Ex Parte Owen et al

Patent Trial and Appeal Board

Dec 19, 2016

12194724 (P.T.A.B. Dec. 19, 2016)

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.
12/194,724 08/20/2008 Sarah Owen 87188-748083 (089600US) 7140
20350 7590 12/21/2016
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH OWEN, VIRGINIA G. SAYOR, MATT WITHEY,
TODD R. NUZUM, and BARBARA C. GAINES
Appeal 2014-0067071
Application 12/194,7242
Technology Center 3600
Before BIBHU R. MOHANTY, AMEE A. SHAH, and
MATTHEW S. METERS, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—14, 17—30, 33, and 34 under 35 U.S.C. § 103(a)
as being unpatentable over Gobburu (US 2002/0060246 Al, pub. May 23,
2002) in view of Collins (US 2008/0090513 Al, pub. Apr. 17, 2008). We
have jurisdiction under 35 U.S.C. § 6(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Nov. 12, 2013), Reply Brief (“Reply Br.,” filed May 23,
2014), and Specification (“Spec.,” filed Aug. 20, 2008), and to the
Examiner’s Answer (“Ans.,” mailed Mar. 24, 2014) and Non-Final Office
Action (“Non-Final Act.,” mailed June 21, 2013).
2 According to the Appellants, the real party in interest is First Data
Corporation. Appeal Br. 3.
Appeal 2014-006707
Application 12/194,724
We REVERSE and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 CE.R. § 41.50(b).
STATEMENT OF THE CASE
The Appellants’ invention relates generally to mobile commerce, and
specifically to “methods and systems for filtering marketing messages sent
to a mobile device.” Spec. 11.
Claims 1 and 17 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (with
bracketing added for reference):
1. A method of filtering marketing offers sent to a mobile
device, the method comprising:
[(a)] receiving, at a host computer system having a
processor, preference information from a user of the mobile
device through a consumer-side services module, the preference
information indicating marketing offers the user considers to be
relevant;
[(b)] generating with the processor one or more
rules based on the preference information, the one or more rules
defining conditions for marketing offers to be sent to the mobile
device; and
[(c)] receiving at the host computer system through
a merchant-side services module an indication from at least one
merchant of redemptions of past marketing offers by the user to
create a history of redemptions, and updating the one or more
rules based on the history of redemptions, such that the user
receives marketing offers for same or similar products, for same
or nearby purchase locations, or for same or similar times of
purchase with the merchant;
[(d)] wherein the host computer system is operated
by an acquirer system, the acquirer system connected to one or
more point-of-sale devices at which the user may conduct
transactions with the merchant using the mobile device to
access an account at an issuing financial institution, the acquirer
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Application 12/194,724
system being an intermediary between the merchant and the
issuing financial institution for processing card transactions,
and the acquirer system receiving transaction information from
the merchant and sending an authorization request to the issuing
financial institution, receiving back an authorization code if the
transaction is authorized, and forwarding the authorization code
to the merchant; and
[(e)] wherein the acquirer system receives
information about redemptions of marketing offers by the user
at the point-of-sale devices using the mobile device, for creating
the history of redemptions received at the host computer that is
used as the basis for updating the one or more rules.
Appeal Br. 11 (Claims App.).
ANALYSIS
Each of independent claims 1 and 17 recites the limitations of an
acquirer system that is an intermediary and “send[s] an authorization request
to the issuing financial institution, receiv[es] back an authorization code if
the transaction is authorized, and forward[s] the authorization code to the
merchant,” as recited in limitation (d) of claim 1.
The Appellants contend the Examiner’s rejection of independent
claims 1 and 17 is in error because, in relevant part, the mobile phone of
Gobburu, as relied on by the Examiner, is not an “acquirer system” as
claimed because it does perform the claimed functions as recited in
limitation (d) of being an intermediary, receiving transaction information,
sending an authorization request, receiving an authorization code, and
forwarding the code. Appeal Br. 7.
The Examiner cites to Gobburu at paragraph 82 for disclosing a
mobile device that meets the limitations of the claimed acquirer system.
Ans. 21. Paragraph 82 of Gobburu discloses that: (1) a user places an order
using a mobile phone, (2) the merchant sends an order confirmation to the
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Application 12/194,724
mobile phone, (3) the user, using the mobile phone, then sends the order
information to the financial institution, (4) the bank server sends the
authorization to the merchant server, and (5) the merchant server sends a
confirmation to the mobile phone.
We find that the Examiner’s finding that Gobburu’s mobile phone is
an acquirer system being an intermediary between the merchant and issuing
financial institution, receiving transaction information from the merchant
and sending an authorization code to the financial institution, is adequately
supported. However, the Examiner finding that Gobburu’s mobile phone is
an intermediary that receives back from the financial institution an
authorization code which is then forwarded to the merchant is not adequately
supported. Gobburu discloses that the financial institution sends the
authorization to the merchant server; it does not disclose the mobile device
performing the function of receiving from the financial institution an
authorization code if the transaction is authorized, and then forwarding that
code to the merchant, as required by limitation (d) (“the acquirer system . . .
receiving back an authorization code if the transaction is authorized, and
forwarding the authorization code to the merchant”). Thus, we agree with
the Appellants that Gobburu’s mobile phone does not act as an intermediary
that receives back an authorization code if the transaction is authorized and
forwards that code to the merchant. See Reply Br. 2.
In view of the foregoing, we are persuaded the Examiner’s rejection
of independent claims 1 and 17 is in error. Thus, we do not sustain the
Examiner’s rejection of the independent claims 1 and 17, and of claims 2—
14, 18—30, 33, and 34, dependent therefrom.
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Appeal 2014-006707
Application 12/194,724
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1—14, 17—30, 33, and 34 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 Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347 (2014) identified a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. We analyze the claims using the two part analysis: 1) determine
whether the claims are directed to an abstract idea; and 2) if an abstract idea
is present in the claims, determine whether any element, or combination of
elements, in the claims is sufficient to ensure the claims amount to
significantly more than the abstract idea itself to transform the claims into a
patent-eligible invention. See id. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to the concept of filtering marketing offers sent to
a device. In that context, filtering marketing offers is a fundamental
economic and conventional business practice. The Supreme Court has held
certain fundamental economic and conventional business practices, like
tailoring information presented to a user based on particular information (see
Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015); see also Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)), and intermediated
settlement {see Alice, 134 S. Ct. at 2356—57), as being abstract ideas. The
filtering of marketing messages of claim 1 is similar to these abstract ideas,
and, thus claim 1 is directed to an abstract idea.
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Application 12/194,724
Under the second step of the analysis, we find neither independent
claims 1 and 17, nor dependent claims 2—14, 18—30, 33, and 34, have any
additional elements that amount to significantly more to transform the
abstract idea of filtering marketing messages into a patent-eligible
application of the abstract idea. Independent claim 1 and dependent claims
2—14 and 33 recite a method of receiving preference information, generating
rules based on the information, receiving an indication of offer redemption,
and receiving, sending, and forwarding information and authorization.
Appeal Br. 12—13, 15. 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. Tflf 25, 38—40, 44 (“the
system can include one or more server computers 105, 110, 115 which can
be general purpose computers and/or specialized server computers”), Fig. 1.
Independent apparatus claim 7 and dependent claims 18—30 and 34 recite a
system comprising a network, mobile device, and computer system, i.e.,
general computers. Appeal Br. 12, 14—15, 16. 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; cf Bascom, 827 F.3d at 1350 (“Filtering content on the
Internet was already a known concept, and the patent describes how its
particular arrangement of elements is a technical improvement over prior art
ways of filtering such content” (emphasis added)).
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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 claim — system claim 17 parallels claim 1 —
similarly covers claimed subject matter that is judicially-excepted from
patent eligibility under § 101. See id. at 2360. The dependent claims
describe various versions of the marketing offer, marketing information, and
rules that do little to patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1—14, 17—30,
33, and 34 under 35 U.S.C. § 101.
DECISION
The rejection of claims 1—14, 17—30, 33, and 34 under 35 U.S.C.
§ 103(a) is REVERSED.
A NEW GROUND OF REJECTION has been entered for claims
1—14, 17—30, 33, and 34 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). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant(s), 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
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Application 12/194,724
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
REVERSED; 37 C.F.R, $ 41.50(b)
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