Emmitt J. SmithDownload PDFPatent Trials and Appeals BoardOct 21, 202014823850 - (D) (P.T.A.B. Oct. 21, 2020) Copy Citation 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. 14/823,850 08/11/2015 Emmitt J. Smith III 107504.00019 1176 33649 7590 10/21/2020 Mr. Christopher John Rourk Jackson Walker LLP 2323 ROSS AVENUE SUITE 600 DALLAS, TX 75201 EXAMINER ZARE, SCOTT A ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 10/21/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EMMITT J. SMITH, III Appeal 2019-003027 Application 14/823,850 Technology Center 3600 Before SUSAN L. C. MITCHELL, FREDERICK C. LANEY, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s final rejection of claims 21–40. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). A hearing was held on August 20, 2020. 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 EMMITT J. SMITH, III. Appeal Br. 4. Appeal 2019-003027 Application 14/823,850 2 CLAIMED SUBJECT MATTER The claims are directed to a method of providing payment data from an electronic personal device. Claim 1, reproduced below, is the sole independent claim. 21. A method comprising: providing payment data from an electronic personal device to a point of sale system using a wireless connection to a transaction processing system; determining whether transaction data is available in conjunction with the wireless connection to the transaction processing system; transmitting the transaction data if it is determined that the transaction data is available; determining whether the transaction data is associated with a radio frequency tag system; determining whether a transaction identifier has been provided; and providing the transaction data to a user if the transaction data is associated with the radio frequency tag system and the transaction identifier has been provided. REJECTIONS Claims 21–40 are rejected under 35 U.S.C.: § 112(a) for inadequate written description and lack of enablement; § 112(b) for indefiniteness; and § 101 as patent ineligible subject matter. Appeal 2019-003027 Application 14/823,850 3 OPINION 35 U.S.C. § 112(a) – Written Description The Examiner determined that the claims include subject matter not described in the specification in a manner to show that the inventor had possession of the claimed invention. Final Act. 9. In particular, claim 21 includes, inter alia: determining whether the transaction data is associated with a radio frequency tag system; . . . providing the transaction data to a user if the transaction data is associated with the radio frequency tag system and the transaction identifier has been provided. Id. The Examiner explains that though “the Specification discloses use of an RFID system (see Spec., ¶¶ 0029, 0050, 0065) for performing wireless communication, the Specification fails to disclose [the above method steps],” and “Figure 8 does not appear to suggest such an embodiment for providing transaction data to a user.” Id. Thus, the Examiner determines “that one of ordinary skill in the art would not conclude that Applicant was in possession of the claimed invention at the effective time of filing of the present application.” Id. at 14. We address each claim limitation separately, starting with the step of “providing the transaction data . . . .” “Providing the transaction data . . .” The flow chart of Figure 8 is directed to a “method for providing transaction data to a user” (Spec. ¶ 16) that can include receiving “wireless transaction data . . . from a radio frequency tag system” (id. ¶ 65). At step 814 of the flow chart a transaction identifier is received and later at step 822, transaction data is received by a user. Id. at ¶¶ 67, 69. Appeal 2019-003027 Application 14/823,850 4 Based on these teachings, we agree with Appellant that the Specification provides written description support for “providing the transaction data to a user if the transaction data is associated with the radio frequency tag system and the transaction identifier has been provided.” Appeal Br. 13; Reply Br. 2–4. In the disclosed situation where the transaction data is received from a radio frequency tag system, the transaction data is necessarily associated with the radio frequency tag system. Thus, in the disclosed embodiment when the transaction identifier is received and the transaction data is later provided to a user, all of the elements of this claim limitation are present in the Specification, and therefore adequate written description support is provided. Though we agree with the Examiner that the flow chart in Figure 8 provides for transaction data to be provided to the user even if a transaction identifier is not received, we do not agree that the claim does not have written description support as a result. Ans. 9–10; see also Final Act. 14 (the Examiner adds the term “only” to the summary of the claim limitation). We agree with Appellant that the claim is not limited to providing transaction data only “if the transaction data is associated with the radio frequency tag system and the transaction identifier has been provided,” rather this is a minimum requirement for when transaction data is provided to the user. See Appeal Br. 12–13. The fact that the flow chart in Figure 8 discloses providing transaction data to a user both 1) after the transaction identifier has been provided, and 2) even if no transaction identifier is provided, does not remove the written description support for providing transaction data to a user after the transaction identifier has been provided. Thus, we do not sustain the Examiner’s rejection of claim 21 on this ground. Appeal 2019-003027 Application 14/823,850 5 determining whether . . . The Examiner also determines that “the Specification fails to disclose determining whether the (previously transmitted) transaction data (available in conjunction with the wireless connection) is associated with a radio frequency tag system.” Final Act. 9. Appellant argues that as disclosed in the Specification, if a shopper can carry items having a radio frequency tag . . . and the items can be charged to the shopper when the shopper exits the store . . . , where device control system 102 can receive . . . transaction data . . . that has been compiled by a radio frequency tag