Ex Parte Michaud et al

Patent Trial and Appeal Board

Aug 23, 2018

12358719 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/358,719 01/23/2009
321 7590 08/27/2018
SENNIGER POWERS LLP
100 NORTH BROADWAY
17THFLOOR
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Joe Phillip Michaud
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.
MRZ9880 3060
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
uspatents@senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOE PHILLIP MICHAUD, DAVID RUSSELL ADAMS,
JENNIFER LYNN KALLERY, and KEITH CHRZAN
Appeal2017-005120
Application 12/358,719
Technology Center 3600
Before JEAN R. HOMERE, JON M. JURGOV AN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 2, 4--6, and 23-30. Claims 3 and 7-
22 have been canceled. See App. Br. 21, 22 (Claims App'x). We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Maritz Holdings Inc.
Br. 1.
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Application 12/3 58,719
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "methods and systems for
defining an earnings profile and a reward profile for [a] loyalty reward
program." Spec. ,r 3. Claim 1, which is illustrative of the claimed invention,
reads as follows:
1. A method of defining, by at least one computing device,
an earnings profile for a loyalty reward program having a
plurality of participants wherein the defined earnings profile is
based on response data collected from the participants of the
program, said method comprising:
defining, by the at least one computing device, a plurality
of loyalty reward programs, each loyalty reward program having
a plurality of earning types;
defining, by the at least one computing device, a survey to
gather data related to the defined loyalty reward program earning
types;
collecting, by the at least one computing device, response
data from the plurality of participants related to the survey, said
response data including loyalty reward program earning type
preferences and criterion level data of each of the participants
responding to the survey;
defining a particular subset of less than all the loyalty
reward program earning types;
identifying, by the at least one computing device, two or
more segments of participants as a function of the collected data:
wherein each identified segment of participants
includes participants of the particular subset of the loyalty
reward program earning types, and
wherein said identifying uses cluster analysis so that
each identified segment of participants includes
participants having similar loyalty reward program
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earning type preferences as compared to other participants
of other segments;
analyzing, by the at least one computing device, the
collected loyalty reward program earning type preferences to
determine a reach, frequency, and overlap of the loyalty reward
program earning types for each identified segment;
rendering, by the at least one computing device, a user
interface indicating the determined reach, frequency, and overlap
of the loyalty reward program earning types for each identified
segment based on the analyzed loyalty reward program earning
type preferences of the participants within each segment, the user
interface comprising a criterion level, an identified segment, and
one or more of the defined loyalty reward program earning types;
selecting, by the at least one computing device, a criterion
level on the user interface;
selecting, by the at least one computing device, an
identified segment on the user interface;
selecting, by the at least one computing device, at least one
of the defined loyalty reward program earning types on the user
interface;
evaluating, by the at least one computing device, collected
response data based on the selected criterion level, the selected
identified segment, the selected at least one of the defined loyalty
reward program earning types and the determined reach,
frequency, and overlap of the loyalty reward program earning
types for each identified segment for the earnings profile of the
loyalty reward program;
transforming collected response data into metrics based on
the evaluation of the collected response data;
displaying on the user interface a metric indicator of a
percentage of participants in the selected identified segment
whose survey results include the selected at least one of the
defined loyalty reward program earning types in the selected
criterion level; and
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offering, by the at least one computing device, the loyalty
reward program including the earnings profile comprising the
selected, defined loyalty reward program earning types to a
plurality of customers based on the evaluation of the collected
response data and metrics.
Rejections
Claims 1, 2, 4---6, and 23-30 stand rejected under 35 U.S.C. § 101
because the claimed subject matter is judicially-excepted from patent
eligibility under § 101. Final Act. 2.
Claims 1, 4---6, and 23 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Chrzan et al. (US 2007 /0260510
Al; published Nov. 8, 2007) ("Chrzan"), Mack et al. (US 2003/0229533 Al;
published Dec. 11, 2003) ("Mack"), De et al. (US 2008/0133325 Al;
published June 5, 2008) ("De"), and Kowalchuk (US 2005/0033630 Al;
published Feb. 10, 2005). Final Act. 3-12.
Claim 2 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Chrzan, Mack, De, Kowalchuk, and
David A. Aaker et al., Marketing Research, seventh edition (2001)
("Aaker"). Final Act. 13.
Claims 24 and 27-29 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Chrzan and Mack. Final Act. 13-21.
Claims 25 and 26 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Chrzan, Mack, and Aaker. Final
Act. 21-22.
Claim 30 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Chrzan, Mack, and De. Final Act. 22-
29.
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ANALYSIS
Rejection under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. Id. The
inquiry often is whether the claims are directed to "a specific means or
method" for improving technology or whether they are simply directed to an
abstract end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Circ. 2016). If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
second step, where the elements of the claims are considered "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 78-79).
We, therefore, look to whether the claims focus on a specific means or
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method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
Step 1
The Examiner finds the claims are directed to "defining an earning
profile for a loyalty reward program." Final Act. 2. The Examiner
concludes "[l]oyalty rewards programs are a fundamental economic practice
and/or a method of organizing human activities" and, therefore, the claims
are directed to an abstract idea. Id.
Appellants argue the claims are not directed to an abstract idea
because
The systems and methods recited by claims 1, 23, 24, and
30 each represent a new and useful improvement to the technical
process of analyzing collected data to identify segments of
participants and defining earnings profiles and reward profiles of
the participants. In other words, the claimed systems and
methods represent a new and useful improvement to the technical
process of configuring a loyalty reward program based on survey
data from a finite number of participants, rather than simply
claiming the use of earned rewards to purchase goods and
services. By evaluating collected data based on selections of a
criterion level, an identified segment, a defined loyalty reward
program earning type, and determined reach, frequency, and
overlap of the earning types, the claimed systems and methods
provide for an integrated approach of transforming the collected
data into metrics based on the evaluation.
Br. 11. Appellants further argue the claims recite limitations that "comprise
improved systems and methods for analyzing a criterion level, a segment,
loyalty reward program earning types, and loyalty reward types, such as
through cluster analysis, and rendering them on a user interface for selection
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and further evaluation, which is markedly different than claiming an abstract
rewards program." Br. 12.
We do not find Appellants' arguments persuasive. We agree with the
Examiner that the claims are directed to a patent-ineligible concept of
defining an earning profile for a loyalty reward program. Final Act. 2. As
acknowledged by Appellants, the claims "evaluat[ e] collected data based on
selections of a criterion level, an identified segment, a defined loyalty
reward program earning type, and determined reach, frequency, and overlap
of the earning types" and "transform[] the collected data into metrics based
on the evaluation" (Br. 11) which are abstract processes of collecting and
analyzing information of a specific content and displaying a result of the
collection and analysis.
Information, as such, is intangible. See Microsoft Corp. v. AT&T
Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and analysis,
including when limited to particular content, is within the realm of abstract
ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Further, merely presenting the results of the abstract processes of collecting
and analyzing information, without more (such as identifying a particular
tool for presentation), is abstract as an ancillary part of such collection and
analysis. See, e.g., Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'! Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). That the claims require
using cluster analysis to perform the step of "identifying ... two or more
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segments of participants as a function of the collected data" does not cause
the claims to be directed to patent-eligible subject matter. The Specification
provides "[ c ]luster analysis is a mathematical method for categorizing
objects (e.g., participants) into segments where the members of segments are
more similar to one another than they are to members of other segments."
Spec. ,r 46. Analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, has been treated as
essentially mental processes within the abstract-idea category. See, e.g.,
Digitech, 758 F.3d at 1351.
We are not persuaded by Appellants' argument that the claims
"require significant meaningful technical limitations that do not preempt or
monopolize any alleged abstract idea of the kind recognized by the case
law." Br. 11; see also Br. 12. Claims that are otherwise directed to patent-
ineligible subject matter cannot be saved by arguing the absence of complete
preemption. Return Mail, Inc. v. US. Postal Service, 868 F.3d 1350, 1370
(Fed. Cir. 2017). "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Id.
We are also not persuaded by Appellants' argument that "the use of a
machine, namely a computing device, for providing the required defining,
collecting, identifying, analyzing, rendering, selecting, evaluating,
transforming, and displaying is essential to the claimed systems and
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methods." Br. 12. The Specification describes a computing system for
implementing the claimed invention as including a computer (i-f 43) which
may be "a general purpose computing device" (i-f 53). The Specification
further provides that "embodiments of the invention are operational with
numerous other general purpose or special purpose computing system
environments or configurations" and that "[ t ]he computing system
environment is not intended to suggest any limitation as to the scope of use
or functionality of any aspect of the invention." Spec. ,r 58. As recognized
by the Supreme Court, "the mere recitation of a generic computer cannot
transform a patent ineligible abstract idea into a patent-eligible invention."
See Alice, 134 S. Ct. at 2358 (concluding claims "simply instruct[ing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer" not patent eligible); see also Ultramercial, 772 F .3d at
715-16 ( claims merely reciting abstract idea of using advertising as currency
as applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software
components arranged to implement an abstract concept [ of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" not patent eligible); Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a
'computer aided' limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible" (internal citation
omitted)).
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Step 2
Turning to the second step of the Alice inquiry, we have considered
Appellants' arguments (Br. 12-15) and found them unpersuasive. Instead,
we agree with the Examiner that the claim limitations, when viewed
individually and as a whole, do not transform the claim to something
significantly more than an abstract idea. Final Act. 2; Ans. 3-9. We find
nothing in Appellants' claims that adds anything "significantly more" to
transform the abstract concept of defining an earnings profile for a loyalty
reward program into a patent-eligible application. Alice, 134 S. Ct. at 2357.
Limiting such an abstract concept of defining an earnings profile for a
loyalty reward program to a general purpose computer (e.g., "at least one
computing device" ( claims 1, 24) "[a] computerized system" ( claims 23,
30)) having generic components (e.g., "a data storage" and "at least one
processor" (claims 23, 30)) does not make the abstract concept patent-
eligible under 35 U.S.C. § 101. See Alice, 134 S. Ct. at 2358; see also Spec.
,r,r 5 3---6 2.
Conclusion
Because Appellants' claims 1, 2, 4---6, and 23-30 are directed to a
patent-ineligible abstract concept, and do not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of these claims under 35 U.S.C. § 101.
Rejections under 35 USC§ 103(a)
CLAIMS 1, 23, 24, AND 30
Regarding the rejection of independent claims 1, 23, 24, and 30 under
35 U.S.C. § 103(a), Appellants do not substantively argue the claims
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separately, but instead rely on the same arguments for all claims. See
Br. 16-18. We select independent claim 1 as the representative claim and
claims 23, 24, and 30 stand or fall together with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants contend the combination of Chrzan, Mack, De, and
Kowalchuk fails to teach or suggest "evaluating, by the at least one
computing device, collected response data based on the selected criterion
level" and "displaying on the user interface a metric indicator of a
percentage of participants in the selected identified segment whose survey
results include the selected at least one of the defined loyalty reward
program earning types in the selected criterion level," as required by claim
1. Br. 16. In particular, Appellants contend Chrzan does not teach or
suggest the disputed limitations because Chrzan fails to teach "the use of a
selected criterion level during evaluation of survey results," as required by
claim 1. Br. 17. According to Appellants, "[t]he criterion level defines the
minimum choice category to be included in the profile." Br. 17 ( citing Spec.
,r 19). Appellants argue Chrzan teaches that the comparison of the first and
second rewards programs "is calculated as a function of the weighted
participant preferred values" and not based on a selected criterion level that
defines the minimum choice category to be included in a profile, as required
by claim 1. Br. 1 7 ( citing Chrzan ,r 34 ).
We do not find Appellants' arguments persuasive. Chrzan relates to
"developing a reward program to motivate participants associated with a
program-owner." Chrzan Abstract. Chrzan teaches "the program owner
initially identifies a list of program attributes [ e.g., trip attributes such as trip
length and air travel seating ( Chrzan ,r 18)] for the reward program and a list
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of potential values for each of the attributes [ e.g., for the air travel seating
program attribute the potential values may include coach class air travel and
first class air travel ( Chrzan ,r 19)]." Chrzan ,r 18. A survey is then provided
to all participants, all potential participants, or a subset of potential
participants in the reward program to collect participant preferred values.
Chrzan ,r 25. To collect the participant preferred values, Chrzan teaches
"participants are asked questions that require them to choose among pairs of
reward programs that always differ on a small number of program attributes
values." Chrzan ,r 26. "After the survey 105 is completed, ... the collected
participant preferred values are analyzed via HB-MNL [hierarchical
Bayesian multinomial lo git [Chrzan ,r 29] to generate a set of weighted
participant preferred values." Chrzan ,r 31. Chrzan teaches the program
owner can modify values of the program attributes and compare various
reward programs via a user interface of a decision support tool. Chrzan
Fig. 2; ,r,r 37, 41--42. As such, we agree with the Examiner that Chrzan
teaches that the survey is analyzed based on program attributes selected by
the program owner. Ans. 9 (citing Chrzan ,r,r 26, 29). The Examiner finds
Chrzan's program attributes teach or suggest the claimed "criterion level"
and, therefore, that Chrzan teaches or suggests "evaluating, by the at least
one computing device, collected response data based on the selected
criterion level," as recited in claim 1. Ans. 9 ( citing Chrzan ,r,r 26, 29). The
Specification provides that the criterion level "define[ s] the minimum choice
category to be included [in the evaluation of the survey data]." Spec. ,r 19.
Appellants fail to address the Examiner's finding regarding Chrzan's
program attributes. See Br. 16-18. Absent arguments or evidence
persuasive to show that the Examiner's finding is unreasonable or
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inconsistent with the teachings of the Specification, we are not persuaded the
Examiner erred.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1 and claims 23, 24, and 30, which fall with claim 1.
CLAIMS 2, 4---6, AND 25-29
Although Appellants nominally argue the rejection of dependent
claims 2, 4---6, and 25-29 separately (Br. 18), the arguments presented do not
point out with particularity or explain why the limitations of these dependent
claims are separately patentable. Instead, Appellants argue "[ d]ependent
claims 2 and 4---6 are allowable for at least the same reasons as claim 1, from
which they directly depend, and dependent claims 25-29 are allowable for at
least the same reasons as claim 24, from which they directly depend" and
In addition, claims 2, 4--6, and 25-29 add features in combination
as noted above which further define the invention and distinguish
over the cited references. In particular, claims 2, 4--6, and 25-29
relate to the following definitive aspects in combination:
specific survey definitions: claims 2, 6, 25, and 28;
analysis: claims 4, 26, 27, and 29;
specific loyalty reward program eammg type
definitions: claim 5.
In this regard, Chrzan, Mack, De, Kowalchuk, and Aaker are
generally cited as suggesting the recited features. However, as
noted above, the cited and applied references fall short of
suggesting the recited selected criterion level.
Br. 18. We are not persuaded by these arguments for the reasons discussed
with respect to claims 1 and 24, from which claims 2, 4---6, and 25-29
depend.
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DECISION
We affirm the Examiner's rejection of claims 1, 2, 4---6, and 23-30
under 35 U.S.C. § 101.
We affirm the Examiner's rejections of claims 1, 2, 4---6, and 23-30
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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