Kelsey Rose. Sweeney et al.

Patent Trials and Appeals Board

Sep 27, 2019

13781234 - (D) (P.T.A.B. Sep. 27, 2019)

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.
13/781,234 02/28/2013 Kelsey Rose Sweeney 37202/519001; 1307036US 6619
57956 7590 09/27/2019
FBFK/Intuit
Robert Lord
9 Greenway Plaza
Suite 500
HOUSTON, TX 77046
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KELSEY ROSE SWEENEY and BRYAN KYLE TUBLIN
____________

Appeal 2018-001411
Application 13/781,2341
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, SCOTT B. HOWARD, and
SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3–8, 10–15, and 17–21, which constitute all
claims pending in the application. App. Br. 9. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Intuit Inc. as the real party in interest. Br. 4.
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BACKGROUND
The Claimed Invention
The invention relates to managing an employee reward program, and
specifically, to providing “low cost rewards/benefits that [] employees
desire.” Abstract; Spec. ¶ 1. As the Specification explains, the invention
enables employers to tailor reward offerings to their employees based upon
factors such as each employee’s spending records. Id. at ¶¶ 2–3.
Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the
invention and the subject matter in dispute, and reads as follows:
1. A method, comprising:
retrieving, from a first personal financial management
application (PFMA) operating at a first remote location on a
computer network, a plurality of purchase records regarding a
spending history of a first employee of a first employer of a
plurality of employers, wherein the first PFMA tracks the
spending history of the first employee at the first remote
location;
detecting, from the plurality of purchase records, a first
employee preference for making purchases in a spending
category;
obtaining, by a reward processing computer system, an
employee reward item list comprising:
a first employer specific portion specifying items
designated by the first employer to be allocated for eligible
employees of the first employer; and
a for-trade items pool specifying items designated for
exchange among the plurality of employers;
receiving, from the first employer and via a graphical
user interface, an award eligibility requirement for the first
employee;
retrieving, from a first business management application
(BMA) operating at a second remote location on the computer
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network, employee information for the first employee from
business data for the first employer, wherein the first BMA
manages the business data for the first employer; determining,
from the employee information and based on the award
eligibility requirement, that the first employee of the first
employer is eligible for being rewarded;
determining, by the reward processing computer system,
that no designated item in the first employer specific portion
and the for-trade items pool of the employee reward item list
matches the first employee preference;
notifying, via the graphical user interface and based on
determining that the first employee is eligible for being
rewarded, the first employer that the first employee is eligible
for a reward;
displaying, to the first employer and via the graphical
user interface of the reward processing computer system, an
action button configured to enable the first employer to add a
new designated item that matches the first employee preference
to the employee reward item list, wherein the first employer
adds the new designated item to the employee reward item list
by selecting the action button; and
selecting the new designated item from the employee
reward item list, wherein the new designated item is awarded to
the first employee by the first employer via the graphical user
interface.
App. Br. 19–20 (Claims App.) (emphases added).
The Rejections on Appeal
Claims 1, 3–8, 10–15, and 17–21 are rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 2–5.
DISCUSSION
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
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37 C.F.R. § 41.37(c)(1)(iv). On the record before us, Appellants have not
persuaded us of error.
Rejection Under 35 U.S.C. § 101
The Examiner determined that the claims are directed to “rewarding
employees by their employers based on their purchase records,” which is a
“fundamental economic practice” and “method of organizing human
activities,” and accordingly constitutes an abstract idea. Final Act. 2–3;
Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-
step framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”). Further, the Examiner determined that the
additional elements in the claims merely constituted “instructions to
implement the abstract idea” on a generic computer, and therefore did not
include additional elements sufficient to amount to significantly more than
the abstract idea. Final Act. 2–3. Thus, the Examiner concluded that the
claims constitute ineligible subject matter.
Appellants argue that the Examiner “overgeneralize[ed]” the claims
and ignored the recited elements of controlling “a dynamically changing and
unconventionally structured reward item list,” “matching of the employee’s
purchase preference to a reward item,” and “access[ing]” a “personal
financial management application (PFMA) . . . to retrieve purchase records.”
App. Br. 10–14; Reply Br. 2–3. Appellants further contend the claims are
materially different from those that have been found directed to ineligible
subject matter in other cases (see infra), and that even if the claims include
an abstract idea, they also recite “highly specialized” (not generic) computer
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functions that amount to significantly more than the abstract idea itself.
App. Br. 16–18; Reply Br. 5.
After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(“Step 2A, Prong Two”).
See 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and 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 id. at 56 (collectively “Step 2B”).
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We begin our de novo review with Step 2A, Prong One of the
Guidance as applied to Appellants’ claim 1.2 We observe that claim 1
recites “a method” comprising the following steps: (1) “retrieving” purchase
records (i.e., data); (2) “detecting” preferences from this data; (3)
“obtaining” a reward item list (i.e., data) comprising particular items; (4)
“receiving” an eligibility requirement (i.e., rules or data); (5) “retrieving
. . . employee information;” (6) “determining” eligibility (i.e., applying rule);
(7) “determining” matches of reward list items to preference; (8) “notifying”
the employer of employee eligibility (i.e., transmitting data); (9)
“displaying” an action button; (10) “add[ing]” a designated item by selecting
the action button (i.e., data input); and (11) “selecting” a designated item
from the reward list (i.e., data input). App. Br. 19–20.
We agree with the Examiner’s determination that these steps merely
describe the data retrieval, processing, selection, and display involved in
administering an employee rewards program, which is an abstract idea.
Steps (1), (3), (4), and (5) recite data retrieval related to rewards and
employee purchasing. Steps (2), (6), and (7) recite applying reward program
rules that will determine reward to offer an employee. Steps (8) and (9)
recite data transmission or display related to reward eligibility. Finally,
steps (10) and (11) recite data input regarding selection of a reward. Each of
these steps describe a rewards program, which is a fundamental economic
practice. Accordingly, we determine that, like the claims to hedging in

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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Bilski and the claims to mitigating settlement risk in Alice, claim 1 recites a
fundamental economic practice, which is one of the certain methods of
organizing human activity deemed to be an abstract idea under the
Guidance. See Bilski v. Kappos, 561 U.S. 593 (2010); Alice, 573 U.S. 208.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellants argue that claim 1 recites
“highly specialized computer functions” and unique “personal financial
management application” that realize technical improvements. App. Br. 11–
12 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016);
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)); Reply Br. 5–6.
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance Section III. Appellants,
however, do not explain, and we do not discern, any improvement in
technology from the claimed invention. Compare Enfish, 822 F.3d at 1330–
33, 1336 (“self-referential database” which permitted faster searching for
data); McRO, 837 F.3d at 1302–03, 1307–08, 1314–15 (“specific . . .
improvement in computer animation” for “achieving automated lip-
synchronization,” using “unconventional rules that relate[d] sub-sequences
of phonemes, timings, and morph weight sets.”). The claims in McRO and
Enfish, for example, recited a “specific . . . improvement to the way
computers operated,” see, e.g., Enfish, 822 F.3d at 1330–33, but Appellants’
claim 1 recites a rewards program that merely uses generic computing
elements. Appellants’ Specification explains that the invention “may be
implemented on virtually any type of computing system,” and can be
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implemented “locally or remotely.” Spec. ¶ 47. The Specification lists a
wide variety of generic computing elements that may be used to implement
the invention, including generic laptops, smart phones, displays, power,
memory, keyboards, and networks. Id. at ¶¶ 47–48. Although Appellants
argue that the “business management application” recited in claim 1 is
unconventional, the Specification describes this element merely as “e.g., an
accounting software, a payroll software, etc.” Id. at ¶ 12; see also id. at ¶ 32
(“a business management application (BMA) (e.g., accounting application,
payroll application, personnel application, etc.) used by the employer to
manage his/her business”).
Appellants also do not direct us to any evidence that claim 1 recites
any unconventional rules, transform or reduce an element to a different state
or thing, or otherwise integrate the idea into a practical application. Rather,
claim 1 recites spending and rewards data being “retrieve[d],” “detect[ed],”
“obtain[ed],” “receive[d],” “determine[d],” “display[ed],” and “select[ed].”
App. Br. 20–21 (Claims App.). Reciting a result-oriented solution that lacks
any details as to how the computer performed the modifications is the
equivalent of the words “apply it.” Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2015) (citing Elec.
Power Grp., LLC, v. Alstrom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)
(cautioning against claims “so result focused, so functional, as to effectively
cover any solution to an identified problem”)); see also CyberSource v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (mere data
gathering does not make a claim patent-eligible). The data gathering and
processing steps in claim 1 do not add meaningfully to the recited
fundamental economic practice.
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Finally, under Step 2B of the Guidance we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
As discussed above, claim 1 recites a method that retrieves and
compares spending data in order to facilitate an employee rewards program.
See supra. We agree with the Examiner’s finding that simply using standard
computer elements to implement rules for facilitating a rewards program is
well understood, routine, and conventional. Ans. 3. Although Appellants
assert that the computer functions are “highly specialized,” Reply Br. 5,
Appellants do not identify any such highly specialized elements, and we
discern none. See, e.g., Spec. ¶¶ 47–48. As the Examiner finds, “[t]he
recitations to ‘computer network, processing computer system, system,
computer processor memory, and computer readable medium’ are
generically recited computer structure,” as described in the Specification.
Ans. 5; Spec. ¶¶ 47–48.
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter. Appellants do not argue
any of the remaining claims separately from claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). We, therefore, sustain the rejection of claims 1, 3–8, 10–
15, and 17–21 under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–8, 10–15,
and 17–21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED