Ex Parte Beiser et al

Patent Trials and Appeals Board

Apr 19, 2019

14519295 - (D) (P.T.A.B. Apr. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/519,295 10/21/2014
28395 7590 04/23/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Joseph Carl Beiser
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.
83476604 7219
EXAMINER
IMMANUEL, ISIDORA I
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/23/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH CARL BEISER and MICHAEL RAYMOND WESTRA
Appeal 2018-001338
Application 14/519,295
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME,
JULIET MITCHELL DIRBA, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Ford Global Technologies,
LLC. Appeal Br. 1.
Appeal 2018-001338
Application 14/519,295
BACKGROUND2
The claims are directed to validating a purchase using communication
between a vehicle computing system (VCS) and a wireless device. Spec.
,r,r 6, 22, 34, 35, 41. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-implemented method, executed by a vehicle
computing system (VCS) comprising:
[(1)] receiving an approval request at a VCS from a
paired wireless device;
[ (2)] receiving device-identifying information from the
wireless device;
[(3)] validating the wireless device as permitted to
receive payment information, responsive to the approval
request, based on the device-identifying information; and
[ ( 4)] responsive to wireless-device validation,
transmitting payment-related information to the wireless
device, usable to pay for a transaction completed using
the wireless device.
Claims App 'x 1 (limitation numbering added).
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. Final Act. 5-8.
Claims 1-20 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement. Id. at 9-10.
2 Throughout this Decision we have considered the Specification filed
October 21, 2014 ("Spec."), the Final Rejection mailed January 27, 2017
("Final Act."), the Appeal Brief filed May 16, 2017 ("Appeal Br."), the
Examiner's Answer mailed September 19, 2017 ("Ans."), and the Reply
Brief filed November 20, 2017 ("Reply Br.").
2
Appeal 2018-001338
Application 14/519,295
Claims 1-20 are rejected under 35 U.S.C. § 112(b), as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor or a joint inventor, or for pre-AIA the applicant regards
as the invention. Final Act. 10-11.
Claims 1-3, 5-10, 12-17, 19, and 20 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over US 2012/0144202 Al,
published June 7, 2012 ("Counterman") in view of US 2009/0024525 Al,
published January 22, 2009 ("Blumer"). Final Act. 11-13.
Claims 4, 11, and 18 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Counterman in view of Blumer and US
2009/0048953 Al, published February 19, 2009 ("Hazel"). Final Act. 13.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 1-20 under 35 US.C. § 112(a)
The Examiner rejects claims 1-20 as failing to comply with the
written description requirement. Final Act. 9. According to the Examiner,
the Specification does not provide support for "'receiving a validation
3
Appeal 2018-001338
Application 14/519,295
request at a vehicle system (VCS) from a wireless device paired to the VCS
... responsive to wireless device validation, transmitting payment-related
information to the wireless device, usable to pay."' Id. None of the claims
on appeal, however, recite this language. Instead of "receiving a validation
request," each of the independent claims recites "receiving an approval
request." The Examiner appears to agree that this claim language was
amended during prosecution. Ans. 15 ("Appellant has amended the
language of claim one to recite 'approval request' to coincide with the
language of the specification."). 3
Because this rejection does not apply to the current claim
language, we reverse the Examiner's rejection of claims 1-20 under
§ 112(a).
Rejection of Claims 1-20 under 35 US.C. § 112(b)
The Examiner rejects claims 1-20 as being indefinite. Final Act. 10-
11. According to the Examiner, the claims do not state the entity that
receives device-identifying information (as recited by limitation (2)),
validates the wireless-device (as recited by limitation (3)), or transmits
payment-related information (as recited by limitation (4)). Id. at 11.
According to the Examiner, the claims "give no direction to what entity is
performing the claimed limitations." Id. Thus, the Examiner concludes that
"[a]s written, these claim limitations are unclear and indefinite." Id.
Appellants respond that the claims are sufficiently clear. First,
3 Moreover, the Examiner appears to agree that the current claim language is
supported by the Specification. Id. ("Though not provided in the 'approval
request' embodiment, this embodiment [described in Spec ,r 46] does
provide support for an example where the VCS (non-communicating
system) provides verification and relays account information.").
4
Appeal 2018-001338
Application 14/519,295
Appellants argue claim 1 's preamble makes clear that all method steps are
"executed by a vehicle computing system." Second, Appellants argue
claim 8 states that a processor is configured to perform all the recited steps
and because the first step is explicitly done by the vehicle computing system
(VCS), the processor must be part of that VCS and, therefore, all steps of
claim 8 are performed by the VCS. Third, Appellants argue claim 15 recites
"'a computer readable storage medium, storing instructions,"' that are
executed by a single processor, which is required to be in a VCS. Appeal
Br. 8.
The Examiner appears to agree with Appellants with respect to
claim 1. Ans. 15 ( stating, with respect to claim 1, only that "Appellant[ s]
ha[ ve] amended claim 1 to recite 'executed by a vehicle computing
system(VCS). "').
The Examiner, however, does not agree with Appellants' arguments
relating to claims 8 and 15. As for claim 8, the Examiner states "[w]hen a
processor is said to 'receive an approval request at a vehicle computing
system (VCS) from a wireless device,' the claim is directed to a system that
comprises the processor and there is no recitation that the processor is within
this vehicle computing system." Id. at 15. As for claim 15, the Examiner
states that "there are multiple entities and for this case, multiple processors
for those systems and devices" and notes that "[t]he rejection was directed to
identify 'whatever processor' happens to be executing the instructions,
otherwise, the claims remain unclear." Id. at 16.
We agree with Appellants that the claims inform those skilled in the
art, with reasonable certainty, that a processor located in the VCS performs
each of limitations 1--4, including receiving device-identifying information
5
Appeal 2018-001338
Application 14/519,295
(as recited by limitation (2)), validating the wireless-device (as recited by
limitation (3)), and transmitting payment-related information (as recited by
limitation (4)). See In re Maatita, 900 F.3d 1369, 1376 (Fed. Cir. 2018)
(citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)).
We, therefore, reverse the Examiner's rejection of claims 1-20
under § 112(b ).
Rejection of Claims 1-3, 5-10, 12-17, 19, and 20 under 35 US.C. § 103
The Examiner rejects claims 1-3, 5-10, 12-17, 19, and 20 under
35 U.S.C. § 103 as obvious over a combination of Counterman and Blumer.
Final Act. 11-13. For purposes of this rejection, Appellants argue claims 1-
3, 5-10, 12-17, 19, and 20 together as a group. See App. Br. 8-11; Reply
Br. 3--4. Therefore, consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv), we limit our discussion to independent claim 1.
Independent claims 8 and 15 and dependent claims 2-7, 9-14, and 16-20
stand or fall with independent claim 1.
The Examiner relies on Counterman for teaching limitations ( 1) and
(3) and portions of limitations (2) and (4). For limitation (2), the Examiner
points to Counterman for teaching "validating the wireless-device as
permitted to receive access information," but relies on Blumer as teaching
the claimed payment information. Final Act. 12 (emphasis added) (citing
Counterman, Abstract, ,r,r 10, 39, 45, claim 11; Blumer ,r,r 80, 85-90). For
limitation ( 4 ), the Examiner relies on Counterman for teaching "transmitting
access-related information to the wireless device," but relies on Blumer as
teaching the claimed payment-related information. Id. ( emphasis added)
(citing Counterman, Abstract, ,r,r 10, 50, 51, claims 10, 14, 20; Blumer ,r,r 80,
85-90).
6
Appeal 2018-001338
Application 14/519,295
Appellants argue that the combination of Counterman and Blumer
does not teach the claimed subject matter. Appeal Br. 8-11. According to
Appellants, Counterman discusses validating a communication
establishment request, which is similar to a pairing process, but not
equivalent to the claimed process of validating a device as permitted to
receive specified data. Id. at 9. Appellants argue that "there is no
transmission of the data request in Counterman until after the device
credentials have been utilized." Id. (citing Counterman, Fig. 9). Instead,
according to Appellants, Counterman requests the data itself once the access
validation process has succeeded. Id.
We are not persuaded by Appellants' arguments. Counterman
describes a process that authorizes a device to access a protected resource,
such as a database-a wireless device requests access to data using a device
identifier, and an authorization server provides an access token to the
wireless device to enable that access. Counterman, Abstract, ,r 10.
Similarly, the cited portions of Blumer describe using a vehicle wallet
system from which to authorize purchases-a wireless device requests
payment authorization, and a vehicle telematics unit ("VTU") provides
authorization to the wireless device to enable that payment. Blumer ,r,r 59,
80, 85-87. We see no error in the Examiner's finding that it would have
been obvious to use the process described in Counterman to validate a
wireless device as permitted to receive payment information instead of
access to a protected resource. In other words, we agree with the Examiner
that Blumer' s disclosure of requesting authorization for payment is easily
substituted for Counterman's request for authorization to access a protected
resource. We also agree that Counterman's valid access token-which is
7
Appeal 2018-001338
Application 14/519,295
essentially authorization to request data----can be easily replaced with
Blumer' s disclosure of authorization to make a payment.
We do not agree with Appellants' argument that the combination of
Counterman and Blumer does not teach the claimed subject matter because
"[ v ]alidating a device to receive any communication is not the same as
validating a device as permitted to receive specified data. " 4 Appeal Br. 9, 10
(some emphasis removed). Specifically, we do not agree with Appellants'
characterization of Counterman as validating a device to receive any
communication. Instead, we read the relied upon portions of Counterman as
teaching validating a device to receive an access token for later use with a
protected resource. See Counterman ,r 10. Similarly, we understand the
Examiner's combination of Counterman and Blumer as validating a device
to receive authorization (payment information) for later use as payment for a
transaction. Blumer ,r,r 59, 80, 85-90.
We also do not agree with Appellants that, unlike the claimed subject
matter, the Examiner's combination requires "a login, PIN or password to
validate a user using the device as permitted to receive the payment
information." Appeal Br. 10. Nor do we agree with the similar argument
that instead of replacing Counterman's access information, Blumer's
payment information is better suited to replace Counterman's protected
resource, which is dependent on user-identifying information instead of
device-identifying information. These arguments are not persuasive of error
4 We do not agree with the Examiner's conclusion that limitation (3) "does
not have patentable weight" because it "recites an intended use of the
structure of a wireless device." See Ans. 21. This issue, however, does not
affect our conclusion because we do not find error in the Examiner's finding
that the combination of Counterman and Blumer disclose limitation (3).
8
Appeal 2018-001338
Application 14/519,295
because the claim language does not preclude validation that looks to client-
identifying information in addition to device-identifying information.
Instead, the claim recites validating "based on the device-identifying
information," but does not restrict that validation be based solely on the
device-identifying information.
We are, therefore, not persuaded of error in the Examiner's finding
that claims 1-3, 5-10, 12-17, 19, and 20 would have been obvious over the
combined disclosures of Counterman and Blumer.
Rejection of Claims 4, 11, and 18 under 35 USC§ 103
The Examiner rejects claims 4, 11, and 18 under 35 U.S.C. § 103 as
obvious over a combination of Counterman, Blumer, and Hazel. Final
Act. 13. Appellants rely on the same arguments discussed above with
respect to claim 1. Appeal Br. 11. For the same reasons we are not
persuaded of error in the Examiner's finding that claims 4, 11, and 18 would
have been obvious over the combined disclosures of Counterman, Blumer,
and Hazel.
Rejection of Claims 1-20 under 35 USC§ 101
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"'Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,216 (2014)
(quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
9
Appeal 2018-001338
Application 14/519,295
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is "directed to one
of those patent-ineligible concepts." Alice, 573 U.S. at 217. If so, we then
examine "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." Alice, 573 U.S.
at 217 ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an "inventive
concept," "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, 573 U.S. at 217-18 (alteration
in original) (quoting Mayo, 566 U.S. at 72-73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised
Guidance, to decide whether a claim is "directed to" an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is "directed to" an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add "a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field" or "simply append[]
10
Appeal 2018-001338
Application 14/519,295
well-understood, routine, conventional activities previously known to the
industry." Revised Guidance, 84 Fed. Reg. at 56.
For purposes of the§ 101 rejection, Appellants argue claims 1-20
together as a group. See App. Br. 5---6; Reply Br. 2-3. Therefore, consistent
with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv), we limit our discussion to
independent claim 1. Independent claims 8 and 15 and dependent claims 2-
7, 9-14, and 16-20 stand or fall with independent claim 1.
With these principles in mind, we tum to the Examiner's§ 101
rejection.
The Judicial Exception-Abstract Idea
The Examiner determined the claims are directed "towards a
fundamental economic practice, in this case, receiving a request to verify
information, comparing information, [and] send[ing] payment information
when there is a match." Final Act. 6. For the reasons explained below, we
agree that the claims recite an abstract idea.
Limitations ( 1 }-( 4) of claim 1, quoted above, under their broadest
reasonable interpretation, recite a method for validating a payment request.
In particular, limitations (1) and (2) recite receiving an approval request for
payment, including device-identifying information. Limitation (3) recites
validating the request based on the device-identifying information. And
limitation (4) recites transmitting payment-related information usable to pay
for a transaction. Similar methods have been found to be fundamental
economic practices. Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378-79 (Fed. Cir. 2017) (holding that concept of "'local
processing of payments for remotely purchased goods"' is a "fundamental
economic practice, which Alice made clear is, without more, outside the
11
Appeal 2018-001338
Application 14/519,295
patent system"); Smariflash LLC v. Apple Inc., 680 Fed. App'x 977, 982
(Fed. Cir. 2017) (stating that claims reciting payment validation "invoke
computers merely as tools to execute fundamental economic practices"
(citing Alice, 573 U.S. at 219--20; Bilski v. Kappas, 561 U.S. 593,611
(2010))).
Appellants argue that the claimed subject matter is "completely the
opposite of a 'fundamental' practice, as far as Applicant knows it is not even
an uncommon practice or practiced at all." Appeal Br. 5. Appellants base
this assertion on the claims' recitation of a VCS. Id. ("[T]he answer to the
question 'how do I pay for a transaction using a mobile device' is not -
'well, you verify the device as being permitted to receive payment
information, based on a device identity, and then you transfer payment
information from a vehicle to the device so the information can be used to
pay for the purchase."'). However, Appellants do not argue that validating a
payment request is not a method of organizing human activity. And the
claims clearly incorporate validating a payment request, which the Federal
Circuit found to be directed to "tools to execute fundamental economic
practices." Smariflash, 680 Fed. App'x at 982. Alternatively, validating a
payment request could be categorized as a "commercial interaction." See,
e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(holding unpatentable claims "squarely about creating a contractual
relationship----a 'transaction performance guaranty'-that is beyond question
of ancient lineage"). Whether the use of the VCS to do the validating
removes the claims from the realm of abstract idea is evaluated in the next
step----whether elements claimed in addition to the abstract idea integrate the
exception into a practical application. Here, we simply determine whether
12
Appeal 2018-001338
Application 14/519,295
claims incorporate subject matter falling within an abstract idea grouping
listed in the Revised Guidance. We conclude that they do.
Accordingly, we conclude the claims recite a certain method of
organizing human activity identified in the Revised Guidance ( either a
fundamental economic activity or a commercial interaction), and thus, an
abstract idea. 5 Revised Guidance, 84 Fed. Reg. at 52, 53 (listing"[ c ]ertain
methods of organizing human activity-fundamental economic principles or
practices ... commercial or legal interactions" as one of the "enumerated
groupings of abstract ideas").
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception( s ); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
5 Our reviewing court recognizes that "[ a ]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "[a]n abstract
idea can generally be described at different levels of abstraction .... The
Board's slight revision of its abstract idea analysis does not impact the
patentability analysis." Id. Moreover, 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).
13
Appeal 2018-001338
Application 14/519,295
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of "a vehicle computing
system" and a "wireless device." Claims App'x 1. Considering claim 1 as a
whole, the additional elements do not apply or use the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. The Supreme Court guides that the
"prohibition against patenting abstract ideas 'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or [by] adding 'insignificant postsolution activity."' Bilski,
561 U.S. at 610-11 (quoting Diamond v. Diehr, 450 U.S. 175, 191-92
(1981)).
The Specification describes each of these elements as generic
components. For example, the Specification states that "[a]n example of ...
a vehicle-based computing system 1 is the SYNC system manufactured by
THE FORD MOTOR COMP ANY," which may be controlled by "a
processor" that "allows onboard processing of commands and routines" and
"is connected to both non-persistent 5 and persistent storage 7 ." Spec.
,r,r 16-1 7; see also id. ,r,r 18-19 ( describing other possible components of the
VCS). And the Specification describes the wireless device as "e.g., cell
phone, smart phone, PDA, or any other device having wireless remote
network connectivity." Id. ,r 20.
Simply programming a general-purpose computer to perform abstract
ideas does not integrate those ideas into a practical application. See Revised
Guidance, 84 Fed. Reg. at 55 (identifying "merely includ[ing] instructions to
implement an abstract idea on a computer" as an example of when an
14
Appeal 2018-001338
Application 14/519,295
abstract idea has not been integrated into a practical application). Moreover,
the fact that the generic computer components are housed in a generic
vehicle6 does not impose meaningful limits on practicing the abstract idea.
See Smariflash, 680 Fed. App'x at 982 (holding ineligible payment
validation claims "relate[ d] to portable data carrier[ s] for storing and paying
for data").
Appellants' arguments have not persuaded us claim 1 is "directed to"
a patent-eligible concept. For example, Appellants argue that "[u]sing a
vehicle to verify that a mobile device is eligible to receive payment
information, and then sending the payment information from the vehicle to
the eligible mobile device is clearly and plainly a non-conventional approach
to the problem of obtaining and presenting payment information." Appeal
Br. 6. However, "[t]he '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 the § 101 categories of possibly
patentable subject matter." Intellectual Ventures I LLC v. Symantec Corp.,
83 8 F.3 d 13 07, 1315 (Fed. Cir. 2016) ( emphasis omitted) ( quoting Diehr,
450 U.S. at 188-89).
Accordingly, even in combination with all the other recited elements,
the addition of a VCS does not integrate the abstract idea into a practical
application because it does not impose any meaningful limits on practicing
the abstract idea. For these reasons, we determine that claim 1 does not
integrate the recited abstract idea into a practical application.
6 The Specification does not explicitly define the term "vehicle." See Spec.
15
Appeal 2018-001338
Application 14/519,295
Inventive Concept
Because we agree with the Examiner that claim 35 is "directed to" an
abstract idea, we consider whether an additional element ( or combination of
elements) adds a limitation that is not well-understood, routine, conventional
("WURC") activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner's finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum 7).
Whether the additional elements ("a vehicle computing system" and a
"wireless device") are WURC activity is a question of fact. See Berkheimer
v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is
well-understood, routine, and conventional to a skilled artisan ... is a factual
determination.").
We note the Examiner's Final Action (January 27, 2017) was mailed
before Berkheimer was decided on February 8, 2018. The Answer was
mailed on September 19, 2017, and the Reply Brief was filed November 20,
2017. In reviewing the record, we recognize that Appellants have not had
the opportunity to argue Berkheimer. Thus, Berkheimer and the Berkheimer
Memorandum are intervening authorities. However, on the record before us,
Appellants have not shown that the claims on appeal add a specific
7 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter "Berkheimer Memorandum").
16
Appeal 2018-001338
Application 14/519,295
limitation beyond the judicial exception that is not "well-understood,
routine, and conventional" in the field (see MPEP § 2106.05(d)). Other than
asserting that the entirety of the claimed subject matter is unconventional,
Appellants do not point to any particular claimed element that does not
qualify as WURC. Appeal Br. 6 ("Using a vehicle to verify that a mobile
device is eligible to receive payment information, and then sending the
payment information from the vehicle to the eligible mobile device is clearly
and plainly a non-conventional approach to the problem of obtaining and
presenting payment information.").
In fact, Appellants' Specification demonstrates the WURC nature of
the processing and memory devices because it indicates they may be
implemented with generic devices. Spec. ,r,r 3--4, 16-30. In addition, courts
have recognized that receiving or transmitting data over a network, in a
manner similar to that recited in the claims, is WURC. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (sending messages
over a network); buySAFE, 765 F.3d at 1355 (computer receives and sends
information over a network).
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept.
Conclusion
Therefore, we sustain the Examiner's§ 101 rejection of independent
claim 1. We also sustain the Examiner's§ 101 rejection of claims 2-20, for
which Appellants rely on the same arguments made with respect to claim 1.
Appeal Br. 5---6; Reply Br. 2-3.
17
Appeal 2018-001338
Application 14/519,295
CONCLUSION
We conclude Appellants have demonstrated the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 112(a).
We conclude Appellants have demonstrated the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 112(b).
We conclude Appellants have not demonstrated the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 103(a).
We conclude Appellants have not demonstrated the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 101.
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's rejection of claims 1-20.
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
18