Joseph Custer

Patent Trials and Appeals Board

Jan 24, 2020

13690998 - (D) (P.T.A.B. Jan. 24, 2020)

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.
13/690,998 11/30/2012 Joseph Custer YALL..P0023US 4840
32425 7590 01/24/2020
NORTON ROSE FULBRIGHT US LLP
98 SAN JACINTO BOULEVARD
SUITE 1100
AUSTIN, TX 78701-4255
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH CUSTER
Appeal 2018-006022
Application 13/690,998
Technology Center 3600
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 and 16–21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Young America,
LLC. Appeal Br. 1.
Appeal 2018-006022
Application 13/690,998
2
CLAIMED SUBJECT MATTER
Appellant describes the invention as relating to:
a method for receiving a rebate claim including providing an
interface module for display on a display screen, receiving, via
the interface module, consumer identifying information, and
receiving, via the interface module, an uploaded digital copy of
physical proof of purchase data, the purchase data indicating
purchase of one or more rebate qualifying products or services.
The present disclosure also relates to a system for rebate claim
submission including an interface module for display on a
display screen. The interface module may be configured for
receiving consumer identifying information based on a
consumer’s electronic input and receiving an uploaded digital
copy of physical proof of purchase data, the purchase data
indicating purchase of one or more rebate qualifying products or
services.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for rebate claim submission over an
electronic network subsequent to a qualifying transaction in
which a consumer purchased a rebate qualifying product or
service, thereby qualifying the consumer for the rebate, the
rebate corresponding to at least a portion of a price associated
with the rebate qualifying product or service purchased, the
system comprising:
an interface displayed on a display screen, wherein the
interface:
receives a first electronic input from the consumer
comprising consumer identifying information about the
consumer and stores the first electronic input for
subsequent use;
receives a second electronic input from the
consumer comprising proof of purchase data, the proof of
purchase data being a digital image of at least a portion
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of a physical proof of purchase held by the consumer,
indicative of a purchase of a rebate qualifying product or
service; and
a rebate validation processor receiving the consumer
identifying information and proof of purchase data over the
electronic network from the interface, receiving transaction
information for the qualifying transaction from the merchant
independently from the first electronic input and the second
electronic input, and validating the rebate claim based on the
transaction information from the merchant and at least one of
the received consumer identifying information and the proof of
purchase data.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Marcus US 2011/0125561 A1 May 26, 2011

REJECTIONS
1. Claims 1–14 and 16–21 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to patentable subject matter. Non-Final Act.
3–5.
2. Claims 1–14 and 16–21 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Marcus. Non-Final Act. 6–14.
OPINION
Rejection under 35 U.S.C. § 101
Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, 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 Bank Int’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, described in Mayo
and Alice. Alice, 573 U.S. 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 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. 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.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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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 187; 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., 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 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 (quotation marks
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 United State Patent and Trademark Office published revised
guidance on the application of § 101 (2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)) and recently, published
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an update to that guidance (October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55,942) (jointly referred to as “Guidance”). Under the
Guidance, in determining whether a claim falls within an excluded category,
we first look, under step 2A of the Guidance, to whether the claim recites:
(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 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 move to step
2B of the Guidance and 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.
Prong One of Step 2A
Under prong 1 of step 2A, we first look to whether the claim recites
any judicial exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activities, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54. To this end we
note that the preamble of claim 1 recites “[a] system for rebate claim
submission over an electronic network subsequent to a qualifying transaction
in which a consumer purchased a rebate qualifying product or service,
thereby qualifying the consumer for the rebate, the rebate corresponding to
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at least a portion of a price associated with the rebate qualifying product or
service purchased.” As such, we determine that the claim recites a system
for electronic rebate claim submission.
The remainder of the claim further describes how the rebate claim
submission is accomplished. The claim recites “an interface displayed on a
display screen” that “receives a first electronic input from the consumer
comprising consumer identifying information about the consumer and stores
the first electronic input for subsequent use.” The interface then “receives a
second electronic input from the consumer comprising proof of purchase
data, the proof of purchase data being a digital image of at least a portion of
a physical proof of purchase held by the consumer.” A “rebate validation
processor” then receives “the consumer identifying information and proof of
purchase data over the electronic network from the interface,” receives
“transaction information for the qualifying transaction from the merchant
independently from the first electronic input and the second electronic
input,” and validates “the rebate claim based on the transaction information
from the merchant and at least one of the received consumer identifying
information and the proof of purchase data.” Each of these limitations
recites steps of rebate claim submission performed electronically.
We determine that rebate claim submission is related to, and a form
of, marketing and sales activities. See Spec. ¶ 3 (“Commercial businesses
are constantly looking for new ways to retain and/or increase client base.
Product marketing rebates are well-known to most consumers and have been
used by manufacturers as a tool for promoting and selling products by
providing customers with an incentive to purchase particular products,
sometimes during a specific period.”) Marketing and sales activities are a
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fundamental economic practice that fall under the category of certain
methods of organizing human activity, which the Guidance recognizes as
constituting an abstract idea. See Guidance, 84 Fed. Reg. at 52.
Prong Two of Step 2A
Under prong 2 of step 2A of the Guidance we determine whether the
claim as whole integrates the recited abstract idea into a practical application
of the abstract idea. A claim that integrates a judicial exception into a
practical application will 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. To evaluate whether the claims integrate the abstract idea into a
practical application, we identify whether there are any additional elements
recited beyond the abstract idea, and evaluate those additional elements
individually and in combination.
Some exemplary considerations laid out by the Supreme Court and the
Federal Circuit indicative that an additional element integrates an abstract
idea into a practical application include (i) an improvement in the
functioning of a computer or to another technological field, (ii) an
application of the judicial exception with, or by use of, a particular machine,
(iii) a transformation or reduction of a particular article to a different state or
thing, or (iv) a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e)–(h).
Reviewing the claim limitations as a whole, we determine the claim
does not recite additional elements that integrate the abstract idea of rebate
claim submission into a practical application. In particular we find that the
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claim limitations do not improve the functioning of a computer or other
technological field. Instead the technological elements of the claim simply
link rebate claim submissions to the technological environment of networks
and computers.
Appellant emphasizes these technological limitations as indicative
that the claims are patent eligible. Specifically, Appellant argues that claim
1 recites “very specific language pertaining to the system” including “an
interface displayed on a display screen,” the interface receiving “a first
electronic input from the consumer comprising consumer identifying
information about the consumer and stores the first electronic input for
subsequent use,” the interface receiving “a second electronic input from the
consumer comprising proof of purchase data, the proof of purchase data
being a digital image of at least a portion of a physical proof of purchase
held by the consumer,” a “rebate validation processor that receives the
consumer identifying information, the proof of purchase data, and the digital
image over the electronic network from the interface” and receives
“transaction information for the qualifying transaction from the merchant
independently from” the consumer inputs, and validates the rebate based on
the information from the merchant and the information from the consumer.
Appeal Br. 9.
As explained under prong one of step 2A, the aforementioned
limitations each relate to the abstract idea of rebate claim submission. The
technological aspects of the claims do not improve the functioning of the
computer or other technological field but instead merely link rebate claim
submission to the environment of networked computers. For example, the
“interface,” simply allows the consumer to input information identifying him
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or herself and the proof of purchase. The proof of purchase may simply be
an image of a receipt taken by the consumer by scanning or taking a picture
of the receipt. See Spec. ¶ 47. The digital image is submitting in lieu of
mailing in the receipt. Thus, the “first electronic input,” and the “second
electronic input” do not constitute improvements to the functioning of a
computer system, but rather use the standard functionality of the computer
system to perform steps that would otherwise have been manually
performed, for example, by filling out forms and mailing in the receipt. The
steps reciting receiving the “first electronic input” and “second electronic
input” are therefore, insignificant extra-solution activities involving data
gathering for further analysis. See MPEP § 2106(g). Once the electronic
inputs have been received the “rebate validation processor” cross checks the
information submitted by the consumer with information from the merchant.
Again we do not find this to constitute an improvement to the functioning of
the computer or other technological field.
Appellant argues that the claims here are akin to those in McRO, Inc.
v. Bandai Namco Games Am., 837 F.3d 1299, 1314 (Fed. Cir. 2016) because
“Claim 1 is directed to a system that specifically implements a distinct
process having particular steps and representing an improvement over
conventional rebate validation techniques without broad preemption.”
Appeal Br. 10. We disagree. In McRO, the rules were “rendered in a
specific way: as a relationship between sub-sequences of phonemes, timing,
and the weight to which each phoneme is expressed visually at a particular
timing . . . .” McRO, 837 F.3d at 1315. It was the “structure of the limited
rules” that were “limited to a specific process for automatically animating
characters using particular information and techniques” that led the Federal
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Circuit to conclude that the claims were “directed to a patentable,
technological improvement.” McRO, 837 F.3d at 1316. Here, Appellant
fails to identify any rules recited in the claims that limit the claimed method
in any way that improves technology.
Step 2B of the Guidance
Under step 2B of the Guidance we analyze the claims to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
Considerations that are evaluated with respect to step 2B include
determining whether the claims as a whole add a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.
We determine that the claim limitations individually and as an ordered
combination do not add elements that are not well-understood, routine,
conventional. Rather than provide meaningful limitations, the recited
“interface” first and second “electronic input[s]” and “rebate validation
processor,” simply link the pre-Internet practice of mailing in forms and
receipts and having those forms and receipts validated by the merchant
before providing a rebate, to the technological environment of networked
computers.
We determine that the claimed “interface,” electronic submissions in
the form of digital images of the receipt, and the “rebate validation
processor” operate in a well-understood, routine, and conventional manner.
For example, the computer system upon which the system is implemented is
described as a standard computer system used in its conventional manner.
See Spec. ¶ 22 (“In embodiments, a computing system may include memory
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and a processor and is operable to execute computer-executable instructions
stored on a computer readable medium that define processes or methods
described herein.”)
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 101, and also claims 2–14 and 16–21, for which
Appellant does not make any additional arguments. See Appeal Br. 13, 14,
18, 19.
Rejection under 35 U.S.C. § 102(e)
The Examiner finds Marcus teaches receiving first electronic
information from the consumer comprising consumer identifying
information about the consumer by disclosing that the system may further
include a graphical user interface that may allow a user to enter their
identification information. Non-Final Act. 6 (Marcus ¶ 4). The Examiner
further finds Marcus teaches “receiv[ing] a second electronic input from the
consumer comprising proof of purchase data, the proof of purchase data
being a digital image of at least a portion of a physical proof of purchase
held by the consumer” by disclosing a “proof-of-performance verification
system [that] may include a receipt processing facility that receives a receipt
image.” Non-Final Act. 6 (citing Marcus ¶ 4) (emphasis omitted). The
Examiner finds Marcus also teaches “receiving transaction information for
the qualifying transaction from the merchant independently from the first
electronic input and the second electronic input” by disclosing “receiving
tagged transaction information from the retailor (i.e. merchant) wherein the
tagged transaction are used to match purchases against offers selected.”
Ans. 10 (citing Marcus ¶ 41). The Examiner also points to Marcus’s
disclosure of “sampl[ing] receipts and check[ing] the originals from retailers
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to make sure there are no counterfeits” as evidence of receiving transaction
information from the merchant independently of the first and second
electronic inputs from the consumer. Ans. 10 (citing Marcus ¶ 45).
Appellant argues “Marcus fails to teach receiving consumer
identifying information and proof of purchase data from the consumer;
receiving transaction information for the qualifying transaction from the
merchant separately from the information received from the consumer; and
then validating the rebate based on this information from the merchant and
the information from the consumer.” Appeal Br. 21. According to
Appellant “[t]he claims require both the transaction information from the
merchant and transaction information from the consumer in order to validate
the rebate. Under its broadest reasonable interpretation, Marcus teaches
doing one or the other in order to validate a rebate, but never both.” Appeal
Br. 23 (emphasis omitted); see also Reply Br. 9. Appellant argues that,
although, Marcus “indicates that ‘the system may also sample receipts and
check the originals from retailers,’ . . . this does not disclose whether this
occurs prior to a validated offer or from where the information is retrieved.”
Reply Br. 9.
We are unpersuaded by Appellant’s arguments. Marcus teaches a
method of electronically verifying required proof of purchase performance
to secure promotion rewards. Marcus ¶ 3. Marcus explains that a proof-of-
purchase verification system may receive an image of a receipt
demonstrating proof of purchase of an item. Marcus ¶ 4. This receipt image
is captured by a user using a webcam, scanner or the like and submitted by
the user to the verification system. Marcus ¶ 4. By submitting proof
electronically, the user is no longer required to submit proof using mail and
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having to fill out forms. Marcus ¶ 44. Marcus further explains that using its
system, “[f]raudulent use of digital incentives, such as home printed
coupons, may be avoided because rewards are only given after verification.”
Marcus ¶ 45. One way of verifying that the proof of purchase is authentic is
to “sample receipts and check the originals with retailers to make sure there
are no counterfeits.” Marcus ¶ 45. Thus, we agree with the Examiner that
Marcus teaches receiving transaction information from the consumer, in the
form of the receipt images, and also receiving transaction information from
the merchant independently from the information received from the
consumer, in the form of the original receipts.
Appellant’s argues that Marcus does not indicate whether the
sampling of receipts and cross-checking them with the originals occurs prior
to a validated offer. Reply Br. 9. In the context of paragraph 45, however, it
is clear that checking the electronic receipts received from the consumer
with the originals from the merchant occurs as part of the verification
process, not something that occurs after verification has already occurred.
Further it is also clear that information about the original receipts come from
the merchant, and not the consumer, so that fraudulent behavior on the part
of the consumer may be avoided.
Therefore, we agree with the Examiner that Marcus discloses the
validation limitation of claim 1. Accordingly, we sustain the Examiner’s
rejection of independent claim 1, and of independent claims 10 and 21,
which Appellant argues together with claim 1. Appeal Br. 23. We also
sustain the Examiner’s rejection of claims 2–9, 11–14, and 16–20 which
depend from independent claims 1 or 10 and for which Appellant does not
make arguments for separate patentability.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–14, 16–21 101 Eligibility 1–14, 16–21
1–14, 16–21 102(e) Marcus 1–14, 16–21
Overall
Outcome
1–14, 16–21

TIME PERIOD FOR RESPONSE
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