Ex Parte Kim et al

Patent Trials and Appeals Board

Jan 29, 2019

13098371 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/098,371 04/29/2011 Nancy Kim
66945 7590 01/31/2019
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
P-41026US/l 19945-410261US 8584
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/31/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NANCY KIM and DIANE C. SALMON 1
Appeal2017-010412
Application 13/098,371
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
LARRY J. HUME, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, 4, 8, 11, and 13. Claims 3, 5-7, 9,
10, 12, and 14--19 have been canceled. Final Act. 1-2.2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest, according to Appellants, is Visa U.S.A. Inc. See
Appeal Br. 2.
2 We refer to Appellants' Specification ("Spec.") filed Apr. 29, 2011
(claiming benefit of 61/329,377 filed Apr. 29, 2010); Appeal Brief ("Appeal
Br.") filed Feb. 9, 2017; Supplemental Appeal Brief ("Supp. App. Br.") filed
Mar. 20, 2017; and Reply Brief ("Reply Br.") filed Aug. 2, 2017. We also
refer to the Examiner's Final Office Action ("Final Act.") mailed
June 9, 2016; and Answer ("Ans.") mailed June 2, 2017.
Appeal2017-010412
Application 13/098,3 71
Appellants 'Invention
The invention relates generally "to systems for rewarding account
holders for commercial loyalty, and more particularly to the account holders
redeeming a reward currency for financial currency selected by the account
holders" (Spec. ,r 3). See Spec. ,r,r 20-22; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer implemented method comprising:
providing a computer apparatus having:
a transaction handler configured on an electronic
payment processing network connecting separate computers,
including
merchant computers configured to initiate
transactions of payments in the electronic payment processing
network using financial accounts of account holders;
first computers controlling the financial
accounts;
second computers controlling merchant
accounts into which the payments are made in the electronic
payment processing network; and
the transaction handler interconnecting the first
computers and the second computers in the electronic payment
processing network;
a transaction database configured to store details of
the transactions processed by the transaction handler in the
electronic payment processing network;
a statement credit trigger database;
a matching engine;
2
Appeal2017-010412
Application 13/098,3 71
sending, by the computer apparatus via a network
connection to an address corresponding to an account holder, an
offer for a virtual gift card;
receiving, in the computer apparatus via the network
connection, a request from an account holder to redeem reward
points from a non-financial currency account in exchange for the
virtual gift card having an expiration date, wherein
the non-financial currency account was issued by a
first issuer to the account holder,
the account holder has a balance of reward points in
the non-financial currency account,
the account holder has a financial currency account
disparate from the non-financial currency account, and
the financial currency account was issued to the
account holder by a second issuer; and
transmitting, by the transaction handler via the electronic
payment processing network, a communication to the first issuer
in response to the request, the communication configured to
cause the first issuer to deduct a predetermined number of reward
points from the balance of reward points in the non-financial
currency account of the account holder;
creating, by the computer apparatus in the statement credit
trigger database, a statement credit trigger implementing the
virtual gift card, wherein the statement credit trigger is
configured to identify:
attributes of a qualifying transaction that will trigger
a statement credit,
the expiration date of the virtual gift card,
a monetary amount to be credited back to the
financial currency account of the account holder upon execution
of the qualifying transaction, and
the predetermined number of reward points
deducted from the nonfinancial currency account;
processing, by the transaction handler configured in the
electronic payment processing network, the transactions of
3
Appeal2017-010412
Application 13/098,3 71
payments in the electronic payment processing network to
generate the details of the transactions stored in the transaction
database, wherein the details of the transactions include records
of transactions conducted by the account holder with a merchant;
comparing, by the matching engine, the statement credit
trigger with the records of the transactions conducted by the
account holder with the merchant;
determining, by the computer apparatus based on a result
of the comparing by the matching engine using the statement
credit trigger, whether the qualifying transaction exists prior to
the expiration date, wherein:
in response to the qualifying transaction made prior
to the expiration date, the transaction handler is configured to
communicate via the electronic payment processing network
with the second issuer to credit at least a portion of the monetary
amount identified in the statement credit trigger to the financial
currency account of the account holder;
after the expiration date,
deleting, by the computer apparatus from the
statement credit trigger database, the statement credit trigger
implementing the virtual gift card, and
communicating, by the transaction handler via the
electronic payment processing network, with the first issuer to
add reward points corresponding to a balance of the monetary
amount identified in the statement credit trigger to the non-
financial currency account of the account holder.
Rejection on Appeal
The Examiner rejects claims 1, 2, 4, 8, 11, and 13 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
ISSUE
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issue before us follows:
4
Appeal2017-010412
Application 13/098,3 71
Did the Examiner err in finding Appellants' claims were directed to
patent-ineligible subject matter, without significantly more, under 35 U.S.C.
§ 101?
ANALYSIS
The Examiner rejects claims 1, 2, 4, 8, 11, and 13 as a group based on
claim 1 (see Final Act. 2-8) and concludes claim 1 is directed to patent-
ineligible subject matter in that claim 1 is "directed to a judicial exception
(i.e., a law of nature, a natural phenomenon, or an abstract idea) without
significantly more." Final Act 3. Specifically, the Examiner reiterates a
majority of the claim language as being the "abstract idea" to which
"[c]laim(s) 1-2, 4, 8, 11 and 13 is/are directed." Final Act. 3; see Final
Act. 3--4. The Examiner explains that the abstract idea "is merely an idea
'of itself' and mathematical relationships/formulas" (Final Act. 4). The
Examiner also reiterates the limitations of claim 1 and concludes the claims
do "not include additional elements that are sufficient to amount to
significantly more than the judicial exception" (Final Act. 5). See Final
Act. 5-7.
Appellants contend the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 7-20;
Reply Br. 2-10. Specifically, Appellants contend "the Examiner has failed
to establish that the claims are directed to an abstract idea" (Appeal Br. 7)
because "[ t ]he Examiner has basically taken the entirety of the claim and has
called it an 'abstract idea,"' which Appellants contend "is clearly improper"
(Appeal Br. 8) and the Examiner is "interpreting ... the alleged abstract idea
in the claims ... at such a high level, that no computer implemented
invention would ever be patentable." Appeal Br. 10; see Appeal Br. 10-12.
5
Appeal2017-010412
Application 13/098,3 71
Appellants further contend the "claims are not directed to an abstract idea,
because the claims address a problem arising in the realm of computer
networks and provide a solution entirely rooted in computer technology,"
and specifically "[ e ]mbodiments of the invention improve upon
conventional systems and methods that might use traditional plastic gift
cards." Appeal Br. 12; see Appeal Br. 12-15. Appellants also contend the
claims "are similar to those in" McRO (McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)) (Appeal Br. 19) in that they recite
an "improvement in computer-related technology" (Appeal Br. 20 ( quotation
omitted)). See Appeal Br. 19-20. Additionally, Appellants contend the
Examiner incorrectly characterizes the claim as a "business practice," and
that the claims (in particular claim 1) "constitute 'significantly more' than
any alleged abstract idea" (Appeal Br. 16). Appellants reiterate claim 1 and
explain that many of the limitations
are not the performance of some "business practice," but are
steps that involve the receipt of data, creation of rules, the
application of rules to transaction data, the deletion of rules
according to certain conditions, all in a distributed system
involving a consumer, merchant, transaction handler, and
issuers. Such activities are computer-related, and are technical
in nature, and are not merely the performance of a "business
practice" as alleged by the Examiner.
Appeal Br. 18-19; see Appeal Br. 15-19.
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. Pty.
6
Appeal2017-010412
Application 13/098,3 71
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (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, 573 U.S. at
217. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk."). Concepts determined to be abstract
ideas, and thus patent ineligible include, but are not limited to, certain
methods of organizing human activity, such as fundamental economic
practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental
processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework 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
7
Appeal2017-010412
Application 13/098,3 71
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 ( alteration in original)
(quoting Mayo, 566 U.S. at 72-73). "A claim that recites an abstract idea
must include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Alice, 573 U.S.
at 221 ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic
computer implementation[] fail[ s] to transform that abstract idea into a
patent-eligible invention." Id.
The Court acknowledged 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 whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes) (hereinafter "Step 2A, prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
8
Appeal2017-010412
Application 13/098,3 71
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 3
See 2019 Revised Guidance.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner determines independent claim 1 is directed to the
abstract idea (see Ans. 3-5), which is a "fundamental economic practice"
(Ans. 5) similar to several cases including Alice. See Ans. 5-8. Here, in
rejecting the claims (in particular claim 1) under 35 U.S.C. § 101, the
Examiner analyzed the claims using the Mayol Alice two-step framework,
3 Items (3) and (4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
9
Appeal2017-010412
Application 13/098,3 71
consistent with the guidance set forth in the USPTO's "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014 ), in effect at the time the rejection was made, i.e., on June 9,
2016. We agree with the Examiner that Appellants' claim 1 (and the other
pending claims) are directed to patent-ineligible abstract ideas or concepts.
In view of the 2019 Revised Guidance, we clarify and expand the
Examiner's reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellants claim 1. Claim 1 recites a computer implemented transaction
processing method for "rewarding account holders for commercial loyalty"
by "redeeming a reward currency for financial currency" (Spec. ,r 3).
Initially, the claim recites a computer implemented transaction processing
method providing a computer apparatus including a transaction handler, a
statement credit trigger database, and a matching engine. The transaction
processing method includes additional features (elements) that are
appurtenant to the transaction processing method and do not further limit the
recited limitation. These elements include: the computer apparatus and its
components-the transaction handler, transaction database, statement credit
trigger database, and matching engine. The additional elements also include:
the EPPN, merchant computers, first computers, financial accounts, second
computers, and merchant accounts.
The transaction handler is part of an electronic payment processing
network (EPPN) and interconnects various computers in the EPPN,
including: merchant computers to initiate payment transactions from
financial accounts into merchant accounts, first computers controlling the
financial accounts, and second computers controlling the merchant accounts.
10
Appeal2017-010412
Application 13/098,3 71
The transaction handler is also capable of storing transaction details in a
transaction database. Appellants' Specification does not define the
transaction handler, but explains that the transaction handler (see element
402 in Fig. 4) may be an interchange center (see element 540 in Fig. 5). See
Spec. ,r 82. The transaction handler is essentially software performing
various processes for interfacing computers that, in tum, control accounts
and perform transactions (initiate payments between accounts), and for
storing transaction details in a database. See, e.g., Spec. ,r,r 90-91, 95-96.
In each instance the above-identified additional elements consist of
structural elements that, while necessary to perform the functionality of the
transaction processing method, do not limit how the functionality is actually
performed. For example, transaction processing method recites "a
transaction database" that is "configured to store details of the transactions
processed by the transaction handler" ( claim 1 ). The claim does not recite
the transaction database and the transaction handler affirmatively performing
any functionality. Rather the claim merely recited the intended purpose of
these elements-to process transactions and store information ( details of the
transactions). The actual processing and storing are addressed in more detail
infra.
Claim 1 also recites "sending, by the computer apparatus via a
network connection to an address corresponding to an account holder, an
offer for a virtual gift card" ( claim 1 ). That is, sending an offer for a virtual
gift card. The computer apparatus (previously recited in the claim) and the
network connection represent additional elements that do not further limit
the recited limitation.
11
Appeal2017-010412
Application 13/098,3 71
Claim 1 further recites "receiving, in the computer apparatus via the
network connection, a request from an account holder to redeem reward
points from a non-financial currency account in exchange for the virtual gift
card having an expiration date." This limitation also delineates a number of
additional elements that do not further limit the scope of the transaction
processing method. These elements include: "the non-financial currency
account" that is (was) "issued by a first issuer to the account holder," "the
account holder" who has "a balance of reward points in the non-financial
currency account," "the account holder having (has) "a financial currency
account disparate from the non-financial currency account," and "the
financial currency account" that is (was) "issued to the account holder by a
second issuer." Accordingly, we construe this limitation to mean receiving a
request to redeem reward points (from a separate non-financial currency
(i.e., non-monetary) account) (the "reward account") for a virtual gift card.
The account holder has two accounts-the reward account issued from a
first issuer and the financial account issued by a second issuer-and the
account holder has a balance of reward points in the reward account.
Further, receiving a request (to redeem rewards for a gift card) is simply
receiving information. This process does not actually require any
affirmative action (e.g., the redemption of the gift card), or in any way limit
how the information is received.
Claim 1 also recites
transmitting, by the transaction handler via the electronic
payment processing network, a communication to the first issuer
in response to the request, the communication configured to
cause the first issuer to deduct a predetermined number of reward
points from the balance of reward points in the non-financial
currency account of the account holder
12
Appeal2017-010412
Application 13/098,3 71
( claim 1 ). That is, transmitting a communication, responsive to the request,
to deduct a predetermined number of reward points from the balance of
reward points in the reward account. As with the previous limitations, this
limitation recites additional features that do not further limit the scope of the
transaction processing method. These elements include the transaction
handler, which performs the transmitting (functionality) via the network
(EPPN) to the first issuer. These elements also include the purpose of the
communication, which is "configured to cause" (causes) the first issuer to
deduct a predetermined number of reward points from the balance of reward
points in the reward account (non-financial currency account of the account
holder). This "deducting" clause is tangentially (indirectly) recited and does
not require any affirmative action. For the purpose of our interpretation,
however, we construe the limitation as requiring performance of deducting
rewards-that is, causing the first issuer to deduct reward points.
Claim 1 further recites
creating, by the computer apparatus in the statement credit
trigger database, a statement credit trigger implementing the
virtual gift card, wherein the statement credit trigger is
configured to identify:
attributes of a qualifying transaction that will trigger
a statement credit,
the expiration date of the virtual gift card,
a monetary amount to be credited back to the
financial currency account of the account holder upon execution
of the qualifying transaction, and
the predetermined number of reward points
deducted from the nonfinancial currency account;
( claim 1). That is, creating a trigger ( statement credit trigger) in a database
( statement credit trigger database) that fulfills (implements) the gift card.
As with the previous limitations, this limitation recites additional features
13
Appeal2017-010412
Application 13/098,3 71
that do not further limit the scope of the transaction processing method-the
computer apparatus performs the creating (functionality) in the database.
The purpose of the created statement credit trigger is to implement or fulfil
the gift card when certain conditions are identified. The created statement
credit trigger is merely "configured to" identify several pieces of
information: attributes of a qualifying transaction (that will trigger a
statement credit), the expiration date of the virtual gift card, a monetary
amount that will be credited back to the financial currency account ( of the
account holder) when the qualifying transaction occurs, and a corresponding
(predetermined) number of reward points that will be deducted from the
reward account (nonfinancial currency account). This "implementing" and
"identifying" clauses are tangentially (indirectly) recited and do not require
any affirmative action. For the purpose of our interpretation, however, we
assume the limitation requires performance of "implementing" the gift card
and "identifying" the recited information. Additionally, the fulfilment of the
gift card is treated in more detail under the "determining" step discussed
infra.
Claim 1 also recites
processing, by the transaction handler configured in the
electronic payment processing network, the transactions of
payments in the electronic payment processing network to
generate the details of the transactions stored in the transaction
database, wherein the details of the transactions include records
of transactions conducted by the account holder with a merchant
( claim 1 ). That is, processing the transactions and generating transaction
details to be stored. Processing transactions and generating transaction
details are part of the transaction process. Storing the transaction details
("details of the transactions stored in the transaction database) is not
14
Appeal2017-010412
Application 13/098,3 71
affirmatively recited. We construe the limitation, however, to require the
transaction details to be stored in the transaction database. Further, as with
the previous limitations, this limitation recites additional features that do not
further limit the scope of the transaction processing method-the transaction
handler configured in the EPPN ( to perform the processing of the
transactions of payments) in the EPPN and the transaction database.
Accordingly, this limitation simply requires processing of the transactions
(the transactions are first recited with respect to the transactions database in
the first limitation) to generate the details of the transactions that are then
stored in the transaction database. In other words, extracting information
from transactions that is stored in a database. The details of the transactions
also include "records" of transactions conducted by the account holder with
a merchant.
Claim 1 further recites "comparing, by the matching engine, the
statement credit trigger with the records of the transactions conducted by the
account holder with the merchant." In other words, comparing the trigger
with the records (transaction details). As with the previous limitations, this
limitation includes an additional element, the match engine that does not
further limit the scope of the transaction processing method. As with the
transaction handler discussed previously, the matching engine is essentially
software performing the functionality (process) of comparing information.
Claim 1 additionally recites
determining, by the computer apparatus based on a result
of the comparing by the matching engine using the statement
credit trigger, whether the qualifying transaction exists prior to
the expiration date, wherein:
in response to the qualifying transaction made prior
to the expiration date, the transaction handler is configured to
15
Appeal2017-010412
Application 13/098,3 71
communicate via the electronic payment processing network
with the second issuer to credit at least a portion of the monetary
amount identified in the statement credit trigger to the financial
currency account of the account holder
( claim 1 ). That is, determining, based on the comparison, whether a
qualifying transaction has occurred before an expiration date and, if so,
sending a communication ( communicating) to credit the financial account.
This is the corollary process to the "fulfilment" previously discussed
(supra). That is, the identified predetermined number of reward points is
deducted from the reward (nonfinancial currency) account and a portion of
the monetary value identified in the statement credit trigger is credited to the
financial currency account. Also, as explained supra, the accounts, EPPN,
and computers are additional elements that does not further limit the scope
of the transaction processing method.
After the expiration date ( of the virtual gift card), claim 1 recites
"deleting, by the computer apparatus from the statement credit trigger
database, the statement credit trigger implementing the virtual gift card" and
"communicating, by the transaction handler via the electronic payment
processing network, with the first issuer to add reward points corresponding
to a balance of the monetary amount identified in the statement credit trigger
to the non-financial currency account of the account holder That is, deleting,
after the expiration date, the statement credit trigger from the statement
credit trigger database." That is, deleting, after the expiration date, the
statement credit trigger from the statement credit trigger database; and
communicating (sending a communication), after the expiration date, to add
reward points to the reward account. Also, as explained supra, the statement
credit trigger database, transaction handler, and accounts are additional
16
Appeal2017-010412
Application 13/098,3 71
elements that does not further limit the scope of the transaction processing
method.
In summary, claim 1 recites a computer implemented transaction
processing method, including the steps of: sending an offer for a virtual gift
card; receiving a request to redeem reward points for the virtual gift card;
transmitting a communication, responsive to the request, to deduct reward
points from the balance of reward points; creating a statement credit trigger
in the statement credit trigger database for implementing the virtual gift
card; processing transactions and generating transaction details to be stored
in the transaction database; comparing the statement credit trigger with the
records in the statement credit trigger database ( the generated transaction
details); determining whether a qualifying transaction has occurred before an
expiration date and, if so, sending a communication to credit a financial
account; and after the expiration date, deleting the statement credit trigger
from the statement credit trigger database and communicating to credit ( add)
reward points to the reward account. Hereinafter, we refer to this method as
the "transaction processing method" or "gift card transaction processing
method."
We find that the claim recites a method (process) which is a statutory
category of invention (subject matter) (USPTO's Step 1 ). Utilizing our
interpretation of claim 1 (supra), we analyze whether the claim is directed to
an abstract idea (USPTO's Step 2A). Here, Appellants' claims generally,
and independent claim 1 in particular ( as summarized, supra), relate to gift
card transaction processing. This is consistent with how Appellants describe
the claimed invention. See Appeal Br. 2--4 (citing Spec. ,r,r 39--53, 82-85;
Figs. 1, 2, 4).
17
Appeal2017-010412
Application 13/098,3 71
Appellants' claim 1 recites a judicial exception (USPTO' s Step 2A,
Prong 1; see 2019 Revised Guidance). The gift card transaction processing
method is a method of organizing human activity, in particular, a
fundamental economic practice.
Transaction processing is a well-known business practice that is not
patent eligible. See Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
873 F.3d 1364, 1371-72 (Fed. Cir. 2017) ("Taken together, the Asserted
Claims are directed to the formation of financial transactions in a particular
field ... and data collection related to such transactions," which is "an
abstract idea under Alice step one."); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'! Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(summarizing precedent in which "claims directed to the performance of
certain financial transactions" involve abstract ideas and holding that claims
drawn to the abstract concept of financial transaction-related "data
collection, recognition, and storage is undisputedly well-known.");
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 patent-ineligible subject
matter); see also Smariflash LLC v. Apple Inc., 680 Fed. Appx. 977, 982
(Fed. Cir. 2017) (Claims directed to "conditioning and controlling access to
data based on payment," i.e., performing financial transactions is an abstract
idea-specifically, a "fundamental economic practice.").
Further, "the use of gift certificates [ or gift cards] is a longstanding,
fundamental economic practice" and "[ a ]pp lying the ... computer
components to the commercial practice of electronic gift certificates does
not preclude a finding that the [process] is abstract," similar to Alice,
18
Appeal2017-010412
Application 13/098,3 71
Cybersource, and Content Extraction. Coqui Technologies, LLC v. Gyft,
Inc., 2018 WL 6033479, *4 (D. Del., 2018). "The essentially result-focused,
functional character of claim language has been a frequent feature of claims
held ineligible under § 101, especially in the area of using generic computer
and network technology to carry out economic transactions" involving, for
example, exchanging monetary credits for rewards points. Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (citing
Loyalty Conversion Sys. Corp. v. American Airlines, Inc., 66 F.Supp.3d 829,
837-38, 840, 843, 845 (E.D. Tex. 2014)).
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellants' claim 1 also recites additional elements beyond the
abstract gift card transaction process (processing method) ( the judicial
exception) (supra). These elements include, as previously discussed
(supra): the computer apparatus, the transaction handler, the transaction
database, the statement credit trigger database, the matching engine, the
EPPN (network), the merchant computers, the first computers, the second
computers, the financial currency account, the nonfinancial currency account
(reward account), and the merchant accounts.
We evaluate these additional elements to determine whether the
additional elements integrate the abstract gift card transaction process (the
judicial exception) into a practical application of the exception (USPTO's
Step 2A, Prong 2; see 2019 Revised Guidance). Appellants contend (supra)
that the claims "improve upon conventional systems and methods that might
use traditional plastic gift cards" (Appeal Br. 12; see Appeal Br. 12-15) and
recite an "improvement in computer-related technology" (Appeal Br. 20
(quotation omitted)) similar to the claims in McRO (see Appeal Br. 19). In
19
Appeal2017-010412
Application 13/098,3 71
other words, Appellants contend the claims recite meaningful limitations
that sufficiently limit the practical application of the alleged abstract idea.
We disagree. Appellants' additional elements ( or the combination of the
additional elements) do not apply or use the gift card transaction process (the
judicial exception) in a manner that imposes a meaningful limit on the
judicial exception, such that it is more than a drafting effort designed to
monopolize the exception. See Alice, 573 U.S. at 221-24 (citing Mayo, 566
U.S. at 78-85). Rather, Appellants' claims recite computers (the computer
apparatus and various other computers) and data structures ( databases and
accounts stored in computer memory) that are utilized as tools to perform
the gift card transaction process (the abstract idea). Utilizing a computer as
a tool to perform the abstract idea does not impose a meaningful limit on the
abstract idea. See MPEP § 2106.05(±); see also Alice, 573 U.S. at 223 ("if
[the] recitation of a computer amounts to a mere instruction to implement an
abstract idea on a computer that addition cannot impart patent eligibility"
( quotations and internal citations omitted)).
Appellants also contend (supra) that their claims "address a problem
arising in the realm of computer networks and provide a solution entirely
rooted in computer technology." Appeal Br. 12. Again, we disagree.
Appellants' claims can be distinguished from patent-eligible claims such as
those in McRO, Enfzsh, Bascom (Bascom Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)) and DDR Holdings
(DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014))
that are directed to "a specific means or method that improves the relevant
technology" (McRO, 837 F.3d at 1314), or "a specific improvement to the
way computers operate" (Enfzsh, 822 F.3d at 1336), solving a technology-
20
Appeal2017-010412
Application 13/098,3 71
based problem (BASCOM, 827 F.3d at 1349--52), or a method "rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]" (DDR Holdings, 773 F.3d at 1257).
Contrary to Appellants' arguments, claim 1 is not a technological
improvement or an improvement in a technology. Appellants' claim 1 does
not "improve the functioning of the computer itself' or "any other
technology or technical field." Alice, 573 U.S. at 225. Nor, does it provide
a technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257. See MPEP § 2106.05(a). Rather, Appellants' claims and, in
particular, the above-identified additional elements are similar to the claims
in Alice (see Alice, 573 U.S. at 225-26) and Versata Dev. Group, Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1333-34 (Fed. Cir. 2015) in that the instant claims
implement a known business practice utilizing a general purpose computer.
In summary, "the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
13 54 (Fed. Cir. 2016). Thus, we agree with the Examiner that the claims are
directed to the abstract idea of performing "a series of steps for a travel-
related financial transaction, which are a fundamental economic practice"
(Final Act. 2), or as we clarify (supra) performing a transaction approval
process utilizing a generic computer.
Step 2B Analysis-"Significantly More"
Having concluded Appellants' claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an "'inventive concept'
21
Appeal2017-010412
Application 13/098,3 71
sufficient to 'transform the nature of the claim into a patent-eligible
application."' McRO, 837 F.3d at 1312 ( quoting Alice, 573 U.S. at 217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) ( quoting Alice, 573 U.S. at 225). The "inventive
concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1349 (Fed. Cir. 2016) (citation omitted).
Here, the Examiner determined that Appellants' claims do not add
significantly more. The Examiner reiterated the limitations of claim 1 and
determined the claims do "not include additional elements that are sufficient
to amount to significantly more than the judicial exception" (Final Act. 5).
See Final Act. 5-7. Appellants contend the claims "constitute 'significantly
more' than any alleged abstract idea" (Appeal Br. 16) and also reiterate
claim 1, explaining that many of the limitations
are not the performance of some "business practice," but are
steps that involve the receipt of data, creation of rules, the
application of rules to transaction data, the deletion of rules
according to certain conditions, all in a distributed system
involving a consumer, merchant, transaction handler, and
issuers. Such activities are computer-related, and are technical
in nature, and are not merely the performance of a "business
practice" as alleged by the Examiner.
Appeal Br. 18-19; see Appeal Br. 15-19. Appellants fail to persuade us of
error in the Examiner's rejection with respect to the second Alice step. We
agree with the Examiner that Appellants' claim 1 ( and the other pending
claims) does not evince an "inventive concept" that is significantly more
22
Appeal2017-010412
Application 13/098,3 71
than the abstract idea itself. In particular, Appellants fail to explain how the
limitations (above) are not part and parcel of the abstract business practice-
the gift card transaction process (processing method). Nor do Appellants
explain how the additional features ( additional elements, see supra)
(individually and in combination) are not routine or are unconventional.
As previously discussed, claim 1 ( and the other pending claims)
merely recites additional non-abstract elements (above) - specifically
computers, and utilizing computers, networks, and databases ( conventional
computers and conventional computer processes) to receive, store, and
analyze information, and to generate transaction information. Appellants'
Specification describes the computers as conventional (generic) computers.
See, e.g., Spec. ,r,r 79, 91 (the "system includes a general-purpose
computer," "which can be used to implement at least some of the
components of a virtual gift card system"), 92.
Accordingly, Appellants' Specification itself describes the additional
elements as being well-understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016)(citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under § 101 of independent claim 1, independent claim
8, and dependent claims 2, 4, 11, and 13, which were not separately argued
with specificity.
23
Appeal2017-010412
Application 13/098,3 71
CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
1, 2, 4, 8, 11, and 13 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1, 2, 4, 8, 11, and 13.
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. § 4I.50(f).
AFFIRMED
24