Ex Parte Gray et al

Patent Trial and Appeal Board

Jul 30, 2018

14327537 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/327,537 07/09/2014
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
08/01/2018
FIRST NAMED INVENTOR
William J. Gray
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.
5109-LPV-0048 5715
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM J. GRAY, WILLIAM G. HOHLE, CARL LARKIN and
LEE J. PEART 1
Appeal2017-004761
Application 14/327,537
Technology Center 3600
Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 12-16 and 18. Claims 19-31 are
withdrawn. See Claims Appendix. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to a virtual purchase with an
on-line merchant. See Abstract.
1 The Appellants name III Holdings 1, LLC as the real party in interest
(App. Br. 2).
Appeal2017-004761
Application 14/327,537
Claim 12 is illustrative:
12. A method, comprising:
a wallet server receiving a request to initiate payment to a
merchant for a transaction, wherein the wallet server maintains
personal information about a user of a smart card issued by an issuing
entity;
in response to the request, the wallet server providing the
personal information to a merchant server of the merchant, wherein
the personal information is usable by the merchant server to request
authorization of the transaction from the issuing entity;
the wallet server receiving, from the issuing entity, a data
item for authorizing the transaction; and
the wallet server obtaining a digital signature of the data
item from the smart card, wherein the digital signature is usable by the
issuing entity to authorize the transaction.
Appellants appeal the following rejections:
Claims 12-16 and 18 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter (Final Act. 6-
8).
Claims 12-16 and 18 are rejected under 35 U.S.C. 112, first
paragraph, as failing to comply with the written description requirement
(Final Act. 8-11 ).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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ANALYSIS
Re} ection under § 101
Issue 1: Did the Examiner err in rejecting the claims as being
directed to non-statutory subject matter?
With respect to independent method claim 12, the Examiner
determines that the claims are directed to an abstract idea, particularly, "an
idea 'of itself similar to concepts held by the courts to be abstract ideas,
e.g., collecting and comparing known information or obtaining and
comparing intangible data" (Final Act. 7). The Examiner adds that "the
inclusion of 'wallet server' as performing the steps amounts to a generic
computer structure performing conventional activity such as
receiving/obtaining and requesting data" (id.). We agree with the Examiner
for at least the reasons infra.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
(1972) ("Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work."). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the
Court stated that "to transform an unpatentable law of nature into a patent
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eligible application of such a law, one must do more than simply state the
law of nature while adding the words 'apply it."' Id. at 1294 (citation
omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. 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." Id. If the claims are directed to a
patent-ineligible concept, then 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, 132 S.
Ct. at 1298, 1297).
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. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). 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 and
internal quotation marks omitted). The Court in Alice noted that "' [ s ]imply
appending conventional steps, specified at a high level of generality,' was
not 'enough' [in Mayo] to supply an 'inventive concept."' Alice, 134 S.Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
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Step one: Are the claims at issue directed to a patent-ineligible concept?
Appellants contend they fail "to see how an idea that recites
interaction with a decidedly non-abstract item ( a smart card) can be abstract"
(App. Br. 7). Appellants further contend that "the proffered rationale for the
claim being directed to an [idea of itself] is devoid of substance ... [and]
[ t ]his cannot be a valid test for subject matter eligibility" (id.).
We disagree with Appellants' contentions. Instead, we find that the
Examiner has provided a sufficient response supported by a preponderance
of evidence (Final Act. 7-8; Ans. 3-6). As such, we refer to, rely on, and
adopt the Examiner's determinations and conclusions set forth in the
Answer. Our discussions here will be limited to the following points of
emphasis.
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
properly analyzed the claims using the Mayo/Alice two-step framework,
consistent with the guidance set forth in the USPTO's "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec.
16, 2014), in effect at the time the rejection was made, i.e., on November 2,
2015. For example, the Examiner notes concepts such as "collecting and
comparing known information or obtaining and comparing intangible data"
(Final Act. 7). Furthermore, the Examiner cites Cyberfone and finds that
"[l]ike Cyberfone, Appellants' 'smart card' is merely a conventional generic
source of data that adds nothing of significance" (Ans. 3, also citing
Appellants' Spec. ,r 11 ). See also Spec. ,r 6 ("many have suggested the use
of 'smart cards"').
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Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC 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"); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011).
In Cyberfone, the Court held that "using categories to organize, store,
and transmit information is well-established," and "the well-known concept
of categorical data storage, i.e., the idea of collecting information in
classified form, then separating and transmitting that information according
to its classification, is an abstract idea that is not patent-eligible." Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992
(Fed. Cir. 2014).
Because the Examiner has shown that the claims are directed to
collecting, comparing, and obtaining information, we agree with the
Examiner that the claims are directed to an abstract idea.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
To establish a prima facie case, the Examiner must next identify all of
the additional elements in each claim and explain why these elements,
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individually or collectively, do not add significantly more than the abstract
idea. Alice, 134 S. Ct. at 2355. Here, the Examiner determines that "the
inclusion of a 'wallet server' as performing the steps amounts to a generic
computer structure performing conventional activity" (Final Act. 7, citing
Blinn at al. US 7,155,411 Bl). The Examiner further determines that
Appellants' specification, i.e., paragraphs [8] and [9], shows that the wallet
server functionalities, e.g., receiving and obtaining, are routine and
conventional (see Ans. 5). Again, we agree with the Examiner.
Appellants contend that the claims amount to significantly more
because "[b ]y relying on a wallet server to facilitate integration of smart card
support, the present invention is able to overcome [certain] security
deficiencies as an account number is not transmitted, but rather a digital
signature" (App. Br. 8). Appellants further contend that, "[l]ike the claims
in DDR Holdings, ... 'the claimed solution is necessarily rooted in
computer technology' ... [because] [t]he claims[] are directed to a specific
way of integrating smart-card functionality through a wallet server" (App.
Br. 8-9), and "the Examiner is not addressing the actual claim language"
(id.).
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed "an inventive concept" for resolving a "particular Internet-
centric problem." In contrast, we find Appellants' method (claim 12) does
not provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Because we find all claims on appeal merely use a
generic computer or processor, i.e., wallet server, as a tool which is used in
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the way a computer normally functions, we conclude that the claims fail to
impart any discernible improvement upon the computer or processor, nor do
Appellants' claims solve "a challenge particular to the Internet" as
considered by the court in DDR, 773 F.3d at 1256-57. Thus, we conclude
Appellants' claims are not like the claim held patent-eligible by the court in
DDR, in which the claimed invention was directed to the "challenge of
retaining control over the attention of the customer in the context of the
Internet," such that:
Instead of the computer network operating in its normal, expected
manner by sending the website visitor to the third-party website that
appears to be connected with the clicked advertisement, the claimed
system generates and directs the visitor to the above-described hybrid
web page that presents product information from the third-party and
visual "look and feel" elements from the host website.
DDR, 773 F.3d at 1258-59. Here, Appellants have not shown that the
claimed "wallet server" is operating in unexpected manner. Thus, we find
unavailing Appellants' arguments that the claims are like DDR Holdings
(App. Br. 8-9), given that no convincing "inventive concept" for resolving a
"particular Internet-centric problem" is identified by Appellants.
Furthermore, it is plainly evident that the Examiner considered the
limitations in the claims and the Examiner's analysis is tethered to the actual
claim language (see Final Act. 7 and Ans. 5-6). As noted supra, the
Examiner properly and reasonably determined that claim 1 is directed to
collecting and comparing known information or obtaining and comparing
intangible data (Final Act. 7), which is simply a higher level of abstraction.
Cf Apple, Inc., 842 F.3d at 1240-1241 ("An abstract idea can generally be
described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
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or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.")
Appellants also contend that "the Examiner has not provided any
supporting evidence for asserting that all claimed functions 'amount[] to a
generic computer structure performing conventional activity"' (App. Br. 10)
because "[ a ]lthough the Examiner has cited to Blinn ... Blinn [] fails to
constitute prior art as the priority date of the present disclosure antedates the
filing data of Blinn" (id.).
Although we agree with Appellants that Blinn2 may not antedate the
priority date3 of the present disclosure, we highlight that even if Blinn is not
proper evidence to illustrate the well-understood, routine, and conventional
nature of the functionality of a "wallet server," the Examiner also cites
Appellants' specification as evidence (see Ans. 5).
Specifically, the Examiner finds that "[t]he first two steps are routine
and conventional wallet server functionality ... The recited actions of
'receiving' and 'obtaining' are performed by a generic 'wallet server,' not
any smart-card functionality" (Ans. 5, citing Appellants' Spec. ,r,r 8 and 9).
Such an analysis is a factual determination. See Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
2 Blinn et al. (US 7,155,411 Bl, issued December 26, 2006, filed September
28, 2000)
3 The pending application claims priority to US Provisional Application
60/174,564 (filed January 5, 2000), which states on page 7 that "EMV
(Europay Mastercard Visa) is a standardized protocol to make credit and
debit transactions using smart cards."
