Ex Parte Purdy et al

Patent Trial and Appeal Board

Mar 12, 2019

12679920 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/679,920 12/03/2010
1059 7590 03/14/2019
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40th Floor
TORONTO, ON MSH 3Y2
CANADA
FIRST NAMED INVENTOR
Robert Purdy
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.
20329-P33052US01 1685
EXAMINER
HAIDER,FAWAAD
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
ipprocessingcentre@bereskinparr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT PURDY, TIM MIRECKI, and
PHILIP DALY
Appeal2017-009934
Application 12/679,920 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITT A, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 8, 9, 15, 16, 22, 23, 27, and 34, which are all of the claims pending in
the application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Carlton Group Ltd. as the real party in interest. See
App. Br. 2.
2 Claims 1-7, 10-14, 17-21, 24--26, and 28-33 have been cancelled.
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Application 12/679,920
STATEMENT OF THE CASE
According to Appellants, the claims are directed to a computer system
for managing an incentive program. Abstract. 3 Claim 8, reproduced below,
is representative of the claimed subject matter:
8. A method of creating and managing incentive programs
for a plurality of client organizations, the method comprising:
providing a provider server coupled to a remote
communication network, the provider server comprising a
processor and a memory storing instructions which, when
executed by the processor, cause the processor to be configured
to provide an interface that is accessible for inputting information
about each of the plurality of client organizations;
the provider server providing a hierarchy module adapted
for receiving, from each of the plurality of client organizations
via the remote communication network, information concerning
the organizational structure of that client organization, the
hierarchy module being further adapted to manage said
information for each of the plurality of client organizations, said
information concerning each client organization being organized
into nodes of a data structure editable by selected authorized
users from that client organization, with each node
corresponding to a structural component or subcomponent in the
organizational structure of the client organization, wherein said
hierarchy module is further adapted for receiving data
concerning personnel of a given client organization of the
plurality of client organizations;
the provider server providing an incentive module adapted
for receiving and managing information to create and manage
one or more incentive programs associated with one or more
nodes for each client organization of the plurality of client
3 This Decision refers to: (1) Appellants' Specification filed March 25, 2010
(Spec.); (2) the Final Office Action (Final Act.) mailed September 8, 2016;
(3) the Appeal Brief (App. Br.) filed February 2, 2017; (4) the Examiner's
Answer (Ans.) mailed May 17, 2017; and (5) the Reply Brief (Reply Br.)
filed July 14, 2017.
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organizations, wherein said incentive module is further adapted
for receiving sales target criteria and one or more rewards for a
designated incentive program of the one or more incentive
programs, wherein said incentive module is further adapted for
associating said sales target criteria with one or more of said
personnel, and wherein said sales target criteria includes a
plurality of sales targets joined using specified logical operators;
and
the provider server providing a permissions module adapted for
receiving and managing information concerning the selected
authorized users from each client organization of the plurality of
client organizations, said information including usemame and
password information for each authorized user, wherein said
information indicates that each authorized user is a member of
the organizational structure of their respective client
organization, and wherein said information is used to determine
that each authorized user is permitted to edit the nodes of the data
structure for the authorized user's respective client organization;
and
the provider server providing an automated invoicing module
adapted for automatically issuing invoices to a given client
organization of the plurality of client organizations based upon
predefined criteria, the predefined criteria comprising a
transaction from a first currency provided by the given client
organization and a second currency predefined by the provider
server, wherein said predefined criteria includes rewards issued
to personnel of the given client organization through its
respective one or more incentive programs.
REJECTION
Claims 8, 9, 15, 16, 22, 23, 27, and 34 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 2-8.
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Our review in this appeal is limited to the above rejection and the
issues raised by Appellants. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 4I.37(c)(l)(iv).
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." 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 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)). Concepts
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determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim
at issue recited a mathematical formula, but the Supreme Court held that "[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula." Diehr, 450
U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing
more than a process for molding rubber products and not as an attempt to
patent a mathematical formula."). Having said that, the Supreme Court
citing Benson and Flook, also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citations omitted); see, e.g., id. at 187 ("It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
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monopolize the [abstract idea]."' Id. ( 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.
USPTO January 7, 2019 Revised Section 1 OJ Memorandum
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019 ("Memorandum")). Under the Memorandum
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
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
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ANALYSIS
Appellants argue the claims as a group, proposing claim 8 as a
representative claim. See App. Br. 9. We select independent claim 8 as
exemplary of Appellants' arguments for claims 8, 9, 15, 16, 22, 23, 27, and
34. See 37 C.F.R. § 4I.37(c)(1)(iv)(2016).
The Examiner determines the claims are directed to an abstract idea,
namely, "incentive programs," which, according to the Examiner, are a
"method of organizing human activities." Final Act. 2; see Ans. 5. The
Examiner also determines the claims "do not include additional elements
that are sufficient to amount to significantly more than the judicial
exception." Final Act. 2-3; see Ans. 5.
