Ex Parte Lanford

Patent Trial and Appeal Board

Jul 27, 2017

12553499 (P.T.A.B. Jul. 27, 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.
12/553,499 09/03/2009 Matthew Lanford P00499-US-UTIL 6676
98665 7590 07/28/2017
Otterstedt, Ellenbogen & Kammer, LLP
P.0 Box 381
Cox Cob, CT 06807
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
07/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
90UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW LANFORD
Appeal 2015-004115
Application 12/553,499
Technology Center 3600
Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
MATTHEW S. METERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1—13, 15—19, and 26—30. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method comprising the steps of:
receiving, by a plurality of point of sale systems, a list of item
identifiers for a plurality of items eligible for a promotion;
Appeal 2015-004115
Application 12/553,499
receiving, by said point of sale systems, a list of device
identifying numbers of payment devices associated with said
promotion;
identifying, by a given one of said point of sale systems, during
a putative purchase of a given item with a given payment
device, that said given payment device is associated with
said promotion using said plurality of device identifying
numbers, and upon identifying said given payment device is
associated with said promotion, identifying that said given item
is eligible for said promotion using said list of item identifiers;
formatting and dispatching an authorization request to an
issuing processor of an issuing entity of said given payment
device identified as being associated with said promotion, via
an operator of a payment network, said authorization request
comprising at least:
a device identifier associated with said given payment device
identified as being associated with said promotion;
an item identifier associated with said given item identified as
being eligible for said promotion; and
price data associated with said given item identified as being
eligible for said promotion; and
receiving an authorization request response to said
authorization request, said authorization request response being
sent from said issuing processor of said issuing entity to said
given one of said point of sale systems, via said operator of said
payment network, said authorization request response
indicating that said putative purchase, of said given
item identified as being eligible for said promotion, with said
given payment device identified as being associated with said
promotion, is approved.
2
Appeal 2015-004115
Application 12/553,499
Appellant appeals the following rejection(s):
1. Claims 1—13, 15—19, and 26—30 are rejected under 35 U.S.C§ 101 as
being directed to nonstatutory subject matter.
2. Claims 1, 2, 8—10, 12, 13, 15, 16, 18, 19, 26, and 28—30 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Fordyce et al. (US
2008/0059306 Al, published Mar. 6, 2008) in view of Darst et al. (US
2009/0150234 Al, published June 11, 2009).
3. Claim 3 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Fordyce, Darst, and Harrison et al. (US 2007/0185803 Al, published
Aug. 9, 2007) and McDevitt et al. (US 200/0164106 Al, July 19, 2007).
4. Claims 4, 5 and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fordyce, Darst, Harrison, McDevitt, and Alspach-Goss et al. (US
2006/0053056 Al, Mar. 9, 2006).
5. Claim 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Fordyce, Darst, Harrison, McDevitt, Alspach-Goss, and Fiebiger et al.
(US 2008/0033880 Al, published Feb. 7, 2008).
6. Claim 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Fordyce, Darst, and Harrison.
7. Claim 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Fordyce, Darst, and Fiebiger.
8. Claim 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Fordyce, Darst, and Alspach-Goss.
ISSUES
Did the Examiner err in rejecting the claims under 35 U.S.C. § 101
because the Examiner provided no specific analysis, ignores limitations in
3
Appeal 2015-004115
Application 12/553,499
the claims, the claims encompass a practical application and the claims are
not solely limited to the alleged abstract idea?
Did the Examiner err in rejecting claim 19 under 35U.S.C. § 101
because the claims are not directed to software only?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 103(a)
because the prior art does not disclose or suggest a method wherein upon
identifying a given payment device associated with a promotion, identifying
that a given item is eligible for the promotion by a point of sale system?
ANALYSIS
Rejection under 35 U.S.C. § 101 of claims 1—13, 15—19 and 26—30
We initially note that 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 implicit exceptions: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S.Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
4
Appeal 2015-004115
Application 12/553,499
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
5
Appeal 2015-004115
Application 12/553,499
The Examiner asserts that independent claim 1 is directed to the
fundamental economic principle of purchasing transactions. Ans. 4. The
Examiner further holds that the specific steps of the claims amount to no
more than a generic computer performing generic computer functions.
