Ex Parte Khan et al

Patent Trial and Appeal Board

Aug 23, 2017

12651420 (P.T.A.B. Aug. 23, 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.
12/651,420 12/31/2009 Mohammad Khan 1615/36/2 9077
25297 7590 08/25/2017
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
u sptomail @ j wth. com
mmcjunkin@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMAD KHAN and PRADEEP KUMAR
Appeal 2016-008202
Application 12/651,42c1
Technology Center 3600
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and
AARON W. MOORE, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—2, 4, 7—15, 17, 20-28, 30, and 33—38,
which are all the claims pending in the application. Claims 3, 5, 6, 16, 18,
19, 29, 31, and 32 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is MasterCard
International Incorporated. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed December 4, 2015
(“App. Br.”); Reply Brief filed September 1, 2016 (“Reply Br.”);
Examiner’s Answer mailed July 1, 2016 (“Ans.”); Final Office Action
Appeal 2016-008202
Application 12/651,420
STATEMENT OF THE CASE
Appellants’ invention relates to “methods, systems, and computer
readable media for redeeming and delivering electronic loyalty reward
certificates using a mobile device.” Spec. 1:14—16; Title.
Claims 1,14, and 27 are independent claims. Claim 1 illustrates
Appellants’ invention, as reproduced below with disputed limitations
emphasized:
1. A method for providing an electronic loyalty reward
certificate to a mobile device, the method comprising:
utilizing a mobile device to generate electronic loyalty
reward certificate selection information in response to
redeeming, via a website associated with a merchant, loyalty
points for an electronic loyalty reward certificate identified by
the electronic loyalty reward certificate selection information,
wherein the loyalty points are accumulated from purchase and
non-purchase transactions conducted with the merchant, wherein
utilizing the mobile device includes interfacing the mobile device
to a smart poster via near field communications (NFC) to direct
the mobile device to the website associated with the merchant,
using a web browser of the mobile device to access the website,
and selecting a loyalty reward option presented by the website
using the web browser to generate the electronic loyalty reward
certificate selection information;
providing, via the mobile device, the loyalty reward
certificate selection information and a recipient mobile device
identifier to a loyalty management server;
receiving, at an over the air (OTA) provisioning server and
from the loyalty management server, electronic loyalty reward
certificate data derived from the loyalty reward certificate
selection information and the recipient mobile device identifier;
mailed May 4, 2015 (“Final Act.”); and original Specification filed
December 31, 2009 (“Spec.”).
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Application 12/651,420
establishing, by the OTA provisioning server, a
communications link with the mobile device using the recipient
mobile device identifier; and
provisioning, from the OTA provisioning server, the
electronic loyalty reward certificate data on the mobile device
over the communications link via OTA communications,
wherein the electronic loyalty reward certificate data is
transferred from the mobile device to a wireless device reader via
NFC upon interfacing the mobile device with the wireless device
reader.
App. Br. 36 (Claims App.).
Examiner’s Rejections and References
(1) Claims 1—2, 4, 7—15, 17, 20-28, 30, and 33—38 stand rejected
under 35 U.S.C. § 101 because the claimed invention is directed to non-
statutory subject matter. Final Act. 2—5.
(3) Claims 1—2, 4, 7—15, 17, 20-28, 30, and 33—38 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Abifaker (US
2008/0052164 Al, published Feb. 28, 2008), Antonucci et al. (US
2003/0236712 Al, published Dec. 25, 2003; “Antonucci”), and Lauper (US
2007/0016479 Al, published Jan. 18, 2007). Id. at 5-17.
ANALYSIS
35 U.S.C. § 101: Claims 1-2, 4, 7-15, 17, 20-28, 30, and33-38
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (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, 134 S. Ct. at
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2355. The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” such as an
abstract idea. Id. If the claims are directed to a patent-ineligible concept,
the second step in the analysis is to consider the elements of the claims
“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.” Id. (citing Mayo, 132 S. Ct. at 1297). In other
words, the second step is to “search for an ‘inventive concept’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
In rejecting independent claims 1, 14, and 27 and dependent claims 2,
4, 7-13, 15, 17, 20-26, 28, 30, and 33-38 under 35 U.S.C. § 101, the
Examiner finds these claims are directed to an abstract idea of organizing
“human activity relating to commercial practices”, i.e., a “fundamental
economic practice.” Final Act. 3^4. The Examiner also finds
[t]he claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because these elements are merely insignificant extra­
solution activity and routine in implementing the aforementioned
concepts; i.e., applicant did not invent a novel way of allowing a
user to navigate to a website, view gift card options, use loyalty
points to purchase a gift card, nor a novel way of sending the
information back/forth over the air (OTA) to provision a
selected/purchase gift card onto a phone. Applicant also did not
invent NFC, e-wallets, etc . . . through which he communicates a
gift card to a merchant POS system.
Id. at 4.
As to the first step of the Alice inquiry, Appellants contend
“independent claims 1,14, and 27 are not directed to ... an abstract idea,
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because the claims are rooted in computer technology with no direct
corresponding offline equivalence.” App. Br. 11 (citing DDR Holdings v.
Hotels.com, 773 F.3d 1245 (2014)). Instead, Appellants argue these claims
are directed to “a method, a system, and a computer readable medium for
providing an electronic loyalty reward certificate to a mobile device that
includes a mobile device interfaces [sic] that interfaces with a smart poster
via near field communications (NFC), which is a wireless form of
communications.” Id. at 11—12. According to Appellants, “the NFC
communications conducted between the smart poster and mobile device, the
communications conducted between the loyalty management server and the
OTA provisioning server, and provisioning of the mobile device with
electronic loyalty reward certificate data cannot be performed manually or
via human activity alone.” Id. at 12. In the Reply, Appellants further argue
“the instant claims are directed on a specific improvement in computer
technology capabilities.” Reply Br. 3^4 (citing Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
We are not persuaded by Appellants’ arguments. As correctly
recognized by the Examiner, (1) Appellants’ claims 1, 14, and 27, when
considered in light of Appellants’ Specification, recite delivering “an
electronic loyalty reward certificate” to a user, via a mobile device and (2)
delivering “an electronic loyalty reward certificate” to a user, whether in
person or via a mobile device, is nothing more than a “fundamental
economic practice long prevalent [i.e., pre-existing] in our system of
commerce” identified as an “abstract idea” by the Supreme Court in Bilski v.
Kappos, 130 S. Ct. 3218 (2010). Final Act. 3^4.
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Contrary to Appellants’ arguments, none of the steps recited in claims
1, 14, and 27 provides: (1) a “solution . . . necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” DDR Holdings, 773 F.3d at 1257; (2) “a specific
improvement to the way computers operate,” Enfish, 822 F.3d at 1336; or
(3) an “unconventional technology solution ... to a technological problem”
that “improve [s] the performance of the system itself,” Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1302 (Fed. Cir. 2016).
As to the second step of the Alice inquiry, Appellants argue “the
claims recite significantly more than the judicially recognized exception”
because each independent claim “recites the involvement and utilization of a
mobile device, a smart poster, a loyalty management server, and an OTA
provisioning server” and “the use of such elements to facilitate the providing
of an electronic loyalty reward certificate to a mobile device constitutes
significantly more than an abstract idea.” App. Br. 12.
We remain unpersuaded by Appellants’ arguments. In particular, we
find nothing in Appellants’ claims 1,14, and 27 that adds anything
“significantly more” to transform the abstract concept of delivering “an
electronic loyalty reward certificate” to a user into a patent-eligible
application. Alice, 134 S. Ct. at 2357. As described by the Supreme Court,
the second step of the Alice inquiry is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. 2355 (citing Mayo, 132 S. Ct. at
1294).
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Appellants do not argue any of the elements of claims 1,14, and 27
are individually inventive. Nor do Appellants argue the ordered
combination of these elements is inventive. App. Br. 12—13. Limiting such
an abstract concept to generic components such as “a mobile device,” “an
OTA provisioning server,” and “a wireless device reader” for operation in
the manner recited in Appellants’ claims 1,14, and 27 does not make the
abstract concept patent-eligible under 35 U.S.C. § 101. As recognized by
the Supreme Court, “the mere recitation of a generic computer cannot
transform a patent ineligible abstract idea into a patent-eligible invention.”
See Alice, 134 S. Ct. at 2359 (concluding claims “simply instruct[ing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer” not patent eligible); see also Ultramercial, 772 F.3d 709,
715—16 (Fed. Cir. 2014) (Claims merely reciting abstract idea of using
advertising as currency as applied to particular technological environment of
the Internet not patent eligible.); Accenture Global Servs., GmbHv.
Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (Claims
reciting “generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer” not patent
eligible.); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir.
2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.”).
Because Appellants’ claims 1—2, 4, 7—15, 17, 20-28, 30, and 33—38
are directed to a patent-ineligible abstract concept and do not recite
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something “significantly more” under the second prong of the Alice analysis,
we sustain the Examiner’s rejection of these claims under 35 U.S.C. § 101.