Appellants present several arguments against the§ 101 rejection. We
do not find Appellants' arguments persuasive, as discussed in greater detail
below. The Examiner has provided a comprehensive response to
Appellants' arguments supported by a preponderance of evidence. See
Ans. 3---6. Thus, we adopt the Examiner's findings and conclusions. See
Final Act. 2-9; Ans. 3---6. We analyze the claims under the 2019 Revised
§ 101 Guidance and adopt the nomenclature for the steps used in the
Memorandum.
STEP 1
Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. Initially, the
Examiner determines, and we agree, that the "claims fall within the four
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statutory categories of [i]nvention." Final Act. 3. Indeed, independent
claims 8 and 22 recite methods, independent claim 15 recites a server, and
independent claim 27 recites a non-transitory computer readable medium.
As such, the claims are directed to statutory classes of invention within 35
U.S.C. § 101, i.e., processes, a machine, and a manufacture.
STEP 2A Prong 1
Under Step 2A, Prong 1 of the Memorandum, we must determine
whether claim 8, being directed to a statutory class of invention, nonetheless
falls within a judicial exception.
The Examiner determines that claim 8 is directed to a "method of
organizing human activities," namely "incentive programs" (Final Act. 3--4;
Ans. 5) and "agreements between people or performance of financial
transactions" (Final Act. 6). As such, the Examiner determines claim 8 is
directed to an abstract idea. Ans. 5; Final Act. 3, 6.
Appellants argue the Examiner's characterization of claim 8
"disregard[ s] other features of the claim[]" and "also mischaracterizes and
overgeneralizes the claim[]." App. Br. 12-13. In particular, Appellants
point out that "the recited hierarchy module in particular" shows the claim is
"directed to providing a computer system with a hierarchical data structure
that facilitates self-management by users other than an administrator of the
computer system itself." Reply Br. 2; App. Br. 13.
Appellants' arguments do not persuade us of error in the Examiner's
determination that claim 8 is directed to an abstract idea. Both the
Specification and the claim language support the Examiner's determination
that the invention is directed to organizing human activities, namely,
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incentive programs. Indeed, the Specification describes the system is
provided "to create and manage incentive programs that are specific to ...
client organization[s]." Spec. ,r 5; see id. ,r,r 1-2. Correspondingly, claim 8
recites "an incentive module adapted for receiving and managing
information to create and manage one or more incentive programs" and "an
automated invoicing module adapted for automatically issuing invoices ...
based upon predefined criteria, ... includ[ing] rewards issued ...
through ... incentive programs." Appellants ignore the recited incentive
program and instead highlight the "hierarchy module" recited in the claim.
But the hierarchy module serves to collect and store the information used to
implement the incentive program (which we discuss in further detail below)
and thus, the hierarchy module simply assists in the implementation of the
abstract idea. Moreover, this concept of managing incentive programs is
similar to fundamental economic practices, or other types of "organizing
human activity" that have been found to be abstract ideas by the Supreme
Court and the Federal Circuit. See, e.g., Alice, 134 S. Ct. at 2357
(intermediated settlement); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1361-62 (Fed. Cir. 2015) (offer-based price optimization); buySAFE,
Inc. v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (transaction
performance guarantee); and Planet Bingo, LLC v. VKGS LLC, 57 6
Fed.Appx. 1005, 1007 (Fed. Cir. 2014) (managing a game of bingo). From
this we conclude that claim 8 recites a method of organizing human activity.
Furthermore, although not relied upon to make our decision, we note
that the invention could also be fairly characterized as a mental process.
Examining information necessary for determining whether members of an
organization, e.g., employees of a business (Spec. ,r 6), have met incentive
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targets, e.g., a number of days without an injury (id. Fig. 20), is a process of
observation and evaluation which can be fully performed within the mind.
STEP 2A Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223,
discussing Diehr, 450 U.S. at 175.
The Examiner determines the claim does not "purport to improve the
functioning of the computer itself," nor does the claim "effect an
improvement in any other technology or technical field." Ans. 6; see Final
Act. 4, 8. We agree with the Examiner.
Appellants argue "the focus of the claimed advance is in providing the
technical means by which human database administrators can be relieved of
having to perform manual data entry," specifically highlighting the claimed
hierarchy module as the means for doing so. Reply Br. 2; see App. Br. 13.
As an initial matter, the claim does not recite language limiting or defining
how that hierarchy information is received or how administrators are
relieved from having to perform manual data entry; therefore, Appellants'
alleged "advance" in data entry is not reflected in the claim. Indeed, the
claim only recites that the "hierarchy module" "receiv[ es] ... information
concerning the organization structure of [a] client organization," "receiv[es]
data concerning personnel of a given client organization," and stores that
information "into nodes of a data structure," but does not otherwise describe
the claimed data receiving.
