Ex Parte FLITCROFT et al

Patent Trial and Appeal Board

Jun 29, 2018

14150231 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/150,231 01/08/2014
21839 7590 07/03/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Daniel Ian FLITCROFT
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.
103 2668-000064 1007
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL IAN FLITCROFT and GARRY LYONS
Appeal 2016-006718
Application 14/150,231
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
non-final decision rejecting claims 1-20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ). Appellants appeared for oral hearing on June
7, 2018.
1 The real party in interest is Orbis Patents Ltd. App. Br. 2.
Appeal2016-006718
Application 14/150,231
BACKGROUND
Appellants' invention is directed to a credit card system and method.
Spec. i12.
Claim 1 is illustrative:
1. A computer-implemented method for an electronic
transaction system using controlled payment numbers, the
method comprising:
assigning, in a central processing system of a controlled
payment number (CPN) issuer, a unique CPN to a user, the
CPN configured to be a payment instrument for a user in
financial transactions for at least one of goods and services;
receiving, by a receiving device and from at least one
funding entity, (i) identification of a plurality of merchants
designated for the CPN by the user with which transactions
using said CPN are permitted and (ii) a predefined allocated
monetary amount to be associated with at least one of the
designated merchants;
associating, by the central processing system of the CPN
issuer, each predefined allocation with a designated merchant
such that each designated merchant is linked to a respective
maximum monetary spending value and the CPN;
storing data linking the associated CPN, the designated
merchants, and the maximum monetary spending value
associated with the respective designated merchants in a
database of the central processing system;
issuing, by the central processing system of the CPN
issuer, the unique CPN to the user;
receiving, by a receiving device, an electronic
authorization request from a merchant device for a transaction
conducted with the CPN, said authorization request including a
transaction amount;
determining, by the central processing system of the CPN
issuer, if the merchant device is associated with a designated
merchant associated with the CPN;
when the central processing system of the CPN issuer
determines that the merchant associated with the merchant
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Application 14/150,231
device is a designated merchant, further determining, by the
central processing system of the CPN issuer, (i) if the
transaction amount is within the maximum monetary spending
value linked to the designated merchant and (ii) if the
transaction complies with other CPN controls, where
applicable;
permitting, by the central processing system, the
electronic transaction process or denying said electronic
transaction based on said determination of (i) and (ii); and
transmitting, by a transmitting device, an authorization
response indicating either permission or denial.
Appellants appeal the following rejection:
Claims 1-20 are rejected under 35 U.S.C. § 101 directed to non-
statutory subject matter.
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: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int '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, 75-78 (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
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Application 14/150,231
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); 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
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 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 182 n.7, "tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores," and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
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. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
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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 ceiiain 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).
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.
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
The Examiner held that the claims are directed to performing
transactions using controlled payment numbers ("CPN s") which is a
fundamental economic practice (Non-Final Act. 3). The Examiner found
that the recited elements involved in the recited process undertake their roles
in performance of their activities according to generic functionalities which
are well-understood, routine, and conventional. (Non-Final Act. 4).
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We agree with the Examiner and further hold that the claimed steps
(assigning, receiving, associating, storing, issuing, permitting, and
transmitting) are all steps related to the collection, analysis and display of
data and therefore are similar to claims found to be directed to an abstract
idea as discussed above and are therefore directed to an abstract idea on that
basis as well.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are not directed to a fundamental
economic practice or a method of organizing human activities. We agree
and adopt the Examiner's response to these arguments found on pages 3--4
of the Answer. In any case, even if the claims are not directed to a method
of organizing human activities or a fundamental economic practice, the
claims are clearly directed to the collection and analysis of data and are thus
directed to an abstract idea on that basis.
We are also not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner erred because the Examiner failed
to provide evidence that the claims recite conventional, routine, and well-
known elements. We agree with this finding of the Examiner and note that
this finding is supported by the disclosure in Appellants' own Specification
at paragraphs 71, 73, and 76.
Appellants also argue that it is not enough for the Examiner to state
that the claims include generic components to establish that the claims do
not include significantly more than the abstract idea. However, the
Examiner did not rely only on the finding that the claims include generic
components in determining that the claims do not include significantly more
than the abstract idea. The Examiner also found that the claims do not
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Application 14/150,231
include an improvement to another technology or technical field, do not
improve the functioning of the computer itself or include any meaningful
limitations beyond generally linking the use of the abstract idea to the
particular technological environment. Non-Final Act. 3.
We find unpersuasive Appellants' argument that the claims improve
the conventional electronic process. In particular, Appellants argue that the
claims relate to a complex electronic process that implements CPN s in a
particular manner and that solves a particular problem existing in the
software and networking arts. Appellants argue that the instant claims are
similar to the claims in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). In Enfzsh the Federal Circuit held that the claims at issue were
not directed to an abstract idea because the claims at issue focused not on
asserted advances in uses to which existing computer capabilities could be
put, but on a specific type of data structure, i.e., a self-referential table for a
computer database, designed to improve the way a computer carries out its
basic functions of storing and retrieving data. Id. at 1335-36. The alleged
improvement that Appellants tout does not concern an improvement to
computer capabilities but instead relates to an alleged improvement in
implementing an electronic payment process for which a computer is used as
a tool in its ordinary capacity. In this regard, Appellants overstate the
alleged similarities of the claims at issue to E11fish. The claims at issue
in Enjzsh, and the thrust of its analysis, were directed to specific
improvements in the way that computers operate, which is not at issue here.
See id. at 1336.
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We are not persuaded of error on the part of the Examiner by
Appellants' arguments that the Examiner has not established preemption and
that the claims recite novel and useful subject matter.
"\Vhile preemption may signal patent ineHgible subject rnatter, 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.), cert. denied, 136 S. Ct. 701 (2015) ("[T]hat the 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, "[w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa, 788 F.3d at 1379.
To the extent Appellants are arguing that the limitations of claim l
necessarily amount to '"significantly more" than an abstract idea because the
claimed apparatus is allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent. Although the second step in the
Alice/lvlayo framework is tenned a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
We do not agree with Appellants that the Examiner ignored the
recitations in claims 14 and 20. The Examiner specifically states on page 3
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of the Non-Final Action that a similar analysis was done to all the claims
including the dependent claims thereby stating that the recitations in claims
14 and 20 was considered.
We have considered the other arguments of Appellants but find them
unpersuasive.
In view of the foregoing, we will sustain the Examiner's rejection of
claims 1, 14, and 20. We will also sustain the rejection as it is directed to
the remaining claims because the Appellants have not argued the separate
eligibility of these claims.
DECISION
We affirm the decision of the Examiner.
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)(l) (2009).
ORDER
AFFIRMED
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