Ex Parte MacIlwaine et al

Patent Trial and Appeal Board

Jan 29, 2018

12849801 (P.T.A.B. Jan. 29, 2018)

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.
12/849,801 08/03/2010 John Hamilton Macllwaine 8223-1706965 8554
144885 7590 01/31/2018
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/31/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN HAMILTON MACILWAINE, PATRICK STAN,
KIRSTEN E. GAREN, MARK CARLSON, GEORGE WILLIAM
COOMBES IV, SURENDRA KESHAN, and RUSSELL P. ZINK
Appeal 2016-005614
Application 12/849,801
Technology Center 3600
Before JOHN A. EVANS, STEVEN M. AMUNDSON, and JASON M.
REPKO, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of Claims 1—7, 9-15, 17, and 18. App. Br. 2.
Claims 8, 16, 19, and 20 are canceled. Claims App’x.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 Appellants state the real party in interest is Visa, Inc. App. Br. 2.
2 Rather than reiterate the arguments of the Appellants and the Examiner, we
refer to the Appeal Brief (filed October 13, 2015, “App. Br.”), the Reply
Brief (filed May 2, 2016, “Reply Br.”), the Examiner’s Answer (mailed
Appeal 2016-005614
Application 12/849,801
STATEMENT OF THE CASE
The claims relate to a method of presenting advertising to a user. See
Abstract.
INVENTION
Claims 1,17, and 18 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below:
1. A computer-implemented method, comprising:
presenting, by a computing apparatus over a network, an
advertisement within a web page via a web browser operating
on a computing device of a user, wherein the advertisement
provides an offer that includes one or more of the following for
future purchase transaction by the user: a discount, a rebate, and
a reward;
receiving, by the computing apparatus over the network,
a selection of a first portion of the advertisement by the user via
the web browser on the user’s computing device;
in response to the selection of the first portion of the
advertisement by the user, presenting, by the computing
apparatus via the web browser on the user’s computing device,
a user interface that includes a selectable option for associating
the offer with a financial account of the user;
receiving, by the computing apparatus over the network,
a selection of the option for associating the offer with the user’s
financial account via the user interface;
March 2, 2016, “Ans.”), the Final Action (mailed May 13, 2015, “Final
Act.”), and the Specification (filed August 3, 2010, “Spec.”) for their
respective details.
2
Appeal 2016-005614
Application 12/849,801
in response to receiving the selection of the option for
associating the offer with the user’s financial account,
associating the offer with the financial account of the user;
monitoring, by the computing apparatus, transactions
processed by a transaction handler to identify a purchase
transaction that uses the financial account of the user for a
purchase that is eligible for the offer; and
in response to identifying the purchase transaction
eligible for the offer, automatically applying the offer to the
identified purchase transaction.
References and Rejections
Boyd, et al.,
Kaplan, et al.,
Fordyce
US 2004/0193489 Al Sept. 30, 2004
US 2007/0156517 Al July 5, 2007
US 2008/0059303 Al Mar. 6, 2008
The claims stand rejected as follows:
1. Claims 1—7, 9—15, 17, and 18 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Final Act. 8—11.
2. Claims 1, 2, 4—7, 9, 12, 13, 15, 17, and 18 stand rejected under
35 U.S.C. § 102(b) as anticipated by Boyd. Final Act. 11—20.
3. Claims 3,11, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyd and Fordyce. Final Act. 20-23.
4. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyd, Fordyce, and Kaplan. Final Act. 23—25.
3
Appeal 2016-005614
Application 12/849,801
ANALYSIS
We have reviewed the rejections of Claims 1—7, 9-15, 17, and 18 in
light of Appellants’ arguments that the Examiner erred. We have considered
in this Decision only those arguments Appellants actually raised in the Brief.
Any other arguments which Appellants could have made but chose not to
make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded that Appellants identify reversible error.
Upon consideration of the arguments presented in the Appeal Brief,
we do not agree with Appellants that the claims are patentable under
35 U.S.C. §§ 101 and/or 103. With respect to the rejections, we adopt as our
own the findings and reasons set forth in the rejection from which this
appeal is taken and in the Examiner’s Answer, to the extent consistent with
our analysis below. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellants’ arguments seriatim, as they are presented in the Appeal
Brief, pages 6—24.
Claims 1-3,5,10,15,17, and 18: Anticipation by Boyd and/or
Obviousness over Boyd, Fordyce, and Kaplan.
Appellants argue the anticipation and obviousness rejections of these
claims as a group in view of the, assertedly commensurate, recitations of
independent Claims 1, 17, and 18. App. Br. 6—13.
4
Appeal 2016-005614
Application 12/849,801
A user interface that includes a selectable option for associating
the offer with a financial account of the user.
The Examiner finds Boyd anticipates independent Claims 1,17, and
18 including the claimed step of having a computer and web browser present
a user interface that includes a selectable option. Final Act. 13. The
Examiner finds the claim recitation “for associating the offer with a financial
account of the user” to be a statement of intended use, which is not entitled
to patentable weight. Id. at 13—14. The Examiner finds the nature of the
content, or choice of financial offer, has no impact on the step of presenting
a user interface. Id. at 14.
Appellants contend that the accused recitation functions to define the
claimed “selectable option.” App. Br. 8. Appellants argue the selectable
option of an offer is presented and then selected and in response to its
selection, the offer is associated with a financial account, thus, according to
Appellants, the selectable option recitation defines the scope of the claims.
Id.
The Examiner finds the claim language suggests, but does not require,
steps to be performed because it is directed towards data that is assumed to
be presented to the claimed invention. Ans. 10. The Examiner finds
Appellants merely assume that such data exists and it is possible, but not
required, that this type offering is used in presenting step. Therefore, the
Examiner finds the selectable option is just non-functional descriptive
material that is not entitled to patentable weight. Id. (citing MPEP §§2111,
2114.04). However, notwithstanding a finding that this recitation is not
entitled to patentable weight, the Examiner finds Boyd discloses the claimed
subject matter. Final Act. 14—15.
5
Appeal 2016-005614
Application 12/849,801
According to Appellants’ analysis, “the ‘ad’ discussed in Par. [0137]
of Boyd offers ‘a certain number of incentive award points. ’ ‘By clicking on
the ad, the consumer’s browser retrieves another web page which gives the
consumer more information about the product/service/merchant info that
was the focus of the ad.’” Reply Br. 6. However, Appellants contend
Boyd’s ad and webpage do not provide a selectable option to cause an
association between an offer, provided in the ad, and a financial account
belonging to the user. Id. Appellants argue that in contrast, clicking on
Boyd’s ad provides reward points in response to the consumer clicking on
the ad to see the “information about the product/service/merchant info that
was the focus of the ad.” Id. Appellants continue, Boyd’s selectable items
are configured to allow the consumer to purchase a selected item using the
points in the account of the consumer. Id.
We find Appellants’ analysis proves the Examiner’s case. Boyd’s ad
offers “a certain number of incentive award points” to be associated with a
customer account. Clicking on the ad retrieves another web page which
gives the consumer more information about the product/service/merchant
info that was the focus of the ad, i.e., a “selectable option.” Further, the ad
offers “a certain number of incentive award points.” By clicking on the ad,
the consumer’s browser retrieves another web page which gives the
consumer more information about the product/service/merchant info that
was the focus of the ad. Activating that “selectable option” causes an
association between an offer, i.e., the incentive award points, and a financial
account belonging to the user, i.e., a database storing that consumer’s
incentive points. The claims do not specify the nature of the “offer,” nor do
they limit the financial account.
6
Appeal 2016-005614
Application 12/849,801
Monitoring. . . transactions processed by a transaction handler.
Appellants contend Boyd fails to disclose
monitoring, by the computing apparatus, transactions processed
by a transaction handler to identify a purchase transaction that
uses the financial account of the user for a purchase that is
eligible for the offer; and in response to identifying the
purchase transaction eligible for the offer, automatically
applying the offer to the identified purchase transaction
as commensurately recited in independent Claims 1,17, and 18. App. Br.
12. Appellants argue Boyd discloses a financial account external to, and not
controllable by, his system. Id. at 12—13.
The Examiner finds Boyd discloses a merchant will issue points to the
user when the user’s credit card is charged for a purchase, thus disclosing
the accused limitation. Final Act. 12.
In view of the foregoing, we sustain the rejection of Claims 1—3, 5,
10, 15, 17, and 18, as anticipated or obvious.
Claim 4: Anticipation by Boyd.
Claim 1 recites an advertisement comprising a first portion. Claim 4
recites a second portion that when selected causes the apparatus to direct the
user to a website of the advertiser. Appellants contend Boyd discloses
clicking on an ad, but fails to disclose the ad having first and second portions
the respective activation of which cause differing activities. App. Br. 14.
The Examiner finds this limitation at paragraph 137 of Boyd.
Ans. 17.
7
Appeal 2016-005614
Application 12/849,801
We find no disclosure in the cited portion of Boyd relating to first and
second portions of an ad. Therefore, we decline to sustain the rejection of
Claim 4.
Claim 6: Anticipation by Boyd.
Appellants contend Boyd fails to disclose “selecting, by the
computing apparatus, the advertisement for presentation to the user based on
at least one transaction in the account of the user processed by the
transaction handler.” App. Br. 14; Reply Br. 8.
The Examiner finds Boyd teaches that when a user selects an
advertisement, a merchant will issue points when the user’s credit card is
subsequently charged to make a related purchase. Ans. 14. We are not
persuaded the Examiner errs.
Appellants further argue the Examiner fails to explain how Boyd
discloses “how the ‘ad’ is selected for presentation to the consumer in the
‘website, prefereably [sic, “preferably”] a high traffic site such as Yahoo’s
Internet portal.’” Reply Br. 9. We decline to reach this argument which was
presented for the first time in the Reply Brief. “Any bases for asserting
error, whether factual or legal, that are not raised in the principal brief are
waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not”).
Claim 7: Anticipation by Boyd.
Appellants contend Boyd fails to disclose “presenting, by the
computing apparatus, an advertiser user interface to the advertiser to manage
8
Appeal 2016-005614
Application 12/849,801
creation and distribution of the offer prior to presentation of the offer to the
user,” as recited in Claim 7. App. Br. 14. Appellants argue the cited
portions of Boyd are unrelated to the disputed limitation. Id. at 15.
The Examiner cites Boyd, Figs. 14D and 14E and paragraph 48. Ans.
15. These figures relate to webpages shown to a user, but have no relation to
pages that may be shown to an advertiser. See Boyd, 148 (cited by the
Examiner). The Examiner also cites Boyd paragraphs 207, 319, 320, and
420, but it is unclear how these disparate disclosures are meant to relate to
the disclosures of Figures 14D and E and paragraph 48. We are persuaded
of error.
Claim 9: Anticipation by Boyd.
Appellants contend Boyd fails to disclose “aggregating ... a plurality
of purchase transactions using the financial account of the user to determine
eligibility for the benefit of the offer,” as recited in Claim 9. App. Br. 15.
The Examiner finds Boyd discloses that where a point total is below
the redemption threshold, the customer may be motivated to take some
action to earn enough points so that he may redeem them. Ans. 16 (citing
Boyd, 119).
Appellants argue Boyd fails to disclose aggregation of “a plurality of
purchase transactions,” as claimed. Reply Br. 10 (citing Boyd, 1136).
Boyd discloses:
[I]f the point total is below the redemption threshold, the
customer may be motivated to take some action (e.g.,
purchasing a product, clicking on an ad, registering with a
website) to earn enough points so that he may redeem them and
not subject his already-earned points to expiration.
Boyd, 119 (cited by the Examiner).
