Gary T. Dinkin et al.

Patent Trials and Appeals Board

Jul 18, 2019

14174811 - (D) (P.T.A.B. Jul. 18, 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.
14/174,811 02/06/2014 Gary T. Dinkin 1681/3/2 CON 6939
25297 7590 07/18/2019
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
datcheson@jwth.com
usptomail@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY T. DINKIN and LINDA B. DINKIN
____________________

Appeal 2018-004221
Application 14/174,8111
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s rejection of claims 1–25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants invention “relates to methods, systems, and computer
readable media for peer-to-peer third party distribution of gift cards and
peer-to-peer transaction routing therefor.” Spec. 1, ll. 13–15. Claims 1, 12,
and 23 are the independent claims on appeal. Below, we reproduce claim 1
as illustrative of the appealed claims.

1 “The real parties in interest are Gary [T.] Dinkin and Linda [B.] Dinkin,
the two co-inventors.” Appeal Br. 2.
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1. A method for peer-to-peer third party distribution of
redeemable for value cards and peer-to-peer transaction routing
therefor, the method comprising:
providing a peer-to-peer redeemable-for-value card
transaction router and a peer-to-peer redeemable-for-value card
transaction database that are configurable to facilitate peer-to-
peer transaction processing for redeemable-for-value cards
issued by a redeemable-for-value card provider and distributed
by a third party seller where the redeemable-for-value card
provider and the third party seller have a business relationship
with each other;
at the peer-to-peer redeemable-for-value card transaction
router:
receiving a redeemable-for-value card transaction
message from the third party seller;
accessing the database using information in the
redeemable-for-value card transaction message and
locating a record corresponding to message; and
using information in the record, completing at least
a portion of a redeemable-for-value card transaction.

REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1–25 under 35 U.S.C. § 101 as reciting only patent-
ineligible subject matter; and
II. Claims 1–25 under 35 U.S.C. § 103(a) as unpatentable over
Wilen (US 8,602,297 B2, iss. Dec. 10, 2013), Wuhrer
(US 2009/0081989 A1, pub. Mar. 26, 2009), and Oles et al.
(US 2008/0235095 A1, pub. Sept. 25, 2008) (“Oles”).

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PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. See id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” Id. at 219 (“On
their face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk.”); see also
Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts that the courts determined to be abstract ideas—and, thus,
patent ineligible—include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
67 (1972)). Concepts that the courts determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
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(quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, although the claim at issue recited a mathematical formula,
the Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”).
Nonetheless, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
2019 Revised Patent Subject Matter Eligibility Guidance
The U.S. Patent and Trademark Office recently published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
that Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
A practical application “appl[ies], rel[ies] on, or use[s] the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance, 84 Fed. Reg. at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim either:
(3) adds a specific limitation beyond the judicial exception
which is not “well-understood, routine, [or] conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.
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ANALYSIS
Rejection I
Initially, we note that Appellants argue against the Examiner’s
rejection of the claims, as ineligible for patenting, as a group. See Appeal
Br. 10-14. We choose independent claim 1 for our analysis, and the
remaining independent and dependent claims stand or fall with claim 1.
See 37 C.F.R. § 41.37 (c)(1)(iv). For the following reasons, we sustain the
Examiner’s rejection of the claims as patent-ineligible.
As discussed below, we determine that in accordance with point (1) of
the Guidance referenced above, independent claim 1 recites at least one
judicial exception, including an abstract idea. More specifically, as
described in further detail, the abstract idea includes certain methods of
organizing human activity, such as a fundamental economic practice.
As set forth above, claim 1 recites the following: (A) “A method for
peer-to-peer third party distribution of redeemable for value cards and peer-
to-peer transaction routing therefor, the method comprising”: (B)
“providing a peer-to-peer redeemable-for-value card transaction router and a
peer-to-peer redeemable-for-value card transaction database that are
configurable to facilitate peer-to-peer transaction processing for redeemable-
for-value cards issued by a redeemable-for-value card provider and
distributed by a third party seller where the redeemable-for-value card
provider and the third party seller have a business relationship with each
other”; (C) “at the peer-to-peer redeemable-for-value card transaction
router”: (C)(1) “receiving a redeemable-for-value card transaction message
from the third party seller”; (C)(2) “accessing the database using information
in the redeemable-for-value card transaction message and locating a record
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corresponding to message”; and (C)(3) “using information in the record,
completing at least a portion of a redeemable-for-value card transaction.”
Appeal Br., Claims App. (Claim 1). Here, each of claim 1’s recitations
reproduced above, including the claim’s preamble (A), and limitations (B),
(C), and (C)(1)–(C)(3) in the claim’s body, involve distributing redeemable-
for-value cards, as well as routing transactions and maintaining a database
associated with the cards. In accordance with Appellants’ Specification, the
claimed “redeemable-for-value cards” are “[g]ift cards . . . that are
redeemable for value to purchase goods or services from a specific source.”
Spec. 1, ll. 18–19. Purchasing goods or services with a gift card is a
fundamental economic practice. See MPEP § 2106.04(a)(2)(I)(A); Alice,
573 U.S. at 219–20 (“intermediated settlement” is a fundamental economic
practice, and, thus, an abstract idea); Bilski, 561 U.S. at 611 (“hedging” is a
fundamental economic practice, which is an abstract idea).
In accordance with point (2) of the Guidance referenced above,
claim 1 does not recite any additional element that integrates the judicial
exception into a practical application—i.e., something that “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 54. The claim only generically recites the use of certain
physical components and hardware—a “transaction router,” a “database,”
and “value cards”—and, thus, these components and hardware do not
meaningfully limit the claim. Further, in the Specification, Appellants do
not describe the claimed components and hardware in such a way as to
indicate that the components and hardware are anything other than generic.
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See, e.g., Spec. 1, ll. 18–19 (describing that the claimed “cards” are “[g]ift
cards . . . that are redeemable for value to purchase goods or services from a
specific source.”); id. at 5, ll. 11–12 (describing that the “router . . . may be a
general purpose computing platform.”); id. at 6, ll. 12–13 (describing that
the “database . . . may provide inventory management.”).
Therefore, claim 1 is directed to the above-discussed abstract idea,
and does not integrate the judicial exception into a practical application.
In accordance with points (3) and (4) of the Guidance referenced
above, claim 1 fails to recite a specific limitation beyond the judicial
exception which is not well understood, routine, and conventional in the
field, but instead simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Taking the claim elements separately,
the claimed components and hardware, as well as the functions performed
by the claimed hardware, are purely conventional. Specifically, claim 1 uses
known, generic components to perform their known, basic functions, e.g., a
router and a database. Although, arguably, the data processed and
transmitted differs, claim 1 only recites the router, database, and cards at a
high level of generality. In other words, here the claim recites only well-
understood, routine, and conventional functions. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz, 639
F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction
of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can
be achieved by any general purpose computer without special
programming.”).
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Considered as an ordered combination, claim 1’s hardware does not
add anything that is not already present when we consider the steps
separately. Further, claim 1 does not affect an improvement in any
technology or technical field. As stated above, claim 1 recites cards, a
router, and a database that are known, generic components. Unlike the
claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016), Appellants’ claim 1 recite the use of only generic hardware
and components. See Appeal Br. 12. Thus, Appellants’ claim 1 amounts to
nothing significantly more than instructions to apply the abstract idea with
generic hardware, and does not improve the card, router, or database.
Accordingly, the claim recitations are insufficient to transform the abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
Therefore, based on the foregoing, we sustain the Examiner’s § 101
rejection of independent claim 1. Inasmuch as the remaining claims stand or
fall with claim 1, we also sustain the rejection of claims 2–25.

