Ex Parte Browne et al

Patent Trial and Appeal Board

Dec 21, 2018

13873099 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/873,099
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
04/29/2013
12/26/2018
FIRST NAMED INVENTOR
John P. Browne
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.
BOKU-P081 3893
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
ariana@matterlightip.com
s tephen @matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. BROWNE, P ANKHUDI P ANKHUDI,
JAMES C. MCINTYRE, MARCIN L. PAWLOWSKI,
and TEERA WAT VILAISAKUL YONG
Appeal2017-010973
Application 13/873,099
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-20, which constitute all the pending claims in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Boku, Inc. as the real party in interest (App. Br. 3).
Appeal2017-010973
Application 13/873,099
THE INVENTION
Appellants' claimed invention is directed to an "authorize-and-
capture" method in which a consumer using a mobile phone "make[ s] a
purchase through an online store on the merchant server," and "the
consumer may [] cancel the purchase after it has been authorized, but before
it has been captured" (Spec. ,r 18).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method of processing a charge comprising:
receiving, with a billing server, an authorize application
programmable interface (API) call with an authorize request
from a merchant server, including a Mobile Station
International Subscriber Directory Number (msisdn) and an
amount;
determining, with the billing server, a select carrier
server from a plurality of carrier servers;
transmitting, with the billing server, an authorize request
to the select carrier server based on the amount;
recording, with the billing server, an authorized
transaction, including an authorization-id, wherein the
authorization-id is a billing server assigned authorization id,
based on the authorize request;
receiving, with the billing server, a capture API call with
a capture request, including the authorization-id, after
transmitting the authorize request to the select carrier server;
determining, with the billing server, in response to the
capture request, whether a cancel request for the authorization-
id has been received from the merchant server after the
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Application 13/873,099
authorize request and before the capture request and the capture
transaction has been cancelled; and
transmitting, with the billing server, in response to the
capture request, a billing request to the select carrier server if
the captured transaction has not been cancelled but not if the
captured transaction has been cancelled.
(Claim Amendment filed Dec. 19, 2016, indicated as "OK TO ENTER" by
the Examiner on June 5, 2017).
REJECTION
The Examiner made the following rejection2 :
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 12.
ISSUE
The pivotal issue is whether the Examiner erred in finding the claimed
invention is directed to a judicial exception without significantly more.
ANALYSIS
Appellants argue that "the claims at issue are not directed to an
abstract idea within the meaning of Alice. Rather, they are directed to a
2 The rejection of claims 1, 19, and 20 under 35 U.S.C. § 112(b) (see Final
Act. 11) has been withdrawn based on the claim amendment entered by the
Examiner. See Ans. 4.
The rejection of claims 1-3 and 5-20 under 35 U.S.C. § 103 (see Final Act.
16-37) has been withdrawn. See Ans. 16.
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specific improvement to the way computers operate, embodied in the
authorization-and-capture method" (App. Br. 13, emphasis in original).
Appellants contend the specification teaches that "the authorization-and-
capture method functions differently than conventional database structures"
(App. Br. 15, citing Spec. ,r 2, Tables 2-3). Appellants further contend that
the claims are directed to an improvement of an existing
technology is bolstered by the specification's teachings that the
claimed invention achieves other benefits over conventional
systems, such as obviating the need to confirm the
transaction with a customer
(App. Br. 16, citing Spec. ,r 2 and Openwave Sys., Inc. v. Apple Inc., 808
F.3d 509, 513-14 (Fed. Cir. 2015)).
We do not agree with Appellants' arguments. In Alice, the Supreme
Court sets forth an analytical "framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 573 U.S. 208,217 (2014) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Id. (citing Mayo,
566 U.S. at 77-78). If the claims are directed to a patent-ineligible concept,
the second step in the analysis is to consider the elements of the claims
"individually and 'as an ordered combination"' to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (brackets in original) (quoting Mayo, 566
U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant post-solution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
With respect to Alice step one, the Examiner finds that "the inventive
concept, ( the identified abstract idea) is directed to processing bills for
different carriers" (Ans. 6, citing Spec. ,r,r 1, 4, Abstract). Such fundamental
economic and business practices are often held to be abstract. See,
e.g., Alice, 573 U.S. at 2219-20 (holding the concept of intermediated
settlement is an abstract idea directed to a "fundamental economic practice
long prevalent in our system of commerce") ( citation omitted); see
also buySAFE Inc. v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir.
2014) (citing cases where contractual relations at issue constituted
fundamental economic practices, and noting that forming or manipulating
economic relations may involve an abstract idea); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (explaining that claims directed to "the mere formation and
manipulation of economic relations" and "the performance of certain
financial transactions" have been held to involve abstract ideas).
We agree with the Examiner that the claimed method is directed to the
abstract idea of "processing bills for different carriers," as the claim is
directed to the fundamental business practice of consummating a transaction
after allowing the consumer a grace period to opt-out (via the claimed
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"cancel request"), indistinguishable from the methods found abstract by our
reviewing court and described above.
With respect to Alice step two, the Examiner finds that the claimed
hardware components are "generic" and "recited at a high level of
generality" (Ans. 8). Particularly, the Examiner finds that
[]the billing server, merchant server, [and] mobile device[] are
operating in the exactly the same way as they were designed to
function. They are merely used to implement the abstract idea
of (processing of bills for different carriers). There is no
improvement to the technology of any of these hardware
components, they are being leveraged to implement the
identified abstract idea
(Ans. 8). We agree, as the Appellants' citations to the disclosure do not
identify a technological improvement3, and Appellants do not challenge the
Examiner's finding as no Reply was filed. We are not persuaded that the
claimed "cancel request" adds "significantly more," because this request too
is part of the abstract idea as transactions traditionally incorporate means
whereby one party having cold feet may exit. We also are not persuaded
that Open wave Systems is pertinent, as Appellants' disclosure does not
appear to be "rife with remarks that disparage" the prior art ( Openwave
Systems, 808 F.3d at 514) in a manner that would suggest Appellants' claim
elements, when considered individually and as an ordered combination,
include significantly more than the abstract idea.
3 We note that Appellants' citation to the disclosure in support of the
assertion that "the authorization-and-capture method functions differently
than conventional database structures" provides no explanation regarding
what a conventional database structure is, nor how Appellants' method
functions differently.
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Accordingly, we affirm the Examiner's rejection of independent claim
1, and independent claims 19 and 20 commensurate in scope, and affirm for
the same reasons the rejection of claims 2-18.
CONCLUSION
The Examiner did not err in finding the claimed invention is directed
to a judicial exception without significantly more.
DECISION
The Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 101
is affirmed.
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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