Ex Parte Howe

Patent Trial and Appeal Board

Mar 27, 2018

13969839 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/969,839 08/19/2013
21839 7590 03/29/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Justin X. HOWE
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.
0076412-000164 2639
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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 JUSTIN X. HOWE
Appeal2016-008605 1
Application 13/969,839
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-28, which are all of the pending claims. See App.
Br. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 MasterCard International Incorporated is identified as the real party in
interest. See App. Br. 2.
Appeal 2016-008605
Application 13/969,839
STATEMENT OF THE CASE
Appellant's disclosure relates to "mapping of merchant locations,
specifically the use of payment data and geolocation data of mobile devices
to generate a map of merchant locations." Spec. i-f 1. Claims 1 and 15 are
independent. Claim 1 is reproduced below for reference (with emphasis
added):
1. A method for mapping merchant boundaries, comprising:
storing, in a transaction database of a processing server, a
plurality of transaction data entries transmitted from a payment
network, wherein each transaction data entry includes data
related to a payment transaction from a payment server including
at least a merchant identifier, a consumer identifier, and a
transaction time and date;
identifying, in the transaction database of the processing
server, a subset of transaction data entries, wherein each
transaction data entry in the subset of transaction data entries
includes a common merchant identifier;
receiving, by the processing server, for each transaction
data entry in the identified subset of transaction data entries, a
geographic location of a mobile communication device
associated with the respective included consumer identifier
temporally proximal to the respective included transaction time
and date from a mobile device; and
generating, by the processing device, a boundary map for
a merchant associated with the common merchant identifier
based on the geographic locations received from the mobile
device for each transaction data entry in the identified subset of
transaction data entries, wherein the boundary map is a map of
geographic bounds of the physical location of the merchant
associated with the common merchant identifier.
The Examiner's Rejections
RI: Claims 1-28 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 8.
2
Appeal 2016-008605
Application 13/969,839
R2: Claims 1-28 stand rejected under 35 U.S.C. § l 12(a) as being
indefinite. Final Act. 9-10.
R3: Claims 1-28 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 11.
R4: Claims 1-11, 13-25, 27, and 28 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ramalingam (US 2011/0238517 Al; Sept. 29,
2011), Cho (US 2010/0198626 Al; Aug. 5, 2010), and Fiedler (US
6,883,708 Bl; Apr. 26, 2005). Final Act. 14.
R5: Claims 12 and 26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ramalingam, Cho, Fiedler, and Gibson (US 6, 198,431
Bl; Mar. 6, 2001). Final Act. 25.
ANALYSIS
A. Rejection RI: Written Description
Appellant argues the Examiner erred in the written description
rejection of claims 1-28 because the disclosure "sufficiently describes how
the entries are used to create the boundary map utilizing a mobile network
operator, a payment network, and a processing server." App. Br 7; see App.
Br. 7-8, quoting Spec. i-fi-133-37. According to Appellant, the "shape of the
boundary map is not important to the inventive concept" and "is not even
recited in the claims." App. Br. 6.
We are persuaded by Appellant's arguments. To satisfy the written
description requirement, the disclosure must reasonably convey to skilled
artisans that Appellant possessed the claimed invention as of the filing
date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane). Specifically, the description must "clearly allow
3
Appeal 2016-008605
Application 13/969,839
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed" and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. (internal quotations and citations omitted).
We agree with Appellant that the disclosure demonstrates Appellant
possessed the claimed invention at the time of filing. Particularly, the
Specification describes expanding from an identified merchant centroid to
determine boundaries for the merchant, and the drawings display determined
boundaries for the merchants. See Spec i-f 42 and Figures 4A--4D. We find
such disclosure provides written description support for the claims.
Accordingly, we do not sustain the Examiner's written description
rejection of claims 1-28.
B. Rejection R2: Indefiniteness
The Examiner finds three separate claim limitations are indefinite
pursuant to 35 U.S.C. 112(b). See Final Act. 10-11. We address each
determination below.
The Examiner first states "[i]t is unclear to the Examiner how a
boundary map is generated," in rejecting independent claims 1 and 15 as
indefinite. Final Act. 10. Appellant argues the Examiner erred for the same
reasons discussed by Appellant with respect to the written description
rejection. App. Br. 11; see App. Br. 6-9. We agree, for substantially the
reasons described above, that one skilled in the art would understand the
4
Appeal 2016-008605
Application 13/969,839
metes and bounds of the claimed "boundary map" when the claims are read
in light of the specification.
The Examiner next states "[i]t is unclear to the Examiner how a
'merchant identifier' and a 'common merchant identifier' are different from
one another," in rejecting independent claims 1 and 15 as indefinite. Final
Act. 10. Appellant argues the Examiner erred because the terms "merchant
identifier" and a "common merchant identifier" are satisfactorily described
in the specification. See App. Br. 11-12 (quoting Spec i-f 36). We find that
one skilled in the art, having read the disclosure, would understand the
meaning of both (1) a "merchant identifier" as "a unique value associated
with a merchant" (see Spec. i-f 27), and (2) a "common merchant identifier"
as a merchant identifier that is common to a set of multiple transactions. See
Spec. i-f 30.
The Examiner additionally states that "[i]t is unclear to the Examiner
how a first merchant boundary can overlap a second merchant boundary" in
rejecting dependent claims 4 and 18 as indefinite. Final Act. 11. Appellant
argues the Examiner erred, because one skilled in the art would understand
the disclosure's description of "corresponding geolocation data" as initially
leading to overlapping borders which can "benefit from trimming." App.
Br. 12 (quoting Spec. i-fi-142, 49). We agree with Appellant, and find that one
skilled in the art, having read the disclosure, would understand that
boundaries based on geolocation data may overlap, and thus would
understand the metes and bounds of claims 4 and 18.
Accordingly, we do not sustain the Examiner's indefiniteness
rejections of claims 1-28.
5
Appeal 2016-008605
Application 13/969,839
C. Rejection R3: Non-Statutory Subject Matter
Appellant argues the Examiner erred in concluding claims 1-28 are
patent-ineligible, because "the Patent Office has omitted significant portions
of the claim from its characterization" whereas "[t]he inventors have
addressed a technical problem where it is not clear what the geographic
boundaries for a particular merchant may be" and the inventors have
"arrive[d] at a technical solution for this problem." Reply Br. 6.
We are not persuaded the Examiner erred. An invention is patent-
eligible if it claims a "new and useful process, machine, manufacture, or
composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014). The
Supreme Court, in Alice, reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1300 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice Corp., 134 S. Ct. at 2355. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," e.g., to an abstract idea. Alice
Corp., 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible
concept, the inquiry proceeds to the second step, where the elements of the
claims are considered "individually and 'as an ordered combination'" to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Alice Corp., 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1297).
6
Appeal 2016-008605
Application 13/969,839
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology, or instead are directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, we agree with the Examiner that the claims are directed to "the
abstract concept of collecting, recognizing, and storing data because the
claims are merely collecting location data points to recognize a boundary
map" and the claims are "organizing the data with relation to transaction
data involving merchant identifiers." Ans. 26. Claim 1 is directed to a
method for mapping merchant boundaries (see, e.g., Spec. i-fi-16-7), and our
reviewing court has held claims similarly directed to certain methods of
collecting and organizing information to be abstract ideas. 2 We also agree
with the Examiner that the claims "as a whole, do not amount to
significantly more than the abstract idea itself' and do not "qualify as
significantly more [than] the judicial exception." Ans. 28. Rather than
2 See, e.g., Move, Inc. v. Real Estate Alliance Ltd., 2018 WL 656377, *3
(Fed. Cir. 2018 (nonprecedential)) ("a method for collecting and organizing
information about available real estate properties and displaying this
information on a digital map that can be manipulated by the user" is
abstract); Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) ("collecting information, analyzing it, and displaying certain
results of the collection and analysis" is abstract); Digitech Image
Technologies, LLC v. Electronics for Imaging, 758 F.3d 1344, 1350 (Fed.
Cir. 2014) ("a process of organizing information through mathematical
correlations and is not tied to a specific structure or machine" is abstract).
7
Appeal 2016-008605
Application 13/969,839
addressing a technical problem, the claimed method is used to display
regions in which mobile device users appear to have consummated
purchases. See Spec. i-f 12 and Figures 4A--4D. That such processes may be
performed more efficiently by a computer does not "'transform the nature of
the claim' into a patent-eligible application." Alice Corp., 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297); see also FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic
computer elements like a microprocessor or user interface do not alone
transform an otherwise abstract idea into patent-eligible subject matter.").
Appellant's arguments focus on the "payment network" and the
"receipt of transaction data entries from the payment network" as making the
claims "'necessarily rooted' in a particular technology" and similar to the
claims found statutory in DDR Holdings v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) (see App. Br. 16-18, 20-23; Reply Br. 12-14). We do not
find the present claims analogous to those in DDR Holdings. In DDR
Holdings, the claims "do not broadly and generically claim 'use of the
Internet' to perform an abstract business practice (with insignificant added
activity)." DDR Holdings at 1258. Here, in contrast, the claims use a
computer network to perform an abstract business practice, that of mapping
merchant boundaries, with little or no added activity. The problem
addressed by the claims, that of mapping merchant boundaries, is not rooted
in computer technology. See Spec i-f 3. Nor does recitation of a "payment
network" place the claims into the realm of computer technology as the
claimed invention solves no problem involving the structure or functions of
the payment network.
8
Appeal 2016-008605
Application 13/969,839
We also agree with the Examiner that the claims "recite a database,
receiving device, a processing server, and a mobile device; however, these
elements merely facilitate the claimed functions at a high level of generality
and they perform conventional functions." Ans. 27. Thus, these claimed
elements do not place the claims into the realm of computer technology.
Accordingly, we are not persuaded the Examiner erred in determining
independent claim 1 is patent-ineligible pursuant to the two-part Alice test.
See Final Act. 11-13. We sustain the Examiner's 35 U.S.C. § 101 rejection
of independent claim 1, as well as independent claim 15 not separately
argued, and all claims which depend therefrom and are not separately
argued. See App. Br. 27.
D. Rejection R4: Obviousness
Appellants argue the Examiner erred in the rejection of independent
claim 1, because "Ramalingam ... discloses a map which is already stored
on the server and which contain[ s] geolocations of merchants" (App. Br. 28;
see Ramalingam i-f 44) and Cho's "heat map is not a boundary map" (App.
Br. 29; see Cho Abstract). Appellants further contend Cho's "preferred
service providers" are provided on pre-existing maps. App. Br. 29.
We are persuaded by Appellant's arguments. The Examiner finds
Ramalingam teaches a "transaction module may recognize when the mobile
device . .. is located at a merchant location." See Final Act. 15 (quoting
Ramalingam i-f 3 5). The Examiner also finds Cho' s heat map teaches the
claimed "generating, by a processing device, a boundary map for a
merchant, wherein the boundary map is a map of geographic bounds of the
physical location of the merchant." Final Act. 16 (emphasis added) (citing
9
Appeal 2016-008605
Application 13/969,839
Cho Figures 7-8 and i-fi-f 13, 66, 73). Cho's heat map, however, is
superimposed on a pre-existing map that delineates the geographic
boundaries of the physical location of the merchants. See Cho Figure 7.
That is, the references use an existing map, rather than creating a map.
Thus, Ramalingam and Cho, when combined, do not "generat[ e ], by
the processing device, a boundary map," as required by claim 1. The
Examiner does not rely on Fiedler or Gibson for this limitation. We reverse
the Examiner's obviousness rejection of independent claim 1 and
independent claim 15 commensurate in scope, as well as the claims that
depend therefrom.
DECISION
The Examiner's decision rejecting claims 1-28 under 35 U.S.C.
§ 112(a) is reversed.
The Examiner's decision rejecting claims 1-28 under 35 U.S.C.
§ 112(b) is reversed.
The Examiner's decision rejecting claims 1-28 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision rejecting claims 1-28 under 35 U.S.C. § 103
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
10