Ex Parte LYONS et al

Patent Trial and Appeal Board

Mar 18, 2019

13739465 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/739,465 01/11/2013
21839 7590 03/20/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Garry LYONS
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.
0076412-000126 5877
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRY LYONS, DAVID BROWN,
MICHAEL CLAY ATKINS, ORAN CUMMINS, and
DANIEL MARTIN
Appeal2018-002356 1
Application 13/739,465
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1--41. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to electronic financial transactions
through the use of a portable device. Spec. , 1.
1 The Appellants identify MasterCard International Inc. as the real party in
interest. Appeal Br. 2.
Appeal2018-002356
Application 13/739,465
Claim 1 is illustrative:
1. An electronic financial transaction method, comprising:
reading, in a payer device, a machine-readable pay code in
which transaction details for a specific transaction are encoded;
requesting, by the payer device and from a pay code
server, additional transaction details for the specific transaction,
by transmitting the read transaction details to the pay code server;
receiving, from the pay code server and by a receiver of
the payer device, the additional transaction details, wherein the
additional transaction details are based upon the transmitted read
transaction details and were stored at the pay code server prior to
the request ;
displaying, on a display of the payer device, an interactive
display, the interactive display including the additional
transaction details;
receiving, by a receiver of the payer device and in response
to the interactive display, indications of payer selected
transaction options from an input of the payer device;
transmitting, by a transmitter of the payer device, the
indications to the pay code server, for conveyance to a payee
device; and
receiving, by a receiver of the payer device, a notification
that completion of the transaction has been initiated by initiating
payment from the payer to the payee, displaying, on the display
of the payer device, the notification that completion of the
transaction has been initiated;
wherein the payer device is a communications device
enabled to read machine-readable code and specifically
programmed to electronically carry out the above reading,
requesting, displaying, transmitting, and receiving actions.
The Examiner rejected claims 1--41 under 35 U.S.C. § 101 as directed
to ineligible subject matter in the form of abstract ideas.
The Examiner rejected claims 1--41 under 35 U.S.C. § 103 as
unpatentable over Das et al., (US 2005/0197968 Al, pub. Sept. 8, 2005)
("Das"), Dimmick (US 2011/0251910 Al, pub. Oct. 13, 2011), and Dessert
et al., (US 2012/0296725 Al, pub. Nov. 22, 2012) ("Dessert").
2
Appeal2018-002356
Application 13/739,465
We AFFIRM.
ANALYSIS
Patentable Subiect Matter Reiection
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 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 Bank Int 'l, 573 U.S. 208,
216 (2014).
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
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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
3
Appeal2018-002356
Application 13/739,465
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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
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 176; see also id. at 192 ("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
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 (quotation marks 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
4
Appeal2018-002356
Application 13/739,465
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. 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); and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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.
See Guidance.
The Examiner finds the claims are directed to financial transactions,
which are fundamental economic practices. Answer 3; see also Final Act. 3.
We agree with the Examiner, because independent method claim 1 recites,
among other steps, "requesting ... additional transaction details for the
specific transaction, by transmitting the read transaction details ... ;
receiving ... the additional transaction details, wherein the additional
transaction details are based upon the transmitted read transaction
5
Appeal2018-002356
Application 13/739,465
details ... ; displaying ... the additional transaction details; receiving ...
indications of payer selected transaction options ... ; transmitting ... the
indications ... ; and receiving ... a notification that completion of the
transaction has been initiated by initiating payment from the payer to the
payee, displaying ... the notification that completion of the transaction has
been initiated," as part of a process to cause a payment transaction.
Independent claim 10 recites similar claim limitations. The processes use a
machine-readable code to make data input easier. Spec. ,r,r 2-3. The
Appellants describe the claims as "directed to detailed electronic financial
transaction methods." Appeal Br. 11.
