Ex Parte Bookstaff

Patent Trial and Appeal Board

Dec 18, 2015

12391402 (P.T.A.B. Dec. 18, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/391,402 0212412009
36790 7590 12/18/2015
TILLMAN WRIGHT, PLLC
POBOX49309
CHARLOTTE, NC 28277-0076
FIRST NAMED INVENTOR
Blake Bookstaff
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.
1098.001 6950
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
MAILDATE DELIVERY MODE
12/18/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BLAKE BOOKST AFF
Appeal2013-003128 1
Application 12/3 91,402 2
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
NINA L. MEDLOCK.
Opinion Dissenting filed by Administrative Patent Judge
ANTON W. PETTING.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellant's Appeal Brief ("Br.," filed July 23,
2012) and the Examiner's Answer ("Ans.," mailed October 3, 2012) and
Final Office Action ("Final Act.," mailed November 23, 2011).
2 Appellant identifies the inventor, Blake Bookstaff, as the real party in
interest. Br. 3.
Appeal2013-003128
Application 12/3 91,402
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 38, 41--49, 53, 54, and 61---68. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED INVENTION
Appellant's claimed invention "generally relates to methods, systems
and apparatus for facilitating gratuities when payments for services are
charged to accounts in electronic transactions" (Spec. i-f 2).
Claim 38, reproduced below, is the sole independent claim, and is
representative of the subject matter on appeal:
38. A method, comprising the steps of:
(a) receiving, from a customer by a merchant, a card for
payment from an account associated with the card of a certain
amount owed;
(b) electronically communicating, by the merchant for
receipt by a card issuer for authorization to charge to the
account associated with the card the certain amount owed,
(i) card information representative of information
read from the card that was presented for payment,
(ii) an identification of the merchant, and
(iii) the certain amount owed;
( c) electronically receiving, by the merchant in response
to the electronic communication to the card issuer,
(i) authorization to charge the certain amount owed to the
account associated with the card and (ii) data that is indicative
of a gratuity to be charged to the account associated with the
card;
( d) printing, by the merchant, a document that includes
both (i) the certain amount owed and (ii) the gratuity as
indicated by the data received by the merchant from the card
issuer; and
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(e) presenting, by the merchant to the customer, the
printed document for signature by the customer.
REJECTIONS
Claims 38, 41--49, 53, 54, and 61---68 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 38, 41--43, 46, 53, and 61-68 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dietz (US 2006/0085265 Al, pub. Apr. 20,
2006) and Frater (US 2005/0071232 Al, pub. Mar. 31, 2005).
Claims 44 and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dietz, Frater, and Loebner (US 6,019,393, iss. Feb. 1,
2000).
Claims 47--49 and 54 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dietz, Frater, and Gerson (US 2010/0235283 Al,
pub. Sept. 16, 2010).
ANALYSIS
Non-Statutory Subject Matter
In rejecting claims 38, 41--49, 53, 54, and 61---68 under 35 U.S.C.
§ 101, the Examiner posits that:
[b ]ased on Supreme Court precedent and recent Federal Circuit
decisions, a 35 U.S.C § 101 process must hold claim to a non-
abstract idea, such as a process that is ( 1) tied to a particular
machine or (2) transforms underlying subject matter (such as an
article or materials) to a different state. Bilski v. Kappas,
561 U.S. [593] (2010); Diamond v. Diehr, 450 U.S. 175, 184
(1981); Parker v. Flook, 437 U.S. 584, 588 n.9 (1978);
Gottschalk v. Benson, 409 U.S. 63, 70 (1972); Cochrane v.
Deener, 94 U.S. 780, 787-88 (1876).
Final Act. 4. And the Examiner concludes that independent claim 38 is
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directed to an abstract idea and, therefore, properly rejected as patent-
ineligible subject matter under 35 U.S.C. § 101 because:
Applicant's method steps lack sufficient recitation of a
machine. Involvement with a machine in claim 1, with steps is
nominally, insignificantly, or tangentially related to the
performance of the steps, (i.e. ["]receiving ... ; electronically
communicating ... ; electronically receiving . . . ; printing ... ;
and presenting ... ").
Final Act. 4-5. The Examiner finds that dependent claims 41--49, 53, 54,
and 61---68 "additionally fail to recite sufficient involvement with a particular
machine" and are "likewise ineligible to qualify as statutory [subject matter]
under 35 U.S.C. § 101" (id. at 5). And the Examiner suggests that the
rejection could be overcome by "claim language reciting the apparatus as
supported by Fig[ures 12 and 13]" (id. at 2).
Before the mailing of the Examiner's Answer in this case, the
Supreme Court held in Bilski that a patent claim's failure to satisfy the
machine-or-transformation test is not dispositive of the§ 101 inquiPJ.
561 U.S. at 604. Although it appears from the Answer, that the Examiner
may have been aware of the Supreme Court decision in Bilski, the
Examiner's rejection of claims 38, 41--49, 53, 54, and 61---68 under§ 101 is
based solely on the failure of the claims to recite "a particular machine," i.e.,
the failure to satisfy the machine-or-transformation test, which the Supreme
Court made clear in Bilski is not dispositive of the § 101 inquiry.
By relying solely on the machine-or-transformation test, the Examiner
has failed to establish a prima facie case of patent-ineligibility. Therefore,
we do not sustain the Examiner's rejection of claims 38, 41--49, 53, 54, and
61---68 under 35 U.S.C. § 101.
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Obviousness
Independent claim 38 and dependent claims 41-43, 46, 53, and 61-68
In rejecting claims 38, 41--43, 46, 53, and 61---68 under 35 U.S.C.
§ 103(a), the Examiner finds that Dietz discloses substantially all of the
elements recited in independent claim 3 8, except that Dietz does not
explicitly disclose "electronically communicating, by the merchant for
receipt by a card issuer ... (ii) an identification of the merchant,"
i.e., limitation (b )(ii), as recited in claim 3 8 (Final Act. 6-7). The Examiner
finds that Frater discloses "'the name of the restaurant' as being including
[sic] in receipt information" (id. at 7 (citing Frater i-f49)). And the Examiner
concludes, "[ o ]ne of ordinary skill in the art at the time of [Appellant's]
invention would find it obvious to include this specific information [i.e., an
identification of the merchant] on the receipt to identify and make record of
the credit payment recipient" (id.).
Appellant argues that the rejection of independent claim 38 should be
reversed because Dietz does not disclose or suggest that a merchant
electronically receives data indicative of a gratuity in response to an
electronic communication to a card issuer, i.e., "electronically receiving, by
the merchant in response to the electronic communication to the card issuer,
(i) authorization to charge the certain amount owed to the account associated
with the card and (ii) data that is indicative of a gratuity to be charged to the
account associated with the card," i.e., limitation (c), as recited in claim 38
(Br. 6-10).
In the Final Office Action, the Examiner cites paragraph 78 and
Figure 16 (step 1635) of Dietz as disclosing that a merchant, in response to
an electronic communication to a card issuer, receives "(i) authorization to
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charge the certain amount owed to the account associated with the card"
(Final Act. 6). And the Examiner relies on paragraph 77 and Figure 16
(step 1620) of Dietz as disclosing that the merchant, in response to the
electronic communication to the card issuer, receives "(ii) data that is
indicative of a gratuity to be charged to the account associated with the card"
(id.). The Examiner also emphasizes his reliance on Figure 16 of Dietz in
response to Appellant's arguments (Ans. 3-7).
Dietz is directed to a system and method that provides an electronic
menu wirelessly interconnected with a restaurant's server (Dietz, Abstract).
The restaurant server provides the electronic menu device with menu items
and menu software for navigating through the menu items (id.). A patron
uses the electronic menu device to place his/her order, and the order is
wirelessly transmitted to the restaurant server and communicated to the
restaurant kitchen staff (id.) The patron also may use the menu device to
pay his/her bill by providing credit card information, or the patron can
request assistance and provide payment, e.g., cash, to the restaurant's wait
staff (id.).
Dietz discloses, in cited paragraph 77 with reference to Figure 16, that
if a patron chooses to pay using the electronic menu device, the patron
decides (at step 1615 of Figure 16) how much gratuity to pay the waiter, and
the total bill amount (i.e., the cost of the meal plus the gratuity) is computed.
The total bill amount is then sent, with the patron's credit card information,
to the restaurant server for processing (step 1620).
Dietz discloses in paragraph 78, with continued reference to
Figure 16, that restaurant processing begins at step 1601 and that, at
step 1625, the restaurant server receives the patron's bill total and credit card
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information. At step 1630, the restaurant server contacts a credit card
service for approval to charge the bill total to the patron's credit card. And,
at step 1635, the restaurant server receives approval or denial from the credit
card service (Dietz i-f 78).
There is no dispute that Dietz discloses, in cited paragraphs 77, 78,
and Figure 16, that the merchant, in response to an electronic
communication to the card issuer, receives authorization to charge the total
bill amount to the patron's credit card account. But the Examiner does not
explain how or why the merchant receiving authorization to charge the total
bill amount, in response to an electronic communication to the card issuer,
as disclosed in Dietz, discloses or suggests receiving, by the merchant in
response to the electronic communication to the card issuer, "authorization
to charge the certain amount owed to the account associated with the card"
and "data that is indicative of a gratuity to be charged to the account
associated with the card," (claim 38 (c)). Nor, for that matter, does the
Examiner otherwise explain how or why a person of ordinary skill in the art
would have been led to the claimed invention, as recited in claim 38, by
express teachings or suggestions in Dietz or by implications contained in any
such teachings or suggestions. See In re Sernaker, 702 F.2d 989, 995 (Fed.
Cir. 1983). Although an express suggestion in the references is not
necessary to a conclusion of obviousness, a sufficient reason why a person
skilled in the art would have modified the prior art to arrive at the claimed
invention is. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
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instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.")).
In the Final Office Action, as described above, the Examiner
specifically references Dietz's paragraph 77 and Figure 16, step 1620 as
disclosing "data that is indicative of a gratuity to be charged to the account
associated with the card" (Final Act. 6). But Dietz merely discloses in
paragraph 77 that, at step 1615, the patron decides how much gratuity to pay
the waiter, and the total bill amount is computed. At Figure 16, step 1620,
the total bill amount and the patron's credit card information are sent to the
restaurant server for processing.
As described in Dietz's paragraph 77 and also shown in Figure 16,
step 1620, the merchant (i.e., restaurant server) receives the total bill amount
and credit card information before electronically communicating the
information to the credit card service (step 1630). As such, paragraph 77
and Figure 16, step 1620 cannot properly be interpreted as disclosing the
merchant's receipt of any data, in response to the electronic communication
to the card issuer, let alone the receipt of "data that is indicative of a gratuity
to be charged to the account associated with the card."
In the Response to Argument section of the Answer, the Examiner
again references Dietz's Figure 16, identifying steps 1635 and 1640 as
corresponding to limitation (c) of claim 38 (Ans. 6). Dietz discloses, at
step 1635, that the restaurant server receives an approval or a denial of the
total bill amount from the credit card service, and at step 1640, the approval
or denial is sent to the patron's electronic menu device (Dietz i-f 78). But
again, the Examiner does not explain why or how the cited steps of
Figure 16, which, at best, describe that the restaurant server receives
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authorization from the credit card service to charge the total bill amount,
disclose or suggest "electronically receiving, by the merchant in response to
the electronic communication to the card issuer, (i) authorization to charge
the certain amount owed to the account associated with the card" and "(ii)
data that is indicative of a gratuity to be charged to the account associated
with the card," as recited in claim 38.
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner fails to
establish a prima facie case of unpatentability in the first instance, the
rejection must be reversed. Id.; see also In re Rijckaert, 9 F.3d 1531, 1532
(Fed. Cir. 1993). The role of this Board is appellate. See 35 U.S.C. § 6.
It is not the role of the Board to perform examination in the first instance or
to properly formulate a rejection which has been inadequately articulated.
The Board also is not obliged, if the Examiner fails to identify where
sufficient evidence to support a prima facie case of obviousness may be
found, to "play archeologist with the record," see DeSilva v. DiLeonardi,
181F.3d865, 867 (7th Cir. 1999), and seek out reasoning having rational
underpinning which might support the Examiner's rejection.
Here, the Examiner relies on Dietz for the step of "electronically
receiving, by the merchant in response to the electronic communication to
the card issuer, ... (ii) data that is indicative of a gratuity to be charged to
the account associated with the card" in claim 3 8, but the Examiner does not
explain how or why the cited portions of Dietz (alone or in combination with
Frater) either explicitly disclose or reasonably suggest this step. Without
further explanation, we are compelled to conclude that the Examiner fails to
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present a prima facie case of obviousness with respect to independent
claim 38.
Because claims 41--43, 46, 53, and 61---68 depend from claim 38, and,
therefore, also require the step of "electronically receiving, by the merchant
in response to the electronic communication to the card issuer, ... (ii) data
that is indicative of a gratuity to be charged to the account associated with
the card," the Examiner also fails to present a prima facie case of
obviousness with respect to those claims for the same reasons.
Therefore, we do not sustain the Examiner's rejection of claims 38,
41--43, 46, 53, and 61-68 under 35 U.S.C. § 103(a).
Dependent claims 44, 45, 47-49, and 54
Neither the rejection of claim 44 and 45 based on Loebner, in
combination with Dietz and Frater, nor the rejection of claims 47--49 and 54
based on Gerson, in combination with Dietz and Frater, cures the deficiency
in the Examiner's rejection of independent claim 3 8.
Therefore, we do not sustain the Examiner's rejections of claims 44,
45, 47--49, and 54 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 38, 41--49, 53, 54, and 61-68
under 35 U.S.C. § 101 is reversed.
The Examiner's rejections of claims 38, 41--49, 53, 54, and 61---68
under 35 U.S.C. § 103(a) are reversed.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BLAKE BOOKSTAFF
Appeal2013-003128
Application 12/391,402
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge, dissenting.
I would find that both of the rejections under 35 U.S.C. § 101 and §103
are proper. Accordingly, I respectfully dissent from the majority decision.
Claims 38, 41-49, 53, 54, and 61-68 rejected under 35 US.C. § 1 OJ as
directed to non-statutory subject matter
My colleagues reverse the rejection under because by "relying solely
on the machine-or-transformation test, the Examiner has failed to establish a
prima facie case of patent-ineligibility." Majority Opinion 4. The Examiner
looked beyond the recitation of a machine under Bilski v. Kappas,
561 U.S. 593 (2010) and concluded that "[i]nvolvement with a machine in
claim [38], with steps is nominally, insignificantly, or tangentially related to
the performance of the steps, (i.e. receiving ... ; electronically
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communicating ... ; electronically receiving ... ; printing ... ; and
presenting ... ). " Final Act. 4--5. Thus, the Examiner took the machine or
transformation test as an important test as the Supreme Court found in Bilski,
and then looked at the remaining limitations to test whether the subject
matter as a whole nevertheless was non-abstract. The Appellants did not
argue that Bilski did not retain the machine or transformation test as an
important test, only that it is not dispositive. Br. 11. The Examiner did not
rely exclusively on the machine or transformation test and so did not treat it
as dispositive.
More critically, the test for eligibility under 35 U.S.C. § 101 is
whether the subject matter claimed is among the enumerated categories and
not among the judicially created exceptions of natural phenomena, laws of
nature, and abstract ideas. The Supreme Court provides additional tools in
testing for the abstract ideas in a two-step analysis of discerning whether
claims are drawn to an abstract idea and then looking at the claims as a
whole to see whether they go beyond. Alice Corp. Pty. Ltd. v
CLS Banklnt'l, 134 S. Ct. 2347 (2014). These tools strengthen the
Examiner's findings.
The five steps in claim 3 8 result in presenting a document displaying
amounts charged for signature. The Specification at page one (1) recites that
the invention relates to facilitating gratuities. Spec. para. 2. Thus, all this
evidence shows that claim 3 8 is directed to making gratuities. Like the risk
hedging in Bilski, the concept of gratuity for service is a fundamental
economic practice long prevalent in our system of commerce. The use of
gratuities is also a building block of the modem economy. Thus, making
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gratuities, like hedging, is an "abstract idea" beyond the scope of § 101. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to communicate data and print that data amounts to electronic data
query and retrieval---one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions. The
limitations of receiving a card and presenting a document are not even
computer dependent but merely handle paper or an equivalent.
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant's method claims
simply recite the concept of presenting gratuity data as performed by a
generic computer. The method claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of making a gratuity using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
Thus, I would find the Examiner's rejection of claims 38, 41-49, 53,
54, and 61-68 as non-statutory as directed to abstract ideas to be proper.
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Claims 38, 41-43, 46, 53, 54, and 61-68 rejected under 35 USC§ 103(a)
as unpatentable over Dietz and Frater
My colleagues find that
the Examiner does not explain how or why the merchant
receiving authorization to charge the total bill amount, in
response to an electronic communication to the card issuer, as
disclosed in Dietz, discloses or suggests receiving, by the
merchant in response to the electronic communication to the
card issuer, "authorization to charge the certain amount owed to
the account associated with the card" and "data that is
indicative of a gratuity to be charged to the account associated
with the card," (claim 38 (c)). Nor, for that matter, does the
Examiner otherwise explain how or why a person of ordinary
skill in the art would have been led to the claimed invention, as
recited in claim 3 8, by express teachings or suggestions in Dietz
or by implications contained in any such teachings or
suggestions.
Majority Opinion 7 (citation omitted). As to the "authorization to charge the
certain amount owed to the account associated with the card," Frater
explicitly describes charging the total including gratuity. Frater para. 48
(describing Frater Fig. 4). My colleagues discount the Examiner's finding
that the desire for detailed records would motivate one of ordinary skill to
add the gratuity to the data received by the merchant in claim 3 8,
limitation ( c ).
The only difference between claim 3 8 and the prior art is that neither
reference explicitly describes receiving from the card issuer data indicative
of a gratuity. But this is a rejection under obviousness rather than
anticipation. As the Examiner found, "[ o ]ne of ordinary skill in the art at the
time of invention would find it obvious to include this specific information
on the receipt to identify and make record of the credit payment recipient."
Ans. 7. One of ordinary skill in this context would necessarily be familiar
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with the requirements for such systems and therefore be familiar with
programming practices, retail financial systems, and bookkeeping, expense
account reporting and financial auditing requirements. Thus, one of
ordinary skill would be aware that supplying detail behind a credit card
transaction is both desirable and often required.
The Examiner essentially found that supplying the gratuity amount
was the type of detail one of ordinary skill knew was desirable and often
required in expense account reporting. Any programmer, given a set of data
that is present in some buffer with instructions to send some of that data
somewhere would consider any and all of such data as within the scope of
what is predictable to send. If information has value in one location, and at
least part of it has value in another location, it is trivial to send any or all of
the data so long as some of it is being sent, and the reasons for sending part
of the data will likely attach to other parts as well. And any accountant,
given a set of details and a total that is to be transcribed, would find it both
predictable and desirable to send corroborative detail with the total for the
purpose of subsequent analysis and verification. As any accountant or
auditor knows, the term of art for this is internal control. Redundancy, such
as providing detail backup to support totals, is a common internal control
practice. The details provide a control check on the total.
Further, as everyone who has paid by credit card at restaurants is
aware, the charge slip printed from the card issuer's data is the one signed
and a copy retained. By convention, this slip prints the total amount prior to
gratuity and provides a line for gratuity and a line for the total. The
Specification admits as much. Spec. para. 167. Thus, existing practice
results in the charge slip including "data that is indicative of a gratuity to be
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charged to the account associated with the card" after the customer adds the
gratuity," as recited in claim 38 (c).
Now with Dietz and Frater, the gratuity amount is known in the
merchant's system prior to sending to the credit card company. So it was
predictable to continue the existing practice of printing the gratuity amount
on the copy that is signed by passing that known amount to the credit card
company and then back for printing on the charge slip to minimize
disruption from existing documentation practice. This would result in
"electronically receiving, by the merchant in response to the electronic
communication to the card issuer, ... data that is indicative of a gratuity to
be charged to the account associated with the card." Claim 3 8 ( c). It was
further predictable to include the gratuity amount the signer authorized in the
data returned from the card issuer for printing to memorialize the gratuity
amount on the slip that is signed and provide written feedback to verify the
proper amount was included, consistent with the Examiner's reasoning.
For these reasons, I would find the rejections of claims 38, 41-49, 53,
54, and 61-68 under 35 U.S.C. § 103(a) as unpatentable over Dietz and
Frater proper as well.
Thus, I respectfully dissent from the majority conclusion that the
rejections of claims 38, 41-49, 53, 54, and 61-68 under 35 U.S.C. § 101 and
§ 103 are improper.
Judges' Initials:
AWF
Paralegal:
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