Ex Parte Khan et al

Patent Trial and Appeal Board

Oct 30, 2018

13170903 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/170,903 06/28/2011
25297 7590 11/01/2018
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
FIRST NAMED INVENTOR
Mohammad Khan
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.
1615/48/2 4620
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
usptomail@jwth.com
datcheson@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMAD KHAN, PRADEEP KUMAR, and
KAUSHIKROY 1
Appeal2017-007909
Application 13/170,903
Technology Center 3600
Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
DAVID J. CUTITTA II, 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 1-8, 11-18, and 21, all the pending
claims in the present application. Claims 9, 10, 19, and 20 are canceled. See
Claims App'x. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants name as the real party in interest MasterCard International
Incorporated (App. Br. 2).
Appeal2017-007909
Application 13/170,903
The present invention relates generally to registering in a merchant
sponsored program using a near field communication (NFC) device.
See Abstract.
Claim 11 is illustrative:
11. A method for registering into a merchant sponsored
program using a near field communication (NFC) enabled
mobile device, the method comprising:
interfacing, via NFC, an NFC enabled mobile device
with a smart poster associated with a merchant sponsored
program to obtain a merchant sponsored program identifier and
a location identifier from the smart poster, wherein the
merchant sponsored program includes a loyalty program or a
payment program sponsored by a merchant;
receiving, at a merchant backend server, a request
message for merchant sponsored program registration
information from the NFC enabled mobile device, wherein the
request message is automatically communicated to the
merchant backend server by a wallet application in the NFC
enabled mobile device using the location identifier in response
to the interfacing between the NFC enabled mobile device and
the smart poster, wherein the request message from the NFC
enabled mobile device includes the merchant sponsored
program identifier;
obtaining, by the merchant backend server, merchant
sponsored program registration information associated with the
merchant sponsored program by using the merchant sponsored
program identifier to access a database containing the merchant
sponsored program registration information;
providing, by the merchant backend server, the merchant
sponsored program registration information to the NFC enabled
mobile device;
receiving, by the merchant backend server, a
confirmation message from the NFC enabled mobile device
confirming participation of a user associated with the NFC
enabled mobile device in the merchant sponsored program; and
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enrolling, by the merchant backend server the user
associated with the NFC enabled mobile device in the merchant
sponsored program upon receiving the confirmation message,
wherein the confirmation message indicates an agreement by
the user associated with the NFC enabled mobile device to
participate in the merchant sponsored program in accordance
with the terms and conditions of the merchant sponsored
program and is sent from the NFC enabled mobile device to the
merchant backend server after the NFC enabled mobile device
receives the merchant sponsored program registration
information;
providing, by the merchant backend server and via an
over the air (OTA) provisioning server, an electronic merchant
sponsored program softcard that is associated with the merchant
sponsored program to the NFC enabled mobile device in
response to receiving the confirmation message, and wherein
the electronic merchant sponsored program softcard includes an
electronic loyalty softcard, an electronic credit softcard, or an
electronic debit softcard that is stored within a wallet
application of the NFC enabled mobile device; and
wherein the merchant backend server includes a
hardware based processor.
Appellants appeal the following rejections:
Rl. Claims 1-8, 11-18, and 21 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter (Final Act. 2-4); and
R2. Claims 1-8, 11-18, and 21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Berglund (US 2008/0120128 Al, May 22, 2008),
Natrajan (US 2010/0094708 Al, Apr. 15, 2010), Wolf (US 2009/0055248
Al, Feb. 26, 2009), Overhultz (US 2006/0277104 Al, Dec. 7, 2006), and
Hertel (US 2009/0288012 Al, Nov. 19, 2009).
We review the appealed rejections for error based upon the issues
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Application 13/170,903
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under§ 1 OJ
Issue 1: Did the Examiner err in finding that the claims are directed
to patent-ineligible subject matter?
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under § 101. According
to Alice step one, "[ w Je must first determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355. "If the claims are not directed to an abstract idea [or other
patent-ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016). In analyzing whether a claim is directed to an
abstract idea, we look to other decisions where similar concepts were
previously found abstract by the courts. See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
In this regard, with respect to independent method claim 11, and
similarly, system claim 1 and computer readable medium claim 21, the
Examiner determines that the claims are directed to the abstract idea of
"comparing new and stored information and using rules to identify options"
(Final Act. 3, citing SmartGene and Bilski) and "human activity relating to
commercial practices" (id.).
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We find that the Examiner's cogent analysis, relying on judicial
examples, shows the Examiner provided an adequate basis for determining
that the claims are directed to an abstract idea.
Appellants challenge the Examiner's determinations on the grounds
that: ( 1) "the claims are rooted in computer technology ... [l ]ike the finding
in DDR Holdings" (App. Br. 12); (2) the claims "could not be performed
manually by a human ( e.g., interfacing the NFC mobile device with a smart
poster)" (id. at 14); and (3) the claims "do not pose a preemption risk of any
kind" (id. at 15).
Regarding Appellants' argument that their claims are like the claims
in DDR Holdings, the Examiner determines, and we agree, that "registration
into a loyalty program has been around before the internet and one only
needed to walk into a physical store to provide the necessary information to
the merchant for registration" (Ans. 3) and that "Appellant[s'] claims are
seen to be merely directed towards using devices to automate collection and
transmission of registration information ... of loyalty information from
merchant to customer" (id.). See Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(finding claims directed to collecting data, recognizing certain data within
the collected data set, and storing the recognized data drawn to an abstract
idea and noting that "humans have always performed these functions").
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." Specifically, the invention in DDR Holdings allowed a
host merchant website to maintain the look and feel of the host website when
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hyperlinking to outside merchants' product pages, i.e., "specify how
interactions with the Internet are manipulated to yield a desired result."
DDR Holdings, 773 F.3d at 1257-58.
In contrast, we find Appellants' method performed by a NFC enabled
mobile device, smart poster, backend server, and OTA server ( claim 1) 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 Holdings, 773 F.3d at 1257. Because we find all claims on appeal
merely use generic components as tools in such a way that these components
normally function, we conclude that the claims fail to impart any discernible
improvement upon the components; nor do Appellants' claims solve "a
challenge particular to the Internet" as considered by the court in DDR
Holdings, 773 F.3d at 1256-57. Thus, we find unavailing Appellants'
arguments that the claims are similar to DDR Holdings, given that no
convincing "inventive concept" for resolving a "particular Internet-centric
problem" is identified by Appellants. As such, we agree with the Examiner
that "the claims are not deeply rooted in computer technology so as to
overcome a problem specifically arising in computer technology" (Ans. 3).
Regarding Appellants' second argument supra that the claims "could
not be performed manually by a human (e.g., interfacing the NFC mobile
device with a smart poster)" (App. Br. 14), we agree with the Examiner that
"a fact showing that the claim requires a computer and is not a pure mental
process is not dispositive .... [We must] follow the two-part analysis from
Alice" (Ans. 5-6). The Examiner further notes that "the claims at issue are
still similar to the abstract idea identified by the courts in SmartGene" (id. at
6).
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For example, in SmartGene, the Federal Circuit concluded that claims
reciting methods and systems of selecting a therapeutic treatment regimen
for a patient with a known disease were directed to an abstract idea.
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x. 950 (Fed.
Cir. Jan. 24, 2014) (nonprecedential). The court concluded the claims at
issue were abstract because the claims did "no more than call on a
'computing device,' with basic functionality for comparing stored and input
data rules, to do what doctors do routinely" Id. at 954. The court explained
that "every [ claimed] step is a familiar part of the conscious process that
doctors can and do perform in their heads." Id. at 955. Analogously, in this
case, the Examiner determines that "one only needed to walk into a physical
store to provide the necessary information to the merchant for registration"
into a loyalty program (Ans. 3).
Therefore, we agree with the Examiner that the abstract idea to which
claim 1 is directed is similar to those claims found to be abstract ideas in
SmartGene, which the court described as "the mental steps of comparing
new and stored information and using rules to identify medical options."
SmartGene, 555 F. App'x. at 955.
Regarding Appellants' third argument supra that the claims "do not
pose a preemption risk of any kind" (App. Br. 15), the Examiner concludes,
and we agree, that "preemption is not a standalone test for patent eligibility
[in that] [p ]reemption concerns have been addressed by the [E]xaminer
through the application of the two-part framework from Alice Corp and
Mayo" (Ans. 9).
Although pre-emption "might tend to impede innovation more than it
would tend to promote it, 'thereby thwarting the primary object of the patent
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laws'" (Alice, 134 S. Ct. at 2354 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012))), "the absence of
complete preemption does not demonstrate patent eligibility" (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
"Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, ... preemption concerns are fully
addressed and made moot." Ariosa Diagnostics, 788 F.3d at 1379.
Thus, we agree with the Examiner that the claims are directed to an
abstract idea.
We now tum to the second step of the Alice framework: "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."' Alice, 134 S. Ct. at 2355
(alteration in original) ( quoting Mayo, 566 U.S. at 72-73).
The Examiner determines that "[t]he claim(s) do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because these elements ... all either further describe
the abstract idea ... or are merely insignificant extra-solution activity"
(Final Act. 3). Appellants fail to address these determinations in the Appeal
Brief and/or the Reply Brief.
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
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not 'enough' [in Mayo] to supply an 'inventive concept."' Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Because Appellants' independent claims 1, 11, and 21 2 are directed to
a patent-ineligible abstract concept and do not recite something
"significantly more" under the second prong of the Alice analysis, we sustain
the Examiner's rejection of these claims as well as respective dependent
claims 2-8 and 12-18 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its' progeny.
For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
Rejection under§ 103(a)
Claims 1--4, 6---8, 11-14, 15-18, and 21
Issue 2: Did the Examiner err in finding that the cited art collectively
teaches or suggests a location identifier, as set forth in representative
claim 11?
Appellants contend that: (1) in Berglund "there is no teaching or
suggestion of automatically communicating a request message to a merchant
backend server by a wallet application using a location identifier obtained
from a smart poster" (App. Br. 20); (2) "there is no teaching or suggestion in
Overhultz of obtaining a location identifier from the RFID tag ... [or]
communicating a request message to a merchant backend server by the
mobile device using the location identifier obtained from the smart poster"
(id. at 21 ); (3) "there is no teaching or suggestion in Hertel of a location
2 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent's media claims. Id.
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identifier" (id.); (4) and "that cited references Natrajan and Wolf ... are also
completely silent with regard to this element" (id. at 22). Specifically,
Appellants contend that "while Overhultz does generally disclose that RFID
reader may be configured to 'determine the location of an RFID tag within a
zone,' there is no teaching or suggestion of using a location identifier" as set
forth in claim 11 (id. at 20). For instance, claim 11 recites, inter alia, that
"the request message is automatically communicated to the merchant
backend server by a wallet application in the NFC enable mobile device
using the location identifier" (see claim 11) ( emphasis added) ( citations
omitted).
In other words, the claimed "location identifier" is used to navigate
the request message to the merchant backend server. Appellants'
Specification describes exemplary location identifiers, "e.g., an IP address, a
URL, a URI, and the like" (see Spec. 5: 17-20). Contrary to Appellants'
exemplary descriptions of the claimed "location identifier" and how it is
being used, Overhultz merely discloses that "the RFID readers may also be
configured to determine the location of an RFID tag within a zone" (see
Overhultz ,-J 25). Here, we find that Overhultz is merely referring to a
physical location of the RFID tag within a zone, as opposed to an IP address
of something else, particularly a backend server.
Although the Examiner points out what the individual references are
being used for, i.e., "Berglund teaches a request message that is
automatically communicated to a server by an RFID enabled mobile device,
Overhultz teaches obtaining identifiers and locations of RFID tags, and
Hertel teaches an e-wallet, on his NFC enables phone, automatically
requests [ send a message] ... in response to interfacing the NFC enabled
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mobile phone device with a access point [ smart poster]" (Ans. 11 ( citations
omitted); see also Final Act. 7-18), we find that the Examiner has not shown
where any of such teachings, individually or in combination, demonstrate
using a location identifier, e.g., an IP address, to communicate a message to
a backend server. We are therefore constrained by the record before us to
find that the Examiner erred in rejecting representative claim 11, and claims
1-8, 12-18, and 21 for similar reasons. Since this issue is dispositive
regarding our reversal of dependent claims 5 and 15, we need not address
Appellants' separate arguments regarding such claims (App. Br. 22, 26-27).
Accordingly, we reverse the Examiner's rejection of claims 1-8, 11-
18, and 21.
DECISION
We affirm the Examiner's § 101 rejection of claims 1-8, 11-18, and
21.
We reverse the Examiner's§ 103(a) rejection of claims 1-8, 11-18,
and 21.
Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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