Ex Parte FitzGerald et alDownload PDFPatent Trial and Appeal BoardDec 21, 201713100384 (P.T.A.B. Dec. 21, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/100,384 05/04/2011 Patrick K. FitzGerald REC001C1 2815 71136 7590 Maldjian Law Group LLC 106 Apple Street Suite 200N Tinton Falls, NJ 07724 12/26/2017 EXAMINER HAMILTON, MATTHEW L ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 12/26/2017 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): j maldj ian @ mlgiplaw. com mlgdocketing @ mlgiplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK K. FITZGERALD and RON GONEN Appeal 2016-005389 Application 13/100,384 Technology Center 3600 Before ST. JOHN COURTENAY III, DENISE M. POTHIER, and SCOTT E. BAIN, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—13, which are all the claims pending in this application. Claims 14—20 are withdrawn. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction The invention on appeal “is generally directed to methods and systems for improving recycling rates by providing financial incentives to households engaged in recycling” (Spec 1 6). Appeal 2016-005389 Application 13/100,384 Exemplary Claim 1. A method comprising: obtaining, at a computer database, at least one first record of a recycling event, wherein the at least one first record comprises: a first indication of the recycling event, wherein the first indication is indicative of a time of collection of recyclable materials; and an identifier indicative of a source of recyclable materials and a quantity of recyclable materials, wherein: the identifier is associated with a receptacle containing the recyclable materials and obtained at the time of collection of recyclable materials; the source of the recyclable materials is indicative of an entity associated with the receptacle; and the quantity of recyclable materials is determined from a first amount of the recyclable materials contained in the receptacle at the time of collection; obtaining, at the computer database, a second indication of the recycling event, wherein the second indication comprises a quantitative indication of a weight of the receptacle after collection, the weight determined by a weighing mechanism; adjusting the quantity of recyclable materials of the at least one first record as a function of the second indication; applying a reward rate algorithm to at least a portion of the at least one first record to form credits of a single type for accrual to the source of the recyclable materials; storing, in at least one second record, the credits earned by the entity; and [L] enabling the entity to select, from the computer database, at least a portion of the credits of a single type from a total of credits accrued of a single type, and to convert the at least a portion of the credits of a single type into rewards redeemable from any one or more of a plurality of 2 Appeal 2016-005389 Application 13/100,384 third party providers, wherein the rewards comprise any one of a good, a service, coupon for a good, coupon for a service, and other economic benefit, from the one or more of a plurality of third party providers chosen by the entity, wherein the third party providers comprise different vendors, service providers and retailers, and wherein the rewards are generated at the computer database and are retrievable by the entity. (App. Br. 16—17, Claims App’x (Contested limitations L under §103 are bracketed and emphasized in bold; limitations pertinent to the §101 rejection are emphasized in italics)). References Berry US 2004/0167799 A1 Pub. Aug. 26, 2004 Krupowicz US 2005/0038572 A1 Pub. Feb. 17, 2005 Hiranoya US 2006/0271423 A1 Pub. Nov. 30, 2006 Rejections A. Claims 1—13 are rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter (Final Act. 3—8). B. Claims 1—13 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Krupowicz, Berry, and Hiranoya {id. at 9-18). Issues on Appeal Did the Examiner err in rejecting claims 1—13 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter? Did the Examiner err in rejecting claims 1—13 under pre-AIA 35 U.S.C. § 103(a) as being obvious over the cited combination of references? 3 Appeal 2016-005389 Application 13/100,384 ANALYSIS We have considered all of Appellants’ arguments and any evidence presented. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A of Claims 1—13 under 35 U.S.C. § 101 Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in that analysis is to determine whether the claims at issue are directed to one of those patent-ineligible concepts, such as an abstract idea. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. 4 Appeal 2016-005389 Application 13/100,384 Id. at 2355—57. If the claims are not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297) (emphasis added). We, therefore, review the claims on appeal to decide: (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 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). The Examiner’s Rejection under 35 U.S.C. § 101 Regarding the first part of the Mayo!Alice analysis, the Examiner notes independent claims 1 and 10 are directed to: limitations obtaining a first record of a recycling event (time of collection of recyclable materials, identification of a source of recyclable materials, source of recyclable materials, quantity of recyclable materials); obtaining a second indication comprises a quantitative indication of weight of the receptacle after collection, determined by a weighing mechanism; adjusting the quantity of recyclable materials of the at least one first record as a function of the second indication; applying a reward rate algorithm to a least a portion of the at least one first record to form credits of a single type for accrual to the source of the recyclable materials; storing, in at least one second record, the credits earned by the entity and enabling the entity to select from the computer database, at least one portion of the credits of a single type from a total of credits accrued of a single type and convert the at least 5 Appeal 2016-005389 Application 13/100,384 a portion of the credits of a single type into rewards redeemable from any one or more of a plurality of third party providers, wherein the rewards redeemable comprise any one of a good, a service, coupon for a good, coupon for a service, and other economic benefit. (Final Act. 7—8) (emphasis added). The Examiner thus concludes, under Mayo/Alice step one: “Claims 1 and 10 are directed to the abstract idea of an idea of itself because the limitations suggest the steps of the claims can be performed mentally (in the user’s mind), by hand (pen and paper) or with the aid of a computer (input and output of data by the user) or a scale in which activities (e.g. recycling) being performed are tracked or managed” {id. at 8). Regarding Mayo/Alice step two, the Examiner further concludes: The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the computer database as recited performs the functions of obtaining a first record and second record, obtaining a second indication of a recycling event and enabling an entity to select a portion of the credits of a single type to converts the credits into redeemable rewards. The functions are generic computer functions in terms of data gathering and user interaction with the computer (keyboards, mouse and computer monitor) to manipulate data. These are well understood, routine and conventional activities known to the industry. Therefore, the additional steps recited in the independent claims do not adding significantly more to the abstract idea. The claims do not include limitations that are “significantly more” than the abstract idea 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 6 Appeal 2016-005389 Application 13/100,384 beyond generally linking the use of an abstract idea to a particular technological environment. (Final Act. 8 (emphasis added)). Mayo/Alice Analysis — Step 1 Regarding Alice Step 1, Appellants contend: Appellants submit there is no evidence for any human being capable of determining weight or selecting a database record mentally or by hand using pen and paper. Further, weight cannot be measured by the user mentally which the user can then simply input to a computer. A weighing mechanism is required. (App. Br. 10). We note Appellants’ independent claim 1 is directed, inter alia, to a method of performing steps or acts, which: (1) obtain at a computer database, at least one first record of a recycling event, (2) wherein the at least one first record comprises data elements, inter alia, “of a first indication of the recycling event, ... an identifier indicative of a source of recyclable materials and a quantity of recyclable materials.” The claimed method (id.) further determines the quantity of recyclable materials “from a first amount of the recyclable materials contained in the receptacle at the time of collection.” A second indication of the recycling event is obtained, “wherein the second indication comprises a quantitative indication of a weight of the receptacle after collection, the weight determined by a weighing mechanism” (emphasis added). Remaining 7 Appeal 2016-005389 Application 13/100,384 independent system claim 10 recites similar functions of commensurate scope, and includes the recited “weighing mechanism.” 1 Our reviewing court guides that fundamental economic and conventional business practices are often found to be abstract ideas, even if performed on a computer. See, e.g., OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015). “The abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” McRO, Inc. v. BandaiNamco Games America Inc., 837 F.3d 1299, 1312 (2016) (emphasis added) (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)). Here, Appellants repeatedly emphasize the claims on appeal recite “a weighing mechanism” in which the quantitative weight measurement of physical recycling items cannot be performed by a mental process or by a person merely using pen and paper. (App. Br. 10; Reply Br. 4 (independent claims 1, 10)). Thus, in considering Appellants’ claims as a whole, the principal issue before us (under § 101) is whether it matters what machinery by which the result is accomplished, because “a weighing mechanism” is arguably not a generic machine, such as a generic computer which can be programmed to perform many different functions. Accordingly, if we assume arguendo under step one of the Mayo/Alice analysis that the claims on appeal are directed to an abstract idea of economic credits for recycling (i.e., a fundamental economic 1 We give the contested claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). 