9
Appeal 2016-005614
Application 12/849,801
We find the cited passage discloses aggregation of a plurality of
transactions, as claimed. We are not persuaded the Examiner errs.
Claim 11: Obviousness over Boyd and Fordyce.
Appellants argue the Boyd “system is completely divorced from the
issuer handling the credit card transaction, it just awards the reward points.”
App. Br. 16. Appellants argue that
regardless of the teachings of Fordyce, there is no motivation to
undergo a drastic overhaul of Boyd’s principle of operation
from a “points account” that simply charges a credit card
handled by a third party to create a “transaction handler . . .
[that makes] a payment from an issuer to an acquirer,”
as recited in Claim 11. Id.
Appellants contend Boyd’s webpages do not show any means to
associate an advertised offer and a consumer credit card and, in fact, are
limited to the use of Boyd’s loyalty reward account. Reply Br. 10.
Appellants argue Fordyce does not apply to the use of a loyalty reward
account to purchase items using Boyd’s webpages. Id.
The Examiner relies on a combination of Boyd and Fordyce. See
Final Act. 22; Ans. 19—20. Specifically, the Examiner finds Fordyce teaches
a payment transaction process between the issuer, acquirer, and the
merchant. Final Act. 22. “[0]ne cannot show non-obviousness by attacking
references individually where . . . the rejections are based on combinations
of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). We are not
persuaded the Examiner errs.
10
Appeal 2016-005614
Application 12/849,801
Claim 12: Anticipation by Boyd.
Appellants contend that the cited portions of Boyd (Fig. 14A; H 137,
419) fail to disclose “includes the advertisement without the first portion,” as
recited in Claim 12. App. Br. 17.
The Examiner finds Boyd discloses a “user interface showing the
advertisement itself.” Ans. 17 (citing Boyd, Figs. 14A, D; H 48, 179, and
419).
Our review of the cited portions of Boyd fail to find any disclosure
relating to a portion (first or second) of an advertisement. We are thus
constrained by the record to reverse the rejection of Claim 12.
Claim 13: Anticipation by Boyd.
Appellants contend that the cited portions of Boyd (H 112, 136, 415)
fail to disclose “identifying, by the computing apparatus, the financial
account of the user based on a browser cookie received from the web
browser operating on the user’s computing device.” App. Br. 17.
Appellants argue Boyd discloses the types of account information available
for a rewards account and discloses “cookies may be used to store state
information.” Appellants argue Boyd fails to disclose identifying the user’s
financial account based on a cookie. Id.
The Examiner finds Boyd uses cookies to identify the credit card
associated with a transaction. Ans. 17 (citing Boyd, 1415). The Examiner
finds Boyd discloses cookies may store state information relevant to the
user’s account. Id. at 17—18.
Appellants’ Reply Brief argues how various limitations of Claim 1
operate with the limitations of Claim 13 and contends the Examiner fails to
address this interaction. Reply Br. 11.
11
Appeal 2016-005614
Application 12/849,801
We decline to reach this argument which was presented for the first
time in the Reply Brief. “Any bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived.” Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is
not] an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not”).
We are not persuaded of error.
Claim 14: Obviousness over Boyd and Fordyce.
Appellants contend that the cited portion of Fordyce (127) fails to
disclose “wherein presenting the user interface includes displaying a
selectable list of financial accounts identified using the browser cookie to
allow the user to select an account to associate with the offer.” App. Br. 18.
Appellants argue Fordyce merely describes the selection of “a reward that is
to be a statement credit back to their account,” but that Fordyce fails to teach
displaying the “selectable list of financial accounts” recited in Claim 14,
much less displaying a selectable list of accounts identified using a browser
cookie. Id.
The Examiner’s prima facie case is constmcted from the combined
teachings of Boyd and Fordyce (Ans. 20—21), whereas Appellants limit their
traversal to the alleged shortcomings of Fordyce. See App. Br. 18. “[0]ne
cannot show non-obviousness by attacking references individually where . . .
the rejections are based on combinations of references.” In re Keller, 642
F.2d 413, 426 (CCPA 1981). We are not persuaded the Examiner errs.
12
Appeal 2016-005614
Application 12/849,801
Claims 1-7,9-15,17, and 18: Non-Statutory Subject Matter.
USPTO Eligibility Guidance.
Appellants compare their claims to various Example claims set forth
in various USPTO guidance documents and, based on such comparisons,
Appellants contend their claims are subject-matter eligible under 35 U.S.C.
§ 101. See App. Br. 18—22.
With respect to internal USPTO Guidance, we note:
This Interim Eligibility Guidance does not constitute
substantive rulemaking and does not have the force and effect
of law. This Interim Eligibility Guidance sets out the Office’s
interpretation of the subject matter eligibility requirements of
35 U.S.C. 101 in view of recent decisions by the Supreme
Court and the U.S. Court of Appeals for the Federal Circuit
(Federal Circuit), and advises the public and Office personnel
on how these court decisions impact the provisions of MPEP
2105, 2106 and 2106.01. This Interim Eligibility Guidance has
been developed as a matter of internal Office management and
is not intended to create any right or benefit, substantive or
procedural, enforceable by any party against the Office.
Rejections will continue to be based upon the substantive law,
and it is these rejections that are appealable. Failure of Office
personnel to follow this Interim Eligibility Guidance is not, in
itself, a proper basis for either an appeal or a petition.
USPTO, “Interim Guidance on Patent Subject Matter Eligibility,” 79
(No. 241) Fed. Reg. 74618, 74619 (2014) (emphasis added) (“2014
Guidance”). Our analysis is limited to the applicable case law. “Rejections
will continue to be based upon the substantive law, and it is these rejections
that are appealable.” 2014 Guidance 74619.
Related Case Law.
Appellants argue all claims as a group in view of the limitations of
independent Claim 1. App. Br. 24. R. 79.
13
Appeal 2016-005614
Application 12/849,801
Appellants contend their claims recite eligible subject matter by
analogy to PNC Bank v. Secure Axcess (CBM2014-00100) (a “computer-
implemented method to transform data in a particular manner”); DDR
Holdings, LLC. vs. Hotels.com, Appeal No. 2013-1505 (Fed. Cir. Dec. 5,
2014) (holding the claims “did not merely recite the performance of some
business practice known from the pre-Internet world,” but were instead
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks”). App. Br. 22—23.
Appellants argue the independent claims recite, inter alia:
(1) the presentation of an “advertisement within a web page via
a web browser operating on a computing device of a user”;
(2) receiving a selection of a portion of the advertisement;
(3) presenting a custom user interface, via a web browser, in
response to the selection of a portion of an advertisement in an
Internet web page that allows a user to associate an offer in the
Internet advertisement with the user’s financial account; and
(4) automatically applying the offer to an eligible purchase
transaction made using the financial account.
App. Br. 20. Appellants contend these features, taken as an ordered
combination, constitute “meaningful limitations that. . . solve an Internet-
centric problem with a claimed solution that is necessarily rooted in
computer technology.” Id. at 21.
35 U.S.C.§ 101.
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes “laws of nature,
natural phenomena, and abstract ideas” from the realm of patent-eligible
14
Appeal 2016-005614
Application 12/849,801
subject matter, as monopolization of these “basic tools of scientific and
technological work” would stifle the very innovation that the patent system
aims to promote. Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347,
2354 (2014) (quoting Ass ’n for Molecular Pathology v. Myriad Genetics,
Inc., 133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72—77 (2012); Diamond v. Diehr, 450
U.S. 175, 185 (1981).
Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
“distinguish[] 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 2355. At the first step, we determine whether
the claims at issue are “directed to” a patent-ineligible concept. Id.
The Examiner finds claims are directed towards the concept of a
method of associating an offer with a financial account and redeeming the
offer which the Examiner finds is an abstract idea. Final Act. 9.
Specifically, the Examiner finds that, analyzed apart from any technology,
the claims are simply a series of steps for organizing human activities, for
example, presenting an offer, receiving user selection of an offer, associating
the offer with the user, monitoring purchase transaction, and applying the
offer, and therefore, the claims are drawn to an abstract idea. Id.
Appellants contend that presentation of a web page advertisement,
receiving a selection of a first portion of the web page advertisement, and
presentation of the user interface “via the web browser on the user’s
computing device” are all inherently “Internet-centric,” “rooted in computer
technology,” and confined to “a particular useful application.” App. Br. 21.
15
Appeal 2016-005614
Application 12/849,801
Appellants argument does not traverse a finding that the claims are
“directed to” a patent-ineligible concept, as required by Step 1 of the Alice
analysis. Rather, Appellants’ argument implicates Step 2 of the Alice
analysis.
Alice Step 2.
Where, as here, the claims are found to be “directed to” a patent-
ineligible concept, we then “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79). This
analysis has been characterized as the search for an “inventive concept”—
something sufficient to ensure that the claim amounts to “significantly
more” than the abstract idea itself. Id. (quoting Mayo, 566 U.S. at 71—72).
Appellants contend the claimed features, taken as an ordered
combination, constitute “meaningful limitations that. . . solve an Internet-
centric problem with a claimed solution that is necessarily rooted in
computer technology.” App. Br. 21. Appellants argue that presentation of a
web page advertisement, receiving a selection of a first portion of the web
page advertisement, and presentation of the user interface “via the web
browser on the user’s computing device” are all inherently “Internet-
centric,” “rooted in computer technology,” and confined to “a particular
useful application.” Id. Appellants believe their claims recite eligible
subject matter because the Federal Circuit has held that claims recite patent-
eligible subject matter because they “did not merely recite the performance
of some business practice known from the pre-Internet world,” but were
instead “necessarily rooted in computer technology in order to
16
Appeal 2016-005614
Application 12/849,801
overcome a problem specifically arising in the realm of computer networks.”
Id. at 23 (citing DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir.
2014)).
The Federal Circuit’s analysis begins “with an examination of eligible
and ineligible claims of a similar nature from past cases.” Amdocs (Israel)
Ltd., v. Openet Telecom, Inc., 841 F.3d 1288, 1295 (Fed. Cir. 2016). In
contrast to DDR Holdings, claims were held invalid as directed to an abstract
idea where they “d[id] not claim a particular way of programming or
designing the software . . . but instead merely claim the resulting systems.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016).
Similarly, claims were held to be abstract and patent-ineligible because there
was nothing in the claims “directed to how to implement [the idea]. Rather,
the claim is drawn to the idea itself.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). Appellants contend
their claims are “rooted in computer technology” (App. Br. 21), but fail to
show specifically how their ideas are implemented with, for example, a
particular way of programming or designing the software. See Affinity Labs,
838 F.3d 1258; Ameranth, 842 F.3d 1240-41. Claims are also found to be
abstract and patent ineligible where, as here, there is “no restriction on how
the result is accomplished . . . and the mechanism ... is not described.”
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed.
Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1348 (Fed. Cir. 2015)).
Appellants further argue their claims are patent eligible because the
claims are both novel and non-obvious. App. Br. 23. However, the Court
“decline[d] the Government’s invitation to substitute §§ 102, 103, and 112
17
Appeal 2016-005614
Application 12/849,801
inquiries for a better established inquiry under § 101.” Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 91 (2012). We must
therefore, decline Appellants’ invitation.
We find the claims are not patent eligible under 35 U.S.C. § 101.
DECISION
The rejection of Claims 1—7, 9-15, 17, and 18 under 35 U.S.C. § 101
is AFFIRMED.
The rejection of Claims 1, 2, 5, 6, 9, 13, 15, 17, and 18 under 35
U.S.C. § 102 is AFFIRMED.
The rejection of Claims 4, 7, and 12 under 35 U.S.C. § 102 is
REVERSED.
The rejection of Claims 3, 10, 11, and 14 under 35 U.S.C. § 103 is
AFFERMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
AFFIRMED
18