Ex Parte Nguyen

Patent Trial and Appeal Board

Nov 19, 2012

11001097 (P.T.A.B. Nov. 19, 2012)

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.
11/001,097 12/01/2004 Martin Khang Nguyen 6841P010 7180
7590 11/19/2012
MARTIN KHANG NGUYEN
1300 SOUTH BRISTOL STREET, STE 229
SANTA ANA, CA 92704
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
11/19/2012 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 MARTIN KHANG NGUYEN
____________________

Appeal 2011-005724
Application 11/001,097
Technology Center 3600
____________________

Before MEREDITH C. PETRAVICK, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-61. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM and denominate our affirmance as a NEW GROUND
OF REJECTION.1

BACKGROUND
Appellant’s invention relates to the field of marketing products, and
more specifically, to discount coupons (Spec., para. [001]).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. A method comprising:
[a] interacting with a client having client information in
an on-line transaction with a discount agent to allow the client
to purchase or order a product having product information from
a seller, the discount agent managing discount coupons for the
seller;
[b] providing a discount coupon associated with the
product, the discount coupon containing discount information
for the product; and
[c] forwarding transaction information and the client
information in the on-line transaction from the discount agent to
the seller, the transaction information including at least one of

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed June 29, 2009) and Reply Brief (“Reply Br.,” filed
August 16, 2010) and the Examiner’s Answer (“Ans.,” mailed
June 16, 2010) and Supplemental Answer (“Supp. Ans.,” mailed
November 8, 2010).
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payment information, shipping information, the discount
information, and the product information.

THE REJECTIONS2
The following rejections are before us for review:
Claim 1-61 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-16, 18-36, 38-56, and 58-61 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Meyer (US 6,915,271 B1, iss. Jul. 5, 2005).
Claims 17, 37, and 57 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Meyer in view of Von Kohorn (US 5,057,915, iss.
Oct. 15, 1991).

ANALYSIS
Non-Statutory Subject Matter
Independent claim 1 and dependent claims 2-20
Appellant argues that the Examiner erred in rejecting claims 1-20
under 35 U.S.C. § 101 because the claims satisfy both the machine and
transformation prongs of the Bilski machine-or-transformation test and,
therefore, recite patent-eligible subject matter under § 101 (App. Br. 9-13
and Reply Br. 6). Appellant argues that the machine prong is satisfied
because the claimed method is tied to a machine, i.e., a network or wired or
wireless connection (App. Br. 10-12), and that the transformation prong is
satisfied because

2 The rejection of claims 21-61 under 35 U.S.C. § 112, second paragraph, is
withdrawn (Ans. 3-4).
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all three operations [recited in claim 1] (“Interacting with a
client”, “Providing a discount coupon associated with the
product” and “Forwarding transaction information and the
client information in the on-line transaction to the seller”)
represent physical transformations of physical entities (a client,
client information, a product, a seller) or reduction of client
information to a different state or thing[.]
(App. Br. 12-13).
The Supreme Court clarified in Bilski that the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
patent-eligible ‘process’ under § 101.” Yet the Court explained that this test
remains a “useful and important clue or investigative tool.” See Bilski v.
Kappos, 130 S. Ct. 3218, 3221 (2010).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claimed method requires the use of a network
or wired or wireless connection and that the method, therefore, is tied to a
particular machine (App. Br. 10-12). The Examiner acknowledges that “the
steps ‘interacting with a client’ and ‘forwarding transaction information’ [as
recited in claim 1] require that the method be implemented by a machine”
(Ans. 32-33 and Supp. Ans. 27). However, the mere recitation of the use of
a machine, i.e., in an “on-line transaction,” without more, is insufficient to
render a process patent-eligible where, as here, the machine imposes no
meaningful limits on the execution of the claimed method steps. Instead, the
use of a machine or apparatus that contributes only nominally or
insignificantly to the execution of the claimed method (e.g., in a data
gathering step or in a field-of-use limitation) weighs against patent
eligibility. See Bilski, 130 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S.
584, 590 (1978)), and Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d
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1366 (Fed. Cir. 2011) (while “claim 3 requires an infringer to use the
Internet to obtain that data . . . [t]he Internet is merely described as the
source of the data. We have held that mere ‘[data-gathering] step[s] cannot
make an otherwise nonstatutory claim statutory.”’ In re Grams, 888 F.2d
835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA
1982))).
Appellant claims the abstract concepts of “interacting with a client . . .
to allow the client to purchase or order a product,” “providing a discount
coupon associated with the product,” and “forwarding transaction
information and the client information . . . to the seller” using a computer,
i.e., in the context of an “on-line transaction.” Yet the prohibition against
patenting abstract ideas cannot be circumvented by attempting to limit the
claims to a particular technological environment. See Bilski, 130 S. Ct. at
3230.
In our view, the recitation of “interacting with a client . . . in an on-
line transaction” and “forwarding transaction information . . . in the on-line
transaction” is language related to a field-of-use, and contributes only
nominally to the execution of the method. Therefore, we cannot agree that
the claimed method is tied to a particular machine.
We also are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims meet the transformation prong of the
machine or transformation test. We agree with the Examiner that the
method steps of claim 1 do not transform an article or material to a different
state or thing (Ans. 10-11 and Supp. Ans. 4). The transformation of client
input to allow the client to purchase or order a product via an on-line
transaction, “providing a discount coupon” to a client who previously did
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not possess that coupon, and transferring transaction information from one
location to another (App. Br. 12-13 and Reply Br. 6) are, at best, merely
manipulations of data, which are not sufficient to meet the transformation
prong under 35 U.S.C. § 101. Gottschalk v. Benson, 409 U.S. 63, 71-72
(1972) (prevents the patenting of a computer based algorithm that merely
transforms data from one form to another).
The Supreme Court has made clear that a patent claim’s failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry. See Bilski, 130 S. Ct. at 3227. However we conclude that, absent
other factors weighing either toward or against patent eligibility, the two
machine-or-transformation factors both weighing against patent eligibility
are alone sufficient to establish a prima facie case of patent-ineligibility. See
Bilski, 130 S. Ct. at 3227 (the machine-or-transformation test is “a useful
and important clue, an investigative tool, for determining whether some
claimed inventions are processes under § 101.”)
We conclude that the Examiner correctly determined that claims 1-20
fail to recite patent-eligible subject matter. Appellant has not pointed to any
convincing factors that weigh towards patent eligibility, and we are unable
to find any such factors. Therefore, we will sustain the Examiner’s rejection
of claims 1-20 under 35 U.S.C. § 101.
Because our rationale differs from that set forth by the Examiner, we
denominate this a new ground of rejection under 35 U.S.C. § 101.
See 37 C.F.R. § 41.50(b).

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Independent claim 21 and dependent claims 22-40
Independent claim 21 recites a graphical user interface (“GUI”)
comprising a series of modules, i.e., a client interaction module, a discount
coupon processing module, and a transaction information processing
module. The Examiner determined that the graphical user interface is not a
process, machine, article of manufacture, or composition of matter and,
therefore, is not statutory subject matter protected under 35 U.S.C. § 101
(Ans. 36 and Supp. Ans. 30-31).
Appellant argues that a GUI including processing modules is statutory
because “it involves a machine with parts and devices, operating through
concrete and physical objects” and because the modules are implemented in
a physical system, including a client, networks, etc. (App. Br. 13-14 and
Reply Br. 6). However, Appellant does not explain in what way the claimed
“graphical user interface” is a machine or how the GUI meets the legal
definition of an article of manufacture. See In re Nuijten, 500 F.3d 1346,
1356 (Fed. Cir. 2007) (for legal definition of “manufacture”).
The Specification describes that the “[e]lements of one embodiment
of the invention may be implemented by hardware, firmware, software or
any combination thereof” and that “[w]hen implemented in software, the
elements of an embodiment of the present invention are essentially the code
segments to perform the necessary tasks” (Spec., para. [048]). Giving
claim 21 the broadest reasonable interpretation in light of the Specification,
the claim would appear to encompass software per se. Because a computer
program per se is not patent-eligible subject matter, claim 21 is directed to
subject matter that is non-statutory under § 101. See In re Warmerdam, 33
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F.3d 1354, 1361 (Fed. Cir. 1994). Therefore, we will sustain the Examiner’s
rejection of claims 21-40 under 35 U.S.C. § 101.

Independent claim 41 and dependent claims 42-60
Independent claim 41 recites an article of manufacture comprising,
inter alia, a machine-accessible medium including data that, when accessed
by a machine, causes the machine to perform certain operations, as recited in
the claim. We agree with Appellant that independent claim 41 is written in a
format commonly referred to as a “Beauregard claim” (App. Br. 16), which
is statutory subject matter. See In re Beauregard, 53 F.3d 1583-84 (Fed.
Cir. 1995). Therefore, we will not sustain the Examiner’s rejection of claims
41-60 under 35 U.S.C. § 101.

Independent claim 61
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 61 under 35 U.S.C. § 101 (App. Br. 13-14). Claim
61 recites a system comprising, inter alia, a client and a seller. The
Specification describes that a client may be a consumer or an individual
(Spec., para. [016]), and that a seller also may be an individual (Spec.,
para. [019]). Given its broadest reasonable interpretation, claim 61 thus
claims a human as part of the system. As such, the claim encompasses non-
statutory subject matter. See Manual of Patent Examining Procedure
(MPEP) § 2105 (8th Ed., Rev. 9, Aug. 2012) (“If the broadest reasonable
interpretation of the claimed invention as a whole encompasses a human
organism, then a rejection under 35 U.S.C. [§] 101 . . . must be made
indicating that the claimed invention is directed to . . . nonstatutory subject
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matter.”). Therefore, we will sustain the Examiner’s rejection of claim 61
under 35 U.S.C. § 101.

Anticipation
Independent claims 1, 21, 41, and 61
Appellant argues claims 1, 21, 41, and 61 as a group (App. Br. 16-20).
We select claim 1 as representative of this group. The remaining claims
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)(2011).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Meyer fails to disclose either expressly or
inherently at least one of limitations [a], [b], and [c], as recited in the claim
(App. Br. 16-20). Instead, we agree with the Examiner that Meyer discloses
each of these features.
Appellant argues that Meyer fails to disclose limitation [a] because the
Meyer system merely periodically transmits targeted information to the
consumer about incentives, and does not allow the client to purchase or
order a product in an on-line transaction (App. Br. 17-18). Appellant also
argues that Meyer does not disclose a “discount agent managing discount
coupons for the seller” (App. Br. 17-18).
The Examiner determined that Meyer discloses an on-line purchase
transaction at column 40, line 63 through column 41, line 2, where Meyer
discusses the “‘buy now’” functionality (Ans. 40 and Supp. Ans. 35-36).
We have reviewed this portion of Meyer and conclude that the Examiner’s
finding is reasonable and supported. Describing the “buy now” function,
Meyer states that by pressing a “‘Buy Now’” button from any incentive
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display, a user may go to the site on the Web for purchasing the goods or
services.
We also agree with the Examiner that Meyer discloses a “discount
agent,” as called for in claim 1, i.e., a promotion editor/service provider that
displays and provides coupons to the consumer (Ans. 39-40 and Supp. Ans.
33-34). Appellant makes the bald assertion that “[d]isplaying and providing
coupons does not amount to managing the coupons” (App. Br. 18).
However, Appellant does not so much as attempt to explain what constitutes
“managing” coupons as distinguished from “displaying and providing”
coupons or why Meyer’s promotion editor/service provider is not a
“discount agent,” as called for in the claim 1.
Appellant next argues that Meyer “merely discloses electronically
distributing, dynamically displaying to a consumer . . . promotional
incentives whose characteristics are . . . a function of one or more of
demographics, behavior history, and other characteristics of the viewing
consumer,” and does not disclose “providing a discount coupon associated
with the product, the discount coupon containing discount information for
the product,” as recited in limitation [b] (App. Br. 17). We agree with the
Examiner that Meyer discloses at column 6, lines 44-67 and column 7, lines
1-15 displaying a discount coupon to a user, including discount information,
e.g., the product to which the incentive applies.
Finally, Appellant argues that Meyer merely discloses a service
provider that validates the credit card and sends the purchase order to the
vendor for processing, and does not disclose “forwarding transaction
information and the client information in the on-line transaction from the
discount agent to the seller” (App. Br. 17). The Examiner found that Meyer
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discloses this feature at column 40, line 63 through column 41, line 40 with
respect to the “‘buy now’” functionality and specifically describes at
column 41, lines 22-41 that the service provider collects all the information
from the member necessary for sending to the vendor, i.e., the seller, to
fulfill the purchase, e.g., payment information, shipping address (Ans. 43
and Supp. Ans. 37-38). We have reviewed this portion of Meyer and
conclude that the Examiner’s finding is reasonable and supported.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 21, 41, and 61, which stand or fall with claim 1.

Dependent claims 2, 22, and 42
Appellant argues claims 2, 22, and 42 as a group (App. Br. 19). We
select claim 2 as representative of this group. The remaining claims stand or
fall with claim 2. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 2 depends from claim 1, and recites that interacting comprises
(1) displaying product categories; (2) allowing the client to select a category
from the product categories; (3) displaying at least a discount product
associated with the selected category; and (4) allowing the client to select
the product from the at least discount product. Appellant argues that the
Examiner erred in rejecting claim 2 as anticipated by Meyer because Meyer
“does not allow the client to select a category from the product categories or
allow the client to select the product from the at least discount product”
(App. Br. 19). The Examiner maintains that the rejection is proper and that
Meyer discloses “displaying product categories” at Figure 19 (element 1917)
and column 23, lines 21-24; “allowing the client to select a category from
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the product categories” at column 23, lines 21-24; “displaying at least a
discount product associated with the selected category” at Figure 19
(element 1925), column 24, lines 42-67, and column 25, lines 1-8; and
allowing the client to select the product from the at least discount product at
Figure 31 (elements 3103 and 3105), Figure 33, and column 39, lines 54-67
(Ans. 46 and Supp. Ans. 40-41). We have reviewed these portions of Meyer
and conclude that the Examiner’s finding is reasonable and supported. For
example, Meyer specifically shows in Figure 31 and describes at column 39,
lines 56-67 that a member may go to a page showing all of the member’s
clipped and available incentives/rewards, and may “restrict the display to
particular types of offers, for example, in particular categories . . . .”
We will sustain the Examiner’s rejection of claim 2 under 35 U.S.C.
§ 102(e). We also will sustain the Examiner’s rejection of claims 22 and 42,
which stand or fall with claim 2.

