Ex Parte Klemm et al

Patent Trials and Appeals Board

Feb 22, 2019

14152225 - (D) (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/152,225 01/10/2014
21839 7590 02/26/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
David Klemm
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.
0076412-000174 9041
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID KLEMM, PURVI JATIN GANDHI,
STEP ANIA DEL TOSTO, MICHAEL J. COWEN,
VLADIMIR RYMCHUK, BENSAM JOYSON,
STEPHEN ELDER, and JAMES GALLAGHER
Appeal2017-003472
Application 14/152,225 1
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is MasterCard
International Incorporated. Appeal Br. 2.
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Application 14/152,225
STATEMENT OF THE CASE2
David Klemm, Purvi Jatin Gandhi, Stefania Del Tosto, Michael J.
Cowen, Vladimir Rymchuk, Bensam Joyson, Stephen Elder, and James
Gallagher (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1-20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of scoring of payment transactions as
part of a social game. Specification paragraph 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method for facilitating a social
game based upon scoring a payment transaction via a
processmg server, compnsmg:
[ 1] receiving,
electronically and from a plurality of consumers,
registration information,
[2] storing,
wherein the registration information comprises
consumer registration data;
in a consumer database,
a plurality of consumer profiles based upon the received
consumer registration data,
wherein each consumer profile includes data
related to a consumer of the plurality of consumers
2 Our Decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed April 14, 2016) and Reply Brief ("Reply Br.," filed December 19,
2016), and the Examiner's Answer ("Ans.," mailed October 21, 2016), and
Final Action ("Final Act.," mailed November 20, 2015).
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[3] storing,
including at least a consumer identifier, contact
information, and a team identifier;
in a merchant database,
a plurality of merchant profiles,
wherein each merchant profile includes data
related to a merchant including at least a merchant
identifier and a plurality of team scores;
[ 4] receiving,
by a receiving device and from a merchant device
associated with one of the plurality of merchant
profiles,
an authorization request for a payment transaction,
wherein the authorization request includes at least
a consumer identification, a merchant
identification, and transaction data;
[5] identifying,
by a processing device and in the consumer database,
a specific consumer profile
[ 6] identifying,
where the included consumer identifier
corresponds to the consumer identification;
by a processing device and in the merchant
database,
a specific merchant profile
where the included merchant identifier
corresponds to the merchant identification;
[7] identifying,
by the processing device,
a transaction score for the payment transaction using one
or more scoring rules, based on the transaction data;
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[8] updating,
and
by the processing device and in the specific
merchant profile,
a team score of the plurality of team scores
corresponding to the team identifier included in the
specific consumer profile based on the transaction score;
[9] transmitting,
by a transmitting device and to a consumer device,
a notification to the consumer related to the specific
consumer profile,
wherein the consumer device to which the
notification is transmitted is determined based on
the included contact information
and
wherein the notification is based upon at least
some of the identifying and updating steps.
The Examiner relies upon the following prior art:
Walker
Hemblad
Crinon
us 6,128,599
US 2004/0054592 Al
US 2012/0196646 Al
Oct. 3, 2000
Mar. 18, 2004
Aug.2,2012
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-17 and 19 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Walker and Hemblad.
Claims 18 and 20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Walker, Hemblad, and Crinon.
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ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether the art applied
describes the claim limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Walker
01. Walker is directed to promoting the use of financial accounts.
More particularly, Walker relates to a method and system which
facilitates generating, communicating and managing a customized
reward offer presented to a group of account holders to benefit an
affinity group sponsor. Walker 1: 16-21.
02. Walker describes a method and system to define, manage and
evaluate group reward offers which are customized based on
specific criteria of affiliated account holders and presented to an
affinity group sponsor. Accordingly, affiliated account holders
may be induced to exhibit behavior desired by an account issuer.
Walker 2:40-45.
03. Walker promoting the use of a financial account which enables
a credit card issuer to tailor targets and rewards based on affinity
group characteristics. Walker 3: 11-14.
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04. Walker describes accessing transaction data associated with a
financial account controlled by a member of an affinity group by
determining aggregate performance data based on the transaction
data and determining a performance target based on the aggregate
performance data. The aggregate performance data describes
activity of the member accounts. Walker 2:52-59.
05. Walker describes processing a reward for a sponsor of an
affinity group based on at least one affiliated financial account by
retrieving performance target data, including a group performance
target, associated with the affinity group and aggregating member
transaction data to determine an aggregated performance value.
Walker 2:60-67.
06. Walker describes a storage device that stores a database of
account, target and reward data, including an affinity group table;
a card holder account table; a group target/reward table; and a
transaction table. The tables comprise at least a portion of the
database stored by storage device. Walker 5: 17-23.
07. Walker describes transaction table 600. Each record of
transaction table 600 represents a transaction between a credit card
holder and a merchant. Transaction table 600 includes the
following seven fields: transaction ID field 608; account ID
field 610; merchant ID field 612; transaction amount field 614;
date field 616; time field 618; and credit card authorization
number 622. Walker 8:23-30, Figure 6.
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Hemblad
08. Hemblad is directed to enhancing food order placement,
processing, and payment, and improving the overall customer
experience at restaurants and other food service establishments,
and in particular, a system including thin, touch-screen terminals
and mobile devices that connect wirelessly to one or more servers,
and allow customers to independently place and pay for food-
related orders quickly and efficiently. Hemblad, para. 1.
09. Hemblad not only handles order placement and payment
settlement, but also order fulfillment, and includes additional
features, such as a multi-lingual interface, automated seating, pre-
ordering, customer reward points, and dynamic selling or
promotion of unwanted inventory. Hemblad, para. 43.
ANALYSIS
Claims 1-20 rejected under 35 U.S.C. § 101 as directed to ajudicial
exception without significantly more
STEP 12
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether the claims is directed to a judicial exception without significantly
more.
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat
else is there in the claims before us? To answer that question,
... consider the elements of each claim both individually and
"as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a
patent-eligible application. [The Court] described step two of
this analysis as a 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."
Alice Corp. Pty. Ltd. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea) ("Step 2A Prong 1"). Then, if the
claims recite a judicial exception, determining whether the claims at issue
are directed to the recited judicial exception, or whether the recited judicial
exception is integrated into a practical application of that exception ("Step
2A Prong 2"). If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception ("Step 2B").
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STEP 2A Prong 1
Method claim 1 recites receiving registration data, storing consumer
and merchant profiles, receiving data representing transaction authorization,
identifying consumer and merchant profiles and a transaction score,
updating a team score, and transmitting a notification. Identifying data is a
rudimentary form of generic data analysis. Updating data is a form of
modifying data. Thus, claim 1 recites receiving, analyzing, modifying, and
transmitting data. None of the limitations recite technological
implementation details for any of these steps, but instead recite only
functional results to be achieved by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz. mathematical concepts, 4 certain methods
of organizing human interactions, 5 including fundamental economic
practices and business activities, or mental processes. 6
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157 (Fed. Cir.
2018).
6 See, e.g., Gottschalk, 409 U.S. at 67; CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The Examiner determines the claims to be directed to computing
scores (Final Act. 2), and to comparing and organizing information for
transmission. Ans. 2.
The preamble to claim 1 recites that it is a method for facilitating a
social game based upon scoring a payment transaction via a processing
server. The steps in claim 1 result in computing scores and transmitting
notifications absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1--4 recite data gathering
steps of data reception and storage. Limitation 9 recites insignificant post
solution data transmission. Limitations 5-8 recite identifying and updating
data which is no more than generic analyzing and modifying of customer,
merchant, and score data, which advise one to apply generic functions to get
to these results. Limitations 7-9 are the only steps reciting performing what
the claim produces, and recite performing score identification and updating
and notifying a consumer, which is simply computing scores and letting a
consumer know the results of at least some of limitations 5-8. To advocate
computing scores and letting a consumer know is conceptual advice for
results to be obtained and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
scoring of payment transactions as part of a social game. Although both the
Specification and the claim 1 preamble refer to a social game, the body of
claim 1 does not refer further to a game as such. The closest the body text
comes is the identification of scores based on unspecified rules. Thus, the
recitation of a game is construed to refer to the identification of scores in the
body of the claim and no more. Therefore, all this intrinsic evidence shows
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that claim 1 is directed to scoring commercial transactions for the purpose of
notifying a customer of something, i.e., a marketing promotion. This is
consistent with the Examiner's determination.
