Ex Parte Beckner et al

Patent Trial and Appeal Board

Jan 22, 2019

13485440 (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/485,440 05/31/2012
27148 7590 01/24/2019
POLSINELLI PC
900 WEST 48TH PLACE
SUITE 900
KANSAS CITY, MO 64112-1895
FIRST NAMED INVENTOR
Sean Beckner
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
081041-489927 6621
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN BECKNER and MATTHEW BECKNER
Appeal2017-005870
Application 13/485,440
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Sean Beckner and Matthew Beckner (Appellants)2 seek review under
35 U.S.C. § 134 of a final rejection of claims 22, 26-28, 35, 40-43, 45--47,
49, 50, and 52-57, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a way of promoting business goods and
services to a user via an interface device of the user, and more specifically,
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed April 11, 2016) and the Examiner's Answer ("Ans.," mailed August 3,
2016), and Final Action ("Final Act.," mailed June 9, 2015).
2 Appellants identify Front Flip, LLC as the real party in interest. Br. 3.
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of offering a gift from the business to the user, allowing the user to transfer
or share the gift with another user, and allowing the user to redeem the gift
at the business. Specification para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 22, which is reproduced below (bracketed matter and some
paragraphing added).
22. A method of incentivizing and tracking patronage of a
consumer by providing a gift of a merchant that can be
retrieved by the consumer via a communication network, the
method comprising the steps of:
[ 1] assigning a barcode to the merchant;
[2] assigning a redemption rate for odds of winning the gift to
the gift of the merchant;
[3] assigning a digital scratch card to the gift of the merchant;
[ 4] obtaining information related to the consumer from a
computing device of the consumer
when the consumer scans the barcode using the
computing device of the consumer,
the information related to the consumer including
patronage data of the consumer;
[5] determining via a processor whether to offer the gift to the
consumer
based on the redemption rate of the gift and the patronage
data of the consumer;
[ 6] transmitting the digital scratch card to the computing device
of the consumer via the communication network
when the consumer scans the barcode using the
computing device;
[7] displaying the digital scratch card on a display of the
computing device;
[8] revealing a result of the determination regarding whether to
offer the gift to the consumer via the computing device
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and
when the consumer physically manipulates the digital
scratch card using the computing device
by displaying on the display of the computing device
either
(i) a gift token indicating the consumer has won the gift,
or
(ii) a notification of loss indicating the consumer has not
won the gift;
[9] tracking one or more factors using the barcode including
(i) a number of times the barcode is scanned,
(ii) a number of times the gift token is redeemed or
submitted to the merchant by the consumer to obtain the
gift won by the consumer,
(iii) a redemption rate of the consumer,
and/or
(iv) a number of times the gift token is forwarded or
re-distributed, wherein, the gift is a free or discounted
good or service offered by the merchant, and the
patronage data includes at least one of
(i) when the consumer patronizes the merchant,
(ii) where the consumer patronizes the merchant,
(iii) frequency of patronage of the consumer at the
merchant,
and
(iv) average monetary purchase of the consumer at
the merchant.
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The Examiner relies upon the following prior art:
Wolf US 2002/0117544 Al Aug.29,2002
Blair US 2010/0137053 Al June 3, 2010
Leung US 7,769,634 B2 Aug. 3, 2010
iScratcher.com Web Pages (2010) (hereinafter "iSWeb")
Claims 22, 26-28, 35, 40-43, 45--47, 49, 50, and 52-57 stand rejected
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
Claims 22, 28, 35, 40, 42, 43, 45--47, 49, 50, and 52-57 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Mobile Thunder, LLC. 's
iScratcher product (as evidenced by Blair and iSWeb) and Wolf.
Claims 26, 27, and 41 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Mobile Thunder, LLC.' s iScratcher product ( as evidenced
by Blair and iSWeb ), Wolf, and Leung.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether the prior art
describes scanning a bar code representing a merchant and in response,
obtaining information from the customer device and transmitting a digital
scratch card.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "digital
scratch card."
02. The ordinary meaning of a "scratch card" is "a lottery ticket
played by scratching or scraping designated areas to reveal
information used in determining the card's prize value."3
Facts Related to the Prior Art
Blair
03. Blair is directed to displaying advertising to mobile user. Blair
para. 4.
04. Blair describes uploading logon information from a mobile
device to a server, wherein the logon information contains at least
a geographical location identifier, downloading a current
electronic scratch off game to the mobile device from the central
server, wherein the current electronic scratch off game
corresponds to the geographical location identifier, displaying a
foreground image to a user of the mobile device, and receiving a
wiping input from the user of the mobile device on a touch screen
of the mobile device. Blair further describes removing a portion
of the foreground image corresponding to the wiping input,
displaying background image in areas corresponding to the wiping
input, displaying a win or loss indicator, and using the win
3 Definition of "scratch ticket" (redirected from "scratch card"). The
American Heritage Dictionary of the English Language (2018),
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indicator at a retail sponsor advertising location to obtain a prize
or item of value. Blair para. 4.
