Ex Parte Hammad et al

Patent Trial and Appeal Board

Aug 24, 2017

13338108 (P.T.A.B. Aug. 24, 2017)

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.
13/338,108 12/27/2011 Ay man Hammad 79900-823691(88700US) 8485
66945 7590 08/28/2017
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
ipefiling@kilpatricktownsend.com
EDurrell @ kilpatrickto wnsend .com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AYMAN HAMMAD and PATRICK L. FAITH
Appeal 2015-005047
Application 13/338,108
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING,
and NINA L. MEDLOCK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1, 2, 5—9, 11, 12, 14, 15, 17—24, and 26—30.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A method of conducting a mixed mode financial transaction
between a first device and a second device, the method comprising:
Appeal 2015-005047
Application 13/338,108
initiating, with the first device, the financial transaction using a first
communication mode between the first device and the second device,
wherein the first device and the second device are proximate to each other;
and wherein the first device is a consumer device and the second
device is a merchant device;
exchanging data between the consumer device and the merchant
device using the first communication mode, wherein a unique value is
generated based on the data exchanged between the consumer device and the
merchant device;
authenticating the merchant device using the consumer device;
based on authenticating the merchant device, sending, by the
consumer device, a transceiver activate message to instruct the merchant
device to activate a transceiver associated with the merchant device to be
used for a second communication mode, wherein the first mode of
communication and the second mode of communication are different modes
of communication;
initiating the second mode of communication that is dependent on the
data exchanged in the first mode of communication and unique value
generated based on the data exchanged using the first mode of
communication; and
continuing the transaction by sending, by the consumer device, an
authorization request message to request authorization of the transaction
using the second communication mode, wherein the consumer device and
the merchant device are proximate to each other when communicating using
the second mode of communication, wherein the consumer and merchant
device are proximate when the devices are within 10 meters of each other.
Appellants appeal the following rejections:
1. Claims 1, 2, 5, 7, 24, and 26 under 35 U.S.C. § 103(a) as unpatentable
over Fisher (US 2008/0051059 Al, pub. Feb. 28, 2008) and in view of
Findikli (US 2008/0081608 Al, pub. Apr. 3, 2008).
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Application 13/338,108
2. Claims 6 and 8 under 35 U.S.C. § 103(a) as unpatentable over Fisher,
Findikli, and in view of Rosenblatt (US 2010/0082490 Al, pub. Apr. 1,
2010).
3. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Findikli,
and in view of Levy (US 2012/0040717 Al, pub. Feb. 16, 2012).
4. Claims 27 and 28 under 35 U.S.C. § 103(a) as unpatentable over Fisher,
Findikli, and in view of Fujii (US 2007/0171848 Al, pub. July 26, 2007).
5. Claims 11, 12, 14, 17—19, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Fisher and Fujii.
6. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Fujii,
and in view of Rosenblatt.
7. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Fujii,
Rosenblatt, and in view of Duncan (US 2004/0132461 Al, pub.
July 8, 2004).
8. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Fisher, Fujii,
and in view of Ben (Ben Joan, “Difference Between RFID and NFC).
ISSUE
Did the Examiner err in rejecting the claims under 35 U.S.C. § 101
because the use of multiple communication modes between two devices
within a single transaction is not some vague, general or fundamental
concept like hedging or creating a contract but instead presents a technical
environment?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 101
because the invention is rooted in technology and recites meaningful
limitations that sufficiently limit the practical application?
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Did the Examiner err in rejecting the claims under 35U.S.C. §101
because the claims do not tie up any judicial exception and because the
claims recite significantly more than an abstract idea?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 103(a)
because the prior art does not disclose initiating the transaction using a first
communication mode and based on authentication of the merchant device
sending a message to activate a second communication mode and continuing
the transaction using the second communication mode?
ANALYSIS
Rejection under 35 U.S.C. § 101
We note at the outset that an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include implicit exceptions: “[ljaws of nature, natural phenomena, and
abstract ideas are not patentable.” E.g., Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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
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risk.”); 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.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Benson, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
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The Examiner held that the claims were directed to a method of
exchanging data in a mixed mode communications environment between
two devices in order to implement authorization of a transaction using
generic technology. The Examiner further held that although the claims
encompass different communication modes that are programmed and
configured to exchange data, the claims do not recite an improvement to
another technology or technical field or purport to alter the functioning of
the computer itself. Ans. 3^4. Largely, we agree.
In our view, independent method claim 1, based on its express
limitations, is directed to a method of conducting a financial transaction by
exchanging data between a first and second device using two
communication modes. We agree with the Examiner that claim 1 is directed
to an abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the method claimed in the present application is
not similar to any of the ineligible abstract ideas discussed in the Office’s
2014 Interim Guidance on Patent Subject Matter Eligibility dated
December 16, 2014 (“Guidance”). Appellants argue that the use of multiple
communication modes between two devices within a single transaction is
not some vague, general or fundamental concept like hedging or creating a
contract but instead presents a technical environment. However, the Court
found in Alice that it need not labor to delimit the precise contours of the
“abstract ideas” category in that case. See Alice, 134 S. Ct. at 2357. In this
regard, abstract ideas include, but are not limited to, fundamental economic
practices, methods of organizing human activities, an idea of itself, and,
mathematical formulas or relationships. Id. at 2355—2357. As such, the fact
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that the abstract idea recited in claim 1 is not discussed in the Guidance is
not dispositive. In addition, the concept of processing transactions to which
claim 1 is directed is similar to, for example, “[performing a sales
transaction over the Internet, or in conjunction with an auction and a
competitive activity” (Priceplay.com, Inc. v. AOL Advert., Inc.,
83 F. Supp.3d 577, 581 (D. Del. 2015), affd, 627 F. App’x 925 (Fed. Cir.
2016)), which has been found to be an abstract idea.
In regard to the technical environment of the claimed subject matter,
we note that our reviewing court in Content Extraction and Transmission
LLC v. Wells Fargo Bank, Natl Ass ’n, 776 F.3d 1343, 1346-47 (Fed. Cir.
2014) held that patents that recited a method of (1) extracting data from hard
copy documents using a scanner, (2) recognizing specific information from
that data, and (3) storing that information in memory recited a well-known
abstract idea despite the fact that the claimed subject matter was in the
technical environment of scanners. 776 F.3d at 1347. The Content
Extraction court further noted that “humans have always performed” the
functions of collecting, recognizing, and storing data, and that,
notwithstanding the requirement that the functions be performed on a
scanner, the claims were “drawn to the basic concept of data recognition and
storage.” Id. Here, the claims are directed to the basic concept of receiving,
processing, and transmitting data which like collecting, recognizing, and
storing data has long been performed by humans.
We turn next to the second step of the Alice analysis because we have
determined that independent claim 1 is directed to an abstract idea. The
second step requires that we determine whether the claims include
significantly more than the abstract idea. This step requires that we
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determine whether the claim includes an “inventive concept” that is
significantly more than the abstract idea itself.
We agree with the Examiner that claim 1 does not include
significantly more than the abstract idea itself. In this regard, we are not
persuaded of error on the part of the Examiner by Appellants’ argument that
the invention is sufficiently rooted in technology and recites meaningful
limitations that sufficiently limit the practical application.
Although the invention relates to a method in which two
communications modes are used between two devices, the method does not
recite improvements to the first or second device, the first and second
communication modes, or how the devices and communications modes
perform the functions recited in claim 1. Of course, the processing of
transactions between two devices using two communication modes has
advantages as discussed in Appellants’ Specification. However, this does
not, in itself, remove the claimed subject matter from the realm of the
abstract as necessarily rooted in technology. See Alice, 134 S. Ct. at 2352
(holding a “computerized scheme for mitigating 'settlement risk’ “as
unpatentable subject matter”); In re TLI Commc ’ns Patent Litig., 823 F.3d
607 (Fed. Cir. 2016) (holding unpatentable a method for recording imaging
with a phone, storing the images digitally, transmitting to a serv'd* and
sorting based on classification information).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claim includes a specific limitation other than
what is well-understood, routine and conventional in the field. Appellants
direct our attention to the recitation in claim 1 related to switching
communication modes in the course of performing one transaction. But this
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argument is not persuasive at least because the switching of the
communication mode in the course of performing one transaction is part of
the abstract idea itself. In addition, the question is not whether an additional
feature is novel, but whether the implementation of the abstract idea
involves “more than the performance of ‘well-understood, routine, [and]
conventional activities previously known to the industry.’” Content
Extraction and Transmission LLC, 776 at 1347-48. Appellants have not
shown the novel features transform the abstract idea into patent-eligible
subject matter
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the invention of claim 1 does not seek to tie up a
judicial exception such that others cannot practice it. Although preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir.), cert,
denied, 136 S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). And, “[w]here a patent’s
claims axe deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they axe in this case, preemption concerns are fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain this rejection of the
Examiner as it is directed to claim 1. We will also sustain the rejection as it
is directed to the remaining claims because the Appellants have not
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presented separate arguments in regard to the eligibility of these claims
under 35 U.S.C. § 101.
Rejection under 35 U.S.C. §103
We will not sustain this rejection because we agree with Appellants
that Fisher does not disclose initiating the transaction using a first
communication mode and based on authentication of the merchant device
sending a message to activate a second communication mode and continuing
the transaction using the second communication mode
The Examiner relies on Fisher at paragraphs 6, 20, 21 22-25, 27, 28.
31, 32, 33, 34, 112-118 and 122—125 for teaching this subject matter. Final
Act. 11-13, 15.
We find that although Fisher does disclose in paragraph 6, for
example, a mobile communication device that can communicate through two
communication modes, one of the communication modes is the one through
which voice data is sent and another is used to perform transactions. There
is no disclosure in this paragraph or the other relied on paragraphs that a
transaction is begun in a first communication mode and continued in a
second communication mode. In this regard, Fisher, in paragraphs 25 and
28, describes a transaction as taking place through one communication mode
only. In addition, the Examiner has not established and we find no
description in Fisher directed to a system having the capability to begin a
transaction through one communication mode and continue the transaction
through a second communication mode.
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In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1. We will also not sustain this rejection as it is directed to
the remaining claims because each of those claims requires continuing a
transaction through a second communication node or a system that is
capable of doing so.
DECISION
We affirm the Examiner’s § 101 rejection.
We reverse the Examiner’s § 103 rejection.
ORDER
AFFIRMED
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