Ex Parte Zieger et al

Patent Trials and Appeals Board

Mar 20, 2019

14305275 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/305,275 06/16/2014
26096 7590 03/22/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Cory Zieger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67679-001 PUSl 8717
EXAMINER
FU,HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORY ZIEGER and RICHARD QUITTER
Appeal 2018-001360 1
Application 14/305,275 2
Technology Center 3600
Before BRADLEY B. BAY AT, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1, 3-14, 16, and 18, which are the only claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
June 12, 2017), Reply Brief ("Reply Br.," filed Nov. 22, 2017), and
Specification ("Spec.," filed June 16, 2014), as well as the Examiner's
Answer ("Ans.," mailed Oct. 6, 2017) and Final Office Action ("Final Act.,"
mailed Jan. 11, 2017).
2 According to the Appellants, the real party in interest is Intelligent
Business Innovations, LLC. Appeal Br. 1.
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STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' invention "relates to a method for admitting a user to a
fitness center." Spec., Abstract. Independent claim 1, reproduced below
with added bracketed matter, is illustrative of the subject matter on appeal.
1. A method for admitting a user to a fitness center
compnsmg:
[(a)] receiving, at a terminal, an input corresponding to
an identification of a user;
[(b)] presenting a disclaimer to the user, on a screen of
the terminal, before admitting the user to the fitness center;
[ ( c)] detecting, using the terminal, whether the user has
met a minimum threshold number of uses, wherein the
minimum threshold number of uses is a minimum threshold
number of uses within a set time period;
[ ( d)] admitting the user to the fitness center after
payment of a fee if the minimum threshold number of uses is
not met; and
[ ( e)] admitting the user to the fitness center without
payment of a fee if the minimum threshold number of uses is
met or exceeded.
Appeal Br. 9, Claims App.
Rejections
1. Claims 1, 3-14, 16, and 18 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
2. Claims 1, 3-5, and 7-10 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Smith et al. (US 2013/0008958 Al, pub. Jan. 10, 2013)
("Smith") and Strietzel (US 2002/0120564 Al, pub. Aug. 29, 2002).
3. Claims 6, 11-14, 16, and 18 stand rejected under 35 U.S.C.
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§ 103(a) as unpatentable over Smith, Strietzel, and FacilitiesNet
(FacilitiesNet Staff, The Benefits of Smart Cards in an Access Control
System, F ACILITIESNET (Dec. 15, 2008), https://www.facilitiesnet.com/
security/topic.aspx?id= 19056& ("FacilitiesNet") ).
ANALYSIS
35 U.S.C. § 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. But the
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, first described in
Mayo and further clarified in Alice. Id. at 217-18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).
According to that framework, we first determine what concept the claim is
"directed to." See Alice, 573 U.S. at 219 ("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."); see also Bilski v. Kappas, 561 U.S.
593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (internal citation omitted) ( citing Benson and Flook); see,
e.g., id. at 187 ("It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
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eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The Examiner determines "the claims are directed towards admitting a
user to a fitness center ... [which] is a fundamental economic practice and
'an idea of itself."' Final Act. 8. The Examiner explains that the concept of
admitting a user to a facility based on payment conditions is a long standing
economic practice and an abstract idea. Id. at 9--10. The Examiner further
explains that the abstract concept of admitting the user with or without
payment based on whether the user has met a minimum threshold number of
uses is a mental process that can be performed in the human mind. Id. at
10-11; id. at 11 ("The computer element (i.e. terminal) is merely used as a
tool to replace [a] human process.").
All claims are argued together as a group. See Appeal Br. 3---6. We
select claim 1 as the representative claim for the group. Thus, claims 3-14,
16, and 18 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). In their
Briefs, Appellants do not disagree or contest the Examiner's characterization
of the abstract idea. 3 Rather, Appellants contend that "[ t ]he rejection is
flawed at least because the claims provide 'sufficiently more' than an
3 Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ("If an
appellant fails to present arguments on a particular issue - or, more broadly,
on a particular rejection -the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection.").
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alleged abstract idea, and are thus patent eligible." Appeal Br. 3--4; Reply
Br. 1 ("Appellant[ s '] main argument in the Brief is that the claims amount to
'significantly more' than a mere 'abstract idea.' . . . As noted in the Brief,
Appellant[s are] making a step (2) argument."). Specifically, Appellants
argue:
Like in DDR, the claims in the present case "do not
broadly and generically claim 'use of the Internet' to perform
an abstract business practice." DDR Holdings, [LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014)].
Rather, the claims define a terminal, and use that terminal to
apply a specific payment scheme. The scheme is complicated
by allowing users access to gyms in different geographical
locations, but the claimed combination solves that problem ....
Consistent with DDR Holdings, the claims in the present
case address specific problems that arise in the context of
computer technology and the "the claimed solution amounts to
an inventive concept for resolving this particular Internet-
centric problem, rendering the claimed patent-eligible." Id.
Thus, the claims are directed to significantly more than a mere
abstract idea, and are therefore patent eligible.
Appeal Br. 5---6.
Responding to Appellants' argument, the Examiner asserts:
[U]nlike DDR Holdings, the claimed invention does not provide
a solution that is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of
computer networks. Instead, the present claimed invention
utilizes existing computer technologies to implement an
abstract concept of admitting a user to a fitness center and
providing free access if the user has paid/used the fitness center
a threshold number of times. The focus of the present invention
is the business/pricing strategy rather than improvement to
computer technology.
Ans. 3. We agree with the Examiner.
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The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). The question is whether the claims as a whole
"focus on a specific means or method that improves the relevant technology"
or are "directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery." McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
According to Appellants, fitness center memberships typically only
allow members to use a particular facility for a membership fee, but these
memberships are not cost effective for users that do not exercise frequently
or travel regularly. Spec. ,r 1 ("When away from their 'home' gym, users
either pay a premium for a one-day gym pass, or simply do not work out.").
Appellants solved this problem with a new membership scheme that requires
"a minimum threshold number of uses within a set time period ... [such
that] the user is guaranteed a 'not to exceed' billing amount within a
particular time frame." Id. ,r 16. This scheme allows "a user to access a
plurality of fitness centers (e.g., gyms) without requiring the user U to
commit to a traditional membership to that particular gym or chain of gyms,
for example. Rather, the user can access a variety of gyms at different
geographical locations." Appeal Br. 2 ( citing Spec. ,r 21 ).
In one particular example, the minimum number of uses
per month is fifteen (15). In that example, a benefit of this
disclosure is perhaps best explained as follows:
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Thus ... a user who lives in Port Huron, Michigan and
has used a first networked fitness center in Port Huron
fourteen ( 14) times in a month, can then use a second
networked fitness center on a business trip to Chicago,
Illinois later in the month. The usage in Chicago--the
fifteenth (15th) of the month-would be free. When user
returns home to Port Huron, the remaining uses in Port
Huron are also free for that month.
Id. (quoting Spec. ,r 20). Thus, Appellants' Specification describes this
membership scheme as the advance over the prior art.
This scheme is reflected in representative claim 1, which recites "[a]
method for admitting a user to a fitness center" comprising five steps: (a)
"receiving ... an input corresponding to an identification of a user,"4 (b)
"presenting a disclaimer to the user, " 5 ( c) "detecting ... whether the user has
met a minimum threshold number of uses," ( d) "admitting the user to the
fitness center after payment of a fee if the minimum threshold number is not
met," and ( e) "admitting the user to the fitness center without payment of a
fee if the minimum threshold number of uses is met." See Appeal Br. 9
(Claims App.). These limitations, under the broadest reasonable
interpretation, recite controlling access to a fitness center because these
limitations all recite operations that would ordinarily take place in admitting
a user to a fitness center.
For example, "receiving ... an identification of a user," as recited in
step (a), is an activity which would take place whenever one is accessing a
4 "[T]he input is provided by at least one of (1) a QR code, (2) a credit card,
(3) a scanned body part, (4) a driver's license, (5) a phone number, (6) a pin
number, and (7) an email address." Appeal Br., Claims App.
5 "[A] liability-type disclaimer may be presented to the user." Spec. ,r 15.
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fitness center to verify the identity of the user. Also, "presenting a
disclaimer to a user," as recited in step (b ), is a waiver of liability which a
fitness center typically presents to a user before admittance into a fitness
center. Similarly, "detecting ... whether the user has met a minimum
threshold number of uses," as recited in step (c), for "admitting the user to
the fitness center" with or without a fee, as recited in steps ( d) and ( e ), is a
characteristic of accessing a fitness center based on a fitness center
membership plan or agreement. Specifically, selective restriction of access
to a fitness center, is no more than applying a rule or instruction based on
usage information to determine a fee required to permit access to the fitness
center. Controlling access to a fitness center by admitting a user to the
fitness center based on payment conditions, is an economic act which
involves managing personal behavior based upon rights of access associated
with a user. Accordingly, we conclude the claims recite a long standing
economic practice and a technique for managing personal behavior based on
usage conditions, which is one of certain methods of organizing human
activity identified in the Revised Guidance, 6 and thus an abstract idea.
Furthermore, the "receiving" of data recited in step (a) is merely
insignificant extra-solution activity in the form of data gathering. See Bilski
v. Kappas, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajfd sub nam
Bilski v. Kappas, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity). The "displaying" of data under steps
(b) is merely an output step, and also insignificant extra-solution activity.
6 USPTO recently published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Revised Guidance").
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See Bilski, Id. at 610-11. The Specification does not describe how
"detecting" step ( c) is achieved, but instead, describes it at a high level of
generality. See Spec. ,r 2--4. Steps ( d) and ( e) are performed manually (i.e.,
admitting a user to the fitness center with or without a fee by a receptionist);
no computer implementation is recited. Steps (a), (b ), and ( c) are performed
at a terminal, which the Specification describes as executing the claimed
method via a generic processor. See Spec. ,r 1 O; see also Final Act. 11.
Understood in light of the Specification, the character of claim 1 as a whole
is directed to admitting a user to a fitness center with or without a fee based
on whether the user has met a minimum threshold number of uses within a
set time period.
Appellants contend that "although Appellant[s'] technology uses
existing hardware, it uses that hardware to apply specific rules to bring about
an improved technological result." Reply Br. 2. In particular, Appellants
argue: (1) the flawed Section 103 rejections demonstrate that the claims are
an improvement of technology, and (2) the rationale from McRO applies
equally to the present claims. Id. We disagree.
Although Appellants concede that the operations recited in claim 1 do
not require any specialized computer hardware or other inventive computer
components (i.e., a particular machine), they nevertheless contend the
claimed invention uses that "hardware to apply specific rules to bring about
an improved technological result." Reply Br. 2. However, Appellants'
contention is not commensurate with the scope of claim 1. Claim 1 does not
recite any rules, let alone applying specific rules using the terminal of
claim 1. And the Specification does not mention any "rules" or involve any
inventive programming for performing the process of claim 1.
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As to argument ( 1 ), a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 89-90
(Rejecting the suggestion that Sections 102, 103, and 112 might perform the
appropriate screening function and noting that in Mayo such an approach
"would make the 'law of nature' exception ... a dead letter."); see also
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
(Under the Mayol Alice framework, a claim directed to a new abstract idea
cannot rely on that novelty for patent eligibility.). "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 577 (2013). Indeed, "[t]he 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diehr, 450 U.S. at 188-89.
As to argument (2), we cannot agree with Appellants' contention that
the claims before us are similar to the claims addressed in the Federal
Circuit's decision in McRO because there is a fundamental difference
between computer functionality improvements, on the one hand, and uses of
existing computers as tools to perform a particular task, on the other. In
McRO, the court addressed claims directed to "[a] method for automatically
animating lip synchronization and facial expression of three-dimensional
characters." McRO, 837 F.3d at 1307. The court reviewed the Specification
of the patent at issue and found that, rather than invoking the computer
merely as a tool, "[ c ]laim 1 of the [ asserted] patent is focused on a specific
asserted improvement in computer animation." Id. at 1314. In contrast to
McRO, Appellants' claim does not concern an improvement to computer
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capabilities, but instead relates to an alleged improvement to a fitness center
membership plan, for which a computer is used as a tool in its ordinary
capacity for admitting a user to a fitness center based on such a plan. This
does not concern an improvement to computer capabilities, but instead
relates to an improvement to the abstract idea. Appellants do not direct our
attention to anything in the Specification to indicate that the invention
provides an improvement in the computer's technical functionality, or offer
any technical reasoning that the computer implementation in steps (a}-( c)
improves the functioning of the terminal device itself. We determine that
the claims do not "apply, rely on, or use the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception," i.e., the claims do not integrate the abstract idea into a practical
application. See Revised Guidance at 54. 7 As noted above, the claim does
not require any computer implementation in steps ( d) and ( e ), and any
computer envisioned for use in steps (a}-( c) of the claimed method (i.e., a
terminal) is a generic processor operating in its ordinary and conventional
manner. See Spec. ,r,r 10-12.
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 is directed to an abstract idea without significantly more.
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 101, and claims 3-14, 16, and 18, which fall with claim 1.
35 U.S.C. § 103(a)
7 For purposes of maintaining consistent treatment within the Office, these
considerations are made under Step 1 of Alice (Step 2A of Office guidance).
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Claims 1, 3-5, and 7-10
Claim 1 recites, in part, "wherein the minimum threshold number of
uses is a minimum threshold number of uses within a set time period."
Appeal Br. 9 (Claims App.).
The Examiner finds that Smith teaches a system that controls access
to a facility, by either granting or denying access, based on user input, stored
information, and, if required, information obtained from a third party
payment authorization. See Final Act. 15-16; see also Smith ,r 6 ("The
system could be used for one time entry or to setup an extended time of
entry (hours, days, months or years) depending on the particular system, use
and payment."). In particular, the Examiner relies on paragraph 74 of Smith,
which describes "the ability to set discounts to be given to users that utilize
the facility a certain number of times." Ans. 6. According to the Examiner,
"[a] discount could be any percentage reduction of the original amount,
including 100% off (or free)." Id. In addition, the Examiner finds Strietzel
"also teaches [a] similar scheme of providing free access after a
predetermined number of uses. Strietzel teaches providing free access to a
content item after a user has paid to access the content item for a
predetermined number of times (see paragraph 0041)." Id.
We disagree with Appellants' contention that the Examiner's position
"that a discount 'may' be free admission is an unfounded assumption and is
based solely on speculation." Appeal Br. 6. In addition to the Examiner's
findings above, Smith also describes "the ability of the computing system to
provide promotion codes that will expire after a set period of time and those
that just give certain percentage discounts or free access to a facility." Smith
i158.
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Besides expressing disagreement with the Examiner's findings,
Appellants offer no substantive arguments to rebut these specific underlying
factual findings made by the Examiner in support of the ultimate legal
conclusion of obviousness. See Reply Br. 3 ("Appellant[ s] continue[] to rely
on its Brief, which fully addresses the Examiner's obviousness rejections.").
And we decline to examine the claims sua sponte, looking for distinctions
over the prior art. Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) ("It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art."). In the absence of a more detailed
explanation, we are not persuaded of error on the part of the Examiner. See
In re Jung, 637 F.3d. 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections," (citing Ex Parte Frye, 94 USPQ2d 1072 (BPAI
2010) (precedential) ("The panel then reviews the obviousness rejection for
error based upon the issues identified by appellant, and in light of the
arguments and evidence produced thereon.")).
Accordingly, we sustain the rejection of claims 1, 3-5, and 7-10.
Claims 6, 11-14, 16, and 18
Although Appellants contend that "the Examiner has not accounted
for the 'networked fitness centers"' as recited in claims 6 and 11 ( Appeal
Br. 6 ( emphasis omitted)), we find that the Examiner provides evidence with
technical reasoning in support of those findings. See Ans. 7-8. Similarly
here, Appellants offer no substantive arguments to rebut these specific
underlying factual findings made by the Examiner in support of the ultimate
legal conclusion of obviousness.
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Accordingly, we are not apprised of error by the Examiner, and, thus,
we sustain the rejection of claims 6, 11-14, 16, and 18.
DECISION
The Examiner's rejection of claims 1, 3-14, 16, and 18 under
35 U.S.C. § 101 is AFFIRMED.
The Examiner's rejections of claims 1, 3-14, 16, and 18 under
35 U.S.C. § 103 are 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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