Emmitt J. Smith

Patent Trials and Appeals Board

Oct 21, 2020

2019003027 (P.T.A.B. Oct. 21, 2020)

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.
14/823,850 08/11/2015 Emmitt J. Smith III 107504.00019 1176
33649 7590 10/21/2020
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS AVENUE
SUITE 600
DALLAS, TX 75201
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
10/21/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMITT J. SMITH, III
Appeal 2019-003027
Application 14/823,850
Technology Center 3600
Before SUSAN L. C. MITCHELL, FREDERICK C. LANEY, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final rejection of claims 21–40. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). A hearing was held on August 20, 2020.
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as EMMITT J.
SMITH, III. Appeal Br. 4.
Appeal 2019-003027
Application 14/823,850
2
CLAIMED SUBJECT MATTER
The claims are directed to a method of providing payment data from
an electronic personal device. Claim 1, reproduced below, is the sole
independent claim.
21. A method comprising:
providing payment data from an electronic personal device
to a point of sale system using a wireless connection to a
transaction processing system;
determining whether transaction data is available in
conjunction with the wireless connection to the transaction
processing system;
transmitting the transaction data if it is determined that the
transaction data is available;
determining whether the transaction data is associated
with a radio frequency tag system;
determining whether a transaction identifier has been
provided; and
providing the transaction data to a user if the transaction
data is associated with the radio frequency tag system and the
transaction identifier has been provided.
REJECTIONS
Claims 21–40 are rejected under 35 U.S.C.:
§ 112(a) for inadequate written description and lack of
enablement;
§ 112(b) for indefiniteness; and
§ 101 as patent ineligible subject matter.

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OPINION
35 U.S.C. § 112(a) – Written Description
The Examiner determined that the claims include subject matter not
described in the specification in a manner to show that the inventor had
possession of the claimed invention. Final Act. 9. In particular, claim 21
includes, inter alia:
determining whether the transaction data is associated
with a radio frequency tag system;
. . .
providing the transaction data to a user if the transaction
data is associated with the radio frequency tag system and the
transaction identifier has been provided.
Id. The Examiner explains that though “the Specification discloses use of an
RFID system (see Spec., ¶¶ 0029, 0050, 0065) for performing wireless
communication, the Specification fails to disclose [the above method
steps],” and “Figure 8 does not appear to suggest such an embodiment for
providing transaction data to a user.” Id. Thus, the Examiner determines
“that one of ordinary skill in the art would not conclude that Applicant was
in possession of the claimed invention at the effective time of filing of the
present application.” Id. at 14.
We address each claim limitation separately, starting with the step of
“providing the transaction data . . . .”
“Providing the transaction data . . .”
The flow chart of Figure 8 is directed to a “method for providing
transaction data to a user” (Spec. ¶ 16) that can include receiving “wireless
transaction data . . . from a radio frequency tag system” (id. ¶ 65). At step
814 of the flow chart a transaction identifier is received and later at step 822,
transaction data is received by a user. Id. at ¶¶ 67, 69.
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Application 14/823,850
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Based on these teachings, we agree with Appellant that the
Specification provides written description support for “providing the
transaction data to a user if the transaction data is associated with the radio
frequency tag system and the transaction identifier has been provided.”
Appeal Br. 13; Reply Br. 2–4. In the disclosed situation where the
transaction data is received from a radio frequency tag system, the
transaction data is necessarily associated with the radio frequency tag
system. Thus, in the disclosed embodiment when the transaction identifier is
received and the transaction data is later provided to a user, all of the
elements of this claim limitation are present in the Specification, and
therefore adequate written description support is provided.
Though we agree with the Examiner that the flow chart in Figure 8
provides for transaction data to be provided to the user even if a transaction
identifier is not received, we do not agree that the claim does not have
written description support as a result. Ans. 9–10; see also Final Act. 14
(the Examiner adds the term “only” to the summary of the claim limitation).
We agree with Appellant that the claim is not limited to providing
transaction data only “if the transaction data is associated with the radio
frequency tag system and the transaction identifier has been provided,”
rather this is a minimum requirement for when transaction data is provided
to the user. See Appeal Br. 12–13. The fact that the flow chart in Figure 8
discloses providing transaction data to a user both 1) after the transaction
identifier has been provided, and 2) even if no transaction identifier is
provided, does not remove the written description support for providing
transaction data to a user after the transaction identifier has been provided.
Thus, we do not sustain the Examiner’s rejection of claim 21 on this
ground.
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determining whether . . .
The Examiner also determines that “the Specification fails to disclose
determining whether the (previously transmitted) transaction data (available
in conjunction with the wireless connection) is associated with a radio
frequency tag system.” Final Act. 9.
Appellant argues that as disclosed in the Specification,
if a shopper can carry items having a radio frequency tag . . . and
the items can be charged to the shopper when the shopper exits
the store . . . , where device control system 102 can receive . . .
transaction data . . . that has been compiled by a radio frequency
tag point of sale system, such as one that scans a buyer . . . to
determine the contents based on radio frequency tags, . . . and
where the . . . transaction data . . . can be provided to device
control system 102 directly, through a wireless connection, by
interfacing with a remote database . . . , then this disclosure must
explicitly provide support for determining whether the
transaction data is associated with a radio frequency tag.
Reply Br. 3. We disagree.
Appellant does not identify where the Specification teaches
“determining whether the transaction data is associated with a radio
frequency tag system.” The Specification clearly teaches obtaining
transaction data with a radio frequency tag system. See e.g. Spec. ¶ 50. But
once that data is obtained, the Specification is silent as to a step of analyzing
the transaction data in order to determine whether the transaction data is
associated with a radio frequency tag system. None of identified the
teachings of 1) determining the shopper’s items based on RFID tags, 2)
charging items to a shopper, 3) compiling transaction data by an RFID
system, and 4) receiving transaction data by the device control system,
teaches or “explicitly provides support for determining whether the
transaction data is associated with a radio frequency tag.” Appellant
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provides no reasons why any of these steps requires “determining whether
the transaction data is associated with a radio frequency tag.”
Appellant also provides no reason why one of skill in the art would
understand these steps as disclosing “determining whether the transaction
data is associated with a radio frequency tag.” Appellant does broadly assert
that one would understand that this recited determination occurs from the
disclosure (Appeal Br. 12), but this is merely attorney argument. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). Thus, Appellant’s argument does
not inform us or error in the Examiner’s rejection.
For these reasons, we sustain the Examiner’s rejection of the claims as
lacking written description support for the limitation “determining whether
the transaction data is associated with a radio frequency tag.”
35 U.S.C. § 112(a) – Enablement
The Examiner determined that “[w]hile the Specification is enabling
for providing transaction data to a user in accordance with Fig. 8, it does not
reasonably provide enablement for the claimed invention (which is not
adequately supported by the Specification).” Final Act. 10; see also Ans. 10
(making a similar statement).
The question of enablement is separate from the question of whether
one of skill would have understood the inventor was in possession of the
invention as discussed above. Thus, even if the claims are directed to
something not present in the written description, it does not necessarily
follow that the claims are not enabled. Further, we agree with Appellant that
“the Office must do more than simply assert in a conclusory manner” that
the claims are not enabled. Appeal Br. 14. Thus, we do not sustain the
Examiner’s rejection of claim 21 as non-enabled.
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35 U.S.C. § 112(b) – Definiteness
The Examiner determines that the term “in conjunction with” in claim
21 is indefinite. Final Act. 10. Claim 21 includes: “determining whether
transaction data is available in conjunction with the wireless connection to
the transaction processing system.” The Examiner states “in conjunction
with” means “in combination with” and that it is unclear whether this
“requires two determinations; (1) as to whether the wireless connection is
available and (2) as to whether the transaction data is available, or whether
the transaction data is merely available when the wireless connection is
determined to be available.” Final Act. 10–11.
Appellant argues that the face of the claim only requires one
determination and that is whether transaction data is available, which
determination “is made with [or over] the wireless connection.” Appeal Br.
15. We agree that the claim only requires a single determination, but also
requires that the determination be made over a wireless connection. Thus,
we do not sustain the Examiner’s rejection of claim 21 as indefinite.
35 U.S.C. § 101 – Eligibility
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court determined that there are certain judicial
exceptions to § 101, namely: (1) laws of nature, (2) natural phenomena, and
(3) abstract ideas. See Mayo Collaborative Svc. v. Prometheus Labs, Inc.,
566 U.S. 66, 70–71 (2012).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217 (2014) (citing Mayo,
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566 U.S. at 72–73). According to the Supreme Court, we first determine
whether the claims at issue are directed to one of those concepts. Id. If so,
we secondly “consider the elements of each claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79, 78).
The PTO published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) (“Revised Guidance”). When conducting step
one of the Alice framework under this guidance, we first look to whether the
claim recites:
Prong 1 any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes);
and
Prong 2 additional elements that integrate the judicial exception
into a practical application.
See Revised Guidance, 84 Fed. Reg. at 54–55. 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:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field; or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 51.
§ 101 Analysis
Applying the Revised Guidance to the facts on this record, we find
that Appellant’s claims 21–40 are directed to patent-ineligible subject matter
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without significantly more. Appellant argues claims 21–40 as a group. See
Appeal Br. 8–11. As a result, we select claim 21 as representative, and the
remaining claims stand or fall with claim 21. See 37 C.F.R. § 41.37 (c)(1)
(iv).
Judicial Exception: Step One of the Mayo/Alice Framework;
Step 2A, Prong 1 of the 2019 Revised Guidance

The Revised Guidance instructs us, first, to determine whether any
judicial exception to patent eligibility is recited in the claims. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts; (2) certain methods of
organizing human activity such as fundamental economic practices; and (3)
mental processes.
Under Prong 1, the Examiner determined, and we agree, that “the
claims are directed to managing transaction information for a user” or
“processing transaction data” and therefore fall within the category of “a
method for organizing human activity.” Final Act. 6; Ans. 7. The Examiner
based this conclusion on the language of the claims and that
the majority of the limitations are directed to performing
retrieving, analyzing, and transmitting data, including:
“providing payment data,” “determining whether transaction
data is available,” “transmitting the transaction data if it is
determined that the transaction data is available,” “determining
whether the transaction data is associated with a radio frequency
tag system,” “determining whether a transaction identifier has
been provided,” and “providing the transaction data to a user if
the transaction data is associated with the radio frequency tag
system and the transaction identifier has been provided.”
Ans. 7; see also Final Act. 5.
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Appellant contests the Examiner’s rejection generally, but does not
directly address the Examiner’s analysis under Prong 1. Appeal Br. 8–11;
Reply Br. 2. Appellant does argue that the Examiner’s rejection does not
follow the guidelines of the Revised Guidance (Reply Br. 2), but again does
not address the Examiner’s analysis applicable to Prong 1. Thus, we are not
informed of error in the Examiner’s rejection.
Practical Application: Step One of the Mayo/Alice Framework;
Step 2A, Prong 2 of the 2019 Revised Guidance
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider under Prong 2, whether the claims recite
additional elements, considered individually and in combination, that
integrate the judicial exception into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54–55.
The additional elements recited in claim 21, beyond those the
Examiner determined make up the abstract idea are: an electronic personal
device, a point of sale system, and a wireless connection to a transaction
processing system. See Final Act. 7; Ans. 4. We are not persuaded that
these limitations, considered individually or as an ordered combination,
integrate the abstract idea into a practical application. Instead, these
elements merely apply the abstract idea using various computer systems,
which the Examiner characterizes as a conventional computer functions
performed on a generic computer network. Final Act. 7. Thus, under
Prong 2 of Step 2A, the additional elements in independent claim 21 do not
integrate the abstract idea into a practical application.
Appellant argues that the Examiner’s analysis is “based entirely on
form language and . . . [has] nothing to do with the actual claim language
being examined.” Appeal Br. 9. In support, Appellant cites the closing
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paragraph of the Examiner’s rejection which appears to address limitations
not in the claims. Id. (citing Final Act. 8). Though we agree that this one
paragraph does not apply the Examiner’s analysis to the claims, the
Examiner provides multiple pages of analysis directed specifically to
Appellant’s claims. See Final Act. 4–8. Thus, Appellant’s assertion is
unsupported as to the rejection as a whole.
Appellant also argues that: “Simple logic dictates that if claims cover
an ‘abstract idea,’ it should be a simple matter to find a single reference that
discloses that alleged abstract idea, and the Office was unable to do so after
diligent search and examination.” Appeal Br. 9. This argument confuses
“abstract” with “novelty.” There is no requirement that the prior art teach an
idea for the idea to be abstract. Rather, this is what is required to show that
an idea is not new. See 35 U.S.C. § 102; see also Ans. 6. The case of In re
Smith, 815 F.3d 816 (Fed. Cir. 2016), illustrates this point. There, the
Federal Circuit agreed with the examiner’s determination that “the claims
represented ‘an attempt to claim a new set of rules for playing a card game,’
which ‘qualifies as an abstract idea.’” Id. at 819. Thus, Appellant’s
argument does not appraise us of error in the Examiner’s analysis or
rejection.
Appellant also faults the Examiner’s analysis of the conventional
aspects of the claims. Appeal Br. 9–10. Appellant underlines a number of
different features in the claims that it asserts are new and non-conventional.
Id. at 10. However, the Examiner does not find that all of the features of the
claims are old or conventional. Rather, as noted above, the Examiner
analyzes the abstract idea and then determines that the electronic personal
device, point of sale system, and wireless connection to a transaction
processing system are conventional and do not integrate the judicial
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exception into a practical application. See Ans. 7. Appellant’s argument
does not appraise us of error in the Examiner’s analysis or rejection.
In view of the above, we determine that under Prong 2, the additional
elements do not integrate the recited abstract idea into a practical application
in a manner that imposes a meaningful limit on the judicial exception.
Inventive Concept: Step Two of the Mayo/Alice Framework (Step 2B of the
2019 Revised Guidance)
Under this step, we determine that the additional elements or
combination of elements in claim 21 (electronic personal device, point of
sale system, and wireless connection to a transaction processing system),
when considered both individually and as an ordered combination, do not
add significantly more so as to transform the abstract idea into patent-
eligible subject matter. Rather, as noted above, they simply apply the
abstract idea using various computer systems.
For all of the above reasons, we are not persuaded of error in the
Examiner’s rejection of claims 21–40 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–40 112(a) Written
Description
21–40
21–40 112(a) Enablement 21–40
21–40 112(b) Definiteness 21–40
21–40 101 Eligibility 21–40
Overall
Outcome
21–40

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED