Ex Parte Barber

Patent Trial and Appeal Board

Jul 6, 2018

13846879 (P.T.A.B. Jul. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/846,879 03/18/2013
758 7590 07110/2018
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
FIRST NAMED INVENTOR
Timothy P. Barber
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.
32859-23309/US 6716
EXAMINER
FELTEN, DANIELS
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
07/10/2018 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY P. BARBER
Appeal 2016-008031 1
Application 13/846,8792
Technology Center 3600
CYNTHIA L. MURPHY, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-9 and 11-19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed Jan. 6,
2016) and Reply Brief ("Reply Br.," filed Aug. 22, 2016), and the
Examiner's Answer ("Ans.," mailed July 1, 2016) and Final Office Action
("Final Act.," mailed Aug. 7, 2015).
2 Appellant identifies Kount Inc. as the real party in interest. App. Br. 2.
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Application 13/846,879
CLAIMED INVENTION
Appellant's claimed invention "relates generally to electronic mail
(e-mail) sent via a network, such as the Internet. More particularly, the
present invention relates to conveying via an e-mail a monetary value."
Spec. ,-r 2.
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for electronic money transfer, the method
compnsmg:
using a computer processor to perform steps comprising:
[(a)] receiving a request from a sender for an
electronic stamp, the electronic stamp comprising a
plurality of fields;
[ (b)] generating the electronic stamp associated
with the request based on the plurality of the fields of the
electronic stamp, the electronic stamp being represented
by a character string encoding the plurality of the fields of
the electronic stamp;
[ ( c)] transmitting the generated electronic stamp to
the sender electronically;
[ ( d)] receiving from a recipient a character string
representing the electronic stamp, the recipient not
identified in the electronic stamp;
[ ( e)] validating the electronic stamp received from
the recipient based on analysis of the plurality of fields of
the electronic stamp; and
[(t)] responsive to a determination that the
electronic stamp is valid, facilitating electronic money
transfer of an amount identified by a face value of the
electronic stamp to an account associated with the
recipient.
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REJECTIONS
Claims 1-9 and 11-19 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1-9 and 11-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuzma (US 5,771,289, iss. June 23, 1998), Sundsted
(US 5,999,967, iss. Dec. 7, 1999), and O'Mahony et al., Electronic Payment
Systems, Artech House, Inc., 146-47, 153-55 (1997) (hereinafter
"O'Mahony").
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1-9 and 11-19 as a group. See Reply Br. 6-
13. We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court identified a two-step framework for determining
whether claimed subject matter is judicially-excepted from patent eligibility
under 35 U.S.C. § 101. See Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.
Ct. 2347 (2014). Alice, 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. at 2355. 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 "'transform the nature of the
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claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79,
78).
In rejecting the claims under 35 U.S.C. § 101, the Examiner applied
this two-step framework. Applying step one of the framework, the
Examiner determined that claim 1 is directed to the abstract idea of
"transferring money." Ans. 6. In particular, the Examiner explained that the
steps of claim 1 (e.g., receiving, generating, transmitting, validating,
facilitating) "can be performed mentally," and do not meaningfully
distinguish from the information-based category of abstract ideas. See id. at
7 (citing Cyberfone Systems, LLC v. CNN Interactive Group, Inc. 558 Fed.
App'x 988 (Fed Cir. 2014); SmartGene, Inc. v. Advanced Biological Labs,
SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)). The Examiner also determined
that the concept of claim 1 is not meaningfully different than fundamental
economic concepts found by the courts to be abstract ideas. Id. In so doing,
the Examiner has clearly articulated the reasons as to why claim 1 is directed
to an abstract idea and has notified Appellant of the reasons for the rejection
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application." 3 5
U.S.C. § 132.
Turning to step two of the framework, the Examiner determined that
the claim does not include additional elements that are sufficient to amount
to significantly more than the judicial exception itself because "the
additional computer elements, which are recited at a high level of generality,
provide conventional computer functions that do not add meaningful limits
to practicing the abstract idea." Ans. 6; see also id. at 7-8.
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At step one, we "look at the 'focus of the claimed advance over the
prior art to determine if the claims character as a whole is directed to
excluded subject matter."' Affinity Labs of Texas v. DirectTV, LLC, 838
F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Here, the Background of the
Specification describes that advertisers today can take advantage of e-mail to
send advertisements. Spec. i-f 3. Because advertisers pay "essentially
nothing" to send e-mail, many have "used e-mail to send messages or
advertising with little regard for the likelihood that the recipient of the
e-mail would be interested in the e-mail message." Id. As a result of such
indiscriminate and unsolicited email (i.e., spam or junk e-mail), "many
people decline to open and read unsolicited e-mail, in recognition of the
simple fact that the sender did not ... weigh the cost of sending the email
[against] the likelihood that the e-mail would be somehow worthwhile." Id.;
see also id. i-f 9. Appellant's Specification describes a need in the prior art to
persuade an e-mail recipient to open and read an e-mail from an advertiser.
Id. i-f 4. Appellant's claimed invention solves this problem by attaching a
digital stamp to an e-mail that can be redeemed by the recipient for the
stamp's indicated value. Id. i-f 9. The inventor anticipates that the present
invention will discourage spam, because, over time, promulgaters of spam
will understand that "many consumers will [] decline to open an e-mail
unless it is stamped according to the present invention." Id.
Appellant's Specification further describes that a preferred
embodiment encodes the e-mail addresses of a sender and recipient as part
of the digital stamp, serving as an identifier tied to the e-mail. Id. i-f 40.
However, in an alternative embodiment, the sender could opt to notspecify
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the recipient in advance, making the stamp a "wildcard stamp" that can be
cashed in by the first redeemer. Id. i-f 41. The wildcard stamp system
"would[,] of course[,] be less secure than the preferred embodiment, but
would likely be secure enough in cases where stamps have smaller values,
such as less than $0.05 USD." Id.
Claim 1 recites a method for "electronic money transfer" comprising
steps for: receiving a request from a sender; generating the electronic stamp
associated with the request; transmitting the generated electronic stamp to
the sender; receiving from a recipient a character string representing the
electronic stamp, the recipient not identified in the electronic stamp;
validating the electronic stamp; and responsive to a determination athat the
stamp is valid, facilitating electronic money transfer to an account associated
with the recipient. The Specification does not provide details on how,
technologically, the steps of claim 1 are performed. See, e.g., Spec. i-fi-1 16
(describing the stamp as "a character string according to one or another
algorithm"), 18, 19, 33, 37, and 41; see also App. Br. 2 (citing Spec. i-fi-116,
18, 19, 3 3, 3 7, and 41 as describing the subject matter of claim 1). Thus,
when considered in light of the Specification, the focus of claim 1 is on
achieving a business objective (i.e., encouraging recipients to open and read
e-mail), and not on any claimed means for achieving that goal that improves
technology. Claim 1 's purported inventive advance over the prior art is
facilitating a money transfer to a recipient of an e-mail by use of an
electronic stamp. As such, the Examiner's determination that the claim 1 is
directed to transferring money is supported by the Specification.
Appellant challenges the Examiner's determination that the claim 1 's
concept of "transferring money" is an abstract idea. See Reply Br. 6-10.
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Specifically, Appellant asserts that the court cases cited by the Examiner are
not applicable to claim 1. Id. at 7. With respect to SmartGene, Appellant
asserts that the Examiner "completely ignores the underlying rationale of the
court: that the decision making involved [in SmartGene] is specifically
mental and medical in nature." Id. at 9. With respect to Cyberfone,
Appellant argues that "the present claims are completely dissimilar as
evidenced by the fact that the claimed invention is categorized in the
'insurance, banking and finance' unit 3692 while the Cyberfone patent was
classified under the 'telegraphy' unit 2618." Id. at 9-10.
The flaw in the Appellant's arguments is that transferring money is a
longstanding economic practice, as noted by the Examiner. See Ans. 7.
