Stephen Merwarth et al.Download PDFPatent Trials and Appeals BoardOct 23, 201913456050 - (D) (P.T.A.B. Oct. 23, 2019) 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. 13/456,050 04/25/2012 STEPHEN MERWARTH 25040-4449 5773 100612 7590 10/23/2019 Eversheds Sutherland (US) LLP KO 999 Peachtree Street NE Suite 2300 Atlanta, GA 30309 EXAMINER MILLER, ALAN S ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 10/23/2019 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): patentdocket@eversheds-sutherland.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN MERWARTH and HAVEN BROCK KOLLS ___________ Appeal 2018-002858 Application 13/456,050 Technology Center 3600 ____________ Before JEAN R. HOMERE, JASON V. MORGAN, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-002858 Application 13/456,050 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 4, 8–13, and 15. Claims 2, 5–7, 14, and 16–22 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to implementing a loyalty awards program using tokenized user account data (e.g., credit card number or bank routing number) instead of original account data. (Abstract.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer implemented method of implementing a loyalty awards program, the method comprising: [i] presenting, at a user interface by a loyalty system that is not compliant with a financial transaction security standard, a loyalty program enrollment form for receiving data from a user, wherein the loyalty program enrollment form comprises at least one account information field that is presented to the user as part of the loyalty system enrollment form but is controlled and provided by a payment gateway that is compliant with a financial transaction security standard, and wherein the loyalty enrollment form comprises at least one user data information field controlled by the loyalty system; 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Coca Cola Company of Atlanta, Georgia. (App. Br. 1.) Appeal 2018-002858 Application 13/456,050 3 [ii] receiving, by at least one processor, user data from the at least one user data information field of the enrollment form; [iii] creating, by the at least one processor, a loyalty account based on the user data; [iv] receiving, by the at least one processor from the payment gateway, tokenized account data associated with the user, wherein the tokenized account data is based at least in part on account information from the at least one account information field; and [v] associating, by the at least one processor, the tokenized account data with the loyalty account. REJECTION Claims 1, 3, 4, 8–13, and 15 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. OPINION We are unpersuaded by Appellant’s arguments (App. Br. 3–6; see also Reply Br. 4) that independent claim 1 is directed to patent-eligible subject matter under 35 U.S.C. § 101. The Examiner determined that claim 1 “describe[s] the concept of registering users in a loyalty account while complying with regulatory standards by receiving and comparing data, which corresponds to concepts that have been identified as abstract by the courts, such as collecting and analyzing intangible data in Electric Power Group. . . .” (Final Act. 6; see also Ans. 4.) The Examiner further determined that [t]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are Appeal 2018-002858 Application 13/456,050 4 recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea. (Final Act. 6.) We agree with the Examiner’s determinations and ultimate conclusion that the claims are directed to patent-ineligible subject matter. An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, Appeal 2018-002858 Application 13/456,050 5 such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. at 191 (citing Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the Appeal 2018-002858 Application 13/456,050 6 [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. 2019)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 84 Fed. Reg. 56. Are the claims at issue directed to a patent-ineligible concept? Step One Claim 1 is a computer implemented method claim, which falls within the “process” category of 35 U.S.C. § 101. Although claim 1 falls within the Appeal 2018-002858 Application 13/456,050 7 statutory categories, we must still determine whether this claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217–18. Thus, we must determine whether the claims recite a judicial exception, and fail to integrate the exception into a practical application. See 84 Fed. Reg. 54–55. If both elements are satisfied, the claims are directed to a judicial exception under the first step of the Alice/Mayo test. See id. Step 2A, Prong One Independent claim 1 is a method claim, and includes the following limitations: [i] presenting . . . a loyalty program enrollment form for receiving data from a user, wherein the loyalty program enrollment form comprises at least one account information field that is presented to the user as part of the loyalty system enrollment form but is controlled and provided by a payment gateway that is compliant with a financial transaction security standard, “[ii] receiving . . . user data from the at least one user data information field of the enrollment form,” and “[iv] receiving . . . tokenized account data associated with the user, wherein the tokenized account data is based at least in part on account information from the at least one account information field.” Such limitations of claim 1 recite certain methods of organizing human activity (e.g., commercial interactions), such as collecting information. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.”) Appeal 2018-002858 Application 13/456,050 8 Moreover, claim 1 recites “[iii] creating . . . a loyalty account based on the user data,” which recites a patent-ineligible abstract idea of organizing human activity (e.g., marketing or sales activities). See, e.g., Alice, 573 U.S. at 219–20 (a “fundamental economic practice” is an abstract idea). In particular, in the “Background of the Invention” section, Appellant’s Specification admits that “[a]s a way to retain customers and increase sales, several companies utilize consumer loyalty programs.” (Spec. ¶ 2.) In addition, claim 1 recites “[v] associating . . . the tokenized account data with the loyalty account,” which recites a patent-ineligible abstract idea of organizing human activity (e.g., commercial interactions), such as analyzing information. See, e.g., Elec. Power Grp., 830 F.3d at 1354 (“[t]he advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.”). Accordingly, claim 1 recites a judicial exception. Step 2A, Prong Two Because claim 1 recites a judicial exception, we next determine if the claims recite additional elements that integrate the judicial exception into a practical application. Claim 1 recites: “[i] presenting, at a user interface by a loyalty system that is not compliant with a financial transaction security standard, a loyalty program enrollment form for receiving data from a user,” “[ii] receiving, by at least one processor, user data,” “[iii] creating, by the at least one processor, a loyalty account,” “[iv] receiving, by the at least one Appeal 2018-002858 Application 13/456,050 9 processor from the payment gateway” and “[v] associating, by the at least one processor, the tokenized account data with the loyalty account” (emphases added). The recited computer hardware, including “a user interface by a loyalty system” and “at least one processor” are merely tools for performing the abstract idea. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“[T]he claims are directed not to an improvement in cellular telephones but simply to the use of cellular telephones as tools in the aid of a process focused on an abstract idea.”). Accordingly, claim 1 does not recite additional elements that integrate the judicial exception into a practical application. Is there something else in the claims that ensures that they are directed to significantly more than a patent ineligible concept? Step 2B Because claim 1 is directed to a judicial exception, we next determine, according to Alice, whether these claims recite an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than a judicial exception. Claim 1 is a method claim, which includes “a user interface by a loyalty system” and “at least one processor.” With respect to the claimed hardware components, of a “user interface,” “system,” and “processor,” Appellant’s Specification discloses the following: The exemplary operating environment 100 includes a loyalty system 104 for implementing the loyalty award accounts associated with users of the environment 100. . . . An exemplary loyalty system 104 can provide a user interface for Appeal 2018-002858 Application 13/456,050 10 collecting and displaying data relevant to user’s loyalty award accounts. (Spec. ¶ 18 (emphases added).) An exemplary operating environment 100 includes an account processing system 102. The account processing system 102 can include, for example, a transaction processing bureau, such as a credit card processor and/or other account processing system. . . . In an exemplary embodiment, the account data accepted at the point-of-loyalty system 106 for the purchase of goods or services is tokenized at the payment gateway 110 and communicated to the account processing system 102 for processing. (Id. ¶ 24 (emphasis added).) Moreover, Appellant’s Figure 1 illustrates loyalty system 104 and account processing system 102 as generic hardware components, similar to tower desktop computers, for example. The generalized functional terms by which the computer components are described reasonably indicate that Appellant’s Specification discloses loyalty system 104, which includes a conventional user interface having conventional processors 112. (See id. ¶¶ 18, 24.) In view of Appellant’s Specification, the claimed hardware components, including a “user interface,” “system,” and “processor,” reasonably may be determined to be generic, purely conventional computer elements. Thus, claim 1 does no more than require generic computer elements to perform generic computer functions, rather than improve computer capabilities. First, Appellant argues that the “claims are also necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” and are “analogous to the claimed subject matter deemed statutorily-eligible in DDR Holdings.” (App. Br. 3.) In Appeal 2018-002858 Application 13/456,050 11 particular, Appellant argues that the “claims are directed to a loyalty program that includes a user interface with an enrollment form that includes an account information field directed to a PCI [Payment Card Industry] compliant payment gateway and a user data field that is directed to a loyally system that is not required to be PCI compliment.” (Id.) However, Appellant have not adequately explained why the claim “purport[s] to improve the functioning of the computer itself” or “any other technology or technical field.” Alice, 573 U.S. at 225. In particular, Appellant has not explained why PCI compliance, which is a security standard developed by the credit card industry, improves the function of a computer or other technology. Second, Appellant argues “[e]ven assuming arguendo that the claims are directed to an abstract idea, they do not preempt all practical applications of the idea, and thus, are patent-eligible.” (App. Br. 5.) However, although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Where claims are deemed to recite only patent ineligible subject matter under the two-step Alice analysis, as they are here, “preemption concerns are fully addressed and made moot.” Id. Third, Appellant argues [l]ike the claims . . . in Amdocs, the present claims provide an unconventional technological solution (using two separate computing systems during enrollment by presenting the account information field on the enrollment form as part of the loyalty system when, unbeknownst to the user, it is actually controlled by the PCI compliant payment gateway so that the loyalty system does not need to be PCI compliant) to a technological Appeal 2018-002858 Application 13/456,050 12 problem (a single computing system that is PCI compliant would be prohibitively costly). (App. Br. 6.) However, other than providing a conclusory statement that the claims present an “unconventional technological solution,” Appellant has not adequately explained why using two separate computing systems instead of a single computing system is unconventional. Last, Appellant argues the “claims solve a problem specific to electronic loyalty systems for which there is no manual analog, and results in increased computing efficiency by using two separate computing systems – one that is PCI compliant and one that is not.” (Reply Br. 4.) Similarly, Appellant argues, “[l]ike the claims and patents at issue in Trading Technologies, the present claims have no ‘pre-electronic . . . analog.’” (Id.) However, any “increased computing efficiency” is derived solely from the capabilities of a general-purpose computer. FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016). Furthermore, other than citing to Trading Technologies, and asserting its relevance, Appellant does not adequately explain how this case pertains to the claimed invention. Thus, we agree with the Examiner that claim 1 is directed towards patent-ineligible subject matter. Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 101. Claims 3, 4, 8–13, and 15 depend from independent claim 1, and Appellant has not presented any additional substantive arguments with respect to these claims. We sustain the rejection of claims 3, 4, 8–13, and 15 under 35 U.S.C. § 101 for the same reasons discussed with respect to independent claim 1. Appeal 2018-002858 Application 13/456,050 13 CONCLUSION The Examiner’s decision rejecting claims 1, 3, 4, 8–13, and 15 under 35 U.S.C. § 101 is affirmed. DECISION Claims Rejected Basis Affirmed Reversed 1, 3, 4, 8–13, 15 § 101 1, 3, 4, 8–13, 15 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation