Ex Parte Stewart et al

Patent Trial and Appeal Board

Aug 28, 2017

13927042 (P.T.A.B. Aug. 28, 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.
13/927,042 06/25/2013 Benjamin C. Stewart SHAMA.001A1 3454
20995 7590 08/30/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN C. STEWART and THOMAS E. LARKIN III
Appeal 2015-008314
Application 13/927,0421
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to “enabl[ing] product (or
service) purchasers, or other such entities, to share promotional materials via
social networks and/or other means of communication and may further
1 According to Appellants, the real party in interest is Share Magnet LLC.
(Appeal Br. 3.)
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Application 13/927,042
enable the purchasers to receive rewards, such as rebates, in response to
interactions with the promotional materials by others (e.g., friends of the
purchaser).” (Spec. 14.)
Claims 1,11, and 17 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method of automatically awarding rebates to a
purchaser of a product or service, the method comprising:
receiving, at a computer system comprising at least one
computer processor, from a retailer offering a rebate promotion,
a rebate percentage;
receiving, at the computer system, a purchase indication
that a purchaser has purchased a product that qualifies for the
rebate promotion;
calculating a maximum rebate for the purchase based on
the rebate percentage and a purchase price for the product;
calculating, by the computer system, a rebate per click to
credit to the purchaser in response to respective clicks on
promotional material posted on a social media account of the
purchaser by respective viewers, the calculation being based at
least in part on the maximum rebate and a quantity of clicks
required to achieve the maximum rebate;
receiving, at the computer system, click indications that
respective viewers have clicked on the promotional material; and
for each received click indication, in response to
determining that the quantity of clicks has not been reached,
crediting an account of the purchaser the calculated rebate per
click.
REJECTIONS
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, first paragraph, as
failing to comply with the written description requirement.
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Application 13/927,042
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable in
view of Barazani (US 2010/0042845 Al, pub. Feb. 18, 2010) and Moredock
(US 2012/0215615 Al, pub. Aug. 23, 2012).
ANALYSIS
The §101 rejection
After the Final Action was mailed but prior to the mailing of the
Answer, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int 7,
134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set out
in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
Under part one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
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Application 13/927,042
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
With regard to part one, the Examiner determines that the claims “are
directed to calculating a maximum rebate, calculating a rebate per click and
crediting an account. While the claims do not positively recite the following
limitation, the claims appear to additionally be directed to determining that
the quantity of clicks has not been reached.” (Answer 7.) The Examiner
also determines that “[t]he claimed calculating steps, the claimed crediting
step and the determining step are directly comparable to similar limitations
previously indicated by the Courts as abstract ideas.” (Id.) Finally, the
Examiner determines that “the claim as a whole discloses awarding a referral
or finder’s fee in the form of an apportioned rebate to past purchasers to
successfully refer the item/service to others,” and that these are
“fundamental economic practices.” (Id.; see also Spec. 14.) Thus, the
Examiner determines that the claims as a whole are directed to an abstract
idea.
Appellants argue that “[t]he claimed method includes limitations
specific to promotional material posted on a social media account and
tracking click indications that ‘viewers have clicked on the promotional
material. ’ See Claim 1. These features are specific to and inextricably tied
to computer technology.” (Reply Br. 3, emphasis omitted.) In particular,
Appellants argue that “[t]he claimed method includes limitations specific to
promotional material posted on a social media account and tracking click
indications that ‘viewers have clicked on the promotional material.'''’'’ (Reply
Br. 3.)
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Application 13/927,042
Appellants’ argument, however, is not commensurate with the scope
of the claim. In relevant part, claim 1 recites: “calculating, by the computer
system, a rebate per click to credit to the purchaser in response to respective
clicks on promotional material posted on a social media account of the
purchaser by respective viewers.” Claim 1 further recites: “receiving, at the
computer system, click indications that respective viewers have clicked on
the promotional material.” In other words, claim 1 recites steps of
“calculating ... a rebate per click,” and “receiving . . . click indications.”
But claim 1 does not require the computer system to count clicks “on
promotional material posted on a social media account of the purchaser.”
Claim 1 does not recite who or what counts such clicks.
In short, Appellants do not persuasively argue why posting
promotional materials or tracking viewings of those materials are
“inextricably tied to computer technology” or why a claim including such
limitations may not, as a whole, be directed to an abstract idea. Therefore,
we are not persuaded that the Examiner erred in determining that the claims
are directed to the abstract idea of “awarding a referral or finder’s fee in the
