Ex Parte McGuire

Patent Trial and Appeal Board

Sep 14, 2018

13351706 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/351,706
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
01/17/2012
09/18/2018
FIRST NAMED INVENTOR
Paul Russell McGuire
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.
BOKU-P059 5504
EXAMINER
PUTTAIAH, ASHA
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
ariana@matterlightip.com
s tephen @matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL RUSSELL MCGUIRE
Appeal2017-004568
Application 13/351,706
Technology Center 3600
Before JOSEPH L. DIXON, THU A. DANG, and LARRY J. HUME,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004568
Application 13/351,706
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a transaction initiated automatic enrollment
for merchant offers. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer system for managing electronic transactions,
compnsmg:
a server computer system including:
a processor;
a computer-readable medium connected to the processor;
a network interface device connected to the processor; and
a set of data and instructions on the computer-readable
medium, the set of data and instructions including:
a data store;
a plurality of consumer accounts stored in the data
store, each consumer account having a first consumer
account identifier;
a plurality of merchant accounts stored in the data
store, each merchant account having a first merchant
account identifier;
1 Appellant indicates that Boku, Inc. is the real party in interest. See App.
Br. 3.
2
Appeal2017-004568
Application 13/351,706
a merchant account management system receiving a
merchant off er over the network interface device from a
merchant computer system, and storing the merchant offer
being in the data store in association with the merchant
account having the respective first merchant account
identifier;
a communication and routing module that receives
a charge request over the network interface device, the
charge request including a second merchant account
identifier, an amount and a second consumer account
identifier and identifies a selected one of the consumer
accounts by associating one of the first consumer account
identifiers with the second consumer account identifier;
an automatic enrollment module that, automatically
in response to receiving the charge request, uses the
second merchant account identifier in the charge request
to find the first merchant account identifier and that
associates the merchant offer associated with the first
merchant account identifier with the selected consumer
account in response to the receiving of the charge request
by the communication and routing module to
automatically enroll the selected consumer account for the
merchant offer in response to receiving the charge request;
and
a transaction processing system that processes the
charge request based on an account detail of the selected
consumer account.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bemmel et al.
Arthur et al.
US 2008/0097851 Al
US 2008/0208762 Al
3
Apr. 24, 2008
Aug. 28, 2008
Appeal2017-004568
Application 13/351,706
REJECTIONS
The Examiner made the following rejections:
Claims 4 and 15 stand rejected under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA the applicant regards as the invention.
Claims 1-22 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1, 2, 4--13, and 15-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Arthur.
Claims 3 and 14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Arthur in view of Bemmel.
ANALYSIS
Rejection under 35 U.S. C § 112, second paragraph
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). "Language in a
claim is unclear if, when given its broadest reasonable interpretation, it is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention ... ," In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014 ), or if it is "is amenable to two or more plausible claim
constructions ... ," Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential).
4
Appeal2017-004568
Application 13/351,706
The Examiner finds that claims 4 and 15 recite "opt in/out" and the
symbol "/" is indefinite. The Examiner further finds "As the metes and
bounds of the claim are unclear. Examiner will interpret as 'or.'" (Ans. 9).
Appellant contends the use of the"/" symbol for the use of opt in/opt
out is clear and the Examiner's interpretation as an "or" is correct. 2 (Br. 8).
We find Appellant has clarified the claim language interpretation and
the Examiner understands what is claimed. Consequently, we find the
prosecution history to be sufficiently clear as to the appropriate
interpretation of the claim term "/" and that skilled artisans would have been
on notice and would have been able to determine the metes and bounds of
the claimed invention so as to obviate any indefiniteness. Therefore, we do
not sustain the Examiner's rejection under 35 U.S.C. § 112, second
paragraph.
Rejection under 35 U.S.C. § 1 OJ
We disagree with Appellant's arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.
The Examiner relies upon the prior statements of the rejection and
responds to Appellant's arguments. (Ans. 5). The Examiner rejects the
2 Additionally, we note that the Arthur reference additionally uses the same
terminology and phraseology as Appellant's use. ("[T]he mobile wallet
server 335 can be adapted to determine one or more recipients for the
marketing offers based at least in part on a preference information for the
one or more recipients, e.g., based on opt-in/opt-out or other preference
information." ( Arthur ,r 115)).
5
Appeal2017-004568
Application 13/351,706
claims under 35 U.S.C. § 101 because they are directed to patent ineligible
subject matter. See Final Act. 3---6, 10-12; Ans. 3-7.
In particular, the Examiner finds the claims are directed to the abstract
idea of "managing of electronic transactions." (Final Act. 5). The Examiner
further finds:
In the instant case, the claims are directed towards a method,
non-transitory computer readable, and the system of managing
electronic transactions. Step (2a) Managing electronic
transactions is akin to processing loan information and
comparing information regarding a sample or test subject to a
control or target data. As such, the claims include an abstract
idea. Step (2b) Additionally, the claims do not include additional
elements when considered individually or in combination that
are sufficient to amount to significantly more than the judicial
exception of abstract idea because the claims do not include an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment.
(Ans. 5)
Appellant indicates the Examiner erred in Step One of the Alice test
and Appellant does not present arguments to Steps 2A and 2B. (App.
Br. 13, and 19). "Appellant does find it relevant to ask whether the claims
are directed to an improvement to computer functionality versus being
directed to an abstract idea, even at the first step of the Alice analysis."
(App. Br. 13, see also App. Br. 14, 16, and 17). Appellant further contends
"the plain focus of the claims is on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity." (App. Br. 13). Appellant further argues the
claims "are directed to a specific improvement to the way computers
6
Appeal2017-004568
Application 13/351,706
operate, embodied in the method of at-merchant purchase based enrollment
for offers" and Appellant repeats the language of independent claim 12
without specifically identifying a specific improvement to the way
computers operate. (App. Br. 13, and14) (emphasis omitted).
Appellant further argues "the claims are not simply directed to any
form of managing electronic transactions, but instead are specifically
directed to the method of at merchant-purchase based enrollment for
offers" (App. Br. 15). Appellant provides a quotation from paragraph 102
of the Specification, but we find no corresponding disclosure in paragraph
102 of the originally filed Specification. As a result, Appellant's argument
does not show error in the Examiner's conclusion of patent ineligible subject
matter.
Appellant also alleges "[T]he specification also teaches that the
method of at-merchant-purchase based enrollment for offers functions
differently than conventional database structures." (App. Br. 16). But we
note that the level of detail in the supporting citation from paragraph 131 of
the Specification is not found in the language of independent claims 1
and 12. Thus, Appellant's argument fails because it is not commensurate
with the scope of the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) ("[A]ppellant's arguments fail from the outset because ... they are
not based on limitations appearing in the claims."). See In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[The] proffered facts, ... are not
commensurate with the claim scope and are therefore unpersuasive.").
Appellant contends:
Appellant's submission that the claims are directed to an
improvement of an existing technology is bolstered by the
specification's teachings that the claimed invention achieves
7
Appeal2017-004568
Application 13/351,706
other benefits over conventional systems, such as automatic
customer sign-up for offers based on purchases. See
paragraph 0004. See also Openwave Sys., Inc. v. Apple Inc., 808
F.3d 509, 513-14 (Fed. Cir. 2015) (finding that a specification's
disparagement of the prior art is relevant to determine the scope
of the invention).
(App. Br. 16). Reliance upon Openwave is unpersuasive because the
identified portion of the Specification does not "disparage" the prior art, but
merely summarizes the invention. As a result, Appellant's argument does
not show an improvement to existing technology.
Appellant further contends that the "specification's disparagement of
conventional data structures, combined with language describing the
'present invention' as including the features that make up the method of at
merchant-purchase based enrollment for offers." (App. Br. 18).
Appellant further argues that this evidences that the § 101 analysis has not
been deceived by the draftsman's art. (App. Br. 18). We disagree with
Appellant and find no disclosed disparagement in the identified portion of
the Specification. Consequently, Appellant's argument is not supported by
the record and are therefore unpersuasive.
Also, Appellant repeats the statement of an improvement of the
functioning of the computer, but does not specifically detail how the
operation of the computer is improved in any of their arguments. Rather, we
find the economic commercial transaction is improved or providing a
coupon/ discount is provided, but the operation of computer itself is not
improved. Consequently, Appellant's argument does not show the
improvement to the functioning of a computer/technology.
Finally, Appellant concludes because the "claims are not directed to
an abstract idea under step one of the Alice analysis, we do not need to
8
Appeal2017-004568
Application 13/351,706
proceed to step two of that analysis ... Appellant submits it is clear for the
reasons stated that the claims are not directed to an abstract idea, and so
Appellant will stop at step one." (App. Br. 19) (emphasis added).
Therefore, we have limited our review to Step one of the Alice analysis.
Appellant has not persuaded us of error.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. That provision"' ... contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court:
[W] e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. . . . We have
described step two of this analysis as a search for an "'inventive
concept'" -i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
9
Appeal2017-004568
Application 13/351,706
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice Step One, the Federal Circuit has "treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Elec. Power, 830 F.3d at 1351-1354; In re TL! Commc 'ns. LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). "And we have recognized
that merely presenting the results of abstract processes of collecting and
analyzing information, without more ( such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Elec. Power, 830 F.3d at 1354 (emphasis added); see also Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir. 2014).
10
Appeal2017-004568
Application 13/351,706
We find the claims are similar to the claims of Electric Power,
because they do not require any nonconventional computer or network
components, or even a "non-conventional and non-generic arrangement of
known, conventional pieces," but merely call for performance of the claimed
information collection, analysis and manipulation functions on generic
computer or network components. See Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). The rejected claims "fall into a
familiar class of claims 'directed to' a patent-ineligible concept." Elec.
Power, 830 F.3d at 1353. The claims are similar to the claims of Electric
Power, and are focused on the combination of abstract-idea processes or
functions. See Elec. Power, 830 F.3d at 1354.
In short, Appellant has not shown the claims, read in light of the
Specification, require anything other than conventional computer and
network technology for collecting, analyzing, and manipulating the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are "insufficient to pass the test of an inventive
concept in the application" of an abstract idea. See Elec. Power, 830 F .3d at
1355.
For example, claim 12 is directed to receiving or collecting
information ("storing, with a processor of a computer, a plurality of
consumer accounts ... "; "storing, with the processor, a plurality of merchant
accounts"; "receiving, with the processor, the merchant offer"; "storing, with
the processor, the merchant offer"; "receiving, with the processor, a charge
request";), and ; "identifying, with the processor, a selected one of the
consumer accounts"; "automatically, with the processor, in response to
receiving the charge request, using the second merchant account identifier in
11
Appeal2017-004568
Application 13/351,706
the charge request to find the first merchant account identifier and
associating the merchant offer associated with the first merchant account
identifier with the selected consumer account in response to the receiving of
the charge request by the communication and routing module to
automatically enroll the selected consumer account for the merchant offer in
response to receiving the charge request;" and "processing, with the
processor, the charge request"). (App. Br. 27, and28; Claims App.).
Appellant does not set forth separate arguments for patentability of the
dependent claims. (App. Br. 19).
Additionally, we find the abstract idea in independent claim 1, to be
similar to abstract ideas found to be not patent eligible by the Federal Circuit
(e.g., claim 22 of US Patent 7,603,382 (directed to coupons) Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)
(non-precedential); see also NexusCard, Inc. v. Kroger Co., 2016-2074
(Mem) (Fed. Cir. 2017) (non-precedential); see 173 F.Supp.3d 462 (E.D.
Texas 2016) (holding the patent was directed at abstract idea of a
membership discount program on a network regarding US Patent
5,924,080.)
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-22 under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 103
Appellant contends the Arthur reference does not teach or suggest:
an automatic enrollment module that, automatically in response
to receiving the charge request, uses the second merchant
account identifier in the charge request to find the first merchant
account identifier and that associates the merchant off er
associated with the first merchant account identifier with the
selected consumer account in response to the receiving of the
12
Appeal2017-004568
Application 13/351,706
charge request by the communication and routing module to
automatically enroll the selected consumer account for the
merchant offer in response to receiving the charge request
as recited in independent claim 1. (App. Br. 19-21 ).
The Examiner relies upon paragraphs 88-91 of the Arthur reference
and additionally to paragraph 92 of the Arthur reference. (Ans. 8). We do
not agree with the Examiner that the portions of the Arthur reference relied
upon in the grounds of the rejection teach or suggest the claimed automatic
enrollment module as recited in independent claim 1. Nor do we agree with
the Examiner that "it would obvious to one of ordinary skill in the art that
the functions which are presented in the example could also be conducted by
an entity labelled as a 'merchant' as the service provider could also be the
'merchant."' (Ans. 8).
We find paragraph 88 of the Arthur reference discloses a consumer
can enroll in a mobile commerce program; paragraph 89 discloses the
enrollment/registration process; paragraph 90 discloses if not a current
customer then you have an opportunity to purchase a plan; and paragraph 92
discloses an opportunity to opt in/out of receiving marketing messages.
Therefore, the Examiner has not shown all the limitations are taught or
suggested by the Arthur reference, and we cannot sustain the Examiner's
obviousness rejection of illustrative independent claim 1 and independent
claim 12 which contains similar limitations. 3
3 We note that ,r 115 of the Arthur reference discloses a mobile wallet to
determine recipients of marketing offers based upon opt in and opt out
preferences. We note that this disclosure is similar to dependent claim 4 and
which is the precursor for the automatic enrollment in independent claim 1,
but the Examiner has not applied these features to the claimed invention.
We leave it to the Examiner to further consider these additional teachings in
13
Appeal2017-004568
Application 13/351,706
REPLY BRIEF
We note that Appellant did not file a Reply Brief to respond to the
Examiner's further clarifications in the Examiner's Answer with regards to
the patent eligibility rejection.
CONCLUSIONS
The Examiner erred in rejecting claims 4 and 15 based upon
indefiniteness under 35 U.S.C. § 112, second paragraph, and the Examiner
erred in rejecting claims 1-22 based upon obviousness under 35 U.S.C.
§ 103, but the Examiner did not err in rejecting claims 1-22 based upon a
lack of patent eligible subject matter under 35 U.S.C. § 101.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 3 7
C.F.R. § 4I.50(a)(l).
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
4 and 15 based upon indefiniteness, and we reverse the Examiner's
obviousness rejection of claims 1-22, but we sustain the Examiner's patent
eligibility rejection of claims 1-22.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
,r 113 through ,r 11 7 of the Arthur reference in any further prosecution on the
merits.
14