Ex Parte Byerley et al

Patent Trials and Appeals Board

Mar 29, 2019

11924248 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/924,248 10/25/2007
20350 7590 04/02/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Douglas Byerley
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.
87188-733611(0801 lOUS) 1918
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS BYERLEY, DANIEL SKOWRONEK, and
SUNILDEWAN
Appeal2017-003470
Application 11/924,248 1
Technology Center 3600
Before JOHNNY A. KUMAR, LARRY J. HUME, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-29 and 31-38. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify First Data Corporation as the real party in interest.
App. Br. 3.
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BACKGROUND
THE INVENTION
According to Appellants, the invention relates to "handling of mobile
discount certificates, including integrating databases of consumer
information, product information, discount certificate information, and other
useful data with the ubiquitous personal communications networks
accessible by the modem consumer." Abstract.
Exemplary independent claim 1 is reproduced below.
1. A method for handling mobile discount certificates, the
method comprising:
enrolling, at a host server, a plurality of participants in a
mobile discount certificate program, the participants comprising
an issuer of the mobile discount certificates and a customer;
building, with a profile generator executed by the host
server, a program participant profile for each of the participants;
creating, with an offer generator executed by the host
server, a plurality of mobile discount certificates based on at
least one program participant profile;
determining that the customer is in a particular
geographic location;
selecting one or more mobile discount certificates based
at least in part on the customer being in the particular
geographic location;
determining whether the customer has previously opted-
in to receiving mobile discount certificates associated with
physical advertisements for products during enrollment in the
mobile discount certificate program;
after the customer has been determined to not have
previously opted-in for receiving mobile discount certificates
during enrollment, determining whether the customer has, using
a mobile device associated with the customer, interactively
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opted-in to receiving mobile discount certificates by interacting
with a device of at least one of the physical advertisements;
communicating, with an offer communicator, the selected
one or more mobile discount certificates to the mobile device
associated with the customer, in response to determining that
the customer has previously opted-in to receiving mobile
discount certificates associated with physical advertisements for
products during enrollment or that the customer has, using a
mobile device associated with the customer, interactively opted-
in to receiving mobile discount certificates by interacting with a
device of at least one of the physical advertisements; and
receiving, at the host server, transaction information from
a point of sale device, the transaction information including the
one or more mobile discount certificates received at the point of
sale device from the mobile device.
REFERENCES AND REJECTIONS
1. Claims 1-29 and 31-38 stand rejected under 35 U.S.C. § 101.
Final Act. 3-9.
2. Claims 1-3, 7-20, 26,292, 31, and 34--35 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Jokinen (US 2002/0095333 Al,
published July 18, 2002) and Grosz (US 2008/0140518 Al, published June
12, 2008). Final Act. 10-21.
3. Claims 4--6 and 33 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Jokinen, Lang (US 2006/0178932 Al, published Aug. 10,
2006), and Sheehan (US 2002/0178060 Al, published Nov. 28, 2002). Final
Act. 21-23.
2 Claim 29 does not appear in the subheading for this rejection but it is
included in the substantive rejection under this subheading. See Final Act.
10. Thus, we treat this omission as harmless error.
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4. Claims 21-25 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Jokinen, Grosz, and Platt (US 2002/0112159 Al,
published Aug. 15, 2002). Final Act. 24--29.
5. Claims 27-28 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Jokinen, Lang, and Walker (US 2001/0056376 Al,
published Dec. 27, 2001 ). Final Act. 29-31.
6. Claim 32 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Jokinen, Grosz, and Wordekemper (US 2006/0282379
Al, published Dec. 14, 2006). Final Act. 31-32.
7. Claims 36-38 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Jokinen, Grosz, and Goldthwaite (US 2004/0127256 Al,
published July 1, 2004 ).
DISCUSSION
REJECTIONUNDER35 U.S.C. § 101
Principles of Law
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
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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 ( Gottschalk v. 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, 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
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environment." Id. ( 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. (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§
IOI. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Guidance"). Under the 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)).
