Ex Parte Tavares et al

Patent Trial and Appeal Board

Jan 24, 2018

13493867 (P.T.A.B. Jan. 24, 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.
13/493,867 06/11/2012 Silvio Tavares 87188-843400 (097721US) 7299
20350 7590 01/26/2018
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
LOFTIS, JOHNNA RONEE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SILVIO TAVARES, SUSAN FAHY,
and DENNIS CARLSON
Appeal 2016-007071
Application 13/493,8671
Technology Center 3600
Before MICHAEL J. STRAUSS, BETH Z. SHAW, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection2
of claims 1—17, 32 and 33. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify First Data Corporation as the real party in interest.
App. Br. 3.
2 We refer to the Specification, filed Jun. 11, 2012 (“Spec.”); Final Office
Action, mailed Jun. 2, 2015 (“Final Act.”); Appeal Brief, filed Nov. 2, 2015
(“App. Br.”); Examiner’s Answer, mailed May 10, 2016 (“Ans.”); and, the
Reply Brief, filed Jul. 11, 2016 (“Reply Br.”).
Appeal 2016-007071
Application 13/493,867
BACKGROUND
The Invention
According to Appellants, the invention relates to:
systems and methods for collecting point-of-sale (POS) data, and
then using this data to determine the effectiveness of a given
promotion. The transaction data includes a merchant identifier
for each of the merchants and a transaction amount for each
transaction involving the merchants. One of the merchants is a
promotion merchant that is offering a promotion involving
transactions made with the merchant. A portion of the transaction
data is aggregated into control merchant aggregated data
involving control merchants, where the control merchant
aggregated data comprises transaction data obtained other than
from the promotion merchant. A characteristic of the purchases
is calculated, both for transactions involving the promotion
merchant and for the control merchants.
Abstract.
Exemplary independent claim 1 is reproduced below.
1. A computerized method for calculating the effectiveness
of a promotion, the method comprising:
receiving at a host computer system transaction data from
a plurality of point of sale terminals that are associated with a
plurality of merchants, wherein the transaction data comprises a
merchant identifier for each of the merchants and a transaction
amount for each transaction involving the merchants, wherein
one of the merchants comprises a promotion merchant that is
offering a promotion involving transactions made with the
merchant, and wherein the transaction data from the point of sale
terminal associated with the promotion merchant includes at
least one promotional identifier that identifies the terms and
conditions of the promotion such that an immediate discount is
providable, wherein the promotion is redeemed by entering the
promotional identifier into the point of sale terminal, and wherein
the promotional identifier is separately provided to a shopper
who in turn provides the promotional identifier at a point of sale
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so that the promotional identifier may be entered into the point
of sale terminal;
tracking by the host computer the redemption using the
promotional identifier;
aggregating a portion of the transaction data into control
merchant aggregated data involving control merchants, wherein
the control merchant aggregated data comprises transaction data
obtained other than from the promotion merchant;
calculating by the host computer system a characteristic of
the purchases, both for transactions involving the promotion
merchant which include the redemptions tracked using the
promotional identifier and for the control merchants;
providing an output showing a comparison of the
calculation, wherein the output comprises a report showing the
comparison of a characteristic of the purchases made using the
promotional identifiers and those made without using the
promotional identifiers.
App. Br. 15 (Claims App’x)
References and Rejections
1. Claims 1—17, 32 and 33 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to patentable subject matter. Final Act. 2-4.
2. Claims 1—17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Overhultz et al., (US 2006/0277104 Al, published Dec.7,
2006 (“Overhultz”)) and Williams et al., (US 2002/0147639 Al, published
Oct. 10, 2002 (“Williams”)). Final Act. 5—8.
3. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Overhultz, Williams, and Novick et al., (US
2008/0065490, Al, published Mar. 13, 2008 (“Novick”)). Final Act. 8—9.
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4. Claims 1—17, 32 and 33 stand rejected on grounds of
nonstatutory double patenting over claims 1—28 of US 8,775,242 B2, issued
Jul. 8, 2004. Final Act. 10—11.
DISCUSSION
Rejection Under 35 U.S.C. § 101
Relevant Case La w
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception for certain patent ineligible
concepts: laws of nature, natural phenomena, and abstract ideas. Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014); see also
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012). To determine patentable subject matter, the Supreme Court has set
forth a two part test: (1) whether the claims are directed to a patent-
ineligible concept and, if so, (2) whether, when the claim elements are
considered “individually and ‘as an ordered combination,’” there is an
inventive concept present, 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
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
Findings and Contentions
Under the first step of the Alice/Mayo test, the Examiner finds the
claims are “directed to a method and a system for determining the
effectiveness of a promotion which includes collection of transaction and
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promotion data and performing calculations and comparisons” and therefore
directed to an abstract idea. Final Act. 2—3. The Examiner further finds the
claims consist of “collection of transaction and promotion data and
performing calculations and comparisons” and therefore are directed
towards the abstract idea of a method of organizing human activities. Final
Act. 3 (citing Cyberfone Sys. v. CNN Interactive Grp., 558 Fed. Appx. 988
(Fed Cir. 2014); Digitech Image Tech., LLC v. Electronics for Imaging, Inc.,
758 F.3d 1344 (Fed. Cir 2014)); Ans. 12 (citing Classen Immunotherapies,
Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)).
