Ex Parte Austin et al

Patent Trial and Appeal Board

Jan 11, 2018

12787721 (P.T.A.B. Jan. 11, 2018)

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.
12/787,721 05/26/2010 Andrew Austin 5754-00801 5181
36275 7590 01/11/2018
Egan, Peterman, Enders & Huston LLP.
1101 S. Capital of Texas Highway
Bldg C, Suite 200
Austin, TX 78746
EXAMINER
IWARERE, OLUSEYE
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
01/11/2018 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 ANDREW AUSTIN and WALTER WOODROW
Appeal 2016-0046401
Application 12/787,7212
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 27—33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Specification (“Spec.”, filed May 26,
2010), Appeal Brief (“App. Br.,” filed August 24, 2015), and Reply Brief
(“Reply Br.,” filed March 31, 2016), and the Examiner’s Answer (“Ans.,”
mailed February 1, 2016), and Final Office Action (“Final Act.,” mailed
January 30, 2015).
2 Appellants identify Additech, Inc. as the real party in interest. App. Br. 1.
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CLAIMED INVENTION
Appellants’ claimed invention “relates to a method and system for
purchasing non-fuel merchandise where the selection is made at the fuel
dispenser, and in particular, where payment is made inside the store”
(Spec. 12).
Claim 27, reproduced below, is the sole independent claim, and
representative of the subject matter on appeal:
27. A method, comprising:
receiving communication messages regarding purchase
selections at a fuel dispenser;
comparing each of the communication messages to a
specified communications protocol;
wherein upon determining a first communication
message does not match the specified communications
protocol, subsequently passing the first communication
message to a point-of-sale system;
wherein upon determining a second communication
message does match the specified communications
protocol, subsequently creating a purchase message
regarding one or more items corresponding to the second
communication message in a format receivable by the
point-of-sale system and forwarding the purchase message
to the point-of-sale system, wherein the steps of receiving
communication messages, comparing each of the
communication messages, determining a first
communication message, subsequently passing the first
communication message, determining a second
communication message, subsequently creating a
purchase message and forwarding the purchase message
are conducted by an intermediary computing system
communicably connected to, interposed between, and
distinct from the fuel dispenser and the point-of-sale
system; and
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presenting a total amount of said purchase selections at the
point-of-sale system, wherein the point-of-sale system is a
system at which the total purchase amount is tendered, and
wherein the step of presenting is conducted by the point-of-sale
system.
REJECTION
Claims 27—33 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Under 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, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 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.” Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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 there are additional elements that
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‘“transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 78).
The Court acknowledged in Mayo, that “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. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting claims 27—33 under 35 U.S.C. § 101, the Examiner finds,
as set forth in the Final Office Action and further detailed in the Answer,
that the claims are directed to “item purchasing transactions,” i.e., to a
method of organizing human activity, and, therefore, to an abstract idea; and
that the claim limitations, individually and as a whole, merely consist of
receiving data (i.e., communication messages), performing operations on the
data (i.e., comparing each of the messages to a specified communication
protocol and, if there is a match, creating a purchase message in a format
receivable by the point-of-sale system) and sending/displaying data (i.e.,
forwarding the communication message and/or the purchase message to the
point-of-sale system) (Final Act. 2—3; Ans. 3—4).
Appellants first argue that the rejection under § 101 cannot be
sustained because the Examiner has failed to comply with the USPTO’s
“July 2015 Update on Subject Matter Eligibility” (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf) and, more particularly, because the Examiner failed in the Final
Office Action to “explain how the alleged abstract idea recited in the
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invention is similar to one of the concepts previously identified [as patent-
ineligible] by the courts” (App. Br. 8—9; see also Reply Br. 6—12).3
That argument is not persuasive at least because an examiner’s failure
to follow the Director’s guidance is appealable only to the extent that the
examiner has failed to follow the relevant statutes or case law. To the extent
the Director’s guidance goes beyond the case law and is more restrictive on
the examiner than the case law, the failure of the examiner to follow those
added restrictions is a matter for petition to the Director. We are aware of
no controlling precedent, nor do Appellants identify any controlling case
law, that precludes an examiner from finding a claimed concept patent-
ineligible unless it is similar to a concept that a court has previously
identified as abstract.
We also are not persuaded of Examiner error by Appellants’ argument
that the claims cannot be directed to the abstract idea of “item purchasing
transactions” because “Appellant’s [sic] claim 27 does not recite ‘item
purchasing transactions’ in the claim limitations” (App. Br. 9; see also Reply
Br. 4-6).
There is no requirement that the Examiner’s formulation of an abstract
idea must copy the claim language. Instead, the Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether ‘their character as
3 The July 2015 Update instructs examiners to refer to the body of case law
precedent in order to identify abstract ideas by way of comparison to
concepts already found to be abstract (id. at 3), and explains that “[t]his
discussion is meant to . . . ensure that a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea” (id.).
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a whole is directed to excluded subject matter.’” See Enfish, 822 F.3d
at 1335 (citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015). Here, it is clear from the Specification,
including the claim language, that the character of the claims, considered as
a whole, is directed to a method and system for purchasing non-fuel
merchandise (see, e.g., Spec. Title (“METHOD AND SYSTEM FOR
PURCHASING NON-FUEL MERCHANDISE”); 12 (“The present
invention relates to a method and system for purchasing non-fuel
merchandise where the selection is made at the fuel dispenser, and in
particular, where payment is made inside the store”)), or at a higher level of
abstraction, to performing “item purchasing transactions.” Although the
method steps of claim 27 recite receiving data and performing operations on
that data, e.g., matching and presenting the data using a computer system, as
the Examiner observes, “this is all for the purpose of performing item
purchasing transactions” (Ans. 5).
Appellants assert that claim 27 recites a process whereby
communication messages regarding purchase selections (e.g., fuel and non­
fuel purchase selections) received at a fuel dispenser are compared to a
specified communication protocol, and further recites that upon determining
a communication message matches the specified communications protocol, a
purchase message is created in a format receivable by a point-of-sale
(“POS”) system and forwarded to the POS system, so that a total amount of
the purchase selections can be presented at the POS system for payment
(id). But Appellants do not explain how these functions separate the
claimed invention from the abstract idea of performing “item purchasing
transactions.” Rather than distinguishing the claimed invention from the
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abstract idea, these functions are part of the abstract idea itself. That the
Examiner articulates the abstract idea at a higher level of abstraction than do
Appellants is an insufficient basis for finding that the claims are not directed
to an abstract idea. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
1241 (Fed. Cir. 2016) (“An abstract idea can generally be described at
different levels of abstraction. As the Board has done, the claimed abstract
idea could be described as generating menus on a computer, or generating a
second menu from a first menu and sending the second menu to another
location. It could be described in other ways, including, as indicated in the
specification, taking orders from restaurant customers on a computer.”).
Responding to the Examiner’s Answer, Appellants assert in the Reply
Brief that rather than simply presenting a method for purchasing non-fuel
transaction, the “goal” of claim 27 is to provide a method for distinguishing
between non-fuel merchandise and fuel purchase selections initiated at a fuel
dispenser (i.e., by comparing communication messages regarding purchase
selections received at a fuel dispenser to a specified communication
protocol) so that the purchase selections pertaining to non-fuel merchandise
can be provided in a format receivable by a point-of-sale system and a total
amount of the fuel and non-fuel purchases can be presented at the POS
system for payment (Reply Br. 5). Yet, this amounts to no more than
collecting, analyzing, transmitting, and displaying information — concepts
that the Federal Circuit has held are within the realm of abstract ideas. See,
e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (finding claims directed to an abstract idea where “[t]he advance they
purport to make is a process of gathering and analyzing information of a
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specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.”).
Turning to the second step of the Mayo!Alice framework, Appellants
maintain that even if claim 27 is directed to an abstract idea, claim 27 is
nonetheless patent-eligible because the claim recites limitations that quality
as “significantly more” than the abstract idea of “item purchasing
transactions” (App. Br. 9-15). Appellants assert that the claimed
“intermediary computing system” performs steps that are not conventionally
performed when conducting “item purchase transactions” at a fuel dispenser
or convenience store (e.g., comparing communication messages received at
a fuel dispenser to a specified communications protocol and creating a
purchase message in a format receiving by the POS system), and that the
“intermediary computing system” is not a generic computer performing
“‘well-understood, routine, or conventional activities’ previously known in
the industry” {id. at 11). But Appellants do not adequately show how the
claims are technically performed such that they are not routine, conventional
functions of a generic computer; nor do Appellants provide any technical
reasoning to explain why the claims are not routine and conventional
functions of a generic computer. There is no indication in the record that the
particular operations recited in the claims, e.g., comparing communication
messages to a specified communication protocol and creating a purchase
message in a format receivable by the POS system, require any “inventive”
computer components or that the claimed invention is implemented using
other than generic computer components.
The Specification describes the intermediary system as “a specialized
computing device, consisting of hardware and software,” that attaches to a
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new or existing data communications line that connects a retail POS system
to a fuel dispenser, and also describes that the system utilizes a specified
data communications protocol, which defines a message standard that
enables the intermediary system, any retail POS system, and any fuel
dispenser to communicate the choice of a non-fuel merchandise item from
the fuel dispenser to the retail POS system (Spec. 122). But claim 27 does
not claim a particular way of programming or designing software, for
example, to create the purchase message “in a format receivable” by the
POS system. Nor, for that matter, is any such programming disclosed in the
Specification. Instead, claim 27 recites that the intermediary computing
system receives communication messages, compares each of the
communication messages to a specified communication protocol, and either
transmits the communication message to the POS system or creates a
purchase message, if the communication message matches the specified
communication protocol, and forwards the purchase message to the POS
system. In other words, the intermediary computing system merely receives,
processes, and transmits information (albeit that the information is of a
particular kind, i.e., communication messages regarding purchase selections
at a fuel dispenser). These are generic computer functions, and are not
enough to transform an otherwise patent-ineligible abstract idea into a
patent-eligible invention. See, e.g., EON Corp. IP Holdings LLC v. AT & T
Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (A general purpose
computer programmed to perform conventional functions does not amount
to an inventive concept such that the claims are significantly more than the
abstract idea).
