Ex Parte Pirzadeh et alDownload PDFPatent Trial and Appeal BoardDec 19, 201712892328 (P.T.A.B. Dec. 19, 2017) 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. 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 Mailstop: IP Docketing - 22 1100 Peachtree Street KANERVO, VIRPI H Suite 2800 ART UNIT PAPER NUMBER Atlanta, UA 5U5UV 3691 NOTIFICATION DATE DELIVERY MODE 12/21/2017 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 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 2 Appeal 2016-005381 Application 12/892,328 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 3 Appeal 2016-005381 Application 12/892,328 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). 4 Appeal 2016-005381 Application 12/892,328 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 5 Appeal 2016-005381 Application 12/892,328 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 6 Appeal 2016-005381 Application 12/892,328 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 7 Appeal 2016-005381 Application 12/892,328 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). 8 Appeal 2016-005381 Application 12/892,328 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., 9 Appeal 2016-005381 Application 12/892,328 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). 10 Appeal 2016-005381 Application 12/892,328 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.” 11 Appeal 2016-005381 Application 12/892,328 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”). 12 Appeal 2016-005381 Application 12/892,328 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 13 Appeal 2016-005381 Application 12/892,328 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 14 Appeal 2016-005381 Application 12/892,328 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 15 Appeal 2016-005381 Application 12/892,328 (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. 16 Appeal 2016-005381 Application 12/892,328 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 17 Appeal 2016-005381 Application 12/892,328 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 18 Appeal 2016-005381 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 19 Appeal 2016-005381 Application 12/892,328 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. 20 Appeal 2016-005381 Application 12/892,328 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 21 Copy with citationCopy as parenthetical citation