Because independent claims 1 and 10 each recite steps, as set forth
above, on how to perform financial transactions, we find preliminarily that it
is directed to a fundamental economic practice, which is a method of
organizing human activity, and an abstract idea. See MANUAL OF PATENT
EXAMINING PROCEDURE ("MPEP") § 2106.04(a)(2)(I)(A); Alice, 573 U.S. at
219-20 ("intermediated settlement" is a fundamental economic practice, and
thus an abstract idea; Bilski, 561 U.S. at 611 ("hedging" is a fundamental
economic practice, and this an abstract idea)). Other than using a "payor
device," "machine-readable pay code," and "pay code server," the method
merely requests, receives, transmits, and displays information. See MPEP
§ 2106.04(a)(2)(III)(A}-(B).
The claims do not integrate the abstract idea into a practical
application. For example, the method does not improve the underlying
computer by performing the above steps, because any processor can be used
to execute those steps. See Spec. ,r,r 44, 52. In addition, the method is
directed to payment transactions, which is not an improvement to
6
Appeal2018-002356
Application 13/739,465
technology. See MPEP § 2106.05(a). Because a particular computer is not
required, the claim also does not define or rely on a "particular machine."
See MPEP § 2106.05 (b ). Further, the method does not transform matter; at
best it transforms information. See MPEP § 2106.05 ( c ); Gottschalk, 409
U.S. at 71-72 (holding that a computer based algorithm that merely
transforms data from one form to another is not patent-eligible). Instead, the
claim merely requests, receives, transmits, and displays data. As such, the
method has no other meaningful limitations (see MPEP § 2106.05 (e)), and
thus merely recites instructions to execute the abstract idea on a computer
(see MPEP § 2106.05 (f)). Although the method calls for receiving a
"machine-readable code" at a payer device to begin the process, this is
merely a data gathering step, and represents insignificant extra-solution
activity, as does the displaying of data. See MPEP § 2106.05 (g).
The only elements, beyond the abstract idea of requesting, receiving,
transmitting, and displaying data within the processing of a payment
transaction, are various computing devices ( a payer device with display and
a server), using general-purpose programmable computer devices and any
communications network. Spec. ,r,r 44, 52, 128, 139, 144, 165. The
operations of storing, analyzing, receiving, and writing data are primitive
computer operations found in any computer system. See In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011 ). Thus, the only additional elements beyond the abstract idea are well-
understood, routine, and conventional. See MPEP ,r 2106.05( d).
"[ A ]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
7
Appeal2018-002356
Application 13/739,465
purely conceptual realm is beside the point." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted). Here, independent device claims 18, 27,
and 36 merely recite devices that execute instructions that correspond to the
steps of the methods claims. Independent claims 18, 2 7, and 3 6 thus also are
directed to abstract ideas. The Examiner finds the dependent claims are also
directed to abstract ideas. Answer 8-9; see also Final Act. 3.
Thus, claims 1--41 are directed to a fundamental economic practice,
and hence an abstract idea, and do not recite limitations that transform the
abstract ideas into eligible subject matter.
We are unpersuaded by the Appellants' argument that the claims are
not directed to abstract ideas, because they are "not directed to the mere
collection, comparison, storage, organization or transmission of information;
instead, Appellant's claims employ technical processes to process an
electronic financial transaction." Appeal Br. 14. The claims request,
receive, transmit, and display information so that a payment can be made;
the performance of the payment transaction itself is outside the scope of the
claim. The claimed methods send data to a pay code server "for
conveyance," and displays that the transaction was initiated. The claimed
methods do not recite the performance of the payment transaction, but
instead handle data to permit a server to initiate a payment transaction. A
process that merely handles data as part of a financial transaction, even if
handled by a technical system, is still be an abstract idea. And even if the
claim did handle the payment transaction itself, even an electronic one, that
is still a fundamental economic practice. See Priceplay.com, Inc. v. AOL
Advert., Inc., 83 F. Supp. 3d 577 (D. Del. 2015), affd, 627 F. App'x 925
8
Appeal2018-002356
Application 13/739,465
(Fed. Cir. 2016) ("Performing a sales transaction over the Internet, or in
conjunction with an auction and a competitive activity, does not make the
concept any more 'concrete.' Therefore, the patent claims are directed to
patent-ineligible subject matter.").
We are unpersuaded by the Appellants' argument that claims recite
steps that transform the abstract idea into eligible subject matter, because,
according to the Appellants, the "appealed claims do not have a 'real world'
equivalent. That is, there is no 'abstract business practice' to which
Appellant's claims can be fairly analogized." Appeal Br. 16. The claims are
directed to requesting, receiving, transmitting, and displaying data as part of
a payment transaction, which is an abstract idea because it is a financial
transaction, and thus a fundamental economic practice.
We are not persuaded by the Appellants' argument that the methods
provide "something more," because the claimed methods "address technical
problems inextricably tied to the technical field of electronic transaction
processing." Id. In support of this assertion, the Appellants articulate
benefits of the claimed method, which bypass the merchant's point-of-sale
device when the buyer supplies payment information that is instead sent to a
"pay code server." Id. at 16-17. Although the data may be send via a
different path that does not go through the merchant's device, this does not
change the basic nature of the claims as being directed to an abstract idea
that requests, receives, transmits, and displays data as part of a payment
transaction.
Although the Appellants assert "both the payer device and pay code
server of Appellants' claims are specialized devices (i.e., not 'generic
9
Appeal2018-002356
Application 13/739,465
computer systems')," (Appeal Br. 17), the Specification only describes the
devices in general terms. Spec. ,r,r 44, 52.
The Appellants also argue the claims "harness technical features" that
"offer concrete technical solutions to technical problems" and offer
"technical advantages." Appeal Br. 18; see also Reply Br. 3-5. No matter
how "technical" the claims may be, they are directed to abstract fundamental
economic practices that use technology in only an ancillary manner, and do
not recite additional elements that transform the abstract ideas into eligible
subject matter for the reasons set forth above.
Because the Appellants have not shown error in the Examiner's
rejection, we sustain the rejection of claims 1--41 under 35 U.S.C. § 101 as
directed to abstract ideas.
Obviousness Reiection
We are persuaded by the Appellants' arguments that the Examiner has
failed to demonstrate that the cited references disclose "requesting, by the
payer device and from a pay code server, additional transaction details for
the specific transaction, by transmitting the read transaction details to the
pay code server" of independent claims 1 and 10, because, according to the
Appellants, Dimmick does not disclose the payer device requesting
additional transaction details for the transaction in the received pay code, as
asserted by the Examiner. Appeal Br. 19-22.
The Examiner finds the request in Dimmick at Figures 1, 5, and 7 A,
and paragraphs 121 and 136--42. Appeal Br. 6; see also Reply Br. 9.
However, Dimmick's Figures 1 and 7 A merely show block diagrams
of system components, including potential communication paths.
Paragraph 121 discloses the merchant computer communicating transaction
10
Appeal2018-002356
Application 13/739,465
details to the payer device, but does not disclose a request for those details
made from the payer device based on the pay code received at the payer
device, as required by each of independent claims 1 and 10. Similarly,
paragraphs 136-42 disclose a transaction details server that communicates
with a user's payer device, but does not disclose a request for details after
receiving a pay code.
The Examiner has thus failed to support adequately that Dimmick
discloses the "requesting" claim language, found in independent method
claims 1 and 10. Because independent device claims 18, 27, and 36 each
require a payer device configured to request information on the transaction
read in the pay code, we sustain the rejection of neither independent claims
1, 10, 18, 27, and 36, nor the claims that depend from these independent
claims and were rejected along with the independent claims.
DECISION
We AFFIRM the rejection of claims 1--41 under 35 U.S.C. § 101.
We REVERSE the rejection of claims 1--41 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
11