Ex Parte Rosenberg

Patent Trial and Appeal Board

May 12, 2017

13654716 (P.T.A.B. May. 12, 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.
13/654,716 10/18/2012 David G. Rosenberg 32276-37/UNF 0001 PA 2726
24256 7590 05/12/2017
DINSMORE & SHOHL LLP
255 East Fifth Street, Suite 1900
CINCINNATI, OH 45202
EXAMINER
DONLON, RYAN D
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
05/12/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte DAVID G. ROSENBERG
Appeal 2015-0055031
Application 13/654,7162
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
December 8, 2014) and Reply Br. (“Reply Br.,” filed April 30, 2015), and
the Examiner’s Answer (“Ans.,” mailed March 2, 2015) and Final Office
Action (“Final Act.,” mailed July 7, 2014).
2 Appellant identifies Unifimd Corporation as the real party in interest.
App. Br. 2.
Appeal 2015-005503
Application 13/654,716
CLAIMED INVENTION
Appellant’s claimed invention “generally relates to systems and
methods for facilitating debt reduction and, more particularly, to systems
and methods for facilitating a reduction of an outstanding balance on a debt
account in a debt reduction incentive program” (Spec. 12).
Claims 1,13, and 19 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of facilitating a
reduction of an outstanding balance on a debt account in a debt
reduction incentive program, wherein the debt reduction
incentive program comprises a debtor obligated to pay the
outstanding balance of the debt account, a debt owner or debt
collector seeking to collect payment from the debtor, and an
incentive provider, the method comprising:
determining, automatically by a debt reduction facilitation
computing system, that an incentive participant has successfully
completed an incentive activity;
determining, automatically by the debt reduction
facilitation computing system, the debt account for which the
outstanding balance will be reduced as a result of the successful
completion of the incentive activity by the incentive participant;
determining, automatically by the debt reduction
facilitation computing system, a debt reduction amount, wherein
the debt reduction amount is based on an actual payment amount,
wherein the actual payment amount is indicative of an amount of
money to be actually paid to the debt owner or debt collector as
a result of the incentive participant successfully completing the
incentive activity, and wherein the debt reduction amount is
greater than the actual payment amount; and
facilitating, automatically by the debt reduction
facilitation computing system, the reduction of the outstanding
balance of the debt account by the debt reduction amount.
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REJECTIONS3
Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—20 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Okerlund (US 2013/0080239 Al, pub. Mar. 28, 2013) and Hucal
(EP 2,113,883 Al, pub. Nov. 4, 2009).
ANALYSIS
Non-Statutory Subject Matter
Independent Claim 1 and Dependent Claims 2—12
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services 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 Corp., 134 S. Ct.
3 The rejection of claim 8 under 35 U.S.C. § 112, fourth paragraph, has been
withdrawn. Ans. 3.
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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., e.g., to an
abstract idea. 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 there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or 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).
Applying the framework set forth in Alice, and as the first step of that
analysis, we agree with the Examiner that the claims are directed to “the
fundamental economic practice and organizing human activities of making
payment toward [a] debt or loan” (Ans. 2) and, therefore, to an abstract idea
— a finding fully consistent with the Specification (see Spec. 12 (stating
that the present invention “relates to systems and methods for facilitating . . .
a reduction of an outstanding balance on a debt account in a debt reduction
incentive program”)).
Claim 1, for example, recites a method comprising the steps of
(1) determining whether a participant has successfully completed an
incentive activity; (2) determining the debt account for which the
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outstanding balance will be reduced as a result of the participant’s successful
completion of the incentive activity; (3) determining the debt reduction
amount; and (4) reducing the outstanding balance of the debt account by the
debt reduction amount. Claim 1 recites that the claimed method steps are
executed by a computer, i.e., a “debt reduction facilitation computing
system.” Yet these method steps involve no more than reducing an
outstanding loan balance by a particular amount based on a participant’s
successful performance of an activity — an act that could be performed by a
human, e.g., mentally, using pen and paper, and/or manually, without the use
of a computer or any other machine.
Appellants argue that claim 1 is not directed to an abstract idea
because the claim is not “directed to a fundamental economic practice, a
method of organizing human activities, an idea of itself or a mathematical
relationship/formula” and further because the claim is “not similar to any of
the examples of patent-ineligible subject matter that were set forth in the
[USPTO’s] 2014 Interim Guidance on Patent Subject Matter Eligibility or in
the Examples: Abstract Ideas published by the USPTO on January 27, 2015”
(Reply Br. 3—4). Yet the law is clear that “[a] method that can be performed
by human thought alone is merely an abstract idea and is not patent-eligible
under § 101.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372—73 (Fed. Cir. 2011); see also Gottschalkv. Benson, 409 U.S. 63, 67
(1972) (“[phenomena of nature . . ., mental processes, and abstract
intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.”). Moreover, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F.3d
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at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson”).
We also cannot agree with Appellant that the present case is similar to
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appellant asserts that claim 1 recites a method “necessarily rooted in
computer technology that is used to solve the business problem of collecting
payments from the debtor ... a challenge particular to the debt repayment
context” and that DDR Holdings “supports the conclusion that claim 1 is not
directed to an abstract idea” (Reply Br. 4—5). Yet we can find no parallel
between the present claims and those in DDR Holdings.
In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host’s website after “clicking”
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d
at 1257. The Federal Circuit, thus, held that the claims were directed to
patent-eligible subject matter because they claim a solution “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” Id.
No such technological advance is evident in the present invention.
Unlike the situation in DDR Holdings, Appellant does not identify any
problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. To the contrary, it could not be clearer that, rather
than addressing a technical problem, the method of claim 1 is used to solve
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“the business problem of collecting payments from the debtor in order to
reduce the outstanding balance of the debt obligation, a challenge particular
to the debt repayment context” (Reply Br. 5 (emphasis added)).
Turning to the second step of the Alice analysis, Appellant argues that
even if claim 1 is directed to an abstract idea, the claim recites “significantly
more” than the abstract idea of “making payment toward debt or loan”
(Reply Br. 7—10). Appellant notes that claim 1 recites automatically
reducing the outstanding balance of a debt account by an amount greater
than the amount actually paid to the debt owner (id. at 9). And Appellant
argues that this “adds a limitation to the claim[ ] beyond what is well-
understood, routine and conventional in the field” and is “an unconventional
step that confine the claims to a particular useful application of incentivizing
debt repayment” (id.)
Appellant maintains that claim 1 recites “a particular manner that the
payoff of outstanding debt is incentivized that is significantly more than the
alleged abstract idea of merely making a payment toward a debt or loan”
(id.). Yet the feature that Appellant identifies as “significantly more” (i.e.,
reducing the outstanding balance by an amount greater than the amount
actually paid to the debt holder if the debtor successfully completes the
incentive activity) is merely part of the abstract idea itself. The only claim
element beyond the abstract idea is the “debt reduction facilitation
computing system,” i.e., generic computer components (see, e.g., Spec. 125
“[I]n some embodiments, the debt reduction facilitation computing
system 12 may be configured as a general purpose computer with the
requisite hardware, software, and/or firmware”)), on which the claimed
method is performed — which is not enough to make an otherwise ineligible
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claim patent-eligible. See, e.g., DDR Holdings, 773 F.3d at 1256 (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. The bare fact
that a computer exists in the physical rather than purely conceptual realm is
beside the point.” (internal citations and quotation marks omitted)).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 101. For the same reasons, we also
sustain the rejection of dependent claims 2—12, which are not argued
separately.
Independent Claims 13 and 19 and Dependent Claims 14—18 and 20
Appellant’s arguments with respect to independent claims 13 and 19
are substantially identical to Appellant’s arguments with respect to
independent claim 1 (Reply Br. 5—10), and are similarly unpersuasive of
Examiner error.
Therefore, we sustain the Examiner’s rejection of independent
claims 13 and 19 under 35 U.S.C. § 101 for the same reasons set forth above
with respect to claim 1. We also sustain the rejection of dependent
claims 14—18 and 20, which are not argued separately.
Indefiniteness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claims 1—20 under 35 U.S.C. § 112, second paragraph (App.
Br. 13—14). The Examiner takes the position that the phrase “wherein the
debt reduction amount is greater than the actual payment amount,” as recited
in independent claim 1, and similarly recited in independent claims 13 and
19, is unclear (Final Act. 2). However, we agree with Appellant that a
person of ordinary skill in the art would understand what is claimed when
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the claim is read in light of the Specification, namely that the “actual
payment amount” is the amount of money actually paid to a debt owner or
debt collector and that the “debt reduction amount” is an amount by which
the outstanding balance on the debt account will be reduced, the latter being
greater, i.e., a larger sum of money, than the former.
Therefore, we do not sustain the Examiner’s rejection of claims 1—20
under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for
definiteness under 35 U.S.C. § 112, second paragraph, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.”).
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 13, and 19 under 35 U.S.C. § 103(a) because
Hucal, on which the Examiner relies, does not disclose or suggest
“determining ... a debt reduction amount, wherein the debt reduction
amount is based on an actual payment amount... to be actually paid to the
debt owner or debt collector as a result of the incentive participant
successfully completing the incentive activity, and wherein the debt
reduction amount is greater than the actual payment amount,” as recited in
independent claim 1, and similarly recited in independent claims 13 and 19.
The Examiner cites the Abstract and paragraphs 1—6, 8, and 26—28 of Hucal
as disclosing the argued limitation (Final Act. 6). However, we agree with
Appellant that there is nothing in the cited portions of Hucal that discloses or
suggests reducing an outstanding balance by an amount greater than an
actual payment amount (App. Br. 18).
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Hucal is directed to a method and system for operating revolving
credit programs and, more specifically, to operating revolving credit
programs in which the interest rate applied to an outstanding balance is
varied depending on the percentage of the outstanding balance paid by a
customer during a billing cycle (Hucal 1—7). Thus, the greater the
percentage of the outstanding balance paid off by a customer during a billing
cycle, the lower the interest rate applied to the remaining unpaid outstanding
balance during the next billing cycle {id. 17). For example, if a credit
customer pays 2% of the outstanding balance in a billing cycle, the interest
applied to the remaining outstanding balance is 16.5%; the interest rate is
reduced, e.g., to 12.9%, if the customer pays 3% of the outstanding balance;
and the interest rate is further reduced, e.g., to 8.9%, if the customer pays
5% or more of the outstanding balance {id. 1 8; see also id. Tflf 26—28).
The Hucal revolving credit program, with its tiered interest rate
structure, is designed to encourage, i.e., incentivize, credit customers to pay
off their outstanding account balances quickly {id. 113). Although the
interest rate on the remaining balance is reduced, there is nothing in the cited
portions of Hucal that discloses or suggests that the debt reduction amount,
i.e., the amount by which a customer’s outstanding balance is reduced, is
greater than the customer’s actual payment amount. Instead, in Hucal, the
payment amount and the reduction in the outstanding balance are the same.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 13, and 19 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 2—12, 14—
18, and 20.
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DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103(a) is
reversed.
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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