Further, the problem to which claim 1 is directed (i.e., encouraging
recipients to open and read mailed advertisements) existed long before the
advent of, and still exists outside of, electronic mail. Appellant cannot
reasonably deny that encouraging (unidentified) recipients of a mass mailing
to open and read the mail by indicating there is a value associated with the
mailing, such as a "free gift inside," coupon, voucher, or other offer, has
been a longstanding economic practice.
In addition, Appellant does not persuade us that the concept of
transferring money by performing steps (a}-(f), as recited in claim 1, is more
than a method that can be performed by human thought alone, or by a human
using pen and paper. See, e.g., Cybersource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370-73 (Fed Cir. 201) ("[a] method for verifying the
validity of a credit card transaction over the Internet" is directed to a mental
process, i.e., an abstract idea); Electric Power Grp., LLC v. Alstom, 830 F.3d
1350, 1353 (Fed. Cir. 2016) ("we have treated analyzing information by
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steps people go through in their minds ... without more, as essentially
mental processes within the abstract-idea category"); Secured Mail Sols.
LLC v. Universal Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017) ("the
claims embrace the abstract idea of using a marking affixed to the outside of
a mail object to communicate information about the mail object");
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2015) ("at their core, [the claims are] directed to the abstract idea
of collecting, displaying, and manipulating data"). Mental processes remain
unpatentable even when performed by a computer. CyberSource, 654 F.3d
at 1375 ("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, [ 409 U.S. 63 (1972)].").
Turning to step two, Appellant argues that "claim 1 recites steps that
are not routine, or conventional in the field, and provide a specific 'inventive
concept' that is not found in the prior art." Reply Br. 10. A finding of
novelty or non-obviousness, however, does not automatically lead to the
conclusion that the claimed subject matter is patent-eligible. A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
Appellant argues that the step of generating and using an electronic
stamp for "facilitating electronic money transfer" amounts to significantly
more than the abstract idea. Reply Br. 11-12. Yet, the electronic stamp of
claim 1 is "based on the plurality of the fields" requested from a sender, and
is represented by a character string encoding the plurality of fields. Claim 1
does not so much as identify what pieces of data are combined in the
plurality of the fields, much less any new or inventive form for an electronic
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stamp. See Spec. i-f 16 (the stamp "appears in an email as simply a
concatenation of several fields separated by a delimiter"). Much like the
situation in Secured Mail, claim 1 does not provide any specific showing of
what is inventive about the electronic stamp or about the technology used to
generate and process it. See Secured Mail, 873 F.3d at 912. For example,
there is no description in the Specification providing specific details for
generating the electronic stamp, encoding the plurality of fields, or
describing how the plurality of fields comprises more than conventional
information required to effect a funds transfer. No special rules or details of
the computer processor are recited. Instead, claim 1 embraces the abstract
idea of using an electronic stamp to communicate information via email to
facilitate a funds transfer. See Secured Mail Solutions, 873 F.3d at 912 ("the
sender-generated identifier is not a sufficiently inventive concept"); see also
id. ("affixing information to mail is routine to persons that have mailed a
letter").
Appellant also argues that the claim limitation for not specifying the
recipient in the electronic stamp, in combination with the use of an
electronic stamp, amounts to significantly more than the abstract idea (see
Reply Br. 11-12 (citing Spec. i-f 41)), but we disagree. As an initial matter,
Appellants' argument is not persuasive at least because the feature that
Appellant identifies as "significantly more" is merely part of the abstract
idea, i.e., transferring funds, itself. Moreover, Appellant does not identify,
and we do not find, anything in the Specification ascribing any particular
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technical improvement or significant innovation in "not specifying the
recipient. " 3
Appellant analogizes claim 1 to DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), because it addresses a problem
specifically arising in the realm of computer networks. Reply Br. 12. Yet,
the problem Appellant describes, i.e., persuading a recipient to open and
read an advertisement (see Spec. i-f 4), is not a problem specifically arising
the realm of computer networks. Instead, it is a business challenge facing
advertisers that is not peculiar to computer networks.
