Ex Parte LodoloDownload PDFPatent Trial and Appeal BoardFeb 10, 201612521737 (P.T.A.B. Feb. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/521,737 07/18/2011 132251 7590 02/12/2016 (ELG/Core Wireless/27921) Borden Ladner Gervais LLP World Exchange Plaza 100 Queen Street, Suite 1300 Ottawa, ON KIP 1J9 CANADA FIRST NAMED INVENTOR Francesco Lodolo 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. PAT 82873W-2 1510 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 02/12/2016 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): ipinfo@blg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANCESCO LODOLO Appeal2013-007626 Application 12/521,737 1 Technology Center 3600 Before JOSEPH A. FISCHETTI, KEVIN W. CHERRY, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The subject matter of this appeal "relates to a mechanism for facilitating data transfer and storage between two electronic devices." (Spec. 1.) 1 According to Appellant, the real party in interest is Core Wireless Licensing, S.a.r.l. (Appeal Br. 3.) Appeal2013-007626 Application 12/521,737 Claims 1, 15, and 16 are the independent claims on appeal. Claim 1 is illustrative and is reproduced below (emphasis added): 1. A method, comprising: receiving at a first device comprising a portable consumer electronic device an electronic transaction object based on an initial transaction executed over a short range wireless connection between the first device and a second device comprising a stationery device used by a service provider or merchant in providing a service or a sale of goods to a user of the first device; storing at the first device the electronic transaction object received from the second device, the electronic transaction object specifj;ing a description of the initial transaction including at least one of the identity of the first device and the identity of the second device; initiating at the first device a subsequent transaction between the first device and the second device or a third device; and during the subsequent transaction, the first device transferring the electronic transaction object from storage at the first device to the second device over a subsequent short range wireless connection between the first device and the second device or to the third device over a wired or wireless connection, wherein the transferred electronic transaction object is for initiating an event associated with the description of the initial transaction specified by the electronic transaction object. REJECTIONS Claims 1-14 and 17-20 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 1-13, 15, and 162 are rejected under 35 U.S.C. § 102(b) as anticipated by Schultz (US 2002/0188561 Al, pub. Dec. 12, 2002). 2 In paragraph 8 of the Final Action, the Examiner refers to only claims 1- 13 as anticipated by Schultz. (Final OA 6.) However, in paragraph 9, the Examiner indicates that claims 1, 15, and 16 are anticipated by Schultz. (Id.) 2 Appeal2013-007626 Application 12/521,737 Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schultz. Claims 17-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schultz and Official Notice "that it is old and well-known in the art of retail to practice product returns and warranty registration and having associated time periods for each" and "that it is old and well-known in the art of product purchases for a product to be a periodical." (See Final Action 14, 16.) ANALYSIS Background The Specification discloses, as an example of the subject matter, a method whereby an electronic transaction object is generated based on a sales transaction executed between a first device and a second device; the transaction object is transferred from the second device to the first device, the electronic transaction object specifying details of the sales transaction; a post-sale transaction is initiated between the first device and a third device; the electronic transaction object is transferred, during the post-sale transaction, from the first device to the third device; and in response to receiving the electronic transaction object at the third device, a post-sale event associated with the electronic transaction object is automatically initiated. (Spec. 3.) The Specification also discloses that the "electronic sales object" can be a sales receipt, that the "post-sale event" can be a return of the item Therefore, we treat the omission of reference to claims 15 and 16 in paragraph 8 as inadvertent. Appellant recognizes this omission and, following Appellant's arguments regarding claim 1, states that "similar arguments can be made for claims 15-16." (Appeal Br. 11.) 3 Appeal2013-007626 Application 12/521,737 purchased, and that the second and third devices can be the same device. (Id. 3.) The § 101 Rejection Claims 1-14 and 17-20 are rejected under § 101. The Examiner determines that these claims are directed to an abstract idea. (Final Action 2.) Specifically, the Examiner determines that the "[i]nvolvement of machine, or transformation, with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied" and that "[t]he claim is a mere statement of a general concept." (Id. 2-3.) Appellant disagrees and argues that claim 1, read as a whole and in view of the specification, is "process" claim with substantial and meaningful claim elements tied to a particular machine and is also a particular practical application of facilitating post-sale transactions utilizing, e.g., a mobile phone. In particular, independent claim 1 is directed to a method substantially performed by a machine. (Appeal Br. 7-8.) Subsequent to the filing of briefs in this appeal, the Supreme Court decided Alice Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas 4 Appeal2013-007626 Application 12/521,737 from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. 3 Under the Mayol Alice two-part framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." (Id.) Here, we agree with the Examiner that independent claim 1 is directed to an abstract idea. (See Final Action 2.) Specifically, that claim 1 refers to "devices in a generic sense, in that any general purpose computer that is capable of transmitting and storing information can be used" and that the claim steps "are merely directed towards the acts of data gathering, transmission, and storage." (Id. at 4.) Therefore, we tum to the second part of the framework to determine if "the elements of the claim ... contain[] an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice, 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298). "[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer." Id. at 2359. We determine that they do not. Claim 1 merely tells the user to implement the abstract idea of receiving, storing, initiating a transaction, and transferring data on a generic computer network. Taking the claim elements separately, the function performed at each step of the process is purely conventional. The receiving, storing and transferring steps are basic functions of a computer connected to a computer network. The step of initiating a transaction simply starts the transferring step. These functions are well-understood, routine, conventional activities 3 Mayo was decided on March 20, 2012. Appellant's Appeal Brief was filed on April 16, 2013. 