Ex Parte BLACK et al

Patent Trial and Appeal BoardJan 24, 2019

13233801 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/233,801 09/15/2011 21269 7590 01/28/2019 PEPPER HAMIL TON LLP UNION TRUST BUILDING 501 GRANT STREET, SUITE 300 PITTSBURGH, PA 15219-4429 FIRST NAMED INVENTOR Cheryl BLACK 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. 134779.13301 8410 EXAMINER ABDI, KAMBIZ ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 01/28/2019 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): docketingpgh@pepperlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHERYL BLACK, AJAY AMLANI, TENNILLE V. GOFF, and DANIEL J. CORWIN Appeal2017-010832 Application 13/233,801 Technology Center 3600 Before ALLEN R. MacDONALD, NABEEL U. KHAN, and DAVID J. CUTITTA II, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 3-8, 10, 11, and 13-20. Appellants have cancelled claims 2, 9, and 12. App. Br. 28-30. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants indicate the real party in interest is You Technology, LLC. App. Br. 3. Appeal2017-010832 Application 13/233,801 Illustrative Claim Illustrative claim 1 under appeal reads as follows ( emphasis, formatting, and bracketed material added): 1. A system for managing a plurality of proof of purchase reward programs, the system comprising: [A.] a computing device; and [B.] a non-transitory processor-readable storage medium in operable communication with the computing device, wherein the storage medium contains one or more programming instructions that, when executed, cause the computing device to: [i.] facilitate transmission of data received from a vendor mechanism, a reward program sponsor mechanism, a beneficiary mechanism, and a consumer access mechanism, [ii.] manage consumer data, product data, reward program data, reward program sponsor data, beneficiary data, benefit data, and vendor data, wherein: [a.] the consumer data includes a plurality of consumer identifiers, [b.] the product data includes a plurality of product identifiers, and [c.] the reward program data includes data pertaining to a plurality of reward programs associated with a plurality of reward program sponsors, a reward program parameter associated with each of the plurality of reward programs, and a plurality of reward program markers, each of the plurality of reward program markers identifying a group of consumer identifiers and a group of product identifiers included with one of the plurality of reward programs, 2 Appeal2017-010832 Application 13/233,801 [iii.] receive transactional data including a consumer identifier identifying a consumer initiating a transaction and a product identifier identifying at least one product purchased in the transaction, [iv.] determine whether the transactional data complies with a reward program parameter associated with a reward program identified by a reward program marker associated with the consumer identifier and the product identifier, and [ v.] provide the beneficiary mechanism with benefit data if the transactional data containing the consumer identifier complies with the reward program parameter, thereby enabling the beneficiary mechanism to provide a beneficiary with a benefit identified by the benefit data, wherein the beneficiary is not the consumer. Antonucci et al. Novick et al. James et al. White et al. References2 US 2003/0130895 Al US 2008/0065490 Al US 2009/0106115 Al US 2010/0312620 Al Rejections3 A. July 10, 2003 Mar. 13, 2008 Apr. 23, 2009 Dec. 9, 2010 The Examiner rejected claims 1, 3-8, 10, 11, and 13-20 under 35 U.S.C. Â§ 101 "because the claimed invention is directed to a judicial 2 All citations herein to these references are by reference to the first named inventor only. 3 All citations to the "Final Action" are to the Final Action mailed on November 30, 2015. 3 Appeal2017-010832 Application 13/233,801 exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more," i.e., because the claimed invention is directed to patent-ineligible subject matter. Final Act. 13-20. We select claim 1 as representative. Appellants do not separately argue claims 3-8, 10, 11, and 13-20. Except for our ultimate decision, we do not discuss theÂ§ 101 rejection of claims 3-8, 10, 11, and 13-20 further herein. B. The Examiner rejected claims 1, 4--8, 10, 11, and 13-18 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of White, Antonucci, and James. Final Act. 21--47. We select claim 1 as representative. Appellants do not separately argue claims 4--8, 10, 11, and 13-18. To the extent that Appellants specifically discuss claim 17 (App. Br. 24), they merely reference and rely on the "beneficiary" arguments presented for claim 1 ( and 11). This is not an argument for separate patentability of claim 1 7. Except for our ultimate decision, we do not discuss the Â§ 103 rejection of claims 4--8, 10, 11, and 13-18 further herein. C. The Examiner rejected claims 3, 19, and 20 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of White, Antonucci, James, and Novick. Final Act. 48-52. Appellants do not present arguments for claims 3, 19, and 20. Thus, the rejection of these claims turns on our decision as to claim 1. Except for our ultimate decision, we do not discuss the Â§ 103 rejection of claims 3, 19, and 2 0 further herein. 4 Appeal2017-010832 Application 13/233,801 Issues on Appeal Did the Examiner err in rejecting claim 1 as being directed to patent-ineligible subject matter? Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants. Except as noted below, we adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief arguments. We concur with the conclusions reached by the Examiner. We highlight the following points. A. Section 101 An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 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, 5 Appeal2017-010832 Application 13/233,801 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. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 ( 1981) ); "tanning, dyeing, making waterproof 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 187; 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 6 Appeal2017-010832 Application 13/233,801 attempting to limit the use of the formula to a particular technological environment." Id. (citation omitted) (citing Benson and Flook); see, 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 tum 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 ( quotation marks 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 [abstract idea]."' Id. (alterations in original) (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. B. USPTO Section 101 Guidance The United States Patent and Trademark Office (USPTO) recently published revised guidance on the application ofÂ§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first look to whether the claim recites: ( 1) (see Memorandum Step 2A - Prong One) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and 7 Appeal2017-010832 Application 13/233,801 (2) (see Memorandum Step 2A - Prong Two) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.0S(a}-( c ), ( e}-(h)). 4 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 Â§ 2106.0S(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 Memorandum Step 2B. C. Examiner's Â§1 OJ Rejection -Alice/Mayo - Steps 1 and 2 C.1. USPTO Memorandum Step 2A - Prong One Applying step 1 of the Alice/Mayo analysis, the Examiner concludes claim 1 is directed to an abstract idea. Independent Claim 1 discloses a system for managing a plurality of proof of purchase reward programs .... Final Act. 13 (emphasis added). Several [Supreme Court and Federal Circuit] cases have found concepts relating to interpersonal and intrapersonal activities (i.e., Certain Methods of Organizing Human Activity), such as advertising, marketing, and sales activities or behaviors to be 4 We acknowledge that some of these considerations may be properly evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for purposes of maintaining consistent treatment within the Office, we evaluate it under Step 1 of Alice (Step 2A of Office guidance). See USPTO's January 7, 2019 Memorandum, "2019 Revised Patent Subject Matter Eligibility Guidance." 8 Appeal2017-010832 Application 13/233,801 abstract. Several court decisions have identified Fundamental Economic Practices as abstract ideas ( see for example, Alice, Bilski, BuySAFE and Ultramercial). Final Act. 14. C.2. USPTO Memorandum Step 2A - Prong Two Applying step 2 of the Alice/Mayo analysis, the Examiner concludes: [T]he claimed invention is not a technological invention with a novel and nonobvious technological feature that solves a technical problem using a technical solution. Rather, the claimed invention recites method steps aimed at the solution of a business practice problem motivated by the business-related needs and requirements (i.e. commercial expediency) of the environment (i.e. personalized reward processing and in particular, selecting and applying incentives to a consumer account based on known consumer activities) within the commercial practice of reward processing in which the invention is to be deployed. Final Act. 18. C.3. USPTO Memorandum Step 2B Further applying step 2 of the Alice/Mayo analysis, the Examiner concludes: The recited system elements (a non-transitory processor- readable storage medium, and a computing device) are all generic computer elements previously known in the industry for performing conventional, generic and routine computer functions/tasks. See applicant's specification generally at FIG. 1; FIG. 6; i-f[0025], i-f[0027] and i-f[0078]. The claims do not include more than instructions to apply the abstract idea and recitation of generic computer elements performing generic computer functions/tasks. Consequently, inclusion of those limitations does not inoculate the claims from being interpreted as being directed to an abstract idea. The claimed steps being carried out by generic computer elements are routine, well- understood functions of a generic computer as it is routine and conventional for a computer to receive and store information, 9 Appeal2017-010832 Application 13/233,801 compare information, modify/update information, query-select information, and return an output. Final Act. 17. D. Appellants'Â§ 101 Arguments D.1. Appellants do not dispute the Examiner's determination that the claimed invention recites a judicial exception of managing a plurality of proof of purchase reward programs. We agree with the Examiner. We determine that the "managing a plurality of proof of purchase reward programs" of claim 1 recites