Ex Parte Dogin et al

Patent Trial and Appeal Board

Jan 24, 2018

13571401 (P.T.A.B. Jan. 24, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/571,401 08/10/2012 Jennifer R. Dogin 0076412-000066 9856
21839 7590 01/26/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER R. DOGIN, SHOSHANA ROSENFIELD,
and BRIAN MAW
Appeal 2016-001947
Application 13/571,401
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 1—8 and 26—33. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-001947
Application 13/571,401
BACKGROUND
Appellants’ invention is directed to a method of reducing fraud in
transactions from a reservation resulting from a reservation by providing
payment details prior to the fulfillment of the reservation. Spec. 11.
Claim 1 is illustrative:
1. A method of processing a reservation, comprising:
receiving, by a receiving device of a reservation system,
reservation information for a reservation, wherein the
reservation information includes at least a consumer identifier,
a merchant identifier, payment information of a consumer, and
a date and/or time;
storing, in a database of the reservation system, the
received reservation information;
transmitting, by a transmitting device of the reservation
system, the consumer identifier and the date and/or time to a
merchant, associated with the merchant identifier, whereat the
reservation is to be fulfilled;
identifying, by a processing device of the reservation
system, fulfillment of the reservation at the merchant; and
subsequent to identifying reservation fulfillment of the
reservation at the merchant, transmitting, by the transmitting
device of the reservation system, the payment information of
the consumer, included in the stored reservation information, to
the merchant, associated with the merchant identifier, for
effecting payment of a financial transaction that was initiated at
the merchant, as a result of reservation fulfillment.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Katz US 2007/0083400 A1 Apr. 12,2007
Granucci US 2008/0071587 A1 Mar. 20,2008
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Application 13/571,401
Appellants appeal the following rejections:
Claims 1—8 and 26—33 are directed to non-statutory subject matter
under 35 U.S.C. § 101 for reciting patent-ineligible subject matter.
Claims 1—8 and 26—33 under 35 U.S.C. § 103(a) as unpatentable over
Granucci in view of Katz.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). In
accordance with that framework, we first determine whether the claim is
“directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
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rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices {Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611);
mathematical formulas (Parker, 437 U.S. at 594—95); and basic tools of
scientific and technological work {Gottschalk, 409 U.S. at 69). On the
patent-eligible side of the spectrum are physical and chemical processes,
such as curing rubber {Diamond, 450 U.S. at 184 n.7), “tanning, dyeing,
making waterproof cloth, vulcanizing India rubber, smelting ores,” and a
process for manufacturing flour {Gottschalk, 409 U.S. at 69).
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A]
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method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101.”).
ANALYSIS
Rejection under 35 U.S.C. §101
The Examiner held that the claims are directed to the abstract idea of
creating a reservation and payment contract and concluded that this is a
fundamental economic practice. Final Act. 2; Ans. 2. The Examiner also
held that the claims were directed to organizing human activity. Ans. 4.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims are not directed to an abstract idea but
rather a method of providing, in a very specific manner, an efficient
technology based solution for placing reservations. Claim 1, recites a
method in which a reservation system receives reservation data, stores that
data, transmits a portion of that data to a merchant, processes data to identify
fulfillment of the reservation and subsequently transmits data to the
merchant to effect payment. As such, claim 1 is directed to data collection,
analysis and storage. The Federal Circuit has instructed that “[t]he concept
of data collection, recognition, and storage is undisputedly well-known,” and
“humans have always performed these functions.” Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014). As such, we agree with the Examiner’s determination that
the claimed concept is directed to an abstract idea.
In regard to the second step of Alice, the Examiner held that the other
aspects of claim 1 in addition to the abstract idea do not affect an
improvement to another technology or technical field, do not improve the
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functioning of the computer itself and do not move beyond a general link of
an abstract idea to a particular technological environment. Final Act. 3. The
Examiner further held that the claim amounts to no more than stating create
a reservation and payment contract on a computer and send it over a network
and, thus, when the elements of claim 1 are taken both individually and as a
combination, the computer components perform purely generic computer
functions. Ans. 5.
We do not agree with the Appellants that claim 1 provides
technological improvements and is analogous to the claims in DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
In that case, the Court stated that a claim may amount to more than any
abstract idea recited in the claim when it addresses a business challenge,
such as “retaining website visitors,” where that challenge is particular to a
specific technological environment, such as the Internet. Appellants contend
that the claim 1 is analogous to the DDR claims because it is necessarily
rooted in computer technology because it recites a network of specific
tangible computer devices programmed in specific ways and in
communications with each other. For example, the Appellants argue, the
transmitting device communicates with the database after a reservation has
been fulfilled to retrieve payment information from the stored reservation
information and transmits the payment information to the merchant.
We agree with the Examiner that the transmitting and communicating
recited in claim 1 and advanced by the Appellants as demonstrating that the
claim is rooted in computer technology and provides technological
improvements is no more than functions of a generic computer. Using a
computer to take in data, compute a result, and return the result to a user
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amounts to electronic data query and retrieval—some 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.
In DDR, the court stated that “the . . . patent’s claims address the
problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an advertisement
and activating a hyperlink.” DDR Holdings, 773 F.3d at 1257. This was
done in the claim by serving a composite page with content based on the link
that was activated to serve the page. In contrast, claim 1 performs a process
by a generic computer to solve problems associated with reservation fraud in
a payment process.
Likewise, Appellants’ argument that claim 1 does not preempt other
uses of the abstract idea is not persuasive of error by the Examiner. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[TJhatthe claims
do not preempt all price optimization or may be limited to price optimization
in the e-commerce setting do not make them any less abstract.”). And,
“[wjhere a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
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preemption concerns axe fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
Appellants also argue that claim 1 requires a special-purpose
computer because it requires special programming and is therefore
significantly more than any abstract idea. We do not agree. As we stated
above, claim 1 recites the transmission, storage and analysis of data which
are functions that any general purpose computer can perform. We note that
Appellants do not point to specific elements or steps in claim 1 that require a
special purpose computer. The claims do not specify a special purpose
computer, but rather describe routine and conventional steps to be carried
out by the equivalent of a generic computer programmed to perform the
steps of the claim (i.e., “apply it with a computer”). See Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir. 2015). The fact that a
generic computer requires relevant programming does not change the
programmed generic computer into a special purpose computer. See id. In
addition, although Appellants argue that the claim includes specifically
configured hardware components, we note that no such specifically
configured hardware components are recited in claim 1.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain the as it is directed to the
remaining claims because the Appellants have not argued the separate
eligibility of these claims.
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Appeal 2016-001947
Application 13/571,401
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that Katz does not disclose that the reservation
system sends required information to an associated credit acquisition or
other similar system to effect payment. We agree.
The Examiner finds that Granucci does not disclose transmitting by
the transmitting device of a reservation system the payment information of
the consumer. The Examiner relies on paragraph 51 and the abstract of Katz
for teaching payment information being provided during a reservation and
subsequently used as payment for the reservation. The Examiner reasons
that it would have been obvious to one of ordinary skill at the time of the
invention to use the payment information provided for the reservation to
fulfill payment of the goods or services subsequent to the reservation
fulfillment. The Examiner’s rejection does not specifically discuss the step
of the reservation system effecting payment by transmitting reservation
information. Paragraph 51 of Katz discloses that the registration system can
use a registered credit card to track dining points. There is no disclosure of
the reservation system effecting payment. Likewise, the abstract of Katz
discloses that the reservation can be pre-authorized by the reservation
system to pay for a reservation but also does not disclose effecting payment
of the reservation by the reservation system.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 and claims 2—8 dependent therefrom. We will also not sustain the
rejection as it is directed to claim 26 and claims 27—33 dependent therefrom.
DECISION
We affirm the Examiner’s § 101 rejection of the claims on appeal.
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We do not affirm the Examiner’s § 103 rejections of claims on appeal.
TIME PERIOD
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)(1) (2009).
AFFIRMED
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