Ex Parte Pirzadeh et al

Patent Trial and Appeal Board

Dec 19, 2017

12892328 (P.T.A.B. Dec. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/892,328 09/28/2010 Kiushan Pirzadeh 79900-783572-056110US 2024
66945 7590 12/21/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P/VTS A
EXAMINER
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIUSHAN PIRZADEH and MARC B. KEKICHEFF
Appeal 2016-005381
Application 12/892,328
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES W. DEJMEK, and
STEVEN AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—3, 7—12, and 18—29, which are all the claims pending in this
application. Claims 4—6 and 13—17 are cancelled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
“Embodiments of the present invention are directed to systems,
apparatuses, and methods for conducting payment transactions using mobile
devices.” (Spec. 13).
Appeal 2016-005381
Application 12/892,328
Exemplary Claim
1. An apparatus for conducting a payment transaction,
comprising:
an electronic processor configured to execute a set of
instructions, the electronic processor being incorporated into a
mobile device;
a secure element incorporated into the mobile device, the
secure element being secure at least with respect to a user of the
mobile device;
a plurality of functional modules installed in the secure
element, the plurality of modules including:
a mobile payment module, the mobile payment module
including instructions which when executed by the electronic
processor enable a consumer to conduct a payment transaction;
a mobile gateway authentication module, the mobile
gateway authentication module including instructions which
when executed by the electronic processor mutually
authenticate a mobile gateway and the mobile payment module;
an over the air communication and data transfer module,
the over the air communication and data transfer module
including instructions which when executed by the electronic
processor transfer data and commands to conduct the payment
transaction between a cellular network and the mobile device;
a process message module, the process message module
including instructions which when executed by the electronic
processor convert messages received from the mobile gateway
into commands that are executable by other of the plurality of
functional modules and to convert responses from the other of
the plurality of functional modules into messages that are
understood by the mobile gateway; and
[LI] a multi-access module, the multi-access module
including instructions which when executed by the electronic
processor maintain, at the mobile device, a plurality of
instances of the multi-access module each representing a
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unique financial account of a plurality offinancial accounts of
the user of the mobile device,
[L2] each instance of the multi-access module including
unique and non-unique data, the multi-access module
maintaining the non-unique data such that a storage
requirement for the plurality of instances of the multi­
access module is reduced; and
a user interface application installed on the mobile device
and external to the secure element, the user interface application
including instructions which when executed by the electronic
processor generate a user interface to enable the consumer to
interact with the mobile payment module.
(Contested limitations LI and L2 are bracketed and emphasized in bold and
italics).
References
Asoh et al. US 2001/0030233 Al Pub. Oct. 18, 2001
Ayala et al. US 2006/0106701 Al Pub. May 18, 2006
Fisher US 2013/0018742 Al Pub. Jan. 17,2013
Ghosh et al. US 2008/0147509 Al Pub. June 19, 2008
Hasan US 6,404,859 B1 Iss. June 11, 2002
Lei et al. US 2009/0300351 Al Pub. Dec. 3, 2009
Levine et al. US 2007/0295803 Al Pub. Dec. 27, 2007
Maltzman US 2005/0246187 Al Pub. Nov. 3, 2005
Nuzum et al. US 2010/0191633 Al Pub. July 29, 2010
Rutherford et al. US 2008/0154770 Al Pub. June 26, 2008
Sandorfi US 2005/0108486 Al Pub. May 19, 2005
Saunders et al. US 2009/0164375 Al Pub. June 25, 2009
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Rejections
A. Claims 1—3, 7—12, and 18—29 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter (Ans. 2).1
B. Claims 1, 2, 3, 12, 22, and 24 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Levine, Fisher, Hasan, Nuzum, and
Rutherford (Final Act. 5).
C. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Levine, Hasan, Nuzum, Rutherford, and Lei (Final
Act. 14).
D. Claims 8, 10, 11, 18, 20, and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over Levine, Fisher, Hasan, Rutherford,
Nuzum, and Saunders (Final Act. 15).
E. Claims 9 and 19 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Levine, Fisher, Hasan, Nuzum, Rutherford, and
Ayala (Final Act. 19).
F. Claim 23 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Levine, Fisher, Hasan, Nuzum, Rutherford, and Asoh
(Final Act. 21).
G. Claims 25 and 27 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Levine, Fisher, Hasan, Nuzum, Rutherford, and
Sandorfi (Final Act. 22).
1 We note the Examiner only rejects claims 1—3, 7—12, and 18-27 under
§ 101 in the Final Action (4), but rejects all pending claims, 1—3, 7—12, and
18-29, under § 101 in a new ground of rejection in the Answer (2).
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H. Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over Levine, Fisher, Hasan, Nuzum, Rutherford, Sandorfi,
and Ghosh (Final Act. 24).
I. Claims 28 and 29 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Levine, Fisher, Hasan, Nuzum, Rutherford, and
Maltzman (Final Act. 25).
Issues on Appeal
Did the Examiner err in rejecting claims 1—3, 7—12, and 18—29 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1—3, 7—12, and 18—29 under
pre-AIA 35 U.S.C. § 103(a) as being obvious over the cited combination of
references?
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Rejection A of Claims 1—3, 7—12, and 18—29 Under 35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
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Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may 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—57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 132 S. Ct. at 1298, 1297).
We, therefore, look to: (1) whether the claims focus on a specific
means or method that improves the relevant technology, or (2) are directed
to a result or effect that itself is the abstract idea, in which the claims merely
invoke generic processes and machinery. See Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The Examiner’s Rejection A under 35 U.S.C. § 101
Regarding the first part of the Mayo/Alice analysis, the Examiner
concludes: “[t]he claimed invention is directed to non-statutory subject
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matter because the claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea.” (Final Act. 4). The Examiner specifically concludes “[t]he
claims are directed to the abstract idea of a fundamental economic
practice.” (Id.) (emphasis added).
Mayo/Alice Analysis — Step 1
Regarding Alice Step 1, Appellants contend:
Appellants respectfully submit that it is only by ignoring
the features of claim 1 and improperly distilling claim 1 down
to a gist or thrust that the rejection can characterize the
recitations of claim 1 as “a fundamental economic practice” and
thus an “abstract idea” within the meaning of Alice. Even
supposing, arguendo, that “an apparatus for conducting a
payment transaction” can be construed as “a fundamental
economic practice,” “an apparatus for conducting a payment
transaction” does not imply use of a [sic] “a multi-access
module” as recited by claim 1. Use of “a multi-access module”
as recited by claim 1 cannot be fairly construed as
“fundamental” to “an apparatus for conducting a payment
transaction.” Appellants respectfully submit that a claim that is
novel and nonobvious over prior “economic practice” art cannot
be fairly characterized as “fundamental” with respect to that art.
(App. Br. 20).
We note Appellants’ independent claim 1 is directed to, inter alia,
various modules that include instructions that when executed: (1) enable a
consumer to conduct a payment transaction; (2) “mutually authenticate a
mobile gateway and the mobile payment module;” (3) “transfer data and
commands to conduct the payment transaction between a cellular network
and the mobile device;” (4) “convert messages received from the mobile
gateway into commands that are executable by other of the plurality of
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functional modules and to convert responses from the other of the plurality
of functional modules into messages that are understood by the mobile
gateway;” (5) “maintain, at the mobile device, a plurality of instances of the
multi-access module each representing a unique financial account of a
plurality of financial accounts of the user of the mobile device, each instance
of the multi-access module including unique and non-unique data, the multi­
access module maintaining the non-unique data such that a storage
requirement for the plurality of instances of the multi-access module is
reduced;” and (6) “generate a user interface to enable the consumer to
interact with the mobile payment module.” Remaining independent method
claim 12 recites similar steps or acts of commensurate scope.2
Our reviewing court guides that fundamental economic and
conventional business practices are often found to be abstract ideas, even if
performed on a computer. See, e.g., OIP Techs. Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362—63 (Fed. Cir. 2015). Thus, under a broad but
reasonable interpretation, we conclude each of Appellants’ claims on appeal
is directed to an economic or business practice, i.e., to the result of
“generat[ing] a user interface to enable the consumer to interact with the
mobile payment module.” (Claim 1; see similar language of commensurate
scope, as recited in independent method claim 12). (See Appeal Br. 26-28,
Claims App’x) (emphasis added).