a judicial exception in the form of a method of organizing human activity comprising commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors). D.2. Appellants contend "the claimed invention is a technical invention." App. Br. 12. Appellants particularly contend: Appellant submits that, similar to the facts in Enfzsh, the subject matter recited in amended independent claim 1 is directed toward an improvement to computer functionality for carrying out a specific combination of processes, specifically with regard to managing a plurality of proof of purchase reward programs and allowing the rewards from those programs to be assigned to various other entities. The processes recited in claim 1 include, without limitation, "facilitate[ing] transmission of data received from a vendor mechanism, a reward program sponsor mechanism, a beneficiary mechanism, and a consumer access mechanism," "manag[ing] consumer data, product data, reward program data, reward program sponsor data, beneficiary data, benefit data, and vendor data," "determin[ing] whether the transactional data complies with a reward program parameter 10 Appeal2017-010832 Application 13/233,801 associated with a reward program identified by a reward program marker associated with the consumer identifier and the product identifier, and provid[ing] the beneficiary mechanism with benefit data ... " [Claim 1 (emphasis added).] Thus, it is clear that Appellant's system utilizes multiple tailored and specialized systems working together ( e.g., via a network) to create a seamless user experience. Moreover, the complexities that arise from the management of the various mechanisms, is only compounded by the fact that such a large variety of information is being managed ( e.g., consumer data, product data, reward program data, reward program sponsor data, beneficiary data, benefit data, and vendor data). Appellant therefore submits that the claims are directed toward much more than a generic computer preforming a general function. App. Br. 13-14 (emphasis added). Appellant submits that the currently claimed invention achieves clear and significant benefits over conventional options, such as the ability to manage a variety of rewards programs, the ability to direct the rewards to various third parties directly, the management and control of the system to such a detailed level (e.g., managing consumer data, product data, reward program data, reward program sponsor data, beneficiary data, benefit data, and vendor data) via a single system. The claims at issue do not simply add conventional computer components to well-known business practices or use abstract mathematical formulas on any general purpose computer. Rather, the claimed invention involves a very specific improvement to computer functionality in tracking purchases, identifying one or more reward programs, and assigning the rewards to one or more beneficiaries automatically .... App. Br. 14 (emphasis added). [T]he claimed invention provides an improvement in a technological field at least because it streamlines the user experience via a plurality of devices and better enables a user to utilize a tool necessarily rooted in computer technology. App. Br. 16. 11 Appeal2017-010832 Application 13/233,801 The present claims recite a system for improving a proof of purchase rewards based system via managing various fine-tuned data points from various devices communicated over a network. Specifically, the present claims recite additional, novel and non- obvious functionality, as discussed herein below that improves the operation of a device itself with regard to managing a plurality of rewards programs and allowing fine-tuned customization regarding the distribution of said reward .... App. Br. 16. Contrary to Appellants' "improvement to computer functionality" arguments, we do not find before us a non-abstract improvement to technology. The focus of claim 1 is not on an improvement in computer- functionality, as in Enfzsh, but on an abstract idea that uses a computer as a tool for "managing a plurality of proof of purchase reward programs and allowing the rewards from those programs to be assigned to various other entities." App. Br. 13. In Trading Technologies, the Federal Circuit agreed with the district court explanation that: The claims require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface's structure that is addressed to and resolves a specifically identified problem in the prior state of the art. Trading Techs. Int'!, Inc. v. CQG, INC, 675 F. App'x 1001, 1004 (Fed. Cir. 201 7). In contrast, in Appellants' claim 1, we find only abstract improvements to managing a plurality of proof of purchase reward programs. A claim directed to a unique and advantageous system for managing a plurality of proof of purchase reward programs is nonetheless directed to an abstract idea. 5 "[U]nder the Mayo/Alice framework, a claim 5 See Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709 (Fed. Cir. 2014). In that case, the patentee argued that its financial arrangement ( a method of 12 Appeal2017-010832 Application 13/233,801 directed to a newly discovered law of nature ( or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility .... " Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see Diehr, 450 