Answer 50.
However, none of these portions of Maher indicate where any
“distribution time-frame requirement, associated with the survey” might be
“stored.” See Maher || 44, 45, 68.
Therefore, we are persuaded of error in the rejection of independent
claim 1, as well as independent claims 14 and 23 (which contain limitations
similar to that addressed herein) and the respective dependent claims.
Accordingly, we do not sustain the rejection of claims 1—7, 9, 13, 14, 16—18,
20, 22-31, and 33 under 35 U.S.C. § 103(a).
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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—7, 9, 13, 14,
16-18,20, 22-31, and 33 under 35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1—7, 9, 13,
14, 16-18, 20, 22-31, and 33 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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