Ex Parte Walker et alDownload PDFPatent Trial and Appeal BoardNov 30, 201711958571 (P.T.A.B. Nov. 30, 2017) Copy Citation 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. 11/958,571 12/18/2007 Jay S. Walker 058407/426789 1339 826 7590 ALSTON & BIRD LLP BANK OF AMERICA PLAZA 101 SOUTH TRYON STREET, SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER VAN BRAMER, JOHN W ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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): u sptomail @ alston .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAY S. WALKER, ANDREW S. VAN LUCHENE, DANIEL E. TEDESCO, and JOSHUA D. RODGERS Appeal 2016-007151 Application 11/958,571 Technology Center 3600 Before ROBERT E. NAPPI, JOHN D. HAMANN, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellants have submitted a Request for Rehearing dated November 6, 2017 (“Request”), requesting rehearing of the September 5, 2017 Decision (“Decision”) affirming the Examiner’s rejection of claims 1—17, 50, and 52—63 under § 101. We have reconsidered the Decision in light of Appellants’ comments in the Request. We are not persuaded that the Board’s affirmance is an undesignated new ground of rejection. Nor are we persuaded that the Board misapprehended or overlooked any points in affirming the Examiner. I Appellants argue that, because the rejection’s basic thrust has changed, the Board should designate the Decision a reversal with a new Appeal 2016-007151 Application 11/958,571 ground of rejection. Request 5. In Appellants’ view, the Decision changes the thrust of the rejection in at least two ways. Id. at 3—6. First, Appellants argue that the Decision “introduced a new factual allegation that ‘the claimed concept is similar to categorical data storage.’” Id. at 3. According to Appellants, “[t]he Examiner never set forth this finding in the Examiner’s Answer or in the Final Rejection.” Id. The Examiner, however, made this finding on page 3 of the Answer, which is reproduced below with our emphasis: Storing a multiple user account, the multiple user account comprising at least a first sub-account and a second subaccount, wherein the first sub-account includes first transaction data identifying previous transactions associated with the first sub-account and the second sub- account includes second transaction data identifying previous transactions associated with the second sub-account which is considered “using categories to organize, store and transmit information’'' (e.g. Cyberfone) which is “An Idea []Of Itself[]” and as such is an abstract idea. Ans. 3 (emphasis added). We merely agreed with the Examiner’s findings in this regard. Decision 6 (citing CyberFone Sys., LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992 (Fed. Cir. 2014)). Appellants argue that they “[have] not been afforded an opportunity to rebut the allegation that the claims are similar to ‘categorical data storage’ (for instance, by arguing why this analogy does not consider the claims as a whole, including non-storage elements they recite).” Request 4. To the contrary, Appellants discussed CyberFone in footnote 2 on page 4 of the Reply Brief. Appellants’ Request presents similar arguments to those in the Reply Brief. See Reply Br. 3^4. In the Reply Brief, Appellants argued that the 2 Appeal 2016-007151 Application 11/958,571 Examiner moved the “goalposts to address a completely different concept.” See id. at 3 (emphasis omitted). However, in both the Final Rejection and Answer, the Examiner found that the claimed concept is a fundamental economic practice. Final Act. 2; see also Ans. 3 (discussing providing rewards to account holders). We agreed with the Examiner and explained that the Examiner’s characterization was consistent with Appellants’ Specification. Decision 5 (citing Final Act. 2; Ans. 3). In this way, the Decision relies on the same rationale presented in the Final Rejection. Compare Decision 5 with Final Act. 2. Moreover, we agreed with the Examiner that the claimed concept was also similar to other claims found to be directed to an abstract idea—e.g., the claims in CyberFone. Decision 6 (citing Ans. 3). Accordingly, we are unpersuaded that the Decision changed the thrust of the Examiner’s rejection in this regard. Second, Appellants argue that the Decision presents a new legal rationale—i.e., the claim uses “computers as tools.” Request 4. According to Appellants, the Decision relies on Federal Circuit opinions published after the Examiner’s Answer. Request 4 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)). Although Enfish was published after the Examiner’s Answer, Appellants, nevertheless, discussed Enfish in the Reply Brief. Reply Br. 2— 3. In the Decision, we referred to the Federal Circuit’s subsequent discussion of Enfish in Electric Power Group. Decision 6. In doing so, we explained why Appellants’ claims were unlike those found eligible in Enfish. Id. By discussing a case cited in the Reply Brief, the Decision did not 3 Appeal 2016-007151 Application 11/958,571 change the thrust of the Examiner’s rejection to necessitate a new grounds of rejection in this instance. II Under 37 C.F.R. § 41.52(a)(2), Appellants present a new argument based on a recent Federal Circuit opinion. Request 6—7. In particular, Appellants argue that McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016) should guide the eligibility analysis. Id. at 6. According to Appellants, “the claims recite a specific invention where it does matter what process is used, as was the case in McRO.” Id. In Appellants’ view, the claimed improvement to a rewards program is similar to the improvement to animation in McRO because Appellants’ claimed invention uses computers to perform a function that had not been previously performed. Id. at 7. We disagree. Unlike the claims in McRO, the claims are not directed to an improved technological process similar to computer animation. See Decision 6. Rather, the claims are directed to generalized computer steps involving generic processes and machines. See id. In particular, we explained the claims are directed to “a method that stores and receives data, and then applies two sets of reward rules associated with the sub-accounts to determine the reward values.” Id. Notably, the claims abstractly recite “applying” the rules to determine the accumulation of values. For example, the claimed process is not even limited to a particular algorithm for applying the reward rules. In this way, the claimed process is broadly functional and result focused. Although the claim manipulates data, we are unconvinced that the claim does so in a non-abstract way. 4 Appeal 2016-007151 Application 11/958,571 As we stated regarding the recited multiple user account, the solution here is not unique to computers, like those claims found eligible. Decision 9 (citing McRO, 837 F.3d at 1315). Instead, the problem involves a rewards program. To solve this problem, the claimed process uses the computer in its conventional captivity to track users and manage data, as we discussed in the Decision. See Decision 5 (discussing Spec. 2—3, 9, 11). Thus, we remain unconvinced that the result-focused language and generically recited hardware renders the claim patent eligible, even in view of Appellants’ arguments based on the McRO decision (Request 6—7). CONCLUSION We have considered the arguments raised by Appellants in the Request. We have granted Appellants’ request to the extent that we have reconsidered our Decision, but we deny Appellants’ request to make any changes therein. 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). DENIED 5 Copy with citationCopy as parenthetical citation