Ex Parte Baldischweiler et al

Patent Trial and Appeal Board

Jun 29, 2018

10575964 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/575,964
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
0510212007
07/03/2018
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Michael Baldischweiler
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.
19838.89 5100
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BALDISCHWEILER and
KLAUS FINKENZELLER
Appeal2017-000326 1
Application 10/575,964
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
LARRY J. HUME, 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 1-7, 9-23, and 25-27. Appellants have canceled claims
8 and 24, and claim 16 is objected to by the Examiner. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Giesecke & Devrient
GmbH. App. Br. 2.
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Application 10/575,964
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed "invention relates to a
method for processing a cashless payment transaction. The invention relates
further to a system for processing a cashless payment transaction." Spec.
ii 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases and formatting added to contested limitations):
1. A method of using an electronic intermediate
carrier configured to perform cashless processing of a
transaction for paying for a service between an owner of a
personal electronic payment device and a payee, comprising the
steps:
at a first time ( t 1 ), receiving a data record assigned to the
service to be paid on an electronic intermediate carrier from an
owner's personal electronic payment device,
wherein the electronic intermediate carrier is configured
in a way such that the electronic intermediate carrier is
physically separate and independent from the owner's personal
electronic payment device, and wherein the data record
comprises information assigned to the service to be paid and
data to determine a method of payment;
at a second time (t2) which is later than the first time (tl),
checking the data record on the electronic intermediate carrier
using a receiving device of the payee;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 21, 2016); Reply Brief ("Reply Br.," filed Sept. 29, 2016); Examiner's
Answer ("Ans.," mailed July 29, 2016); Final Office Action ("Final Act.,"
mailed Feb. 26, 2015); and the original Specification ("Spec.," filed
Apr. 14, 2006).
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determining that the service was rendered correctly by
comparing the data record assigned to the service to be paid to a
reference data record; and
deleting or invalidating the data record completely on the
electronic intermediate carrier upon correct rendition of the
service, so as to prevent the data record from being used several
times for payment transactions,
wherein the personal electronic payment device is formed
as a chip card, or as a security module of a mobile telephone.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Tuttle US 6,013,949 Jan. 11, 2000
Luzzatto US 7,590,602 Bl Sept. 15, 2009
Hoffman et al. ("Hoffman") US 8,805,746 B2 Aug. 12, 2014
Rejections on Appeal
RI. Claims 1-7, 9-23, and 25-27 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 3; see
also Ans. 2.
R2. Claims 1-7, 9-23, and 25-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Luzzatto, Tuttle, and
Hoffman. Final Act. 4; see also Ans. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 10 et seq.), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1-7, 9-23,
and 25-27 on the basis of representative claim 1; and we also decide the
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appeal of obviousness Rejection R2 of claims 1-7, 9-23, and 25-27 on the
basis of representative claim 1. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-7,
9-23, and 25-27 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 1 for emphasis as follows.
ANALYSIS
1. § 101 Rejection RI of Claims 1-7, 9-23, and 25-27
Issue 1
Appellants argue (App. Br. 14--20; Reply Br. 2-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
3 "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." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(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 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more?
Analysis
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
technological work." Gottschalk v. 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 Bankint'l, 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
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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).
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
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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
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).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being 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. 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. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellants generally contend, "in the rejections of claims 1 and 17,
the Final Office Action first has failed to establish that the claims are
directed to a judicial exception." App. Br. 14. In response to the Examiner's
conclusion (Final Act. 3) that "[t]he claims are directed to a series of steps
instructing how to make a payment, which is a fundamental economic
practice and thus an abstract idea", Appellants further argue:
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[R ]ejections cannot be based on mere conclusory statements
without some articulated reasoning with some rational
underpinning. KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
The Office Action fails to give any more explanation or
analysis as to why the claimed method should be considered a
fundamental economic practice or abstract idea. Because the
Office Action only gives a conclusory statement for step one of
the Mayo two-step analysis, the Office Action fails to establish
that claims 1 and 1 7 or the claims that depend therefrom are
directed to patent ineligible subject matter.
App. Br. 15.4
In addition, Appellants contend:
[T]he Office Action oversimplifies the claims to construe them
an abstract idea. The use of an electronic intermediate carrier to
perform a cashless processing of a transaction is not a mere
fundamental economic practice. Unlike the mitigating of
settlement risk of Alice Corp. or the hedging of Bilski v.
Kappas, 561 U.S. 593 (2010), the use of an electronic
intermediate carrier to perform a cashless processing of a
transaction between an owner of a person electronic payment
device and a payee is not a mere "fundamental economic
practice," let alone a "fundamental economic practice" and is
not "taught in any introductory finance class."
And the use of an electronic intermediate carrier to perform a
cashless processing of a transaction between an owner of a
person electronic payment device and a payee is not a method
of organizing human activity, as in Bilski, but is a technological
solution to a technological problem. That is, as described by
Appellant's disclosure, due to the danger of abuse, in previous
cashless payment systems, it was generally undesirable to let go
of means of cashless payment except for data transmission with
a terminal. Thus it was very difficult to process a cashless
4 We note Appellants cite KSR, typically invoked in rejections for
obviousness under 35 U.S.C. § 103(a), as authority for arguing against the
Examiner's legal conclusion and rejection under § 101.
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payment in the absence of the owner of the means of the
cashless payment. (See Appellant's Specification, paras.
[0002]-[0005]).
In the background section of Appellant's specification, various
cashless payment transactions are described. But, as explained
in Appellant's disclosure, the various known payment methods
are subject to a number of restrictions. "For example, due to the
danger of abuse it is generally undesirable to let go of means of
cashless payment except for data transmission with a terminal."
It is this very difficult to process a cashless payment in the
absence of the owner of the means of cashless payment. (See
Appellant's specification, para. [0006]).
Thus, Appellant's claimed payment method provides "the
advantage that the cashless payment can be prepared by the
owner of a personal electronic means of payment without using
the payee's infrastructure and without any need to make contact
with the payee." (Appellant's specification, para. [0010]). "The
owner," according to Appellant's claimed method, "is thus not
subject to any restrictions with regard to the spatial availability
of such an infrastructure, or exposed to any waiting periods for
utilizing the infrastructure." (Appellant's specification, para.
[0010]).
Because Appellant's method and system of independent claims
1 and 17 and the claims that depend therefrom provide a
technological solution to a technological problem, Appellant
respectfully submits that the assertion that the claims are
directed to an abstract idea is not only an inadequate analysis,
but is mistaken.
App. Br. 15-16.
In response, the Examiner concluded, " [ t ]he claims are directed to an
abstract idea of making a payment with an electronic carrier, which is a
fundamental economic practice, [a] certain method of organizing human
activity, and an idea of itself." Ans. 3. The Examiner further identified
various limitations as being particular types of abstract ideas, e.g., "[a]t a
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first time, receiving a data record for a service to be paid on an electronic
carrier from an owner's personal device (fundamental economic practice,
certain method of organizing human activity), wherein the electronic carrier
is physically separate and independent from the personal device, and
wherein the data record comprises information assigned to the service to be
paid and data to determine a payment method (an idea of itself)." Ans. 3;
see also id., lettered paragraphs c through g.
We find this to be consistent with the Final Action, in which the
Examiner concluded:
The claims are directed to a series of steps instructing how to
make a payment, which is a fundamental economic practice and
thus an abstract idea. The "meat" of the independent claims is
using an electronic carrier as the form of payment. At a first
time ( t 1) the carrier is received, which contains payment data.
At a second time (t2), the payment data is checked. The data is
then deleted to prevent its use again. This is the electronic
equivalent of using a check or paper IOU as a form of payment.
Final Act. 3.
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 1 recites: "A method of using
an electronic intermediate carrier configured to perform cashless processing
of a transaction for paying for a service between an owner of a personal
electronic payment device and a payee." Claim 1 (preamble).
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Method claim 1 's limitations also require the steps of:
(a) "receiving a data record" at a first time tl;
(b) "checking the data record" at a later time t2;
( c) "determining [correct service rendering]. .. by
comparing the data record ... to a reference;" and
(d) "deleting or invalidating the data record ... upon
correct rendition of the service, so as to prevent [data record
reuse] for payment transactions;"
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1 and 17 are directed to an abstract
idea, i.e., making a (cashless) payment, which we also conclude is a
fundamental economic practice or, alternatively, a method of organizing
human activity. See Ans. 3. 5
As the Specification discloses, " [ t ]his invention relates to a method for
processing a cashless payment transaction ... [and] relates further to a
system for processing a cashless payment transaction." Spec. i-f 1. 6 We find
5 Merely combining several abstract ideas does not render the combination
any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea
... does not render the claim non-abstract."); see also FairWarning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining
the pending claims were directed to a combination of abstract ideas).