Further, the claims at issue in DDR Holdings modified the routine,
conventional functioning of Internet hyperlink protocol to direct a user of a
host website to a "store within a store" on the host website, rather than to an
advertiser's third-party website, when the user clicks an advertisement.
DDR Holdings, 773 F.3d at 1257-58. Here, there is no indication here that a
computer network is used other than in its normal, expected, and routine
manner. Instead, claim 1 recites conventional ways to communicate
information using generic computer technology.
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101. Therefore, we sustain the Examiner's rejection of
claim 1, and claims 2-9 and 11-19, which fall with claim 1.
3 Further to the discussion above, Appellant also could not deny that in
previously known mass mailings, the coupons, vouchers, or other offers sent
were often transferrable.
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Obviousness
Independent Claim 1 and Dependent Claims 2-9
We are persuaded by Appellant's argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because Kuzma and Sundsted do
not disclose or suggest limitation (d), as recited in claim 1. App. Br. 4--7;
see also Reply Br. 2-5. The Examiner cites Kuzma for disclosing
"receiving from a recipient a character string representing the electronic
stamp," as recited in limitation ( d). Final Act. 6 (citing Kuzma Figs. 4A-D,
5:48-56). However, the Examiner acknowledges that Kuzma fails to
disclose that "the recipient is not identified in the electronic stamp," as
recited in limitation ( d), and relies on Sundsted as suggesting this aspect of
the claim language. Id. at 7 (citing Sundsted, 9:29-10:19, Figs. 4--5).
Figures 4 and 5 of Sundsted show an electronic embodiment
according to two embodiments. The Examiner finds that Figure 5 of
Sundsted suggests an alternative embodiment in which the recipient is not
identified in the electronic stamp. Ans. 12. The Examiner reasons that
token field 48 of Sundsted's Figure 5 replaces serial field 40 of Sunsted's
Figure 4, and results in an electronic token being placed in the token field of
the electronic stamp. Id. Yet, we agree with Appellant that Sundsted's
disclosure of placing an electronic token in a token field of the electronic
stamp fails to teach or suggest that the recipient is not identified in the
electronic stamp. See App. Br. 5-6.
Instead, Sundsted describes that the electronic stamp embodiment
shown in Figure 5 differs from the electronic stamp embodiment shown in
Figure 4 in only one way: the serial number field 40 is replaced with a token
field 48. Sundsted 9:62---64. The electronic stamp of Figures 4 and 5 each
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has a field for holding an address of the receiver of the electronic mail, i.e.,
receiver address field 44. Id. at 7:15-16, Figs. 4--5. As such, receiver
address field 44 of the electronic stamp identifies the receiver, and fails to
teach that the recipient is not identified in the electronic stamp, as required
by limitation ( d).
To elaborate further, Sundsted describes using the address contained
in receiver address field 44 in an authentication process. Specifically,
Sundsted describes that the receiver address field serves to bind the
electronic stamp to a piece of electronic mail so that a malicious party
cannot intercept the electronic mail, remove the electronic stamp, and place
it on another email. Id. at 7:19-23. During processing at the receiver side
(i.e., step (t)), an analysis module reads the address of the receiver from
receiver address field 44 of the electronic stamp, and compares its value with
the appropriate part of the electronic mail. Id. at 8: 8-12. A failed
comparison indicates that the electronic mail has been corrupted or the
stamp is no longer attached to the original piece of mail. Id. at 8:13-16.
Stated differently, receiver address field 44 identifies the receiver's address,
and this information is compared against the receiver address identified in
the electronic mail.
Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a) of
independent claim 1 and dependent claims 2-9.
Independent Claim 11 and Dependent Claims 12-19
Independent claim 11 recites language substantially similar to claim 1,
and is rejected based on the same erroneous findings. See Final Act. 5-7.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
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§ 103(a) of claim 11, and dependent claims 12-19 for the same reasons
described above with respect to independent claim 1.
DECISION
The Examiner's rejection of claims 1-9 and 11-19 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 1-9 and 11-19 under 35 U.S.C.
§ 103(a) is reversed.
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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