05. Blair describes the user presenting a prize code (display the
code on the mobile devices screen) or other identifying indicia
that is associated with a particular prize, once at the retail location.
The mobile device may be configured to display a bar code on the
screen of the mobile device, and the retail location may scan in the
displayed barcode to facilitate the prize redemption process. Once
a prize code or bar code is presented to the retail location, the
retail location will generally have a computer or other electronic
terminal configured to communicate with a validation source for
the prize or bar code. For example, a retail location may have the
prize or barcodes programmed into their merchandising systems
such that when a barcode or prize code is presented it can be
validated against the retail locations own records for prizes to be
distributed. Blair para. 34.
iSWeb
06. iSWeb is directed to describing a mobile app called iScratcher.
iSWeb 1.
Wolf
07. Wolf is directed to wireless coupon-dispensing devices. Wolf
para. 3.
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ANALYSIS
We begin by construing the limitation "digital scratch card." This is
not lexicographically defined and has no conventional meaning. The
ordinary meaning of a "scratch card" is a lottery ticket played by scratching
or scraping designated areas to reveal information used in determining the
card's prize value. As digital data, being intangible, is incapable of being
scratched or scraped, the limitation "digital scratch card" is
self-contradictory on its face. As the invention is in the realm of marketing
promotion, however, we take the phrase to be metaphoric rather than literal.
We thus construe "digital scratch card" as a digital metaphor for such a card
being digitally represented with some conventional computer action
metaphorically representing such scratching and scraping. This is consistent
with how the term is used in the Specification. See, e.g., Spec. ,r 68.
Claims 22, 26--28, 35, 40---43, 45--47, 49, 50, and 52-57 rejected under
35 U.S.C. § 101 as directed to ajudicial exception without significantly
more
STEP 11
Claim 22, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether
it is directed to a judicial exception without significantly more.
4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019).
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STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[w]hat else
is there in the claims before us?" To answer that question, . . .
consider the elements of each 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. [The Court] described step two of this
analysis as a search for an "'inventive concept'"-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 Corp. Pty. Ltd. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
( alteration in original) ( citations omitted) ( citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). To perform this test, we
must first determine what the claims are directed to. This begins by
determining whether the claims recite one of the judicial exceptions ( a law
of nature, a natural phenomenon, or an abstract idea). Then, if claims recite
a judicial exception, determining whether the claims at issue are directed to
the recited judicial exception, or whether the recited judicial exception is
integrated into a practical application of that exception. If the claims are
directed to a judicial exception, then finally determining whether the claims
provide an inventive concept because the additional elements recited in the
claims provide significantly more than the recited judicial exception.
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STEP 2A Prong 1
Method claim 22 recites assigning barcode, redemption rate, winning
odds, and digital scratch card data, obtaining information, determining
whether to offer a gift, transmitting and displaying the digital scratch card
data, revealing a result after entering data that simulates playing the card,
and tracking factors. Thus, claim 22 recites assigning, receiving, analyzing,
transmitting, displaying, modifying, and storing data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only functional results to be achieved by any and all
possible means.
From this we see that claim 22 does not recite the judicial exceptions
of either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz. mathematical concepts, 5 certain methods
of organizing human interactions, 6 including fundamental economic
practices and business activities, or mental processes. 7
5 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B. V., No. 2017-2465, 2018 WL
6816331 (Fed. Cir. Dec. 28, 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The Examiner determines the claims to be directed to incentivizing a
consumer to patronize a merchant by providing an incentive in terms of a
gift selected by the merchant comprising wholly generic computers. Office
Action mailed March 26, 2015 (hereinafter "Office Action"), 5. 8
The preamble to claim 22 recites that it is a method of incentivizing
and tracking patronage of a consumer by providing a gift of a merchant that
can be retrieved by the consumer via a communication network. The steps
in claim 22 result in notifying a consumer that he/she has won or lost a gift
from a marketing promotion by digitally simulating a scratch card play,
absent any technological mechanism other than a conventional computer for
doing so.
