Ex Parte O et al

Patent Trial and Appeal Board

Feb 13, 2017

11928572 (P.T.A.B. Feb. 13, 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.
11/928,572 10/30/2007 Deirdre O'SHEA 99-032-1 7548
22927 7590 02/15/2017
Walker Innovation Tne
EXAMINER
Two High Ridge Park
Stamford, CT 06905
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
02/15/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
iplegal@patentproperties.com
docketing @ finchamdowns. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEIRDRE O’SHEA, JAY S. WALKER,
ANDREW VAN LUCHENE, MAGDALENA MIK, ADAM STEVENSON,
and SCOTT B. ALLISON
Appeal 2014-0079261
Application 11/928,5722
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—4, 67, and 69. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Apr. 30, 2014), Reply Brief (“Reply Br.,” filed July 10,
2014), and Specification (“Spec.,” filed Oct. 30, 2007), and to the
Examiner’s Answer (“Ans.,” mailed May 23, 2014), and Final Office Action
(“Final Act.,” mailed Sept. 30, 2013).
2 According to the Appellants, the real party in interest is Inventor Holdings,
LLC. Appeal Br. 3.
Appeal 2014-007926
Application 11/928,572
STATEMENT OF THE CASE
The Appellants’ invention “relates generally to a method and
apparatus for providing marketing and other promotional offers and, more
particularly, to a method and apparatus for providing variable benefit coupon
offers and propagating coupons to potential recipients.” Spec. 1.
Claims 1—4, 67, and 69, on appeal, are all independent claims.
Claim 1 is illustrative of the subject matter on appeal, and is reproduced
below (bracketing added for reference):
1. A method, comprising:
[(a)] generating, by a controller device, an original
promotional offer entitling recipients to conduct purchase
transactions at a discount, the original promotional offer having
a variable benefit;
[(b)] receiving, by the controller device, an indication that
a first recipient has received a duplicate of the original
promotional offer from a second recipient, after the second
recipient has utilized the original promotional offer in a purchase
transaction; and
[(c)] issuing, by the controller device, a new promotional
offer to the second recipient, the new promotional offer having a
benefit corresponding to an incremental benefit the second
recipient would have received had the original promotional offer
not been utilized by the second recipient prior to the receiving of
the indication that the first recipient received a duplicate of the
original promotional offer.
Appeal Br. 27 (Claims App.).
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Appeal 2014-007926
Application 11/928,572
THE REJECTION
Claims 1—4, 67, and 69 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Von Kohom (US 5,368,129, iss. Nov. 29, 1994),
“How MileNet Works,” pub. 1998 (hereinafter “MileNet”), and Fajkowski
(US 5,905,246, iss. May 18, 1999).
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.3
ANAFYSIS
Claims 1, 2, 67, 69
Claims 1, 67, and 69 require, in part, that a new coupon or
promotional offer (hereafter referred to as “offer”) is issued to the second
recipient, the new offer “having a benefit corresponding to an incremental
benefit the second recipient would have received had” the original offer not
been utilized or redeemed by the second recipient prior to the receiving of
the indication that the first recipient received a duplicate of the original
offer, as recited in limitation (c) of claim 1. Claim 2 similarly requires
crediting a financial account “an incremental benefit the second recipient
would have received had said promotional offer not been redeemed by the
second recipient prior to the receiving of the indication that the first recipient
received a duplicate of the promotional offer.” We find persuasive the
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/928,572
Appellants’ argument that the combination of the cited prior art does not
disclose this feature of the claims. See Appeal Br. 16—17.
We interpret the claim as broadly as is reasonable in light of the
Specification and without reading limitations from the Specification into the
claims. See In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir. 2001); see also In re
Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). As such, the claims require,
inter alia, that the second recipient utilizes an offer prior to an indication of
a first recipient receiving a duplicate of the offer, after which a new offer is
issued to the second recipient, the new offer having a benefit corresponding
to a benefit the second recipient would have received had the second
recipient not already utilized the offer. For example, if the first offer
redeemed by the second recipient is for a discount of twenty-five cents, and
the later offer is for a discount of seventy-five cents, the new coupon issued
to the second recipient would be for the difference in the value, i.e., a credit
or offer of an additional fifty cents, so that the second recipient gets the
benefit the second recipient would have received had the second recipient
not already used the offer. See Spec. 29. We note that the claims do not
require that the benefit is based on the indication of duplication. See Appeal
Br. 18.
The Examiner cites to Van Kohom for generating an offer with a
variable benefit based on a shopper’s redemption, and issuing to a second
recipient a new offer “based on market conditions such as how the product is
selling regardless of coupon redemption,” i.e., having a benefit
corresponding to an incremental benefit the second recipient would have
received had the second recipient not redeemed the offer. Final Act. 2—3;
Ans. 2. The Examiner finds that MileNet discloses receiving an indication
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Application 11/928,572
that a first recipient has received a duplicate of the offer so that the second
recipient can obtain a benefit in the offer. See Final Act. 3; Ans. 3. The
Examiner relies on Fajkowski for having the value of the new offer increase
based on redemption of the previous offer. See Final Act. 4; Ans. 2.
We find the Examiner has not adequately shown that the combination
of the prior art discloses that the new offer corresponds to an incremental
benefit the second recipient would have received had the second recipient
not previously used the offer. Based on the Examiner’s findings, as
discussed above, the Examiner relies on Van Kohom and Fajkowski for
teaching this feature. See Ans. 2. Van Kohom discloses a second recipient
using an offer with a variable benefit prior to an indication of a duplicate
being received. See Van Kohom, col. 9,11. 11—33. Van Kohom further
discloses increasing the value of the existing offer (see id.), but does not
disclose issuing to the second recipient a new offer corresponding to a
benefit the recipient would have received had the offer not been used.
Fajkowski discloses a recipient using an earlier offer of a series of issued
offers, after which a new offer of a higher value is issued to the recipient to
replace unused offers later in the series of issued offers. Fajkowski, col. 26,
11. 8-41 ; see Final Act. 3; Ans. 3. Although Fajkowski teaches issuing a new
offer of a higher value, Fajkowski does not discloses that the new offer’s
increase in value corresponds to the benefit the recipient would have
received if the earlier offer had not been used. Thus, the combination of
Van Kohom and Fajkowski does not disclose the contested feature.
Based on the foregoing, we do not sustain the Examiner’ rejection of
claims 1, 2, 67, and 69.
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Appeal 2014-007926
Application 11/928,572
Claims 3 and 4
Claims 3 and 4 do not recite the above limitation requiring issuing a
new offer corresponding to an incremental benefit that the recipient would
have had the recipient not already redeemed the offer. See Appeal Br. 28.
However, the Examiner does not make separate findings from claims 1, 67,
and 69 regarding claims 3 and 4 in a manner that clearly articulates reasons
with rational underpinning how the combination of the prior art references
discloses the claimed limitations of claims 3 and 4. See Final Act. 2-4.
Moreover, the Examiner does not address the Appellants’ separate
arguments regarding claims 3 and 4. See Appeal Br. 21; Ans. 2—4.
Thus, we do not sustain the Examiner’s rejection of claims 3 and 4.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claims 1—4, 67, and 69 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. We find the claims are ineligible for patent
protection because they are directed to an abstract idea.
The patent statute 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. Yet 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. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass ’n for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
“[pjhenomena of nature, though just discovered, mental processes, and
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Application 11/928,572
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Gottschalkv. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of [these] 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.” Id. If so, the second
step is to consider the elements of the claims “individually and ‘as an
ordered combination”’ to determine whether the additional elements
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 132 S. Ct. at 1291, 1297). In other words, the second step is
to “search for an ‘inventive concept’ — i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to the concept of providing coupons/offers with a
variable benefit, receiving data regarding the coupon/offer being duplicated,
and issuing a new coupon/offer with an increase in value. In that context,
providing marketing offers is a fundamental economic and conventional
business practice. Our reviewing courts have held certain fundamental
economic and conventional business practices, like offer-based price
optimization (see OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
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Application 11/928,572
1362—63 (Fed. Cir. 2015)), tailoring information presented to a user based
on particular information (see Intellectual Ventures ILLCv. Capital One
Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)), using advertising as an
exchange or currency (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
714 (Fed. Cir. 2014)), and intermediated settlement (see Alice, 134 S. Ct.
at 2356—57), as being abstract ideas. The providing of marketing offers of
claim 1 is similar to these abstract ideas, and, thus claim 1 is directed to an
abstract idea.
Under the second step of the analysis, we find independent claims
1—4, 67, and 69 do not have any additional elements that amount to
significantly more to transform the abstract idea of providing marketing
offers into a patent-eligible application of the abstract idea. Independent
claims 1 and 2 recite methods comprising generating a coupon/offer,
receiving data indicating the coupon/offer was duplicated, and issuing an
offer or credit for an amount of the difference in benefit. See Appeal Br. 27.
Similarly, independent claims 3 and 4 recite methods for providing a coupon
comprising issuing a coupon, receiving data indicating registration of a
duplicate of the coupon, and increasing the benefit of the coupon. Id. at 27.
Any general purpose computer available at the time the application was filed
would have been able to perform these functions. The Specification
supports that view. See Spec. 5, 30-34 (describing conventional computers).
Independent apparatus claim 67 recites a system comprising a memory,
communication port, and processor, i.e., a general computer, to perform a
method similar to that of claim 1. Appeal Br. 28—29. Similarly, independent
apparatus claim 69 recites an apparatus comprising a computer-usable
medium with program means for executing a method similar to that of
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Application 11/928,572
claim 1. Id. at 29. The introduction of a computer to implement an abstract
idea is not a patentable application of the abstract idea. Alice, 134 S. Ct.
at 2357—58. The computer implementation here is purely conventional and
performs basic functions. See id. at 2359—60. Taking the limitations of the
claims alone and in combination, the claims do not purport to improve the
functioning of the computer itself, nor do they effect an improvement in any
other technology or technical field. See id. at 2359.
Thus, under the two-part analysis, we find that claim 1 covers claimed
subject matter that is judicially-excepted from patent eligibility under § 101.
The other independent claims — method claims 2-A and apparatus claims 67
and 69 — similarly cover claimed subject matter that is judicially-excepted
from patent eligibility under § 101. See Alice, 134 S. Ct. at 2360.
Therefore, we enter a new ground of rejection of claims 1—4, 67, and
69 under 35 U.S.C. § 101.
DECISION
The rejection of claims 1—4, 67, and 69 under 35 U.S.C. § 103(a) is
REVERSED.
A NEW GROUND OF REJECTION has been entered for claims 1—4,
67, and 69 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides
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Application 11/928,572
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the Examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED: 37 C.F.R, $ 41.50(b)
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