Ex Parte Skowronek et al

Patent Trial and Appeal Board

Aug 9, 2017

12052962 (P.T.A.B. Aug. 9, 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.
12/052,962 03/21/2008 Dan Skowronek 87188-741519 (088500US) 3362
20350 7590 08/11/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN SKOWRONEK, SUNIL DEWAN, KEVIN KNOWLES, and
STUART KIEFER
Appeal 2016-0023121
Application 12/052,962
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Final Rejection of claims 1—5, 7, 9—11, 15—
17, and 19—21. We have jurisdiction to review the case under 35 U.S.C.
§§ 134 and 6.
The invention relates generally to “maintaining and/or increasing
member activity and participation in loyalty programs.” Spec. 1.
1 The Appellants identify First Data Corporation as the real party in interest.
Appeal Br. 3.
Appeal 2016-002312
Application 12/052,962
Claim 1 is illustrative:
1. A method that is implemented by a computer
system having a memory and a processor for adding a
computerized subprogram to a computer program, the method
comprising:
receiving and storing at the computer system a registration
for two or more loyalty program participants, wherein each of
the loyalty program participants has a separate and distinct
loyalty account from all other loyalty program participants,
wherein information on the loyalty program participants is stored
in a customer profile database that comprises:
a member ID field, the member ID field comprising one or
more member IDs; and
a loyalty program selection field, the loyalty program
selection field comprising one or more pointers between the
loyalty program participant and one or more loyalty programs the
participant is participating in identified by a loyalty program ID;
receiving and storing at the computer system information
about one or more loyalty programs to which the loyalty program
participants may participate, wherein information on the loyalty
programs is stored in a loyalty program rules database that
comprises:
a merchant ID field, the merchant ID field comprising one
or more merchant IDs;
a loyalty program ID field, the loyalty program ID field
comprising one or more IDs for one or more loyalty programs
associated with the merchant identified by the merchant ID;
a merchant loyalty rules field, the merchant loyalty rules
field comprising one on or more loyalty program rules associated
with the loyalty program identified by the loyalty program ID;
and
a member IDs field, the member IDs field comprising one
or more pointers between one or more loyalty program
participants participating in the loyalty program identified by the
loyalty program ID;
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receiving and storing at the computer system a selection of
the loyalty programs from each of the participants order to
register to participate in the loyalty program, wherein the
selected loyalty program comprises rules that specify
achievement levels based on purchases made by each participant
with a given merchant;
associating the two or more loyalty program participants
with the loyalty program;
receiving at the computer system a request to create a
loyalty sub-program from a participant, wherein the loyalty sub­
program includes a challenge that challenges other loyalty
program participants to increase their achievement level by
competing according to the rules of the sub-program;
creating the loyalty sub-program under the loyalty
program by adding a loyalty ID to the loyalty program ID field;
storing one or more loyalty sub-program rules in the
merchant loyalty rules field, wherein at least one of the rules
specifies the purchase of a particular product offered by the given
merchant;
accepting one or more participants for the loyalty sub­
program and adding a pointer between the loyalty program ID
that is associated with the sub-program rule in the merchant
loyalty rules field and the member ID in the member ID field that
is associated with the participant in the loyalty sub-program;
receiving and storing at the computer system transaction
information for one or more of the loyalty program participants,
including the member ID that is associated with the participant
in the loyalty sub-program;
processing with the processor the transaction information
with one or more loyalty sub-program rules for the two or more
loyalty program participants by using the pointer between the
member ID in the member ID field and the loyalty program ID
to calculate an achievement level for each of the participants for
the loyalty subprogram by calculating how many purchases of
the particular product from the given merchant were made by
each of the participants; and
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transmitting from the computer system to a participant
computer of one of the participants loyalty program information
that includes displayable information showing the achievement
level for two or more loyalty program participants such that the
participant may view at the participant computer an achievement
level for the loyalty program participant as well as achievement
levels for other loyalty program participants, including
achievement levels for the loyalty sub-program.
Claims 1—5, 7, 9—11, 15—17, and 19—21 are rejected under 35 U.S.C.
§ 101 as reciting non-statutory subject matter.
We AFFIRM.
ANALYSIS
We are not persuaded by the Appellants’ argument that the “claims do
not describe or set forth any of the abstract ideas alleged to be included in
the subsets of claim 1, but instead describe and set forth a method for adding
a computerized subprogram to a computer program, which is not an abstract
idea.” Reply Br. 2; see also Appeal Br. 9 (alleging that the claims are
directed “to a technical way to interface a computerized subprogram with an
existing computerized program. Clearly, this is not an abstract idea, but a
technical way to program a computer system”).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBanklnt’l, 134 S.Ct. 2347,
2354 (2014).
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In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
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waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 68.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S.Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Claim 1 recites the operation of a loyalty program, including the step
of receiving “a request to create a loyalty sub-program,” creating the “sub­
program” by adding a field, rules, and a pointer, and communication of
status under the program and additional “sub-program” to linked groups of
participants, and receiving, storing, and totaling transaction data, before
communicating status of participants to several participants.
Claim 1 is, therefore, directed to receiving, storing, organizing, and
communicating information. We agree with the Examiner that this is very
much like the method found to be an abstract idea in Cyberfone. Answer 4—
8.
In Cyberfone, the Court held that “using categories to organize, store,
and transmit information is well-established,” and “the well-known concept
of categorical data storage, i.e., the idea of collecting information in
classified form, then separating and transmitting that information according
to its classification, is an abstract idea that is not patent-eligible.” Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992
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(Fed. Cir. 2014). Here, as in Cyberfone, information is received, stored,
organized, and transmitted.
The Examiner also finds three recited limitations similar to cases other
than Cyberfone. Answer 4—8. However, “associating the two or more
loyalty program participants with the loyalty program,” “storing one or more
loyalty sub-program rules in the merchant loyalty rules field, wherein at
least one of the rules specifies the purchase of a particular product offered by
the given merchant,” and
processing with the processor the transaction information with
one or more loyalty sub-program rules for the two or more
loyalty program participants by using the pointer between the
member ID in the member ID field and the loyalty program ID
to calculate an achievement level for each of the participants for
the loyalty subprogram by calculating how many purchases of
the particular product from the given merchant were made by
each of the participants,
as claimed, are also steps in organizing information, as in Cyberfone.
Therefore, as in Cyberfone, we agree that claim 1 is directed to an abstract
idea, in the form of collecting, storing, organizing, and transmitting
information.
In addition, setting aside the claimed requirement to implement the
method on a “computer system” with a “processor,” the method involves
handling information that could be accomplished manually, with the use of
pen and paper, because the claimed method merely organizes information,
sums transaction values, determines an achievement level, and
communicates the information. The Federal Circuit has held that if a
method can be performed by human thought alone, or by a human using pen
and paper, it is merely an abstract idea and is not patent-eligible under § 101.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
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Application 12/052,962
2011) (“[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”).
Additionally, mental processes, e.g., computing a score, as recited in
claim 1, remain unpatentable even when automated to reduce the burden on
the user of what once could have been done with pen and paper. Id. at 1375
(“That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible—i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself.
Claim 1, at best, utilizes only a “computer system” and “processor.”
The Specification describes that “the computer system 900 comprises a
processor 902 for executing one or more instructions in software stored on
computer-readable medium, such as memory 904 or storage device(s) 908.”
Spec. 177. The Appellants have not identified any persuasive evidentiary
basis for asserting that the claimed “computer system” is anything other than
a generic computer.
Although the Appellants argue claim 1, by virtue of its preamble, is “a
technical way to program a computer system” (Appeal Br. 9), the body of
the claim recites steps to operate a loyalty program, including adding
additional information to expand the scope of the loyalty program being
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operated.2 Thus, though the claim lays out a set of steps for operating a
loyalty program which could be adapted to programming a computer, the
method also could be operated manually without any computer, if the
requirement to use a computer system is set aside. See Bilski, 130 S.Ct.
at 3230 (“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’. . . .” (quoting Diamond v. Diehr, 450 U.S. 175,
191—92, 101 S.Ct. 1048 (1981)). “[AJfter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.” DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(internal citations and quotation marks omitted).
Nothing in claim 1 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Nor do claims solve a problem unique to the Internet.
See DDR Holdings, 773 F.3d at 1257. The claims also are not adequately
tied to “a particular machine or apparatus.” Bilski v. Kappos, 561 U.S. 593,
602 (2010). Any generic computer is capable of receiving and storing
information in fields, performing simple calculations, and transmitting
information. “[S]imply implementing an abstract concept on a computer,
without meaningful limitations to that concept, does not transform a patent-
2 In addition to arguing the claim is directed to a “technical way to program
a computer system,” the Appellants argue instead that the claim “is directed
to a way to permit a non-technical person to create a loyalty subprogram
within a larger merchant program in an easy and convenient manner.”
Appeal Br. 12. The second explanation is closer to the claim language.
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ineligible claim into a patent-eligible one.” Accenture Global Servs., GmbH
v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013).
Because claim 1 is directed to an abstract idea, and nothing in the
claims adds an inventive concept, we are unpersuaded the Examiner erred in
assertion that the claim is not patent-eligible under § 101. Therefore, we
sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. We also
sustain the rejection of dependent claims 2—5 and 7, which are not argued
separately, and which do not recite elements that alter the analysis of
claim 1.
Further, we find no meaningful distinction between independent
method claim 1 and either independent system claim 9 or independent
medium claim 17; the claims all are directed to the same underlying
invention. Therefore, we also sustain the rejection of independent claims 9
and 17 under § 101. As the Federal Circuit has made clear “the basic
character of a process claim drawn to an abstract idea is not changed by
claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.” See
CyberSource, 654 F.3d at 1375-76 (citingIn reAbele, 684 F.2d 902 (CCPA
1982)). Because we find that dependent claims 10, 11, 15, 16, and 19—21
lack additional elements that would render the claims patent-eligible, we
also sustain the rejection under § 101 of these dependent claims on the same
basis as the independent claims from which they depend.
We have reviewed the Appellants other arguments, such as those
directed to preemption (see Appeal Br. 8—13, Reply Br. 2—5), but determine
that they are unpersuasive in light of the above analysis.
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For these reasons, we sustain the rejection under 35 U.S.C. § 101 of
claims 1—5, 7, 9—11, 15—17, and 19—21 as reciting ineligible subject matter
in the form of an abstract idea.
DECISION
We AFFIRM the rejection of claims 1—5, 7, 9—11, 15—17, and 19—21
under 35 U.S.C. § 101.
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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