As to the specific limitations, limitations 1--4, 6, and 7 recite
insignificant assigning, receiving, analyzing, transmitting, displaying,
modifying, and storing of merchant transaction data, which advise one to
apply generic functions to get to these results. Limitations 5, 8, and 9 recite
determining whether to offer a gift using some input, displaying the result of
the determination, and recording data associated with the transaction with
that of prior transactions. The focus of the claim is a promotion that simply
notifies a consumer that he/she has won or lost a gift from a marketing
promotion by digitally simulating a scratch card play. To advocate such a
promotion is conceptual advice for results to be obtained, and not
technological operations.
The Specification at paragraph 3 recites that the invention relates to
promoting business goods and services to a user via an interface device of
8 This action is an earlier Examiner's Answer. The Final Action refers to
this action for the entirety of the § 101 analysis. Final Act. 2.
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the user, and more specifically to offering a gift from the business to the
user, allowing the user to transfer or share the gift with another user, and
allowing the user to redeem the gift at the business. Thus, all this intrinsic
evidence shows that claim 22 is directed to promoting business goods and
services to a user, and more specifically, to offering a gift from the business
to the user, i.e., a marketing promotion. This is consistent with the
Examiner's determination.
The concept of a marketing promotion is a fundamental business
practice long prevalent in our system of commerce. The use of a marketing
promotion is also a building block of ingenuity in marketing and sales.
Thus, a marketing promotion is an example of a conceptual idea subject to
the Supreme Court's "concern that patent law not inhibit further discovery
by improperly tying up the future use of these building blocks of human
ingenuity." Alice, 573 U.S. at 216 ( citations omitted). Claim 22 recites the
idea of performing various conceptual steps generically resulting in the
marketing promotion. As we determined earlier, none of these steps recite
specific technological implementation details, but instead get to this result
by advising one to notify a consumer that he/ she has won or lost a gift from
a marketing promotion digitally simulating a scratch card play. Thus, claim
22 is directed to marketing promotion, which is a fundamental business
practice.
This, in tum, is an example of marketing as a certain method of
organizing human interactions because marketing promotions are a large
part of using marketing to get customers.
The concept of a marketing promotion as advised to be done by
notifying a consumer that he/she has won or lost a gift from a marketing
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promotion digitally simulating a scratch card play is a way of creating sales
awards as marketing promotions to organize customer behavior toward
increased opportunities for such awards. The steps recited in claim 22 are
part of more precisely targeting such promotions to better organize customer
sales activities.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of assigning, receiving,
analyzing, transmitting, displaying, modifying, and storing data mimic
human thought processes of observation, evaluation, judgment, and opinion,
perhaps with paper and pencil, where the data interpretation is perceptible
only in the human mind. See In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); Fair Warning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093-94 (Fed. Cir. 2016). Claim 22, unlike the claims found
non-abstract in prior cases, uses generic computer technology to perform
data assignment, reception, analysis, transmission, display, modification, and
storage and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 22 is directed to the abstract idea of assigning, receiving,
analyzing, transmitting, displaying, modifying, and storing data, and not a
technological implementation or application of that idea.
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From this we conclude that, at least to this degree, claim 22 is directed
to the abstract idea of marketing promotion by advising one to notify a
consumer that he/she has won or lost a gift from a marketing promotion
digitally simulating a scratch card play.
STEP 2A Prong 2
The next issue is whether claim 22 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application. 9
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[A]pplication[s]" of
such concepts "'to a new and useful end,"' we have said,
remain eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the "'buildin[g]
block[ s] "' of human ingenuity and those that integrate the
building blocks into something more ....
Alice, 573 U.S. at 217 (alterations in original) (citations omitted).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
9 See, e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S.
175 (1981)).
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abstract idea "'to a particular technological environment.'"
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (second, third, and fourth alterations in original)
( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. Claim 22 does not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Steps 1--4 are pure data gathering steps. Limitations
describing the nature of the data do not alter this. Steps 6 and 7 are
insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 5, 8, and 9 recite generic computer processing
expressed in functional terms to be performed by any and all possible means
and so present no more than abstract conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
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Viewed as a whole, Appellants' method claim 22 simply recites the
concept of marketing promotion as performed by a generic computer. To be
sure, claim 22 recites doing so by advising one to notify a consumer that
he/she has won or lost a gift from a marketing promotion by digitally
simulating a scratch card play. But this is no more than abstract conceptual
advice on the parameters for such marketing promotion and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The method claim does not, for example, purport to improve the
functioning of the computer itself. Nor does it effect an improvement in any
other technology or technical field. The 23-plus pages of specification spell
out different generic equipment 10 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of marketing promotion under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, claim 22 amounts to nothing significantly
more than an instruction to apply the abstract idea of marketing promotion
by advising one to notify a consumer that he/ she has won or lost a gift from
a marketing promotion digitally simulating a scratch card play using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225-26.
