Ex Parte Sayler et al

Patent Trial and Appeal Board

Feb 21, 2018

14285928 (P.T.A.B. Feb. 21, 2018)

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.
14/285,928 05/23/2014 Bradford Jeffrey Sayler 008296.00001YUS 7484
22907 7590 02/23/2018
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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):
eofficeaction @bannerwitcoff.com
GPD@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADFORD JEFFREY SAYLER and CHERIAN THOMAS
Appeal 2016-006939
Application 14/285,928
Technology Center 3600
Before ST. JOHN COURTENAY III, MATTHEW McNEILL, and
STEVEN AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 4—21, which are all the claims pending in this application.
Claim 3 is cancelled. (App. Br. 6). We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants’ invention “relate[s] to computing hardware and computer
software. In particular, one or more aspects of the disclosure are directed to
computing hardware and computer software for optimizing and
distributing discounts.” (Spec. 12) (emphasis added).
Appeal 2016-006939
Application 14/285,928
Representative Claim
Claim 1 is representative of the invention and reads as follows:
1. A method, comprising:
providing, by a computing device, to a user computing device,
two or more base discounts for a user of the user computing
device;
receiving, by the computing device, from the user computing
device, a request for a randomized discount for the user of the
user computing device;
[L] in response to receiving the request for the randomized
discount for the user of the user computing device, selecting, hy
the computing device, using a randomized process, a merchant
from a group of at least two merchants, the at least two
merchants being grouped based on geographical proximity of
the at least two merchants',
determining, by the computing device, a discount that is
redeemable by the user of the user computing device with the
selected merchant based on one or more factors including one
or more of current weather or an amount of distance between an
intended recipient of the determined discount and the selected
merchant; and
providing, by the computing device, to the user computing
device, the determined discount,
wherein the two or more base discounts for the user of the user
computing device include at least one base discount for each
merchant of the at least two merchants, and
wherein the determined discount that is redeemable by the user
of the user computing device with the selected merchant
provides a larger discount than a base discount for the selected
merchant.
(Contested limitation L emphasized in italics and bold).
2
Appeal 2016-006939
Application 14/285,928
Rejections
A. Claims 1,2, and 4—21 are rejected under 35U.S.C. § 101 as being
directed to patent-ineligible subject matter. (Final Act. 2-4).
B. Claims 1, 2, 4—9, 13—16, and 18—211 are rejected under (AIA) 35
U.S.C. § 103 as being obvious over Iacoponi (US 2012/0130795 Al,
published May 24, 2012), in view of Coffman et al. (US
2009/0216606 Al, published Aug. 27, 2009) (hereinafter “Coffman”)
and further in view of Liao et al. (US 2004/0177003 Al, published
Sept. 9, 2004) (hereinafter “Liao”). (Final Act. 4-20).
C. Claims 10, 11, and 17 are rejected under (AIA) 35 U.S.C. § 103 as
being obvious over Iacoponi, Coffman, Liao, and further in view of
Langdon et al. (US2012/0010930 Al, published Jan. 12, 2012)
(hereinafter “Langdon”). (Final Act. 20-23).
D. Claim 12 is rejected under (AIA) 35 U.S.C. § 103 as being obvious
over Iacoponi, Coffman, Liao, Langdon, and further in view of
Bednarek (US 7,546,254 B2, issued June 9, 2009). (Final Act. 23-
24).
Issues on Appeal
Did the Examiner err in rejecting claims 1,2, and 4—21 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1,2, and 4—21 under (AIA)
35 U.S.C. § 103 as being obvious over the cited combinations of references?
1 We note the Examiner omits claim 21 from the rejection B heading on
page 4 of the Final Action, but includes a detailed statement of rejection for
claim 21 on pages 19 and 20 of the Final Action.
3
Appeal 2016-006939
Application 14/285,928
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Rejection A of Claims 1, 2, and 4—21 Under 35 U.S.C. § 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. v.
CLS Bank Int 7, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 590 (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—83 (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. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355—57.
4
Appeal 2016-006939
Application 14/285,928
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 77-80).
We, therefore, review the claims and supporting Specification to
decide: (1) whether the claims focus on a specific means or method that
improves the relevant technology, or (2) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
The Examiner’s Rejection Under 35 U.S.C. §101
Regarding the first part of the Alice!Mayo analysis, the Examiner
concludes the claims are directed to the abstract idea of:
(i) a fundamental economic practice or (ii) a method of
organizing human activities. In the instant case the claims are
directed to receiving a request for [a] randomized discount,
selecting a merchant, determining a discount that is redeemable
and providing the determined discount. One could abstract the
claims to a method of receiving a request for [a] randomized
discount, selecting a merchant, determining a discount that is
redeemable and providing the determined discount which is a
fundamental economic practice or a method of organizing
human activities which is very well known in the art.
(Final Act. 3) (emphasis added).
5
Appeal 2016-006939
Application 14/285,928
Mayo/Alice Analysis — Step 1
In response, and regarding Alice Step 1, Appellants recite language of
claim 1 (App. Br. 9), and contend, inter alia, that the Examiner’s “assertions
are incorrect, at least because the alleged abstract idea identified in the
Office Action is not ‘similar to at least one concept that the courts have
identified as an abstract idea.’” (App. Br. 10). In support, Appellants cite to
the July 2015 USPTO Examiner Guidance (outlines) at pages 3—4, and aver
that “‘receiving a request for [a] randomized discount, selecting a merchant,
determining a discount that is redeemable and providing the determined
discount,’ which is the allegedly abstract idea in the instant case, is not
analogous to” e.g., contractual relationships (buySAFE), hedging (Bilski),
and mitigating settlement risk (Alice Corp.). (App. Br. 10—11).
We note Appellants’ independent claim 1 is directed to, inter alia:
“providing, by a computing device, to a user computing device, two or more
base discounts for a user of the user computing device”; “receiving, by the
computing device, from the user computing device, a request for a
randomized discount for the user of the user computing device”; and
“providing, by the computing device, to the user computing device, the
determined discount.” (emphasis added). Remaining independent claims
16 and 18 recite similar language of commensurate scope.2
Our reviewing court guides that claimed fundamental economic and
conventional business practices are often abstract ideas, even if performed
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
6
Appeal 2016-006939
Application 14/285,928
on a computer. See, e.g., OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362—63 (Fed. Cir. 2015); Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (“Each of the claims is directed
to the abstract idea of processing an application for financing a purchase.”).
Thus, under a broad but reasonable interpretation, we conclude each
of Appellants’ claims on appeal is directed to an economic or business
practice, i.e., to the result of “determining, by the computing device, a
discount that is redeemable by the user.” (Claim 1; see similar language of
commensurate scope, as recited in independent claims 16 and 18). (Claims
App’x). However, our reviewing court guides “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” McRO, Inc. v. BandaiNamco
Games Am. Inc., 837 F.3d 1299, 1312 (2016) (quoting O’Reilly v. Morse, 56
U.S. 62, 113 (1854)) (emphasis added).
Moreover, but for the recitation of a generic “computing device”
(claims 1,16, and 18), we conclude the recited steps or functions (e.g.,
“determining, by the computing device, a discount that is redeemable by the
user” —claim 1) could be performed as mental steps, or with the aid of 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. BensonC).
This guidance is applicable here. Therefore, on this record, we are not
persuaded of error regarding the Examiner’s legal conclusion that all claims
on appeal are directed to the abstract ideas of “(i) a fundamental economic
practice or (ii) a method of organizing human activities.” (Final Act. 3).
7
Appeal 2016-006939
Application 14/285,928
Mayo/Alice Analysis — Step 2
Because the claims are directed to an abstract idea, we turn to the
second part of the Alice!Mayo analysis. We analyze the claims to determine
if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to “significantly more” than the
abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellants urge: “Even if claim 1 is
considered to include an abstract idea, Appellant respectfully submits that
claim 1 amounts to ‘significantly more’ than any such abstract idea and is
thus directed to patent-eligible subject matter in compliance with 35 U.S.C.
101.” (App. Br. 13). In support, Appellants merely recite the claim
language, and assert: “Taken together, the features of claim 1 involve
performing significant computer implemented functions, including the
meaningful manipulation of data.” (App. Br. 14).
Appellants further contend:
[E]ven assuming, without conceding, that one or more of the
features recited in claim 1 could be analogized to “a generic
computer component performing generic computer functions,”
Appellant respectfully submits that the specific features and
combinations of functions recited in claim 1 amount to
significantly more than the alleged abstract idea of “receiving a
request for randomized discount, selecting a merchant,
determining a discount that is redeemable and providing the
determined discount” when the recited features are considered
together and in combination.
(App. Br. 15).
Appellants’ arguments do not persuade us the Examiner erred,
because Appellants essentially recite the claim limitations without any
persuasive explanation of how the limitations either individually, or as an
8
Appeal 2016-006939
Application 14/285,928
ordered combination, amount to an inventive concept that converts the
abstract idea into patent-eligible subject matter.
We find Appellants’ claimed data gathering (i.e., available
“discounts,” weather, amount of distance between intended recipient of the
discount and the merchant— claim 1), analysis (i.e., determining a discount
based on such factors), and reporting (providing ... the determined
discount redeemable with the selected merchant) are consistent with “well-
understood, routine, [and] conventional activities previously known to the
industry.” Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Assn, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Mayo, 566
U.S. at 71-72).
The category of abstract ideas embraces “fundamental economic
practice^] long prevalent in our system of commerce.” Alice, 134 S. Ct. at
2356. Here, it is our view that merchants have long provided purchase
discounts to customers, who are typically targeted based upon their past
buying patterns, demographics, and geographical proximity to the
merchant(s). This practice is a common fundamental economic and business
practice. Further, “simply appending conventional steps, specified at a high
level of generality, to laws of nature, natural phenomena, and abstract ideas
cannot make those laws, phenomena, and ideas patentable.” Mayo, 566 U.S.
at 82. (Emphasis added).
Nor do we find Appellants’ claims similar to the claimed solution the
court held to be patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Here, we conclude Appellants’ claimed
solution is not rooted in computer technology, such that the invention on
appeal overcomes a problem specifically arising in the realm of computers,
9
Appeal 2016-006939
Application 14/285,928
including computer networks, as was the case with the type of claim the
court concluded was patent-eligible in DDR Holdings? {Id. at 1257).
We further conclude that independent claims 1,16, and 18 (which
each recite a “computing device”) are not related to the type of patent-
eligible database claim considered by the court in Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016). Although Appellants’ dependent
claim 21 includes a database, we find none of Appellants’ claims is directed
to a “self-referential table for a computer database” of the type considered in
Enfish, 822 F.3d at 1336.
Instead, we conclude Appellants’ claim 21 merely encompasses a
conventional database that stores typical types of customer data: e.g., “a
historical database that stores the baseline data for the group of at least two
merchants, the historical database including data for determining future
discounts.” (Dependent claim 21). Thus, we conclude Appellants’ claims
are merely directed to a generic “computing device” and a generic
“database” (e.g., Claims 1 and 21), and are not “directed to a specific
improvement to the way computers[, networks, or databases] operate, [such
as] the self-referential table” found by the court to be patent eligible in
Enfish, 822 F.3d at 1336.
We emphasize that our review for patent-eligible subject matter under
35 U.S.C. § 101 is independent from our review of the second ground of
rejection presented in this appeal, which is based upon obviousness (and
addressed infra). The Supreme Court emphasizes: “[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
3 We note Appellants’ claims on appeal are silent regarding any mention of a
computer “network.”