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We also are not persuaded of Examiner error to the extent that
Appellants argue that claim 27 is patent-eligible because the claimed
invention is novel and/or non-obvious in view of the cited art, and confined
to a particular useful activity, i.e., purchasing fuel and non-fuel merchandise
(App. Br. 12).
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo I Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non­
obviousness, but rather, a search for “an element or combination of elements
that is sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.” Alice Corp.,
134 S. Ct. at 2355. “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass ’n. for Molecular Pathology
v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188—89 (1981) (“The ‘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 categories of possibly patentable
subject matter.”).
Limiting the use of an abstract idea to a particular technological
environment, e.g., fuel dispenser technology, also does not make a claim less
abstract. See Alice Corp., 134 S. Ct. at 2358. Nor is the recitation of a
practical application for an abstract idea sufficient to transform the abstract
idea into a patent-eligible invention. Cf. CyberSource Corp. v. Retail
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Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court [in
Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable.”). It also is immaterial that the claims would not preempt use of
the abstract idea of conducting “item purchasing transactions” (Reply
Br. 15). SeeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[Preemption may signal patent ineligible subject
matter, [but] the absence of complete preemption does not demonstrate
patent eligibility.”).
Appellants further argue that the claimed invention amounts to
“significantly more” because it improves “the technical field of fuel
dispenser systems and methods” (App. Br. 12; see also id. at 14—15). Yet,
the features that Appellants identify as “significantly more” (i.e.,
recognizing a non-fuel merchandise purchase transaction initiated at a fuel
dispenser by comparing communication messages regarding purchase
selections to a specified communication protocol and determining whether
there is a match, and creating, formatting, and forwarding a purchase
message regarding the purchase selections to a POS system so that the
purchase transaction can be concluded at the POS system and the total
purchase amount tendered (see id. at 12—13)) are merely part of the abstract
idea itself. Although claim 27 recites that these steps are performed by “an
intermediary computing system communicably connected to, and interposed
between, and distinct from the fuel dispenser, and the point-of-sale system,”
we find nothing in the Specification, nor for that matter, do Appellants point
to anything in the Specification, to indicate that this intermediary computing
system is something other than a generic computer, which does not satisfy
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the inventive concept. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[Ajfter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.” (internal
citations and quotation marks omitted)).
Appellants maintain that the claims are analogous to the claims the
Court upheld as patent-eligible in Diehr because, similar to the claims in
Diehr, claim 27 describes “additional steps that the industry has not yet been
able to obtain” (id. at 13). But we fail to see how, and Appellants do not
adequately explain how, the claims in Diehr, which were directed to an
industrial process, i.e., an improved process for curing synthetic rubber, that
“significantly lessens the possibility of ‘overcuring’ or ‘undercuring,”’
see Diamond v. Diehr, 450 U.S. 175, 187 (1981), relate to the claims at issue
here or how the Court’s holding in Diehr otherwise impacts the present
analysis under the Mayo!Alice framework.
That the claimed functionality — i.e., functionality for enabling a
consumer to make purchase selections for fuel and non-fuel merchandise at
the fuel dispenser and pay for the purchase selections at a POS system inside
a store or kiosk — may not have been previously known in the industry may
be evidence of novelty and/or non-obviousness. But it is of no relevance in
determining whether the claims recite subject matter is patent-eligible under
§ 101. See Diehr, 450 U.S. at 188-89.
We also are not persuaded of Examiner error by Appellants’ argument
that the claimed intermediary computing system improves the functioning of
the fuel dispenser as a machine (App. Br. 14—15). There is a fundamental
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difference between machine functionality improvements, on the one hand,
and uses of existing computers as tools to perform a particular task, on the
other. Indeed, the Federal Circuit applied this distinction in Enfish in
rejecting a § 101 challenge at the step one stage of the Alice analysis because
the claims at issue focused on a specific type of data structure, i.e., a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data, and
not merely on asserted advances in uses to which existing computer
capabilities could be put. Id. at 1335—36. The alleged improvement that
Appellants tout, i.e., enabling a consumer to make purchase selections for
fuel and non-fuel merchandise at the fuel dispenser, and pay for all purchase
selections at a POS system located inside a store or kiosk, does not concern
an improvement in the capabilities of the fuel dispenser and/or the
intermediary computing system, but instead relates to an alleged
improvement in conducting non-fuel purchase transactions at a fuel
dispenser for which an intermediary computing system is used as a tool in its
ordinary capacity.4
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 27—33 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection.
4 Appellants acknowledge that conventional fuel dispensers allow a
consumer to make purchase selections for both fuel and non-fuel
merchandise (e.g., a car wash) at the fuel dispenser and to pay for these
purchases at the fuel dispenser (App. Br. 15).
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DECISION
The Examiner’s rejection of claims 27—33 under 35 U.S.C. § 101 is
affirmed.
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).
AFFIRMED
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