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:
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(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 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 Guidance.
Step 2A of Guidance
The Examiner finds the claims are "directed to the abstract idea of
communicating and handling or processing discount certificates" which the
Examiner finds "is a fundamental economic practice and/ or a method of
organizing human activities." Final Act. 3--4. In doing so, the Examiner
finds the claims analogous to those in Alice, Bilski, Ultramercial,
SmartGene, and Cyberfone. Final Act. 6-9. The Examiner also finds the
claims "do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the claims do not
include an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment." Final Act. 4.
Appellants argue "the claimed invention is not the same or analogous
to the abstract ideas in Alice, Bilski, Ultramercial, or SmartGene, or any
other abstract ideas identified by courts .... " App. Br. 9--10. Appellants
also argue that the "Examiner's characterization of the claims as merely
direct to 'communicating and handling discount certificates' is an
inappropriate high level of abstraction"' that ignores limitations such as
those involving determining the geographical location of a user in selecting
coupons, and determining whether a customer has opted-in for discounts
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during enrollment or based on interactions between the user's mobile device
and a physical advertisement. App. Br. 10.
Under the first prong of step 2A of the Guidance, we first determine if
the claims recite an abstract idea. In this regard, the Specification identifies
several disadvantages of using traditional discount certificates and coupons.
For example, physical coupons transactions can take a significant amount of
time (e.g., 30 to 45 days) before the retail outlet gets reimbursed for a
customer's use of that coupon. Spec. ,r 9. Further there is potential for fraud
and errors caused by checkout clerks intentionally or unintentionally
ignoring the parameters of paper coupons (such as product, date etc.) that
limit their redemption. Spec. ,r 10. Finally, the Specification identifies
disadvantages of paper coupons stemming from their physical nature, such
as customers having to physically keep track of coupons of different sizes,
and the coupons' printing and distribution costs. Spec. ,r 11. To address
these problems, the claimed invention proposes the use of mobile discount
certificates, which may not suffer from the aforementioned disadvantages.
The Specification makes clear that these "mobile discount certificates are
digital versions of the traditional discount certificates created for use in the
mobile commerce environment." Spec. ,r 4.
Consistent with this description, independent claim 1 recites "a
method for handling mobile discount certificates" comprising "enrolling ...
participants in a mobile discount certificate program," building a profile for
the participants, "selecting mobile discount certificates" based on a customer
being in a particular geographic location, "determining whether the customer
has ... opted-in to receiving mobile discount certificates" and if not
determining whether the customer has interactively opted-in by interacting
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with a device of a physical advertisement, communicating the mobile
discount certificate to customers who have opted-in, and "receiving ...
transaction information from a point of sale device" including the discount
certificate received at the point of sale device.
Upon reviewing the Specification and the claim as whole, as
summarized above, it is clear these claims recite a form of targeted
advertising, marketing, and sales activities. For example, the claimed
"mobile discount certificates" ( e.g., coupons) are advertising and marketing
materials that are sent to customers within a particular geographical location
that have opted-in to receive the discount certificates. Use of the discount
certificate by a customer ultimately involves making a purchase or sales
transaction as reflected by the limitation requiring "receiving, at the host
server, transaction information from a point of sale device." Because the
claims recite advertising, marketing, and sales activities, they recite
fundamental economic practices and/or commercial transactions that, under
the Guidance, fall under the category of "certain methods of organizing
human activity." Thus, the claims recite an abstract idea. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim
"describe[ing] only the abstract idea of showing an advertisement before
delivering free content" is patent ineligible); In re Ferguson, 558 F.3d 1359,
1364 (Fed Cir. 2009) (holding methods "directed to organizing business or
legal relationships in the structuring of a sales force ( or marketing
company)" to be ineligible).