U.S. at 188- 89. Further, Appellants emphasize the various "mechanisms" of claim 1 working to achieve the improvement (which we determine above to be an improvement to an abstract idea) as exemplary of "tailored and specialized systems." We disagree. As cited by the Examiner (Final Act. 1 7), Appellants' Specification explicitly states that these mechanisms, may include a computer processor, electronic components, such as a tangible storage medium, such as a physical memory, RAM, ROM, EPROM, CD, DVD, Blu-rayÂ® disc or the like, a server, a database or the like, which may be used for processing, transmitting and/or receiving information. Spec. ,r 25. We conclude that these mechanisms are the epitome of generic computer system components. We agree with the Examiner that as to claim 1, "the claimed invention is not a technological invention ... that solves a technical problem using a technical solution." Final Act. 18. In view of Appellants' Specification, and consistent with the Examiner's determinations, we conclude that claim 1 using advertising as an exchange or currency) was distinguishable from the "routine," "long prevalent," or "conventional" abstract idea in Alice because it was "directed to a specific method of advertising and content distribution that was previously unknown." Id. at 714. The court rejected the patentee's position that "abstract ideas remain patent-eligible under Â§ 101 as long as they are new ideas, not previously well known, and not routine activity." Id. 13 Appeal2017-010832 Application 13/233,801 does not integrate the judicial exception into a practical application. We determine claim 1 does not recite: (i) an improvement to the functioning of a computer; (ii) an improvement to another technology or technical field; (iii) an application of the abstract idea with, or by use of, a particular machine; (iv) a transformation or reduction of a particular article to a different state or thing; or (v) other meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See MPEP Â§Â§ 2106.05(a}-(c), (e}-(h). We agree with the Examiner that claim 1 is directed to a judicial exception. D.3. Although claim 1 recites "more" under step two of the Alice/Mayo analysis, we conclude the "more" in the form of "a computing device," "a non-transitory processor-readable storage medium," and plural varied "mechanism[ s]" is not significant. Rather, the case law shows this "more" to be the epitome of a well-understood, routine, conventional element/combination previously known in the industry. See Alice, 573 U.S. at 227 ("[P]etitioner's ... media claims add nothing of substance to the underlying abstract idea .... "); Fairwarning IP, Inc. v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("Claims 15-17 ... add nothing more than similar nominal recitations of basic computer hardware, such as 'a non- transitory computer-readable medium with computer-executable instructions' and a microprocessor."). 14 Appeal2017-010832 Application 13/233,801 Because claim 1, in addition to the judicial exception, recites only a well-understood, routine, conventional element/combination previously known in the industry, we conclude the case law shows there is no genuine issue of material fact regarding step two of the Examiner's Alice/Mayo analysis. Therefore, in view of Appellants' Specification, and consistent with the Examiner's determinations, we determine the claims do not recite: (vi) a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application. See MPEP Â§ 2106.05(d). D.4. Further, Appellants contend "Appellant is not attempting to preempt every application of a shopping rewards system." App. Br. 15. Appellants' argument is not persuasive because 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). We are instructed that " [ w ]here a patent's claims are deemed only to disclose patent ineligible subject matter under the [Alice/Mayo] framework ... , preemption concerns are fully addressed and made moot." Id. E. Appellants'Â§ 103 Arguments E.1. Appellants present numerous contentions that the Examiner has erred in rejecting claim 1 under 35 U.S.C. Â§ 103(a). App. Br. 19-24. We do not reproduce Appellants' arguments herein. The Examiner fully responds to 15 Appeal2017-010832 Application 13/233,801 each contention and significantly expands upon the rejection explanation set forth in the Final Action at pages 22-28. Appellants do not dispute the Examiner's expanded explanation. We adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief arguments. We concur with the conclusions reached by the Examiner. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 3-8, 10, 11, and 13-20 under 35 U.S.C. Â§ 101, as being directed to patent-ineligible subject matter. (2) The Examiner has not erred in rejecting claims 1, 3-8, 10, 11, and 13-20 as being unpatentable under 35 U.S.C. Â§ 103(a). (3) Claims 1, 3-8, 10, 11, and 13-20 are not patentable. DECISION The Examiner's rejection of claims 1, 3-8, 10, 11, and 13-20 under 35 U.S.C. Â§ 101, as being directed to patent-ineligible subject matter, is affirmed. The Examiner's rejections of claims 1, 3-8, 10, 11, and 13-20 as being unpatentable under 35 U.S.C. Â§ 103(a) are affirmed. 16 Appeal2017-010832 Application 13/233,801 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 17