Garry Lyons et al.

Patent Trials and Appeals Board

Aug 27, 2019

13739465 - (R) (P.T.A.B. Aug. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/739,465 01/11/2013 Garry LYONS 0076412-000126 5877
21839 7590 08/27/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/27/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARRY LYONS, DAVID BROWN,
MICHAEL CLAY ATKINS, ORAN CUMMINS, and
DANIEL MARTIN
____________________

Appeal 2018-0023561
Application 13/739,465
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
In our Decision on Appeal, mailed March 20, 2019 (“Dec.”), we
reversed the Examiner’s rejection of claims 1–41 under 35 U.S.C. § 103(a),
and affirmed the Examiner’s rejection of claims 1–41 under 35 U.S.C.
§ 101. Specifically, as to the § 101 rejection, we stated that “[b]ecause
independent claims 1 and 10 each recite steps, as set forth above, on how to
perform financial transactions, we find preliminarily that it is directed to a

1 The Appellants identify MasterCard International Inc. as the real party in
interest. Appeal Br. 2.
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fundamental economic practice, which is a method of organizing human
activity, and an abstract idea.” Dec. 6 (citing MPEP2 § 2106.04(a)(2)(I)(A)).
We also stated that the “claims do not integrate the abstract idea into a
practical application” (id. (citing MPEP §§ 2106.05(a)–(c) and (e)–(g))), and
that the “only elements, beyond the abstract idea of requesting, receiving,
transmitting, and displaying data within the processing of a payment
transaction, are various computing devices . . . [which] are well-understood,
routine, and conventional” (id. (citing MPEP § 2106.05(d))). Dec. 7.
The Appellants generally argue “the Board has misconstrued the
appealed claims in view of case law existing today and the 2019 Revised
Patent Subject Matter Eligibility Guidance.” Req. 1.
A. Overgeneralizing the Claims
The Appellants argue the Board’s statement, “that the claims are
directed to features setting forth how to perform a financial transaction,” is a
“gross mischaracterization of Appellant[s]’[] claims.” Req. 4–5.
Specifically, under Prong One of Revised Step 2A of the Guidance,3 the
Appellants argue the claims are “not directed to a fundamental economic
practice” (id. at 6) (footnote omitted), because “[t]here is nothing in the
above-noted claim features that is related or should be interpreted as
hedging, an insurance practice, mitigating economic risk, forming a contract,
a legal obligation, advertising, marketing or sales activity, forming a
business relation, managing a social activity, teaching, or following a rule or
instruction” (id. at 5 (citing Guidance, 84 Fed. Reg. at 52)).

