Ex Parte Matthew

Patent Trial and Appeal Board

Oct 31, 2018

10918127 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/918, 127 08/13/2004 Alan Matthew
28710 7590 10/31/2018
PETER K. TRZYNA, ESQ.
PO BOX 7131
CHICAGO, IL 60680
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.
Mathew-Pl-04 4246
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
10/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN MATTHEW
Appeal2018-008889 1
Application 10/918,127
Technology Center 3600
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-18 and 21---68, which are all the claims pending in this application.
Claims 19 and 20 are cancelled. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 Review of this appeal has been expedited in response to a petition to make
special under 37 C.F.R. § l.102(c)(l) that was GRANTED on January 5,
2018.
2 According to Appellant, the real party in interest is the named inventor,
Alan Matthew. App. Br. 2.
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Application 10/918,127
STATEMENT OF THE CASE
Introduction
Embodiments of Appellant's invention relate to a "[m]achine for, and
method of, collecting consumer accessible transaction data." (Abstract).
Exemplary Claim
1. A method of using an apparatus comprising a computer system to
produce updated profile data which is provided so that the
updated profile data can be viewed by a customer member of a
member system including customer members and retail
members, the method including the steps of:
receiving, by a computer system, a customer identifier of a
customer member of a member system associated with a sale
transaction with a retail member among different companies of a
member system;
receiving, by the computer system, transaction data from the sale
transaction and a retailer identifier of the retail member carrying
out the sale transaction, wherein the customer identifier and the
retail identifier are not used to carry out the sale transaction;
using, by the computer system, the customer identifier to identify
a profile of the customer member in a database;
inserting, by the computer system, the transaction data into the
profile in the database to produce updated profile data;
providing, by the computer system to a data sales, storage, and
marketing component of the computer system, the updated data
so that the updated profile data can be viewed by the customer
member; and
providing, by the computer system, revenue for the member
system by mining, by the data sales, storage, and marketing
component, the sale transaction data and the updated profile data
which produces data that is sold while providing the updated
profile data to the retail member either without charge or at a rate
that is discounted with respect to other entities that receive the
sold data.
App. Br. 112.
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Rejection
Claims 1-18 and 21---68 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception, without significantly more. Final Act. 3.
Issue on Appeal
Did the Examiner err in rejecting claims 1-18 and 21---68 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 U.S. C. § 1 OJ
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.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (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, 82-84 (2012), "for distinguishing patents that claim laws of
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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. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017). Otherwise, the inquiry proceeds to the second step in which 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, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
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Prosecution History in light of Berkheimer v. HP Inc.
At the outset, we note Berkheimer v. HP Inc., 881 F.3d 1360 (Fed.
Cir. 2018) was decided on February 8, 2018, and is cited by Appellant in the
Appeal Brief (p. 86, et seq.), and the Reply Brief. The Berkheimer court
held: "Whether something is well-understood, routine, and conventional to
a skilled artisan at the time of the patent is a factual determination." Id. at
1369 ( emphasis added).
As additional guidance, Appellant cites to the new mandatory
examination procedure issued by the USPTO on April 19, 2018, entitled
"'Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.).'" (hereinafter "USPTO Berkheimer Memorandum"). See App. Br.
86.
We note the Examiner's Final Action was mailed on March, 23, 2017,
almost eleven months before the Berkheimer decision, and over a year
before the USPTO Berkheimer Memorandum was issued on April 19, 2018.
However, Appellant's Appeal Brief was filed on May 17, 2018, more
than three months after the Berkheimer decision, and almost a month after
the USPTO Berkheimer Memorandum was published (April 19, 2018).
Therefore, Appellant had constructive notice of both the Berkheimer
decision and the USPTO Berkheimer Memorandum when the Appeal Brief
and subsequent Reply Brief were filed.
The USPTO Berkheimer Memorandum requires a Patent Examiner to
support with factual evidence any allegation that claim elements ( or a
combination of elements) were well-understood, routine, or conventional, at
the time the invention was filed. Four specific types of acceptable factual
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evidence are enumerated in the Memorandum. For convenience, we
reproduce below the substantive changes to prior examination practice, as
set forth in the USPTO Berkheimer Memorandum (3--4):
A. Formulating Rejections: In a step 2B analysis, an
additional element ( or combination of elements) is not well-
understood, routine or conventional unless the examiner finds,
and expressly supports a rejection in writing with, one or more
of the following:
1. A citation to an express statement in the specification or
to a statement made by an applicant during prosecution
that demonstrates the well-understood, routine,
conventional nature of the additional element( s ). A
specification demonstrates the well-understood, routine,
conventional nature of additional elements when it
describes the additional elements as well-understood or
routine or conventional ( or an equivalent term), as a
commercially available product, or in a manner that
indicates that the additional elements are sufficiently
well-known that the specification does not need to
describe the particulars of such additional elements to
satisfy 35 U.S.C. § 112(a). A finding that an element is
well-understood, routine, or conventional cannot be
based only on the fact that the specification is silent with
respect to describing such element.
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05( d)(II) as noting the well-understood,
routine, conventional nature of the additional element( s ).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element( s ). An appropriate publication could include a
book, manual, review article, or other source that
describes the state of the art and discusses what is well-
known and in common use in the relevant industry. It
does not include all items that might otherwise qualify as
a "printed publication" as used in 35 U.S.C. § 102.[]
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Whether something is disclosed in a document that is
considered a "printed publication" under 35 U.S.C. § 102
is a distinct inquiry from whether something is well-
known, routine, conventional activity. A document may
be a printed publication but still fail to establish that
something it describes is well-understood, routine,
conventional activity. See Exergen Corp., 2018 WL
1193529, at *4 (the single copy of a thesis written in
German and located in a German university library
considered to be a "printed publication" in Hall "would
not suffice to establish that something is 'well-
understood, routine, and conventional activity previously
engaged in by scientists who work in the field'"). The
nature of the publication and the description of the
additional elements in the publication would need to
demonstrate that the additional elements are widely
prevalent or in common use in the relevant field,
comparable to the types of activity or elements that are so
well-known that they do not need to be described in
detail in a patent application to satisfy 35 U.S.C.
§ 112(a). For example, while U.S. patents and published
applications are publications, merely finding the
additional element in a single patent or published
application would not be sufficient to demonstrate that
the additional element is well-understood, routine,
conventional, unless the patent or published application
demonstrates that the additional element are widely
prevalent or in common use in the relevant field.
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element( s ). This option should be used only
when the examiner is certain, based upon his or her
personal knowledge, that the additional element( s)
represents well-understood, routine, conventional activity
engaged in by those in the relevant art, in that the
additional elements are widely prevalent or in common
use in the relevant field, comparable to the types of
activity or elements that are so well-known that they do
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not need to be described in detail in a patent application
to satisfy 35 U.S.C. § 112(a). Procedures for taking
official notice and addressing an applicant's challenge to
official notice are discussed in MPEP § 2144.03.
In reviewing the prosecution history, we note the Examiner did not
have the benefit of the guidance of the Berkheimer decision and the US PTO
Berkheimer Memorandum until the Examiner's Answer was mailed on July
16, 2018. Therefore, we focus our analysis infra on the Examiner's
responsive explanations in the Answer, and Appellant's corresponding
rebuttals in the Reply Brief, to the extent such rebuttals are timely in
response to a change in the Examiner's legal reasoning and/or findings, as a
result of the Berkheimer decision and the US PTO Berkheimer
Memorandum. See 37 C.F.R. §4I.41(b)(2).
The Examiner's Rejection A under 35 U.S.C. § 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes claims 1-18 and 21---68 are directed to an abstract idea:
The claims recite a contractual arrangement or relationship that
sells mined transaction data. This is similar to managing a
transaction between two people or creating a contractual
relationship (buySAFE)[ 3]; Collecting information, analyzing
it, and displaying certain results of the collection and analysis
(Electric Power Group); and arranging, storing, retrieving,
sorting, eliminating, and determining information with a
computer (Versata).[ 4 ] The claim recites steps that are broadly
3 The Examiner is referring to buySAFE, Inc. v. Google, Inc., 765 F.3d 1350
(Fed. Cir. 2014) (A guaranty service for online transactions is abstract).
