Ex Parte Zaytzsev et al

Patent Trial and Appeal Board

Sep 18, 2018

13764753 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/764,753 02/11/2013
826 7590 09/20/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Andrey Zaytzsev
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.
058407-429482 1242
EXAMINER
NGUYEN, LIZ P
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREY ZA YTZSEV, ULF SCHWEKENDIEK,
and TUOMAS ARTMAN
Appeal2017-003946
Application 13/764,753 1
Technology Center 3600
Before DENISE M. POTHIER, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 7-19 and 40-46, which are all claims pending in the
application. Appellants have canceled claims 1-6 and 20-39. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is GROUPON, INC.
App. Br. 1.
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Application 13/764,753
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate,
generally, to token management for secure transactions using a consumer
device." Spec. ,r 2.
More specifically, embodiments provided herein may include a
payment system that may be implemented to provide merchants
( e.g., those that have "brick-and-mortar" retail space and/or
online ordering storefronts) a way to receive payment from a
consumer based on data sent by a consumer's mobile device and
without the consumer having to present a physical payment
instrument, identification, or currency directly to the merchant.
Spec. ,r 4.
Exemplary Claim
Claim 7, reproduced below, is representative of the subject matter on
appeal:
7. A payment processing system comprising:
a networked device comprising processing circuitry
configured to:
generate a plurality of wallet identifying
tokens, each wallet identifying token associated
with a private key and consumer identifying data;
send the plurality of wallet identifying
tokens to a consumer device;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
June 2, 2016); Reply Brief ("Reply Br.," filed Jan. 3, 2017); Examiner's
Answer ("Ans.," mailed Nov. 3, 2016); Final Office Action ("Final Act.,"
mailed Nov. 17, 2015); and the original Specification ("Spec.," filed
Feb. 11, 2013).
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receive from the consumer device, via a
merchant device, a first wallet identifying token;
validate the first wallet identifying token
based at least in part on whether the first
identifying token is one of the plurality of wallet
identifying tokens; and
send the consumer identifying data
associated with the first wallet identifying token to
the merchant device if the first wallet identifying
token was validated.
Rejection on Appeal3
Claims 7-19 and 40-46 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 8-25), we decide the
appeal of the patent-ineligible subject matter rejection of claims 7-19
and 40-46 on the basis of representative claim 7. 4
ISSUE
Appellants argue (App. Br. 8-25; Reply Br. 2-5) the Examiner's
rejection of claim 7 under 35 U.S.C. § 101 as being directed to patent-
3 We note the§§ 102 and 103 rejections of claims 7-10, 12-16, 18, and 19
were withdrawn by the Examiner. Final Act. 3.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 7 is directed to a judicial exception, i.e., an
abstract idea, specifically, the abstract idea of using categories to organize,
store, and transmit information, without significantly more, and thus is
patent-ineligible under§ 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 7-19
and 40-46 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: ( 1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claim 7 for emphasis as follows.
Mayo/Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
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technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed.
Cir. 2016). The disclosed technique enabled faster searching and more
effective storage of data than previous methods. Id. at 1333. The court
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found the claims directed to "a specific improvement to the way computers
operate, embodied in the self-referential table" (id. at 1336), and explained
that the claims are "not simply directed to any form of storing tabular data,
but instead are specifically directed to a self-referential table for a computer
database" that functions differently than conventional databases. Id. at 1337.
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. 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. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
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we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an 'inventive concept' in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Mayo/Alice Step I -Abstract Idea
The Examiner concludes "[c]laims 7-19 and 40-46 are directed to the
abstract idea of using categories to organize, store, and transmit information"
(Final Act. 4), and further concludes "[t]he claims are directed to an abstract
idea of processing payment transactions." Ans. 3.
Appellants contend the Examiner ( 1) failed to establish a prima facie
case that the claims, as a whole, are directed to an abstract idea "because key
technical elements were omitted without the required explanation" (App.
Br. 8), and (2) "the Final Office Action acknowledges after thorough search
and examination that key technical elements are novel and nonobvious but
concludes, again without the required explanation, that such claims do not
constitute significantly more under the Mayo framework." Id.
Appellants further state "Claim 7 recites three-device system that
employs a specific security protocol for providing consumer identifying data
associated with the consumer device to the merchant device" (App. Br. 10),
and allege the Examiner has misapplied step one of the Mayo/Alice test for
determining patentability. App. Br. 11.
More specifically, Appellants argue:
Here, while Appellant's claims involve "using categories
to organize, store, and transmit information," this does not
mean that the character of the claims as a whole, considered in
light of the specification, can be considered to be directed to
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"using categories to organize, store, and transmit information,"
as alleged in the Final Office Action .... When Appellant's
claims are considered as a whole, they are directed to a security
protocol for reliably providing sensitive data ( consumer
identifying) to a merchant device by employing a central
system, which is not an abstract idea.
App. Br. 11-12. 5
Appellants argue, "[c]laim 7 is directed to secure consumer device
identification for a merchant device by leveraging a central system that
serves as an intermediary for secure data transmissions, and improved
connectivity during validation by leveraging the merchant device as an
intermediary for communications between the consumer device and
networked device" (App. Br. 13), and invoke the Federal Circuit's holding in
Enfish.
The Federal Circuit in Enfish also looked to the specification to
determine what the claims were directed to as a whole, and in
particular to the invention's benefits. Enfish, at 15. Appellant's
specification also discusses the benefits of the claimed
invention. As discussed in at least paragraph [0054] and [0113]
of the specification-as-filed, the recited "wallet identifying
tokens" associated with "consumer identifying data" provide "a
reference to consumer data available from the central system."
As such, a wallet identifying token may be sent to the merchant
device [by the consumer device] in place of actual consumer
data that may be readily stolen by an unauthorized device" that
intercepts the communications between the consumer device
and merchant device. Instead of relying on the merchant device
and consumer device to share the consumer identifying data
directly with each other, the central system acts as an
5 Appellants also allege, "[t]hus, as in Enfish, the Final Office Action
characterized the claims at a high level of abstraction untethered to the claim
language when asserting that the claims were directed to 'using categories to
organize, store, and transmit information."' App. Br. 12.
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intermediary to send the consumer identifying data associated
with the wallet identifying data to the merchant device when the
wallet identifying data is received from the consumer device via
the merchant device.
App. Br. 13-14. "For at least these reasons, Appellant's claims include
elements that when considered as a whole, and in light of the specification,
are different from merely 'using categories to organize, store, and transmit
information."' App. Br. 14.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 7 recites " [a] payment
processing system" that includes "a networked device comprising processing
circuitry configured to:"
(a) "generate a plurality of wallet identifying tokens";
(b) "send the plurality of wallet identifying tokens to a
consumer device;"
( c) "receive ... a first wallet identifying token;"
( d) "validate the first wallet identifying token";
( e) "send the consumer identifying data associated with
the first wallet identifying token to the merchant device if the
first wallet identifying token was validated."
App. Br. 26, Claims App'x.
Under step one, we agree with the Examiner that the inventions
claimed in claim 7 is directed to the abstract idea of using categories to
organize, store, and transmit information for processing payment
transactions, which we also conclude is a method of organizing human
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activity or, alternatively, "economic practices in which monetary
transactions between people are managed .... [because t]he concept
described in claim 7 is not meaningfully different than those economic
concepts found by the courts to be abstract ideas." Ans. 4.
As the Specification discloses, " [ e ]mbodiments of the invention relate,
generally, to token management for secure transactions using a consumer
device." Spec. ,r 2.
More specifically, embodiments provided herein may include a
payment system that may be implemented to provide merchants
(e.g., those that have "brick-and-mortar" retail space and/or
online ordering storefronts) a way to receive payment from a
consumer based on data sent by a consumer's mobile device and
without the consumer having to present a physical payment
instrument, identification, or currency directly to the merchant.
Spec. ,r 4. 6
We find this type of activity, i.e., processing or facilitating payment
transactions, for example, includes longstanding conduct that existed well
before the advent of computers and the Internet, and could be carried out by
a human with pen and paper. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson."). 7
6 See also Spec. 59 ("Abstract")("Systems and related methods for
facilitating payments via a consumer device carried by a consumer are
discussed herein.").
7 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has provided additional guidance on the § 101 analysis since
CyberSource in cases like Mayo and Alice, they continue to "treat[ ]
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category." Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (alteration in original) (quoting
Elec. Power Grp., 830 F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Further, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is abstract. Digitech Image
Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014). Also, more recently, our reviewing court has also concluded that
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acts of parsing, comparing, storing, and editing data are abstract ideas.
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
In the Reply Brief (2), Appellants allege the claims are not directed to
the abstract idea of processing payment transactions in light of the Federal
Circuit's holding in McRO, i.e., "[t]he Examiner has repeatedly failed to
consider the claims as a whole. Specifically, independent claims 7 and 40
recite a specific process to achieve a particular result" because of the
claimed steps of independent claim 7. Id.
This 6 steps [sic] process defines a particular ordered
combination of rules to achieve the result of a merchant device
securely receiving consumer identifying data. The claims do
not merely recite the result of a merchant device securely
receiving consumer identifying data, as such would be an
abstract idea as identified by the Federal Circuit in MCRO.
Reply Br. 3.
Appellants imply the claims are similar to those held patent-eligible in
McRO. Reply Br. 2-3. Although Appellants quote each of the steps recited
in claims 7 and 40 (id.), Appellants do not, however, identify how claim 7
improves an existing technological process, aside from alleging "[t]he claims
do not merely recite the result of a merchant device securely receiving
consumer identifying data." Reply Br. 3; see Alice, 134 S. Ct. at 2358
( explaining that "the claims in Diehr were patent eligible because they
improved an existing technological process"). Rather, claim 7 concerns a
"payment processing system" that exchanges various types of data. App.
Br. 26, Claims App'x. In addition, Appellants do not direct us to any
evidence that the claimed token generation and validation correspond to
unconventional rules.
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Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than using categories to organize, store, and transmit
information for processing payment transactions, without any particular
inventive technology- an abstract idea. See Elec. Power Grp., 830 F.3d at
1354. 8
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Mayol Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an 'inventive concept' in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
8 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 7 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of using categories to organize, store, and
transmit information for processing payment transactions into a patent-
eligible application of that abstract idea. See Ans. 4--10.
The Examiner concludes:
In the instant claims, the modification of processing payment
transactions based on token management for secure transactions
using a consumer device is interpreted as the processing [ ofJ
payment transactions between two entities through the use of
some unspecified generic computer processor in a generic
manner.
Generating, identifying and validating tokens are routine,
conventional and well understood computer functions applied
to the abstract idea. The limitations of sending, receiving data
are not interpreted as significantly more, rather routine, well
understood and conventional steps of transmitting data over a
network.
Ans. 5-6.
The Examiner further concludes:
Tokenization process is a process where a sensitive data
element is substituted with a non-sensitive equivalent. Tokens
are references that map back to original data through a
tokenization system or scheme. The tokenization system can
generate and detokenize the generated tokens based on a
particular scheme to redeem the sensitive or secured data.
Therefore [g]enerating, identifying and validating tokens is
routine, conventional and well understood method of securing
data and part of the process (idea) of securing data itself.
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Therefore generating, identifying and validating tokens are
routine, conventional and well understood computer functions
applied to the abstract idea.
Ans. 6. We agree with the Examiner's factual findings and conclusions.
Moreover, Appellants acknowledge that tokenization is known. Reply Br. 4.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note the Appellants' Specification in
paragraphs 166 through 180. For example:
[00166] Fig. 7 shows system 700 including an example
network architecture, which may include one or more devices
and sub-systems that are configured to implement some
embodiments discussed herein. For example, system 700 may
include central system 702, which can include, for example,
central server 704 and central database 706, among other things
(not shown). Central server 704 may be any suitable network
server, a plurality of networked servers, and/or other type of
processing device. Central database 706 may be any suitable
network database configured to store information that may be
used to facilitate the techniques as discussed herein. In this
regard, system 702 may include, for example, at least one
backend data server, network database, cloud computing
device, among other things.
[00167] Central system 702 may be coupled to one or more
merchant devices (e.g., merchant device 710) via network 708.
In this regard, network 708 may include any wired or wireless
communication network including, for example, a wired or
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wireless local area network (LAN), personal area network
(PAN), metropolitan area network (MAN), wide area network
(WAN), mobile broadband network, or the like, as well as any
hardware, software and/or firmware required to implement it
(such as, e.g., network routers, etc.). For example, network 708
may include a cellular telephone, an 802.11, 802.16, 802.20,
and/or WiMax network. Further, the network 708 may include a
public network, such as the Internet, a private network, such as
an intranet, or combinations thereof, and may utilize a variety
of networking protocols now available or later developed
including, but not limited to TCP/IP based networking
protocols.
* * *
[00174] Processor 802 may, for example, be embodied as
various means including one or more microprocessors with
accompanying digital signal processor(s), one or more
processor(s) without an accompanying digital signal processor,
one or more coprocessors, one or more multicore processors,
one or more controllers, processing circuitry, one or more
computers, various other processing elements including
integrated circuits such as, for example, an ASIC (application
specific integrated circuit) or FPGA (field programmable gate
array), or some combination thereof. Accordingly, although
illustrated in Fig. 28 as a single processor, in some
embodiments, processor 802 comprises a plurality of
processors. The plurality of processors may be embodied on a
single computing device or may be distributed across a plurality
of computing devices collectively configured to function as
circuitry 800. The plurality of processors may be in operative
communication with each other and may be collectively
configured to perform one or more functionalities of circuitry
800 as described herein. In an example embodiment, processor
802 is configured to execute instructions stored in memory 804
or otherwise accessible to processor 802. These instructions,
when executed by processor 802, may cause circuitry 800 to
perform one or more of the functionalities of circuitry 800 as
described herein.
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[00175] Whether configured by hardware, firmware/software
methods, or by a combination thereof, processor 802 may
comprise an entity capable of performing operations according
to embodiments of the present invention while configured
accordingly. Thus, for example, when processor 802 is
embodied as an ASIC, FPGA or the like, processor 802 may
comprise specifically configured hardware for conducting one
or more operations described herein. As another example, when
processor 802 is embodied as an executor of instructions, such
as may be stored in memory 804, the instructions may
specifically configure processor 802 to perform one or more
algorithms and operations described herein.
[00176] Memory 804 may comprise, for example, volatile
memory, non-volatile memory, or some combination thereof
Spec. ,r,r 166-167, 174--176.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques implementing the functions in claim 7, particularly in light of
Appellants' Specification, as quoted above. 9
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either " [a] payment processing system
comprising ... a networked device comprising processing circuitry
9 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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configured to [generate, receive, and validate wallet identifying tokens]"
( claim 7), or " [a] machine-implemented method, comprising, by processing
circuitry of a networked device ... [generating, sending, receiving, and
validating wallet identifying tokens]" (claim 40) is simply not enough to
transform the patent-ineligible abstract idea here into a patent-eligible
invention. See Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention."). 10
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's§ 101 rejection of independent claim 7, and grouped claims 8-19
and 40-46, not argued separately, and which fall therewith. See Claim
Grouping, supra.
10 Appellants merely allege:
Although general tokenization may be known, the functionality
of the token (e.g. associated with a private key), the process
used to securely transmit the tokens ( e.g. sent by a networked
device to a client, then returned to the network device via a
merchant device), and the result of the validation of the token
( e.g. sending from the networked device information associated
with the token to the merchant device) provide a non-
conventional and non-generic use and arrangement of the
ordinary practiced tokenization. The claimed process provides
for secure sharing of consumer identifying data with merchant
devices.
Reply Br. 4.
18
Appeal2017-003946
Application 13/764,753
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-5) 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)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the patent-ineligible subject
matter rejection of claims 7-19 and 40-46 under 35 U.S.C. § 101, and we
sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 7-19 and 40-46.
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(±).
AFFIRMED
19