Ex Parte Bernheim

Patent Trial and Appeal Board

Oct 31, 2018

13650677 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/650,677 10/12/2012
86378 7590 11/02/2018
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Patrick Bernheim
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.
BOVl-50268 7185
EXAMINER
BUCHANAN, CHRISTOPHER R
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK BERNHEIM
Appeal2017-009040
Application 13/650,677
Technology Center 3600
Before ELENI MANTIS MERCADER, JOHN D. HAMANN, and
JOYCE CRAIG, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is NagraID S.A. App. Br. 2.
Appeal2017-009040
Application 13/650,677
CLAIMED SUBJECT MATTER
The claims are directed to certification of origin of a consumer good
wherein a point of entry terminal is configured to extract or capture an
identification number that is subsequently verified via a bank network.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A system of certification of origin of a product, the system
comprising a bank payment network, a point of entry terminal,
an element of the bank payment network and a verification
element, wherein
the element of the bank payment network is configured to
issue an authentication medium to be sent to the point of entry
terminal, the authentication medium containing an identification
number, the format of which is compatible with that accepted by
the bank payment network;
the point of entry terminal is configured to extract or
capture the identification number from the authentication
medium at the time of a request for certification of origin of a
product, and to transmit the request for certification of origin
with the identification number to the bank payment network;
the verification element is configured to keep in a memory
the identification number issued by the element of the bank
payment network or a reference to this identification number, to
receive the identification number or a reference to this
identification number linked to the request for certification of
origin, and to verify the origin of the product the certification of
origin of which has been requested by verifying whether the
identification number or the reference to this identification
number received, which is linked to the request for certification
of origin, is located in the memory.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tycksen
Veseli
us 5,898,777
US 8,818,874 B2
2
Apr. 27, 1999
Aug.26,2014
Appeal2017-009040
Application 13/650,677
REJECTIONS
Claims 1-18 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter in that the claims are directed to an abstract
idea and do not amount to significantly more.
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Veseli in view of Tycksen.
OPINION
We adopt the Examiner's findings in the Answer and Final Action and
we add the following primarily for emphasis. We note that if Appellant fails
to present arguments on a particular rejection, we will not unilaterally
review those uncontested aspects of the rejection. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d
1307, 1313-14 (Fed. Cir. 2008) (The Board may treat arguments Appellant
failed to make for a given ground of rejection as waived).
Claims 1-18 rejected under 35 U.S. C. § 1 OJ
Appellant argues that the Examiner's characterization of the claimed
subject matter as product origin certification, which is a fundamental
economic practice, is an undue generalization. App. Br. 7-8. In particular
Appellant argues that the Federal Circuit held that "describing the claims at
such a high level of abstraction and untethered from the language of the
claims all but ensures that the exceptions to§ 101 swallow the rule." App.
Br. 8, citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir.
2016). Appellant further cites to McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016), in which the Federal Circuit
again admonished "oversimplifying the claims by looking at them generally
and failing to account for the specific requirements of the claims." Id. at
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Application 13/650,677
1313. In particular, Appellant argues that the Examiner's characterization of
the claims is at such a high level of abstraction, it ignores each of the
following specific structural and stepwise features that render the claim
more than the mere certification of the origin of a product:
- issuing an authentication medium
- the authentication medium having an identification number
compatible with that accepted by bank payment networks
- extracting or capturing the identification number from the
authentication medium at a point of entry terminal
- extracting or capturing the ID number at the time of a
request for certification of origin of a product
- transmitting the certification request with the ID number
over the bank payment network
- storing the ID number ( or a reference to it) in memory
verifying the origin of the product by verifying whether the
transmitted ID number ( or the reference to it) is stored.
App. Br. 8.
Appellant argues that when considering each of these elements the
claims are directed to the organization of a system of tangible elements ( e.g.,
authentication medium, point of entry terminal, bank payment network, and
memory) and their interrelated operations ( extraction, transmission, storage,
and processing of particular types of data). App. Br. 9, citing to non-
Precedential Board Decision Ex parte Wegman 111, Appeal No. 2013-
008168 (PTAB 2015), 6.
Appellant further argues that the claims amount to "significantly
more" because the Board has found patent eligible claims directed to
distributing coupons at a point of sale by a retailer for the purpose of
enhancing revenue. App. Br. 10, citing to non-Precedential Decision of Ex
parte Barous, Appeal No. 2016-003320 (PTAB 2016). In Barous, the
PT AB held that the claims comprised "significantly more" because the
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Application 13/650,677
claims "'are not directed to the 'abstract idea' as defined by the Examiner,
which is quite broad, but to much more limited systems and methods."'
App. Br. 10-11, citing Barous at 8. The claims included an unconventional
use of a point of sale register, tied the limitations to a particular machine,
and stated how the machine was configured. App. Br. 11, citing Barous at 7
and also see App. Br. 11-12.
Appellant further cites Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC wherein the Court held that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." App. Br. 13, citing Bascom, 827 F.3d 1341, 1350
(Fed. Cir. 2016). Appellant argues that similarly, in Bascom, Appellant did
not argue any of the particularly claimed elements are inventive, but rather
their new arrangement and use. Id. Appellant asserts that the current claims
are no different in that they provide a new use and arrangement of a bank
payment network, point of entry terminal and authentication medium that
certifies a product origin. Id.
Appellant further argues that claim 18 is in a means-plus-function
format and must be construed as applying the alleged idea on a particular
machine which would be "significantly more" than the alleged abstract idea.
App. Br. 16.
We do not agree with Appellant's argument. In determining whether
a claim falls within the excluded category of abstract ideas, we are guided in
our analysis by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75-78 (2012)). We must first determine whether claim 1 is
"directed to" an abstract idea. We agree with the Examiner's finding that
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Application 13/650,677
the current claims are similar to Fair Warning v. Iatric, found to be patent-
ineligible, because in Fair Warning, data stored in a file was accessed and
examined according to certain rules to determine if there was an occurrence
of unauthorized access to an account. Ans. 5 referring to Fair Warning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016). The Examiner
finds, and we agree, that the current claims recite accessing item data stored
in a file and comparing the stored data with received data according to
certain rules to determine if an item is authentic. Id. As with the
FairWarning case, the claims are directed to an abstract idea and the other
features are not considered to be unique or unconventional
in any way and do not constitute improvements to another technology,
another technical field, or to the computer itself. Ans. 5---6.
Therefore, because claim 1 is "directed to" an abstract idea, we next
consider the additional elements of the claim-both individually and as an
ordered combination-to assess whether the elements transform the nature
of the claim into a patent-eligible application of the abstract idea as required
by step two of Alice. Alice, 134 S. Ct. at 2355. This is a search for an
"inventive concept"-an element or combination of elements sufficient to
ensure that the claim amounts to "significantly more" than the abstract idea
itself. Id. "[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. We conclude that they do not. We agree
with the Examiner's finding that the computer or the peripheral tangible
objects, such as the terminal or authentication medium, are not used other
than as a tool to carry out the steps of the abstract idea. See Ans. 4.
Similarly, with respect to claim 18, we agree with the Examiner's
findings that nothing in the Specification indicates a specially programmed
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computer or tangible objects used in a way that should be deemed
significantly more. See Ans. 4--5.
Lastly, Appellant's assertion regarding pre-emption (App. Br. 11) is
unpersuasive, because "[w]hile preernption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot" Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) (holding "that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract").
Accordingly, we affirm the Examiner's rejection of independent
claims 1, 17 (grouped by Appellant with claim 1 ), and 18 and for the same
reasons the rejections of claims 2-16.
Claims 1-18 rejected under 35 U.S.C. § 103(a)
Appellant argues that the combination of Veseli and Tycksen fails to
teach transmitting an identification number extracted from an authentication
medium via a bank payment network. App. Br. 17-22.
We are not persuaded by Appellant's argument. We agree with the
Examiner's finding that Veseli teaches certifying the origin of a product
(Abstract) including a point of entry terminal to capture the identification
number at the time of request for certification of origin and transmit a
request with an identification number at a point-of-sale terminal for a
database comparison to determine authenticity of the product ( col. 1, 11. 16-
19, col. 5 11. 6-20, col. 7 11. 1-10, Fig. 2, identification data of item is entered
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into a point-of-sale device and an authentication request is transmitted with
ID data to authentication platform). See Non-Final Act. 4--5. We further
agree with the Examiner that V eseli teaches an element to keep in memory
the issued identification number, receive a request for certification of origin,
and verify the origin of the product by determining if the identification
number received in the request is stored in the memory (col. 2 line 13-33,
col. 5 line 6-20, item is registered in authentication platform by storing
identification data, after request for authentication is received the
identification data of the item for sale is compared to the identification data
stored in the authentication platform, and the item is determined to be
authentic if the identification data match). Id.
The Examiner relies on Tycksen for the express teaching of
performing a transaction which utilizes a bank payment network (see
Abstract), wherein the bank payment network provides the user with
enhanced security, privacy, and convenience compared to other networks,
such as the Internet (col. 7, 1. 65---col. 8, 1. 2, col. 10, 1. 50-53, using bank
network provides enhanced privacy and security). Non-Final Act. 5. The
Examiner relies on Tycksen's motivation for extra security using a bank
network for combining the references. Id.
Thus, we do not agree with Appellant that the combination does not
teach or suggest transmitting an identification number extracted from an
authentication medium via a bank payment network.
Accordingly, we affirm the Examiner's § 103(a) rejection of claims
1-18.
DECISION
The Examiner's rejections of claims 1-18 are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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