8 Appeal 2016-005389 Application 13/100,384 practice), including a recited “reward rate algorithm” (claims 1 and 10), we must further consider under step two whether the positively recited “weighing mechanism” renders the claimed process and system patent- eligible, because “a weighing mechanism” is arguably a particular machine, which is only capable of performing a single dedicated function, unlike a generic computer, which is capable of performing many different functions when appropriately programmed. (See independent method claim 1 and independent system claim 10). Mayo/Alice Analysis — Step 2 Under step two of the Mayo/Alice analysis, we analyze the claims to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 134 S. Ct. at 2357. The “machine-or-transformation ” (MoT) test As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014), the “machine-or- transformation” (MoT) test, as outlined in In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), can provide a “useful clue” in the second step of the Alice framework. Under Bilski’s MoT test, a claimed process can be patent- eligible under § 101 if: (1) it is tied to a particular machine or apparatus; or (2) the process transforms a particular article into a different state or thing. Bilski, 545 F.3d at 954 (citing Gottschalk v. Benson, 409 U.S. 63, 70 (1972)). Applying the machine-or-transformation test here, and for essentially the same reasons argued by Appellants in the Briefs, we conclude that 9 Appeal 2016-005389 Application 13/100,384 Appellants’ claims 1—13 are sufficiently tied to a particular machine or apparatus: “a weighing mechanism.” We conclude the “weighing mechanism” recited in Appellants’ independent claims 1 and 10 is not a generic machine, because, unlike a generic computer, which can perform many different functions when programmed, the recited “weighing mechanism” can only be used for a single, dedicated purpose (i.e., weighing physical items). Thus, we conclude the claimed “weighing mechanism” is a particular machine under Bilski’s MoT test.2 Moreover, we agree with Appellants (App. Br. 10; Reply Br. 4) that a person cannot reasonably weigh items as a mental step.3 Nor can a generic computer weigh such items, without more.4 A generic computer is only capable of storing, recalling, or analyzing the results obtained from a separate, dedicated “weighing mechanism” (i.e., a particular machine). Thus, we find the first prong of the Bilski machine-or-transformation test is satisfied by the recited “weighing mechanism.” 5 2 We need not reach and do not decide the issue of whether a dedicated special-purpose programmed computer is, or is not, a “particular machine” under the Bilski machine-or-transformation test. 3 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson’’ ). 4 Appellants persuasively argue a “weight cannot be measured by the user mentally which the user can then simply input to a computer. A weighing mechanism is required.” (App. Br. 10) (emphasis added). 5 As held by the Supreme Court, “although the machine-or-transformation test is reliable in most cases, it is not the exclusive test. . . rather it is a 10 Appeal 2016-005389 Application 13/100,384 We emphasize that even if weighing mechanisms are notoriously well known in the art, this has no bearing upon our analysis under § 101. The Supreme Court guides: “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981) (emphasis added). Our reviewing court further emphasizes: “[eligibility and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (emphasis added). Therefore, on this record, we are persuaded of error regarding the Examiner’s legal conclusion that all method claims 1—9 on appeal are directed to patent-ineligible subject matter.* * 6 Independent claim 10 is directed to a “system” (i.e., apparatus) and not to a method. However, the recited “computing platform” is “adapted to” perform functions which correspond to the recited steps or acts of method claim 1. The “system comprising a computing platform” of claim 10 includes the recited “weighing mechanism” (machine) as an essential part of the claimed “system” under the transitional term “comprising.” See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the critical clue.” Bilski v. Kappos, 561 U.S. 593, 613—14 (2010) (Justices Stevens, Ginsburg, Breyer, and Sotomayor concurring). 6 “Patent eligibility under § 101 presents an issue of law.” Accenture Glob. Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013). 11 Appeal 2016-005389 Application 13/100,384 named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”). Thus, we conclude that at least the additional limitation of the recited “weighing mechanism” as an essential part of the claimed “system” ensures that independent claim 10 also amounts to significantly more than the abstract idea of the recited “reward rate algorithm.” See Alice, 134 S. Ct. at 2357. Remaining system claims 11—13 depend directly or indirectly from independent system claim 10. Accordingly, for the aforementioned reasons, we reverse the Examiner’s Rejection A under § 101 of all claims 1—13 on appeal. Rejection B of Claims 1—13 under § 103(a) Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by finding the cited combination of Krupowicz, Berry, and Hiranoya teaches or suggests contested limitation [L]: [L] enabling the entity to select, from the computer database, at least a portion of the credits of a single type from a total of credits accrued of a single type, and to convert the at least a portion of the credits of a single type into rewards redeemable from any one or more of a plurality of third party providers, wherein the rewards comprise any one of a good, a service, coupon for a good, coupon for a service, and other economic benefit, from the one or more of a plurality of third party providers chosen by the entity, wherein the third party providers comprise different vendors, service providers and retailers, and wherein the rewards are generated at the computer database and are retrievable by the entity [,] 12 Appeal 2016-005389 Application 13/100,384 within the meaning of representative method claim 1 (emphasis added)?7 We note independent system claim 10 recites commensurate language of similar scope. Regarding contested limitation [L] of claim 1, Appellants contend: Appellants respectfully state the cited reference Hiranoya does not disclose generation of the rewards at the same computer database from which the entity selects a portion of the credits. At best, Hiranoya discloses converting a desired number of individual points obtained from individual enterprises into a certain number of common points at a common point site. In particular, Hiranoya discloses, “converting a point provided by each enterprise to a common point. Each user (user a to user d) holds various points issued by an enterprise (enterprise A to enterprise C). These points are converted to common points at a common point site.” (See Hiranoya, FIG. 29 and f [0008]). Therefore, while the claims of the presently claimed invention recite “selecting at least a portion ... from the computer database and converting them into rewards at the same computer database”, Hiranoya discloses selecting individual points from enterprise site and converting them into common points at a common point site (FIG. 29 and 30, | [0008]). Because both the entities-enterprise site and common point site are different, Hiranoya’s teachings do not read over Appellants’ disclosure. (App. Br. 14 (emphasis added)). 7 We give the contested claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See Morris, at 1054. 127 F.3d 13 Appeal 2016-005389 Application 13/100,384 In the “Response to Arguments” section of the Answer (7), the Examiner disagrees, and broadly but reasonably interprets the claims as follows: 8 The Examiner interprets the limitation, “enabling the entity to select, from the computer database, at least a portion of the credits of a single type from a total of credits accrued of a single type, and to convert the at least a portion of the credits of a single type into rewards redeemable from any one or more of a plurality of third party providers, wherein the rewards comprise any one of a good, a service, coupon for a good, coupon for a service and other economic benefit from the one or more of a plurality of third party providers chosen by the entity, wherein the third party providers comprise different vendors, service providers and retailers, and wherein the rewards are generated at the computer database and are retrievable by the entity” as allowing a customer or user to pick or choose a quantity of points or credits of a single category or classification (equivalent to “credits of a single type” as claimed) and convert or transform the quantity of points or credits of a single category or classification to a reward[] associated with a plurality of merchants or retailers (equivalent to “third party providers” as claimed), where the rewards are any one of a good, service, coupon for a good, coupon for a service, or other economic benefit chosen or selected by the user or customer. Ans. 7. Given this construction, the Examiner finds the contested limitation, is taught by Hiranoya by disclosing, “After the authentication, the individual point management device 3 displays the point conversion screen on the user terminal device 2, and prompts 8 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). 14 Appeal 2016-005389 Application 13/100,384 the number of the desired points to be input (44). FIG. 7E shows an example of the point conversion screen displayed on the display unit of the user terminal device 2. On the point conversion screen shown in FIG. 7E, the balance of the current point is displayed, and there is an area provided for input of the number of points in requesting a conversion to common points. In the example shown in this figure, the user currently holds 1000 P, and now requests to convert 500 P of the 1000 P to common points.” (paragraph 0153); “After the user setting the number of points to be converted on the point conversion screen (FIG. 7E), the point conversion menu performs a point conversion process to display the number of common points after conversion on the display unit of the user terminal device 2. In the point conversion process, the number of points conversion-requested by the user is transferred to the common point management device 4 (common point site 48), the information about the converted common points is obtained by the common point management device 4 (common point site 48), and the common points are transmitted and displayed on the user terminal.” (paragraph 0154); “FIG. 7F shows an example of the display screen of the common points after conversion, and the number of common points after conversion and the conversion button “convert” are displayed. In this example, for example, the conversion rate is set to 1/10, and the points of 500 P are converted to common points of 50 P.” (paragraph 0155); “FIG. 6B shows an example of the member top screen displayed on the user terminal device 2, shows various process menus such as point management, changes in registered contents, display of contents, exchange for a free gift, etc., and also shows the number of remaining common points, the value of credit, etc. The credit corresponds to a rebate coupon for use in exchanging the common points for a free gift. Common points can be obtained in a game, etc., converted to the credit, and exchanged for a free gift.” (paragraph 0144) and “When the user selects the “point conversion menu” using input means such as the pointing device, the button, etc. of the user terminal device 2, the screen display of the user terminal device 2 transfers to the screen of the point conversion menu. FIG. 60 shows an example of the point conversion menu. The point 15 Appeal 2016-005389 Application 13/100,384 conversion menu screen displays a list of enterprises (for example, the companies A, B, C, and D) for which individual points are provided. When the user selects an enterprise (for example, the company B) as the source of the original point from the displayed list of the enterprises, the common point management device 4 performs access conversion by converting the destination of access of the user from the common point management device 4 (common point site 48) to the selected individual point management device 3 (enterprise site 38). In the example of the screen shown in FIG. 6E, a message of a change of access to the company B is displayed.” (paragraph 0146). Therefore, the Hiranoya reference reads on the claimed limitation.9 (App. Br. 7—8) (emphasis added). We find a preponderance of the evidence supports the Examiner’s findings regarding Hiranoya. In response to Appellants’ principal argument that “Hiranoya does not disclose generation of the rewards at the same computer database from which the entity selects a portion of the credits” (App. Br. 14), we note the Examiner finds the claimed database is taught by Krupowicz: “As per claims 1 and 10, Krupowicz teaches [a] method and system comprising: obtaining, at a computer database, at least one first record of a recycling event, wherein the at least one first record comprises: (paragraph 0015[)].” (Final Act. 9). 9 We note the Examiner has it backwards: it is improper to read the reference on the claim. Rather, the correct approach is to construe the contested claim term(s) under BRI and then read the properly construed claim term(s) on the corresponding feature(s) found in the reference. Compare with Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). Nevertheless, we understand the Examiner’s mapping. 16 Appeal 2016-005389 Application 13/100,384 We emphasize the Examiner’s rejection is based upon the combined teachings and suggestions of the cited references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (indicating one cannot show nonobviousness “by attacking references individually where the rejection is based upon a combination of references.”). Moreover, our reviewing court guides: “the question under [35 U.S.C. § 103] is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (Fed. Cir. 1976); see also MPEP § 2123. Applying this reasoning here, we find, at least Figures 6B and 6D and the supporting description in paragraphs 144—146 of Hiranoya, depicting and describing the conversion of company issued points to common points (i.e., credit units), at least suggest, and thus render obvious, contested limitation F, when combined with Krupowicz and Berry. See also Hiranoya Figures 7E and 7F, as relied upon by the Examiner (Final Act. 13), and Hiranoya’s Figure 29, which we find buttresses the Examiner’s findings, when combined with Krupowicz and Berry. Therefore, for at least the reasons articulated by the Examiner in the Answer (6—8), as further discussed above, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding Rejection B under §103 of claim 1. Accordingly, we sustain Rejection B under § 103 of independent representative claim 1. Remaining claims 2—13 on appeal, also rejected 17 Appeal 2016-005389 Application 13/100,384 under Rejection B and not argued separately, fall with representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Reply Brief Regarding Rejection B under § 103, to the extent Appellants advance new arguments in the Reply Brief not in response to a shift in the Examiner’s position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2). CONCLUSIONS The Examiner erred in rejecting claims 1—13 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. The Examiner did not err in rejecting claims 1—13 under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of the cited references. 18 Appeal 2016-005389 Application 13/100,384 DECISION We reverse the Examiner’s decision rejecting claims 1—13 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1—13 under pre- AIA 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. §41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. §41.50(f). AFFIRMED 19 Copy with citationCopy as parenthetical citation