Ex Parte FitzGerald et al

Patent Trial and Appeal Board

Dec 21, 2017

13100384 (P.T.A.B. Dec. 21, 2017)

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14—20 are withdrawn.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).
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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
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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?
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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.
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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
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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
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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
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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).
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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
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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
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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).
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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 [,]
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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
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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).
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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
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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.
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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
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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