Ex Parte Rampell et al

Patent Trial and Appeal Board

Mar 24, 2017

13444161 (P.T.A.B. Mar. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/444,161 04/11/2012 Alastair Rampell TR-99001US14/090426-30433 8540
113349 7590 03/28/2017
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/28/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALASTAIR RAMPELL, ALEXANDER E. CAMPBELL,
and TERRY ANGELOS
Appeal 2015-0015201
Application 13/444,161
Technology Center 3600
Before PHILIP J. HOFFMANN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL2
The Appellants3 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 We note related Appeal 2014-009111, application no. 13/444,021.
2 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Mar. 24, 2014), Reply Brief (“Reply Br.,” filed Nov. 17,
2014), and Specification (“Spec.,” filed Apr. 11, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Sept. 16, 2014) and Final Office Action
(“Final Act.,” mailed May 24, 2013).
3 According to the Appellants, the real party in interest is TRIALP AY, INC.
Appeal Br. 2.
Appeal 2015-001520
Application 13/444,161
STATEMENT OF THE CASE
The Appellants’ “invention generally relates to payment for products
or services [and] specifically relates to methods and systems that enable
providing an alternate form of payment for products or services.” Spec. 12.
Claims 1 and 20 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below
(bracketing added for reference):
1. A method of performing an electronic commerce
transaction comprising:
[(a)] using a computer, presenting a primary offer of a
vendor to a mobile device for display;
[(b)] presenting an alternate offer of an advertiser to the
mobile device for display, wherein fulfillment of the alternate
offer entitles a user to receive an item of the primary offer at new
terms that are different from terms the primary offer;
[(c)] establishing a credit for the primary offer to be paid
to the vendor upon the user’s fulfillment of the alternate offer,
the credit including a variable portion;
[(d)] receiving an indication of the user’s fulfillment of the
alternate offer; and
[(e)] paying the credit to the vendor.
Appeal Br. 16 (Claims App.).
REJECTIONS
Claims 1—204 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Final Act. 2.
4 The heading for the rejection lists only claims 1—19 as being included in
the rejection. However, claim 20 recites the identical limitation upon which
the claims are rejected, and the Appellants and the Examiner consider claim
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Application 13/444,161
Claims 1—7, 9—14, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Walker (US 2011/0131089 Al, pub. June 2, 2011)
(“Walker ’089”) and Kakuta (US 2003/0225630 Al, pub. Dec. 4, 2003). Id.
at 3.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker ’089, Kakuta, and Cohen (US 2003/0144907 Al,
pub. July 31, 2003). Id. at 17.
Claims 15 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker ’089, Kakuta, and Hoerenz
(US 2004/0267611 Al, pub. Dec. 30, 2004). Id. at 18.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker ’089, Kakuta, and Swartz (US 2005/0040230 Al,
pub. Feb. 24, 2005). Id. at 19.
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker ’089, Kakuta, and Walker (US 2002/0128057 Al,
pub. Sept. 12, 2002) (Walker ’057). Id. at 21.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 3.
ANALYSIS
35 U.S.C. §112
The Examiner rejects claims 1—20 as being “indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention.” Final Act. 2. The Examiner finds that the
20 as being included. See Appeal Br. 13; Ans. 7. Thus, we consider the
omission of claim 20 in the heading to be inadvertent error.
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Application 13/444,161
limitation “wherein fulfillment of the alternate offer entitles a user to receive
an item of the primary offer,” as recited in limitation (b), is an intended use
and is “unclear” because the step of fulfilling the alternate offers is not
recited positively. Id. The Examiner also finds “there is lack of clarity of
what is being claimed by the [Appellants] when there are instances when the
claimed subject matter is not being carried out.” Ans. 7. Thus, the
Examiner determines the claims are indefinite because “customers have the
option of not fulfilling or accepting an offer. And in order for the invention
to be carried out the customer has to ‘become’ an active part of the steps of
the invention.” Id.
We find the Appellants’ arguments persuasive that the claims are not
indefinite because one of skill in the art would understand what is being
claimed. See Appeal Br. 13—14. As the Appellants argue (id. at 13), even if
the limitation at issue recited an intended use, the claim is not indefinite.
We disagree with the Examiner’s contention that the claims are indefinite
because the fulfillment is optional, and if it does not occur, there are no
further limitations. See Ans. 7. Claims 1 and 20 recite establishing a credit
upon the user’s fulfillment and receiving an indication of the user’s
fulfillment. Thus, the claims do not present an option of fulfillment, but
rather require a fulfillment of the alternate offer.
Based on the foregoing, we are persuaded that the Examiner erred in
the rejection of claims 1—20 under 35 U.S.C. § 112. Therefore, we do not
sustain the rejection of independent claims 1 and 20 and of dependent
claims 2—19.
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35 U.S.C. § 103(a)
The Appellants argue claims 1—19 as a group, “conced[ing] that
claims 1-19 stand or fall together.” Appeal Br. 8. We note that independent
claim 20 recites limitations similar and parallel to the limitations of
independent claim 1. Thus, we consider claim 1 as representative of the
group consisting of claims 2—20; claims 2—20 stand or fall with claim 1. See
36 C.F.R. §41.37 (c)(l)(iv).
The Examiner finds that Walker ’089 teaches limitations (a), (b), and
(d) of claim 1, but does not teach limitations (c) and (e). Final Act. 3^4.
The Examiner relies on Kakuta for these limitations, finding that one of
ordinary skill in the art would be motivated to combine the art “in order to
allow merchants to exercise control over their profit margins by making
deals with 3rd party vendors, other merchants, and customers to maximize
their profits.” Id. at 5.
The Appellants contend that the Examiner’s rejection of claim 1 is in
error because the prior art does not teach the limitation of establishing a
credit for the primary vendor including a variable portion, as recited in
limitation (c). Appeal Br. 10—12. Specifically, the Appellants argue that
Kakuta, upon which the Examiner relies, does not “disclose or suggest
establishing a credit including a variable portion determined when one of the
alternate offers is fulfilled” {id. at 10 (emphasis omitted)), because Kakuta’s
credit is not “variable in the context of the particular transaction” {id. at 12).
After careful review of the Appellants’ Appeal and Reply Briefs, we
are not persuaded of error on the part of the Examiner for at least the reasons
below.
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Application 13/444,161
We find the Appellants’ argument unpersuasive at least because it is
not commensurate with the scope of the claim. Claim 1 does not require that
the credit includes “a variable portion determined when one of the alternate
offers is fulfilled.” Appeal Br. 10 (emphasis omitted). Rather, claim 1
requires establishing a credit to be paid “upon the user’s fulfillment of the
alternate offer” with “the credit including a variable portion.” Id. at 16
(Claims App.) Claims are to be given their broadest reasonable
interpretation in light of the Specification, but limitations from the
Specification are not read into the claims. See In re Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993); see also In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
Cir. 1998) (“The invention disclosed in [the] written description may be
outstanding in its field, but the name of the game is the claim.”). We note
that the Specification does not give a specific definition for “a variable
portion,” but provides various non-limiting examples. See Spec. H 87, 88,
149-151,426, 440.
We find supported the Examiner’s findings that Kakuta discloses the
limitation in that “the pricing is changed due to the customer input,” such
that the offer price is variable, and thus, the credit to the vendor is variable
based on user fulfillment of the alternate offer, i.e., accepting the negotiated
price, because it is based on the price as accepted. Ans. 7 (emphasis
omitted). Kakuta discloses an electronic shopping mall whereby customers
can negotiate discounts for a transaction. See Kakuta, Abstract. When the
customer is satisfied with the price that includes the negotiated discounts,
the customer accepts the offer and submits an order. See id. 1188,101.
After the order is placed, the discount server accumulates the discount offers
by the mall and returns, i.e., credits, to each shops the accumulated discount
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Application 13/444,161
for that shop. See id. ]Hf 102, 103. “The amount to be returned is spent from
tenant fees, advertisement fees, sales expanding contributions, royalties
depending on sales obtained by shops, etc.” Id. 1103. The shop server
receives, i.e. is credited, the primary discount amount and the payment after
the secondary discount made by the customer. Id.
Thus, we agree with the Examiner (see id.', see also Final Act. 5) that
Kakuta teaches establishing a credit (i.e., amount returned) for the primary
offer (i.e., primary discount) to be paid to the vendor (i.e., shop) upon the
user’s fulfillment of the alternate offer (i.e., acceptance of the price with
negotiated discount), the credit including a variable portion (i.e., payment
after the negotiated discount that varies with each transaction).
Based on the foregoing, we are not persuaded that the Examiner erred
in the rejection of claim 1 under 35 U.S.C. § 103. Therefore, we sustain the
rejection of independent claim 1 and of dependent claims 2—19 and
independent claim 20, which fall with claim 1.
35 U.S.C. §101
The Appellants argue the claims as a group. See Reply Br. 3-A. We
select claim 1 as representative. Dependent claims 2—19 and independent
claim 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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 Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
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Application 13/444,161
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice Corp., 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.” Id. If so, the second
step is to consider the elements of the claims “individually and ‘as an
ordered combination”’ to determine whether the additional elements
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to
“search for an ‘inventive concept’—i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(alteration in original) (citing Mayo, 132 S. Ct. at 1294). The Court
acknowledged in Mayo, that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea, and
merely invoke generic processes and machinery.
Here, the Examiner rejects claims 1—20 as being directed to an
abstract idea, non-statutory subject matter under § 101. Ans. 3. The
Examiner finds that the claims are directed to the abstract idea of “providing
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Application 13/444,161
customized offers to users of mobile devices.” Id. at 4. The Examiner
further finds that the additional elements of the claims, individually or in
combination, are not “significantly more” than the abstract idea because they
“amount[] to no more than (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer structure that services to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Id.
The Appellants contend the rejection is in error because the
Examiner’s determination that the claims are directed to the abstract idea of
providing customized offers “badly mischaracterizes the claims themselves
and flatly ignores the numerous details of the claimed invention that make it
unique and useful.” Reply Br. 3^4. The Appellants argue that the two
different offers and the “concrete” feature of a credit with a variable portion
“form[] a significant part of the value and uniqueness of the [Appellants’]
invention.” Id. at 4. The Appellants further argue that “[t]he abstract idea
proposed by the examiner may indeed be abstract, but it has little to do with
the concrete and specific features of the [Appellants’] claims.” Id.
We find the Appellants’ arguments unpersuasive. To the extent the
Appellants argue that the claims are not directed to the abstract idea of
customizing offers (see Reply Br. 3—4), we disagree. Independent claims 1
and 20 recite the steps of presenting a primary offer and an alternate offer,
establishing a credit, receiving an indication of fulfillment of the alternate
offer, and paying the credit to the vendor. Appeal Br. 16, 18 (Claims App.).
Further, according to the Specification, the invention relates to enabling an
alternate form of payment of products or services, such as by receiving value
for engaging with another vendor or providing information. See Spec. 112,
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7,9. In that context, the claims are directed to providing customized offers
for alternate forms of payment.5 Our reviewing courts have held certain
fundamental economic and conventional business practices, like using
advertisement as currency (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 713—14 (Fed.Cir.2014)), intermediated settlement (see Alice, 134 S. Ct.
at 2356—57), and tailoring information presented to a user based on
particular information (see Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); see also Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
2016)), as being abstract ideas. The providing of offers for alternate forms
of payment of claims 1 and 20 are similar to these abstract ideas, and thus,
we determine that claims 1—20 are directed to an abstract idea.
We also find unpersuasive the Appellants’ arguments that the claims
add limitations that are significantly more than the abstract idea, i.e., the
second part of the analysis. See Reply Br. 4. The Appellants’ “concrete
feature[s]” (id.) of two offers, one of which entitles a user to receive the
offer on renewed terms, and of using a credit do not address a technological
problem and are not technological improvements. Independent claim 1 and
dependent claims 2—19 recite a method with the steps of using a computer to
present a primary offer, presenting an alternate offer, establishing a credit,
receiving an indication of fulfillment, and paying the credit. Any general
purpose computer available at the time the application was filed would have
been able to perform these functions. The Specification does not discuss the
5 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016).
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specific hardware of the computer, i.e., alternate payment platform, which
performs the functions, and, thus, supports that view. See Spec. H 13, 80,
81, Fig. 1 (discussing the components of the platform). Similarly,
independent apparatus claim 20 recites a medium causing a generic
processor to perform the method of claim 1. The introduction of a computer
to implement an abstract idea is not a patentable application of the abstract
idea. Alice, 134 S. Ct. at 2357—58. The computer implementation here is
purely conventional and performs basic functions. See id. at 2359—60. The
claims do not purport to improve the functioning of the computer itself, nor
do they effect an improvement in any other technology or technical field.
See id. at 2359.
Based on the foregoing, we are not persuaded that the Examiner erred
in the rejection of claims 1—20 under 35 U.S.C. § 101. Therefore, we sustain
the rejection of independent claims 1 and 20 and of dependent claims 2—19.
DECISION
The Examiner’s decision rejecting claims 1—20 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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