Under the second step of the Alice/Mayo test, the Examiner finds the
claims do not include limitations that transform the invention to something
significantly more than an abstract idea. Final Act. 5—A. Analyzing the
limitations of the claims, individually and as a whole, the Examiner finds
“[t]he claims do not include improvements to another technology or
technical field; nor do they include improvements to the functioning of the
computer itself. The claims merely amount to the application or instructions
to apply the abstract idea on a general purpose computer, and require
nothing more than a generic computer system.” Final Act. 4. The Examiner
finds “the claims, when considered as a whole, are nothing more than the
instruction to implement the abstract idea in a well-understood, routine and
conventional technological environment.” Final Act. 4.
Appellants take issue with the Examiner’s findings under the first step
of the Alice/Mayo test and argue the Examiner has not shown that the
alleged abstract idea (determining the effectiveness of a promotion) is
similar to concepts that courts have identified as abstract. App. Br. 6.
Appellants attempt to distinguish Cyberfone and Digitech by arguing that,
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even if these cases involve claims directed to “organizing, storing, and
transmitting data, as well as performing calculations and comparisons,” they
do not involve the alleged abstract idea of determining the effectiveness of a
promotion. App. Br. 7. Characterizing their claimed invention as directed
to “the calculation of a characteristic of the purchases and the provision of
an output showing a comparison of the calculation,” Appellants further
attempt to distinguish Cyberfone and Digitech, arguing that the claims
involved in those cases did not involve such calculations, comparisons, and
output. See Reply Br. 5—6.
Appellants also argue the claims are “‘necessarily rooted in computer
technology,’ as in DDR, supra, because they necessarily require a special-
purpose computer.” App. Br. 7 (quoting DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). According to Appellants, the
claimed point of sale (“POS”) terminals and host computer are special
purpose computers because they require specific programming to be able to
perform operations relating to “receiving data, tracking redemption of
promotional identifiers, aggregating transaction data, calculating a
characteristic of purchases, and providing a graphical report.” App. Br. 8.
Under the second step of the two-step test, Appellants argue the
“claims recite significant limitations that preclude those claims from
monopolizing, or ‘tying up,’ any abstract idea alleged by the Office Action.”
App. Br. 8. Providing one example, Appellants point out that the claims do
not preclude other methods of determining the effectiveness of a promotion
that do not require a promotional identifier being redeemed at a point of sale
terminal. App. Br. 10.
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Appellants also argue the claims are novel and non-obvious, which
undercuts the Examiner’s finding that the claims recite elements used in
their well-understood, routine, and conventional manners, and also shows
that the claims do not monopolize all ways of determining the effectiveness
of a promotion. App. Br. 11.
Analysis
Step One of Alice/Mayo Test
We are unpersuaded by Appellants’ arguments and find the Examiner
did not err in concluding the claims are directed to an abstract idea. Claim 1
is directed to a “method for calculating the effectiveness of a promotion.”
The method consists of the steps of (1) receiving transaction data from point
of sale terminals wherein the transaction data includes data from transaction
associated with a promotion, (2) tracking redemptions of the promotional
identifier, (3) aggregating transaction data from control merchants where the
promotion was not used, (4) calculating a characteristic of the purchases for
transactions involving the promotion and not involving the promotion, and
(5) providing an output showing a comparison of the purchases made using
the promotion and those made without. App. Br. 15 (Claims App’x.)
The first three steps outlined above all relate to receiving and
collecting information to track transactions involving the use of the
promotion and those not involving a promotion. The fourth step involves
calculations performed on the data associated with purchases made with and
without the promotion. The fifth step involves outputting a comparison of
the calculation showing how purchases made using the promotion compare
to those made without the promotion. We agree with the Examiner that the
claims are, therefore, “directed to a method and a system for determining the
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effectiveness of a promotion which includes collection of transaction and
promotion data and performing calculations and comparisons.” Final Act.
2—3. We add that the claims also involve displaying or outputting those
calculations and comparisons.
Our reviewing court has found abstract ideas in claims directed to
collecting information, analyzing it, making comparisons, and displaying (or
outputting) the results.. See Electric Power Group, LLC, v. Alstom, 830
F.3d 1350, 1353 (Fed. Cir. 2016) (“The focus of the asserted claims ... is on
collecting information, analyzing it, and displaying certain results of the
collection and analysis.”); Content Extraction and Transmission LLC v.
Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014); Classen
Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
(holding a claim involving “the idea of collecting and comparing known
information,” without more, is directed to an abstract idea).
Appellants characterize their claims as directed to “receiving data,
tracking redemption of promotional identifiers, aggregating transaction data,
calculating a characteristic of purchases, and providing a graphical report,”
(App. Br. 8) which further supports the conclusion that the claims are
directed to an abstract idea as such a characterization illustrates the
similarity of the claims to others already found to be abstract under Federal
Circuit case law. See also Reply Br. (characterizing Appellants’ claimed
invention as directed to “the calculation of a characteristic of the purchases
and the provision of an output showing a comparison of the calculation”).
Thus, we find no error in the Examiner’s finding that the claims are
directed to an abstract idea.
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Step Two of Alice/Mayo Test
We agree with the Examiner that the claim limitations, when analyzed
individually and as an ordered combination, do not amount to significantly
more than the abstract idea of determining the effectiveness of a promotion
which includes collection of transaction and promotion data and performing
calculations and comparisons. We are not persuaded by Appellants’
arguments that the point of sale terminals and the host computer, being
specifically programmed, transforms the claims to something more than the
abstract idea.
The claims are not directed to improvements to the POS terminals or
to the claimed host computer and thus are not rooted in computer
technology. Instead, the POS terminals are used in their well-understood,
routine, and conventional manner. Appellants’ Specification acknowledges
that the “[u]se of POS terminals 120 in effectuating transactions is well
known in the art.” Spec. 1 53. The Specification describes that “[s]uch POS
terminals may be provided in brick and mortar stores, or may constitute any
computing device that may connect to a network, such as the Internet.”
Spec. 147 (emphasis added). Similarly, the host computer is described as a
standard computer “includ[ing] one or more processors 510, including
without limitation one or more general-purpose processors and/or one or
more special-purpose processors.” Spec. 196.
Further, the fact that the claims do not tie up all ways of determining
the effectiveness of a promotion, even if true, does not necessarily mean the
claims are patentable because “[wjhile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
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788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover, “[wjhere a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1371, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015).
Finally, as we discuss below, we do not agree with Appellants that the
claims are novel and non-obvious. Regardless, while “novelty in
implementation of the idea is a factor to be considered ... in the second step
of the Alice analysis” (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (emphasis added)), “the addition of merely novel or non­
routine components to the claimed idea [does not] necessarily tum[] an
abstraction into something concrete” (Ultramercial, Inc., 772 F.3d at 715).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry” (Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013)). “[PJatent-eligibility does not
turn on ease of execution or obviousness of application. Those are questions
that are examined under separate provisions of the Patent Act.” Rapid Litig.
Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (citing
Mayo, 132 S. Ct. at 1304). Appellants’ argument that the claims are novel
and non-obvious and therefore not directed to conventional elements is
unpersuasive.
Rejection Under 35 U.S.C. § 103(a)
Appellants argue “there is no motivation for a person of skill in the art
to combine the [Overhultz and Williams] references as described in the
Office Action.” App. Br. 12. According to Appellants, “Overhultz is
intended to provide a method of determining the effectiveness of a
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promotional display and does not determine the effectiveness of a separately
distributed promotional identifier in getting shoppers to make purchases.”
App. Br. 12. “Overhultz would have no use for the promotional identifier of
Williams that allegedly identifies the terms and conditions of the promotion
such that an immediate discount is provided because such a promotional
identifier entered into a POS provides no benefit in attempting to determine
the effectiveness of the use and placement of a promotional display.” App.
Br. 12—13. Appellants also argue the combined Overhultz and Williams
system “would determine if sales increased based on the use of an in-store
display and would also issue and redeem promotional identifiers, but would
never contemplate comparing transactions involving coupons with those that
do not.” App. Br. 13. Finally, Appellants argue “the promotional identifier
of Williams would alter the principle of operation of Overhultz” because
“Overhultz’s intended purpose is to measure the effectiveness of an
advertising display . . . Overhultz is not intended to track redemption and
effectiveness of a promotional identifier, coupon, or other discount
instrument.” App. Br. 13.
These arguments are unpersuasive because they either misunderstand
the Examiner’s combination, or assume bodily incorporation of the second
reference into the first. Appellants do not dispute that Overhultz teaches
determining the effectiveness of a promotional display, nor do they dispute
that Williams teaches the use of promotional identifiers such as coupons.
Instead, they argue that the combination of the two would lead to a situation
where sales were determined based on both a promotional display and a
promotional identifier. Here, however, the Examiner proposes substituting
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Williams’ promotional identifier with Overhultz’s promotional display, not
having both in the modified system. Ans. 14—15.
Further, we disagree that one of ordinary skill would not be able to
combine the teachings of Overhultz and Williams. “The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of those references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). Appellants incorrectly assume the combination of Overhultz and
Williams requires a bodily substitution, one for one, of Williams’
promotional identifier for Overhultz’s promotional display. Rather, it is the
teachings of the two, as understood by one of ordinary skill in the art, which
lead to the claimed invention. Appellants have not alleged that combining
the two references would be beyond the skill of the ordinary artisan and have
not persuasively shown that the combination would necessarily alter the
principle of operation of either reference.
Rejection On Grounds Of Nonstatutory Double Patenting
The Examiner rejects claims 1—17, 32 and 33 on the grounds of
nonstatutory double patenting over claims 1—28 of US 8,775,242. Final Act.
10. Appellants do not present any arguments against these rejections, thus
waiving any arguments with respect thereto. Accordingly, we summarily
sustain the double patenting rejection of claims 1—17, 32 and 33.
DECISION
The Examiner’s rejections of claims 1—17, 32 and 33 are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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