10
Appeal 2016-006939
Application 14/285,928
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188—89 (1981) (emphasis added). Our reviewing court further
guides that “[eligibility and novelty are separate inquiries.” Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that “even assuming” that a particular
claimed feature was novel does not “avoid the problem of abstractness”).
To the extent that Appellants’ recited steps or acts (or functions) may
be performed faster or more efficiently using a computer, our reviewing
court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that
the required calculations could be performed more efficiently
via a computer does not materially alter the patent eligibility of
the claimed subject matter.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphases added).
Further regarding the use of a generic processor, see Alice, 134 S. Ct.
at 2358 (holding that “the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention”);
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’
or on a generic computer is still an abstract idea.”); Elec. Power Grp., LLC
11
Appeal 2016-006939
Application 14/285,928
v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (quotation omitted)
(“We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are ‘insufficient to pass the test of an
inventive concept in the application’ of an abstract idea.”) (quotations
omitted); Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a generic
computer element—a processor—and a series of generic computer
‘components’ that merely restate their individual functions . . . That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.”).
Applying the aforementioned guidance here, we conclude Appellants’
claims are not directed to an improvement in computer functionality,
network functionality, or database functionality. Therefore, we conclude that
none of the claim limitations, viewed “both individually and as ‘an ordered
combination,”’ amount to significantly more than the judicial exception
(abstract idea), and thus fail to sufficiently transform the nature of the claims
into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (internal
quotations omitted) (quoting Mayo, 566 U.S. at 77—78). Thus, we conclude
all claims on appeal are directed to a result or effect that itself is the abstract
idea, in which the claims merely invoke generic processes and computing
devices.
For at least the aforementioned reasons, and on this record, Appellants
have not persuaded us the Examiner erred. Accordingly, we sustain the
12
Appeal 2016-006939
Application 14/285,928
Examiner’s rejection A of claims 1, 2, and 4—21 under 35 U.S.C. § 101.4
Rejection B of Claims 1, 2, 4—9,13—16 and 18-21 Under (AIA) § 103
Issue: Under (AIA) 35 U.S.C. § 103, did the Examiner err by finding
Iacoponi, Coffman, and Liao collectively teach or suggest contested
limitation L:
[L] in response to receiving the request for the randomized
discount for the user of the user computing device, selecting, hy
the computing device, using a randomized process, a merchant
from a group of at least two merchants, the at least two
merchants being grouped based on geographical proximity of
the at least two merchants[,]
within the meaning of representative claim 1? See n.2, supra. (Emphasis
added).
In the Final Action (5—6), and regarding limitation L, the Examiner
finds: “Iacoponi teaches the client interface screen allows a user to create a
listing of favorite merchants, and a user may select the icon associated with
the discount which presents the user with the option of saving the merchant
as a favorite and thus saving the merchant name (paragraphs 39, 47-50).”
In response, in the Appeal Brief (16), Appellants merely reproduce
claim 1, reproduce the Examiner’s rejection, and the cited paragraphs of
Iacoponi (App. Br. 17—18), and contend with emphasis:
Indeed, nothing in these passages of Iacoponi, nor in any other
portion of Iacoponi, can be analogized to “the at least two
merchants being grouped based on geographical proximity
of the at least two merchants”, let alone “in response to
4 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
13
Appeal 2016-006939
Application 14/285,928
receiving the request for the randomized discount for the user of
the user computing device, selecting, by the computing device,
using a randomized process, a merchant from a group of at
least two merchants, the at least two merchants being grouped
based on geographical proximity of the at least two merchants.”
Iacoponi simply fails to disclose, teach, or suggest these
features of claim 1, despite the assertions of the Office Action
to the contrary.
(App. Br. 19-20).
Appellants further urge that the cited secondary Coffman and Liao
references “fail to cure at least these deficiencies of Iacoponi.” {Id. at 20).
The Examiner disagrees, and further explains the mapping of the
recited “geographical proximity” and “selecting” contested limitations:
Iacoponi teaches the discount management unit receives a
request to transmit discounts associated with a merchant in the
merchant storage unit, which could have been initiated by a
user of the initiator device (see at least paragraph 0028)
and furthermore, a distribution information may include a list of
geographic locations (of merchants) where the discount
applies (concept of random process of discount selection)
causing the discount distribution system to distribute the
discount to client devices located near the geographic region
where the discount is available (see at least paragraph 0034).
Further, Iacoponi teaches allowing for the creation of discount
at any time, dynamic discounts that respond to real time
merchants and client needs are possible and also, clients of
merchants have a simple way of receiving notification of
discounts offered on products by merchants in their area (see
at least paragraphs 0044-0050).
(Ans. 8).
As an initial matter of claim construction, we conclude the claim
language “at least two merchants being grouped based on geographical
proximity of the at least two merchants” is subject to two interpretations
14
Appeal 2016-006939
Application 14/285,928
under BRI: (1) the at least two merchants being grouped based upon the
geographical proximity of the at least two merchants to each other in a
hub, or (2) the at least two merchants being grouped based upon the
geographical proximity of the at least two merchants to the user.5 It
would appear the latter interpretation would have the greatest importance to
the user.
Turning to Appellants’ Specification (| 5) for context, we find support
for both interpretations: “the hub may include at least two merchants
grouped based on geographical proximity of business locations of the at least
two merchants.” See also Spec. 1 6 (“In some embodiments, the
geographical proximity of the business locations of the at least two
merchants may be determined based on each of the business locations being
physically located within a predetermined distance of each other.”)
(emphasis added).
Therefore, based upon our review of the record, we are not persuaded
the Examiner’s claim interpretation is overly broad, unreasonable, or
5 In the event of further prosecution, we leave it to the Examiner to consider
whether a rejection under 35 U.S.C. § 112(b) would be appropriate. “[I]f a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.”
Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential);
accord Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566 at
*4 (PTAB 2017) (precedential). Although the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) §1213.02.
15
Appeal 2016-006939
Application 14/285,928
inconsistent with the Specification.6 Nor have Appellants filed a Reply
Brief to further contest the Examiner’s responsive explanations and
additional findings presented in the Answer (8—9).
Buttressing the Examiner’s findings, we observe Iacoponi (| 34)
expressly describes distributing discounts to client devices located near the
geographic region where the discount is available to the users:
As an illustrative example, the distribution information
may include a list of geographic locations where the discount
applies causing the discount distribution system 116 to
distribute the discount to client devices 104 located near the
geographic region where the discount is available. The
location of the client devices may be determined using a global
positioning satellite (GPS) device coupled to each client
device.
(Iacoponi 134) (emphasis added).
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness regarding rejection B under § 103 of independent
claim l.7 Accordingly, we sustain rejection B of representative independent
claim 1. The remaining grouped claims rejected under rejection B (not
6 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (internal citation omitted).
7 Our reviewing court guides: ‘“the question under [35 U.S.C. § 103] is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.’” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (emphasis added); see also MPEP § 2123.
16
Appeal 2016-006939
Application 14/285,928
argued separately) fall with representative claim 1. See App. Br. 21—22. See
37 C.F.R. §41.37(c)(l)(iv).
Rejections C and D Under § 103 of the Remaining Claims
Appellants do not advance separate, substantive arguments for the
remaining dependent claims 10, 11, and 17 (rejected under § 103 rejection
C), and dependent claim 12 (rejected under § 103 rejection D). See App. Br.
22—23. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSIONS
The Examiner did not err in rejecting claims 1,2, and 4—21 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1,2, and 4—21 under
(AIA) 35 U.S.C. § 103 as being obvious over the combined teachings and
suggestions of the cited references.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, and 4—21
under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1, 2, and 4—21
under 35 U.S.C. § 103.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
17