Rejection II
As set forth above, independent claim 1 recites, in relevant part,
at the peer-to-peer redeemable-for-value card transaction
router:
receiving a redeemable-for-value card transaction
message from the third party seller;
accessing the database using information in the
redeemable-for-value card transaction message and
locating a record corresponding to message; and
using information in the record, completing at least
a portion of a redeemable-for-value card transaction
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Appeal Br., Claims App. The Examiner ultimately relies on Wuhrer’s
paragraph 34 to disclose the claimed router. See, e.g., Answer 5. We
reproduce this portion of Wuhrer:
The system 100 includes a peer-to-peer (P2P)
domestic/international application, a gifting application,
premium short messaging service (P-SMS) application for
overdraft protection, a reload application and a bill pay
application. The P2P application is configured to transfer
financial funds between users across different mobile service
providers based on input from the mobile device of one of the
users from a Java application or a WAP application belonging to
application publisher or belonging to the system 100. The gifting
application is configured to transfer funds and/or minutes from a
first user to a second user. The P-SMS application enables a
post-paid user of a mobile service provider to send funds from an
account to another user for the benefit prepaid users who have
insufficient funds. The reload application can recharge prepaid
accounts and stored value accounts, such as, for example, a
college stored value account. The bill pay application enables a
user to pay their bills using the mobile device.
Wuhrer ¶ 34.
It is not clear to us that this portion of Wuhrer discloses the router, as
specifically claimed. See, e.g., Reply Br. 8 (“[P]aragraph [0034] of Wuhrer
does not mention a router at all and instead discloses that a gifting
application on one mobile phone can gift minutes or funds to another mobile
phone. There is no disclosure of a router that receives and processes
messages associated with a transaction from a seller of a redeemable for
value card.”). Thus, we do not sustain the Examiner’s obviousness rejection
of claim 1. Inasmuch as independent claims 12 and 23 recite similar
recitations, we also do not sustain the Examiner’s obviousness rejection of
these claims. Further, we do not sustain the Examiner’s rejection of
claims 2–11, 13–22, 24, and 25 that depend from claims 1, 12, and 23.
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DECISION
We AFFIRM the Examiner’s rejection of claims 1–25 under
35 U.S.C. § 101.
We REVERSE the Examiner’s rejection of claims 1–25 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED