Howard W. LutnickDownload PDFPatent Trials and Appeals BoardAug 1, 201911857126 - (D) (P.T.A.B. Aug. 1, 2019) 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. 11/857,126 09/18/2007 Howard W. LUTNICK 06-2020 1321 63710 7590 08/01/2019 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER PIERCE, DAMON JOSEPH ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 08/01/2019 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): lkorovich@cantor.com patentdocketing@cantor.com phowe@cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HOWARD W. LUTNICK ____________ Appeal 2018-009060 Application 11/857,1261 Technology Center 3700 ____________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and MEREDITH PETRAVICK, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 2, 4–8, 26, 28–31, 52, and 53. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We affirm. 1 Appellant identifies CFPH, LLC as the real party in interest. App. Br. 3. Appeal 2018-009060 Application 11/857,126 2 THE INVENTION Appellant’s Specification describes it as “methods of entering wagers using incentive awards.” (Abstract). Claim 2, reproduced below, is representative of the subject matter on appeal. A method comprising: receiving an indication of an incentive award code indicating a purchase of a good by a user; determining an amount of a first type of points that may be used to place a bet in a wager based on the incentive award code; providing an interface through which at least a portion of the amount of the first type of points may be bet in a wager; determining, by a processor, an amount of a second type of points based on an outcome of the wager, in which the second type of points may be redeemed for a non-cash prize; and providing, from the processor, an indication of the amount of the second type of points, in which the incentive award code is redeemable only for the first type of points and, in which the first type of points may not be redeemed for the non-cash prize. App. Br. 8 (Claims App.).2 2 We refer to Appellant’s supplemental Appeal Brief dated, March 7, 2018 (“App. Br.”). Appeal 2018-009060 Application 11/857,126 3 THE REJECTION The following rejection is before us for review. Claims 2, 4–8, 26, 28–31, 52, and 53 are rejected under 35 U.S.C. § 101 as directed to a judicial exception. Final Act. 2. FINDINGS OF FACT We adopt the Examiner’s findings as set forth on pages 2–5 in the Final Office Action3 and on pages 2–8 in the Examiner’s Answer, concerning only the 35 U.S.C. § 101 rejection. 35 U.S.C. § 101 REJECTION We will affirm the rejection of claims 2, 4–8, 26, 28–31, 52, and 53 under 35 U.S.C. § 101. The Appellant argues claims 2, 4–8, 26, 28–31, 52, and 53 as a group, and we select claim 2 as the representative claim for this group (App. Br. 4), and so the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract 3 All references to the Final Office Action refer to the Final Office Action mailed on May 11, 2017. Appeal 2018-009060 Application 11/857,126 4 ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. 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. Kappos, 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); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (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 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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 Appeal 2018-009060 Application 11/857,126 5 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. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. 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 turn 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- 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. (alterations in original) (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 PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: Appeal 2018-009060 Application 11/857,126 6 (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. The U.S. Court of Appeals for the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. 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)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing, as indicated above, we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a Appeal 2018-009060 Application 11/857,126 7 meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h). The Specification states: In some embodiments, incentive awards may be provided for a customer that provides information. For example, an incentive award may be provided for a user registering with a website. Such registration may include providing name, address, email, preferences, income, demographic, and / or other information. A size of an incentive award may be based on an amount of information provided. For example, a first size may be awarded a post office address and a second greater size for an email address. The information provided may also include information about other people, such as friends or family. In some embodiments, incentive awards may be provided based on attendance at an event, for example a marketing event or a talk about a particular retailer or product. In other embodiments, incentive rewards may be provided for a customer not performing some act or buying some product. Specification 15:19–30. Understood in light of the Specification, claim 2, recites, in pertinent part, [R]eceiving an indication of an incentive award code indicating a purchase of a good by a user; determining an amount of a first type of points that may be used to place a bet in a wager based on the incentive award code; providing an interface through which at least a portion of the amount of the first type of points may be bet in a wager; determining, . . . an amount of a second type of points based on an outcome of the wager, in which the second type of points may be redeemed for a non-cash prize; and providing, . . . an indication of the amount of the second type of points, in which the incentive award code is redeemable only for the first type of points and, in which the first type of points may not be redeemed for the non-cash prize. Appeal 2018-009060 Application 11/857,126 8 Accordingly, the Examiner found that the claims are directed to “the idea of awarding different types of points for a person performing different actions such as a concept relating to managing transactions between two parties.” Final Act. 9. We agree with the Examiner that the claims are directed “to awarding different types of points for a person performing different actions” because, claim 2 for, example, results in “providing,…, an indication of the amount of the second type of points, in which the incentive award code is redeemable only for the first type of points and, in which the first type of points may not be redeemed for the non-cash prize.” Claim 2 also requires that the second type of points be based on the betting behavior of the player, namely, “at least a portion of the amount of the first type of points may be bet in a wager.” Such behavior constitutes at least, interactions between people (including social activities, teaching, and following rules or instruction) which are included as certain methods of organizing human activity. The patent-ineligible end of the spectrum includes certain methods of organizing human activity. Guidance, 84 Fed. Reg. at 52 (citing Alice, 573 U.S. at 220). Turning to the second prong of the “directed to” test, claim 2 only generically requires “a processor.” This component is described in the Specification at a high level of generality. See Spec. 8:31–32, 9:1–29. We fail to see how the generic recitation of this most basic computer component and/or of a system part so integrates the judicial exception as to “impose[] a meaningful limit on the judicial exception, such that the claim is more than a Appeal 2018-009060 Application 11/857,126 9 drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. Thus, we find that the claims recite the judicial exception of certain methods of organizing human activity that is not integrated into a practical application. That the claims do not preempt all forms of the abstraction or may be limited to wagering, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at 72–73). Concerning this step the Examiner found the following: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims requires the additional elements of a processor and interface, however, these are generic computer components claimed to perform basic functions of determining and displaying participants accumulated points. The additional elements or combination of elements in the claims other than the abstract idea per se amount to no more than: Appeal 2018-009060 Application 11/857,126 10 recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Final Act. 2–3. We agree with the Examiner. “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to receive, provide, determine and apply decision criteria to data to generate a result are some of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. Appeal 2018-009060 Application 11/857,126 11 Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis (receive, provide, determine and apply decision criteria to data to generate a result), and storing is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of a certain method of organizing human activity using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 573 U.S. at 225–26. We have reviewed all the arguments Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. App. Br. 4–7. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. Appeal 2018-009060 Application 11/857,126 12 Appellant argues, “the Examiner fails to make a prima facie showing that ‘awarding different types of points for a person performing different actions such as a concept relating to managing transactions between two parties’ is abstract.” App. Br. 6. We disagree with Appellant. To the extent Appellant argues that the Examiner erred in adequately supporting this determination by not providing evidence, we are unpersuaded. In this regard, there is no requirement that Examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. See, e.g., MPEP § 2106.07(a)(III) (2018) (“The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Thus, the court does not require ‘evidence’ that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues.” (citations omitted.)) Moreover, the Federal Circuit made clear in Berkheimer that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not require evidentiary support for independent claim 1 because “[t]he limitations [of claim 1] amount to no more than performing the abstract idea of parsing and comparing data with conventional computer components.” Id. at 1370. All that is required of the USPTO to meet its prima facie burden is that the Examiner set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and Appeal 2018-009060 Application 11/857,126 13 informative manner as to meet the notice requirement of 35 U.S.C. § 132. As the statute itself instructs, the Examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and references as may be useful in judging the propriety of continuing the prosecution of his application.” 35 U.S.C. § 132(a); see also In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a heightened burden on examiners beyond the notice requirement of § 132”). Here, as we found above, the Examiner has made these findings as required by the statute. See Final Act. 2–4. Specifically, in rejecting the pending claims under § 101, the Examiner notified Appellant that the claims are “directed to the abstract idea of awarding different types of points for a person performing different actions such as a concept relating to managing transactions between two parties[,]” (Final Act. 2), and that “[v]iewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.” Id. at 3. Thus, we find that a prima facie case was established by the Examiner. We also disagree with Appellant that under the holding in Enfish our decision would be different. (Appeal Br. 6–7). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Appellant’s claims are not directed to an improvement in computer technology like that of claim 17 in Enfish. In Enfish, the invention at issue was directed at a wholly new type of logical model for a computer database: a self-referential table that allowed the computer to store many different types of data in a single table and index that data by column and row information. Enfish, 822 F.3d at 1330–32. In Appeal 2018-009060 Application 11/857,126 14 finding the claims are “not directed to an abstract idea,” but “to a specific improvement to the way computers operate,” the Federal Circuit noted that “the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database.” Enfish, 822 F.3d at 1336–37. We find nothing in the claims before us arising to this level of technical improvement in the claimed “processor” which arises to the level of technical proficiency as found in Enfish. Instead, we find the claims are focused on the abstraction of “awarding different types of points for a person performing different actions such as a concept relating to managing transactions between two parties.” CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 2, 4–8, 26, 28–31, 52, and 53 under 35 U.S.C. § 101. DECISION No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation