Ex Parte Vitti et al

Patent Trial and Appeal Board

Jan 18, 2018

13178461 (P.T.A.B. Jan. 18, 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.
13/178,461 07/07/2011 Antonio Vitti 377514-991110 8458
26379 7590
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
PatentDocketingU S -Palo Alto @ dlapiper. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO VITTI and JOHN VITTI
Appeal 2016-0045991
Application 13/178,4612
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—46. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
October 14, 2014) and Reply Brief (“Reply Br.,” filed February 19, 2015),
and the Examiner’s Answer (“Ans.,” mailed December 19, 2014), and Final
Office Action (“Final Act.,” mailed September 13, 2013).
2 Appellants identify Merchant Atlas, Inc. as the real party in interest. App.
Br. 1.
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Application 13/178,461
CLAIMED INVENTION
Appellants’ claimed invention “relates to a system and method for
generating vouchers for a user using a mobile device and in particular to a
mobile voucher system that provides provable in-store redemption, city wide
vouchers, cross selling of vouchers, partial redemptions and proximity based
pricing” (Spec. 1,11. 7—10).
Claims 1, 17, and 33 are the independent claims on appeal. Claims 1
and 17, reproduced below, are illustrative of the claimed subject matter:
1. A mobile voucher system, comprising:
one or more consumer computing devices;
a mobile voucher unit that is capable of being connected
to and interacting with each of the one or more consumer
computing devices over a link;
the mobile voucher unit having a mobile voucher manager
that creates a new deal having a purchase price, a redemption
value and a discount of the new deal for a particular merchant,
that syndicates the new deal to a plurality of consumers to
determine a level of interest of the plurality of consumers
wherein an interested user participates in the new deal, that
presents the new deal to the particular merchant, for approval,
when a deal threshold is met and, when the merchant accepts the
new deal, that provides a digital voucher to the consumer
computing device of each user who participated in the new deal;
and
each consumer computing device that displays the digital
voucher received from the mobile voucher unit and that allows
the user of the consumer computing device to redeem the digital
voucher at the particular merchant and prove a[ ] merchant in­
store redemption.
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17. A method for providing a mobile voucher with one or
more consumer computing devices and a mobile voucher unit
that is capable of being connected to and interacting with each of
the one or more consumer computing devices over a link, the
method comprising:
creating, using a computer system that has a mobile
voucher manager of the mobile voucher unit, a new deal having
a purchase price, a redemption value and a discount of the new
deal for a particular merchant;
syndicating, using the computer system that has the mobile
voucher manager of the mobile voucher unit, the new deal to a
plurality of consumers to determine a level of interest of the
plurality of consumers wherein an interested user participates in
the new deal;
presenting, using the mobile voucher manager of the
mobile voucher unit, the new deal to the particular merchant, for
approval, when a deal threshold is met;
providing, using the mobile voucher manager of the
mobile voucher unit, when the merchant accepts the new deal, a
digital voucher to the consumer computing device of each user
who participated in the new deal; and
proving a[ ] merchant in-store redemption of the digital
voucher by the user of each consumer computing device.
REJECTIONS
Claims 1—46 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 3, 8, 9, 17, 19, 24, 25, 33, 34, 38, and 39 are rejected under
35 U.S.C. § 102(e) as anticipated by Mason et al. (US 2011/0313840 Al,
pub. Dec. 22, 2011) (hereinafter “Mason”).
Claims 2, 6, 7, 18, 22, 23, and 37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mason and Zhang et al. (US
2008/0281692 Al, pub. Nov. 13, 2008) (hereinafter “Zhang”).
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Application 13/178,461
Claims 4, 5, 20, 21, 35, and 36 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Mason and Boyd et al. (US 2004/0193489 Al,
pub. Sept. 30, 2004) (hereinafter “Boyd”).
Claims 10-16, 26—32, and 40-46 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mason and Jokinen et al. (US
2002/0095333 Al, pub. July 18, 2002) (hereinafter “Jokinen”).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, 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 Corp., 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.” Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
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‘“transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79-80).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner finds that the claims are directed to “marketing of products by
creating [a] new promotional offer, approving the new offer, presenting the
electronic offer to the consumer’s mobile device, and redeeming the offer”;
that “[mjarketing . . . products using [a] digital offer” is a fundamental
economic practice or a conventional business practice and, therefore, an
abstract idea; that the claims do not include limitations that are “significantly
more” than the abstract idea because the claims do not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment; and that the limitations, beyond the abstract idea, are merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions that are
well-understood, routine, and conventional activities previously known to
the industry (Ans. 3—4).
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Focusing on the first step of the Mayo/Alice framework, Appellants
argue that the rejection under § 101 should be withdrawn because the claims
are not directed to an abstract idea and “clearly do not ‘tie up’ the idea of
‘marketing of products’” (Reply Br. 5). That argument is not persuasive at
least because preemption is not the test for patent-eligibility.
There is no dispute that the Supreme Court has described “the concern
that drives [the exclusion of abstract ideas from patent-eligible subject
matter] as one of pre-emption.” Alice Corp, 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Arioso Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.
Turning to the second step of the Mayo!Alice framework, Appellants
summarily assert even if the claims are directed to an abstract idea, the
claims recite additional elements that amount to significantly more than the
judicial exception (Reply Br. 6). But Appellants provide no persuasive
argument or technical reasoning to support that assertion. Indeed,
Appellants fail to even identify the additional elements that allegedly
amount to significantly more than the abstract idea.
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We are not persuaded on the present record that the Examiner erred in
rejecting claims 1—46 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection.
Anticipation
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 1, 17, and 33 under 35 U.S.C. § 102(e) because
Mason does not disclose “a mobile voucher manager that creates a new deal
having a purchase price, a redemption value and a discount of the new deal
for a particular merchant,. . . [and] presents the new deal to the particular
merchant, for approval, when a deal threshold is met,” as recited in
independent claim 1, and similarly recited in independent claims 17 and 33
(App. Br. 6—7; see also Reply Br. 7—8).
Mason is directed to a discount retailing system and method, and
discloses that the system provider may solicit vendors for participation in the
system; alternatively, vendors may approach the system provider, without
being solicited, and request to have their products or services offered to
customers via the discount retailing system (Mason 1 86). Mason discloses
that, in accordance with the method, a product or service (which can be any
product sold or distributed by the vendor or any service provided by the
vendor) is identified for a discount offering {id.), and the terms of the offer
are determined {id. H 41, 43). The discount offer is then published, e.g.,
through an Internet website, and consumers accept the offering, e.g., by
“signing up” for the offer on the website {id. 188). Mason discloses that a
“tipping point” may be defined for the offer, which is the minimum quantity
of the good or service that must be accepted by consumers in order to
execute the sale of the good or service {id. H 45, 87). For example, Mason
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describes that XYZ Restaurant, which participates in the discount retailing
system, may provide a 50% discount offering with a tipping point
established at 25; thus, if only 24 people accept the discount offer, the offer
is abandoned and no consumer receives the discount (id. H 90, 91; see also
id. 128).
In rejecting claims 1,17, and 33, the Examiner cites paragraphs 4, 28,
41, 43, 45, 88, and 91 of Mason as disclosing the argued limitations (Final
Act. 7—8). Responding to Appellants’ arguments in the Answer, the
Examiner further cites Mason’s disclosure of an exchange program, i.e., a
secondary market, in which customers may offer to sell or exchange their
purchased deals for money, loyalty points, or deals owned by other
customers, or place the purchased deals on the exchange and let others bid
on them (Ans. 5—6).3 The Examiner also cites Mason’s disclosure of so-
called G-Points, which Mason discloses may be collected and redeemed at a
level of one point per one cent such that a consumer purchasing a discount
offer for $5.00 collects 500 G-points, which the consumer may later redeem
at a “G-store” for a discount offer, again at the level of one point per one
cent (id. at 6).4
We have carefully reviewed the cited portions of Mason, on which the
Examiner relies. And we agree with Appellants that there is nothing in these
portions of Mason that discloses that a mobile voucher manager, e.g., a
discount retailing system or a system provider, creates a deal having a
3 The Examiner does not identity the relied-on portions of Mason, e.g., by
paragraph number. However, the exchange program is described, for
example, at paragraphs 100—105 of Mason.
4 G-Points are described, for example, at paragraphs 95 and 96 of Mason.
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purchase price, a redemption value and a discount for a particular merchant,
and then presents the new deal to the particular merchant, for approval,
when a deal threshold is met. The best that Mason discloses is that the terms
of the deal, i.e., the discount offering, including the tipping point, may be
determined by the vendor, the system provider, and/or the discount retailing
system (Mason | 87). But we find nothing in the cited portions of Mason
that discloses that the discount offering is presented to the vendor for
approval after the deal threshold, i.e., the tipping point, is met. Instead,
Mason discloses that when the tipping point is reached, settlement may
occur thereafter, i.e., the consumer is then charged the offer price {id. 128).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 17, and 33 under 35 U.S.C. § 102(e). For the same
reasons, we also do not sustain the rejection of dependent claims 3, 8, 9, 19,
24, 25, 34,38, and 39.
Obviousness
Each of claims 2, 4—7, 10-16, 18, 20—23, 26—32, 35—37, and 40-46
depends, directly or indirectly, from one of independent claims 1,17, and
33. The rejections of these dependent claims do not cure the deficiencies in
the Examiner’s rejection of independent claims 1,17, and 33. Therefore, we
do not sustain the Examiner’s rejections of dependent claims 2, 4—7, 10-16,
18, 20-23, 26-32, 35-37, and 40-A6 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1—46 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1, 3, 8, 9, 17, 19, 24, 25, 33, 34,
38, and 39 under 35 U.S.C. § 102(e) is reversed.
The Examiner’s rejection of claims 2, 4—7, 10-16, 18, 20-23, 26—32,
35—37, and 40-46 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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