Ex Parte Hammad et al

Patent Trial and Appeal Board

Aug 24, 2016

12257212 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/257,212 10/23/2008 Ayman Hammad
66945 7590 08/26/2016
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
16222U-033870US 6627
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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
j lhice@kilpatrick.foundationip.com
EDurrell@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte A YMAN HAMMAD and PA TRICK FAITH
Appeal2014-001071 1
Application 12/257 ,2122
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--4, 7-9, and 12-30. We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Mar.
29, 2013) and Reply Brief ("Reply Br.," filed Oct. 14, 2013), and the
Examiner's Answer ("Ans.," mailed Aug. 12, 2013) and Final Office Action
("Final Act.," mailed Aug. 30, 2012).
2 Appellant identifies Visa U.S.A., Inc. as the real party in interest. App.
Br. 3.
Appeal2014-001071
Application 12/257,212
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
Appellants' claimed invention relates to "a method and a system for
conducting purchase transactions through a central processing entity through
escrow." Spec. i-f 16.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for a payment transaction using a central
processing entity, the method comprising:
[(a)] receiving a purchase request message for the
transaction, from a consumer;
[ (b)] aggregating the purchase request message into a
supply request message, wherein the supply request message
comprises purchase request messages from multiple consumers;
[ ( c)] sending to multiple suppliers the supply request
message, wherein the multiple suppliers supply goods or
services;
[(d)] receiving from the multiple suppliers multiple supply
response messages;
[ ( e)] sending to multiple issuers a financing request
message, wherein the financing request message includes
information about the multiple supply response messages, and
wherein the multiple issuers are issuers that hold credit or debit
accounts of the consumer;
[(t)] receiving from the multiple issuers multiple financing
response messages, wherein the multiple financing response
messages include options to use reward points earned by the
consumer;
[ (g)] selecting, by a computer at the central processing
entity, a supplier from the multiple supply response messages
and selecting one or more issuers from the multiple financing
response messages to form a purchasing contract, wherein the
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Application 12/257,212
central processing entity processes authorization requests and
performs clearing and settlement services;
[(h)] sending an acceptance message to the selected
supplier and to the one or more selected issuers;
[(i)] receiving a set of payments for the transaction from
the one or more selected issuers;
[U)J holding the set of payments for the transaction in
escrow until a confirmation is received; and
[(k)] releasing the set of payments for the transaction, to
the selected supplier after receiving the confirmation.
REJECTION
Claims 1--4, 7-9, and 12-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rowan (US 2008/0243666 Al, pub. Oct. 2, 2008) and
Official Notice.
ANALYSIS
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1, 16, 18, and 19 under 35 U.S.C. § 103(a) at
least because Rowan does not disclose or suggest "aggregating the purchase
request message into a supply request message, wherein the supply request
message comprises purchase request messages from multiple consumers,"
i.e., limitation (b ), as recited in claim 1 and similarly recited in independent
claims 16, 18, and 19. App. Br. 16-20. The Examiner relies on paragraphs
2, 18, and 61 of Rowan as disclosing the argued limitation. Final Act. 2.
We have reviewed the paragraphs of Rowan relied on by the Examiner. Yet
we fail to see anything that teaches or suggests the argued limitation.
By way of background, Rowan describes an online buyer/seller
matching system called "GEMS." Rowan i-f 9. The system is defined by an
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ability to receive a buyer's requirements and immediately construct options
specific to his needs based on broader inputs from any number of sellers. Id.
The system holds considerable information about each seller at data store
307, which can be searched by application processor 306 in light of a
buyer's specific inquiry. Id. i-fi-f 11, 15, Figs. 3--4. Data store 307 stores the
system-related data, which includes seller database 431, market rules
database 434, and transaction database 434. Id. i-fi-121-24, Fig. 4.
Application processor 306 includes transaction management 423, assembly
of options 424, and price construction 425. Id. i-f 18, Fig. 4.
To make a purchase, a buyer 302 accesses the GEM system through
communications interface 304 and triggers transaction management 423. Id.
i-fi-139--40. Transaction module 423 collects the buyer criteria, such as item,
quantity, times of purchase, and geography of purchase, and then assembly
of options module 424 searches the seller database 431 based on the buyer
criteria. Id. i-fi-140-41. Assembly of options module 424 returns a list of any
sellers in the data store who meet the buyer's criteria (e.g., sell the desired
service or good, sell in geography required, etc.). Id. i1 42. For each seller
on the list, price construction module 425 searches database 431 to
determine the price of the items desired for purchase. Id. i-f 43. The list of
sellers and prices are sent to buyer terminal 302. Id. i145. If the buyer
selects "purchase" on any option or options presented to him, that
information is stored in transaction database 433. Id. i1 46.
The Examiner takes the position that "it is clear that Rowan teaches
[limitation (b)]," because Rowan "specifically teaches the 'aggregating of
