Ex Parte Ito

Patent Trial and Appeal Board

Aug 8, 2017

11401950 (P.T.A.B. Aug. 8, 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.
11/401,950 04/12/2006 Masakazu Ito 016778-0506 5679
22428 7590 08/10
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKAZUITO
Appeal 2016-007657
Application 11/401,9501
Technology Center 3600
Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1,3, 5-7, 9, and 11, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b)
We affirm.
1 According to Appellant, the real party in interest is NEC Platforms, Ltd.
(App. Br. 2.)
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Application 11/401,950
STATEMENT OF THE CASE
Introduction
According to the Specification, Appellant’s invention “relates to a
point-of-sales (POS) system, in particular to a POS terminal for a POS
system which can execute sales calculation including a discount according to
a coupon.” (April 12, 2006 Specification (“Spec.”) p. 1.) Claim 1 is
illustrative, and is reproduced below (with minor reformatting):
1. A point-of-sales terminal comprising:
an input unit configured to receive an input item code, an
input coupon number and a coupon searching command;
a memory unit configured to store a coupon data set
including a related item code and a valid coupon number;
a searching unit connected to said memory unit and said
input unit and configured to search said memory unit according
to the input item code in response to the coupon searching
command to obtain a searching result representing the coupon
data set of which the related item code is matched with the input
item code;
a display unit connected to said searching unit configured
to display the searching result supplied from said searching unit;
and
a calculating unit connected to said input unit and
configured to calculate a sales calculation according to the input
item code and the input coupon number input to said input unit,
wherein when a coupon searching command is input to
said input unit after an item code of each item purchased is input
to said input unit, said searching unit searches said memory unit
according to each item code input to said input unit to find a
coupon data set corresponding to the item purchased,
when the coupon data set corresponding to the item
purchased is found, the searching unit retrieves the coupon data
set to display the coupon data set on said display unit,
when the coupon data set displayed on said display unit is
selected by reason that it is corresponding to a paper coupon
shown by a purchaser, the calculating unit calculates a sales
calculation according to the selected coupon data set,
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Application 11/401,950
when a coupon number of the paper coupon shown by the
purchaser is input to the input unit before inputting of the coupon
searching command, said searching unit refers to the coupon data
set stored in said memory unit to decide whether the input
coupon number is valid or not, and
when the input coupon number is valid, said calculation
unit calculates sales calculation according to the coupon data set
corresponding to the input coupon number, then said searching
unit executes the searching in response to the coupon searching
command and a result of the searching is displayed after the
coupon data set corresponding to the input coupon number is
deleted from the result.
Prior Art and Rejections on Appeal
Fajkowski US 5,905,246 May 18, 1999
Claims 1, 3, 5-7, 9, and 11 stand rejected under 35 U.S.C. § 101
because the claims are not directed to patent eligible subject matter. (See
April 29, 2015 Final Action (“Final Act.”) 2-A.)
Claims 1,3, 5-7, 9, and 11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Fajkowski. (See Final Act. 4-8.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 1,3, 5-7, 9, and 11 under 35 U.S.C.
§ 101. We are persuaded that the Examiner erred in rejecting claims 1,3,
5-7, 9, and 11 under 35 U.S.C. § 102(b).
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Patent Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
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The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores,” and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
The Examiner finds claims 1,3, 5-7, 9, and 11 are directed to an
“abstract idea” of “‘providing an indication of a coupon to a customer that
can be used in a purchase transaction^] ’ which is a fundamental economic
practice.” (Final Act. 2.) According to the Examiner:
Aside from the recitation of a general purpose computer, the
steps of receiving, storing, searching, displaying, and calculating
all describe an abstract idea, devoid of a concrete or tangible
application. The claims merely recite the performance of
business practices using a computer and/or a computer network.
(Id. at 3; August 31, 2015 Advisor Action (“Adv. Act.”) 2.) Appellant
contends that “the Final Action offers no comparison or analysis in relation
to [Supreme Court cases providing examples of ‘abstract ideas’].” (App. Br.
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7-8.) In response, the Examiner cites to one or more cases for each
limitation of claim 1 (Ans. 4—7) and finds that “contrary to the
[A]ppellant[’s] argument, the steps are similar to the concepts identified as
abstract ideas by the courts.” {Id. at 7.) Appellant then contends that the
Examiner’s rejection does not comply with the “Office’s Guidance of May
4, 2016” and that SmartGene, Inc. v. Advanced Biological Labs, SA, 555
Fed. Appx. 950 (Fed. Cir. 2014), one of the cases the Examiner cites, is not
precedential. (Reply 2-3.) Appellant has not persuaded us of Examiner
error. First, there is no requirement that examiners must provide evidentiary
support in every case before a conclusion can be made that a claim is
directed to an abstract idea. See, e.g., para. IV “July 2015 Update: Subject
Matter Eligibility” to 2014 Interim Guidance on Subject Matter Eligibility
(2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (“The courts consider the
determination of whether a claim is eli gible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the ultimate legal
conclusion on eligibility without making any factual findings.”) (emphasis
added). Second, while SmartGene is not precedential, it is persuasive.2
Importantly, in addi tion to the cases the Examiner cites, we find that claim 1
is directed to an abstract idea that is focused on collecting information (from
a user and a database), processing the information, and presenting the
2 Appellant’s contention that SmartGene is inapposite because “the claimed
"searching’ has not and cannot be performed as mental steps by human
beings” in the case of “Figure 2 [of the Specification, which] contemplates at
least [a] 999 coupon data set,” is also not persuasive because the claims are
not limited to a large coupon data set.
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results. See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353—
54 (Fed. Cir. 2016) (“The advance they purport to make is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions.”).
Regarding step two of Alice, Appellant argues that, “the claims recite
‘significantly more’ than any allegedly abstract idea [because, f]or example,
each of claims 1 and 6 recite a ‘memory unit configured to store a coupon
data set including a related item code and a valid coupon number.” (App.
Br. 8; Reply 3-4.) According to Appellant:
the presently pending claims are directed to a specially
programmed computing device that includes improvements in
computing technology such as the embodiments of the contents
of the claimed “memory unit” as shown in Figures 2-6, which
illustrate the various detailed and significant features of a coupon
data set. . . . Thus, the contents of the claimed “memory unit ”
that facilitate the novel operation of the claimed point-of-sales
terminal or system are directed to actual improvements in
computing technology, and therefore provide “significantly
more” than the alleged “abstract idea.” . . .
(Reply 3—4, emphasis added.) We are not persuaded by Appellant’s
argument because the alleged “improvements in computer technology” is
mere attorney argument and a conclusory statement, which is unsupported
by factual evidence, and, thus is entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). In addition, the Specification also does not
support Appellant’s contention that the “the contents of the claimed
‘memory unit’ [] facilitate the novel operation of the claimed point-of-sales
terminal or system are directed to actual improvements in computing
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technology.” (Reply 4.) Figures 2 to 6 merely show “a plurality of
records[,] which are assigned with serial numbers” (Figure 2), whereby each
record “includes items of a ‘coupon number’ and a ‘subject item-quantity’”
(Figure 3). (Spec. 7; see also id. at 7-8 (discussing Figures 4 through 6).) In
short, the Specification, including Figures 2 to 6, merely shows how the
contents are stored in the “memory unit” and do not discuss (or support) how
“the claimed point-of-sales terminal or system are directed to actual
improvements in computing technology.” (Reply 4.) Appellant’s reliance
on Bascom Global Internet v. AT&T Mobility LLC is also misplaced. {Id.)
Unlike in Bascom, where the Federal Circuit found “an inventive concept []
in the non-conventional and non-generic arrangement ofknown[]
conventional pieces,” Appellant has not offered persuasive evidence that the
claimed invention is a “non-conventional and non-generic arrangement of
known[] conventional pieces.” 827 F.3d 1341, 1350 (Fed. Cir. June 27,
2016).
For the foregoing reasons, because claims 1, 3, 5-7, 9, and 11 are
directed to an abstract idea and nothing in the claims adds an inventive
concept, the claims are not patent-eligible under § 101. Therefore, we
sustain the 35 U.S.C. § 101 rejection of claims 1, 3, 5-7, 9, and 11.
Anticipation
With regard to claim 1, the Examiner finds that Fajkowski discloses
“when the input coupon number is valid . . . the input coupon number is
deleted from the result.” (Final Act. 7.) Appellant contends that the
Examiner erred because “Fajkowski merely discloses removing a coupon[,]
which originates from coupon card 1 ([that] is provided by the customer) to
replace it with the scanned-in paper coupon” and not removing the coupon
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number from the search result. (App. Br. 11.) We have reviewed the
portions of Fajkowski cited by the Examiner and agree with Appellant that
the cited portions of Fajkowski do not disclose removing a valid coupon
number from the search result.3 For example, column 18, lines 18 to 21 state
that “if the coupon is for a product for which there is already a redeemable
coupon, steps 220—223 will remove the coupon[,] which originated from
coupon card 1 and substitute the scanned-in paper coupon.'1'’ (Emphasis
added.)
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of independent claim 1, as well as independent claim 6, which
contains a similar limitation and the Examiner makes the same findings.
(Final Act. 5—7.) Therefore, we do not sustain the 35 U.S.C. § 102(b)
rejection of claims 1 and 6, as well as the 35 U.S.C. § 102(b) rejection of
claims 3, 5, 7, 9, and 11, which depend on either claim 1 or 6.
DECISION
We affirm the decision of the Examiner to reject claims 1,3, 5-7, 9,
and 11 under 35 U.S.C. § 101. We reverse the decision of the Examiner to
reject claims 1, 3, 5-7, 9, and 11 under 35 U.S.C. § 102(b).
3 In case of further prosecution, we leave it to the Examiner to consider
whether it would have been obvious to a person of ordinary skill in the art,
in view of Fajkowski, to remove the coupon number from the search result.
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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).
AFFIRMED
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