Ex parte Shenk

• Decision Date: 26 May 2021
• Docket Number: Application 14/012,Appeal 2020-006203,641
• Parties: Ex parte JEFFREY SHENK, MICHAEL GORUN, and MITAL BHATT Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte JEFFREY SHENK, MICHAEL GORUN, and MITAL BHATT Technology Center 3600

Appeal No. 2020-006203

Application 14/012, 641

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 26, 2021

FILING DATE: 08/28/2013.

Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and AMEE A. SHAH Administrative Patent Judges.

DECISION ON APPEAL

SHAH Administrative Patent Judge.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), the Appellant^[1] appeals from the Examiner's final decision to reject claims 1-3 and 6-23 which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM and ENTER a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER

The Appellant's invention relates to "systems and methods of tracking and allocating vendor-tracked benefits, including both loyalty incentives and prepaid goods/services." Spec. ¶ 16.

Claim 1 is the only independent claim on appeal, is representative of the subject matter on appeal, and is reproduced below (with lettered bracketing added for reference).

1. A system comprising:

a benefits server comprising a database including stored customer accounts associated with at least two members, the at least two members being independent vehicle servicing entities each having at least one member server, the benefits server configured to:

[(a)] communicate with the at least two member servers via a network;

[(b)] retrieve a plurality of vehicle transaction records from each of the at least two member servers, each vehicle transaction record being specific to the member from which the transaction record was retrieved, each vehicle transaction record indicative of a good or service provided by the member to a customer of the member and relating to a vehicle associated with the customer, and at least some of the plurality of transaction records containing an operation code, the operation code being predefined by the member at the database prior to receipt of the vehicle transaction records and uniquely representing the member as well as a type of goods and/or services provided to a customer by the member associated with the vehicle, the vehicle transaction record identifying the customer and the operation codes being specific to the member;

[(c)] determine, for each vehicle transaction record, a meaning of the operation code to the member from which the transaction record was retrieved, wherein the operation code and associated value are specific to the member;

[(d)] extract customer information from each transaction record;

[(e)] search the database for the customer information;

[(f)] when the customer information is found in the database, update a customer account in the database with information from the vehicle transaction record, including adjusting an account balance in the customer account based on a predefined value of the goods and/or services as represented by the operation code included in the transaction record; and

[(g)] in response to updating a customer account with information from a transaction record based at least in part on the operation code, automatically transmit a message to a member server associated with said customer account.

Appeal Br. 23 (Claims App.)

REFERENCES

The prior art relied upon by the Examiner are:

Name

Reference

Date

Bortolin et al. (“Bortolin”)

US 8, 141, 777 B2

Mar. 27, 2012

Berardi et al. (“Berardi”)

US 2005/0160003 A1

July 21, 2005

Krajicek et al. (“Krajicek”)

US 2009/0006212 A1

Jan. 1, 2009

Seven et al. (“Seven”)

US 2009/0048923 A1

Feb. 19, 2009

White et al. (“White”)

US 2010/0191594 A1

July 29, 2010

Georgi

US 2011/0178861 A1

July 21, 2011

Hassan et al. (“Hassan”)

US 2011/0238498 A1

Sept. 29, 2011

Reodica

US 2011/0295675 A1

Dec. 1, 2011

LaPorte et al. (“LaPorte”)

US 2011/0307318 A1

Dec. 15, 2011

Paterson

US 2012/0078695 A1

Mar. 29, 2012

Chandrasekaram et al. (“Chandrasekaram”)

US 2012/0095820 A1

Apr. 19, 2012

Draper

US 2012/0185399 A1

July 19, 2012

Basmajian et al. (“Basmajian”)

US 2013/0110607 A1

May 2, 2013

Birsin et al. (“Birsin”)

US 2014/0143086 A1

May 22, 2014

Kim et al. (“Kim”)

US 2014/0143107 A1

May 22, 2014

Mason et al. (“Mason”)

US 2014/0279312 A1

Sept. 18, 2014

REJECTIONS^[2]

Claims 1-3 and 6-23 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. Final Act. 3.

Claims 1-3, 9-11, and 23 stand rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, and Reodica. Id. at 9.

Claims 6 and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, and Chandrasekaram. Id at 21.

Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Basmajian, and Krajicek. Id. at 23.

Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, and Berardi. Id. at 25.

Claims 13 and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, and Paterson^[3]. Id. at 18.

Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Berardi. Id. at 27.

Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, Berardi, and LaPorte. Id. at 28.

Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, Berardi, LaPorte, and Krajicek. Id. at 29-30.

Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, Bortolin, and Mason. Id. at 34.

Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Birsin. Id. at 30.

Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Hassan. Id. at 32.

Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Seven. Id. at 26.

Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable over Draper, White, Georgi, Reodica, Paterson, and Kim. Id. at 36.

OPINION

35 U.S.C. § 101 - Statutory Subject Matter

The Appellant presents arguments for all the claims together. See Appeal Br. 8, 21. We thus group all the claims together and select claim 1 as representative of the group, with the rejection of the remaining claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).

35 U.S.C. $ 101 Framework

Section 101

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 U.S. 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 Banklnt'l, 573 U.S 208, 216(2014).

In determining whether a claim falls within an excluded category, we are guided by the Court's two-part framework, described in Mayo and Alice. Id. at 217-18 (citingMayo 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))).

In Diehr, the claim at issue recited a mathematical formula, but the 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 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. (citations omitted) (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...