2 The Manual of Patent Examining Procedure.
3 84 F.R. 50, 50–57 (2019).
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The Appellants thus argue that the claims are not directed to a
fundamental economic practice, because what they are directed to is not
mentioned in the list presented. As an initial matter, the Appellants’ list is
misleading, because the relevant portion of the Guidance reads as follows:
“fundamental economic principles or practices (including hedging,
insurance, mitigating risk).” The use of the word “including” indicates that
“fundamental economic principles or practices” are not limited to “hedging,
insurance, [and] mitigating risk.” They are merely examples. Furthermore,
the “idea that a customer may pay for items ordered from a remote seller at a
third-party’s local establishment is the type of fundamental business practice
that, when implemented using generic computer technology, is not patent-
eligible under Alice.” Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017); see also Guidance, 84 Fed. Reg. at 52
n.13 (internal quotation marks omitted) (the “concept of local processing of
payments for remotely purchased goods is a fundamental economic practice,
which Alice made clear, without more, outside the patent system.”). Like in
Inventor Holdings, where the Court agreed that “the claims of the ’582
patent are manifestly directed to an abstract idea,” and “are directed to an
‘economic arrangement’ implemented using ‘generic computer
technology,’” the claims here also are directed to an arrangement in the form
of financial/payment transactions, and are thus similarly directed to a
fundamental economic practice. Inventor Holdings, 876 F.3d at 1378–79.
Additionally, we note that financial/payment transactions are a part of “sales
activity.”
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B. Technical Nature of the Claim
Arguing that the claims recite “something more,” under Step 2B of the
Guidance, the Appellants assert the “claim features encompass a different
physical and operational structure over known systems that results in
different processes to be performed,” which results in “advantages.” Req. 7.
The “different physical and operational structure” is apparently that “data
can be sen[t] via a path that avoids a merchant’s device.” Req. 6; see also
Appeal Br. 16 (“execute a transaction therefrom without requiring the user
to transmit sensitive payment information to a merchant point of sale device
or other vendor,” and “enable a transaction to be quickly executed without
requiring . . . communication with a merchant point of sale device.”).
The operative portion of claim 1 that corresponds to these arguments
is “transmitting, by a transmitter of the payer device, the indications to the
pay code server, for conveyance to a payee device.”
In the background section of the Specification, the Appellants
describe only a need for “more convenient ways to conduct financial
transactions.” Spec. ¶ 2–3. We discern no problems described in the
Specification concerning sending data “without requiring . . .
communication with a merchant point of sale device.” Req. 6 (footnote
omitted). Instead, the Specification includes examples that correspond to
common e-commerce models, such as a consumer interacting with a web
site, for example, from Amazon or eBay, to purchase goods that are actually
offered for sale, and fulfilled, by other entities, without sending information
from the consumer directly to that selling entity’s point-of-sale devices. See
Spec. ¶¶ 81–84.
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The Specification describes “product or service offering (e.g.,
information) may be displayed without the user providing information
directly to the store,” but this is described as being for “applications far
beyond financial transactions.” Spec. ¶ 142. We discern no advantages to
sending data without sending it via a path that includes a selling entity’s
point-of-sale devices, other than examples that are already commonly in use
in the industry, as indicated above.
We are therefore unpersuaded that the claims recite “significantly
more” than the abstract idea of how to perform financial transactions, as we
noted in our Decision. See Dec. 7.
C. Technical Nature of the Claim under Step 2A
The Appellants argue the Examiner “misapprehends the test for
determining the practical applicability of additional claim elements under the
2019 Revised Guidance.” Req. 7. Specifically, the Appellants argue that
because the claims request and receive “additional transaction details” from
a server from a device, where the details were previously stored at the
server, the claims “are technical and provide an advantage over existing
systems, which according to the 2019 Revised Guidance establishes a
practical application of a judicial exception.” Req. 8. Additionally, the
Appellants argue, apparently, that the claimed method is “integrated into a
practical application,” by being implemented on a “particular machine,”
according to MPEP § 2106.05(b), “[b]ecause the connected devices
exchange information over the network in a manner that is different from
known systems, it follows that the devices are specially programmed to
achieve the stated technical result(s) and advantage(s).” Req. 8.
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The last time the Examiner considered the claims and arguments was
during the Final Action, mailed November 8, 2017, which was over a year
before the Guidance issued. The Examiner could not have misconstrued
whether the claims integrate the abstract idea into a “practical application,”
under the Guidance, because at the time of the Final Action, the Guidance
had not issued. Moreover, the “practical application” inquiry in the
Guidance is based on MPEP § 2106.05(a)–(c), (e)–(h). 84 Fed. Reg. at 55.
The Appellants have not adequately set forth any assertion to persuade us
that the Examiner failed to consider any of those inquiries. For example, in
the Answer, the Examiner asserts that “the claim does not amount to an
improvement to the functioning of a computer itself; and the claim does not
move beyond a general link of the use of an abstract idea to a particular
technological environment.” Ans. 8. That is the exact language used for the
inquiries under MPEP § 2106.05(a) and (h). Indeed, the entirety of pages 7–
10 of the Answer addresses the Appellants’ arguments that were essentially
made under the rubric of MPEP § 2106.05(a). That the inquiries under this
section of the MPEP are now a part of the “practical application” inquiry
does not change the fact that they were already addressed by the Examiner in
substance, if not form.
Moreover, in the interests of furthering compact prosecution and
providing the Appellants with a complete response, we addressed the
arguments made by the Appellants within the framework of the “practical
application” inquiry. See Dec. 6–7. Specifically, we determined, in
summary, that sending data between two computers via different paths is no
more than a basic function of general-purpose computers, in that they can be
performed using protocols such as TCP/IP, which do not require extensive
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programming. This is in agreement with the basic thrust of the Examiner’s
response to the Appellants’ arguments. Ans. 8; see also Final Action 3 (“the
. . . [additional] elements are generic computer components claimed to
perform their basic functions of receiving and delivering information”). It is
for this reason that we remain unpersuaded that merely avoiding one device
by choosing a different path does not transform a general-purpose computer
into a “particular machine.”
We have considered the Appellants’ arguments, but to the extent they
request we alter the outcome in our Decision, the Appellants’ request is
DENIED.
DENIED