Ex Parte Shader et alDownload PDFPatent Trial and Appeal BoardOct 27, 201713209291 (P.T.A.B. Oct. 27, 2017) Copy Citation 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. 9661P004 9789 EXAMINER BOVEJA, NAMRATA ART UNIT PAPER NUMBER 3682 MAIL DATE DELIVERY MODE 13/209,291 08/12/2011 118326 7590 PAYNEARME/BSTZ 1279 Oakmead Parkway sunnyvale, CA 94085-4040 Daniel Jeffrey Shader 10/27/2017 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 DANIEL JEFFREY SHADER, KURT THAMS, RICHARD SCOTT PERKINS, and JOHN PAUL MINOR Appeal 2016-001420 Application 13/209,291 Technology Center 3600 Before JOSEPH A. FISCHETTI, AMEE A. SHAH, and ALYSSA A. FINAMORE Administrative Patent Judges SHAH, Administrative Patent Judge. DECISION ON APPEAL1 The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 25^44. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Throughout this opinion, we refer to the Appellants’ Appeal Brief (“Br.,” filed June 22, 2015) and Specification (“Spec.,” filed Aug. 12, 2011), and to the Examiner’s Answer (“Ans.,” mailed Sept. 1, 2015) and Final Office Action (“Final Act.,” mailed Dec. 23, 2014). 2 According to the Appellants, the real party in interest is PayNearMe, Inc. Br. 3. Appeal 2016-001420 Application 13/209,291 STATEMENT OF THE CASE The Appellants’ invention relates to “systems and methods for facilitating retail promotions by providing a consumer with a form of tender whose value changes depending on the contents of the consumer’s basket of goods at a point-of-sale retailer.” Spec. 11. Claims 25, 31, 37, 43, and 44 are the independent claims on appeal. Claim 25 (Claims App.) is illustrative of the subject matter on appeal, and is reproduced below (with bracketing added for reference): 25. A method for facilitating a retail promotion for a consumer purchase at a point-of-sale using a service provider system remote from the point-of-sale comprising: [(a)] storing in a memory of a service provider system one or more terms of a retail promotion; [(b)] transmitting with a communications interface of the service provider system the one or more terms of the retail promotion to a mobile device of a consumer; [(c)] storing in the memory of a service provider system a means of tender associated with the one or more terms of the retail promotion; [(d)] transmitting with the communications interface of the service provider system the means of tender to the mobile device of the consumer; [(e)] receiving with the communications interface of the service provider system notification that the consumer presented the means of tender at a point-of-sale; [(f)] confirming with a processor of the service provider system that the consumer’s purchase is in accordance with the one or more terms of the retail promotion; [(g)] assigning with the processor of the service provider system a value to the means of tender based on whether the consumer's purchase is in accordance with the one or more terms of the retail promotion; and 2 Appeal 2016-001420 Application 13/209,291 [(h)] transmitting with the communications interface of the service provider system an authorization to the point-of-sale to accept the means of tender as a form of payment for the consumer’s purchase at the assigned value and an effectuation of the means of tender at the assigned value. REJECTIONS Claims 25 44 stand rejected under 35U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 5, 6. Claims 25 44 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Freeman (US 6,450,407 Bl, iss. Sept. 17, 2002) and Johnson (US 5,924,080, iss. July 13, 1999). Id. at 9. ANALYSIS Patent-Ineligible Subject Matter - § 101 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 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 Laboratories, 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, 134 S. Ct. 3 Appeal 2016-001420 Application 13/209,291 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. (citing Mayo, 132 S. Ct. at 1296—97) (emphasis added). 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. (quoting Mayo, 132 S. Ct. at 1297—98). 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) (quoting 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. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). We find unpersuasive the Appellants’ argument that the Examiner’s rejection is in error because the Examiner fails to follow USPTO guidance and does not provide adequate “evidence on the record” or an “evidentiary basis or reasoned analysis to support [the Examiner’s] assertion.” Br. 11; see also id. at 12—13. Here, in both the Final Action and the Answer, the Examiner clearly articulates the reasons why the claims are not statutory subject matter under § 101, citing evidence from the Specification and the claims. See Final Act. 5—7; Ans. 19—21. The Examiner follows the 4 Appeal 2016-001420 Application 13/209,291 framework set forth by the Court in Alice, and analyzes the claims in accordance with the guidance set forth in the USPTO’s “2014 Interim Guidance on Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014) (“Interim Guidelines”). See Final Act. 5—7 and Ans. 19-21; see also Alice, 134 S. Ct. at 2355.3 Further, contrary to the Appellants’ assertion (Br. 12), this Board, in PNC Bank v. Secure Axcess, LLC, CBM2012-00100, PTAB (September 9, 2014) (Paper 10), did not hold that there is any requirement to cite “various references.”4 We further find that the Examiner follows the guidelines by clearly articulating reasons why the claims are not eligible, for example by relying on case law and explaining why the elements do not amount to significantly more than the exception. See Ans. 4—9. Specifically, the Examiner notifies the Appellants that the claims are directed to “facilitating a retail promotion” (Final Act. 5), and more specifically to “sending, authorizing, and redeeming a retail promotion” (Ans. 19), an abstract idea directed to a fundamental economic practice. The Examiner further finds that the claims do not amount to significantly more than the abstract idea because the elements, considered separately and in combination, require no more than a generic 3 We note that the guidelines are not legal requirements. Cf. In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not binding on this court.’”) (citations omitted); MPEP, Foreword (“The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.”); and Interim Guidelines at 74619 (“This Interim Eligibility Guidance does not constitute substantive rulemaking and does not have the force and effect of law .. . and is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office.”). 4 We would not be bound, in any event, by a non-precedential decision of a different panel of the Board. 5 Appeal 2016-001420 Application 13/209,291 computer performing well-understood, routine, and conventional activities, and do not improve the computer itself or the technical field of computing. Final Act. 5—6, Ans. 20—21. The Examiner, thus, performed a proper § 101 analysis such that the burden shifted to the Appellants to explain why the claims are patent-eligible. Turning to the first step of the Alice framework, we find supported and adopt the Examiner’s finding that the claims are directed to sending, authorizing, and redeeming a retail promotion, a fundamental economic practice, without any inventive technology. See Final Act. 5, Ans. 20-21. In this manner, the claims are similar to those found to be abstract ideas in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising as an exchange or currency), Smart Sys. Innovations, LLC v. Chicago Transit Auth., No. 2016-1233, 2017 WL 4654964, at *5—6 (slip op. 12—14) (Fed. Cir. Oct. 18, 2017) (Claims covering “paying for a subway or bus ride with a credit card” are directed to “formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions.”), and Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016), cert, denied, 137 S. Ct. 1596 (2017) (tailoring content, such as targeted advertising, based on user information). We find unpersuasive the Appellants’ argument that the claims are not directed to an abstract idea because they are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Br. 13 (citing PTO Eligible Subject Matter Examples, Jan. 27, 2015). The Appellants do not identify the problem specifically arising in computer networks that the claims overcome. The Specification provides that the invention provides benefits of a brand 6 Appeal 2016-001420 Application 13/209,291 company being able to initiate promotions at a point-of-sale (“POS”) retailer, a POS retailer being able to initiate localized promotions, and a POS retailer being able to build a customer database and loyalty “without having to make significant changes to their [POS] terminal infrastructure.” Spec. || 1,8; see also Br. 13—14. Allowing more promotions with less changes to infrastructure is a business/cost problem; it is not one specifically arising from computer network technology. Rather, the present claims generically and broadly recite the use of a network and components operating in their normal capacity. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258—59 (Fed. Cir. 2014) (citing Ultramercial, 772 F.3d at 1264). We also find unpersuasive the Appellants’ argument that the claims are not abstract because they recite limitations specifically improving the computer system itself. See Br. 14—15. Independent claims 25, 31, 37, 43, and 44 recite limitations of storing promotion data, transmitting promotion data, storing tender data, transmitting tender data, receiving notification data, confirming data, establishing second promotion data, assigning a value to a means of tender, and transmitting authorization data for using tender as payment. The Specification provides that these functions are implemented using generic computer interfaces and systems operating in their normal capacities, and as such, do not improve the computer system itself. Spec. || 22—28. Further, the Specification provides that all of the steps can be performed manually. Id. 122 (“Where the presented methods refer to manipulations that are commonly associated with mental operations, such as, for example, receiving, selecting, identifying, confirming, authorizing, and the like, no such capability of a human operator is necessary.”). 7 Appeal 2016-001420 Application 13/209,291 We further are not persuaded by the Appellants’ argument that the pending claims are not directed to an abstract idea because the claims do not “implicate ‘the basic underlying concern that these patents tie up too much future use’ of the abstract idea of facilitating retail promotions.” Br. 14 (quoting Mayo, 132 S. Ct. at 1302). Although the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre emption,” see Alice, 134 S. Ct. at 2354, characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre emption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. Turning to the second step of the Alice framework, the Appellants assert that, even if the claims are directed to an abstract idea, the claims are nonetheless directed to patent-eligible subject matter because the claims include elements that amount to “significantly more than the abstract idea itself.” Br. 15—16. We disagree. We find supported and adopt the Examiner’s findings that the steps and functions of the claims, considered individually and as an ordered combination, “do not improve another technology or technical field [and] do not improve the functioning of the computer itself,” and require “no more 8 Appeal 2016-001420 Application 13/209,291 than a generic computer to perform generic computer functions.” Final Act. 5—6; see also Ans. 20—21 (noting that the Specification provides for the invention to use a general purpose computer). The Appellants do not provide adequate evidence or argument to the contrary. See Br. 15. And there is no further specification of particular technology for performing the steps. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on whether the claim is “an improvement to the computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”). We find unpersuasive the Appellants’ argument that the claims are eligible under § 101 because they “recite a specially programmed computer and are accordingly limited to specific hardware including memory, a communications interface, and a uniquely programmed processor.” Br. 16. As the Examiner noted (Ans. 21), a general purpose computer programmed to perform conventional functions does not amount to an inventive concept such that the claims are significantly more than the abstract idea. See EON Corp. IP Holdings LLC v. AT & TMobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer- implemented functions require disclosure of an algorithm.”), and Alice, 134 S. Ct. at 2357—60 (Applying an abstract idea, such as an algorithm, on a general purpose computer is not enough to transform a patent-ineligible abstract idea into a patent-eligible invention.). 9 Appeal 2016-001420 Application 13/209,291 Thus, we are not persuaded that the Examiner erred in rejecting claims 25 44 under 35 U.S.C. § 101, and we sustain the Examiner’s rejection. Obviousness - § 103 We find persuasive the Appellants’ argument that the Examiner erred in the rejection of independent claims 25, 31, 37, 43, and 44 because neither Freeman nor Johnson teaches limitation (h) of claim 25 (and the similar limitations of independent claims 31, 37, 43, and 44) reciting “transmitting ... an authorization to the point-of-sale to accept the means of tender as a form of payment for the consumer’s purchase at the assigned value and an effectuation of the means of tender at the assigned value.” Br. 23. The Examiner finds that Freeman teaches the limitation at column 10, lines 24—27. Final Act. 11. This portion of Freeman discloses “[t]he rebate in the form of electronic money may be spent, transferred, or converted into coins or currency by the user using one or more of the following devices: a cash register or other point-of-sale device. . . .” Freeman, col. 10,11. 24—27. We find persuasive the Appellants’ argument that this portion does not disclose or suggest a “system that authorizes and effectuates a means of tender as a form of payment to the point-of-sale.” Br. 23. In response to the Appellants’ argument, the Examiner clarifies in the Answer that Freeman teaches “the system confirming that the consumer has acted in accordance with the terms of the retail promotion,” and Johnson teaches “the point-of-sale (POS) transmitting the purchase details (e.g. product bar codes) to the service provider system.” Ans. 22. “In other 10 Appeal 2016-001420 Application 13/209,291 words, the service provider system is transmitting an authorization to the POS to accept the means of tender (e.g. coupon) as a form of payment.” Id. The portion of Johnson cited by the Examiner (see Final Action 12) discloses that the computer “cross checks the purchased products against the data base of manufacturer’s discounts . . ., ascertaining the availability of a product discount.” Johnson, col. 4,11. 37-41. If the products are subject to a discount, the computer “itemizes the discounts, totals the discounts and transfers the sum back to the computerized cash register.” Id. at col. 4, 11. 41—43. If the product does not quality for a discount, the system can advise the consumer of brands or product sizes that would have qualified. Id. at col. 4,11. 43^49. However, the Examiner does not adequately explain, such that one of ordinary skill in the art would understand, where or how Freeman or Johnson, teaches that a system transmits an authorization to the POS to accept the means of tender as payment. At best, Freeman discloses that the tender may be accepted at the POS register as a form of payment if the purchase is in accordance with terms of the promotion. See Freeman, col. 7, 11. 16—21, Final Act. 11. And Johnson discloses that the system determines if the purchase abides by the terms to receive a discount, totals the discount, and transfers the sum back to the register. Johnson, col. 4,11. 37-43. But the references, alone or in combination, do not provide for an authorization to the register to accept the tender as payment. To the extent the Examiner considers Freeman’s and Johnson’s determinations of compliance with the terms to be an authorization (see Ans. 22), the Examiner does adequately 11 Appeal 2016-001420 Application 13/209,291 explain how determining compliance meets the claimed limitation of transmitting an authorization to accept the means of tender at the assigned value. Based on the foregoing, we do not sustain the Examiner’s rejection of independent claims 25, 31, 37, 43, and 44, and of dependent claims 26—30, 32—36, and 38-42 under § 103. DECISION The Examiner’s rejection of claims 25^44 under 35 U.S.C. § 101 is AFFIRMED. The Examiner’s rejection of claims 25^44 under 35 U.S.C. § 103(a) is REVERSED. 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 12 Copy with citationCopy as parenthetical citation