4 The Examiner is referring to Versata Dev. Group, Inc v. SAP
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interpreted as receiving, storing, comparing the stored
information (to identify); formatting information for display,
transmission (providing) data that can be viewed. This is simply
the reception, storage, organization, comparison (analysis) and
transmission of data to manage a transaction or agreement.
Therefore, the claim is directed to an abstract idea.
Final Act. 7. 5
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds:
The claims do not recite any additional limitations besides
using the apparatus comprising a computer system, to transmit
i.e. receive and send information over a network. The generically
recited computer system is generically applied to the abstract
idea to implement it on a computer. The computer system
performs the generic functions of receiving, storing, inserting
data, updating data and information and mining transaction and
customer data details at a high level of generality. The apparatus
is recited at a high level of generality ( comprising a computer
system) and its broadest reasonable interpretation comprises only
a processor, a memory, and at least one database to store and to
simply perform the generic computer functions of receiving,
storing, processing and transmitting information.
The steps of receiving data, inserting data, updating the
data and mining the updated data are interpreted as routine and
conventional, and thus not significantly more (Ultramercial,[ 6]
Flook). Mining data is interpreted as routine, and conventional.
Am., Inc., 793 F.3d 1306, 1331 (Fed. Cir. 2015).
5 "Patent eligibility under § 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
6 The Examiner is referring to Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714--715 (Fed. Cir. 2014) (An online method of ad serving is abstract).
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Generic computers performing generic computer functions,
alone, do not amount to significantly more than the abstract idea.
The courts have found the functions of arranging, storing,
retrieving, sorting, eliminating, and determining information
with a computer to be well understood, routine and conventional
functions of a computer system (Versata).[ 7]
Instructing one to "apply" an abstract idea and reciting no
more than generic computer elements performing generic
computer tasks does not make an abstract idea patent eligible.
See Alice, 134 S. Ct. at 2359---60 (holding patent ineligible claims
that "amount to nothing significantly more than an instruction to
apply the abstract idea . . . using some unspecified, generic
computer" and in which "each step does no more than require a
generic computer to perform generic computer functions"
(internal quotation marks, citation omitted)); Ultramercial, 772
F.3d at 716 ("Adding routine[,] additional steps ... does not
transform an otherwise abstract idea into patent eligible subject
matter."); Bancorp, 687 F.3d at 1274, 1278 (appending generic
computer components does not "salvage an otherwise patent-
ineligible process"); CyberSource, 654 F.3d at 1375 ("[T]he
incidental use of a computer to perform the [ claimed process]
does not impose a sufficiently meaningful limitation on the
claim's *3-4 (Fed. Cir. June 11, 2015).
There is no recitation of any limitation that is interpreted
as significantly more in the dependent claims. While these claims
may have a narrower scope than the representative claims, no
dependent claim contains an "inventive concept" that
transforms the corresponding claim into a patent-eligible
application of the otherwise ineligible abstract idea. For
example describing what the transmitted message comprises, or
7 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer, 881
F.3d at 1368.
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the destination of where the transmission is sent or using the data
to generate a report does not render the claim statutory.
Final Act. 7-9 ( emphasis added).
Thus, the Examiner finds the claims do not include additional
elements that are significantly more than the judicial exception. Final Act.
9.
For the aforementioned reasons, the Examiner concludes that all
claims 1-18 and 21---68 on appeal are not patent eligible under 35 U.S.C.
§ 101.
Claims 1-18 and 21-68
Mayol Alice Analysis - Step 1
We disagree with Appellant's arguments, and agree with and adopt
the Examiner's underlying Berkheimer factual findings (under step 2) and
the Examiner's ultimate legal conclusion that all claims 1-18 and 21-68 on
appeal are directed to a judicial exception, (i.e., the abstract idea of a
fundamental economic practice under step 1 ), without significantly more.
Regarding Alice Step 1, Appellant notes that "[t ]he Final Rejection
states at P. 6 for the Mayo step 1 that 'The claims are directed to a method
and a trade system.' This is not a proper articulation of an abstract idea. A
'method' is of course a statutory category, and thus claims drawn to the
statutory category can never per se be an abstract idea." App. Br. 87.
Appellant further contends: "A trade system is not per se an abstract idea
either - thus the Final Rejection commences with an erroneous contention
under Mayo step 1." Id.
We emphasize that the issue of whether a claim is directed to a
judicial exception, such as an abstract idea, is separate and independent from
whether a claim is directed to statutory subject matter (i.e., "any new and
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useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof' -35 U.S.C. § 101). Claims that fall
within one of the four subject matter categories may nevertheless be
ineligible if they encompass laws of nature, physical phenomena, or abstract
ideas. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
Here, Appellant's claim 1 positively recites steps of "receiving" that
we conclude gather or collect information:
receiving, by a computer system, a customer identifier of
a customer member of a member system associated with a sale
transaction with a retail member among different companies of
a member system;
receiving, by the computer system, transaction data from
the sale transaction and a retailer identifier of the retail
member carrying out the sale transaction, wherein the customer
identifier and the retail identifier are not used to carry out the
sale transaction;
Our reviewing court has held that claims directed to data collection,
analysis, and display are directed to an abstract idea. Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent-
ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093-94 (Fed. Cir. 2016).
Data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
ajf'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010). The Federal Circuit
has concluded that abstract ideas include the concepts of collecting data,
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recognizing certain data within the collected data set, and storing the data in
memory. Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations,
LLC v. Chi. Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding
"claims directed to the collection, storage, and recognition of data are
directed to an abstract idea").
Moreover, Appellant's claims are directed to the results of: (1)
"providing ... updated profile data [that] can be viewed by the customer
member, and (2) "providing ... revenue for the member system by mining
... the sale transaction data and the updated profile data." Claim 1.
However, McRO, Inc. v. Bandai Namco Games America Inc., (837
F.3d 1299, 1312 (Fed. Cir. 2016)) guides that "[t]he abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' ( quoting O'Reilly v. Morse, 56 U.S.
62, 113 (1854)) (emphasis added).
Here, Appellant merely claims a generic computer system and
database. (Independent claims 1, 21, 40, and 55). Our claim interpretation
is consistent with Appellant's Specification (p. 17, 1. 21), which expressly
describes the use of generic databases and computers: "The database 220
can utilize conventional database software." (Emphasis added). See also
Spec. 14, 11. 8-12: "as used herein, the term 'computer' generally refers to
hardware or hardware in combination with one or more program( s ), such as
can be implemented in software. Computer aspects can be implemented on
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general purpose computers or specialized devices, and can operate
electrically, optically, or in any other fashion." (emphasis added). 8
Therefore, on this record, we are not persuaded the Examiner erred in
concluding that claims 1-18 and 21---68 are directed to an abstract idea.
Accordingly, we proceed to Alice Step 2.
Mayo/Alice Analysis-Step 2
Because we conclude claims 1-18 and 21---68 are directed to an
abstract idea for essentially the same reasons articulated by the Examiner
(Final Act. 7), we tum to the second part of the Alice/Mayo 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.
Regarding Alice Step 2, Appellant urges:
there are no pending novelty or obviousness rejections, and in
this regard, the distinguishing limitations in the claims are not
generally known, are not routine and conventional, are not
found in the cited references previously relied upon in prior art
rejections on this record, and are not found in the alleged
abstract idea. The distinguishing limitations constitute the
"significantly more" than the abstract idea and constitute the
"significantly more" than the instruction to implement the
abstract idea on a generic computer.
Reply Br. 3.
Appellant further contends the Examiner has not demonstrated "the
additional element[ s] [are] well-understood, routine, and conventional
because the Examiner has not shown a lack of novelty or obviousness in the
8 We give the claims their broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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claim requirements individually, and more so the ordered combination of the
claims each as a whole. See Claims 1-18, 21-39, 40-54, and 55-68." Reply
Br. 9 ( emphasis added).
However, the Supreme Court guides: "The '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 that " [ e] ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that "even assuming" that a particular
claimed feature was novel does not "avoid the problem of abstractness").
In the Reply Brief ( 4), Appellant contends the Examiner erred because
"in the Federal Circuit Berkheimer decision, as in this appeal, there is an
underlying question of fact for which the Examiner provided no evidence."
See also Reply Br. 9 ("The Berkheimer Memorandum lists 4 kinds of
acceptable evidence: ... [of which there is] [n]one in this appeal.").
However, Appellant's contention ignores the Examiner's Answer (5),
in which the Examiner further explained the basis for the rejection:
The Appellant's background admits that the problem the
Appellants [sic] are solving is one of economic convenience.
The background describes that the [ A ]ppellant is addressing the
issue of keeping track of plurality of cards and related points
and incentives earned from using the cards being burdensome.
The examiner does not interpret this as a technical problem
being addressed by a well-described solution either in the
specification or in the claims.
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The problem of keeping track of incentives is not a
technical problem but a problem related to organizing a human
activity and a fundamental economic practice of tracking,
registering cash and other transactions for the benefit of
merchants and incentive programs.
Ans. 5.
We find Appellant's "Background of the Invention" describes the
existing known problem of having too many cards to carry and keep track of
regarding points and incentives:
People simply have too many cards to carry: charge
cards, bank cards, debt cards, store cards, etc. Because of the
abundance of cards, keeping track of points and incentives from
using the cards becomes burdensome. Because people have too
many cards, they can sometimes miss out on discounts or
rebates, for example, where they do not have a particular card
with them. Another problem is the tracking and registering of
cash and other transactions for the benefit of merchants and
incentive programs.
Spec. 4, 11. 1-7.
Appellant's Specification further describes an improved card system
for unifying data from independent financial events:
To improve over prior approaches, there can be a card
system specifically for unifying data from independent financial
events, for example, the card system can unify transactions
comprising cash, an American Express or
Visa/Mastercard/Discover/ etc. charge card, and/a debt card
usage. In this regard it is for card in connection with, but not to
carry out, a point of sale-type transaction. However,
embodiments may not be limited as regards a point-of-sale, e.g.,
in the situation of an Internet purchase, and embodiments need
not be limited to purchase of goods and/ or services, e.g., in the
case of an ATM or other financial transaction - or even a
financial transaction whatsoever, where other data is being
acquired for unification as discussed hereinafter. This "non-
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credit card" card system, which for the sake of convenience
herein, is named the "PASS" 'non-credit card' card, can (ins
some embodiments) have the look and feel of a credit or debit
card, but the PASS can instead be utilized in registering
transaction information and thus habits of the card holder.
Unlike a comp card for gambling, a PASS handles multiple
types of transactions and multiple merchants, etc. PASS is not a
limited to one facility or entity or type of transaction.
Spec. 6, 11. 6-19.
We find the aforementioned statement by Appellant evidences at least
that well known, routine, and conventional.financial transactions
comprising cash, an American Express or Visa/Mastercard/Discover are
directed to a fundamental economic practice (i.e., an abstract idea) that is
also addressed by Appellant's PASS card that registers the same financial
transactions, albeit for the different purpose of recording the "habits of the
card holder." Id.
Thus, we find the Examiner provided "[a] citation to an express
statement in the specification or to a statement made by an [ A ]pplicant
during prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s)." (USPTO Berkheimer
Memorandum (3)).
In determining whether claims are patent-eligible under Section 101,
our reviewing court provides applicable guidance: "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016). The Federal Circuit also guides that
"[E]xaminers are to continue to determine if the claim recites (i.e., sets forth
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or describes) a concept that is similar to concepts previously found abstract
by the courts." Id. at 1294 n.2.
Regarding the second step of the Mayol Alice analysis, the Examiner
cites case law in support, inter alia, and finds:
The claims do not recite any additional limitations besides
using the apparatus comprising a computer system, to transmit
i.e. receive and send information over a network. The generically
recited computer system is generically applied to the abstract
idea to implement it on a computer. The computer system
performs the generic functions of receiving, storing, inserting
data, updating data and information and mining transaction and
customer data details at a high level of generality. The apparatus
is recited at a high level of generality ( comprising a computer
system) and its broadest reasonable interpretation comprises only
a processor, a memory, and at least one database to store and to
simply perform the generic computer functions of receiving,
storing, processing and transmitting information.
The steps of receiving data, inserting data, updating the
data and mining the updated data are interpreted as routine and
conventional, and thus not significantly more (Ultramercial,
Flook). Mining data is interpreted as routine, and conventional.
Generic computers performing generic computer functions,
alone, do not amount to significantly more than the abstract idea.
The courts have found the functions of arranging, storing,
retrieving, sorting, eliminating, and determining information
with a computer to be well understood, routine and conventional
functions of a computer system (Versata).[ 9]
Instructing one to "apply" an abstract idea and reciting no
more than generic computer elements performing generic
computer tasks does not make an abstract idea patent eligible.
See Alice, 134 S. Ct. at 2359-60 (holding patent ineligible claims
that "amount to nothing significantly more than an instruction to
apply the abstract idea . . . using some unspecified, generic
9 See supra, n. 7.
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computer" and in which "each step does no more than require a
generic computer to perform generic computer functions"
(internal quotation marks, citation omitted)); Ultramercial, 772
F.3d at 716 ("Adding routine[,] additional steps ... does not
transform an otherwise abstract idea into patent eligible subject
matter."); Bancorp, 687 F.3d at 1274, 1278 (appending generic
computer components does not "salvage an otherwise patent-
ineligible process"); CyberSource, 654 F.3d at 1375 ("[T]he
incidental use of a computer to perform the [ claimed process]
does not impose a sufficiently meaningful limitation on the
claim's *3-4 (Fed. Cir. June 11, 2015).
There is no recitation of any limitation that is interpreted
as significantly more in the dependent claims. While these claims
may have a narrower scope than the representative claims, no
dependent claim contains an "inventive concept" that transforms
the corresponding claim into a patent-eligible application of the
otherwise ineligible abstract idea. For example describing what
the transmitted message comprises, or the destination of where
the transmission is sent or using the data to generate a report does
not render the claim statutory.
Final Act. 7-9 ( emphasis added regarding the cases cited by the Examiner).
Thus, the Examiner provided citations (id.) to one or more of the court
decisions that collectively provide the second type of permissible fact
finding enumerated in the USPTO Berkheimer Memorandum (4): "A
citation to one or more of the court decisions discussed in MPEP §
2106.05(d)(II) as noting the well-understood, routine, conventional nature of
the additional element( s ). " In the Answer ( 5-11 ), the Examiner provides
further citations to one or more court decisions that provide the second type
of permissible fact finding enumerated in the US PTO Berkheimer
Memorandum.
Although Appellant reproduces much of the Examiner's responses of
record in the Reply Brief, Appellant fails to traverse the Examiner's specific
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findings regarding the Federal Circuit cases relied upon as factual
Berkheimer evidence by the Examiner, by substantively and persuasively
distinguishing the instant claims on appeal from the subject claims
considered by the court in the cases cited by the Examiner. See Ans. 5-11.
Therefore, we conclude Appellant's arguments for Alice step 2 of claims
1-18 and 21-68, as advanced in the Reply Brief, are essentially conclusory.
We find claims 1-18 and 21-68 on appeal are silent regarding specific
limitations directed to an improved computer system, processor, memory,
network, database, or Internet. We emphasize again that Appellant's
Specification (p. 17, 1. 21) expressly describes: "The database 220 can
utilize conventional database software." (Emphasis added). See also Spec.
