Ex Parte Beyer et al

Patent Trial and Appeal Board

Feb 26, 2019

11503417 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/503,417 08/11/2006
96592 7590 02/28/2019
FIS/FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK A VENUE
WASHINGTON, DC 20001-4413
FIRST NAMED INVENTOR
Darren Beyer
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.
l 1360.0166-00000 8974
EXAMINER
PUTTAIAH, ASHA
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
jeffrey.berkowitz@finnegan.com
regional-desk@finnegan.com
michael. wrobel@fisglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARREN BEYER, LAURENCE DUNNE,
and MONICA TAN
Appeal2017-005098
Application 11/503,417
Technology Center 3600
Before JASON V. MORGAN, KARA L. SZPONDOWSKI, and
SHARON PENICK, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-14, 16-34, and 36-41, constituting all
claims pending in the current application. Claims 4, 15, and 25 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-005098
Application 11/503,417
STATEMENT OF THE CASE
Appellants' invention is directed to methods and systems for placing
orders for stored value cards, such as personalized gift cards. Spec. ,r,r 2, 3.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method of processing an order for at least one card on a card
processing system, implemented by at least one processor,
compnsmg:
receiving, by the at least one processor, a first request for an
order form file from a client computer, the requested order form file
comprising at least one pre-programmed validation mechanism that
causes the client computer to display a message indicating a total
number of errors upon entry of data containing a set of errors;
transmitting, by the at least one processor, the requested order
form file to the client computer;
receiving, by the at least one processor, a received order form
file from the client computer, the received order form file comprising
the requested order form file and data defining an order for at least
one card;
validating, by the at least one processor, the defining data;
processing, by the at least one processor, the validated defining
data to fulfill the order; and
after receiving the order form file from the client computer,
receiving, by the at least one processor, a second request from the
client computer to check the status of the order.
App. Br. 18 (Claims Appendix).
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REJECTIONS
Claims 1-3, 5-14, 16-34, and 36-41 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Claims 1-3, 5-7, 10-14, 16-22, 25-29, 32-34, and 36-41 stand
rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over the
combination of Morrison et al. (US 2005/0103841 Al; published May 19,
2005) ("Morrison") and Morscheck et al. (US 6,076,080; issued June 13,
2000) ("Morscheck").
Claims 8, 9, 23, 24, 30, and 31 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Morrison,
Morscheck, and Applicant's Admitted Prior Art.
ANALYSIS
35 USC§ 101 Rejections
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 55 ("Memorandum").
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
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human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. 50.
Under the first step of the Alice/Mayo framework, the Examiner
determines the claims are directed to the abstract idea of processing orders
for cards, which is similar to collecting and comparing known information
( an idea of itself) and creating a contractual relationship ( a fundamental
economic practice). Final Act. 3, 4, and 9. The Examiner further
determines "the claims do not include an improvement to another
technology or technical field, an improvement to the functioning of the
computer itself, or meaningful limitations beyond generally linking the use
of an abstract idea to a particular technological environment." Id. at 10.
Specifically, the Examiner determines "the invention merely applies a
known technique in a conventional manner to solve a business problem in a
manner that is merely generally linked to a technological environment; in
other words, it is the abstract idea that is improved." Id. at 4--5.
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Appellants argue "the Office has pointed to no court decision
supporting the 'abstract idea' of 'processing orders for cards,"' and instead
has "chosen a broad construction of the claimed combination of elements
[and] deemed it an 'abstract idea' without any support." App. Br. 8.
Appellants do not persuasively argue why the claims are not directed
to an abstract idea. The Title of the Specification is "METHODS AND
SYSTEMS FOR PLACING CARD ORDERS." The Background of the
Invention discusses problems with placing orders for one or more cards, for
example, that manual work is required, which can result in a suboptimal
system due to development costs, time delays, and the human manipulation
involved. Spec. ,r 4. Claim 1 provides for a method of processing an order
for at least one card on a card processing system comprising the limitations
of: (a) receiving a first request for an order form file; (b) transmitting the
requested order form file to the client computer; ( c) receiving a received
order form file from the client computer; ( d) validating the defining data;
( e) processing the validated defining data to fulfill the order; and ( f) after
receiving the order form file from the client computer, receiving a second
request from the client computer to check the status of the order. See Claims
App. 18.
In light of the Specification's description of the problem and the
claimed solution, the purported advance claimed is a way, using a generic
computer, to facilitate order processing where data can be validated multiple
times. Here, claim 1 involves nothing more than receiving and transmitting
data, and processing that data to fulfill an order. In this context, we agree
with the Examiner's characterization of the claims as directed to certain
methods of organizing human activity, specifically, processing orders for
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cards, which is a fundamental economic practice. See Ans. 21; Final Act. 3-
4, 9; see Memorandum, 84 Fed. Reg. 52. We agree that processing an order
is "a fundamental economic practice long prevalent in our system of
commerce." Alice, 573 U.S. at 219 (quoting Bilski v. Kappas, 561 U.S. 593,
611 (2010). If anything, processing an order is even more basic than the
"risk hedging" and "intermediated settlement" at issue in Bilski and Alice.
