Ex Parte HIRSON et al

Patent Trial and Appeal Board

Oct 22, 2018

12772937 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/772,937
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
05/03/2010
10/24/2018
FIRST NAMED INVENTOR
RonHIRSON
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.
BOKU-P032 4887
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
ariana@matterlightip.com
s tephen @matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RON HIRSON, ERICH L. RINGEW ALD, and DAVID YOO
Appeal2017-007777
Application 12/772,937 1
Technology Center 3600
Before HUNG H. BUI, KARA SZPONDOWSKI, and MICHAEL ENGLE,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-3, 5-11, and 21-24. Claims 4 and
12-20 have been canceled. Claims App 'x. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Boku, Inc. App. Br.
3.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
November 9, 2016; Examiner's Answer ("Ans.") mailed March 2, 2017;
Final Office Action ("Final Act.") mailed May 6, 2016; and original
Specification ("Spec.") filed May 3, 2010.
Appeal2017-007777
Application 12/772,937
STATEMENT OF THE CASE
Appellants' invention relates to "systems and methods [] provided to
facilitate online transactions via mobile communications." Spec. ,r 11;
Abstract.
Claim I-the sole independent claim pending on appeal-is
illustrative of Appellants' invention, as reproduced below:
1. A method comprising:
receiving, with an interchange computing device, a price
point request over the network interface device including a phone
number;
identifying, with the interchange computing device, a
mobile carrier of a phone number in response to the price point
request;
determining, with the interchange computing device, a set
of discrete price points supported by the mobile carrier, wherein
the user of the phone number is chargeable via the mobile carrier
at the set of discrete price points; and
providing, with the interchange computing device, the set
of discrete price points as a response to the price point request
over the network interface device;
receiving, with the interchange computing device, a
charge request having an identification, an identification of a
merchant, and an amount according to a selected one of the
discrete price points through an application programming
interface of an interchange computing device over a network
interface device;
associating, with the interchange computer system, a
unique request identifier with the charge request, the unique
request identifier assigned to represent the charge request;
and
charging, with the interchange computing device, the user
of the phone number according to the amount specified in the
charge request by transmitting at least one message according the
selected one of the discrete price points to a server of the mobile
carrier identified for the phone number;
2
Appeal2017-007777
Application 12/772,937
initiating, with the interchange computing device,
charging the user of the phone number according to the amount
specified in the charge request, wherein there is a delay between
the initiating of the charging and completion of the charging, the
delay being associated with the unique request identifier and
being represented by a status associated with the unique request
identifier;
transmitting, with the interchange computing device, a
response to the charge request over the network interface device,
the response to the charge request including the request identifier
and being transmitted before the completion of the charging;
receiving, with the interchange computing device, a status
request including the request identifier through the application
programming interface of an interchange computing device over
the network interface device;
determining, with the interchange computer system, the
status associated with request identifier of the status request; and
providing, with the interchange computing device, the
status of the charge request in response to the status request,
wherein the status indicates whether the charging is currently
pending or has been completed.
App. Br. 20-21 (Claims App'x).
EXAMINER'S REJECTION
Claims 1-3, 5-11, and 21-24 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 2--4.
DISCUSSION
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
3
Appeal2017-007777
Application 12/772,937
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those 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," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
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. ( citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1-3, 5-11, and 21-24 under 35 U.S.C. § 101, the
Examiner determines these claims are directed to an abstract idea of
"charging a user of a phone number a determined amount" which is
considered as "a fundamental economic practice" similar to fundamental
economic and transactional practices identified in Alice and Bilski v.
Kappas, 561 U.S. 593 (2010)- concepts that courts have characterized as
abstract ideas. 3 Final Act. 2-3; Ans. 3. According to the Examiner, "the
3 See (1) "The 2014 Interim Guidance on Patent Subject Matter Eligibility,"
published on Dec. 16, 2014 (79 Fed. Reg. 74618); (2) "July 2015 Update:
Subject Matter Eligibility" (July 2015 Update); (3) "May 2016 Subject
4
Appeal2017-007777
Application 12/772,937
claim recites a process in which price points are determined, and a user is
charged in response to a charge request, the charge request being used to
automate [ online] transactions via mobile communications" and "such a
process is a fundamental economic practice inasmuch as it is foundational
and basic in the realm of commerce to charge a user that is a part of a
transaction." Final Act. 3.
The Examiner also determines
the claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because [i] the claims do not amount to an improvement to
another technology or technical field; [ii] the claims do not
amount to an improvement to the functioning of a computer
itself; [iii] the claims ... nothing more than requiring a genetic
computer to perform computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Final Act. 2-3.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea within the meaning of Alice
because ( 1) "the plain focus of the claims is on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity" and (2) the claims "are directed to a specific
Matter Update" (May 4, 2016 Memorandum) at
https :i iwww. uspto. gov /patentilaws-and-regulations/ examination-
policy/ subject-matter-eligibilitv; (4) USPTO June 2017: Interim Eligibility
Guidance Quick Reference Sheet (identifying abstract idea examples of
"certain methods of organizing human activity"). See also Bilski, 561 U.S.
593; Alice, 134 S. Ct. 2361 (concurrence from Justice Sonia Sotomayor
joined by Justices Ruth Bader Ginsburg and Stephen G. Breyer).
5
Appeal2017-007777
Application 12/772,937
improvement to the way computers operate, embodied in carrier-specific
price point set determination and communication of the entire set
followed by receiving a charge request for a selected charge point of the
set" similar to the claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1339 (Fed. Cir. 2016). App. Br. 11-12. According to Appellants,
carrier-specific price point set determination and
communication of the entire set followed by receiving a
