Ex Parte Catania et al

Patent Trial and Appeal Board

Jul 27, 2018

12783762 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/783,762 05/20/2010 William M. Catania
27975 7590 07/31/2018
ADD&G - 27975
1401 CITRUS CENTER 255 SOUTH ORANGE A VENUE
P.O. BOX 3791
ORLANDO, FL 32802-3791
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.
60732 7462
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
creganoa@allendyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM M. CAT ANIA, MICHAEL J. KA VIS, and
GREGGORY H. RAPP
Appeal2017-003743
Application 12/783,762
Technology Center 3600
Before CARL W. WHITEHEAD JR, BRADLEY W. BAUMEISTER, and
JEFFREYS. SMITH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 13-22 under
35 U.S.C. § 134(a). Appeal Brief 9-17. We have jurisdiction under
35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to "[a] message broker for redemption of
digital incentives at a point-of-sale terminal for a commercial transaction
that is able to communicate with a central database external to the point-of-
sale terminal." Abstract.
Appeal2017-003743
Application 12/783,762
Illustrative Claim
13. A non-transitory computer readable medium comprising
a message broker added to cooperate with a given existing
point-of-sale (POS) terminal in a retail environment to provide
compatibility with a central database connected to a
communications network, the given existing POS terminal
being of a given type from among a plurality of different types
of POS terminals associated with a plurality of different
retailers, the given existing POS terminal having an identifiable
attribute associated therewith, the message broker operating
independently from the plurality of different types of POS
terminals and independently from a respective loyalty program
associated with the plurality of different retailers, the computer
readable medium having computer instructions stored thereon,
which, when executed by a computer processor, causes the
computer processor to:
receive, via the message broker via the communications
network, a unique customer identifier associated with a
customer that has selected one or more items for purchase;
obtain, via the message broker from the given existing
POS terminal, information identifying the one or more items
selected for purchase by the customer associated with the
unique customer identifier that was received;
transmit, via the message broker, the unique customer
identifier, information about the given existing POS terminal,
and the information identifying the items that the customer has
selected for purchase to the central database;
cause the central database to authenticate the given
existing POS terminal based upon the associated identifiable
attribute,
validate the unique customer identifier,
identify each digital incentive that is associated with the
unique customer identifier and that is, applicable to at least one
of the items that the customer has selected for purchase, and
transmit information about each of the applicable digital
incentives to the message broker;
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Application 12/783,762
receive from the central database, via the message
broker, information identifying the one or more applicable
digital incentives; and
transmit, via the message broker, information identifying
the one or more applicable digital incentives to the
authenticated given existing POS terminal for redemption.
Rejections on Appeal
Claims 13-22 stand rejected under 35 U.S.C. §101 because the
claimed invention is directed to a judicial exception to patent-eligible subject
matter (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. More specifically, the Examiner finds that
claims 13-22 are directed to the concept of managing and authorizing
transactions and incentives in a retail environment using the point of sale
system and a central server system, which is a fundamental economic
practice as it is managing and authorizing promotions in a retail network
environment. Final Action 2-3.
Claims 13, 15, 17, 18, and 20 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Fravel (US Patent Application
Publication 2003/0130889 Al; published July 10, 2003), Byerley (US Patent
Application 2006/0224449 Al; published October 5, 2006), James
(US Patent Application Publication 2009/0106115 A 1; published April 23,
2009) and Morioka (US Patent Application Publication 2003/0125977 Al;
published July 3, 2003). Final Action 4-15.
Claim 14 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Fravel, Byerley, James, Morioka, and Michaelis
(US Patent Application Publication 2008/0262928 Al; published October
23, 2008). Final Action 16-18.
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Application 12/783,762
Claim 16 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Fravel, Byerley, James, Morioka, and Leming (US Patent
Application Publication 2008/0319846 Al; published December 25, 2008).
Final Action 18-20.
Claim 19 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Fravel, Byerley, James, Nguyen (US Patent Application
Publication 2008/0255960 Al; published October 16, 2008), and Michaelis.
Final Action 20-25.
Claims 21 and 22 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Fravel, Byerley, James, Morioka, Nguyen, and
Michaelis. Final Action 25-27.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed June 23, 2016), the Reply Brief (filed
January 11, 2017), the Answer (mailed December 1, 2016) and the Final
Action (mailed March 23, 2016) for the respective details.
35 U.S.C. §101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
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Application 12/783,762
v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "transform the nature of
the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355
( quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add--specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to: (1) whether the claims focus on a specific means or method that
improves the relevant technology, or (2) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that "[c]laims 13-22 are directed to the concept
of managing and authorizing transactions and incentives in a retail
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environment using the point of sale system and a central server system,
which is a fundamental economic practice as it is managing and authorizing
promotions in a retail network environment." Final Action 2-3. Appellants
argue that the claims are not directed to an abstract idea because "the claims
are directed to interoperability among different POS systems associated with
different retailers with a central database for the issuance redemption and
reimbursement o(digital incentives. and independent Claim 13 recites a
message broker added to cooperate with a given existing POS terminal to
address the interoperability." Appeal Brief 9-10.
Appellants contend the claims are not directed to an abstract idea
because "the claims are directed to the improvement in the functionality of
the overall system by providing interoperability among different POS
systems associated with different retailers with a central database for the
issuance, redemption, and reimbursement of digital incentives." Appeal
Brief 10. Appellants contend, "the claimed invention is directed to a
message broker added to cooperate with a given existing POS terminal in a
retail environment to provide compatibility with a central database
connected to a communications network. This concept is inextricably tied to
computer technology" wherein:
[T]he claimed message broker is a technical approach to a
technical problem. and not a business approach to a business
problem. The message broker addresses the technical problem of
interoperability among different POS systems associated with
different retailers with a central database for the issuance.
redemption. and reimbursement of digital incentives. This leads
to significantly more than an abstract idea and not simply a
method of e-couponing.
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Declaration 4. 1
Appellants disclose, "A piece of software called a message broker 16
manages communications from the authenticated existing point-of-sale
terminal 12 to the central database 10" wherein "the message broker routes
the unique identifier and the basket list to the central database."
Specification 2, 6.
We do not find Appellants' arguments persuasive. Our reviewing
court has explained that claims directed to "the mere formation and
manipulation of economic relations" and "the performance of certain
financial transactions" are properly held to be directed to abstract ideas.
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014); see also, e.g., Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (finding computer-
implemented system for "using advertising as a currency [on] the Internet"
to be ineligible); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355
(Fed. Cir. 2014) (finding computer-implemented system for guaranteeing
performance of an online transaction to be ineligible.); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (finding
computer-implemented system for "verifying the validity of a credit card
transaction [] over the Internet" to be ineligible).
Also, our reviewing court has repeatedly held that information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F .3d at
1353 (holding that "collecting information, analyzing it, and displaying
1 Declaration filed December 30, 2015.
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certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to
collecting information and analyzing it according to certain rules were
directed to an abstract idea); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) (computer-implemented system for
"verifying the validity of a credit card transaction[] over the Internet" was
patent-ineligible).
We agree with the Examiner's determination that at step one of the
Alice analysis, the claims are directed to one or more abstract ideas. We
therefore tum to the second step of the Alice analysis, in which we must
determine whether the additional elements of the claims transform them into
patent-eligible subject matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellants argue that:
[I]f the claims can somehow be determined to be directed to an
abstract idea, at least one element in the claim is sufficient to
ensure that the claim amounts to significantly more than the
abstract idea itself as supported by the Rule 132 Declaration. In
particular, the claimed message broker is a technical approach to
a technical problem, and not a business approach to a business
problem. The message broker addresses the technical problem
of interoperability among different POS systems associated with
different retailers with a central database for the issuance,
redemption, and reimbursement of digital incentives. This leads
to significantly more than an abstract idea as independent
Claim 13 is not simply directed to a method of e-couponing.
Appeal Brief 11.
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The Examiner finds:
[W]hile the claims indicate the claimed invention to be
compatible with a plurality of point of sale systems associated
with a plurality of merchants, the Examiner notes the claim
language only states the claimed message broker to be
compatible with a plurality of different POS, different retailers,
and independent of loyalty programs. That is, while the claims
recite these features, these features are merely intended
functionality of the claimed invention as the rest of the claim
does not include limitations [that] support this claimed
functionality. The claims do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the abstract idea is performed by generic
computer components.
Final Action 2-3.
Appellants' argument that the claimed invention is rooted in computer
technology in order to overcome a problem specifically arising in the realm
of interoperability among different POS systems associated with different
retailers with a central database for the issuance is not persuasive of
Examiner error because the mere application of an abstract idea on a
computer system does not make a claimed invention patentable. See Alice
Corp., 134 S. Ct. at 2358 ("[I]f a patent's recitation of a computer amounts
to a mere instruction to 'implemen[t]' an abstract idea 'on ... a computer,'
[]that addition cannot impart patent eligibility.") ( citations omitted).
Appellants do not argue, nor does Appellants' Specification state, that the
claimed message broker requires specialized or improved technology.
Accordingly, we sustain the Examiner's 35 U.S.C. §101 rejection of
claims 13-22.
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35 U.S.C. § 103 Rejection
Appellants argue that "[i]ndependent Claim 13 recites a message
broker added to cooperate with a given existing point-of-sale (POS) terminal
in a retail environments to provide compatibility with a central database"
and "while Byerley et al. does address the problem of incorporating
additional rewards programs into existing POS systems," "Byerley et al.
fails to disclose a message broker added to cooperate with a given existing
point-of-sale (POS) terminal in a retail environment to provide compatibility
with a central database." Appeal Brief 14-15. Appellants contend "Byerley
et al. communicates with different databases or rewards programs, i.e.
transaction data networks, and not a central database with operations that are
independent from the plurality of different types of POS terminals and
independent from a respective loyalty program associated with the plurality
of different retailers." Appeal Brief 15. Appellants argue, "As supported by
the Rule 132 Declaration, Byerley et al. teaches away from a combination
with Morioka. Byerley et al. teaches that there is no central database or
central processing for all loyalty programs/POS terminals of different
retailers." Appeal Brief 15.
The Examiner finds that it is the combination of Fravel and Morioka
that discloses "the concept of POS systems communicating with a central
system to perform coupon redemption" and "although the combination does
not explicitly disclose the system to be independent of loyalty programs[,]
Byerley further teaches that it [was] old and well known to add modules to
existing POS systems to provide network communication services."
Answer 7-8 (citing Fravel, paragraph 25; Byerley, paragraph 3).
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We find Appellants' arguments unpersuasive of Examiner error. The
Examiner did not rely upon Byerley alone to disclose the claimed central
data base. See Final Action 5, 6, 10 and 11. "Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck, 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (Fed.
Cir. 1981)).
We also do not find Appellants' argument that Byerley teaches away
from a combination with Morioka persuasive of Examiner error because
Byerley does not discourage employing a central database. "A reference
may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
( citations and internal quotation marks omitted). We therefore sustain the
Examiner's obviousness rejection of independent claim 13.
Appellants argue that the obviousness rejections of claims 14, 16, 19,
21 and 22 are erroneous because of the "reasons set forth" with respect to
independent claim 13. We did not find the obliviousness rejection of claim
13 erroneous. Accordingly, we likewise sustain the Examiner's obviousness
rejection of dependent claims 14, 16, 19, 21 and 22, as well as claims 15, 17,
18 and 20 not argued separately by Appellants. See Appeal Brief 13-16.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 13-22 is affirmed.
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The Examiner's 35 U.S.C. § 103 rejections of claims 13-22 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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