form of an apportioned rebate to past purchasers to successfully refer the
item/service to others.” (See Answer 7.)
We next look to part two of the Alice framework which has been
described “as a 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).
Alice instructs us to consider “the claim elements separately” and “as an
ordered combination.” Alice, 134 S. Ct. at 2359.
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Appellants argue that the “claims of the application under appeal,
when considered ‘as an ordered combination’ amount to significantly more
than any alleged abstract idea.” (Reply Br. 5.) However, Appellants do not
persuasively argue why, e.g., the three steps of receiving information
(percentage, purchase indication, and click indication) and the two
calculating steps, performed by a generic “computer system,” transform the
patent-ineligible abstract idea into a patent-eligible invention.
The introduction of a computer system into the claims does not alter
the analysis at step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result.
Alice Corp., 134 S. Ct. at 2358 (citations omitted). Taking the claim
elements separately, the function performed by the processor at each step of
the process is purely conventional. Considered as an ordered combination,
the computer components of Appellants’ method add nothing that is not
already present when the steps are considered separately.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 101. Claims 2—20 are not separately argued and
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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The f 112, first paragraph, rejection
Independent claims 1, 11 and 17 include the limitation
‘calculating a maximum rebate for the purchase based on the
rebate percentage and a purchase price for the product,’ however
the original disclosure does not provide adequate support such as
disclosing the algorithm the computer system employs to
perform the calculation.[2]
(Final Action 2.)
Appellants disagree and argue that “[t]he specification includes
specific examples of how the claimed ‘maximum rebate’ may be calculated”
and cite to paragraphs 67 and 82 of the Specification. (Appeal Br. 8—9.)
Paragraph 67 discloses that “[t]he promotion parameters may include, for
example, a maximum rebate (e.g., a percentage of a product purchase price
and/or a maximum dollar amount). . . .” (Spec. 1 67.)
The Examiner answers that the exemplary calculation in paragraph 67
does “not demonstrate a calculation in which the result is the ‘maximum
rebate’ and the variables are a purchase price and a ‘rebate percentage.”
(Answer 8.)
The written description must “convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in
possession of the invention.'” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563—64 (Fed. Cir. 1991). Paragraph 67 discloses that a maximum rebate
may be “a percentage of a product purchase price.” The claim term at issue
is “calculating a maximum rebate for the purchase based on the rebate
percentage and a purchase price for the product.” We find that the written
2 Claims 11 and 17 contain language similar, but not identical, to that
quoted here from claim 1. (See Claims 1,11, and 17.)
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description conveys with reasonable clarity that one may calculate the
maximum rebate for the purchase as a percentage (the rebate percentage) of
the product purchase price. In view of the above, we are persuaded that the
Examiner erred in rejecting claims 1,11, and 17 under § 112, first
paragraph. For the same reason, we are also persuaded that the Examiner
erred in rejecting dependent claims 2—10, 12—16, and 18—20 under § 112,
first paragraph.
The §103 rejection
In rejecting claims 1,11, and 17 under § 103(a), the Examiner finds
that paragraph 79 of Barazani discloses “receiving . . . from a retailer
offering a rebate promotion, a rebate percentage” and “calculating a
maximum rebate for the purchase based on the rebate percentage and a
purchase price for the product.” (Final Action 4.) In particular, the
Examiner finds that paragraph 79 discloses “network server offers user a
rebate.” (Id.)
Appellants disagree and argue that “Barazani entirely fails to teach or
suggest any product-based rebate. Rather, Barazani describes a voluntary
bounty that may be paid by a target entity to a social network having users
that post links to the target entity.” (Appeal Br. 13.)
Paragraph 79 of Barazani discloses, in relevant part:
The target (restaurant website) may decide voluntary [sic] to
compensate the social network website and the user for the
referral. Dedicated network server 100 then collects the
compensation from target user 230 and distributes it to the social
network and/or the users. The social network may decide to
distribute part of the compensation to the users themselves.
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(Barazani, 179.)
The cited portion of Barazani fails to disclose calculating a maximum
rebate based on the rebate percentage (received from a retailer offering a
rebate promotion) and the purchase price. Rather, the cited portion of
Barazani discloses the possibility of compensation. Also, the cited portion
of Barazani fails to disclose that the possibility of compensation (or a
maximum compensation) is based on a rebate percentage received from a
retailer and a purchase price paid for a product. In view of the above, we are
persuaded that the Examiner erred in rejecting claims 1,11, and 17 under
§ 103(a). For the same reason, we are also persuaded that the Examiner
erred in rejecting dependent claims 2—10, 12—16, and 18—20 under § 103(a).
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, first
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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