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factual determination."). We find the Examiner's noting the generic nature
of the component parts recited in the claims provides sufficient evidence of a
generic wallet server used to implement the abstraction. See Credit
Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1057 (Fed. Cir.
2017) ("Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.). See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017) (explaining that "[o]ur law demands more" than claim
language that "provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it").
For example, Appellants' specification states in the Background of the
Invention section:
Additionally, existing digital wallet technology, such as the digital
wallet technology ... is being more frequently used to provide a
means to users to utilize transaction card products ( e.g., credit, charge,
debit, smart cards, account numbers and the like) to pay for products
and services on-line. In general, digital wallets are tools which store
personal information ... in order to facilitate electronic commerce or
other network interactions .... Presently, the digital wallet general
server is comprised of a Web server and a database server which
centrally houses the user's personal and credit card information,
shopping preferences and profiles of on-line merchants.
Spec. ,r 8; see also Spec. ,r 9. In other words, Appellants' specification
notes that existing, i.e., conventional, digital wallet technology integrates
with smart cards to pay for products on-line. In the Briefs, Appellants' fail
to rebut the aforementioned objective evidence. Thus, we find unavailing
Appellants' contention that that "the Examiner has not provided any
supporting evidence for asserting that all claimed functions 'amount[] to a
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generic computer structure performing conventional activity"' (App. Br. 10),
given the unrebutted citations to Appellants' specification.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." See Alice, 134 S. Ct. at 23 59 ( concluding claims "simply
instruct[ing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer" not patent eligible); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)
( claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software
components arranged to implement an abstract concept [ of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("[ s ]imply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible" (internal citation omitted)).
Because Appellants' independent claim 12 is directed to a patent-
ineligible abstract concept and does not recite "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
the claim as well as the respective dependent claims under 35 U.S.C. § 101
as being directed to non-statutory subject matter in light of Alice and its'
progeny.
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For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
Objection to Drawings and Specification
Ordinarily an objection is petitionable and a rejection is appealable to
the Board. When the issue of new matter is the subject of both an objection
and a rejection, the issue is appea1ab1e. See MPEP § 2163.06(II). Here, the
Examiner has made a new matter objection to both the drawings and the
Specification (see Final Act. 4-6). In this case, we find that the objection to
the drawings/specification and the§ 112, first paragraph rejection tum on
the same issue of whether the '"newly introduced" claimed subject matter
finds adequate support in the original disclosure.
As such, we will decide both the objections and the rejection because
the objections to the drawings/specification are sufficiently intertwined with
the written description rejection before us, such that it necessitates our
resolution of the drawings/specification objections as an appealable matter
as part of this appeal.
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Rejection under§ 112,first paragraph
Objections to Drawings and Specification
Issue 2: Did the Examiner err in finding that amending a
specification to add matter formerly contained in references incorporated by
reference in the original Specification is new matter, i.e., not supported by
the original specification?
The Examiner finds that "Applicants' specification, drawings, claims,
etc. does not describe the claimed invention [] in sufficient detail" (Final
Act. 10).
Appellants contend that "the specification leverages content from
multiple applications/patents, which are incorporated by reference ... Fig. 4
and paragraph [0037 .1] were added to the specification via amendment in
order to incorporate subject matter from these [] references" (App. Br. 13),
thus the claims are supported by the original disclosure. We agree with
Appellants.
Appellants' original specification contained a clear intent to
incorporate by reference several references (see Spec. ,r 32) and the
Examiner has not shown that the material added by amendment is
inconsistent with the material incorporated by reference. "Essential
material," which includes that necessary to provide a written description of
the invention as required by the first paragraph of§ 112, may be
incorporated by reference to a United States patent. 3 7 C.F .R. § 1.57 ( c );
Manual of Patent Examining Procedure (MPEP) § 608.0l(p) (8th ed., Rev.
7, Jul. 2008). In this case, Appellants rely on several incorporated United
States patents/applications, and may do so for written description support.
The Examiner has not made specific findings directed to whether the
disclosures of US Patents/Applications Nos. 6,581,830, 7,343,351,
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7,203,838, and 09/656,061, for example -including the material
incorporated by reference - conveys to the ordinary artisan that Appellants
had possession of the claimed subject matter as of the filing date of that
application (July 9, 2014).
As such, we cannot sustain the rejection under§ 112, first paragraph,
nor the objections to the Drawings and Specification.
DECISION
We affirm the Examiner's§ 101 rejection.
We reverse the Examiner's§ 112, first paragraph, rejection and the
intertwined objections to the Drawings and Specification.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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