point of sale system, such as one that scans a buyer . . . to determine the contents based on radio frequency tags, . . . and where the . . . transaction data . . . can be provided to device control system 102 directly, through a wireless connection, by interfacing with a remote database . . . , then this disclosure must explicitly provide support for determining whether the transaction data is associated with a radio frequency tag. Reply Br. 3. We disagree. Appellant does not identify where the Specification teaches “determining whether the transaction data is associated with a radio frequency tag system.” The Specification clearly teaches obtaining transaction data with a radio frequency tag system. See e.g. Spec. ¶ 50. But once that data is obtained, the Specification is silent as to a step of analyzing the transaction data in order to determine whether the transaction data is associated with a radio frequency tag system. None of identified the teachings of 1) determining the shopper’s items based on RFID tags, 2) charging items to a shopper, 3) compiling transaction data by an RFID system, and 4) receiving transaction data by the device control system, teaches or “explicitly provides support for determining whether the transaction data is associated with a radio frequency tag.” Appellant Appeal 2019-003027 Application 14/823,850 6 provides no reasons why any of these steps requires “determining whether the transaction data is associated with a radio frequency tag.” Appellant also provides no reason why one of skill in the art would understand these steps as disclosing “determining whether the transaction data is associated with a radio frequency tag.” Appellant does broadly assert that one would understand that this recited determination occurs from the disclosure (Appeal Br. 12), but this is merely attorney argument. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Thus, Appellant’s argument does not inform us or error in the Examiner’s rejection. For these reasons, we sustain the Examiner’s rejection of the claims as lacking written description support for the limitation “determining whether the transaction data is associated with a radio frequency tag.” 35 U.S.C. § 112(a) – Enablement The Examiner determined that “[w]hile the Specification is enabling for providing transaction data to a user in accordance with Fig. 8, it does not reasonably provide enablement for the claimed invention (which is not adequately supported by the Specification).” Final Act. 10; see also Ans. 10 (making a similar statement). The question of enablement is separate from the question of whether one of skill would have understood the inventor was in possession of the invention as discussed above. Thus, even if the claims are directed to something not present in the written description, it does not necessarily follow that the claims are not enabled. Further, we agree with Appellant that “the Office must do more than simply assert in a conclusory manner” that the claims are not enabled. Appeal Br. 14. Thus, we do not sustain the Examiner’s rejection of claim 21 as non-enabled. Appeal 2019-003027 Application 14/823,850 7 35 U.S.C. § 112(b) – Definiteness The Examiner determines that the term “in conjunction with” in claim 21 is indefinite. Final Act. 10. Claim 21 includes: “determining whether transaction data is available in conjunction with the wireless connection to the transaction processing system.” The Examiner states “in conjunction with” means “in combination with” and that it is unclear whether this “requires two determinations; (1) as to whether the wireless connection is available and (2) as to whether the transaction data is available, or whether the transaction data is merely available when the wireless connection is determined to be available.” Final Act. 10–11. Appellant argues that the face of the claim only requires one determination and that is whether transaction data is available, which determination “is made with [or over] the wireless connection.” Appeal Br. 15. We agree that the claim only requires a single determination, but also requires that the determination be made over a wireless connection. Thus, we do not sustain the Examiner’s rejection of claim 21 as indefinite. 35 U.S.C. § 101 – Eligibility 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 determined that there are certain judicial exceptions to § 101, namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas. See Mayo Collaborative Svc. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71 (2012). The Supreme Court has 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.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014) (citing Mayo, Appeal 2019-003027 Application 14/823,850 8 566 U.S. at 72–73). According to the Supreme Court, we first determine whether the claims at issue are directed to one of those concepts. Id. If so, we secondly “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.” Id. (quoting Mayo, 566 U.S. at 79, 78). The PTO published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”). When conducting step one of the Alice framework under this guidance, we first look to whether the claim recites: Prong 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 Prong 2 additional elements that integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. 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; 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, 84 Fed. Reg. at 51. § 101 Analysis Applying the Revised Guidance to the facts on this record, we find that Appellant’s claims 21–40 are directed to patent-ineligible subject matter Appeal 2019-003027 Application 14/823,850 9 without significantly more. Appellant argues claims 21–40 as a group. See Appeal Br. 8–11. As a result, we select claim 21 as representative, and the remaining claims stand or fall with claim 21. See 37 C.F.R. § 41.37 (c)(1) (iv). Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A, Prong 1 of the 2019 Revised Guidance The Revised Guidance instructs us, first, to determine whether any judicial exception to patent eligibility is recited in the claims. The Revised Guidance identifies three judicially-excepted groupings identified by the courts as abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity such as fundamental economic practices; and (3) mental processes. Under Prong 1, the Examiner determined, and we agree, that “the claims are directed to managing transaction information for a user” or “processing transaction data” and therefore fall within the category of “a method for organizing human activity.” Final Act. 6; Ans. 7. The Examiner based this conclusion on the language of the claims and that the majority of the limitations are directed to performing retrieving, analyzing, and transmitting data, including: “providing payment data,” “determining whether transaction data is available,” “transmitting the transaction data if it is determined that the transaction data is available,” “determining whether the transaction data is associated with a radio frequency tag system,” “determining whether a transaction identifier has been provided,” and “providing the transaction data to a user if the transaction data is associated with the radio frequency tag system and the transaction identifier has been provided.” Ans. 7; see also Final Act. 5. Appeal 2019-003027 Application 14/823,850 10 Appellant contests the Examiner’s rejection generally, but does not directly address the Examiner’s analysis under Prong 1. Appeal Br. 8–11; Reply Br. 2. Appellant does argue that the Examiner’s rejection does not follow the guidelines of the Revised Guidance (Reply Br. 2), but again does not address the Examiner’s analysis applicable to Prong 1. Thus, we are not informed of error in the Examiner’s rejection. Practical Application: Step One of the Mayo/Alice Framework; Step 2A, Prong 2 of the 2019 Revised Guidance Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea, we next consider under Prong 2, whether the claims recite additional elements, considered individually and in combination, that integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. The additional elements recited in claim 21, beyond those the Examiner determined make up the abstract idea are: an electronic personal device, a point of sale system, and a wireless connection to a transaction processing system. See Final Act. 7; Ans. 4. We are not persuaded that these limitations, considered individually or as an ordered combination, integrate the abstract idea into a practical application. Instead, these elements merely apply the abstract idea using various computer systems, which the Examiner characterizes as a conventional computer functions performed on a generic computer network. Final Act. 7. Thus, under Prong 2 of Step 2A, the additional elements in independent claim 21 do not integrate the abstract idea into a practical application. Appellant argues that the Examiner’s analysis is “based entirely on form language and . . . [has] nothing to do with the actual claim language being examined.” Appeal Br. 9. In support, Appellant cites the closing Appeal 2019-003027 Application 14/823,850 11 paragraph of the Examiner’s rejection which appears to address limitations not in the claims. Id. (citing Final Act. 8). Though we agree that this one paragraph does not apply the Examiner’s analysis to the claims, the Examiner provides multiple pages of analysis directed specifically to Appellant’s claims. See Final Act. 4–8. Thus, Appellant’s assertion is unsupported as to the rejection as a whole. Appellant also argues that: “Simple logic dictates that if claims cover an ‘abstract idea,’ it should be a simple matter to find a single reference that discloses that alleged abstract idea, and the Office was unable to do so after diligent search and examination.” Appeal Br. 9. This argument confuses “abstract” with “novelty.” There is no requirement that the prior art teach an idea for the idea to be abstract. Rather, this is what is required to show that an idea is not new. See 35 U.S.C. § 102; see also Ans. 6. The case of In re Smith, 815 F.3d 816 (Fed. Cir. 2016), illustrates this point. There, the Federal Circuit agreed with the examiner’s determination that “the claims represented ‘an attempt to claim a new set of rules for playing a card game,’ which ‘qualifies as an abstract idea.’” Id. at 819. Thus, Appellant’s argument does not appraise us of error in the Examiner’s analysis or rejection. Appellant also faults the Examiner’s analysis of the conventional aspects of the claims. Appeal Br. 9–10. Appellant underlines a number of different features in the claims that it asserts are new and non-conventional. Id. at 10. However, the Examiner does not find that all of the features of the claims are old or conventional. Rather, as noted above, the Examiner analyzes the abstract idea and then determines that the electronic personal device, point of sale system, and wireless connection to a transaction processing system are conventional and do not integrate the judicial Appeal 2019-003027 Application 14/823,850 12 exception into a practical application. See Ans. 7. Appellant’s argument does not appraise us of error in the Examiner’s analysis or rejection. In view of the above, we determine that under Prong 2, the additional elements do not integrate the recited abstract idea into a practical application in a manner that imposes a meaningful limit on the judicial exception. Inventive Concept: Step Two of the Mayo/Alice Framework (Step 2B of the 2019 Revised Guidance) Under this step, we determine that the additional elements or combination of elements in claim 21 (electronic personal device, point of sale system, and wireless connection to a transaction processing system), when considered both individually and as an ordered combination, do not add significantly more so as to transform the abstract idea into patent- eligible subject matter. Rather, as noted above, they simply apply the abstract idea using various computer systems. For all of the above reasons, we are not persuaded of error in the Examiner’s rejection of claims 21–40 under 35 U.S.C. § 101. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–40 112(a) Written Description 21–40 21–40 112(a) Enablement 21–40 21–40 112(b) Definiteness 21–40 21–40 101 Eligibility 21–40 Overall Outcome 21–40 Appeal 2019-003027 Application 14/823,850 13 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 Copy with citationCopy as parenthetical citation