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Patent Trials and Appeals Board

Nov 18, 2019

14161728 - (D) (P.T.A.B. Nov. 18, 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.
14/161,728 01/23/2014 Bruce John Chantry 014593-000024 1030
135716 7590 11/18/2019
Lincoln Electric-Tucker Ellis LLP
950 Main Avenue
Suite 1100
Cleveland, OH 44113
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
11/18/2019 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):
ip@lincolnelectric.com
patents@tuckerellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte BRUCE JOHN CHANTRY and GEORGE D. BLANKENSHIP

Appeal 2019-000933
Application 14/161,728
Technology Center 3600

BEFORE LINZY T. McCARTNEY, BETH Z. SHAW, and ALEX S. YAP,
Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant,1 Lincoln Global, Inc.,
appeals from the Examiner’s decision to reject claims 1–20. Final Act. 1.
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 Lincoln
Global, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to accommodating multi-party business
relationships. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system, comprising:
a supplier server computer, associated with a supplier,
having a processor and a memory, the supplier server computer
provides:
a supplier web site providing on-line ordering and
account management functionality to original equipment
manufacturers and end users of the original equipment
manufacturers; and
an account database of original equipment manufacturer
accounts and end user accounts, wherein the memory stores
computer-executable instructions that, when executed by the
processor, configure the processor to:
establish a computerized association between an original
equipment manufacturer account of an original equipment
manufacturer and an end user account of an end user within the
supplier server computer in response to the end user creating
the end user account with the supplier via the supplier web site;
credit the original equipment manufacturer account of the
original equipment manufacturer with a first set of account
credits in response to the original equipment manufacturer
purchasing a first supplier subsystem from the supplier via the
supplier web site;
based on the computerized association, credit the original
equipment manufacturer account with a second set of account
credits in response to the end user, of a product of the original
equipment manufacturer that includes the first supplier
subsystem, making a purchase via the supplier web site; and
enhance a redemption value of at least one of the first or
second set of account credits of the original equipment
manufacturer, by applying a multiplier to account credits of at
least one of the first or second set of account credits, when the
original equipment manufacturer redeems the account credits of
at least one of the first or second set of account credits to
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purchase a second supplier subsystem from the supplier via the
supplier web site.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Austin US 2002/0082920 A1 June 27, 2002
Rolf US 2007/0219872 A1 Sept. 20, 2007
Placek US 2008/0313074 A1 Dec. 18, 2008
Wedderburn US 2015/0127438 A1 May 7, 2015
REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101.
Claims 1, 2, 6–8, 10–14, 19, and 20 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Austin and Rolf. Final Act. 7–18.
Claims 3, 4, 5, 15, 16, and 17 are rejected under 35 U.S.C. § 103 as
being unpatentable over Austin, Rolf, and Wedderburn. Id. at 18–20.
Claims 9 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Austin, Rolf, Wedderburn, and Placek. Id. at 20–22.
OPINION
Section 101 Rejection
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
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (quotation marks and 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
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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 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 183 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))).
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, 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
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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 U.S. Patent and Trademark Office (“USPTO”) recently published
revised guidance on the application of § 101. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under that Revised Guidance, we first look 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
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(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) (9th Ed., Rev. 08.2017, Jan.
2018)).
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 Revised Guidance.
Abstract Idea
For the following reasons, we conclude the claims recite a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus, an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52, 53 (listing
“[c]ertain methods of organizing human activity—fundamental economic
principles or practices” as one of the “enumerated groupings of abstract
ideas”).
Appellant addresses the claims as a group, and we treat claim 1 as
representative. The claim is directed to an abstract idea because it is directed
to a fundamental economic practice, which is one of certain methods of
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organizing human activity, as discussed below. The steps of claim 1,
including, with italics,
a supplier web site providing on-line ordering and
account management functionality to original equipment
manufacturers and end users of the original equipment
manufacturers; and
an account database of original equipment manufacturer
accounts and end user accounts, wherein the memory stores
computer-executable instructions that, when executed by the
processor, configure the processor to:
establish a computerized association between an original
equipment manufacturer account of an original equipment
manufacturer and an end user account of an end user within
the supplier server computer in response to the end user
creating the end user account with the supplier via the supplier
web site;
credit the original equipment manufacturer account of
the original equipment manufacturer with a first set of account
credits in response to the original equipment manufacturer
purchasing a first supplier subsystem from the supplier via the
supplier web site;
based on the computerized association, credit the
original equipment manufacturer account with a second set of
account credits in response to the end user, of a product of the
original equipment manufacturer that includes the first supplier
subsystem, making a purchase via the supplier web site; and
enhance a redemption value of at least one of the first or
second set of account credits of the original equipment
manufacturer, by applying a multiplier to account credits of at
least one of the first or second set of account credits, when the
original equipment manufacturer redeems the account credits
of at least one of the first or second set of account credits to
purchase a second supplier subsystem from the supplier via the
supplier web site
recite steps of establishing an association between an original equipment
manufacturer account of an original equipment manufacturer and an end
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user account of an end user, in response to the end user creating the end
user account with the supplier, crediting the original equipment
manufacturer account of the original equipment manufacturer with a first set
of account credits in response to the original equipment manufacturer
purchasing a first supplier subsystem from the supplier, crediting the
original equipment manufacturer account with a second set of account
credits in response to the end user, of a product of the original equipment
manufacturer that includes the first supplier subsystem, making a purchase,
and enhancing a redemption value of at least one of the first or second set of
account credits of the original equipment manufacturer, by applying a
multiplier to account credits of at least one of the first or second set of
account credits, when the original equipment manufacturer redeems the
account credits of at least one of the first or second set of account credits to
purchase a second supplier subsystem from the supplier.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic practices, such as the concept of intermediated settlement in Alice,
and the concept of hedging in Bilski. Like those concepts, claim 1 also
recites a fundamental economic practice. Specifically, the italicized steps
fall under the umbrella of economic practices, including managing
transactions or sales activities, because “making a purchase” and
“redeem[ing] account credits” would ordinarily take place in a sale or
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market transaction, which occurs in our system of commerce. The “making
a purchase” is an economic act, and the “product” is an item sold in
commerce. See Spec. ¶ 2 (“Certain embodiments of the present invention
relate to business relationships. More particularly, certain embodiments of
the present invention relate to systems and methods to accommodate
business relationships between a supplier, an original equipment
manufacturer (OEM), and an end user.”).
Claim 1 is, thus, similar to claims that courts have concluded recite a
fundamental economic practice. See, e.g., Bilski, 561 U.S. at 611
(determining that hedging risk is a “fundamental economic practice long
prevalent in our system of commerce”); Alice, 573 U.S. at 219–20
(determining that intermediated settlement is a fundamental economic
practice); see also Revised Guidance, 84 Fed. Reg. at 52 n.13.
Thus, we conclude claim 1 recites a fundamental economic practice,
which is one of certain methods of organizing human activity identified in
the Revised Guidance, and thus an abstract idea.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a)–(c) and (e)–(h), we determine that the additional elements of
claim 1, both individually and as an ordered combination, do not integrate a
judicial exception, in this case the abstract idea of a fundamental economic
practice, into a practical application. Claim 1 is directed to little more than
the implementation of the abstract idea on generic computer servers and
devices. The claimed “supplier server computer,” “processor,” “memory”
and “web site” are recited at a high level of generality and merely invoked as
a tool to perform the process of claim 1. Simply implementing the abstract
idea on a generic computer is not a practical application of the abstract idea.
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See, e.g., Fig. 1; Spec. ¶¶ 17–24 (“‘Computer’ or ‘processing element’ or
‘computer device’ or ‘processor’ as used herein includes, but is not limited
to, any programmed or programmable electronic device that can store,
retrieve, and process data.”).
Accordingly, the claim as a whole does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim, as a whole, is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Inventive Concept
Because we determine that claim 1 is “directed to” an abstract idea,
we next consider whether claim 1 recites an “inventive concept.” The
Examiner determined that claim 1 does not recite an inventive concept
because the additional elements in the claim do not amount to “significantly
more” than an abstract idea. See Final Act. 4–6.
We agree with the Examiner’s determination in this regard. The
additional elements recited in claim 1 include “supplier server computer,”
“processor,” “memory” and “web site.” The claim recites these elements at
a high level of generality, and the written description indicates that the
elements are generic. See, e.g., Fig. 1; Spec. ¶¶ 17–24 (“‘Computer’ or
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‘processing element’ or ‘computer device’ or ‘processor’ as used herein
includes, but is not limited to, any programmed or programmable electronic
device that can store, retrieve, and process data.”).
Using generic computer components to perform abstract ideas does
not provide the necessary inventive concept. See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”). Thus, these
elements, taken individually or together, do not amount to “significantly
more” than the abstract idea itself.
Preemption is a driving concern when determining patent eligibility.
See id. at 216–17. Patent law cannot inhibit further discovery by improperly
tying up the future use of the building blocks of human ingenuity. See id.
(citing Mayo, 566 U.S. at 85–86). Although preemption is characterized as a
driving concern for patent eligibility, preemption itself is not the test for
patent eligibility. “Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Id.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see App. Br. 9–11), these limitations are not additional
elements beyond the abstract idea, but rather are directed to the abstract idea
as noted previously. See Guidance, 84 Fed. Reg. at 56 (instructing that
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additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)).
Rather, the recited “supplier server computer,” “processor,”
“memory” and “web site” are the additional recited elements whose generic
computing functionality is well-understood, routine, and conventional, as
discussed in the Answer, and which Appellant does not address in the Reply
Brief. See Ans. 27, 28; Mortgage Grader Inc. v. First Choice Loan Services,
Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such
an “interface,” “network,” and “database” are generic computer components
that do not satisfy the inventive concept requirement); buySAFE v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”).
Accordingly, we sustain the Examiner’s rejection of the pending
claims under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.

Section 103 Rejections
Independent claim 1 recites, in part,
enhance a redemption value of . . . account credits of the
original equipment manufacturer, by applying a multiplier to
account credits of at least one of the first or second set of
account credits, when the original equipment manufacturer
redeems the account credits of . . . the first or second set . . . to
purchase a second supplier subsystem from the supplier via the
supplier web site.
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Appellant argues the Examiner erred because the cited art fails to disclose,
suggest, or otherwise render obvious at least this feature of independent
claim 1. In particular, Appellant argues the cited portions of Austin teach
that the customer earns more points when purchasing a promoted item, not
“when the original equipment manufacturer redeems the account credits of .
. . the first or second set . . . to purchase a second supplier subsystem from
the supplier via the supplier web site.” We agree. Although the cited
portions of Austin contemplate “redemption values” in paragraph 81, the
discussion in paragraph 58 of Austin relates to promotions for purchases.
Thus, although the cited portions of Austin may discuss applying a
multiplier of points to a purchase, and references the concept of redeeming
points in general, the Examiner has not sufficiently explained how Austin
teaches the claimed enhancing a redemption value of account credits by
applying a multiplier to account credits of at least one of the first or second
set of account credits, when the original equipment manufacturer redeems
account credits of the first or second set to purchase a second supplier
subsystem from the supplier via the supplier web site.
Accordingly, on this record, we do not sustain the § 103 rejection of
claim 1. For the same reasons, we do not sustain the § 103 rejection of
claims 2, 6–8, 10–14, 19, and 20. Additionally, we do not sustain the
rejection of claims 3, 4, 5, 15, 16, and 17 under 35 U.S.C. § 103 as being
unpatentable over Austin, Rolf, and Wedderburn, because the Examiner
does not allege that Wedderburn cures the deficiencies discussed above.
Additionally, we do not sustain the rejection of claims 9 and 18 under
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35 U.S.C. § 103 as being unpatentable over Austin, Rolf, Wedderburn, and
Placek, because the Examiner does not allege that Placek cures these
deficiencies.
CONCLUSION
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejection of claims 1, 2, 6–8, 10–14, 19,
and 20 under 35 U.S.C. § 103 as being unpatentable over Austin and Rolf.
We reverse the Examiner’s rejection of claims 3, 4, 5, 15, 16, and 17
under 35 U.S.C. § 103 as being unpatentable over Austin, Rolf, and
Wedderburn.
We reverse the Examiner’s rejection of claims 9 and 18 under
35 U.S.C. § 103 as being unpatentable over Austin, Rolf, Wedderburn, and
Placek.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 1–20
1, 2, 6–8, 10–14,
19, 20
103 Austin, Rolf 1, 2, 6–8, 10–14,
19, 20
3, 4, 5, 15, 16, 17 103 Austin, Rolf,
Wedderburn
3, 4, 5, 15, 16, 17
9, 18 103 Austin, Rolf,
Wedderburn,
Placek
9, 18
Overall
Outcome
1–20
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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