6 See also Spec. 18 ("Abstract"):
Proposed is a method for processing a cashless payment
transaction between an owner of a personal electronic means of
payment (1, 12) and a payee. The special feature of the
inventive method is that at a first time ( t 1) a data record is
transmitted from the owner's personal electronic means of
payment (1, 12), directly or by means of a personal device (8)
of the owner, to an electronic intermediate carrier (2) which is
formed as a physically separate unit with regard to the owner's
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this type of activity, i.e., making a cashless payment, 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
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced 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
personal electronic means of payment (1, 12), and at a second
time (t2) which is later than the first time (tl) the data record or
data derived therefrom are transmitted from the electronic
intermediate carrier (2) to the payee.
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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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
acts of parsing, comparing, storing, and editing data are abstract ideas.
Berkeimer v. HP Inc., 881F.3d1360, 1367 (Fed. Cir. 2018).
With respect to Appellants' arguments that "the use of an electronic
intermediate carrier to perform a cashless processing of a transaction
between an owner of a person electronic payment device and a payee is not a
method of organizing human activity, as in Bilski, but is a technological
solution to a technological problem", we disagree. We disagree because,
while we find the technology implemented in the claimed invention may be
useful to solve a business problem, we also find the additional elements are
not a technological solution to a technological problem, or a solution to a
problem introduced by the technology itself. See Alice Step 2 analysis, infra.
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than making cashless payment with an electronic
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carrier- 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.
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
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Appellants argue the Examiner failed to consider all the limitations of
independent claims 1 and 17 individually or as a whole to determine whether
the additional elements transform the abstract idea into a patent-eligible
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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application of the judicial exception. App. Br. 18. Appellants further
contend:
Appellant's claimed method and process are not based on
a routine implementation on a generic computer. In fact,
Appellant's claimed method and system are not based on a
generic computer at all. Instead, Appellant's claimed method
and process are tied to-and implemented by-an electronic
intermediate carrier, which is a chip card or a security module
of a mobile telephone, that is configured to interact with an
owner's personal electronic payment device and a receiving
device of the payee. Thus, Appellant's claimed method and
process are clearly intertwined and implemented with at least
three non-generic, non-routine devices: (1) an electronic
intermediate carrier (i.e. a chip card or a security module of a
mobile telephone), (2) an owner's personal electronic payment
device, (3) a receiving device of the payee.
So even if claims 1-7, 9-23, and 25-27, were considered
to be directed to an abstract idea, the claims clearly satisfy the
machine-or-transformation test, which although held to not be
sole test for patent eligibility, "is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under§ 101." Bilski v. Kappas, 130 S.
Ct. at 3227 (2010).
App. Br. 18-19.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of making a cashless payment into a patent-
eligible application of that abstract idea. See Ans. 7-9.
We agree because, as the Examiner concludes, when considering the
claims as a whole:
[The invention] simply requires receiving data (i.e. data record)
from a personal device to an electronic carrier; checking the
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data (i.e. comparing to a reference record); and
deleting/invalidating the data (i.e. if service is correctly
rendered). The claim limitations do not add a meaningful
limitation because they can be performed by a human mind
and/ or with pen and paper (sending/ checking/ deleting data;
collecting and comparing known information; obtaining and
comparing intangible data; comparing new and stored
information and using rules to identify options). Additionally,
the claim limitations do not add a meaningful limitation
because they relate to concepts such as business relations and
contracts (creating a contractual relationship), managing a
transaction, satisfying a legal obligation, and sales activities
(for the service to be paid).
Ans. 8. 9
The Examiner also concludes:
The instant claims are similar to the claims in TLI because
they are "not directed to a specific improvement to computer
functionality. Rather, they are directed to the use of
conventional or generic technology in a nascent but well-known
environment, without any claim that the invention reflects an
inventive solution to any problem presented by combing the
two." See TLI Communications LLC v. A.V. Automotive,
9 The Examiner further concludes:
The recitations to "an electronic intermediate carrier",
"personal electronic payment device", and "receiving device" in
claim 1 are generically recited computer structure. Using a
general purpose computer to perform the limitations is not
sufficient to transform a judicial exception into a patentable
invention. The computer components are recited at a high level
of generality and perform the basic functions of a computer
(e.g. sending/receiving/comparing/deleting data). Generically
recited computer elements do not add a meaningful limitation to
the abstract idea since they would be routine in any computer
implementation. Dependent claims 2-7, 9-16, 18-23, and 25-27
fail to cure this deficiency.
Ans. 4.
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LLC, (Fed. Cir. 2016). The instant specification is not
describing a new type of electronic carrier, new personal
device, or new payee receiving device. Instead, the
specification "fails to provide any technical details for the
tangible components, but instead predominantly describes the
system and methods in purely functional terms." Id.
Ans. 5.
As evidence of the conventional nature of the claimed network
components and processes, we note Appellants' Specification discloses, for
example:
[0015] The electronic intermediate carrier is preferably
formed as a transponder. Transponders are economical to
produce and do not require any mechanical contacting in the
course of a data transmission. The personal electronic means of
payment can be formed as a chip card, in particular as an
electronic purse or as a security module of a mobile telephone.
[0018] Fig. 1 shows a schematic diagram for an inventive
processing of a cashless payment transaction. The upper area of
Fig. 1 shows a per se known cash card 1, i.e. a chip card with a
purse function, and a transponder 2 at a first time t 1. The
transponder 2 is formed so as to be small, transportable and
preferably reusable; it can be designed in the manner of a label
for example. The transponder has a nonvolatile memory 23 for
receiving data records and applications. It can further have a
display device 22, as indicated in the lower part of Fig. 1, for
optically visualizing information on a data record located on the
transponder 2.
[0026] Data records transmitted to transponders 2 or received
from transponders 2 can also be stored in the receiving device
3. For example, they can be stored in the receiving device 3 on
a removable, portable data carrier, in particular in a chip card
not shown in the drawing.
[0039] Fig. 3 shows a schematic diagram for a possible
implementation of an indirect data transmission integrating a
personal device 8 of the owner of a means of payment 12. The
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personal device 8 is an intelligent device 8 in the form of a
mobile telephone 8. The execution as a mobile telephone is
only by way of example. The intelligent device 8 can likewise
be present in any other embodiments that, under the owner's
control, allow a data communication with a transponder 2 on
which a desired application is set up, and thus an indirect data
transmission from the means of payment 12 to the transponder
2. It is suitable to use for example so-called PDAs (personal
digital assistants), electronic schedulers, laptop computers or
also home computers. The mobile telephone 8-standing for an
intelligent device-has an antenna 9, a display device 10, a
keyboard 11, a security module 12 and a contactless reading
device 13 for close-range communication with a transponder 2,
preferably in the form of an RFID reading device or an NFC
(near field communication) interface.
Spec. i-fi-f 15, 18, 26, and 39.
Notwithstanding Appellants' arguments above, we agree with the
Examiner that the claim limitations may be broadly but reasonably construed
as reciting conventional computer components and techniques, particularly
in light of Appellants' Specification, as quoted above. 10
Thus, with respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either a "method of using an electronic
intermediate carrier configured to perform cashless processing of a
10 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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transaction for paying for a service between an owner of a personal
electronic payment device and a payee" (claim 1 ), or a "system for cashless
processing of a transaction for paying for a service" (claim 17) 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.").
Our reviewing court has held, "the use of generic computer elements
like a microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter." Fair Warning IP v. Iatric
Sys. Inc., 839 F.3d 1089, 1096 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)).
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 1, and grouped claims 2, 5-
9, 11-14, 17-21, and 23-26, not argued separately, and which fall therewith.
See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1-7, 9-23, and 25-27
Issue 2
Appellants argue (App. Br. 11-14, 20-24) the Examiner's rejection of
claim 1under35 U.S.C. § 103(a) as being obvious over the combination of
Luzzatto, Tuttle, and Hoffman is in error. These contentions present us with
the following issues:
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(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests " [a] method of using an electronic intermediate carrier
configured to perform cashless processing of a transaction for paying for a
service between an owner of a personal electronic payment device and a
payee" wherein, inter alia, "the personal electronic payment device is
formed as a chip card, or as a security module of a mobile telephone", as
recited in claim 1?
(b) Did the Examiner err in rejecting claim 1 under§ 103 because the
cited Hoffman prior art reference allegedly teaches away from the suggested
combination with Luzzato and Tuttle?
Analysis
(a) All Limitations are Taught or Suggested
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants generally contend, "the combination of Luzzato, Tuttle,
and Hoffman fails to disclose or suggest each and every element of appealed
claims 1 and 17." App. Br. 11. Specifically, Appellants state "the Office
Action correctly admits that Luzzato fails to disclose or suggest 'the personal
electronic payment device is formed as a chip card, or as a security module
of a mobile telephone,' as required by claim l ", and further states "Tuttle is
relied on in the Office Action for its disclosure of an RFID tag included in a
postage stamp (Tuttle, Abstract). But Tuttle fails to remedy the above-noted
deficiencies of Luzzato", and "Hoffman is relied on in the Office Action as
describing a smart card." App. Br. 21 (citing Final Act. 5, 11. 12-20
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(emphasis omitted)). Appellants further allege, "Hoffman thus fails to
remedy the above-deficiencies of Luzzato and Tuttle, in that Hoffman's
smart card is NOT 'physically separate and independent from the owner's
personal electronic payment device.'"
Appellants' contention does not persuade us of error on the part of the
Examiner because the Appellants are responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We particularly disagree
with Appellants' argument because it does not completely or correctly state
the Examiner's position, which finds "Hoffman teaches the personal
electronic payment device is formed as a chip card, or as a security module
of a mobile telephone." Ans. 7 (citing Hoffman (col. 4, 11. 22--41 "handset");
and " [ n ]ote that Tuttle also teaches a physically separate and independent
electronic carrier (RFID chip)." Ans. 8 (citing Final Act. 5).
We note the Reply Brief is silent on the§ 103 Rejection R2, and the
Examiner's findings and legal conclusions related thereto.
(b) Hoffman does not "Teach Away"
Appellants contend:
By disclosing that the smart card 18 is maintained within the
handset 102 during the transaction, not only does Hoffman not
remedy the above-noted deficiencies of Luzzato and Tuttle, but
Hoffman teaches away from Appellant's claimed features.
Hoffmen [sic] expressly leads the person of ordinary skill away
from the electronic intermediate carrier being "physically
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separate and independent from the owner's personal electronic
payment device," as required by claim 1.
App. Br. 22-23. Appellants further argue:
Appellant's claimed payment method provides "the advantage
that the cashless payment can be prepared by the owner of a
personal electronic means of payment without using the payee's
infrastructure and without any need to make contact with the
payee." (Appellant's specification, para. [0010]). "The owner,"
according to Appellant's claimed method, "is thus not subject to
any restrictions with regard to the spatial availability of such an
infrastructure, or exposed to any waiting periods for utilizing
the infrastructure." (Appellant's specification, para. [001 OJ).
App. Br. 23. Appellants allege none of the cited prior art references, either
alone or in combination, "would yield these advantages" because "both
Luzzato and Hoffman require the use or contact with the payee's
'infrastructure' ... in the transaction." Id. We disagree with Appellants'
contention.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A
reference does not teach away if it merely expresses a general preference for
an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). We find one of ordinary skill in the art would have
understood Hoffman's use of a smart card maintained within the handset to
be an alternative to "the electronic intermediate carrier [being] physically
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separate and independent from the owner's personal electronic payment
device," i.e., a physically separated smart card, the selection of either
method amounting to an obvious matter of engineering design choice
depending on the application. In the absence of persuasive evidence to the
contrary, we fail to find that Hoffman teaches away from a physically
separately located smart card.
Moreover, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Nor have Appellants
provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2-7, 9-23, and 25-27 which fall therewith. See
Claim Grouping, supra.
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
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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.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1-7, 9-23, and 25-27 under 35 U.S.C.
§ 101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1-7, 9-23, and 25-27 under 35 U.S.C. § 103(a) over the cited
prior art combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-7, 9-23,
and 25-27.
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
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