Dependent claims 3, 23, and 43
Appellant argues claims 3, 23, and 43 as a group (App. Br. 19). We
select claim 3 as representative of this group. The remaining claims stand or
fall with claim 3. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 3 depends from claim 2, and recites that the method further
comprises (1) verifying availability of the selected product; (2) updating a
shopping cart with the selected product; and (3) processing check-out.
Appellant argues that the Examiner erred in rejecting claim 3 as anticipated
by Meyer because Meyer merely discloses checking for the existence of
appropriate coupons, which is not the same as “verifying availability of the
selected product,” as recited in claim 3 (App. Br. 19). Appellant thus argues
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that “[w]hen the service provider [in Meyer] checks for the coupons, the
member already selects the items and puts [them] in the shopping cart”
(App. Br. 19). We agree with the Examiner that Meyer discloses this feature
at column 7, lines 13-15 where Meyer describes that, in the case of a
discount coupon, a POS list is maintained that identifies the merchants that
have the product (Ans. 47 and Supp. Ans. 41), i.e., the availability of the
associated product is verified.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 3 under 35 U.S.C. § 102(e); we also will sustain the Examiner’s
rejection of claims 23 and 43, which stand or fall with claim 3.

Dependent claims 4-16, 18-20, 24-36, 38-40, 44-56, and 58-60
Each of dependent claims 4-16, 18-20, 24-36, 38-40, 44-56, and 58-60
depends ultimately from one of independent claims 1, 21, 41, and 61. We
will sustain the Examiner’s rejection of these dependent claims under
35 U.S.C. § 102(e), which were not separately argued.

Obviousness
Dependent claims 17, 37, and 57
Appellant argues claims 17, 37, and 57 as a group (App. Br. 20-23).
We select claim 17 as representative of this group. The remaining claims
stand or fall with claim 17. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 17 depends ultimately from claim 1, and recites that processing
the payment comprises “transferring a specified amount from a discount
amount in the discount coupon to a financial entity[,] including one of an
investment service provider, a stock service provider, a mutual fund
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provider, a banking service provider, a trust fund, and a financial
management service provider.” Appellant argues that the Examiner erred in
rejecting claim 17 under 35 U.S.C. § 103(a) for the same reasons as set forth
with respect to claim 1 and further because neither Meyer nor Von Kohorn
discloses or suggests transferring a specified amount from a discount in a
discount coupon to a financial entity, as recited in claim 17 (App. Br. 21-22).
Appellant also maintains that there would have been no apparent reason to
combine Meyer and Von Kohorn (App. Br. 22-23).
Von Kohorn discloses a system and method for evaluating responses
to broadcast programs, e.g., television programs, and describes that members
of a remote audience have an opportunity to respond to a situation presented
in the television program by entering a response on a keyboard. A prize-
winning respondent can select a product from a listing and apply the value of
a prize to the purchase price of the selected product (Von Kohorn, Abstr.).
Alternatively, Von Kohorn describes that, when desired by the participant,
the prize amount can be electronically transferred by the subscription service
to a bank account of the participant (Von Kohorn, col. 72, ll. 51-55 and
col. 73, ll. 53-60).
In our view, modifying Meyer to allow the transfer of the discount
amount to a financial entity, as taught by Von Kohorn, would have been no
more than the combination of known elements according to their known
function, and yields a predictable result; therefore, it would have been
obvious at the time Appellant’s invention was made. See KSR Int’l Co. v.
Teleflex, Inc., 550 U. S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”). The Examiner’s reasoning that one
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skilled in the art would have incorporated Von Kohorn’s teaching into the
system of Meyer to “endow the client with greater flexibility to redeem
his/her prize [i.e., discount]” (Ans. 52 and Supp. Ans. 46) also is adequately
supported by rational underpinnings.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 17 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claims 37 and 57, which stand or fall with claim 17.

DECISION
The Examiner’s rejection of claims 1-40 and 61 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 41-60 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 1-16, 18-36, 38-56, and 58-61
under 35 U.S.C. § 102(e) is affirmed.
The Examiner’s rejection of claims 17, 37, and 57 under
35 U.S.C. § 103(a) is affirmed.

This decision contains a new rationale for affirmance pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.” 37 C.F.R.
§ 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the Examiner.

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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