Ex Parte Bulawa et al

Patent Trial and Appeal Board

Apr 23, 2018

12830025 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/830,025 07/02/2010
20350 7590 04/25/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
KurtBulawa
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.
90945-785022 (016900US) 9678
EXAMINER
PUTTAIAH, ASHA
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
04/25/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT BULA WA,
MICHAEL MICHELSEN,
MICHELE DEMARK,
and DA VE OWEN
Appeal2018---001273
Application 12/830,025
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Kurt Bulawa, Michael Michelsen, Michele Demark, and Dave Owen
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed May 23, 2017) and the Examiner's Answer ("Ans.," mailed August 28,
2017), and Final Action ("Final Act.," mailed December 23, 2016).
Appeal2018-001273
Application 12/830,025
1-10, 21-30, and 32, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a system for receiving a payment for a financial
obligation of a payer via a staged transaction, and for identifying an
originator of the staged transaction after satisfaction of the staged
transaction. Spec. para. 5.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system
for receiving a payment for a pre-existing financial
obligation of a payer to a payee via a staged transaction,
and
for identifying an originator of the staged transaction
after satisfaction of the staged transaction,
wherein the originator is a party other than the payer and
the payee who initiated creation of the staged transaction,
and wherein the system comprises:
[ 1] a collection system comprising a first computer processor
operably connected to a non-transitory memory, wherein the
first computer processor is programmed to perform method
steps comprising:
[a] associating the pre-existing financial obligation due
from a payer to a payee with an identifier,
wherein the identifier is unique to the pre-existing
financial obligation and indicative of the
originator,
wherein the originator is a party other than the
payer and the payee;
[b] associating the staged transaction with the identifier;
[ c] providing the identifier for communication to the
payer;
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[ d] receiving a third record from a provider system
indicating payment has been received from the payer for
the staged transaction,
wherein the third record includes the identifier;
[ e] after receiving the third record indicating that
payment has been received for the staged transaction,
determining,
and
based at least on the identifier included in
the third record,
who the originator is,
wherein the originator is responsible for initiating
creation of a first record for the staged transaction
to be paid by the payer;
[ f] determining a collection success rate for the
originator,
wherein the collection success rate is
based on a prior history of transactions
staged by the originator,
and
indicative of a total number of transactions
staged by the originator for different pairs of
payers and payees for which payment has
been received versus a total number of
transactions staged by the originator for
different pairs of payers and payees for
which payment has not been received;
[2] the provider system comprising a second computer
processor operably connected to a non-transitory memory,
wherein the second computer processor is programmed to
perform method steps comprising:
[a] receiving the first record related to the staged
transaction from the collection system;
[b] receiving a second record related to the staged
transaction,
wherein the second record indicates a
payment has been received for the
pre-existing financial obligation;
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and
[ c] sending the third record related to the staged
transaction to the collection system,
wherein the third record indicates a payment
has been received for the pre-existing
financial obligation;
[3] a provider subsystem comprising a third computer processor
operably connected to a non-transitory memory,
wherein the computer processor is programmed to perform
method steps comprising:
receiving the identifier from the payer;
and
sending the second record related to the staged
transaction to the provider system.
Br. 10-11 (Claims Appendix).
The Examiner relies upon the following prior art:
Brock US 2003/0126072 Al
Hansen US 2004/0030647 Al
July 3, 2003
Feb. 12,2004
Claims 1-10, 21-30, and 32 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1-10, 21-30, and 32 stand rejected under 35 U.S.C. § l 12(a) as
lacking a supporting written description within the original disclosure.
Claims 1-10, 21, 22, 25-30, and 32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hansen and Brock.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hansen, Brock, and Applicant Admitted Prior Art.
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ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of written description tum primarily on whether the originally
filed disclosure describes the limitations in the claims.
The issues of obviousness tum primarily on whether the references
describe the limitations in the claims
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants' Disclosure
01. At block 290, receipt of the payment is reported to collection
system 120. The collection system may thereafter report the
receipt of payment to receiver 115. At block 293, collection
system 120 may correlate that a particular originator 105 is
associated with the successful collection on the financial
obligation by analyzing the identifier, which though unique to the
transaction, may be indicative of the particular originator 105.
Reports on successful rates of payer-interaction and collections
can then be produced for any one of, or plurality of, a number of
originators. Spec. para. 59.
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Facts Related to the Prior Art
Hansen
02. Hansen is directed to accepting payments for goods and
services provided by a goods or service provider. Hansen para. 8.
