Ex Parte HSU et al

Patent Trials and Appeals Board

May 28, 2019

13087506 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/087,506 04/15/2011 Michael Shing-Chung HSU
107193 7590 05/30/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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.
19487.69.1.1 6380
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SHING-CHUNG HSU and MICHAEL MURRAY
Appeal2018-001208
Application 13/087,506 1
Technology Center 3600
Before CARLL. SILVERMAN, MATTHEW J. McNEILL, and
ALEX S. YAP, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 21-25, 27, 30-36, 39-43, 45, 48, and 49, which are all
the claims pending in this application. Claims 1-20, 26, 28, 29, 37, 38, 46,
and 47 are canceled. App. Br. 21-34. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
1 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 1.
Appeal2018-001208
Application 13/087,506
STATEMENT OF THE CASE
Introduction
Appellants' application relates to electronic coupons that can be used
at multiple retailers. Spec. 1:8-14. Claim 21 is illustrative of the appealed
subject matter and reads as follows:
21. A computer-implemented method comprising:
enabling, by at least one processor, a user to associate an
account of the user with a first retail entity and a second retail
entity selected from a plurality of retail entities;
accessing information indicating an association of an
electronic coupon with the account of the user;
sending information indicating the association of the
electronic coupon with the account of the user to a first
computer system associated with the first retail entity and a
second computer system associated with the second retail
entity;
receiving, from the first computer system, information
indicating that the user has redeemed the electronic coupon
with the first retail entity; and
in response to receiving, from the first computer system,
the information indicating that the user has redeemed the
electronic coupon with the first retail entity, sending
information to the second retail entity indicating the redemption
of the electronic coupon.
The Examiner's Rejections
Claims 21-25, 27, 30-36, 39-43, 45, 48, and 49 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Final Act. 5-9.
Claims 48 and 49 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 5.
2
Appeal2018-001208
Application 13/087,506
Claims 48 and 49 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 5.
Claims 21-25, 27, 30-36, 39-43, 45, 48, and 49 stand rejected under
35 U.S.C. § 103 as being unpatentable over Beach (US 2002/0107738 Al;
Aug. 8, 2002), Register (US 2005/0234771 Al; Oct. 20, 2005), Redford (US
2013/0006744 Al; Jan. 3, 2013), and Fisher (US 2012/0150601 Al; June
14, 2012). Final Act. 9-16.
ANALYSIS
Patent-Ineligible Subject Matter
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 Bankint'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
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 .... ").
3
Appeal2018-001208
Application 13/087,506
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 (Gottschalkv. 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 (1853))); 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
4
Appeal2018-001208
Application 13/087,506
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. (alterations in original) (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.
The PTO 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) ("Revised Guidance"). 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 MPEP2 § 2106.05(a}-(c), (e}-(h)).
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
2 Manual of Patent Examining Procedure.
5
Appeal2018-001208
Application 13/087,506
( 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 Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. Claim 21 recites a "computer-implemented method."
Appellants do not argue the Examiner erred in concluding claim 21 falls
within the four statutory categories of patentable subject matter. We agree
with the Examiner's conclusion because claim 21 falls within the process
category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance.
Claim 21 recites the following limitations: (1) "enabling ... a user to
associate an account of the user with a first retail entity and a second retail
entity selected from a plurality of retail entities;" (2) "accessing information
indicating an association of an electronic coupon with the account of the
user;" (3) "sending information indicating the association of the electronic
coupon with the account of the user to a first computer system associated
with the first retail entity and a second computer system associated with the
6
Appeal2018-001208
Application 13/087,506
second retail entity;" ( 4) "receiving ... information indicating that the user
has redeemed the electronic coupon with the first retail entity" and ( 5) "in
response to receiving ... the information indicating that the user has
redeemed the electronic coupon with the first retail entity, sending
information to the second retail entity indicating the redemption of the
electronic coupon."
The Examiner concludes claim 21 is directed to "electronic coupon
redemption by a user at a retail location via use of a user identifier which
associates the user with multiple retail entities including electronic
transmission to [] retail entities computer system( s) for the purpose of
increasing revenue." Final Act. 8.
Appellants argue the Examiner erred in concluding claim 21 is
directed to an abstract idea. See App. Br. 5-13. In particular, Appellants
argue the Examiner failed to analyze the correct claims, focusing on
canceled independent claim 1, instead of pending independent claims 21, 30,
and 39. App. Br. 10. Appellants argue the Examiner repeatedly referenced
claim 1 in the rejection. Id. Appellants argue the Examiner's
characterization of the abstract idea focuses on limitations that are not
recited in the pending independent claims. Id.
We agree with Appellants. The Examiner concludes the independent
claims are directed to "electronic coupons redemption by a user at a retail
location via use of a user identifier[,] which associates the user with multiple
retail entities including electronic transmission to [] retail entities computer
system(s)for the purpose of increasing revenue." Final Act. 8 (emphases
added). However, none of the pending independent claims recite a "user
identifier" or redeeming electronic coupons "for the purpose of increasing
7
Appeal2018-001208
Application 13/087,506
revenue." Accordingly, the Examiner's rejection focuses on concepts that
are untethered to the language of the claims.
Accordingly, we agree with Appellants that the Examiner erred in
rejecting claim 21 as being directed to an abstract idea that focuses on
limitations not present in the claim. Because we conclude the Examiner
erred with respect to Step 2A, prong 1, we need not proceed to Step 2A,
prong 2 of the analysis.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 21 as being directed to patent-ineligible subject matter.
We also do not sustain the rejection of independent claims 30 and 39, which
recite commensurate limitations, or dependent claims 22-24, 27, 31-36, 40-
43, 45, 48, and 49.
Written Description
Appellants argue the Examiner erred in rejecting claims 48 and 49 as
failing to comply with the written description requirement. App. Br. 18-19.
Claim 48 recites "[t]he computer-implemented method as recited in
claim 21, wherein enabling a user to associate an account of the user with a
first retail entity and a second retail entity comprises enabling the user to
concurrently associate the account of the user with the first retail entity and
the second retail entity." Claim 49 recites a commensurate limitation.
Appellants argue the Specification provides written description
support for the limitations recited in claims 48 and 49 because the
Specification discloses that the messaging hub can transmit information
indicating association of the electronic coupon with the user's account to the
first retailer's computer system and the second retailer's computer system.
App. Br. 19. Appellants argue the Specification further discloses the user
8
Appeal2018-001208
Application 13/087,506
may select a coupon, which indicates the user wishes to add the selected
coupon to the user's account and associate the coupon with first and second
retail entities. Id.
Appellants have not persuaded us of Examiner error. Claims 48 and
49 recite "enabling the user to concurrently associate the account of the user
with the first retail entity and the second retail entity" ( emphasis added).
The Specification discloses associating an account of the user with first and
second retail entities, but the Specification is silent as to the timing of such
association----concurrent or otherwise. Accordingly, we agree with the
Examiner that the Specification fails to provide written description support
for claims 48 and 49. We, therefore, sustain the written description rejection
of claims 48 and 49.
Indefiniteness
The Examiner rejected claims 48 and 49 under 35 U.S.C. § 112(b) as
indefinite because "[i]t is unclear what Applicant is referring to by wherein
enabling a user to associate an account of the user with a retail entity and a
second retail entity comprises enabling the user to concurrently associate the
account of the user with the first retail entity and the second retail entity."
Final Act. 5.
Appellants argue the Examiner erred because the claim language is
clear that the association of the user account with the two retail entities
occurs at the same time. App. Br. 18-19. We agree. The plain language of
the claim indicates that the association of the user account with each retail
entity must occur concurrently, or at the same time. The Examiner's
rejection is conclusory, asserting the claim is indefinite without any
9
Appeal2018-001208
Application 13/087,506
explanation. See Final Act. 5. Accordingly, we do not sustain the
indefiniteness rejection of claims 48 and 49.
Obviousness
We have reviewed the Examiner's obviousness rejections in
consideration of Appellants' contentions and the evidence of record.
Appellants persuade us the Examiner fails to establish that the claims are
unpatentable over the cited references.
Appellants argue the Examiner erred in rejecting claim 21 as
unpatentable over Beach, Register, Redford, and Fisher because the
Examiner's rejection simply ignores the limitation "sending [ or transmitting]
information to the second retail entity indicating the redemption of the
electronic coupon." App. Br. 17-18. We agree with Appellants.
The Examiner's obviousness rejection of claim 21 focuses on
language that is not present in the claim. Specifically, the Examiner finds
Beach teaches "in response to receiving the redemption information,
preventing the user from redeeming the coupon at a second ( or any
additional) merchant." Final Act. 11. However, the rejection does not
address actual language of claim 21: "in response to receiving, from the first
computer system, the information indicating that the user has redeemed the
electronic coupon with the first retail entity, sending information to the
second retail entity indicating the redemption of the electronic coupon." The
Examiner does not address this deficiency in the Answer. See Ans. 6.
Accordingly, the Examiner has failed to find the combination of Beach,
Register, Redford, and Fisher teaches each limitation of claim 21.
Thus, we are constrained by the record to agree with Appellants that
the Examiner has not sufficiently established that claim 21 is unpatentable
10
Appeal2018-001208
Application 13/087,506
over the combination of Beach, Register, Redford, and Fisher. We,
therefore, do not sustain the obviousness rejection of independent claim 21. 3
We also do not sustain the rejection of independent claims 30 and 39, which
recite commensurate limitations, and claims 22-25, 27, 31-36, 40-43, 45,
48, and 49, dependent therefrom.
DECISION
As explained above, we do not sustain the rejection of claims 21-25,
27, 30-36, 39-43, 45, 48, and 49 under 35 U.S.C. § 101.
As explained above, we sustain the rejection of claims 48 and 49
under 35 U.S.C. § 112(a).
As explained above, we do not sustain the rejection of claims 48 and
49 under 35 U.S.C. § 112(b).
As explained above, we do not sustain the rejection of claims 21-25,
27, 30-36, 39-43, 45, 48, and 49 under 35 U.S.C. § 103.
We reverse the Examiner's decision rejecting claims 21-25, 27, 30-
36, 39-43, and 45.
However, because we have affirmed at least one ground of rejection
with respect to claims 48 and 49, we affirm the Examiner's decision
rejecting claims 48 and 49. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
3 Because we agree with at least one of the dispositive arguments advanced
by Appellants with respect to the obviousness rejections, we need not reach
the merits of Appellants' other arguments.
11
Appeal2018-001208
Application 13/087,506
AFFIRMED-IN-PART
12