Ex Parte Gillin

Patent Trials and Appeals Board

Jul 1, 2019

12831486 - (D) (P.T.A.B. Jul. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/831,486 07/07/2010
21186 7590 07/03/2019
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Matthew J. Gillin
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.
4970.002US 1 2529
EXAMINER
LI,SUNM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/03/2019 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW J. GILLIN
Appeal2018-006079
Application 12/831,486 1
Technology Center 3600
Before ROBERT E. NAPPI, JOHN A. EV ANS, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-21 and 23-31, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Introduction
The present invention relates to "an electronic communication system
and method and, more particularly, to a system and method of passively
1 Appellant identifies Relay Holdings, LLC as the real party in interest.
App. Br. 2.
Appeal2018-006079
Application 12/831,486
acquiring a customer's phone number and linking the customer's phone
number to the customer's account without requesting the customer to
actively provide customer identifying information." Spec. ,r 1. Claim 1 is
exemplary:
1. A method of passively acquiring an existing customer's
mobile phone number and linking the existing customer's mobile
phone number to the existing customer's account without
requesting the existing customer to actively provide customer
identifying information, comprising the steps of:
creating a unique code for the existing customer;
creating a proxy code for said unique code;
sending the proxy code to the existing customer with an
invitation to open a new account, receive a new service, or renew
a service and soliciting a response to the invitation by returning
the proxy code by phone call or text message;
receiving the proxy code from the existing customer by
phone call or text message from the existing customer's mobile
phone;
a processor using the received proxy code to retrieve
information regarding the existing customer from a database and
comparing the phone number from which the phone call or text
message has been received against phone numbers in the
information in the database to authenticate the existing customer
from which the proxy code has been received; and
said processor linking the authenticated ex1stmg
customer's mobile phone number from which the phone call or
text message has been received to the unique code based on said
proxy code to thereby identify the existing customer and link the
existing customer's mobile phone number to the existing
customer's account.
2
Appeal2018-006079
Application 12/831,486
Rejection2
Claims 1-21 and 23-31 stand rejected under 35 U.S.C. § 101 because
they are directed to patent-ineligible subject matter. Final Act. 17-23.
ANALYSIS 3
35 us.c. § 101
We have reviewed the Examiner's rejection in light of Appellant's
contentions and the evidence of record. We concur with Appellant's
contention that the Examiner erred in this case.
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. 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. Pty.
Ltd. v. CLS Banklnt'l, 573 U.S. 208,216 (2014) (internal 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
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
2 Throughout this opinion, we refer to the ( 1) Final Office Action dated June
16, 2017 ("Final Act."); (2) Appeal Brief dated December 18, 2017 ("App.
Br."); (3) Examiner's Answer dated March 26, 2018 ("Ans."); and (4) Reply
Brief dated May 25, 2018 ("Reply Br.").
3 Appellant raises additional arguments. Because the identified issues are
dispositive of the appeal, we do not need to reach the additional arguments.
3
Appeal2018-006079
Application 12/831,486
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. Kappas, 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 (1854))); 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 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 patent
protection for that formula in the abstract ... is not accorded the protection
4
Appeal2018-006079
Application 12/831,486
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., 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 tum 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 (internal 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. (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 PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the
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) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
5
Appeal2018-006079
Application 12/831,486
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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Turning to Step 2B of the Guidance, "[t]he second step of the Alice
test is satisfied when the claim limitations 'involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry."' Berkheimerv. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) ( quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). "Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination." Berkheimer, 881 F.3dat 1369.
In this case, the Examiner finds the additional elements of the claims
are well-understood, routine and conventional activities. See Final Act. 22;
Ans. 8-9. The Examiner asserts such factual findings do not require any
supporting evidence:
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception ... Courts have not identified a
situation in which evidence was required to support a finding that
the additional elements were well-understood, routine or
6
Appeal2018-006079
Application 12/831,486
conventional, but rather treat the issue as a matter appropriate for
judicial notice.[]
Ans. 18.
The Examiner's assertion contradicts the Berkheimer standard, and
the Examiner erred by not providing the evidence required by Berkheimer.
See Berkheimer, 881 F.3d at 1369. In particular, we agree with Appellant
(Reply Br. 2-9)4 that the Examiner has not provided any of the four
categories of information required by the USPTO Memorandum, dated April
19, 2018, of Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.) ("Berkheimer Memorandum"):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) ....
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.0S(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element( s ) ....
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element( s ) ....
Berkheimer Memorandum at 3--4.
4 Because the Federal Circuit issued the Berkheimer decision after
Appellants filed the Appeal Brief, Appellants had good cause to raise
arguments based on Berkheimer in the Reply Brief. See 37 C.F.R.
§ 41.41(b)(2).
7
Appeal2018-006079
Application 12/831,486
Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner's
rejection of claims 1-21 and 23-31 on procedural grounds.
DECISION
We reverse the Examiner's decision rejecting claims 1-21 and 23-31.
REVERSED
8