The concept of marketing promotion is a fundamental business
practice long prevalent in our system of commerce. The use of marketing
promotion is also a building block of ingenuity in marketing. Thus,
marketing promotion is an example of a conceptual idea subject to the
Supreme Court's "concern that patent law not inhibit further discovery by
improperly tying up the future use of 'these building blocks of human
ingenuity."' See Alice, 573 U.S. at 216 ( citations omitted). Claim 1 recites
the idea of performing various conceptual steps generically resulting in the
marketing promotion. As we determined earlier, none of these steps recite
specific technological implementation details, but instead get to this result
by advising one to score a transaction for both a consumer and some team
and notify the consumer based on profile and transaction data. Thus, claim 1
is directed to marketing promotion, which is a fundamental business
practice.
This in tum is an example of commercial or legal interactions as a
certain method of organizing human interactions because marketing
promotions are activities by organizational members to induce consumers to
interact in commerce. The concept of marketing promotion as advised to be
done by scoring a transaction for both a consumer and some team and
notifying the consumer based on profile and transaction data is a way of
promoting consumer transactions by providing some psychological benefit
from such notification based on transaction scores. The steps recited in
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claim 1 are part of abstract conceptual advice for coming up with such
scores.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, 772 F .3d at 715
(advertising); CyberSource Corp., 654 F.3d at 1375 (detecting credit-card
fraud based on past transactions).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
modifying, and transmitting data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, analysis,
modification, and transmission and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (Finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation."). As such, claim 1 is directed to the abstract idea of
receiving, analyzing, modifying, and transmitting data, and not a
technological implementation or application of that idea.
Alternately, this is an example of a mathematical concept because the
steps of identifying individual and team scores perform a mathematical
algorithm. The remaining steps are mere data gathering and incidental post
processing steps.
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From this we conclude that at least to this degree, claim 1 is directed
to the abstract idea of marketing promotion by advising one to score a
transaction for both a consumer and some team and notify the consumer
based on profile and transaction data.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[A]pplication[s]" of
such concepts " 'to a new and useful end,' " we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the " 'buildin[g] block[ s]' " of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it' "is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea " 'to a particular technological environment.' "
Stating an abstract idea while adding the words "apply it with a
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t ]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our§ 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Steps 1--4 are pure data gathering steps. Limitations
describing the nature of the data do not alter this. Step 9 is insignificant post
solution activity, such as storing, transmitting, or displaying the results.
Steps 5-8 recite generic computer processing expressed in functional terms
to be performed by any and all possible means and so present no more than
abstract conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
marketing promotion as performed by a generic computer. To be sure,
claim 1 recites doing so by advising one to score a transaction for both a
consumer and some team, and notify the consumer based on profile and
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transaction data. But this is no more than abstract conceptual advice on the
parameters for such marketing promotion and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The claim 1 does not, for example, purport to improve the functioning
of the computer itself. Nor does it affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment8 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of marketing promotion under different scenarios. It does not
describe any particular improvement in the manner a computer functions.
Instead, claim 1 at issue amounts to nothing significantly more than an
instruction to apply the abstract idea of marketing promotion by advising
one to score a transaction for both a consumer and some team and notify the
consumer based on profile and transaction data using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
8 The Specification describes a general purpose processor device. Spec.,
para. 80.
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uses 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.
We conclude that claim 1 is directed to advising one to score a
transaction for both a consumer and some team and notify the consumer
based on profile and transaction data to achieve the functional result of
marketing promotion as distinguished from a technological improvement for
achieving or applying that result. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provides significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, and transmitting data amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) ("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming."). None of these
activities are used in some unconventional manner nor do any produce some
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unexpected result. Appellants do not contend they invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, "even
if a process of collecting and analyzing information is 'limited to particular
content' or a particular 'source,' that limitation does not make the collection
and analysis other than abstract." SAP Am., Inc. v. InvestPic LLC, 898 F.3d
1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-transmission is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, 772 F.3d at 715 (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission);
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is, therefore, ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
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REMAINING CLAIMS
The remaining method claims merely describe process parameters.
We conclude that the method claims at issue are directed to a patent-
ineligible concept itself, and not to the practical application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting
§ 101 "in ways that make patent eligibility "depend simply on
the draftsman's art."
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of marketing
promotion, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2--4 and Answer 5-8 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that
the present claims are patent-eligible when considered in light
of the [S]pecification and as a whole. Rather, Appellant[s]
respectfully submit[] that the pending claims are inextricably
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tied to the technical fields of information technology
management, electronic transaction processing and analytics,
electronic gaming and electronic social networking.
Appellant[ s] further submit[] that the claims provide technical
solutions tied to these technical fields. In particular, the present
claims recite methods and systems for facilitating a computer-
implemented social game based upon authorization requests
processed through a financial transaction network. The claims
rely upon the technical features of a complex financial
transaction network, which would be apparent to one skilled in
the art upon reading the present claim language in light of
Appellant[ s' S ]pecification. The claims provide for user
updates (e.g., via a mobile application) which allow a user to
participate in the social game and receive real-time data ( e.g.,
from a gaming processor).
Reply Br. 2-3. The analysis, supra, is based on consideration of the claims
in light of the Specification and as a whole. The only tie to the technical
fields of information technology management, electronic transaction
processing and analytics, electronic gaming and electronic social networking
is the recitation of being performed on a computer. No technological
implementation details are recited, and in particular no details that would be
categorized in any of these fields. The only solution recited is abstract
conceptual advice to score a transaction for both a consumer and some team,
and notify the consumer based on profile and transaction data to achieve the
functional result of marketing promotion, as distinguished from a
technological improvement for achieving or applying that result. No
complex financial network is recited in the claims. To provide for user
updates is no more than to say providing for data gathering.
Appellants also attempt to analogize the claims to those involved in
McRO. Reply Br. 5-6. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
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and newly claimed method ... produced ... results in fundamentally
different ways." Fair Warning, 83 9 F .3 d at 1094 ( differentiating the claims
at issue from those in McRO). In McRO, "[i]t is the incorporation of the
claimed rules, not the use of the computer, that improved the existing
technological process," because the prior process performed by humans
"was driven by subjective determinations rather than specific, limited
mathematical rules." McRO, 837 F.3d at 1314 (internal quotation marks,
citation, and alterations omitted). In contrast, the claims of the instant
application merely implement an old practice of using decision criteria in
making sales decisions in a new environment. Appellants have not argued
that the claimed processes of selecting transactions and profiles apply rules
of selection in a manner technologically different from those which
humans used, albeit with less efficiency, before the invention was claimed.
Merely pigeonholing the objects of decision-making to aid decision-making
is both old and itself abstract. Computing a team score in addition to an
individual score is equally conventional and notorious.
The claims in McRO were not directed to ... "a specific
asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type." We explained that
"the claimed improvement [was] allowing computers to
produce 'accurate and realistic lip synchronization and facial
expressions in animated characters' that previously could only
be produced by human animators." The claimed rules in McRO
transformed a traditionally subjective process performed by
human artists into a mathematically automated process
executed on computers.
FairWarning, 839 F.3d at 1094 (citations omitted) (differentiating the
claims at issue from those in McRO).
We are not persuaded by Appellants' argument that
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Appellant[s'] claims cannot be performed entirely in the human
mind and are not directed to automating a process previously
performed by humans. Instead, the appealed claims are
directed to a novel social game facilitated by way of a
particularly claimed method and system. The present claims
recite methods and systems for facilitating a computer-
implemented social game based upon authorization requests
processed through a financial transaction network.
Reply Br. 6. Aside from the data gathering and transmission steps, which
are both insignificant and conventional, the remaining steps identify data and
scores, which can be done in the head or with paper and pencil for
sufficiently elementary instances which would be within the scope of the
claims as broadly recited. As to the novelty of a social game, again the only
aspects of a game recited are computations of individual and team scores,
which are also notorious and conventional. Beyond that, the novelty of an
abstract idea is not a distinguishing issue. "[A] claim for a new abstract idea
is still an abstract idea. The search for a § 101 inventive concept is thus
distinct from demonstrating§ 102 novelty." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellants' argument that the claims require
specialized computers. Reply Br. 6-7. As we determine in Footnote 8
supra, the Specification describes using a general purpose processor device.
We are not persuaded by Appellants' argument that
the Examiner analogizes pieces of Appellant[s'] claims to non-
electronic methods ( e.g., submitting paper forms for
registration, comparing credit cards to numbers in a book, and
searching a card catalogue for data). Appellant[s] respectfully
submit[] the steps of Appellant[ s '] claims, when considered as a
whole, recite much more than merely submitting a form for
registration and searching a database. Further, the claims
explicitly recite, e.g., the registration information is received
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electronically. The comparison of a credit card number to one
in a book is not equivalent to the receipt of an authorization
request ( e.g., formatted according to electronic financial
transaction protocol) from a merchant device. Similarly,
searching a card catalogue for information does not provide for
the identification of, e.g., merchant profiles, etc., the application
of electronic rules to transaction data, the updating of a score or
the transmission of a notification. Accordingly, Appellants
respectfully submit that the Examiner's assertion that each of
Appellant[s'] claim recitations can be performed by a human is
inaccurate and demonstrates a failure to consider Appellant[s']
claims as a whole in light of the [S]pecification for what they
fairly convey.
Reply Br. 8. To argue that the claims recite much more than merely
submitting a form for registration and searching a database without
explanation is conclusory. Whether information is received electronically
does not patentably distinguish a claim from an abstract idea for the reasons
we determine supra. Whether data is formatted according to electronic
financial transaction protocol is not at issue because this is not recited in the
claims. To the extent this may be implied with electronic transactions, this
would then be no more than a contextual characterization of the data and not
a technological solution recital.
We are not persuaded by Appellants' argument that
[i]t is unclear how the Examiner believes that Appellant[s']
claimed method and system could be performed in the absence
of an electronic payment network and devices capable of
receiving and interpreting an authorization request such as those
transmitted along payment rails of credit card processing
networks according to electronic financial transaction protocols.
Reply Br. 9. Appellants are only contending that the claims are in some
particular technological context, which does not patentably distinguish the
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claims. "The Supreme Court and this court have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract."
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016).
Claims 1-17 and 19 rejected under 35 U.S. C. § 103 (a)
as unpatentable over Walker and Hernblad
Claims 18 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Walker, Hernblad, and Crinon
The Examiner largely applies Walker, which describes conventional
credit card transaction processing for credit cards associated with some
entity such as a college for which an affinity group is formed. As Walker
describes, such so called affinity cards were well known to the general
public prior to the date of filing. Claim 1 steps 1-6 recite no more than
conventional credit card processing, as one must register ( step 1) to get a
card, both card holder and merchant data must be stored in some database to
process transactions (steps 2 and 3), such credit card transactions require
authorization ( step 4) and the transaction data must identify both the card
holder and merchant, and thus their respective profiles, to process the
transaction (steps 5 and 6). Walker determines performance target data
towards rewards for each transaction, which corresponds to the recited
transaction score (step 7). Walker aggregates this data for the affinity group,
which corresponds to the recited team score (step 8). Walker describes
communicating program information to the cardholders (step 9).
We are not persuaded by Appellants' argument that:
The various data entries of table 600 do not relate to a single
cardholder or merchant. Appellant[ s] respectfully submit[] that
none of the cited portions of Walker teach or suggest
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Appellant[ s'] claim step of receiving [ . .] an authorization
request for a payment transaction. It is additionally submitted
that the skilled artisan would understand multiple types of
transaction communications ( e.g., related to batch processing,
real-time processing, etc.) occur between a merchant point of
sale device and a financial processing network. Appellant[s]
further respectfully submit[] that one skilled in the art
would recognize the term "authorization request" to be a
term of the art and would not find the portions of Walker
cited by the Examiner to address Appellant[s'] "receiving"
step to imply the receipt of an "authorization request." At
least because Walker does not teach this "receiving" step of
Appellant[s'] claim 1, Walker cannot provide for real-time
updates or transmission of notifications, unlike the method and
system of Appellant[s'] claims. For at least the above-stated
reasons, it is respectfully submitted that Walker does not teach
or suggest the "receiving [ ... ] an authorization request for a
payment transaction [ ... ] " step of Appellant[ s'] claim 1.
App. Br. 16. This is in response to the Examiner's finding that a table stores
authorization numbers (Walker, ref. 622) for transactions in its table 600,
shown in Figure 6 of Walker. First, again, conventional credit card
processing is known to require authorizations, and the data identifying such
authorizations are referred to as authorization numbers. Second, as table 600
is a transaction table, every record represents a discrete transaction which by
its nature as a transaction between card holder and merchant refers to that
single cardholder and merchant. Third, as credit card data is passed
electronically between a merchant and the credit card network computers,
the authorization number is necessarily received by some device.
We are not persuaded by Appellants' argument that "it is unclear from
the Office Action how the food-ordering system of Hemblad and the affinity
reward system of Walker can be combined in a logical manner." App.
Br. 1 7. The Examiner only applies Hemblad to further evidence the known
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practice of registration, which as we determine supra, is a necessary
precursor to obtaining a credit card account with which to execute
transactions. The Examiner applies Hemblad to show there was also known
a transaction level registration operation, such as initiating a food order. The
Examiner does not suggest combining Hemblad's system with Walker.
We are not persuaded by Appellants' argument that
neither Walker nor Hemblad, alone or in combination, teaches
or suggests "a method for facilitating a social game based upon
scoring a payment transaction via a processing server" nor does
the Examiner make such an allegation. Appellant[ s] further
respectfully submit[] that the preamble of Appellant[ s '] claim 1
must be considered at least for the context which it provides.
App. Br. 18 ( emphasis omitted). We agree with the Examiner that the
preamble phrase "for facilitating a social game" is a mere field of use and
provides no structural or procedural effect upon the body of the claim. But
even taking the phrase into account, as we do supra, in the context of the
claim it means computing scores in limitations 7 and 8, and so Walker
provides enough to describe such a game, played by cardholders, to earn
awards for themselves and the affinity entity.
As to separately argued claims 3, 4, and 18, reciting the content of
what is transmitted, such content is non-functional descriptive material. Our
reviewing court has held that nonfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Cf In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability);
King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
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("[T]he relevant question is whether 'there exists any new and unobvious
functional relationship between the printed matter and the substrate.'")
(Citations omitted).
The rationale behind this lack of patentable weight is preventing the
repeated patenting of essentially a known product by the mere inclusion of
novel non-functional descriptive material. King Pharms., 616 F.3d at 1279
("The rationale behind this line of cases is preventing the indefinite
patenting of known products by the simple inclusion of novel, yet
functionally unrelated limitations."); Cf Ngai, 367 F.3d at 1339 ("If we were
to adopt Ngai's position, anyone could continue patenting a product
indefinitely provided that they add a new instruction sheet to the product.").
Here, the process in no way depends on the actual mental interpretation of
the transmitted content, and the mental interpretation of such data is not
dependent on the process.
CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1-17 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Walker and Hemblad is proper.
The rejection of claims 18 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Walker, Hemblad, and Crinon is proper.
DECISION
The rejection of claims 1-20 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.I36(a)(l)(iv) (2011).
AFFIRMED
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