Ex Parte Robert

Patent Trials and Appeals Board

Mar 4, 2019

13179408 - (D) (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/179,408 07/08/2011
63649 7590 03/06/2019
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Arnaud Robert
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.
0260294 1357
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNAUD ROBERT
Appeal2017-005981
Application 13/179,408 1
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-8, 12-21, 25, and 26 which are all claims pending in
the application. Appellant has canceled claims 9-11 and 22-24. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellant, the real party in interest is Disney Enterprises,
Inc. App. Br. 2.
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Application 13/179,408
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed "invention relate[]
generally to providing computer mediated consumer services. More
particularly, the present invention relates to methods and systems for
associating a product redemption code with a consumer of the product
identified with the redemption code." Spec. 1: 10-13.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphases added to contested prior-art limitations):
1. A method comprising:
receiving, by a processor, a first product redemption data
and an identity of a consumer, wherein, prior to the receiving,
the first product redemption data along with a first product are
distributed without the first product redemption data having
been associated with any consumer;
associating, by the processor in a memory, the identity of
the consumer with the first product redemption data in response
to receiving the first product redemption data and the identity of
the consumer;
receiving, after the associating, the first product
redemption data from a playback device;
using, after the receiving of the first product redemption
data from the playback device, the first product redemption
data as a substitute for the identity of the consumer by:
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
July, 25, 2016); ReplyBrief("ReplyBr.," filed Feb. 15, 2017); Examiner's
Answer ("Ans.," mailed Dec. 19, 2016); Final Office Action ("Final Act.,"
mailed Mar. 25, 2016); and the original Specification ("Spec.," filed
July 8, 2011) (claiming benefit of US 61/403,125, filed Sept. 9, 2010).
2
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searching the memory using the processor to
find the first product redemption data; and
identifying, based on the searching, the
consumer using the first product redemption data
found in the memory and associated with the
identity of the consumer in the memory;
providing the consumer with updates to the first product,
in response to the identifying the consumer using the first
product redemption data.
1---8, 12-21, 25, and 26 Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Ovadia3 US 5,612,527 Mar. 18, 1997
Peterson et al. ("Peterson") US 2010/0049603 Al Feb. 25, 2010
Barnett et al. ("Barnett") US 2005/0149405 Al July 7, 2005
Specification, p. 1, 11. 22 - p. 3, 1. 9 ("Background Art") (hereinafter
"Appellant's Admitted Prior Art" - "AAPA").
Rejection on Appeal
RI. Claims 1-8, 12-21, 25, and 26 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 6.
R2. Claims 1-8, 12-21, 25, and 26 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Barnett, AAP A,
Peterson, and Ovadia. Final Act. 11.
3 Both the Examiner and Appellant improperly cited to US 5,623,527 as
Ovadia, whereas, the proper patent number for Ovadia is US 5,612,527. See,
generally Final Act., App. Br.
3
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CLAIM GROUPING
Based on Appellant's arguments (App. Br. 6-20) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter Rejection RI of claims 1-8, 12-21, 25, and 26 on the basis of
representative claim 1; and we also decide the appeal of obviousness
Rejection R2 of claims 1-8, 12-21, 25, and 26 on the basis of representative
claim 1.
ISSUES AND ANALYSIS
We review patent-eligibility Rejection RI de nova. Based upon our
review of the record, we find a preponderance of the evidence supports
particular arguments advanced by Appellant with respect to obviousness
Rejection R2 of claims 1-8, 12-21, 25, and 26 for the specific reasons
discussed below. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
1. § 101 Rejection RI of Claims 1-8, 12-21, 25, and 26
Issue 1
Appellant argues (App. Br. 6-14; Reply Br. 2-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, is claim 1
patent-ineligible under§ 101?
4
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A. 35 U.S.C. § 101
PRINCIPLES OF LAW
We first note "[ w ]hether a claim is drawn to patent-eligible subject
matter is an issue of law that we review de novo." SiRF Tech., Inc. v. Int'!
Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step 1" in the patent-eligibility
inquiry under § 101.
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
6
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However, the Federal Circuit has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1353-54 (Fed.
Cir. 2016) ( collecting cases). At the same time, "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Abstract ideas may include, but
are not limited to, fundamental economic practices, methods of organizing
human activities, and mathematical formulas or relationships. Alice 573
U.S. 208 at 218-22. Under this guidance, we must therefore ensure at step
one that we articulate what the claims are directed to with enough specificity
to ensure the step one inquiry is meaningful. Id. at 217 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
7
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B. USPTO Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-07 /pdf/
2018-28282.pdf).
Under that Guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); 5 and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.0S(a}-
(c), (e}-(h)). 6
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.0S(d)); or
( 4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception. 7
5 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
6 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
7 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
8
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See Guidance.
