Ex Parte Shader et al

Patent Trial and Appeal Board

Oct 27, 2017

13209291 (P.T.A.B. Oct. 27, 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.
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.
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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
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[(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.
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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
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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.
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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
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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.”).
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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
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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.).
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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
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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
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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
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