03. The methods can include associating consumers and merchants
with a payment provider. The payment provider can receive
payments destined for the merchant, associate the payments with
one or more identifiers, and transfer at least portions of the
received payments to the merchant. Further, the present invention
provides systems and methods for enrolling consumers in such
payment acceptance systems. The present invention still further
includes systems and methods for staging transactions initiated by
a merchant, a consumer, a beneficiary, or another third party.
Hansen para. 8.
04. The systems can include a point-of-sale device configured to
accept payments from consumers on behalf of merchants. In some
cases, the systems include a plurality of such point-of-sale devices
in communication with a payment provider control. The payment
provider control can be in communication with one or more
merchant controls. Using such systems, a consumer can enroll to
make payments via a payment provider and make payments via
the payment provider by accessing any of a number of point-of-
sale devices associated with the payment provider control. The
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consumer alternatively may be able to enroll through the merchant
or other third party. Hansen para. 9.
05. In one embodiment of the present invention, a method for
accepting payments from a consumer for a good or service
provided by a merchant comprises receiving a transaction request
from the merchant, receiving a payment from the consumer,
associating the payment with the transaction request, and sending
at least a portion of the payment to the merchant. In this manner,
the merchant stages the transaction, and the consumer completes
the transaction by making the payment. In one aspect, method is
performed by a payment provider system. In another aspect, the
method is performed by a point of service (POS) device. In still
another aspect, the method is performed partly by the payment
provider system and partly by the POS device. Hansen para. 10.
06. In one aspect, the method includes storing a record of the
payment and the associated transaction request in a database.
Typically, the merchant desires to know when payment has been
made prior to rendering the service or shipping the goods. Hence,
in one aspect, the method includes receiving an inquiry from the
merchant as to whether the payment was made by the consumer,
and sending a reply to the merchant in response to the inquiry.
Alternatively, the method includes providing an indication to the
merchant that the payment was made by the consumer. This may
occur, for example, prior to being prompted by the merchant. The
method further may include electronically sending at least a
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portion of the payment to an account of the merchant. Another
portion of the payment may include a fee or surcharge for the
staged transaction service. Hansen para. 11.
07. The transaction request may take a variety of forms within the
scope of the present invention. For example, in one aspect the
transaction request includes a consumer profile. In this
embodiment, the method may further include verifying a
consumer identify against the consumer profile. Alternatively, the
consumer may remain anonymous. In another aspect, the
transaction request includes a time limit. In this embodiment, the
payment may be accepted if received within the time limit, and
optionally rejected if not received within the time limit. If the
payment is rejected, in one embodiment the rejection is reported to
the merchant to help ensure the service or goods are not provided
to the customer. The transaction request also may include a short
or detailed description of the good(s) and/or service(s) to be
provided the consumer. The transaction request also includes, in
some embodiments, the amount to be paid by the consumer.
Hansen para. 12.
08. In one aspect, the method includes providing the merchant with
a transaction identifier that corresponds to the transaction request.
The method may further include receiving the payment if the
customer provides the transaction identifier that corresponds to the
transaction request. The transaction identifier may include, in one
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embodiment, an alpha-numeric string of characters. Hansen para.
13.
09. In some embodiments, it may be desirable to provide the
customer with a confirmation that payment has been made. This
confirmation may take many forms, including a confirmation
number and/or a printed receipt. In one aspect, the confirmation
includes a certificate. The certificate may comprise a wide range
of certificates, including a gift certificate, an electronic ticket such
as for use with a transportation company, an award, a redeemable
coupon, and the like. Thus, in some embodiments, the good(s)
and/or service(s) is rendered upon payment. Hansen para. 14.
10. In still other embodiments, the processor of the payment
transfer, such as the payment provider, may guarantee the funds.
This may be useful, for example, when the goods or services are
to be provided to the consumer upon the consumer rendering
payment to the payment provider, but prior to transfer of the funds
from the payment provider to the merchant. Other uses and
reasons for guaranteed funds also fall within the scope of the
present invention. Hansen para. 15.
11. A merchant may choose to utilize a payment provider to collect
payments and/or enroll consumers on its behalf. Thus, as used
herein, a payment provider is any entity that is capable of
accepting payments from consumers and/or enrolling consumers,
and crediting the accepted payments to the appropriate merchant.
In some cases, a payment provider is an entity that provides both
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POS device 110 and payment provider control 130. In other
cases, a payment provider is an entity that provides payment
provider control 130, and accepts inputs from POS devices 110
operated by third parties. In yet other cases, a payment provider is
an entity that provides POS device 110 that interacts directly with
merchant controls 140 without utilizing payment provider control
130. Further, in some cases a payment provider can also be an
enrollment provider, where the payment provider not only accepts
payments destined for the merchant, but also enrolls consumers in
the goods and/or services of the merchant. In yet other instances,
a payment provider can provide only enrollment and not payment
acceptance services. Hansen para. 36.
12. In some embodiments of the present invention, merchants 140
issue unique identifiers which are associated with a good or
service that are electronically transmitted to payment provider
130, where they can be stored in database 135. These identifiers
may be associated with specific consumers. For example, when
requesting a good or service, the merchant may create an account,
an identifier is then associated with the account and issued to the
consumer. Alternatively, the identifiers may be associated with a
good or service, but not to any given consumer. For example, the
identifiers may be associated with some type of stored value, such
as phone time, dollars and the like. This value may be redeemed
simply by presenting the identifier to the merchant. The
identifiers also may be associated with a particular transaction of
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goods or services between a merchant, and a specific consumer.
Hansen para. 3 7.
13. Referring to FIG. lB, a logical diagram of system 100 of FIG.
1 A is illustrated. Central to system 100 is payment provider
control 130. In particular embodiments, payment provider control
130 is comprised of a host computer capable of accessing one or
more databases 135. Further, payment provider control 130
facilitates data transfer between one or more merchants 140 and
one or more POS devices 110, or other computer terminals.
Hansen para. 40.
14. POS devices 110 communicate with payment provider control
130 in order to facilitate transactions. For example, when ready to
make a payment, a consumer may enter their consumer identifier
or a transaction identifier into POS device 110. This information
is transmitted to payment provider control 130 where any relevant
information regarding the required payment is transmitted back to
POS device 110. For instance, POS devices 110 may present a
screen with the identifier and the amount of payment required to
receive a good or service from merchant 140. In some cases, the
consumer may not yet have an identifier and may simply request
to purchase a good or service from a merchant 140. For instance,
the consumer may wish to purchase phone time from a certain
phone company. In such cases, the consumer makes a request to
purchase phone time from a certain merchant 140. This
information is entered into POS device 110. POS device 110 may
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then display payment options for that provider as received from
payment provider control 130. For example, payment in
increments of $5, $10, $25 and $50 may be accepted. Upon
receipt of payment, an identifier is issued to the consumer.
Hansen para. 41.
15. At the time of payment, other funds may also be collected. For
example, the payment provider may charge and collect a fee for its
services. As another example, applicable taxes may be calculated
and collected. These taxes may be calculated by payment
provider control 130 in combination with database 135 and may
include tax tables for various locations throughout the country.
When tendering payment, the consumer may provide information
on his residential address, such as a zip code. This information is
transmitted to payment provider control 130 that performs a look-
up in database 13 5 to determine the appropriate tax rate. Payment
provider control 130 then computes the tax and sends the tax
information to POS 110. The payment amount, taxes, and any
service fees may then be displayed to the consumer on a display
screen. Hansen para. 4 2.
Brock
16. Brock is directed to facilitating the purchase of products on
credit and a system for implementing such a method. Brock para.
1.
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1 7. Brock describes a dealer's collection rate being determined at
step S410. According to an embodiment of the invention, the
collection rate is determined by calculating the percentage of the
total amount of periodic payments collected for all of the dealer's
transaction across all of the dealer's collateral pools for the
previous nine months versus the total amount of periodic
payments due for the same period. Once the calculation rate has
been calculated, a determination is made at step S412 as to
whether or not the collection rate exceeds a predefined
performance threshold. Again, in an embodiment of the
invention, the preferred performance threshold is a collection rate
of 80% or higher. If the collection rate does not exceed the
performance threshold, the dealer must choose whether or not to
cap the collateral pool at step S414. Brock para. 52.
ANALYSIS
Claims 1-10, 21-30, and 32 rejected under 35 US.C. § 101 as directed to
non-statutory subject matter
Claim 1 recites a system that makes associations, provides and receives
data and makes determinations based on the data, and two systems that each
receives and sends data. None of the limitations recite implementation
details for any of these steps, but instead recite functional results to be
achieved by any and all possible means. Data reception, analysis and
modification, and transmission are all generic, conventional data processing
operations to the point they are themselves concepts awaiting
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implementation details. The sequence of data reception-analysis-
transmission is equally generic and conventional. The ordering of the steps
is therefore ordinary and conventional. Although the performance of the
steps are portioned among three processors, the steps do no more than send
messages between those processors, so there is nothing inventive about how
the steps are so apportioned. The remaining claims merely describe
parameters among the data, system locations, and performance repetitions,
with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First,
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat else
is there in the claims before us? To answer that question,
consider 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. [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., 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 Corp. Pty. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner determines the
claims are directed to a system of receiving a payment via a staged
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transaction and identifying the originator of the staged transaction. Final
Act. 12.
Although the Court in Alice made a determination as to what the claims
were directed to, we determine that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a system for receiving a
payment for a pre-existing financial obligation of a payer to a payee via a
staged transaction, and for identifying an originator of the staged transaction
after satisfaction of the staged transaction. Although claim 1 is nominally a
system claim, the limitations are all process steps performed among three
systems. Claim 1 is thus really a process claim with limitations as to which
processor performs which steps. The steps in claim 1 result in receiving a
payment for a pre-existing financial obligation of a payer to a payee via a
staged transaction, and for identifying an originator of the staged transaction
after satisfaction of the staged transaction. The Specification at paragraph 5
recites that the invention relates to a system for receiving a payment for a
financial obligation of a payer via a staged transaction, and for identifying an
originator of the staged transaction after satisfaction of the staged
transaction. Thus, all this evidence shows that claim 1 is directed to
receiving a payment for a financial obligation of a payer via a staged
transaction, and for identifying an originator of the staged transaction after
satisfaction of the staged transaction, i.e. transaction processing. This is
consistent with the Examiner's determination.
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It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of
transaction processing is a fundamental business practice long prevalent in
our system of commerce. The use of transaction processing is also a
building block of ingenuity in sales and finance. Thus, transaction
processing, like hedging, is an "abstract idea" beyond the scope of§ 101.
See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of transaction
processing at issue here. Both are squarely within the realm of "abstract
ideas" as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
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transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (determining claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, and transmitting data.
The remaining claims merely describe parameters among the data,
system locations, and performance repetitions. We conclude that the claims
at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[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. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[ t ]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
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"[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." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, and transmit 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.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants' method claims
simply recite the concept of transaction processing as performed by a
generic computer. To be sure, the claims recite doing so by advising one to
identify a transaction, send and receive communications regarding payment
by a third party, collect statistics on payment collection results, and send and
receive messages among three subsystems. But, this is no more than
abstract conceptual advice on the parameters for such transaction processing
and the generic computer processes necessary to process those parameters,
and do not recite any particular implementation. Although the performance
of the steps are portioned among three processors, the steps do no more than
send messages between those processors, so there is nothing inventive about
how the steps are so apportioned.
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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. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of transaction processing under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of transaction processing 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.
Although all claims are nominally structural claims, they
are no different from [equivalent] method claims in substance.
The [steps in the claims] recite the abstract idea implemented
on a generic computer; the system claims recite a handful of
generic computer components configured to implement the
same idea. This Court has long "warn[ ed] ... against"
interpreting § 101 "in ways that make patent eligibility 'depend
simply on the draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellants' argument that:
With regard to the first step of the Alice framework, the Office
Action alleges that the claims are directed to the abstract idea of
"a system of receiving a payment via a staged transaction and
identifying the originator of the stage transaction." Office
Action, p. 12. Because a system is an apparatus, such cannot be
an abstract idea. Therefore, step one of the Alice framework is
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satisfied by the claims, as they are not directed in an abstract
idea.
Br. 5. Although all claims are nominally structural claims, they are no
different from method claims in substance. Alice, supra held that in such a
case, the result does not depend on the draftsman's art.
We are not persuaded by Appellants' argument that:
With regard to the second step of the Alice framework, the
Office Action alleges that "significantly" more is not present in
the claims. First, contrary to the specific allegation in the
Office Action at pp. 14-15 that the recitations of the claims are
executed with generic computers, multiple particular non-
generic machines are indeed used to execute the recitations of
the claims. Specifically, claim 1 recites three particular non-
generic machines: "a collection system," "a provider system,"
and "a provider subsystem." Each of these claims are particular
non-generic machines because they are configured as
specifically recited by the claims and as further detailed by the
specification to perform particular functions as also recited by
the claims and detailed by the specification. Therefore, there
machines are not generic, as they have been configured for a
special purpose. See Ex Parte Ravena!, Appeal 2016-003604,
Application 12/506,921, April 1, 2016, Decision on Appeal at
p. 6. This is one of the factors identified by the USPTO Alice
guidance as constituting "significantly more."
Br. 5. Simply labelling generic equipment does not alter their nature.
Computing devices defined by the function they perform, where those
functions are generic, remain generic computing devices.
Ameranth argues that the recited central processing unit is not a
generic central processing unit, but is instead a particular
processing unit which, with application software, provides
synchronized second menus across different devices in the
system. It urges that the term "central processing unit" must be
construed to include the functions ascribed to that unit in the
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claims, and that the central processing unit cannot be a generic
processor. But, as noted above, construing a claim term to
include features of that term that are already recited in the
claims would make those expressly recited features redundant.
argues that the recited central processing unit is not a generic
central processing unit, but is instead a particular processing
unit which, with application software, provides synchronized
second menus across different devices in the system. It urges
that the term "central processing unit" must be construed to
include the functions ascribed to that unit in the claims, and that
the central processing unit cannot be a generic processor. But,
as noted above, construing a claim term to include features of
that term that are already recited in the claims would make
those expressly recited features redundant.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237-38 (Fed. Cir. 2016)
(citation omitted).
We are not persuaded by Appellants' argument that:
[W]hile the alleged abstract idea is "a system of receiving a
payment via a staged transaction and identifying the originator
of the staged transaction," the above recitation limit the scope
of the claim's use of that alleged abstract idea to downstream
analysis of collection success rates for such originators. The
claim does not remotely appear to subsume the alleged abstract
idea of identifying the originator of any staged transaction, but
rather focuses on the more specific and particular purpose of
determining and, by implication tracking, success rates of such
originators. At least by inclusion of the above specific
recitations which are not well-understood, routine, and
conventional in the field, preemption of use of the alleged
abstract idea is protected against, therefore further establishing
"significantly more" under the US PTO' s Alice guidance, in
addition to the aforementioned use of particular machines to
implement the claims.
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Br. 6. That the claims do not preempt all forms of the abstraction or may be
limited to the abstract idea in a particular setting do not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61
(2015). "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo[/Alice] 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).
Claims 1-10, 21-30, and 32 rejected under 35US.C.§l12(a) as lacking a
supporting written description within the original disclosure
The Examiner finds three limitations to be unsupported by the originally
filed disclosure. Final Act. 9. We are persuaded by Appellants' arguments
as to the first two limitations. Br. 3--4. As to the third limitation, which is
limitation [ 1] [ fJ in claim 1, we are not persuaded by Appellants' argument
that "Applicant believes the particular methodology recited in the claims
would be the first and most immediate one contemplated by a person of
ordinary skill in the art after reading the disclosure in paragraph 59." Br. 5.
As Examiner finds,
Applicant's own arguments acquiesce that the disclosure of
[0059] can be interpreted to disclose "multiple methods of
calculating a 'success rate"' and that no specific methodology
has been disclosed. Appellant seems to generally assert that the
claimed undisclosed method "would be the first and most
immediate one contemplated by an person of ordinary skill in
the art after reading the disclosure of paragraph 59." (Appeal
Brief pg. 5) This seems to be more of an opinion - a wish for
fulfillment- rather than disclosure of an invention which
Appellant was in possession of at the time of filing.
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Ans. 6. Appellants contend one of ordinary skill would have found the
particular formula in the limitation obvious, and produce no evidence to
support this. This is insufficient to show possession.
[The written description] test requires an objective inquiry into
the four comers of the specification from the perspective of a
person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the
invention claimed.
Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F. 3d 1336, 1351 (Fed. Cir.
2010) (en bane).
One shows that one is "in possession" of the invention by
describing the invention, with all its claimed limitations, not
that which makes it obvious. One does that by such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
that fully set forth the claimed invention. Although the exact
terms need not be used in haec verba, the specification must
contain an equivalent description of the claimed subject matter.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(citations omitted).
Claims 1-10, 21, 22, 25-30, and 32 rejected under 35 US.C. § 103(a) as
unpatentable over Hansen and Brock
We adopt the Examiner's findings from Final Action 16-39 and Answer
6-9 and reach similar legal conclusions. For example, we adopt and accept
the Examiner's construction of the meaning of "different pairs" to mean one
party is different "across pairs" (Answer 7-8), thereby making unpersuasive
Appellants' argument that in Brock "the payee is a constant" (Br. 7).
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Claims 23 and 24 rejected under 35 USC§ 103(a) as unpatentable over
Hansen, Brock, and Applicant Admitted Prior Art
We adopt the Examiner's findings from Final Action 16-39 and Answer
6-9 and reach similar legal conclusions.
CONCLUSIONS OF LAW
The rejection of claims 1-10, 21-30, and 32 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
The rejection of claims 1-10, 21-30, and 32 under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure is
proper.
The rejection of claims 1-10, 21, 22, 25-30, and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Hansen and Brock is proper.
The rejection of claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Hansen, Brock, and Applicant Admitted Prior Art is
proper.
DECISION
The rejection of claims 1-10, 21-30, and 32 is 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) (2011).
AFFIRMED
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