Next, we tum to the second prong of step 2A of the Guidance and
determine whether the claims recite a practical application of the recited
judicial exception. Here we look to see if, for example, (i) any additional
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elements of the claims reflects an improvement in the functioning of a
computer or to another technological field, (ii) an application of the judicial
exception with, or by use of, a particular machine, (iii) a transformation or
reduction of a particular article to a different state or thing (iv) or a use of
the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment. See MPEP § 2106.0S(a}-(c), (e}-(h).
Pertinent to the factors above, Appellants argue the claims require
functional operations of "a host server, a profile generator, an offer
generator, a transceiver device at a physical advertisement and a user mobile
device." App. Br. 12. These operations, according to Appellants "recite a
specially programmed and designed device having features that are beyond
'what is well understood, and conventional' which qualifies as significantly
more .... " App. Br. 12; see also Reply Br. 3. We disagree. The profile
generator and offer generator are disclosed as being implemented by a host
server. See Spec. ,r,r 17, 149. This server is described in the Specification as
a "host computer" (Spec. ,r 54) or as "one or more data stores" (Spec. ,r 146)
that is connected to a network such as the Internet (Spec. ,r 148). As such,
the host server is a generic computer or set of computing devices being used
in a generic fashion as a tool, and thus does not impose a meaningful
limitation on the claims.
Further, Appellants' emphasis on the fact that the claims allow for the
customer to "interactively opt-in" by use of a mobile device also does not
show an improvement to the functioning of a computer or other technical
field. Certain claims recite a transceiver (see claim 34 ), but these claims do
not reflect an improvement to the transceiver itself. Instead, the
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Specification describes the use of standard transceiver technologies, such as
NFC, Bluetooth, or RFID in allowing the customer, using a mobile device,
to interact with an advertisement and opt-in to receiving mobile coupons.
See Spec. ,r,r 82-84.
Rather than provide meaningful limitations, the recited host server,
mobile device, and transceiver, simply link the pre-Internet commercial
practice of providing targeted coupons to nearby customers who have opted-
in to receiving such coupons, to the technological environment of the
modem day Internet accessed through mobile devices.
Accordingly, under step 2A of the Guidance, we find the claims are
directed to an abstract idea.
Step 2B of Guidance
The Examiner finds that the limitations in the claims "are done by the
generically recited computer" and "require no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional." Final Act. 4.
As explained above, Appellants argue that the claims "recite a
specially programmed and designed device having features that are beyond
'what is well understood, and conventional' .... " App. Br. 12. Appellants
also argue that when viewed as a whole "the subject matter recited in the
claims is not 'well-understood,' 'routine,' or 'conventional in the field."'
App. Br. 11.
We are unpersuaded. As explained above, the claims recite a host
server, a mobile device, and a transceiver being used in a generic fashion
and thus these elements are used in their well-understood, conventional and
routine ways to implement the steps of the claims. See Spec. ,r,r 17, 54, 82-
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84, 146, 148, and 149. Further the steps themselves, of enrolling customers
into mobile discount certificate program, determining the location of
customers and whether they have opted-in, either during enrollment or
interactively, are part of the abstract idea itself and thus cannot constitute
elements beyond the abstract idea that are not well-understood, routine, or
conventional. See MPEP § 2106.05(d).
Remaining Arguments
Appellants argue "the claims at issue do not attempt to preempt every
application of the idea" because the claims include "significant additional
features ... that limit the claims to particular ways of solving a problem ...
" App. Br. 13.
We find this argument unpersuasive. "While 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). Moreover, "[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir.), cert, denied, 136 S.Ct. 701 (2015).
Conclusion
For the reasons stated above, we sustain the Examiner's rejection of
claims 1-29 and 31-38 under 35 U.S.C. § 101.
REJECTIONUNDER35 U.S.C. § 103
The Examiner finds Jokinen teaches determining whether a customer
has opted-in to receiving mobile discount certificates during enrollment.
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Final Act. 11 (citing Jokinen ,r,r 38, 45, 46, 48, and 52). The Examiner
further finds Grosz teaches interactively opting-in where a previous opt-in
has not been determined. Final Act. 12 (citing Grosz ,r,r 14, 15, 17, 22, 32-
37, 40, 47--49, and 51). The Examiner notes that there are only three
possible timings for checking whether a customer has interactively opted-in:
(1) before (2) during or (3) after enrollment. Thus, the Examiner finds, one
of ordinary skill in the art, would have combined Grosz's teaching of
interactive opt-in with Jokinen's teaching of opting-in during enrollment to
render obvious the claimed requirements of determining whether a customer
has opted-in during enrollment, and if not, determining whether the
customer has interactively opted-in. Final Act. 12-13.
Appellants argue "Grosz makes no provision for considering whether
a customer has previously opted-in during enrollment as recited in claim 1"
and thus the combination of Grosz with Jokinen fails to teach the limitations
requiring determining whether a customer has previously opted-in during
enrollment, or whether the customer has interactively opted-in using a
mobile device, and if either is true, communicating the discount certificate to
the customer. App. Br. 14.
Appellants further argue in Jokinen, "there is simply no interactive
opt-in prior to getting coupons" and in Grosz "there is interaction ... but
there is no registration nor any need for registration, and thus no need to
determine whether there has been a previous opt-in as part of registration."
App. Br. 15. Thus, according to Appellants, "[c]ombining the two
references ... would serve no purpose." App. Br. 15.
We are unpersuaded by Appellants' arguments. We agree with the
Examiner that Jokinen teaches determining whether a customer has opted-in
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to receiving mobile discount certificates during enrollment." For example,
Jokinen teaches "[t]he mobile user profiles database 36 enables the system to
limit the sending of advertising messages to registered mobile terminal users
who are in the vicinity of an advertising entity and who indicate certain user
preferences." Jokinen ,r 39. We also agree with the Examiner that Grosz
teaches "determining whether the customer has ... interactively opted-in to
receiving mobile discount certificates." For example, Grosz discloses
"Potential customers attracted by the primary advertising material 32 may
interact with interactive terminal 14 to learn more about the goods or
serlices advertised by display structure 12. Advertising server 16 distributes
secondary advertising material 34 related to primary advertising material 32
to interactive terminals 14 as needed." Grosz ,r 15. Grosz goes on to
disclose that when secondary advertising material is further requested,
Grosz's system may request customer information, such as name, address,
telephone number, e-mail address and other such personal information.
Grosz ,r 37. Thus, one of ordinary skill would understand that Grosz allows
for interactively opting-in to receiving advertising material after it has been
determined that the customer has not previously registered (because the
customer's personal information has not been previously input). Thus, we
agree with the Examiner that the combination of Jokinen's disclosure of
determining whether a customer has opted-in during enrollment, and Grosz
disclosure of a customer interactively opting-in when the customer has not
previously opted-in, teaches or suggests the disputed limitations of claim 1.
Further, the Examiner articulates a reason with rational underpinning
for combining Jokinen and Grosz, finding that there are only a three possible
times for checking whether the customer has opted-in to receiving the
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mobile discount certificates-before, during, or after enrollment-and thus
that it would have been obvious to try Grosz's interactive opt-in feature
using one of those times, namely after enrollment. Final Act. 12. When
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her technical
grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was obvious under
§ 103. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). The
Examiner further finds that there would be motivation to do so, emphasizing
that Jokinen teaches that a customer may elect not to receive information
during certain hours of the day (e.g., during work hours) but, if the customer
interacts with advertising during this time, they can beneficially receive
advertising information even after they have enrolled. Ans. 9.
Accordingly, we sustain the Examiner's rejection of claims 1, 13,
and 21, which were argued together as a group. We also sustain the
Examiner's rejection of claims 2-12, 14--20, 22-29, and 31-38, for which
Appellants do not present separate arguments for patentability. See App.
Br. 15.
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DECISION
The Examiner's rejection of claims 1-29 and 31-38 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejections of claims 1-29 and 31-38 under 35 U.S.C.
§ 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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