Ex Parte Hjelmvik

Patent Trial and Appeal Board

Mar 22, 2018

12377749 (P.T.A.B. Mar. 22, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/377,749 02/17/2009 Torbernt Hjelmvik 1515-1092 9215
466 7590 03/26/2018
YOUNG fr THOMPSON
EXAMINER
209 Madison Street BORISSOV, IGORN
Suite 500
Alexandria, VA 22314 ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
DocketingDept@young-thompson.com
y andtpair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORBERNT HJELMVIK
Appeal 2016-004136
Application 12/377,749
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY and
ROBERT J. SILVERMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, 16—24, 26, and 27. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
BACKGROUND
Appellant’s invention is directed “to a method for the purchase,
payment and validation of a journey by means of transportation means
wherein the traveler books the trip or trips via a mobile phone.” Spec. 2.
Appeal 2016-004136
Application 12/377,749
Claim 1 is illustrative:
1. A method of purchasing a ticket for a journey on a
transportation means, paying for the journey and validating the journey on
said transportation means, comprising:
booking for the traveler a journey L on first transportation means (6)
via a two way communication device by first storing an account K that can
be billed in a database (2) of a superordinate data system (1), wherein the
two way communication device has an identification number R that is stored
in said database (2) coupled to the account K, wherein the journey L is
stored in said database (2) coupled to the stored identification number R, and
wherein a transceiver device (13) provided in or in the close proximity of the
first transportation means (6) communicates with the database (2) of the
superordinate system (1);
second, purchasing for the traveler the journey L via the traveler’s the
two way communication device by virtue of the traveler connecting the
traveler’s two way communication device to the data system (1) in which the
journey L is stored in said database (2) coupled to the stored identification
number R;
third, a validation unit (5) that includes a mechanical reader provided
in or in the close proximity of the first transportation means (6) reading the
identification number R from the two way communication device;
fourth, ascertaining in a database (8) provided in or in the close
proximity of the first transportation means (6) that the journey L tied to the
identification number R has been purchased, wherein information has been
transferred from the database (2) of the superordinate data system (1) to the
database (8); and
fifth, a signaling device (12) provided in or in the close vicinity of the
first transportation means (6) indicating whether the journey L has been
bought;
wherein the second, third, fourth and fifth steps are repeated for
additional journeys,
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Application 12/377,749
wherein upon said transceiver device (13) not being successively
coupled to the database (2) of the superordinate data system (1) in order to
receive information relating to purchased journeys L tied to different
identification numbers R, the identification number R together with an
identification of the journey L is cause to be stored in said database (8)
provided in or in the close proximity of the first transportation means (6) for
later control against the database (2) of the superordinate data system (1),
and
wherein (a) the two way communication device is a mobile telephone
(3) and a telephone number of the mobile telephone is the identification
number R, and the telephone number is transferred to said validating device
(5), or (b) the two way communication device includes a transponder (4) that
provides the identification number R when read.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Schultz et al.
Puliese III
Ochiai
Linde
US 5,679,943
US 6,044,353
US 2002/0188557 Al
WO 02/29738 A2
Oct. 21, 1997
Mar. 28, 2000
Dec. 12, 2002
April 11,2002
Appellant appeal the following rejections:
Claims 1, 2, 16—24, 26, and 27 under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 1, 2, 16—24, 26, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Linde, Pugliese III, Schultz and further in view of Ochiai.
Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Linde,
Pugliese III, Schultz, Ochiai, and further in view of Official Notice.
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Application 12/377,749
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 Banklnt’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., 132 S. Ct. 1289, 1296—97
(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
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 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—595 (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.”).
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Application 12/377,749
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 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
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.
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. CyberSource
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”).
ANALYSIS
Rejection under 35 U.S.C. §101
The Examiner holds that the claims were directed to the concept of
purchasing a ticket for a journey and validating the purchase and is similar to
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Application 12/377,749
the concepts involving human activity relating to commercial practices such
as hedging that have been found by the courts to be abstract ideas. Final.
Act. 2. The Examiner also holds that the claimed method simply describes
the concept of gathering, combining and outputting data by reciting steps of
storing and ascertaining or combining data. The gathering and combining
merely employs mathematical relationships to manipulate existing
information to generate additional information in the form of modified
stored data outputting information confirming the purchase. Ans. 4-5.
The Examiner also holds that the steps of the claim further describe
the abstract idea but do not make it less abstract. The Examiner finds that
the additional limitations including the hardware limitations do not offer a
meaningful limitation beyond the general linking the use of the method to a
particular technological environment because the hardware is known and
operates in a conventional manner. Final Act. 4. The Examiner also finds
that when considered separately and as an ordered combination, the claim
elements do not provide an improvement to another technology or technical
field nor do they provide an improvement to the functioning of the computer
itself. Ans. 6.
Appellant argues that claim 1 includes elements beyond the abstract
idea such as a two-way communication device, a transceiver device, a
validation unit, databases, a mechanical reader, and a signaling device and
that these specific pieces of hardware are tied together as claimed to define a
method for purchasing a ticket for a journey and do more than mere
manipulation of data. The Examiner in considering these elements of
claim 1, determines that even though they are not directed to an abstract
idea, they are not significantly more than the abstract idea because they are
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Application 12/377,749
known elements that operate in a conventional manner. In this regard, the
Examiner considered these hardware elements in the second part of the Alice
analysis. Appellant does not contest the finding that the hardware elements
recited in claim 1 are known elements and operate in a conventional manner.
As such, we are not persuaded of error on the part of the Examiner by this
argument.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 and claim 2 dependent therefrom.
We will sustain the remaining claims for the same reason.
Rejection under 35 U.S.C. §103(a)
The Appellants argue that the prior art does not disclose storing data
in a database near where it is to be used when the data cannot be stored
where it is normally stored. App. Br. 14. We agree.
The Examiner relies on Schulz for teaching a device configured to
store data and transmit said stored data at any time to a remote device,
thereby suggesting the recited functionality. Final. Act. 8. The rejection
does not address the recitation in the claims that the storage positively takes
place "upon said transceiver device not being successively coupled to the
data base of the subordinate data system.” Therefore, the Examiner has not
established that Schulz discloses or suggests this subject matter.
In view of the foregoing, we will not sustain this rejection as it is
directed to claims 1 and 2.
Independent claims 16 and 21 do not recite that storage takes place
upon said transceiver device not being successively couple to the database of
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the subordinate data system. As such, Appellant arguments regarding this
limitation is not applicable to claims 16 and 21.
Appellant argues that the identification card disclosed in Pugliese is
not a hand held communication device, and that Ochiai does not disclose
using parameters K, L and R to verify an already bought journey. These
arguments are not persuasive because they are directed to the teachings of
the individual references and the rejection is based on the teachings of a
combination of references. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). In this regard, Linde is relied on for teaching a
hand held communication device and Pugliese is relied on for teaching
verification of an already bought journey. Final. Act. 5-7.
We are not persuaded of error on the part of the Examiner by the
argument that Pugliese does not disclose a card reader because we find that
this subject matter is clearly taught at column 6, line 46 of this reference.
In view of the foregoing, we will sustain this rejection as it is directed
to claims 16—24, 26, and 27.
DECISION
We affirm the Examiner’s § 101 rejection.
We do not affirm the Examiner’s § 103 rejections of claims 1 and 2.
We affirm the Examiner’s §103 rejection of claims 16—24, 26, and 27.
TIME PERIOD
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Application 12/377,749
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)(1) (2009).
ORDER
AFFIRMED
R-J-S
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