buyers' (paragraph 2)" and "the mechanism of such buyers, namely the
'Communications Processor 305 interacts with communications interface
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304 to receive inputs and forward output communications to buyers and
sellers.' (paragraph 18, emphasis added)." Ans. 10.
Rowan, at paragraph 2, describes that there are several known
mechanisms for matching the buyer and seller online, including aggregating
of buyers. But we agree with Appellants that Rowan provides no further
description of how such aggregation would occur or how such aggregation
relates, if at all, to Rowan's GEM system. See App. Br. 16. Rowan, at
paragraph 18, describes that multiple buyers and multiple sellers may access
the GEM system. But we fail to see anything in the cited portions of Rowan
that discloses or suggests "aggregating the purchase request message into a
supply request message, wherein the supply request message comprises
purchase request messages from multiple consumers," as recited in claim 1
and similarly recited in claims 16, 18, and 19. Instead, Rowan describes a
system wherein a purchase request message from a single consumer is
matched with seller information stored on a database to provide a list of
sellers that fit with the criteria of the buyer's request. See, e.g., Rowan
iTiT 18-19, 40-45.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 16, 18, and 19 under 35 U.S.C. § 103(a). For the
same reasons, we also do not sustain the Examiner's rejection of dependent
claims 2--4, 7-9, 12-15, 17, and 20-30. Cf In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent
claims from which they depend are nonobvious").
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NEW GROUND OF REJECTION
Claims 1--4, 7-9, and 12-30 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. We select independent claim
1 as representative of the claims being rejected.
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 [these] concepts." Alice Corp., Pty.
Ltd. v. CLS Bank Intl., 134 S. Ct. at 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)).
The first step in this analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. (citing Mayo, 132 S.
Ct. at 1296-97). If so, in the second step, the elements of the claims
"individually and 'as an ordered combination'" are considered to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (citing Mayo, 132 S. Ct. at
1298, 1297). Stated differently, the second step is 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."' Id. (quoting Mayo, 132
S. Ct. at 1294).
Appellants' Specification describes the invention as being "directed to
a method and a system for conducting purchase transactions through a
central processing entity through escrow." Spec. i-f 16. Claim 1 recites a
"method for a payment transaction" comprising eleven steps: (1) receiving a
purchase request message for the transaction, (2) aggregating the purchase
request message into a supply request message, (3) sending the supply
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request message to multiple suppliers, ( 4) receiving multiple supply
response messages from the multiple suppliers, ( 5) sending to multiple
issuers a financing request message, ( 6) receiving multiple finance response
messages, the messages including options to use reward points earned by the
consumer, (7) selecting a supplier from the multiple supply response
messages and selecting one or more issuers from the multiple financing
response messages to form a purchasing contract, (8) sending an acceptance
message to the selected supplier and to the one or more selected issuers, (9)
receiving a set of payments for the transaction from the one or more selected
issuers, (10) holding the set of payments for the transaction in escrow until a
confirmation is received, and (11) releasing the set of payments for the
transaction, to the selected supplier after receiving the confirmation.
Here, the subject matter of the claims, as reasonably broadly
construed, is about contractual relations - conducting a payment
transaction. Similar to Bilski v. Kappas, 561 U.S. 593 (2010), which
involved a method of entering into contracts to hedge risk in commodity
prices, and Alice, which involved methods and systems for "exchanging
financial obligations between two parties using a third-party intermediary to
mitigate settlement risk" (Alice, 134 S. Ct. at 2356), the contractual relations
at issue constitute "a fundamental economic practice long prevalent in our
system of commerce." Bilski, 561 U.S. at 611, 130 S. Ct. 3218; see Alice,
134 S. Ct. at 2356, 2357. Thus, the claims are directed to an abstract idea.
The claims' invocation of a "computer" adds no inventive concept.
The computer functionality is generic: selecting, by a computer at the central
processing entity, a supplier from the multiple supply response messages.
There is no further detail. The computers in Alice were receiving and
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sending information over networks, connecting the intermediary to the other
institutions involved, and the Court found the claimed role of computers
insufficient. Alice, 134 S. Ct. at 2358 ("the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention").
Therefore, claim 1 is rejected under 35 U.S.C. § 101. For similar
reasons, we also reject claims 2--4, 7-9, and 12-30.
DECISION
The Examiner's rejection of claims 1--4, 7-9, and 12-30 under
35 U.S.C. § 103(a) is reversed.
A NEW GROUND OF REJECTION has been entered for claims 1--4,
7-9, and 12-30 under 35 U.S.C. § 101.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the Examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
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).
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REVERSED; 37 C.F.R. § 41.50(b)
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