35 U.S.C. § 103(a): Claims 1-2, 4, 7-15, 17, 20-28, 30, and33-38
The Examiner finds (1) the combination of Abifaker, Antonucci, and
Lauper teaches all limitations of Appellants’ independent claims 1,14, and
27; and articulates (2) “reasoning with underpinning” to support the
combination of Abifaker, Antonucci, and Lauper. Final Act. 5—11 (citing
Abifaker H 31, 44-47, 50—51, 78; Antonucci H 68—69; Lauper 110). In
particular, the Examiner finds Abifaker teaches providing gift card services
for mobile devices, including, inter alia: (1) “utilizing a mobile device to
generate electronic loyalty reward certificate selection information” (id. at
5—6 (citing Abifaker H 44-47)); (2) “loyalty reward certificate” in the form
of loyalty programs associated with gift cards (id. at 6 (citing Abifaker
142)); and (3) “using a web browser of the mobile device to access the
[merchant’s] website” and selecting a loyalty reward option presented by the
website (id. (citing Abifaker H 44-47)). The Examiner acknowledges
Abifaker teaches “loyalty programs associated with gift cards” may be used
to purchase “gift cards” but relies on Antonucci for teaching the redemption
process, via a merchant’s website, using loyalty points to make any purchase
including “gift cards.” Id. at 8—9 (citing Antonucci H 68—69 (“consumers
may request to redeem points for a gift card or certificate”)). Lauper is only
relied upon for teaching “interfacing the mobile device to a smart poster, via
near field communications (NFC) to direct the mobile device to the website
associated with the merchant” to support the conclusion of obviousness. Id.
at 10 (citing Lauper 110).
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Application 12/651,420
Appellants contend the combination of Abifaker, Antonucci, and
Lauper does not teach or suggest the disputed limitation:
utilizing a mobile device to generate electronic loyalty reward
certificate selection information in response to redeeming, via a
website associated with a merchant, loyalty points for an
electronic loyalty reward certificate identified by the electronic
loyalty reward certificate selection information,
as recited in claims 1 and 14, and similarly recited in claim 27 (emphasis
added). In particular, Appellants acknowledge Abifaker teaches providing
gift card services for mobile devices, including “loyalty programs associated
with gift cards.” App. Br. 14—15. However, Appellants argue Abifaker does
not teach such “loyalty programs associated with gift cards may be used to
purchase wireless gift cards.” App. Br. 15. Likewise, Appellants
acknowledge Antonucci teaches redemption of loyalty points, but argue
Antonucci does not teach or suggest that “the points are redeemed in order to
generate electronic loyalty reward certificate selection information,” as
recited in claims 1 and 14, and similarly recited in claim 27. Id. at 16.
Lastly, Appellants also contend Lauper does not teach or suggest the
disputed limitation of claims 1, 14, and 27. Id. at 17—18.
We do not find Appellants’ arguments persuasive or commensurate
with the scope of claims 1,14, and 27. Instead, we find the Examiner
provides a comprehensive response to Appellants’ arguments supported by a
preponderance of evidence. Ans. 6—11. As such, we adopt the Examiner’s
findings and explanations. Id. For example, as recognized by the Examiner,
Appellants’ claims 1, 14, and 27 do not require “that ‘loyalty programs’ are
used to purchase wireless gift cards.” Ans. 7. Instead, the claims merely
recite generating “electronic loyalty reward certificate selection information
in response to redeeming . . . loyalty points for an electronic loyalty reward
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certificate identified by the electronic loyalty reward certificate selection
information.”
One cannot show nonobviousness by attacking references individually
where the rejection is based on a combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is what the
combined teachings would have suggested to those of ordinary skill in the
art. Id. at 425. Contrary to Appellants’ arguments, we agree with the
Examiner that the combined teachings of Abifaker and Antonucci teach
“utilizing a mobile device to generate electronic loyalty reward certificate
selection information in response to redeeming, via a website associated
with a merchant, loyalty points for an electronic loyalty reward certificate
identified by the electronic loyalty reward certificate selection information,”
as recited in claims 1,14, and 27. Final Act. 5—9 (citing Abifaker H 31,
44^47, 50-51, 78; Antonucci Tflf 68—69).
For the reasons set forth above, Appellants have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s obviousness
rejection of independent claims 1,14, and 27.
With respect to dependent claims 2, 4, 7—13, 15, 17, 20-26, 28, 30,
and 33—38, Appellants contend these claims are patentable over the cited
references mostly for the same reasons discussed. App. Br. 19—34. We
disagree and adopt the Examiner’s responses on pages 11—18 of the
Examiner’s Answer.
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—2, 4, 7—15, 17,
20-28, 30, and 33-38 under 35 U.S.C. §§ 101 and 103(a).
DECISION
As such, we affirm the Examiner’s final rejections of claims 1—2, 4,
7-15, 17, 20-28, 30, and 33-38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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