We further agree with the Examiner that the claims are directed to the
abstract idea of a mental process. See Ans. 21-22; Final Act. 4, 9; see
Memorandum, 84 Fed. Reg. 52. Specifically, the series of steps covered by
the claims can be performed by humans without a computer. Cf
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011); see also Mortgage Grader, Inv. v. First Choice Loan Servs., 811 F.3d
1314, 1324 (Fed. Cir. 2015). Indeed, Appellants state in the Background of
the Invention that "[ t ]ypically, manual work is required, both at a card
processing system and by the client, in order to place an order for one or
more cards." Spec. ,r 4. Thus, Appellants seek to automate a known manual
process. The mere mention of certain computer components in the claim
( e.g., "processor," "client computer") does not impose sufficiently
meaningful limitations on claim scope beyond these mental steps.
CyberSource, 654 F.3d at 1372-73, 1375; Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
In determining whether they are "directed to" the identified abstract
ideas, we next consider whether the claims recite additional elements that
integrate the judicial exception into a practical application. We discern no
additional element ( or combination of elements) recited in the claims that
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integrates the judicial exception into a practical application. See
Memorandum, 84 Fed. Reg. at 54--55.
Appellants argue the claims are "inextricably tied to computer
technology" because they recite a "requested order form file" that includes a
"pre-programmed validation mechanism." Id. at 9--10. Appellants argue the
claims "'address a business challenge ... that is particular to the Internet,'
namely, the business challenge presented by having electronic card order
data entered at a location that is physically removed from where the data is
validated." Id. at 10-11. Appellants contend "[t]he claimed 'pre-
programmed validation mechanism' is a technical solution ... [that] has no
analogue in the 'pre-Internet world."' Id. at 11.
We are not persuaded by Appellants' arguments. We agree with the
Examiner that Appellants' claims are not "inextricably tied to computer
technology" or address a challenge "particular to the Internet" because it is
"a solution to a real world business challenge which uses computer
technology (i.e. personal computers and Excel files and macros) as a tool to
address a real world problem." See Ans. 21-22. As the Examiner notes, the
business challenge of validating/invalidating errors on order forms is a real
world problem that is not confined to the Internet. See id. at 22. Moreover,
Appellants do not direct our attention to anything in the Specification that
discusses the "business challenge presented by having electronic card order
data entered at a location that is physically removed from where the data is
validated." See App. Br. 10-11.
Appellants also argue the claimed "pre-programmed validation
mechanism" improves the functioning of the card order system by providing
an 'order form file' in which errors may be immediately detected and
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corrected." App. Br. 12. According to Appellants, this "'pre-programmed
validation mechanism' permits detection and correction of errors within the
order form file, without relying on an external computer system for
validation." Id.; see also Reply Br. 7-8.
Appellants do not persuasively explain why the claims improve the
functioning of a computer. Rather, the claims, including the pre-
programmed validation mechanism, merely adapt the abstract idea of
processing orders, previously performed mentally or manually, to an
execution of steps performed by a computer. See Spec. ,r 4; Credit
Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir.
2017) ("Our prior cases have made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology."). Relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible. See Alice, 573 U.S. at 224 ("use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept); Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer
"employed only for its most basic function ... does not impose meaningful
limits on the scope of those claims").
Although Appellants focus their arguments on the "pre-programmed
validation mechanism," Appellants do not provide persuasive argument that
it is anything other than generic computer functionality. Appellants'
Specification supports that this is merely generic computer functionality.
For example, Appellants' Specification describes "order form 60 can include
one or more validation mechanisms, such as macros or preprogrammed
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scripts, for performing various validation mechanisms." Spec. ,r 34
( emphasis added). The order form file may be an Excel spreadsheet file.
Spec. ,r 32. We agree with the Examiner "that error checks such as spelling,
grammar, Alphabet vs numeric checks, format check, prevention of
duplicates etc. are all routine, conventional and ubiquitous programming
techniques/features for data validation in cells or tables." See Final Act. 4
( citing, e.g., "How to Excel" Mini-Tutorials by TheExcelAddict.com, 2003,
available at https://www.theexceladdict.com/_t/t040818.htm, last accessed
February 22, 2019); see also Ans. 20-22. Appellants' Specification also
indicates that the claimed processor and client computer are nothing more
than generic computer elements. Spec. ,r,r 29, 32, Fig. IA. Appellants do
not direct our attention to anything in the Specification that indicates these
claimed computer components are anything other than generic. "[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea 'while adding
the words "apply it"' is not enough for patent eligibility." Alice, 573 U.S. at
223 ( citation omitted). In other words, the claims are directed to the use of
the computer merely as a tool to perform order processing and any
improvement is to the process, not to the computer functionality. See Ans.
22. We also agree with the Examiner that moving a macro to another
location (e.g., in the order form file versus in an external server) does not
improve the functioning of a computer itself. See Ans. 23.
For these reasons, we are not persuaded of error in the Examiner's
determination that the claims are directed to an abstract idea.
Turning to step 2 of the Alice/lvfayo framework, we look to whether
claim 1: (a) adds a specific limitation or combination of limitations that are
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not weU-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. l\1emorandum, 84 Fed. Reg. at 56.
