Ex Parte Schiller et al

Patent Trial and Appeal Board

Jul 30, 2018

13102516 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/102,516 05/06/2011
25537 7590 08/01/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Harold J. Schiller
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.
20100755 7279
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD J. SCHILLER, DANTE PACELLA, and
MARK D. CARNEY
Appeal2017-004407
Application 13/102,516 1
Technology Center 3600
Before BRADLEY W. BAUMEISTER, HUNG H. BUI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-5, 8-12, 14--20, and 23-25, which
are all the claims pending in the application. Claims 6, 7, 13, 21, and 22 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Verizon
Communications Inc. App Br. 3.
2 Our Decision refers to Appellants' Appeal Brief ("Appeal Br.") filed
April 26, 2016; Reply Brief ("Reply Br.") filed January 23, 2017;
Examiner's Answer ("Ans.") mailed December 1, 2016; Non-Final Office
Action ("Non-Final Act.") mailed December 10, 2015; and original
Specification ("Spec.") filed May 6, 2011.
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Application 13/102,516
STATEMENT OF THE CASE
Appellants' invention relates to "generating and storing electronic
receipts," via a mobile device. Spec. ,r 13. For example, "a mobile device
may be used to perform a transaction with a retailer/vendor that includes a
point-of-sale (PoS) device," "receive a copy of the electronic receipt
[associated with the transaction from the PoS device]" and "provide
categorization information to the device/system or program that allows
receipts to be categorized in accordance with user-defined information."
Spec. ,r 13.
Claims 1, 9, and 18 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below with disputed limitations in
italics:
1. A non-transitory computer-readable medium having
stored thereon sequences of instructions which, when executed
by at least one processor, cause the at least one processor to:
store an identifier associated with a user of a mobile
device;
receive global pos1t10ning system (GPS) data
corresponding to the location of the mobile device;
provide a user inteiface configured to:
receive input from the user, the input identifying a
plurality of categories for storing electronic receipts for
the user, wherein the input received from the user is used
to create the plurality of categories for storing the
electronic receipts, and
receive input from the user identifying retailers
associated with at least some of the plurality of categories,
wherein the input indicates that a first retailer is
associated with a first one of the plurality of categories;
automatically identify at least a second retailer associated
with one of the plurality of categories based on the GPS data;
provide the identifier or display the identifier, via the
mobile device, to a point-of-sale device associated with a retailer;
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receive an electronic receipt associated with a transaction
between the user and the retailer;
receive, from the user, a request to view receipts
corresponding to the first category;
access, via a network, an external system storing a
plurality of receipts associated with the user, wherein the external
system is located remotely from the mobile device; and
retrieve, from the external system, at least one of receipts
or receipt summaries corresponding to the first category, wherein
the at least one of the receipts or receipt summaries includes a
first receipt or receipt summary from the first retailer,
wherein the second retailer is associated with a second one
of the plurality of categories, and the instructions further cause
the at least one processor to:
store receipts from the second retailer in the second
category.
Appeal Br. 37-38 (Claims App'x).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1-5, 8-12, 14--20, and 23-25 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter. Non-Final Act. 5-10.
(2) Claims 1-5, 8-12, 14--17, and 23-25 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Labrou et al.
(US 2004/0107170 Al; published June 3, 2004; "Labrou"), McDevitt et al.
(US 2007/0164106 Al; published July 19, 2007; "McDevitt"), and Grannan
et al. (US 2007/0244750 Al; published Oct. 18, 2007; "Grannan"). Non-
Final Act. 11-23.
(3) Claims 18-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Labrou and McDevitt. Non-Final Act. 23-24.
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DISCUSSION
35 US.C. § 101: Claims 1-5, 8-12, 14-20, and 23-25
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (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
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (citing Mayo, 566 U.S. at 72-73).
In rejecting independent claim 1 and, similarly, claims 9 and 18 under
35 U.S.C. § 101, the Examiner determines these claims are directed to an
abstract idea that corresponds to "(i) a fundamental economic practice, (ii) a
method of organizing human activities, (iii) an idea of itself, or (iv) a
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mathematical relationship or formula." Non-Final Act. 5. According to the
Examiner, all the steps recited in these claims pertain "collecting and
comparing ... new and stored information" and "using categories to
organize, store, and transmit information." See Non-Final Act. 6-9. The
Examiner explains that, in other words, the claims are directed to an abstract
concept of "analyzing stored data, comparing/categorizing data, and
displaying the data." Ans. 3.
The Examiner also determines the additional elements in the claims,
whether taken separately or in an ordered combination, do not amount to
significantly more than the abstract idea, because these elements are
"computer functions [ that are] well-understood, routine, conventional
activities previously known to the industry." See Non-Final Act. 9-10;
Ans. 2-3. According to the Examiner, "[t]he method, system, and/or
computer readable medium claims do not, for example, purport to improve
the functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field." Non-Final Act. 10; Ans. 3.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants contend the
claims are not directed to an abstract idea because: (1) "claim 1 recites that
the instructions cause the at least one processor to receive global positioning
system (GPS) data corresponding to the location of the mobile device, and
automatically identify at least a second retailer associated with one of the
plurality of categories based on the GPS data"; (2) "these features do not
correspond to any of the alleged 'abstract ideas' identified in the Office
Action;" and (3) "[ t ]he pending claims, such as claim 1, are similarly rooted
in computer technology, such as the use of GPS and accessing, via a
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network, an external system located remotely from the mobile device and
retrieving at least one of receipts or receipt summaries from the external
system." App. Br. 10-11. According to Appellants,
the features of claim 1 together recite a particular solution to a
problem or a particular way to achieve a desired outcome with
respect to a user interacting via a mobile device, a GPS, a point-
of-sale device and an external system to, for example, store
receipts in categories and access receipts or receipt summaries
corresponding to particular categories.
Reply Br. 5.
Appellants also argue the Examiner's determination of an abstract
idea "is not based on evidence, and instead merely expresses an opinion that
claim 1 amounts to an 'abstract idea."' App. Br. 10-11 (citing Ex parte
Renald Poisson, Appeal No. 2012-011084, p. 5 (PTAB, February 27, 2015)
where the Board held that absent supporting evidence in the record, the
Examiner's opinion is an inadequate finding of fact on which to base the
Alice analysis).
At the outset, we acknowledge ( 1) the Examiner does not address
Appellants' arguments and (2) the Examiner's characterization that the
claims do nothing more than "collect, store, display, and compare data to
optimize an advertiser's marketing objective" is inaccurate at best. Ans. 2.
As correctly recognized by Appellants, "the pending claims do not involve
optimizing an advertiser's marketing objective, as alleged in the Examiner's
Answer." Reply Br. 2-3.
Nevertheless, Appellants' arguments are not persuasive. At the
outset, we note patent eligibility is a question of law that is reviewable de
nova (see Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)).
We are aware of no controlling authority that requires the Office to provide
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factual evidence under step one of the Alice framework to support a finding
that a claim is directed to an abstract idea. 3 Nor, contrary to Appellants'
suggestion (App. Br. 10), did this Board hold in Ex parte Poisson that there
is any such requirement. Instead, the Federal Circuit has repeatedly noted
that "the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The court has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, "together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the]
application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all
that is required of the Office is that it set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. Id., see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (Section 132 "is violated when [the] rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
3 Berkheimer v. HP Inc., 881 F.3d, 1360 (Fed. Cir. 2018) holds that the
question of whether certain claim limitations represent well-understood,
routine, conventional activity under Alice step 2 may raise a disputed factual
issue. That question, however, is not at issue in this case. As in Berkheimer,
in determining that the claims are directed to an abstract idea, the Examiner
compared the claims to claims held to be abstract in prior judicial
decisions. Compare Final Act. 2 with Berkheimer, 881 F.3d at 1366-67.