5 Appeal2013-007626 Application 12/521,737 previously known in the industry. In short, the claim does no more than call for a generic computer connected to a computer network to perform generic computer functions. Considered as an ordered combination, the steps of Appellant's method add nothing that is not already present when the steps are considered separately. Viewed as a whole, claim 1 simply recites the concept of getting a receipt for a purchased good (or service), storing the receipt, and presenting the receipt when returning the goods. The method claim does not, for example, purport to improve the functioning of the machine itself. Nor does it effect an improvement in any other technology or technical field. Instead, the claim amounts to nothing significantly more than an instruction to apply the abstract idea. That is not enough to transform an abstract idea into a patent-eligible invention. See id. at 2360. Appellant's other arguments with regard to this rejection have been considered but are not deemed persuasive of error. For the above reasons, we sustain the Examiner's rejection under § 101 of claim 1. For the same reasons, we sustain the rejection under § 101 of dependent claims 2-14 and 17-20, which were not argued separately except as to their dependence on claim 1. 4 4 Should there be further prosecution of this application, the Examiner may wish to review claims 15 and 16 for compliance with 35 U.S.C. § 101 in light of the recent Office guidance on patent eligible subject matter found in "July 2015 Update: Subject Matter Eligibility," 80 Fed. Reg. 45,429 (July 30, 2015), and in "2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74,618 (Dec. 16, 2014), which supplements the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the Examining Corps, June 25, 2014. 6 Appeal2013-007626 Application 12/521,737 The §. 102 Rejection Claim 1 recites: "the electronic transaction object specifying a description of the initial transaction including at least one of the identity of the first device and the identity of the second device." The Examiner, citing paragraphs 31, 33, 34, and 49 of Schultz, finds that Schultz discloses this limitation. (Final Action 7.) Appellant disagrees and argues that the cited paragraphs of Schultz do not disclose an electronic transaction object specifying at least one of the identity of the first device and the identity of the second device, as claimed in claim 1. The cited paragraph [0031] merely disclose an originator 10 (e.g. a seller of goods or services) issuing an electronic receipt 12 to a user 14 (e.g. a buyer) and the receipt has a link 16 that associates it with additional functionality. The cited paragraph [0033] discloses additional buyers 20, 28 and sellers 18, 30 (Fig. 3) but says nothing about device identity being specified on the receipt 12. The cited paragraph [0034] merely states that the receipt is transmitted to a device designated by the buyer or associated with the buyer, not that the identity of the device is specified on the transaction object. the [sic] address of seller 18 and the name of the buyer 120. The cited paragraph [0049] discusses the steps 106-110 carried out as illustrated in Fig. 7 A but does not disclose that the identity of the device is specified on the transaction object. (Appeal Br. 9.) The Examiner answers that identification information must be provided so that the merchant/third party can process the return for the appropriate consumer/device and to ensure that data, e.g. refund, return, etc., received from consumer A will not be transmitted/transferred to consumer B, wherein the communication used by consumer A/B is being performed over a network each having their own personal device. Therefore, the Examiner asserts that the transaction object does, indeed, include identity information of 7 Appeal2013-007626 Application 12/521,737 the device so that the appropriate device receives their corresponding information and not information of another device (Answer 6.) However, this conflates the device with the electronic transaction object. Claim 1 requires "receiving at a first device comprising a portable consumer electronic device an electronic transaction object." While we agree with the Examiner that the communication link must identify the sending and receiving devices, Schultz does not explicitly state that its electronic receipt, which the Examiner analogizes to the electronic transaction object, includes identification of the sending or receiving device. (See Final Action 6-7.) Nor does the Examiner explain why it would be inherent that the receipt of Schultz would include identification of the sending or receiving device. As Appellant indicates, identification of the sending and receiving devices need not be included as part of the electronic transaction object. Such identification may simply be "for purposes of establishing and tearing do\~1n a connection bet\~1een devices." (1A:Lppeal Br. 10.) The Examiner argues that claim 1 "is broad enough to encompass the interpretation that a computer that is being used by a consumer in order to initiate a return request is, indeed, identifying the computer as the consumer because the computer of the consumer is not able to actually complete the return request." (Answer 5.) But this does not address the issue of the electronic transaction object including identification of the sending or receiving device. Therefore, we reverse the Examiner's rejection of claim 1 and dependent claims 2-13 under § 102(b ). Independent claims 15 and 16 8 Appeal2013-007626 Application 12/521,737 contain similar limitations. Therefore, for the same reasons, we reverse the Examiner's rejection of claims 15 and 16 under § 102 (b). The § 103 Rejection Dependent claims 14 and 17-20 are rejected under§ 103(a). The Examiner makes no determination as to whether it would have been obvious in view of Schultz and the Official Notice for the electronic transaction object to include identification of the sending or receiving device. Therefore, for the reasons discussed above, we reverse the rejection of claims 14 and 17-20 under§ 103(a). DECISION The Examiner's rejection of claims 1-14 and 17-20 under 35 U.S.C. § 101 is affirmed. The Examiner's rejection of claims 1-13, 15, and 16 under 35 U.S.C. § 102(b) is reversed. The Examiner's rejections of claims 14 and 17-20 under 35 U.S.C. § 103(a) are reversed. 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)(l )(iv). AFFIRMED-IN-PART 9 Copy with citationCopy as parenthetical citation