Ex Parte Walker et al

Patent Trial and Appeal Board

Aug 31, 2017

11958571 (P.T.A.B. Aug. 31, 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.
11/958,571 12/18/2007 Jay S. Walker 058407/426789 1339
826 7590 09/05/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY S. WALKER, ANDREW S. VAN LUCHENE,
DANIEL E. TEDESCO, and JOSHUA D. ROGERS
Appeal 2016-007151
Application 11/958,571
Technology Center 3600
Before ROBERT E. NAPPI, JOHN D. HAMANN, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—17, 50, and 52—63. App. Br. 5.2 Claims 18-49 and 51
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Groupon, Inc. App. Br. 2.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed January 9, 2015, (2) the Appeal Brief (“App. Br.”) filed November 9,
2015, (3) the Examiner’s Answer (“Ans.”) mailed May 12, 2016, and (4) the
Reply Brief (“Reply Br.”) filed July 12, 2016.
Appeal 2016-007151
Application 11/958,571
THE INVENTION
Appellants’ invention tracks data from multiple account holders or
members of a single account. Spec. 3. For example, the invention allows
multiple shoppers to use a single frequent-shopper card and be rewarded
within a frequent-shopper reward program. Id. Claim 1 is reproduced
below:
1. A method, comprising:
storing a multiple user account in a memory, the multiple
user account comprising at least a first sub-account and a second
sub-account, wherein the first sub-account includes first
transaction data identifying previous transactions associated with
the first sub-account and the second sub-account includes second
transaction data identifying previous transactions associated with
the second sub-account;
receiving, by a controller, first transaction data from the
first sub-account;
receiving, by the controller, second transaction data and
second sub-account;
applying, by the controller, a first set of reward rules
associated with the first subaccount in order to determine an
accumulation of first reward values based on the first transaction
data; and
applying, by the controller, a second set of reward rules
associated with the second sub-account in order to determine an
accumulation of second reward values based on the second
transaction data;
wherein the first or second set of reward rules specify a
particular payment method was used in a transaction.
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Application 11/958,571
THE REJECTIONS
The Examiner relies on the following as evidence:
Kanter US 5,537,314 July 16, 1996
Schwab US 5,973,731 Oct. 26, 1999
Claims 1—17, 50, and 52—63 stand rejected under 35 U.S.C. § 101 as
covering patent-ineligible subject matter. Final Act. 2—3.
Claims 1—17, 50, and 52—63 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Kanter and Schwab. Final Act. 3—9.
THE REJECTION UNDER 35 U.S.C. § 101
I
The Examiner rejects independent claims 1,7, and 13 under 35 U.S.C.
§101 because the claims as a whole (1) are directed to an “abstract idea”
and (2) do not contain an “inventive concept” sufficient to transform the
claimed “abstract idea” into a patent-eligible application. Final Act. 2—3;
Ans. 2—7.
Appellants argue that the Examiner has not provided substantial
evidence for the factual findings used in the eligibility determination.
App. Br. 6—9. In particular, Appellants argue that the Examiner does not
explain why the recited controller does not add significantly more to the
exception. Id. at 7. Appellants argue that the Examiner does not provide a
factual basis for the assertion that the claims instruct a practitioner to
implement the abstract idea with routine, conventional activities using a
general purpose computer. Id. at 8. In Appellants’ view, the Examiner has
not presented a prima facie case of unpatentability. Id. at 9 (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
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Application 11/958,571
The Federal Circuit has noted that “the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
Oetiker, 977 F.2d at 1445). The USPTO carries its procedural burden of
establishing a prima facie case when the Examiner’s rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection “together with such information and references as may be useful in
judging the propriety of continuing prosecution of his application.” See In
re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). That is, the Examiner must
set forth the rejection’s statutory basis “in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132.” Id.
But this is not a case where the “rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Id. at 1362. Rather, the Examiner has provided a rationale
that identifies the abstract idea recited in the claim and why it is considered
an exception. See Final Act. 2; Ans. 2—7. The Examiner further concludes
that the claims lack an inventive concept. Ans. 6—7. In support of this
conclusion, the Examiner finds that the technology is described at a high
level of generality. Id. at 6. The Examiner further explains that the
computer’s role in the claims is to manage, organize, and perform the
abstract idea, and explains that the Federal Circuit has found this to be
insufficient to supply the inventive concept. Id. at 6—7. In this way, the
Examiner has carried the procedural burden of establishing a prima facie
case, which we discuss in detail below.
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II
The Supreme Court’s two-step framework guides the eligibility
analysis under § 101. See Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct.
2347, 2355 (2014). According to step one, “[w]e must first determine
whether the claims at issue are directed to a patent-ineligible concept,” such
as an abstract idea. Id. Step one of the Alice framework “calls upon us to
look at the ‘focus of the claimed advance over the prior art’ to determine if
the claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLCv. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir.
2016).
The Examiner characterizes the claim as directed to providing rewards
to account holders. Final Act. 2; Ans. 3. In response, Appellants contend
that the Examiner has not considered the claims as a whole. Reply Br. 2—3.
According to Appellants, the Examiner dissects the features into individual
components instead of treating the concept as a whole. Id. at 4—5. Although
the Examiner discusses individual limitations, the Examiner’s
characterization of the claim as a whole, nevertheless, is consistent with the
Specification’s description. See Final Act. 2; Ans. 3.
In particular, the Specification explains that the invention addresses
the problem of rewarding multiple users within a reward program. Spec. 3.
The Specification explains that frequent-shopper programs disallow multiple
users from using a single account card. Id. at 2. These programs do not
reward other customers accompanying the account holder. Id. To solve this
problem, Appellants’ invention tracks multiple members linked to one
account. Id. at 3. The invention uses a multiple user account with sub­
accounts. See, e.g., id. at 9, 11.
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This concept is claimed as a method that stores and receives data, and
then applies two sets of reward rules associated with the sub-accounts to
determine the reward values. Independent claims 7 and 13 recite a medium
and system with similar functions to those recited in claim 1.
Because the claims use multiple user accounts to store and classify
information, we agree with the Examiner’s finding that the claimed concept
is similar to categorical data storage. Ans. 3—7. Indeed, the Federal Circuit
has recognized that “the well-known concept of categorical data storage” is
an abstract idea. CyberFone Sys., LLC v. CNN Interactive Group, Inc., 558
Fed. Appx. 988, 992 (Fed. Cir. 2014) (non-precedential), cited in Ans. 3.
Overall, Appellants’ claims are not focused on a specific asserted
improvement to a particular technology, like computer animation for
example. See McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299,
1315 (Fed. Cir. 2016). Rather, the solution to the problem here involves
monitoring the user’s activity for the purpose of a rewards program.
Spec. 2—3, 9, 11. And Appellants explain that the use of a “multiple user
account” is central to the system’s operation. App. Br. 9. In this way, the
purported improvement is to a rewards program, not a computer’s function.
In other words, the focus of the claims is not on “an improvement in
computers as tools,” unlike claims that the Federal Circuit has found eligible
under § 101. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335—36 (Fed. Cir. 2016)). Instead, the focus of the claims here is on an
independently abstract idea that uses a computer as a tool, like those claims
that the Federal Circuit has found to be ineligible. See Elec. Power, 830
F.3d at 1354.
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On this record, we are unpersuaded that the Examiner erred in
concluding that independent claims are directed to an abstract idea.
Ill
Because the claims are “directed to an abstract idea,” the claims are
analyzed to determine if the limitations, when considered both “individually
and as an ordered combination” contain an “inventive concept” sufficient to
transform the claimed “abstract idea” into a patent-eligible application.
Alice, 134 S. Ct. at 2355-58.
Appellants quote the USPTO’s Interim Eligibility Guidance to support
the conclusion that software executing on a general computer can be
eligible. App. Br. 8—9. According to Appellants, a controller is a concrete
and tangible implementing apparatus that receives “first transaction data
from the first sub-account.” Id. at 7—8. Appellants argue that a combination
of generic components can be eligible. Id. at 8—9.
However, considering the limitations individually and as an ordered
combination, we agree with the Examiner that the combination of
components in Appellants’ claims do not contain an inventive concept.
Ans. 6—7.
Apart from reciting a “memory” and a “controller,” claim 1 and 13 do
not recite additional components. Similarly, claim 7 recites a computer-
readable medium storing instructions to instruct the controller. But there is
no indication that the recited controller and memory produce “a result that
overrides the routine and conventional” use of their known features. DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014).
Specifically, regarding the recited controller, the Specification
discloses that one embodiment can be a general-purpose computer
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programmed to perform specific functions of the method. Spec. 5. For
example, the Specification further states that “the process steps described
herein are intended to be broadly interpreted as being equivalently
performed by software, hardware, or a combination thereof.” Id.
In the independent claims, the memory is used for its conventional
purpose—storing data and instructions. The controller, which at least covers
a general-purpose processor {id.), is also used to receive data, which has
been held to be insufficient to supply an inventive concept. See buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (explaining that
“computers in Alice were receiving and sending information over networks
connecting the intermediary to the other institutions involved, and the Court
found the claimed role of the computers insufficient.”). To be sure, the data
is limited to a “first transaction from the first sub account” and “second
transaction data,” as Appellants point out. See App. Br. 7—8. But the
limitations to the type of data received only limit the claim to a particular
technological environment, which has been held to be insufficient to supply
an inventive concept. Alice, 134 S. Ct. at 2358.
The independent claims further recite that the controller applies the
recited rules to determine the recited accumulated value. This determination
is, in turn, based on the corresponding transaction data. Yet the claims
broadly and abstractly recite applying rules with generic computing
components. These generic components alone do not doom the claims, as
Appellants note (App. Br. 8—9). But unlike patent-eligible claims, the claims
here do not involve some inventive distribution of function among the
recited components. See, e.g., BASCOM Global Internet Servs. v. AT&T
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Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). In sum, the claimed
steps, considered individually, do not contain an inventive concept.
Considering the limitations as an ordered combination, we agree with
the Examiner that the claimed steps are recited at a high level of generality,
with further limitations only to the data being acted upon. Ans. 6—7. The
method is performed “by a controller”—which is “intended to be broadly
interpreted as” hardware, software, or any combination. Spec. 5. Thus, the
claims here are more like those that abstractly cover results where “it matters
not by what process or machinery the result is accomplished,” which is the
type of claim that the abstract idea exception is intended to prevent from
being patented. McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299,
1314 (Fed. Cir. 2016) (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1853)).
As noted by the Examiner (Ans. 6), the independent claims essentially recite
an abstract idea “while adding the words ‘apply it with a computer,’” which
does not render the claims patent eligible. See Alice, 134 S. Ct. at 2358.
Appellants argue that the claimed “multiple user account” proves the
“inventive concept” necessary for eligibility. App. Br. 9—11. According to
Appellants, the recited multiple-user account is unconventional from the
perspective of someone providing rewards, as claimed. Id. To the extent
that a “multiple user account” is novel in this context, this limitation only
further narrows an otherwise abstract idea. “[A] claim for a new abstract
idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016). The recited account does not contribute to
a specific technical solution or a technical challenge unique to computers,
like those claims found eligible. See McRO, 837 F.3d at 1315 (finding that
an improvement to three-dimensional animation was patent eligible).
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On this record, we are unconvinced that the limitations individually,
or as an ordered combination, ensure that the claim amounts to “significantly
more” than the abstract idea.
Therefore, Appellants have not persuaded us of error in the rejection
of independent claims 1, 7, and 13 under 35 U.S.C. § 101. Nor have
Appellants persuaded us of error in the rejection of the dependent claims 2—
6, 8—12, 14—17, 50, and 52—63, which are not argued separately with
particularity. See App. Br. 5—11; Reply Br. 2—5.
THE OBVIOUSNESS REJECTION
The Examiner finds that Kanter teaches every limitation of
independent claims 1, 7 and 13, except for the multiple user account.
Final Act. 3—5. In concluding that the independent claims would have been
obvious, the Examiner finds that Schawb teaches this feature. Id. at 5. In
this proposed combination, the Examiner finds that Kanter teaches reward
rules that specify a particular payment method for a transaction. Id. (citing
Kanter col. 171. 49—col. 18 1. 6; col. 181. 22—col. 191. 54).
Appellants argue that Kanter lacks the recited reward rules.
App. Br. 13. According to Appellants, the Examiner has only shown that a
specifically chosen payment method must, at some point, be used. Id. In
Appellants’ view, none of the relied upon passages teach a reward rule that
specifies the payment method. Id. We agree.
The disputed limitation of claim 1 calls for, in part, “wherein the first
or second set of reward rules specify a particular payment method was used
in a transaction.” Independent claims 7 and 13 recite a similar limitation.
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According to the Examiner, a broad reading of this limitation is
necessary because the Specification does not adequately support the
limitation. Ans. 8—9. We disagree. For example, the Specification discloses
that “affiliation rules 480 include a first field defining a reward point
increase attributed to a transaction that includes the use of a credit card from
a particular bank.” Spec. 15. Although the claim is not limited to this
example, the embodiment nevertheless informs our understanding of the
limitation at issue.
In light of this disclosure, the Examiner’s interpretation of the recited
reward rules (Ans. 8—9) is unreasonably broad. As best understood, the
Examiner finds that the claim only requires that some payment method is
used. Id. Indeed, this is, at most, what the relied upon passages teach, but
this teaching is insufficient to meet the recited reward rules.
Specifically, Kanter teaches an incentive-based system that provides
discounts to shoppers. Kanter col. 18 11. 31—41. The system’s software
collects data to identify participants and the participants’ accumulated
points. Id. col. 18 11. 22 41. The system also stores variables such as credit
rate, discount-rate conversion, among others. Id. col. 18 11. 31—41. To be
sure, Kanter stores balances on a card associated with the participant.
Id. col. 18 11. 56—57. This at least implies some payment method and
tracking.
But the claims require more. Specifically, the independent claims
require a rule and a particular payment method that is specified in that rule.
The Examiner, however, has not identified any such rule. See Final Act. 3—
5; Ans. 8—9. Even if Kanter tracks a user through the use of a card (Ans. 8),
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the Examiner has not identified where Kanter’s rules specify or involve
rewarding transactions according to particular payment methods.
The Examiner does not rely on the Schawb to teach the limitation
missing from Kanter. See id.
Because we find this argument (App. Br. 11) dispositive, we need not
reach the remaining arguments.
Accordingly, Appellants have persuaded us of error in the rejection of
independent claims 1, 7, and 13, as well as dependent claims 2—6, 8—12, 14—
17, 50, and 52—63 for similar reasons.
DECISION
We affirm the Examiner’s rejection of claims 1—17, 50, and 52—63
under 35 U.S.C. § 101.
We reverse the Examiner’s rejection of claims 1—17, 50, and 52—63
under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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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