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Based on our review of the record, we agree with the Examiner that
the claims are directed to an abstract concept of "analyzing stored data [i.e.,
electronic receipts], comparing/categorizing data, and displaying the data."
Ans. 3.
All the functions recited in Appellants' claim 1, including, for
example, to: (1) "store an identifier;" (2) "receive global positioning system
(GPS) data corresponding to the location of the mobile device;" (3) "receive
input from the user ... [i] identifying a plurality of categories for storing
electronic receipts ... [ii] identifying retailers associated with at least some
of the plurality of categories;" ( 4) "automatically identify at least a second
retailer associated with one of the plurality of categories based on the GPS
data;" (5) "receive an electronic receipt associated with a transaction
between the user and the retailer;" ( 6) "receive ... a request to review
receipts;" and (7) "retrieve ... receipts or receipt summaries ... " are
abstract processes of collecting, storing, and analyzing information of a
specific content (i.e., electronic receipts) based on categories associated with
such electronic receipts. Information, as such, is intangible, and data
analysis and categorization are abstract ideas. See, e.g., Microsoft Corp. v.
AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and
analysis, including when limited to particular content, is within the realm of
abstract ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1349 (Fed. Cir. 2015); Digitech, 758 F.3d at 1351; CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011);
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353, 1354 (Fed.
Cir. 2016) ("collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "abstract-idea processes");
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Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) ("organizing information through mathematical
correlations"); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("1) collecting data,
2) recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory" are abstract ideas).
Separately, we also find the claims are directed to an abstract idea of
generating and storing electronic receipts based on categories associated
with such electronic receipts, which is both a method of organizing human
activity and a fundamental economic practice. Such activities are squarely
within the realm of abstract ideas. Generating, storing, and organizing
electronic receipts is a fundamental business practice long prevalent in our
system of commerce, like the risk hedging in Bilski (see Bilski v. Kappas,
561 U.S. 593 (2010)), the intermediated settlement in Alice (see Alice, 134
S. Ct. at 2356-57), verifying credit card transactions in CyberSource (see
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) ), collecting and analyzing information to detect and notify of misuses
in FairWarning (see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016)), and guaranteeing transactions (see
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)).
Generating, storing, and organizing electronic receipts is also a building
block of a market economy. Thus, generating, storing, and organizing
electronic receipts, like risk hedging and intermediated settlement, is an
"abstract idea" beyond the scope of§ 101. See Alice 134 S. Ct. at 2356.
In this context, Appellants' claims are patent-ineligible under§ 101
because their innovation is an innovation in ineligible subject matter. No
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matter how much of an advance in the finance field the claims recite, the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm. An advance of that nature
is patent-ineligible for patenting even if the techniques claimed are
"[g]roundbreaking, innovative, or even brilliant." Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A]
claim for a new abstract idea is still an abstract idea).
As correctly recognized by the Examiner, Appellants' claims "do
not ... improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field." Ans. 3. In fact,
none of the functions/steps recited in Appellants' claim 1 and similarly
claims 9 and 18 provide: (1) a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks," as explained by the Federal Circuit in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014);
(2) "a specific improvement to the way computers operate," as explained in
Enfzsh, 822 F.3d at 1336; or (3) an "unconventional technological solution
... to a technological problem" that "improve[ s] the performance of the
system itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1299, 1302 (Fed. Cir. 2016). Moreover, nowhere in
Appellants' Specification is there any description or explanation as to how
these data processing steps are intended to provide such solutions or
improvements.
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Accordingly, we agree with the Examiner that Appellants' claims are
directed to the abstract idea of "analyzing stored data [i.e., electronic
receipts], comparing/categorizing data, and displaying the data." Ans. 3.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue their "claim
elements, taken as a whole, amount to significantly more than an abstract
idea" because: (1) "specific features associated with requesting receipts and
retrieving receipts/receipt summaries [] transform the claimed non-transitory
computer-readable medium into a unique and non-obvious non-transitory
computer-readable medium that is patent eligible;" (2) "these features of
claim 1 provide a unique and interactive process to allow a user to store and
retrieve receipts or receipt summaries in an efficient manner"; and (3) "the
features of claim 1 improve a user's ability to receive, categorize and
retrieve receipts or receipt[] summaries, including the use of GPS data to
automatically identify a particular retailer based on the location of the
mobile device" and "[ s ]uch actions improve the technical field of storage
and retrieval of electronic receipts." See App. Br. 12-14; Reply Br. 4--5
( emphasis added). According to Appellants,
While the use of GPS is generally known, claim 1 uses GPS data
to automatically identify at least a second retailer, and store
receipts from the second retailer in the second category. Such
features are not well understood, routine and conventional in the
field.
App. Br. 15.
We disagree. At the outset, we note (1) "the concept of inventiveness
is distinct from that of novelty;" and (2) "[t]he inventiveness inquiry of
§ 101 should therefore not be confused with the separate novelty inquiry of
§ 102 or the obviousness inquiry of§ 103." Amdocs (Israel) Ltd. v. Openet
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Telecom, Inc. 841 F.3d 1312 (Fed. Cir. 2016). In Alice, the second step is to
"search for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72-73).
The Federal Circuit cases on point include (1) DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs
(Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288 (Fed. Cir. 2016), both of
which involved business-method inventions. In DDR and Amdocs, the
Federal Circuit opted to bypass Alice step 1 in favor of step 2. In particular,
the Federal Circuit found DDR 's claims contain an "inventive concept"
under Alice step 2 because DDR 's claims (1) do not merely recite "the
performance of some business practice known from the pre-Internet world"
previously disclosed in Bilski and Alice, but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a "solution ...
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR, 773 F.3d at
1257. Likewise, the Federal Circuit also found Amdocs' claims contain a
sufficient "inventive concept" because like DDR, Amdocs' claims "entail[]
an unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)" and "improve the performance of the system
itself." Amdocs, 841 F.3d at 1300, 1302.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
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(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution . . . necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016); or
(3) "entail[] an unconventional solution ([e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 9, and 18 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept (i.e., manipulating data through mathematical relationships) into a
patent-eligible application. Alice, 134 S. Ct. at 2357. As discussed supra,
we are not persuaded the added computer elements such as ( 1) the processor
and PoS device recited in claim 1, (2) computer device and PoS device
recited in claim 9, and (3) input device, processor, and transmitter recited in
claim 18 can transform the abstract idea into a patent eligible invention. As
our reviewing court has observed, "after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, 773 F.3d at 1256 (citing
Alice Corp., 134 S. Ct. at 2358)).
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Additional Argument
Appellants argue that the claims do not seek to tie up or preempt the
abstract idea of "storing and retrieving [electronic] receipts and
automatically identifying a retailer." App. Br. 11. However, this argument
is not persuasive because, although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter" under the Alice/Mayo framework,
"preemption concerns are fully addressed and made moot." Id.
Because Appellants' claims 1, 9, and 18 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 1-5, 8-12, 14--20, and 23-25 under 35 U.S.C. § 101.
35 US.C. § 103(a): Claims 1-5, 8-12, 14-17, and 23-25
In support of the obviousness rejection, the Examiner finds Labrou
teaches most aspects of Appellants' claim 1, and relies on (1) Grannan for
teaching "the use of GPS location information as a method of identifying
appropriate retailers associated with a category" (Non-Final Act. 12 (citing
Grannan ,r 62); and (2) McDevitt for teaching "the input received from the
user ... used to create a plurality of categories for storing electronic
receipts, that retailers are associated with specific categories or that the
external system storing the receipts is located remotely from the mobile
device" (Non-Final Act. 13 (citing McDevitt ,r 8)).
