Ex Parte Foster et al

Patent Trial and Appeal Board

Sep 27, 2018

14066342 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/066,342 10/29/2013 James Eugene Foster
132906 7590 10/01/2018
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
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.
70481.1098_82053 9025
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES EUGENE FOSTER and CHAD MAURICE HOFFMAN
Appeal2017-002602
Application 14/066,342
Technology Center 3600
Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
JASON M. REPKO, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
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 reverse.
1 Appellants identify PAYPAL, Inc., as the real party in interest. App. Br. 1.
Appeal2017-002602
Application 14/066,342
STATEMENT OF THE CASE
Introduction
Appellants' disclosure relates to "online and/or mobile payments and
more particularly to a rapid online payment system." Spec. ,r 2. By using a
combination of a payment tag on a product or product advertisement and a
payment application, the time and complexity a user needs in making a
mobile purchase is reduced. Id. ,r 9. Exemplary claim 1 under appeal reads
as follows:
1. A rapid, computer-network based product selection
and payment system, comprising:
a non-transitory memory; and
one or more hardware processors coupled to the memory
and configured to read instructions from the memory to perform
the steps of:
generating and providing for display on a display device
a payment tag information provision page after receiving an
instruction to start a payment application;
capturing an image of a payment tag from a product
advertisement for a product using, at least in part, an image
capturing device and the payment tag information provisioning
page displayed on the display device;
decoding the image of the payment tag to retrieve
payment tag information;
automatically sending the payment tag information over a
network in response to retrieving the payment tag information
and, in response, receiving product information over the
network that is specific to the product and a plurality of non-
quantity product modifiers that are associated with the product;
generating and providing on the display device a first
payment user interface following the automatic sending of the
payment tag information over the network and the receiving the
product information and the plurality of non-quantity product
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Application 14/066,342
modifier options, wherein the first payment page user interface
on the display device includes:
the product information that is specific to the
product;
at least one non-quantity product modifier input
that provides for the selection of at least one of the
plurality of non-quantity product modifiers that is not a
quantity of the product; and
a request for payer account credentials that have
been automatically filled in at least one payer account
credential input;
receiving a plurality of first input actions on the display
device that are directed to the first payment page user interface
and that provide at least one non-quantity product modifier
through the at least one non-quantity product modifier input,
and a submit input and, in response, sending the at least one
non-quantity product modifier and the payer account credentials
over the network; and
sending a payment confirmation for the product that
includes the at least one non-quantity product modifier over the
network.
App. Br. 17-18 (Claims Appendix).
The Examiner's Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 101 as not being
directed to patent-eligible subject matter. See Final Act. 3--4
Claims 1-20 stand rejected under the judicially created doctrine of
nonstatutory obviousness-type double patenting over claims 1-20 of U.S.
Patent No. 8,600,892 B2 (issued Dec. 3, 2013). See Final Act. 5.
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Application 14/066,342
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments that the Examiner erred. We are persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 for not being directed to patent-
eligible subject matter. We highlight and address specific findings and
arguments for emphasis as follows.
Section 101 Rejection
The Examiner determines claims 1-20 are patent-ineligible under
35 U.S.C. § 101 because the claims are directed to the fundamental
economic practice of"[ r ]apid online payment for product purchasing
transaction." Final Act. 3. The Examiner also determines that there is
nothing in the claims that is significantly more than this abstract idea,
because "the claims do not include an improvement to another technology or
technical field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment." Final Act. 3--4. The Examiner
also finds the recited claim features "are done by the generically recited
processor" and "are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry." Final Act. 4. The Examiner
thus analyzes the elements under the "second step" of the two-step Alice
framework.
Appellant's Arguments
However, Appellants argue that, under the first step of Alice, it is not
clear how these and other claim limitations related to
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Application 14/066,342
capturing an image of a payment tag from a product
advertisement for a product, decoding the image of the payment
tag to retrieve payment tag information, automatically sending
the payment tag information over a network and receiving back
product information and non-quantity product modifiers,
generating and providing a first payment user interface that
includes non-quantity product modifier inputs and auto-filled
payer account credentials, receiving non-quantity product
modifiers and a submit input that cause the non-quantity
product modifier and the payer account credentials to be
submitted, and sending a payment confirmation,
taken as a whole, "recites a 'fundamental' or 'basic' practice." App. Br. 8.
Similarly, Appellants argue these claim features are not "directed towards a
'certain methods of organizing human activities."' Id. In the Reply Brief,
Appellants argue their claims can readily be analogized to the claims in
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) and DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir.
2014), because "the specific, detailed process recited in the claims and
enabled by the interactions between the payer device, the display device, the
image capturing device, and the network, recites an improvement to the
advertisement-based product purchasing that cannot appropriately be
characterized as simply organizing human activity or a fundamental
economic practice." Reply Br. 10-12.
Discussion
We are persuaded by Appellants' arguments that the Examiner erred
in finding claims 1-20 patent-ineligible. The Supreme Court has long held
that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics, Inc.,
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569 U.S. 576, 598-99 (2013)). The "abstract ideas" category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2354--55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
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." Id. at 2355. 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. 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 Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). 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
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 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).
Turning to the first step of the Alice inquiry, we do not agree with the
Examiner's determination that the
series of steps are performed in the claims for the purpose of
"performing a rapid payment" involved particular behaviors
that are "interpersonal or intrapersonal activities" of "managing
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relationships or transactions between people, social activities,
or behaviors," "satisfying or avoiding a legal obligation," and
"sales activities or behaviors," which are subcategories of
activities that the precedential courts have found to be abstract
idea under "certain methods of organizing human activity." As
stated in the "Ultramercial, LLC v. Hulu, LLC and
WildTangent" decision.
Ans. 3. There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous cases."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); see
also Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F .3d 1288, 1294 (Fed.
Cir. 2016) ( explaining that, in determining whether claims are patent-eligible
under § 101, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided"). The
Federal Circuit also noted that "examiners are to continue to determine if the
claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2. The Examiner's generic, conclusory statement that the claim
relates to the abstract idea of"[ r ]apid online payment for product purchasing
transaction," which is "a fundamental economic practice and certain
methods of organizing human activities" (see Final Act. 3) does not address
the actual claim as a whole. See also App. Br. 9-11.
As the claimed method is not directed to an abstract idea, we do not
need to proceed to Alice step two. See Enfish, 822 F.3d at 1339 (citing
Alice, 134 S. Ct. at 2355). Accordingly, because we are persuaded the
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Application 14/066,342
Examiner erred in finding claim 1, as well as independent claims 8 and 15,
which include similar limitations, recite patent-ineligible subject matter, we
do not sustain the rejection of claims 1-20 under 35 U.S.C. § 101.
Non-statutory Double Patenting Rejection
In the Final Rejection, the Examiner rejected claims 1-20 on the
ground of nonstatutory obviousness-type double patenting over claims 1-20
of U.S. Patent No. 8,600,892. Final Act. 5. On November 28, 2016, a
terminal disclaimer was filed and approved. Because terminal disclaimer
obviates the Examiner's rejection, we do not reach the merits of this
rejection.
DECISION
We reverse the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 101.
REVERSED
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