Specifically the Examiner found that the steps of receiving data, identifying
and formatting and dispatching data are well-understood, routine and
conventional activities previously known in the industry. We agree.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Examiner provided no specific analysis.
Specifically, Appellant argues that, for example, that the present rejection
appears to be based on a per se reasoning using conclusory statements.
Reply. 13.
In our view, the Examiner's statement, which Appellant
acknowledges he has read, is sufficient to place Appellant on notice as
to step 1 of Alice as required under 35 U.S.C. § 132, Further,
Appellant’s understanding of the Examiner's rejection on this point
was manifested by his response to the Office Action. Appellant does
not respond by asserting that he did not understand the Examiner’s
rejection. Instead, Appellant presented several arguments, which we
address below. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). On
the issue of prima facie notice, particularly to anticipation but also
generally, our reviewing court was clear in Jung that:
There has never been a requirement for an examiner to make an
on-the-record claim construction of every term in every rejected
claim and to explain every possible difference between the prior
art and the claimed invention in order to make out a prima facie
rejection.
6
Appeal 2015-004115
Application 12/553,499
Jung, 637 F.3d at 1363. The Federal Circuit further stated:
“[Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132
merely ensures that an applicant at least be informed of the
broad statutory basis for the rejection of his claims, so that he
may determine what the issues are on which he can or should
produce evidence.” Chester, 906 F.2d at 1578 (internal citation
omitted). As discussed above, all that is required of the office
to meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references
relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132. As the statute itself
instructs, the examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.
The Examiner's holding that the steps of claim 1 of receiving
item and device identifiers, identify ing items el igible for promotion,
formatting, dispatching and receiving an authorization request fall
under the fundamental economic principle of purchasing transactions
was more than sufficient to meet this burden as to Alice step 1.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that limitations in the claims have been ignored
because the Examiner held that the claim falls under the fundamental
economic practice of purchasing transactions and specifically addressed
each limitation in claim 1 and held that the limitations related to no more
than well-understood, routing and conventional activities previously known
in the industry. Ans. 4.
7
Appeal 2015-004115
Application 12/553,499
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 1 encompasses a practical application and
are not solely limited to the alleged abstract idea. Appellant specifically
argues that claim 1 includes various steps performed by a point of sale
system that are more than the Examiner’s distillation of the claim. However,
the steps relate to sending and receiving data and analyzing data and are thus
essentially synonymous with the term “computer” and thus add little or
nothing to simply claiming the use of a general purpose computer. The
recitation of computer functions in the claim has no substantial practical
application except in connection with a digital computer. See Fuzzy sharp
Technologies Inc. v. 3D Labs Inc. Ltd, 447 Fed. Apps. 182, 185 (Fed. Cir.
2011); Benson, 409 U.S. at 71, 93 S.Ct. 253.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will sustain the rejection as it is directed to claim 29 for the
same reasons.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument, directed to claim 18 that the claim does not solely
capture the alleged abstract idea but rather includes additional inventive
features such as the receiving and formatting and dispatching steps that are
meaningful beyond generally liking the use of the abstract idea. While the
Appellant is correct that under the second step of the Alice analysis, a claim
that is directed to an abstract idea may still be considered patent eligible if
the claim is directed to significantly more than the abstract idea, we do not
hold that the above-stated steps of the invention amount to more than the
steps performed by a generic computer which as we discussed above does
not transform an ineligible abstract idea into an eligible abstract idea.
8
Appeal 2015-004115
Application 12/553,499
Therefore, these steps do not amount to significantly more than the abstract
idea.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 18.
We will sustain the rejection as it is directed to claim 19 for the same
reasons. As in Alice, the method claims recite the abstract idea implemented
on a generic computer; claim 19 recites a handful of generic computer
components configured to implement the same idea,” Alice at 2360. “[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.” Alice at
2358. We will not sustain the rejection as it is directed to claim 26 for the
same reasons.
We will also sustain the rejection as it is directed to the remaining
claims subject to this rejection because the Appellant does not address the
separate patent eligibility of these claims.
Additional Rejection under 35 U.S.C. f 101 of claim 19
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 19 is not directed to software per se. Claim
19 is set out in “means for” language and as such pursuant to 35 U.S.C.
§ 112, paragraph 6, is directed to elements disclosed in the specification for
performing the functions or their equivalents. We agree with the Examiner
that in accordance with the specification, the means for performing the steps
of the claim as disclosed on page 3, lines 23—29 includes a software module.
9
Appeal 2015-004115
Application 12/553,499
In the instant case, the means in claim 19 is not recited as non-transitory, and
Appellant’s disclosure does not expressly and unambiguously limit the
software module to solely non-transitory forms via a definition or similar
limiting language. Further, the U.S. Patent & Trademark Office, Evaluating
Subject Matter Eligibility Under 35 U.S.C. §101 (August 2012 Update) (pp.
11-14), available at
http://www.uspto.goy/patents/law/exam/10l_training_aug2012.pdf, notes
that the recitation “non-transitory” is a viable option for overcoming the
presumption that those media encompass signals or carrier waves, merely
media are “physical” or tangible” will not overcome
such presumption. Therefore, a software module encompasses transitory
forms, which are ineligible under § 101.
In view of the foregoing, we will sustain this rejection of the
Examiner.
Rejection under 35 U.S.C. § 103
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the prior art does not disclose or suggest upon
identifying said given payment device is associated with a promotion
identifying that said item is eligible for said promotion. Paragraph 9 of
Fordyee teaches that the identifier for the merchant and the account or
payment device is first checked and that when both of these identi fiers
reveal that both the merchant and the account are participants in a loyalty
program, a determination is made that the transaction is eligible for an
incentive. This paragraph further teaches that the determination that the
transaction is eligible for an incentive may further include matching a goods
or services identifier against identifiers in a database. As such, Fordyee
10
Appeal 2015-004115
Application 12/553,499
clearly teaches that the account or payment device is first identified as
associated with a promotion and then the item is identified as associated
with a promotion. We find that the only difference between the subject
matter recited in claim 1 and the Fordvee method is that the identifying step
in the Fordyce method is not done by the point of sale system._The
Examiner relies on Darst for teaching making identifications of association
with a promotion in a point of sale system.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain this rejection as it is directed to claims 2, 9,
10, 12, 13, 15, 16, 18, 19, 29 and 30 because the Appellant has not argued
the separate patentability of these claims.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument directed to the rejection of claim 8, that the Examiner
has failed to present a rationale or reasoning behind the rejection which
specifically identifies an element or elements of Fordyce and Darst
references which correspond to the claimed invention. As detailed above,
the Examiner found that the subject matter of the claims is largely described
in the Fordyce reference.
We note at the outset, that there has never been a requirement for an
examiner to make an on-the-record claim construction of every' term in every
rejected claim and to explain every possible difference between the prior art
and the claimed invention in order to make out a prima facie rejection. See
In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). On the issue of prima facie
notice, particularly to anticipation but also generally, our reviewing court
wras clear in Jung 637 F.3d at 1363. The Federal Circuit further stated:
11
Appeal 2015-004115
Application 12/553,499
“[Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132
merely ensures that an applicant at least be informed of the
broad statutory basis for the rejection of his claims, so that he
may determine what the issues are on which he can or should
produce evidence.” Chester, 906 F.2d at 1578 (internal citation
omitted). As discussed above, all that is required of the office to
meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references
relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132. As the statute itself
instructs, the examiner must “notify the applicant,” “stating the
reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.
of theThe Examiner’s finding with reference to specific paragi
reference included information and references as is useful in jufipirm
propriety of the continuing prosecution. That Appellant understood the
reasons for the rejection is evidenced by the Appellant’s arguments in
response to the rejection.
In regard to whether there was a stated reason or rationale in support
of the rejection, the Examiner clearly stated that the reason for the
combination of the teachings of Fordyce and Durst would have been to
decrease the amount of data sent over networks which would prevent the
network from bogging down and increase security by decreasing the amount
of data sent over networks and controlling access to data. Fin. Act. 4.
In view of the foregoing, we will also sustain the Examiner’s rejection
of claim 8.
12
Appeal 2015-004115
Application 12/553,499
DECISION
The decision of the Examiner is sustained.
ORDER
AFFIRMED
13