charge request for a selected charge point of the set recited in
the claims is a specific type of process designed to improve the
way a computer functions and as such the ability to query for a
set of discrete price points supported by the mobile carrier
and to receive a charge for one of the price points. See
paragraphs 00198 and 00211 [of the Specification].
App. Br. 17.
Appellants' arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellants' arguments.
Ans. 2---6. As such, we adopt the Examiner's findings and explanations
provided therein. Id. At the outset, we note Appellants' reliance on Enfish
is misplaced. In Enfzsh, the claims were directed to an improved database
architecture, i.e., a self-referential table - "a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory." Enfish, 822 F.3d at 1339. Such a data structure has several
distinct advantages over conventional relational databases, including:
( 1) faster searching of data than would be possible with the conventional
relational model (see US 6,151,604 "Enfish '604 patent," 1:55-59, 2:66-
3 :6); (2) more effective storage of data other than structured text, such as
storage of images and unstructured text (Enfzsh '604 patent, 2:16-22, 2:46-
6
Appeal2017-007777
Application 12/772,937
52); and (3) more flexibility in configuring the database (Enfzsh '604 patent,
2:27-29).
In Enfzsh, the Federal Circuit characterized the "directed to" inquiry
as a stage-one filter to the claims, "considered in light of the specification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, 822 F.3d at 1335 (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). In particular, the
Federal Circuit interpreted the "directed to" inquiry as asking "whether the
claims are directed to an improvement to computer functionality versus
being directed to an abstract idea." Enfish, 822 F.3d at 1335 (emphasis
added). "[T]he focus of the claims is on the specific asserted improvement
in computer capabilities (i.e., the self-referential table for a computer
database)." Id. Based on the "plain focus of the claims," the Federal Circuit
reached the conclusion that Enfzsh 's claims were directed to "a specific
improvement to the way computers operate, embodied in the self-referential
table," and, as such, were more than a mere abstract idea. Id. at 1336.
Because the Federal Circuit determined step 1 of the Alice two-step analysis
was satisfied, Alice step 2 was not required. Id.
In contrast to Enfish, Appellants' claim 1 is directed to an abstract
idea of "charging a user of a phone number a determined amount" which is
considered as a "fundamental economic practice." Final Act. 2. As
correctly recognized by the Examiner, "determining price points and
charging a user" to facilitate online transactions via mobile communications
is "foundational and basic in the realm of commerce" (Final Act. 5), like:
(1) the risk hedging in Bilski, 561 U.S. 593, (2) the intermediated settlement
in Alice, 134 S. Ct. at 2356-57, (3) verifying credit card transactions in
7
Appeal2017-007777
Application 12/772,937
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011), (4) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet
in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
( 6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015). Determining price points and charging a
user during online transactions via mobile communications is also a building
block of a market economy and, as such, is an "abstract idea" beyond the
scope of§ 101. See Alice, 134 S. Ct. at 2356.
Separately, we note Appellants' claim 1 does not improve the
performance of a computer or solve a problem specific to computers or
computer networks. Appellants' Specification and arguments do not
demonstrate the claims "improve the way a computer stores and retrieves
data in memory," as the claims in Enfzsh did via a "self-referential table for a
computer database." See Enfzsh, 822 F.3d at 1336, 1339. Instead, as
correctly recognized by the Examiner, ( 1) "the claims ... are merely
directed to economic or other tasks for which a computer is used in its
ordinary capacity" and (2) "such capacities are commercial in nature, and
amount to improvement to business aspects, rather than technical aspects of
the invention," i.e., "the purported improvement is directed to a commercial
improvement and not a technical improvement." Ans. 4.
In fact, neither the steps recited in Appellants' claim 1 nor the rest of
Appellants' Specification supply any description or explanation as to how
these data processing steps are intended to provide: (1) a "solution ...
8
Appeal2017-007777
Application 12/772,937
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," as explained by the
Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014); (2) "a specific improvement to the way computers
operate," as explained in Enfzsh, 822 F.3d at 1336; or (3) an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
performance of the system itself," as explained in Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that claims 1-3, 5-11, and
21-24 are directed to an abstract idea of "determining price points and
charging a user" to facilitate online transactions via mobile communications
which is "a fundamental economic practice" similar to fundamental
economic and transactional practices identified in Alice, Bilski, buySAFE,
and Ultramercial.
Alice/Mayo-Step 2 (Inventive Concept)
Appellants do not present arguments against the second step of the
Alice inquiry. Instead, Appellants argue "[b ]ecause the claims are not
directed to an abstract idea under step one of the Alice analysis, we do not
need to proceed to step two of that analysis." App. Br. 18. We disagree
with Appellants for the reasons discussed above. According to the Supreme
Court in Alice, 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."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 72-73). Under current Federal Circuit precedent, an "inventive
9
Appeal2017-007777
Application 12/772,937
concept" under Alice step 2 can be established by showing, for example, that
the patent claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution
([ e.g.,] enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements recited
in Appellants' claim 1 that contains any "inventive concept" or adds
anything "significantly more" to transform the abstract concept (i.e.,
"charging a user of a phone number a determined amount") into a patent-
eligible application. Alice, 134 S. Ct. at 2357. We agree with the Examiner
that added computer elements ( such as a computing device and network
interface device) cannot transform the abstract idea into a patent eligible
invention. As our reviewing court has observed, "after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256
( citing Alice, 134 S. Ct. at 2358)).
10
Appeal2017-007777
Application 12/772,937
Because Appellants' claim 1 is directed to a patent-ineligible abstract
concept and does not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of claims 1-
3, 5-11, and 21-24 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-3, 5-11, and 21-24
under 35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner's Final Rejection of claims 1-3,
5-11, and 21-24 under 35 U.S.C. § 101.
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
11