Step 2A(i) -Abstract Idea
Informed by our judicial precedent, the recent Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Guidance. 8
8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
9
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However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii)-Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 9
cited in the Guidance under Step 2A(ii), are:
(1) MPEP § 2106.0S(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.0S(b) Particular Machine
(3) MPEP § 2106.0S(c) Particular Transformation
(4) MPEP § 2106.0S(e) Other Meaningful Limitations
(5) MPEP § 2106.0S(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.0S(g) Insignificant Extra-Solution Activity
9 See MPEP § 2106.0S(a}-(c), (e}-(h). Citations to the MPEP herein refer to
revision [R-08.2017].
10
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(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 10 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination). 11 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
11
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whether the additional elements amount to significantly more than the
exception itself). 12
Under the Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Guidance, III.B. 13
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
12
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1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s).
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.0S(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s).
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s ).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
13
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However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined "[t]he claim(s) is/are directed to the
abstract idea of: (i) a fundamental economic practice, (ii) a method of
organizing human activities, (iii) an idea of itself, or (iv) a mathematical
relationship or formula." Final Act. 6 (formatting removed). In particular,
the Examiner concludes all but one limitation of claim 1 recites "an idea of
itself," and the last limitation of claim 1 recites both "an idea of itself' and
"certain methods of organizing human activities." Final Act. 7-8. 14
"An idea of itself' is no longer a category included in the Guidance,
and therefore we reevaluate whether an abstract idea is recited by claim 1
based upon the Guidance. We conduct our review for abstractness de novo.
We agree with the Examiner that claim 1 recites various mental
processes that can be performed in the human mind and/or by pen and paper.
Id. We find this type of activity, i.e., associating and comparing information
14 However, from this pre-Guidance analysis, we see that claim 1 does not
recite the judicial exceptions of either natural phenomena or laws of nature.
14
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and using rules to make a determination, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson."). 15
Our reviewing court has previously held other patent claims ineligible
for being directed to similar abstract concepts. For example, while the
Supreme Court has enhanced the § 101 analysis since CyberSource in cases
like Mayo and Alice, the Federal Circuit continues to "treat[] analyzing
information by steps people go through in their minds, ... without more, as
essentially mental processes within the abstract-idea category." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(quoting Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016)).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
15 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
15
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mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F .3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea of
collecting and comparing known information"). Also, more recently, our
reviewing court has also concluded that acts of parsing, comparing, storing,
and editing data are abstract ideas. Berkheimer, 881 F.3d at 1366. 16
Moreover, the Specification provides evidence as to what the claimed
invention is directed. In this case, the Specification discloses that "the
present invention relates to methods and systems for associating a product
redemption code with a consumer of the product identified with the
redemption code." Spec. 1: 10-13. Claim 1 provides additional evidence by
reciting, in part, "associating ... the identity of the consumer with the first
product redemption data in response to receiving the first product
redemption data and the identity of the consumer." We conclude at least this
limitation recites an abstract idea. 17
16 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241.
17 The Abstract describes the invention as:
There is presented a method and system for using a
product redemption data associated with an identity of a
consumer in a memory of a computer having a processor. The
method comprises receiving the product redemption data,
16
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Thus, under Step 2A (i), we conclude claim 1 recites the abstract idea
of "associating ... the identity of the consumer with the first product
redemption data in response to receiving the first product redemption data
and the identity of the consumer," which, under the Guidance, can be
interpreted as a method of organizing human activity, i.e., advertising,
marketing or sales activities.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
In addition to the abstract "associating" limitation identified in Step
2A(i), supra, claim 1 recites (1) "receiving ... a first product redemption
data and an identity of a consumer," (2) "receiving, after the associating, the
first product redemption data," (3) "using ... the first product redemption
data as a substitute for the identity of the consumer," and (4) "providing the
searching the memory using the processor to find the product
redemption data, and identifying the consumer in response to
finding the product redemption data associated with the identity
of the consumer in the memory.
Spec. 26 ("Abstract"). This is consistent with the Examiner's determination
cited above.
17
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consumer with updates to the first product, in response to the identifying the
consumer using the first product redemption data."
As to the specific limitations, we find limitations (1) and (2) recite
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
performed by the steps or function in Appellant's claims, is a classic
example of insignificant extra-solution activity. See, e.g., In re Bilski, 545
F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom, Bilski v. Kappas,
561 U.S. 593 (2010).
We also find limitation (4) recites insignificant post solution activity.
The Supreme Court guides that the "prohibition against patenting abstract
ideas 'cannot be circumvented' [by] adding 'insignificant postsolution
activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S. at 191-92).
Appellant relies upon the Federal Circuit's holding in Enfzsh 18 to
contend "just as in Enfzsh, the claims of the present application are not
directed to a patent ineligible concept, because the claims are directed to
identifying a consumer using first product redemption data for a first
product. so as to be able to provide the consumer with updates to the first
product." App. Br. 8. In particular, Appellant argues, "[t]he present
application explains the disadvantages of conventional approaches, and
provides example advantages of the claimed approach." App. Br. 9-10
(quoting Spec. 8:19-9:4).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
18 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to "a specific improvement to the
way computers operate, embodied in the self-referential table" (id. at 1336),
and explained that the claims are "not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database" that functions differently than conventional
databases. Id. at 1337.