17, 11. 2-3: "Client computer 200 can handle POS [ (Point of Sale)]
functionality, shown singularly with the understanding that it is
representative of a plurality of such computers." See also Spec. 14, 11. 10-
11: "Computer aspects can be implemented on general purpose computers."
( emphasis added).
Regarding the use of the recited generic "computer system" and
"database" ( claim 1 ), the Supreme Court held "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2358; see also Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
2016) ("An abstract idea on 'an Internet computer network' or on a generic
computer is still an abstract idea.").
Given the supporting description in Appellant's Specification (pages
14 and 17) of a generic computer and conventional database, we find
Appellant's claims 1-18 and 21---68 do not provide a solution "necessarily
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rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," as considered by the court in
DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014). (Emphasis added).
Our reviewing court has "repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." Elec. Power Grp., 830 F.3d at 1355 (internal citations
omitted); see also Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both a
generic computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions . . . . That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.").
Because none of Appellant's claims 1-18 and 21---68 is directed to an
improvement in a processor, database, or other computer/network
component, we conclude that none of the claim limitations, viewed both
individually and as an ordered combination, amounts to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter.
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayo/Alice analysis, that
each of Appellant's claims 1-18 and 21---68, considered as a whole, is
directed to (under step one), a patent-ineligible abstract idea, and under step
two, does not recite something "significantly more" (Alice, 134 S. Ct. at
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2357 (internal citation and quotations omitted)) to transform the nature of
the claim into a patent-eligible application.
Contrary to Appellant's contentions (Reply Br. 18-19), we
additionally find the Examiner has met the notice requirement for a prima
facie case, pursuant to 35 U.S.C. § 132(a). The Federal Circuit has held,
"the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007).
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must "notify the applicant," "stating the reasons
for such rejection," "together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
This burden is met by "adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to respond."
Hyatt, 492 F.3d at 1370. It is only "when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection" that the prima facie burden has not been met and the
rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
Nor do we find the factual bases for the Examiner's rejection are
contrary to the Administrative Procedures Act (5 U.S.C. § 706), due to the
purported absence of substantial evidence and factual determinations, as
argued by Appellant. (Reply Br. 20). The Examiner provides factual
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evidence referring to Appellant's Specification and also to various Federal
Circuit cases, in accordance with the first two enumerated types of factual
evidence required by the USPTO Berkheimer Memorandum. Moreover,
judicial review of alleged agency violations of the AP A falls under the
subject matter jurisdiction of the Federal Circuit.
Accordingly, for at least these reasons, we sustain the Examiner's
rejection under 35 U.S.C. § 101 of claims 1-18 and 21---68, as being directed
to patent-ineligible subject matter in light of Alice and its progeny. 10 11
10 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
11 We note independent claim 40 recites in pertinent part: "Method of using
an apparatus configured to produce updated profile data which is provided
so that the updated profile data can be viewed by a customer member of a
member system including customer members and retail members, the
method including the steps of: .... " Regarding independent claim 40, and
the claims which depend therefrom, "[a] single claim which claims both an
apparatus and the method steps of using the apparatus is indefinite under 35
U.S.C. 112, second paragraph." MPEP § 2173.05(p)(II) (citing In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed.
Cir. 2011) (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384
(Fed. Cir. 2005))).
Therefore, in the event of further prosecution, we leave it to the Examiner
to consider a rejection under pre-AIA 35 U.S.C. § 112, second paragraph, of
claims 40-54. Although the Board is authorized to reject claims under 37
C.F .R. § 41.50(b ), no inference should be drawn when the Board elects not
to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02
(9th Ed., Rev. 08.2017, last revised January 2018).
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Conclusion
The Examiner did not err in rejecting claims 1-18 and 21---68 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
DECISION
We affirm the Examiner's decision rejecting claims 1-18 and 21---68
under 35 U.S.C. § 101.
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
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