However, our reviewing court guides that “[t]he abstract idea
exception prevents patenting a result where ‘it matters not by what process
2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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or machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (2016) (quoting O’Reilly v. Morse, 56
U.S. 62, 113 (1854)) (emphasis added).
Here, we particularly note that claims 1 and 12 each recite a generic
“electronic processor” that executes a set of instructions to perform the
recited functions of apparatus claim 1, and the recited steps or acts of
method claim 12.
Appellants nevertheless urge that the recited ‘“multi-access module’
as recited by claim 1 cannot be fairly construed as ‘fundamental’ to ‘an
apparatus for conducting a payment transaction’ [because] ... a claim that
is novel and nonobvious over prior ‘economic practice’ art cannot be fairly
characterized as ‘fundamental’ with respect to that art.” (App. Br. 20).
However, the Supreme Court guides: “[t]he ‘novelty’ of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr,
450 U.S. 175, 188—89 (1981) (emphasis added). Our reviewing court further
guides that “[eligibility and novelty are separate inquiries.” Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that “even assuming” that a particular
claimed feature was novel does not “avoid the problem of abstractness”).
Therefore, on this record, we are not persuaded of error regarding the
Examiner’s legal conclusion that all claims on appeal are directed to the
“abstract idea” of performing a fundamental economic practice, i.e.,
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conducting payment transactions using a generic “electronic processor.”
(Final Act. 5).
Mayo/Alice Analysis — Step 2
Because we conclude the claims are directed to an abstract idea, we
turn to the second part of the Mayo/Alice analysis. We analyze the claims to
determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 134 S. Ct. at 2357.
Regarding the second part of the Alice!Mayo analysis, the Examiner
concludes:
The additional elements or combination of elements in the
claims, other than the abstract idea per se, amount to no more
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well understood,
routine, and conventional activities previously known to the
pertinent industry. Viewed as a whole, these additional claim
elements do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the
abstract idea itself.
(Final Act. 4).
Regarding Alice Step 2, Appellants urge, inter alia: “It has not been
prima facie established that the claims are not directed to ‘significantly
more’ than the alleged ‘abstract idea.’ Even supposing, arguendo, that the
claims can be construed as ‘directed to the abstract idea of a fundamental
economic practice,’ the claims in fact claim ‘significantly more’ features
than ‘a fundamental economic practice.’” (App. Br. 22).
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In support, however, Appellants merely enumerate the claimed
functional features:
Claim 1 recites a secure transaction architecture that includes
multiple technical components interacting in a specific manner.
For example, the secure transaction architecture recited by
claim 1 includes, inter alia, “a user interface application”
installed on a “mobile device” interacting with multiple
“functional modules” installed in a resource-constrained
“secure element” of the “mobile device.” The “functional
Modules” include “a process message module ... including
instructions which when executed by the electronic processor
convert messages received from the mobile gateway into
commands that are executable by other of the plurality of
functional modules and to convert responses from the
other of the plurality of functional modules into messages that
are understood by the mobile gateway” and “a multi-access
module ... including instructions which when executed by the
electronic processor maintain, at the mobile device, a plurality
of instances of the multi-access module each representing a
unique financial account of a plurality of financial accounts of
the user of the mobile device, each instance of the multi-access
module including unique and non-unique data, the multi-access
module maintaining the non-unique data such that a storage
requirement for the plurality of instances of the multi-access
module is reduced.”
(App. Br. 22).
Appellants conclude (Id.):
None of these features are intrinsic to “a fundamental economic
practice.” Appellants respectfully submit that the claims being
novel and nonobvious over the cited art is evidence of this,
since presumably the cited art is also alleged directed to the
same “fundamental economic practice,” and novelty and
nonobviousness are quintessential indicators of “significantly
more.”
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Appellants further urge, inter alia:
[CJlaim 1 includes features beyond “a general link” at least
because the features of claim 1 cause claim 1 to be novel and
nonobvious with respect to the prior art.. . .
The multiple technical components that operate and interact
in the particular manner recited by claim 1 therefore
implement significantly more than conventional “apparatus for
conducting a payment transaction.” . . .
[T]he claims are novel and nonobvious with respect to the
prior art. Accordingly, Appellants respectfully submit that the
claims recite features that cannot be characterized as “well-
understood, routine [elements of a] ... conventional
technological environment.”
(App. Br. 23) (emphasis added).
Appellants’ arguments do not persuade us the Examiner erred,
because Appellants essentially recite the claim limitations without any
persuasive explanation of how the limitations either individually, or as an
ordered combination, amount to an inventive concept that converts the
abstract idea into patent-eligible subject matter.
We have fully addressed above Appellants’ repeated argument: i.e.,
because the claims are purportedly novel and nonobvious with respect to
the prior art, they cannot be characterized as well-understood, routine
elements of a conventional technological environment. (App. Br. 22—23).
See Diamond, 450 U.S. at 188—89; Two-Way Media, 874 F.3d at 1340; see
also Affinity Labs, 838 F.3d at 1263 (holding that “even assuming” that a
particular claimed feature was novel does not “avoid the problem of
abstractness”).
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Here, we conclude that conducting a payment transaction, using a
generic “electronic processor ... incorporated into a mobile device”
(claim 1), which executes associated software (i.e., using various modules),
is the performance of a fundamental economic and business practice.
(Emphasis added). The Supreme Court guides the category of abstract ideas
embraces “fundamental economic practice[s] long prevalent in our system of
commerce.” Alice, 134 S. Ct. at 2356. Further, “simply appending
conventional steps, specified at a high level of generality, to laws of nature,
natural phenomena, and abstract ideas cannot make those laws, phenomena,
and ideas patentable.” Mayo, 132 S. Ct. at 1300.
Nevertheless Appellants’ cite to DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), and urge:
In the present application, the solution of using a “multi-access
module” (e.g., as recited by claim 1) to solve problems of
conventional “apparatus for conducting a payment
Transaction” (e.g., the problem of designing a secure
transaction architecture for a mobile device having a resource-
constrained secure element that can efficiently represent
information related to multiple financial accounts of a user) is
necessarily rooted in computer technology in order to
overcome problems specifically arising in the realm of
computer-facilitated transactions. Accordingly, Appellants
respectfully submit that features of the claims involving
computer systems cannot be ignored or dismissed when
establishing a proper prima facie case that the claims are not
directed to “significantly more” than an “abstract idea” within
the meaning of Alice.
(App. Br. 23-24).
We note DDR was the first Federal Circuit decision to uphold the
validity of e-commerce (business methods and software-based) patent claims
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after the Supreme Court’s decision in Alice. In DDR, the Federal Circuit
applied the Supreme Court’s Alice two-step framework, and upheld the
validity of DDR’s patent on its web-page display technology. DDR, 773
F.3d at 1248.
However, we find the problem addressed by Appellants’ claims is not
similar or otherwise analogous to the specific technical problem addressed
by the subject claims in DDR. In DDR, the claimed feature was directed to
retaining a website visitor when the visitor clicked on a third-party
merchant’s advertisement on the host website. Instead of taking the
visitor to the third-party merchant’s website (and thus losing the visitor to
the third-party merchant), DDR’s claimed system generated a hybrid web
page that: (1) displayed product information from the third party merchant,
but also (2) retained the host website’s “look and feel.”
Here, we note Appellants’ claims are silent regarding any mention of
websites and “serv[ing] to the visitor a new, hybrid web page that merges
content associated with the products of the third-party merchant with the
stored ‘visually perceptible elements’ from the identified host website,” as
was the case considered by the court in DDR, 773F.3datl257.
To the extent that Appellants’ recited steps or acts (or functions) may
be performed faster or more efficiently using a computer, or “electronic
processor,” our reviewing court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that
the required calculations could be performed more efficiently
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via a computer does not materially alter the patent eligibility of
the claimed subject matter.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphases added).
Further regarding the use of a generic “electronic processor,” see
Alice, 134 S. Ct. at 2358 (holding that “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention”); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an
Internet computer network’ or on a generic computer is still an abstract
idea.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016) (“We have repeatedly held that such invocations of computers
and networks that are not even arguably inventive are ‘insufficient to pass
the test of an inventive concept in the application’ of an abstract idea.”)
(quotations omitted); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a
generic computer element—a processor—and a series of generic computer
‘components’ that merely restate their individual functions . . . That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.”);
Applying the aforementioned guidance here, we conclude Appellants’
claims are not directed to an improvement in computer functionality.
Therefore, we conclude that none of the claim limitations, viewed “both
individually and as an ordered combination,” amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355
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(internal quotations omitted) (quoting Mayo, 132 S. Ct. at 1297).
For at least the aforementioned reasons, and on this record, Appellants
have not persuaded us the Examiner erred regarding rejection A.
Accordingly, we sustain the Examiner’s rejection A of claims 1—3, 7—12,
and 18-29 under 35 U.S.C. § 101.3
Rejection B of Claims 1, 2, 3, 12, 22, and 24 Under § 103(a)
Issue: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of Levine, Fisher, Hasan, Nuzum, and
Rutherford teaches or suggests contested limitations LI and L2:
[LI] a multi-access module, the multi-access module including
instructions which when executed by the electronic processor
maintain, at the mobile device, a plurality of instances of the multi­
access module each representing a unique financial account of a
plurality offinancial accounts of the user of the mobile device,
[L2] each instance of the multi-access module including
unique and non-unique data, the multi-access module maintaining
the non-unique data such that a storage requirement for the
plurality of instances of the multi-access module is reduced[,]
within the meaning of representative claim l?4 (Emphasis added).
3 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
4 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See Morris, 111 F.3d
at 1054.
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In the Final Action (7—9), and regarding limitation LI, the Examiner
finds the contested “multi-access module” is taught or suggested by Nuzum
(paragraphs 6—7):
Levine in view of Fisher, and further in view of Hasan, does not
show a multi-access module, the multi-access module including
instructions which when executed by the electronic processor
maintain, at the mobile device, a plurality of instances of the
multi-access module each representing a unique financial
account of a plurality of financial accounts of the user of the
mobile device. Nuzum shows a multi-access module,
the multi-access module including instructions which when
executed by the electronic processor maintain, at the mobile
device, a plurality of instances of the multi-access
module each representing a unique financial account of a
plurality of financial accounts of the user of the mobile device
(Nuzum: page 1, H 6-7). It would have been obvious to
one of ordinary skill in the art at the time of the invention to
have modified the system of Levine in view of Fisher, and
further in view of Hasan, by a multi-access module, the
multi-access module including instructions which when
executed by the electronic processor maintain, at the mobile
device, a plurality of instances of the multi-access module each
representing a unique financial account of a plurality of
financial accounts of the user of the mobile device of Nuzum in
order to provide secure access (Nuzum: page 1,17).
Regarding contested limitation LI of claim 1, Appellants contend:
[The Examiner] cites Nuzum, H 0006-0007, as allegedly
showing this feature of claim 1. Appellants respectfully submit
that Nuzum, H 0006-0007, does not disclose, teach or
suggest this feature of claim 1. For example, no entities
described by Nuzum, H 0006-0007, correspond to the
“plurality of instances of the multi-access module” recited by
claim 1. Here, the term “instance ” is being used in its
technical sense as an instantiation of a programmatic object,
namely, the “multi-access module. ” The “multi-access
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module” is not simple data at least because claim 1 recites
that it includes “instructions which when executed by the
electronic processor maintain a plurality of instances.”
Nuzum, Abstract, || 0006-0007, describes “receiving a mobile
personal identification number (M-PIN) number [sic] and
Customer Unique Identifier (CUID) from a mobile device and
processing the received M-PIN and CUID to identify a Mobile
Unique Identifier (MUID)... The MUID identifies an account
of at least one financial account processor accessible via a
gateway, and the mobile device is provided access to the
account through the gateway.” Even supposing, arguendo, that
the “Mobile Unique Identifier (MUID)” can somehow be
construed as the “plurality of instances of the multi-access
module” recited by claim 1, the operation of “processing the
received M-PIN and CUID to identify a Mobile Unique
Identifier (MUID)” occurs at an entity other than the “mobile
device.” In contrast, claim 1 recites that “the multi-access
module includes] instructions which when executed by the
electronic processor maintain, at the mobile device, a plurality
of instances.”
(App. Br. 15)(emphases added in italics and bold).
In the “Response to Arguments” section of the Answer (27), the
Examiner disagrees and cites to Nuzum, paragraph 7, which describes, in
pertinent part: “Providing secure access of at least one of multiple financial
account processors to a mobile device and/or facilitating secure financial
transactions initiated from a mobile device via a gateway.”
Based upon this evidence {id.), the Examiner finds: “Nuzum,
discloses a plurality of instances of the multi-access module each
representing a unique financial account of a plurality of financial accounts of
the user of the mobile device.” (emphasis added).
Based upon our review of the record, we understand the Examiner’s
mapping of the contested claimed “multi-access module” which must
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Application 12/892,328
include instructions, as being read on Nuzum’s Mobile Unique Identifier
(MUID), “where the MUID identifies an account of at least one financial
account processor accessible via a gateway,” as defined in Nuzum’s
paragraph 4.
In reviewing the description (id.) and use of the MUID as described in
paragraphs 6 and 7 of Nuzum (as relied upon by the Examiner), we find a
preponderance of the evidence (id.) supports Appellants’ argument that the
claimed ‘“multi-access module’ is not simple data at least because claim 1
recites that it includes ‘instructions which when executed by the electronic
processor maintain a plurality of instances.’” See Nuzum, Abstract, 1H6-
7. (emphases added).
In particular, we find the Examiner has not identified any portion of
Nuzum that indicates the MUID (i.e., corresponding to the claimed multi­
access module”) includes instructions, as expressly required by the
language of independent claim 1 (“a multi-access module, the multi-access
module including instructions” and independent claim 12 (“a multi-access
module including instructions”).
For at least this reason, and based upon a preponderance of the
evidence, we are persuaded the Examiner erred. Accordingly, we reverse
rejection B under § 103 of independent claims 1 and 12. For the same
reasons, we also reverse rejection B of associated dependent claims 2, 3, 22,
and 24.
Rejections C—I Under § 103 of All Remaining Dependent Claims
In light of our reversal of rejection B of independent claims 1 and 12,
supra, we also reverse rejections C—I of all remaining dependent claims
which variously and ultimately depend therefrom. On this record, the
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Examiner has not shown how the additionally cited secondary references
overcome the aforementioned deficiency of the base combination of Levine,
Fisher, Hasan, Nuzum, and Rutherford, as discussed above regarding
independent claims 1 and 12.
Reply Brief
As pertaining to rejection A under § 101 (affirmed), to the extent
Appellants advance new arguments in the Reply Brief not in response to a
shift in the Examiner’s position in the Answer, we note arguments raised in
a Reply Brief that were not raised in the Appeal Brief or are not responsive
to arguments raised in the Examiner’s Answer will not be considered except
for good cause. See 37 C.F.R. § 41.41(b)(2).
CONCLUSIONS
The Examiner did not err in rejecting claims 1—3, 7—12, and 18—29
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
The Examiner erred in rejecting claims 1—3, 7—12, and 18—29 under
pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings
and suggestions of the cited references.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—3, 7—12, and
18-29 under §101.
We reverse the Examiner’s decision rejecting claims 1—3, 7—12, and
18—29 under pre-AIA § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
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