10 The Specification describes mobile device as being one of (i) a personal
computing device, (ii) a smart phone, (iii) a cellular phone, and (iv) a
personal computer. Spec. para. 15.
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None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 22 is directed to advising one to notify a
consumer that he/she has won or lost a gift from a marketing promotion by
digitally simulating a scratch card play to achieve the functional result of
marketing promotion as distinguished from a technological improvement for
achieving or applying that result. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether the claim provides an inventive concept
because the additional elements recited in the claims provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for assigning, receiving,
analyzing, transmitting, displaying, modifying, and storing data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
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computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming."). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method claim adds nothing that is not already present when the
steps are considered separately. The sequence of data assignment-
recepti on-anal ysis-transmission---disp lay-modification-storage is equally
generic and conventional or otherwise held to be abstract. See Ultramercial,
772 F.3d at 715 (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission); Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
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processing, routing, controlling, and monitoring). The ordering of the steps
is therefore ordinary and conventional.
We conclude that claim 22 does not provide an inventive concept
because the additional elements recited in the claims do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
The other independent method claim is substantially similar at least as
it regards this analysis. The remaining method claims merely describe
process parameters. We conclude that the method claims at issue are
directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of marketing
promotion, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from the Office Action 3-7 and Answer 3-12
and reach similar legal conclusions.
In particular, we are not persuaded by Appellants' argument that
Appellants respectfully submit that independent claim 22
recites much more and goes far beyond than what is argued by
the Office. Indeed, the present inventive concept is directed to a
sophisticated, novel, and non-obvious system that provides,
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among other things, a valuable transfer of consumer
demographic information from a consumer to a merchant in
exchange for an opportunity to win a gift from the merchant via
physical manipulation of a digital scratch card on a device of
the consumer, which advantageously allows the merchant to
identify and process consumer demographics and establishing
communication with each of its consumers, among other things.
Indeed, the art of record fails to meet all of the recitations of
independent claim 22 as detailed hereafter.
Br. 7. As to whether the art of record meets the limitation, "a claim for a
new abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating§ 102 novelty." Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). A
valuable transfer of information is still information transfer, an abstract idea.
The physical manipulation is conventional data entry using some pointing
device, such as a finger, stylus, or mouse. The claims do not recite any
technological implementations, but rather functional results to be achieved
by any and all means.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
Claims 22, 28, 35, 40, 42, 43, 45--47, 49, 50, and 52-57 rejected under
35 U.S.C. § 103(a) as unpatentable over Mobile Thunder, LLC. 's iScratcher
product (as evidenced by Blair and iSWeb) and Wolf
We are persuaded by Appellants' argument that
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[a]llowing a retailer to scan a barcode displayed by a device of
a customer to award the customer a prize is not the same as the
present inventive concept, which utilizes a barcode that, when
scanned by a device of a consumer, causes (a) consumer
information to be obtained from the device of a consumer.
Br. 11. Blair only scans a bar code representing an entry on the scratch card.
iSWeb only refers to using barcodes for redemption. Wolf only refers to
barcodes for products. The claims recite scanning a barcode assigned to the
merchant and obtaining information from the consumer's device and
transmitting the digital scratch card at that time. This is prior to when the
customer reveals (scratches) an entry and so is not described by Blair or
iSWeb. Scanning a product code in Wolf does not transmit a scratch card.
The Examiner responds that the references describe each of the recited
step actions. Ans. 13-16. We disagree. The Examiner does not make
findings that the specific action results and sequence recited we refer to
supra are so described. As such, the Examiner fails to present a prima facie
case.
Claims 26, 27, and 41 rejected under 35 U.S.C. § 103(a) as unpatentable
over Mobile Thunder, LLC. 's iScratcher product (as evidenced by Blair and
iSWeb), Wolf, and Leung
These claims depend from the claims in the prior rejection
CONCLUSIONS OF LAW
The rejection of claims 22, 26-28, 35, 40-43, 45--47, 49, 50, and 52-
57 under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more is proper.
The rejection of claims 22, 28, 35, 40, 42, 43, 45--47, 49, 50, and 52-
57 under 35 U.S.C. § 103(a) as unpatentable over Mobile Thunder, LLC. 's
iScratcher product (as evidenced by Blair and iSWeb) and Wolf is improper.
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Application 13/485,440
The rejection of claims 26, 27, and 41 under 35 U.S.C. § 103(a) as
unpatentable over Mobile Thunder, LLC. 's iScratcher product (as evidenced
by Blair and iSWeb ), Wolf, and Leung is improper.
DECISION
The rejection of claims 22, 26-28, 35, 40-43, 45--47, 49, 50, and 52-
5 7 is affirmed.
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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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