We find Appellant's reliance upon Enfzsh is misplaced, because the
recited method does not improve the functioning of the computer itself.
However, we do find the claimed invention does improve the underlying
technology, i.e., "computer mediated consumer services." See
Spec. 1: 10-13. "[T]he claims are directed to a specific implementation of a
solution to a problem of identifying consumers for the purpose of providing
updates to the consumers for their products." App. Br. 10.
Notwithstanding Appellant's particular arguments concerning Enfish,
we conclude the recited "using ... the first product redemption data as a
substitute for the identity of the consumer" integrates the abstract idea of
"associating the identity of the consumer with the first product redemption
data in response to receiving the first product redemption data and the
identity of the consumer" into a practical application of the abstract idea,
thus improving the underlying technology of computer mediated consumer
services.
Accordingly, we determine the recited judicial exception is integrated
into a practical application as determined under at least MPEP
Section 2106.0S(a) cited above, such that the claim, as a whole, is not
directed to the judicial exception.
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Because we conclude claim 1 is not directed to a judicial exception,
and thus is patent-eligible, this ends the patent-eligibility inquiry under the
Guidance, and we need not proceed to the Step 2B analysis.
2. § 103 Rejection R2 of Claims 1-8, 12-21, 25, and 26
Issue 2
Appellant argues (App. Br. 14--20) the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of
Barnett, AAP A, Peterson, and Ovadia is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of:
prior to the receiving, the first product redemption data
along with a first product are distributed without the first
product redemption data having been associated with any
consumer . . . [and]
using, after the receiving of the first product redemption
data from the playback device, the first product redemption data
as a substitute for the identity of the consumer by ...
identifying, based on the searching, the consumer using the first
product redemption data found in the memory and associated
with the identity of the consumer in the memory,
as recited in claim 1? (Formatting removed).
Analysis
Appellant contends the cited combination of prior art, particularly,
Barnett, does not teach or suggest using product redemption data as a
substitute for the identity of the consumer, as recited in claim 1. App.
Br. 14.
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Barnett is directed to distributing electronic coupons to remote
personal computers located at the user's home to use at a retail
store .... Additionally, Barnet discloses that the user is given a
unique number assigned to the user, which is encoded as a bar
code on the coupon .... This unique number is used to obtain
demographic analysis and user-specific data, as well as
preventing the duplicate use of a coupon .... In short, Barnet
discloses that a user may obtain a coupon unique to the user,
which can be tracked for marketing analysis and fraud
prevention. However, Barnett does not disclose, teach, or
suggest [ using product redemption data as a substitute for the
identity of the consumer].
App. Br. 15 ( citations omitted).
The Examiner also finds "the method of Barnett allows the tracking of
consumer purchases through the redemption of unique coupons issued to the
consumer via a consumer profile." Ans. 4. Further, "Ovadia discloses a
discount offer redemption system that links identity with purchased items as
a means to identify that user for future promotions using both the purchased
item data and the direct identity of the user." Id. (citations omitted).
The portion of Ovadia cited by the Examiner discloses:
Regardless of the type of indicia used, it should be understood
that the purpose of providing POS machine readable
redemption identification indicia relating to a specific
advertising circular, is ultimately to address a file in the POS
machine containing the products or services offered under a that
circular and to record the identity of each recipient of that
circular who redeems at least one item offered in the circular
along with a listing of all items purchased during that
transaction.
Ovadia co 1. 6: 19--2 7 ( emphasis added).
Appellant further argues, in contrast to the recitation in claim 1 of
"prior to the receiving, the first product redemption data along with a first
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product are distributed without the first product redemption data having
been associated with any consumer," Ovadia teaches "the identity of the
person is known and is associated with the flyer." App. Br. 18 (emphasis
added).
We find Appellant's argument persuasive regarding the deficiencies
of the teachings and suggestions of the cited prior art combination, such that
we do not sustain the Examiner's rejection under§ 103.
Therefore, for essentially the same reasons argued by Appellant (id.),
we reverse the Examiner's rejection of independent claim 1, and also the
rejection of independent claim 14, which recites the disputed limitations in
commensurate form. For the same reasons, we also reverse the rejections of
all claims 2-8, 12, 13, 15-21, 25, and 26 that depend therefrom. 19
CONCLUSIONS
(1) The Examiner erred with respect to patent-ineligible subject
matter Rejection RI of claims 1-8, 12-21, 25, and 26 under 35 U.S.C.
§ 101, and we do not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejection R2
of claims 1-8, 12-21, 25, and 26 under 35 U.S.C. § I03(a) over the cited
prior art combination of record, and we do not sustain the rejection.
19 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant's other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on "a
single dispositive issue").
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DECISION
We reverse the Examiner's decision rejecting claims 1-8, 12-21, 25,
and 26.
REVERSED
23