The Examiner determines the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception; rather, the limitations are performed by generically recited
computing devices and are merely instructions to implement the abstract
idea on a computer. Final Act. 10.
As discussed above, the claims are directed to processing orders for
cards. Thus, even when viewed as a whole, nothing in the claim adds
significantly more (i.e., an inventive concept) to the abstract idea. Similarly,
as set forth above, the additional elements in the claim amount to no more
than mere instructions to apply the exception using generic computer
components, which is insufficient to provide an inventive concept.
Appellants do not direct our attention to anything in the Specification that
indicates the processor, client computer, or pre-programmed validation
mechanism perform anything other than well-understood, routine, and
conventional functions, such as receiving, processing, and transmitting data.
See buySAF'E', Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2015)
("T'liat a computer receives and sends information over a network----with no
further specification----is not even arguably inventive"); Alice, 573 U.S. at
224-26 (receiving, storing, sending information over networks insufficient
to add an inventive concept); (~yber5'ource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) (use of Internet to verify credit-card
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transaction does not add enough to abstract idea of verifying the
transaction).
Accordingly, Appellants have not adequately explained how the
claims are performed such that they are not routine, conventional functions
of a generic computer. The claims at issue do not require any
nonconventional computer components, or even a "non-conventional and
non-generic arrangement of known, conventional pieces," but merely call for
performance of the claimed inforrnation receiving, processing, and storing
"on a set of generic computer components." Bascom Global Internet
Services, Inc. v. AT&Tlvfobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir.
2016).
We, therefore, sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-3, 5-14, 16-34, and 36-41.
35 US.C. § 103 Rejections
Dispositive Issue: Did the Examiner err in finding the combination of
Morrison and Morscheck teaches or suggests "receiving, by the at least one
processor, a first request for an order form file from a client computer, the
requested order form file comprising at least one pre-programmed validation
mechanism that causes the client computer to display a message indicating a
total number of errors upon entry of data containing a set of errors," as
recited in independent claims 1, 17, and 27?
The Examiner relies on Morscheck to teach or suggest the disputed
limitation. Final Act. 13 ( citing Morscheck, Fig. 2, 3---6, Fig. 5, 208, Fig. 6,
exceptions, col. 9:33-10:30, 24:44--25:64); Final Act. 14 (citing Morscheck
9:33-10:30, 12:67, 14:6-19). Specifically, the Examiner finds "Morscheck
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teaches the entry and validation of orders using a pre-programmed
mechanism (i.e. validation using validation rules) which is how the
exceptions are identified and listing of exceptions wherein the list of
exceptions is an indication of a total number of errors that have been
entered." Final Act. 6; Ans. 24.
Appellants argue the references do not teach or suggest a "'pre-
programmed validation mechanism' that is included in a requested order
form file."' App. Br. 13; Reply Br. 9. With respect to Morscheck,
Appellants' contend the "validation engine" in Morscheck is included in the
computer system, not in the "forms." App. Br. 14. Appellants further argue
in Morscheck, order entry takes place through a user interface in a first
computer system, while validation occurs in a second computer system, so,
therefore validation cannot be said to occur "upon entry of data containing
set of errors." App. Br. 14.
Morscheck generally describes a "forms order entry system." In one
embodiment, Morscheck describes a first computer system with an order
entry user interface that captures form design data and a second computer
system remote from the first computer system that validates the form with a
validation engine and transmits the validated and priced order. Morscheck
Abstract, col. 1:4--12. The validation engine is described as being in
communication with the user interface. Morscheck col. 3:2-3, col. 204:36-
38. In another embodiment, Morscheck describes a forms order entry
system with only a first computer system. Morscheck col. 206:5-26, 62---65;
col. 3:51--4:15.
We are persuaded the Examiner has not sufficiently shown how
Morscheck teaches or suggests the disputed limitation. Specifically, we fail
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to see how Morscheck teaches or suggests "receiving, by the at least one
processor, a first request for an order form file from a client computer ... "
Rather, Morscheck teaches a first computer system with a user interface for
order entry. See Morscheck Fig. 2. While this may indicate that Morscheck
"teaches the entry and validation of orders ... " as the Examiner finds (Final
Act. 6; Ans. 24) we do not see, and the Examiner has not explained, how this
disclosure teaches "receiving ... a first request for an order form file from a
client computer."
Accordingly, on this record, we are persuaded the Examiner erred.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
We, therefore, do not sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claims 1, 17, and 27, and, for the same reasons, dependent
claims 2, 3, 5-14, 16, 18-26, 28-34, and 36-41. 1
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection of claims 1-3, 5-
14, 16-34, and 36-41.
We reverse the Examiner's 35 U.S.C. § 103(a) rejection of claims 1-
3, 5-14, 16-34, and 36-41.
1 In the event of further prosecution, the Examiner may wish to
consider whether the claimed "the requested order form file comprising at
least one pre-programmed validation mechanism that causes the client
computer to display a message indicating a total number of errors upon entry
of data containing set of errors" constitutes non-functional descriptive
material.
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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)(l )(iv).
AFFIRMED
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