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Appellants dispute the Examiner's factual findings regarding Grannan
and McDevitt, as well as the Examiner's rationale to combine the teachings
ofLabrou, Grannan, and McDevitt. App. Br. 11-32. In particular,
Appellants acknowledge Grannan teaches a method of selecting targeted
advertisements for a subscriber via a subscriber's location tracked by global
positioning system (GPS). App. Br. 22 (citing Grannan ,r 62). However,
Appellants argue nowhere in Grannan, including cited paragraph 62, is there
any teaching of "automatically identify[ing] at least a second retailer
associated with one of the plurality of categories based on the GPS data," as
recited in claim 1, and similarly recited in claim 9. App. Br. 22-23.
Similarly, Appellants acknowledge McDevitt teaches an online
electronic receipt management system that allows a user to create categories
of electronic receipts. App. Br. 23 ( citing McDevitt ,r 8). However,
Appellants argue nowhere in McDevitt is there any teaching of "receiv[ing]
input from the user identifying retailers associated with at least some of the
plurality of categories, wherein the input indicates that a first retailer is
associated with a first one of the plurality of categories," as recited in
claim 1, and similarly recited in claim 9. App. Br. 23-24.
Appellants also contend that ( 1) the Examiner provides no support for
the rationales to combine the teachings of Labrou, McDevitt, and Grannan;
and (2) the Examiner's rationales to combine the references (i.e., yielding
predictable results and profit-driven motive) are "merely conclusory
statements." App. Br. 25.
The Examiner does not respond to Appellants' arguments, but instead
takes the broad view that (1) "the cited portions ofLabrou and McDevitt
disclose methods of identifying appropriate retailers and the creation of
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retailer categories," but "fail to disclose the use of GPS data," and (2) "the
additional reference of Grannan addresses this deficiency." Ans. 4.
We agree with Appellants that nowhere in Grannan and McDevitt is
there any teaching or suggestion of the disputed limitations: (1) "receiv[ing]
input from the user identifying retailers associated with at least some of the
plurality of categories, wherein the input indicates that a first retailer is
associated with a first one of the plurality of categories" and
(2) "automatically identify[ing] at least a second retailer associated with one
of the plurality of categories based on the GPS data," recited in claim 1, and
similarly recited in claim 9. App. Br. 22-23.
An invention "composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418
(2007). Instead, a determination ofunpatentability on a ground of
obviousness must include "'articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness."' Id. ( quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness
evaluation "should be made explicit," and it "can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does."
Id.
In this case, the Examiner has presented insufficient rationale to
combine the teachings of these references. We particularly agree with
Appellants that the Examiner's articulated reasoning-namely, to yield
"predictable results and profit-driven motive"-is conclusory. See In re
Nuvasive, 842 F.3d 1376, 1383 (Fed. Cir. 2016) (noting that "'conclusory
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statements' alone are insufficient and, instead, the finding must be supported
by a 'reasoned explanation"') (quoting In re Lee, 277 F.3d 1338, 1342, 1345
(Fed. Cir. 2002)); see also Active Video Networks, Inc., v. Verizon
Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (noting that
"[ t ]he testimony is generic and bears no relation to any specific combination
of prior art elements"). Such a conclusory statement is insufficient to
establish persuasively that a person of ordinarily skill in the art would have
recognized some deficiency in Labrou or had some other reason to look to
Grannan and McDevitt and combine their teachings with those of Labrou.
In light of these reasons, we do not sustain the Examiner's
obviousness rejection of independent claims 1 and 9, or of their respective
dependent claims 2-5, 8, 10-12, 14--17, and 23-25.
35 US.C. § 103(a): Claims 18-20
Claim 18 is broader than independent claims 1 and 9, and only recites
a point-of-sale (PoS) device comprising, inter alia: (I) "a processor
configured to receive information associated with a transaction between the
user of the mobile device and a retailer associated with the point-of-sale
device;" and "further configured to: [i] identify a customer's shopper profile
based on the identifier, and [ii] obtain at least one of coupon codes or
discount codes based on the customer's shopper profile;" and (2) "a
transmitter configured to forward, via a network, information associated
with the transaction to a first system ... configured to generate an electronic
receipt associated with the transaction."
In support of the obviousness rejection of claim 18, the Examiner
appears to find the combination of Labrou and McDevitt teaches all the
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Application 13/102,516
claim limitations. Final Act. 23-24 ( setting forth in the heading of the
rejection that claims 18-20 are unpatentable over the combination of Labrou
and McDevitt). However, the Examiner does not rely on McDevitt in the
body of the rejection in any way. Id. Instead, the Examiner relies on Labrou
for teaching all the claim limitations, including the disputed limitations:
the processor ... configured to: [i] identify a customer's shopper
profile based on the identifier, and [ii] obtain at least one of
coupon codes or discount codes based on the customer's shopper
profile.
Id.; see also Non-Final Act. 13-24 (citing Labrou ,r,r 50, 188,282,294,
451).
Appellants dispute the Examiner's factual findings regarding Labrou,
and question the relevancy of McDevitt. In particular, Appellants
acknowledge the cited "portions of Labrou disclose that a customer enters a
PIN to authorize payment and that device 102 stores receipts and records of
past transactions," but they argue none of these cited portions of Labrou
discloses or suggests that MTS 104, mobile device 102, STS 106
or any other device in Labrou includes a processor to identify a
customer's shopper profile based on the identifier, as required by
claim 18, much less obtain at least one of coupon codes or
discount codes based on the customer's shopper profile, as
further required by claim 18.
App. Br. 34. Appellants also argue that the Examiner has not provide any
reason to combine the teachings of Labrou and McDevitt. App. Br. 34.
We are persuaded by Appellants' arguments. At the outset, we note
the Examiner does not respond to Appellants' arguments. Ans. 3--4. We
have reviewed Labrou and agree with Appellants that the cited paragraphs of
Labrou do not teach the disputed limitations of claim 18.
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For example, paragraph 50 of Labrou teaches that a mobile phone will
receive a transaction, such as a short message service (SMS) message for a
point of sale (POS) transaction initiated by a merchant and will enter a PIN
that authorizes processing of the payment. Labrou ,r 50. Paragraph 188
teaches client device 102 communicates with merchant transaction server
(MTS) 104 via infrared communications. Labrou ,r 188. Paragraph 282
teaches that client device 102 may provide access to stored data, such as
receipts, records of past transactions, user spent organized by account, date,
etc. Labrou ,r 282. Paragraphs 294 and 451 teach that client device 102
keeps a history of prior receipts organized for viewing in multiple ways for
the user's benefits, and transmits a proxy identifier to a service spot. Labrou
,r,r 294, 451. However, none of these paragraphs teaches the "processor ...
configured to: [i] identify a customer's shopper profile based on the
identifier, and [ii] obtain at least one of coupon codes or discount codes
based on the customer's shopper profile," as recited in claim 18.
Accordingly, we do not sustain the Examiner's obviousness rejection
of independent claim 18 and its dependent claims 19 and 20.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-5, 8-12, 14--20, and
23-25 under 35 U.S.C. § 101. However, Appellants have demonstrated the
Examiner erred in rejecting: (1) claims 1-5, 8-12, 14--17, and 23-25 under
35 U.S.C. § 103(a) as being unpatentable over Labrou, McDevitt, and
Grannan; and (2) claims 18-20 under 35 U.S.C. § 103(a) as being
unpatentable over Labrou and McDevitt.
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DECISION
As such, we AFFIRM the Examiner's rejection of claims 1-5, 8-12,
14--20, and 23-25 under 35 U.S.C. § 101. However, we REVERSE the
Examiner's rejection of claims 11-5, 8-12, 14--20, and 23-25 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-5, 8-12, 14--20, and 23-25. See 37 C.F.R. § 4I.50(a)(l).
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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