Oran Cummins et al.

Patent Trials and Appeals Board

Sep 3, 2019

13474309 - (D) (P.T.A.B. Sep. 3, 2019)

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.
13/474,309 05/17/2012 Oran CUMMINS 0076412-000065 8556
21839 7590 09/03/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ORAN CUMMINS and GARRY LYONS
____________________

Appeal 2018-006240
Application 13/474,309
Technology Center 3600
____________________

Before MARC S. HOFF, ST. JOHN COURTENAY III, and
LINZY T. McCARTNEY, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1–14 and 28–41. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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BACKGROUND
This patent application concerns “systems and methods for the
distribution and updating of limited redemption coupons.” Specification ¶ 5,
filed May 17, 2012 (“Spec.”). Claims 1 and 28 are independent. Claim 1
illustrates the claimed invention:
1. A method for updating a limited redemption coupon,
comprising:
storing, by a processor of a computing device, at least one
coupon record for at least one coupon in a database of the
computing device, wherein the at least one coupon record
includes at least a limitation on redemption associated with the
at least one coupon [the “storing” limitation;
updating, by the processor of the computing device, the
limitation on redemption associated with the at least one coupon
stored in the database of the computing device in response to a
limiting event [the “updating” limitation];
calculating, by the processor of the computing device, an
estimated expiration for each of the at least one coupon based on
at least the associated updated limitation on redemption [the
“calculating” limitation];
transmitting, by a transmitting device of the computing
device, the updated limitation on redemption and calculated
estimated expiration associated with the at least one coupon in
real-time to at least one mobile communication device for
display on the at least one mobile communication device [the
“transmitting” limitation]; and
repeating the updating, calculating, and transmitting steps
for a plurality of limiting events [the “repeating” limitation].
Appeal Brief, Claims Appendix 1, filed December 27, 2017 (“Claims
App’x”).

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REJECTION
Claims Basis
1–14 and 28–41 § 101

DISCUSSION
We have reviewed the Examiner’s rejection and Appellants’
arguments, and we disagree with Appellants that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 3–22 of the Final Office Action mailed
October 2, 2017 (“Final Act.”) and pages 3–17 of the Examiner’s Answer
mailed March 26, 2018 (“Ans.”).
Section 101 Rejection
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
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That is, we examine the claim for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the merits of the § 101
rejection. Appellants argue claims 1–14 and 28–41 together for this
rejection, so as permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the
appeal for this rejection based on claim 1.
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Abstract Idea
The Revised Guidance explains that the abstract idea exception
includes “mental processes.” Revised Guidance, 84 Fed. Reg. at 52. The
Examiner determined that claim 1 recites subject matter that falls into this
category, among others. See, e.g., Final Act. 17 (determining that claim 1
recites a method that “can be done mentally or by paper [and] pen”).
We agree. Mental processes include steps that people can perform in
their minds or using pen and paper. See, e.g., CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (determining that a
claimed method was drawn to “unpatentable mental processes” when the
method’s steps could “be performed in the human mind, or by a human
using a pen and paper”). This is true even when the claim recites that a
computer component performs steps that otherwise encompass a mental
process. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed.
Cir. 2015) (“Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind. “); see also
Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”).
People can perform the storing, updating, and calculating limitations,
as well as the related parts of the repeating limitation, in their minds or using
pen and paper. These limitations do not meaningfully limit how the method
stores, updates, or calculates, or how the method repeats these steps; these
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limitations merely recite that the method performs these functions. See
Claims App’x 1. These limitations are thus so broadly worded that they
encompass acts people can perform mentally or by hand. See CyberSource,
654 F.3d at 1373 (determining that a limitation was “so broadly worded that
it encompasses literally any method for” performing the limitation, including
“even logical reasoning that can be performed entirely in the human mind”).
For example, starting with the storing limitation, people can store the
recited at least one coupon record by writing the record on a piece of paper.
Cf. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data
collection, recognition, and storage is undisputedly well-known. Indeed,
humans have always performed these functions.”). Even if storing the
recited coupon record did not encompass a mental process, this step involves
insignificant extra-solution activity and therefore does not make claim 1
patent eligible. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1364 (Fed. Cir. 2015) (determining that the “addition of steps to test prices
and collect data based on customer reactions does not add any meaningful
limitations to the abstract idea”).
Turning to the updating limitation, people can update the recited
redemption limitation in response to a limiting event by, for example,
mentally changing the quantity or time associated with the limitation or
writing a new quantity or time for the limitation on a piece of paper when a
limiting event occurs. See, e.g., Spec. ¶¶ 43 (“Updating the coupon
information may include updating the limitation on redemption of the
redeemed coupon. For example, if the limitation on redemption of a coupon
is 500 redemptions, and a notification of redemption is received, the
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processing unit may decrement the limitation on redemption to 499
remaining redemptions.” (reference number omitted)), 50 (explaining that a
“limitation on redemption may be any limit on the redemption of the
corresponding coupon, such as a quantity limit (e.g., will expire after 500
redemptions) or a time limit (e.g., will expire after seven days, on a
particular date, active in a predetermined time period, etc.”).
Appellants contend that the updating limitation does not encompass
acts that people can perform because “[i]t is impossible for a human to
modify an electronic database.” Appeal Brief 10, filed December 27, 2017
(“App. Br.”). But when, as here, people can perform the acts recited in a
claim but for generic computer components, the claim encompasses mental
processes. See, e.g., Versata, 793 F.3d at 1335; see also Revised Guidance,
84 Fed. Reg. at 52 n.14. We thus find this argument unpersuasive.
For the calculating limitation, people can calculate an estimated
expiration for each coupon based on at least the associated updated
redemption limitation by mentally evaluating how long it will take to reach
the updated redemption limit based on a current or past rate of redemption.
See, .e.g., Spec. ¶ 34 (explaining that calculating an estimate time of
expiration may be “based on the rate of redemption and updated limitation
on redemption, redemption historical profiles, etc.”). As for the repeating
limitation, because people can perform the updating and calculating
limitations in their heads or using pen and paper, people can repeat these
aspects of the repeating limitation in their heads or using pen and paper.
Appellants argue that claim 1 does not recite a mental process because
“the time it would take a human to manage the claimed steps would be so
slow as to provide no solution to the technological problem as, by the time it
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reached the user of the mobile communication device, the information would
already be outdated and potentially useless.” App. Br. 11. But Appellants
have provided no persuasive evidence to support this assertion. See App. Br.
11. In any event, other than the transmitting limitation, which does not form
part of the identified mental processes, the recited limitations do not
explicitly impose temporal constraints on their performance. See Claims
App’x 1. Finally, even if computer components can perform the storing,
updating, and calculating limitations, as well as the related parts of the
repeating limitation, faster than people can, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012)
In sum, even though claim 1 recites that a computer component
performs the storing, updating, and calculating limitations, these limitations,
as well as the related aspects of the repeating limitation, encompass mental
processes. See CyberSource, 654 F.3d at 1372; Versata, 793 F.3d at 1335.
Because mental processes are one of the abstract idea grouping listed in the
Revised Guidance, see Revised Guidance, 84 Fed. Reg. at 52, claim 1 recites
an abstract idea.
Because we agree with the Examiner that claim 1 recites an abstract
idea, we next consider whether claim 1 integrates the abstract idea into a
practical application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so,
we consider whether there are any additional elements beyond the abstract
idea that, individually or in combination, “integrate the [abstract idea] into a
practical application, using one or more of the considerations laid out by the
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Supreme Court and the Federal Circuit.” Revised Guidance, 84 Fed. Reg. at
54–55.
The additional elements in claim 1 include the recited “database,” “at
least one mobile communication device,” and “computing device” with a
“processor” and a “transmitting device.” Claims App’x 1. The additional
elements also include the transmitting limitation and the part of the repeating
limitation that requires repeating the transmitting limitation. Claims App’x
1.
These additional elements do not integrate the recited abstract idea
into a practical application. The written description makes clear that the
database, at least one mobile communication device, and computing device
with a processor and a transmitting device encompass generic computer
components. For example, the written description states that exemplary
databases “each include data stored on any type of suitable computer
readable media” and “may be configured in any type of suitable database
configuration.” Spec. ¶ 30. The written description discloses that a mobile
communication device “may be any mobile device suitable for performing
the functions as disclosed herein” and includes generic devices such as “a
cellular phone (e.g., a smartphone), a tablet computer, a slate, a laptop
computer, etc.” Spec. ¶ 27. The written description also indicates that the
remaining computer components are generic. See, e.g., Spec. ¶¶ 40
(disclosing that a transmitting unit “may be configured to transmit coupon
information for coupons stored in the coupon information database to a
mobile communication device” (reference number omitted)), 66 (disclosing
that a processing device can be a “general purpose processor device”), 69
(disclosing that a communication interface “may include a modem, a
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network interface (e.g., an Ethernet card), a communications port, a
PCMCIA slot and card”); see also Intellectual Ventures I LLC v. Erie Indem.
Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is
so lacking in implementation details that it amounts to merely a generic
component (software, hardware, or firmware) that permits the performance
of the abstract idea, i.e., to retrieve the user-specific resources.”).
These generic computer components perform generic computer
functions. The storing limitation requires storing data, and storing data is a
generic computer function. See Versata, 793 F.3d at 1335 (“The steps in
Versata’s claims (e.g., arranging, storing, retrieving, sorting, eliminating,
determining) are conventional, routine, and well-known. They involve the
normal, basic functions of a computer.”) Similarly, the updating and
calculating limitations encompass performing mathematical calculations,
and performing mathematical calculations is a generic computer function.
See, e.g., Spec. ¶¶ 34, 43; see also Bancorp, 687 F.3d at 1278 (“The
computer required by some of Bancorp’s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.”). Using
generic computer components that perform generic functions as tools to
implement an abstract idea does not integrate the abstract into a practical
application. See Alice, 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)).
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As for the transmitting limitation and the related part of the repeating
limitation, these limitations use a generic computer component in its
ordinary capacity to perform a generic computer task: transmitting data. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”). That is, these
limitations also use a generic computer component that performs a generic
computer function as a tool to perform an abstract idea. These limitations
thus do not integrate the abstract idea into a practical application. See Alice,
573 U.S. at 223–24. In any event, these limitations perform insignificant
extra-solution activity. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1242 (Fed. Cir. 2016) (agreeing with the Board that printing and
downloading generated menus are insignificant post-solution activities). For
this additional reason, these limitations fail to integrate the abstract idea into
a practical application.
Appellants argue that claim 1 is patent eligible because the claim is
“directed to a technological improvement in the realm of electronic
coupons.” App. Br. 6. Appellants contend that the recited method provides
several benefits, including notifying users of changes to electronic coupons
without requiring the users “to perform any actions themselves” and
allowing coupon distributors to “easily modify limitations on redemption to
a coupon with all of the users being informed.” App. Br. 6–7.
We disagree. Appellants rely on aspects of the recited abstract idea to
show that claim 1 provides a technological improvement. See App. Br. 6–7
(arguing that the updating, calculating, transmitting, and repeating
limitations provide the asserted technological improvements). But the
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abstract idea itself cannot provide a practical application of the abstract idea.
Cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir.
2019) (“The abstract idea itself cannot supply the inventive concept, ‘no
matter how groundbreaking the advance.’” (quoting SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)).
Appellants also contend that claim 1 is patent eligible because the
claim is allegedly similar to claim 2 of Example 21 of the United States
Patent and Trademark Office’s subject matter eligibility examples. See App.
Br. 7–10. According to Appellants, like claim 2 of Example 21, claim 1
“address[es] the Internet-centric challenge of alerting a user with time
sensitive information (updates on limitations of redemption of a coupon
which could prohibit their ability to redeem the coupon) without requiring
active user participation.” App. Br. 8.
We disagree. Claim 2 of Example 21 “addresses the Internet‐centric
challenge of alerting a subscriber with time sensitive information when the
subscriber’s computer is offline.” USPTO, July 2015 Update Appendix 1:
Examples at 4, https://www.uspto.gov/sites/default/files/documents
/ieg-july-2015-app1.pdf (“July 2015 Examples”). Claim 2 addresses this
challenge through additional limitations that “transmit[] the alert over a
wireless communication channel to activate the stock viewer application,
which causes the alert to display and enables the connection of the remote
subscriber computer to the data source over the Internet when the remote
subscriber computer comes online.” July 2015 Examples 4. These additional
limitations “when taken as an ordered combination, provide unconventional
steps that confine the abstract idea to a particular useful application.” July
2015 Examples 4–5.
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In contrast, as explained above, the additional elements recited in
claim 1 use generic computer components that perform generic functions as
tools to implement an abstract idea. “[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014). And as discussed below, whether we
consider these additional elements individually or as an ordered
combination, these elements do not provide unconventional steps “that
confine the abstract idea to a particular useful application.” July 2015
Examples 5. Thus, even if claim 1 arguably involves an “Internet-centric
challenge” because the claimed method transmits updated and calculated
information to at least one mobile device, this fact alone does not make
claim 1 patent eligible. DDR Holdings, 773 F.3d at 1258 (“[N]ot all claims
purporting to address Internet-centric challenges are eligible for patent.”).
At bottom, the additional elements recited in claim 1 use generic
computer components that perform generic functions as tools to implement
an abstract idea. We thus determine that claim 1 does not integrate the
recited abstract idea into a practical application.
Inventive Concept
Finally, because claim 1 is directed to an abstract idea, we consider
whether claim 1 has an inventive concept, that is, whether the additional
claim elements in the claim “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 78, 79). As discussed above, this requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
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field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined that the additional elements are “are recited
at a high level of generality” and perform “generic computer functions that
are well-understood, routine and conventional activities.’ Final Act. 7. We
agree. As discussed above, the limitations recited in claim 1 encompass
storing data, performing mathematical calculations, and transmitting data.
See Claims App’x 1; Spec. ¶¶ 34, 43. Courts have determined that these
functions are well-understood, routine, and conventional activities for a
computer. See, e.g., Alice, 573 U.S. at 226 (“Nearly every computer will
include a ‘communications controller’ and ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”); Versata, 793 F.3d at 1335 (“The steps in
Versata’s claims (e.g., arranging, storing, retrieving, sorting, eliminating,
determining) are conventional, routine, and well-known. They involve the
normal, basic functions of a computer.”); Bancorp, 687 F.3d at 1278 (“The
computer required by some of Bancorp’s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.”);
buySAFE, , 765 F.3d at 1355 (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”).
Considered alone or in ordered combination, these additional elements
do no more than “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
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generality.” Revised Guidance, 84 Fed. Reg. at 56. We thus determine that
claim 1 lacks an inventive concept.
Conclusion
For the above reasons, we determine that claim 1 is directed to an
abstract idea and does not have an inventive concept. We thus sustain the
Examiner’s rejection of claim 1 under § 101.

DECISION
Claims
Rejected Basis Affirmed Reversed
1–14 and 28–41 § 101 1–14 and 28–41
Outcome 1–14 and 28–41

No period for taking any 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