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Moreover, the "data entry" relief Appellants refer to is still performed
manually, just by a different party. The Specification describes that, instead
of database administrators- i.e., the provider of the incentive management
system - entering information, a "client" - i.e., the user of the incentive
management system- "may be able to input their organizational or
corporate structure." Spec. ,r 21; see Spec. ,r 25. Accordingly, the
"advance" highlighted by Appellants is that a different person manually
enters information to be stored, which does not improve the functioning of
the computer, but instead improves the functioning of the operator providing
the incentive management program by reducing costs to the operator.
Spec. ,r,r 3--4 (Previously, "data [were] added to the system by the system
operator," which "involve[d] significant time and effort by the system
operator." The improvement "reduces or eliminates costs to the system
operator."). That is, the improvement described uses technology in a
conventional way to achieve a business goal, rather than improving
technology, and, accordingly, does not confer patent eligibility.
Appellants' additional argument that the claimed "limitations also
solve a technical problem ( e.g., restricting access to certain data)" (App.
Br. 15; Reply Br. 5) also fails to persuade us the claim is patent-eligible.
Appellants' Specification describes that the ability to restrict access to data
is known in the art. Specifically, "[l]ogin screens or windows, as known to
those of the skill in the art, may be used. Accessing system 10 may further
be by any other method known in the art." Spec. ,r 50. Accordingly,
restricting access to data is not a technical problem solved by Appellants'
invention because the Specification describes that the solution is already
known in the art and uses that solution to implement the invention. Similar
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to our discussion above, rather than improving authentication technology,
conventional authentication is deployed to implement the incentive program.
In view of Appellants' Specification, and consistent with the
Examiner's determinations, claim 8 is not directed to a specific asserted
improvement in computer technological implementation or otherwise
integrated into a practical application and thus is directed to a judicial
exception.
STEP 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 53 U.S. at 217 ( quoting Mayo, 566
U.S. at 72-73).
The Examiner determines the claim recites "the use of generic
computing functions to implement the abstract idea" and so "do[ es] not
provide additional elements that provide significantly more than the abstract
idea." Ans. 5; see Final Act. 6-7.
Appellants argue the
specific features of the hierarchy module (to allow editing of the
nodes), the permissions module (to determine users to edit the
hierarchy) and the remote communication network, work in
combination to provide the advantages ... of enabling a self-
managed automated system, in which manual intervention by a
provider is not required.
App. Br. 15; Reply Br. 5. Appellants conclude that the limitations, "when
taken as an ordered combination, provide unconventional steps that confine
the abstract idea to a particular useful application." App. Br. 15; Reply
Br. 5.
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We agree with the Examiner's finding that that the steps of receiving,
processing, storing, calculating, and transmitting information are well-
understood, routine, and conventional computing functions. See Final
Act. 6-7. All the claimed steps are performed by "a provider server." The
server provides a number of modules that receive certain information, store
information, analyze information, or output information, e.g., information
related to organizational structure, personnel, incentive management, sales
target criteria, authentication, and rewards. Considering the claimed
elements separately, each of these computer functions are generic, routine,
and conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (the "focus of the asserted claims ... is on collecting
information, analyzing it, and displaying certain results of the collection and
analysis"); see also In re Katz Interactive Call Processing Patent Litigation,
639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' ... those
functions can be achieved by any general purpose computer without special
programming"). None of these activities is used in an unconventional
manner nor do any of these activities produce an unexpected result. In short,
each step does no more than require a generic computer server (the claimed
"provider server") to perform generic computer functions. As to the
information operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
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Further, considered as an ordered combination, the computer
components of Appellants' method claim add nothing that is not already
present when the steps are considered separately. Appellants highlight the
ordered combination of information receiving and editing. App. Br. 15.
But, the sequence of information reception, storage, modification, analysis,
and output is generic and conventional or has been otherwise held to be
abstract. See Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Two-Way Media Ltd. v. Comcast Cable
Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
processing, routing, controlling, and monitoring). The ordering of the steps
is therefore ordinary and conventional. We, thus, conclude that the claim
does not provide an inventive concept because the additional elements
recited in claim 8 do not provide significantly more than the recited judicial
exception.
Accordingly, claim 8 does not recite patent-eligible subject matter;
because claim 8 is representative (App. Br. 9), we also conclude that
remaining claims 9, 15, 16, 22, 23, 27, and 34 also do not recite patent-
eligible subject matter.
DECISION
We affirm the Examiner's rejection of claims 8, 9, 15, 16, 22, 23, 27,
and 34 under 35 U.S.C. § 101.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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