Ex Parte Lutnick et al

Patent Trial and Appeal Board

Apr 30, 2018

13437195 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/437, 195 04/02/2012
63710 7590 05/02/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. LUTNICK
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.
07-2122CIP-Cl 7502
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOW ARD W. LUTNICK, COLIN SIMS, and JESSE JORDAN
Appeal2016-007407
Application 13/437,195 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-5 and 8-20, which constitute all the
claims pending in this application. Claims 6-7 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants identify CFPH, L.P. as the real party in interest. Br. 4.
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SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
Appellants claim methods and apparatus related to various payments
made when using a referral service. Spec. 55.
Claims 18 and 20 reproduced below, are representative of the subject
matter on appeal.
18. An SMS printing device configured to:
receive a plurality of SMS messages that each indicate a
same order identifier and that collectively indicate a plurality of
items that have been ordered by a user from a merchant;
in response to receiving the plurality of SMS messages,
print the plurality of SMS messages as a single output on paper
without message breaks.
20. A method comprising:
receiving, by an SMS printing device, a plurality of SMS
messages that each indicate a same order identifier and that
collectively indicate a plurality of items that have been ordered
by a user from a merchant;
in response to receiving the plurality of SMS messages,
printing, by the SMS printing device, the plurality of SMS
messages as a single output on paper without message breaks.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Y annay et al.
Ferlitsch
US 2004/0085927 Al
US 2002/0114004 Al
The following rejections are before us for review.
May 6, 2004
Aug. 22, 2002
1. Claims 1-5 and 8-17 are unpatentable under 35 USC§ 112, first
paragraph for failing to comply with the written description
requirement.
2. Claims 18 and 20 are unpatentable under 35 USC § 102(b) as being
anticipated by cited portions of Yannay.
3. Claim 19 is unpatentable under 35 USC§ 103(a) as being obvious in
view of cited portion of Y annay and cited portions of F erlitsch.
4. Claims 1-5 and 8-17 are unpatentable under 35 USC§ 101.
5. Claims 18 and 20 are rejected under nonstatutory obviousness-type
double patenting.
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 2-9 of the
Answer.
2. Yannay discloses:
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As indicated at reference number 1704, upon the arrival of the
SMS message at the point-of-sale terminal the SMS messaging
server transmits to the message management service server a
machine acknowledgment that the SMS message has arrived at
the point-of-sale terminal. As indicated at reference number
1706, if a plurality of SMS messages are transmitted, the above
steps are repeated and the SMS messages are combined at the
point-of-sale terminal in order to form a single order.
(Y anney i-f 122.)
ANALYSIS
35 U.S.C. § 112(A) OR 35 U.S.C. § 112 (PRE-AIA), FIRST PARAGRAPH
REJECTION.
a. The Examiner rejected claims 1-5 and 8-17 under 35 U.S.C. §
112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the written description requirement.
The Examiner found, "[ s ]pecifically, the claims recite facilitating
delivery of the order from the merchant in response to receiving an
indication of the confirmation code from the merchant and the specification
fails to provide support for such a limitation." (Final Act. 4).
Appellants however, citing to paragraph 120 maintain, "[a]
confirmation code would be understood as a code that is used by a merchant
to confirm receipt of an order from this paragraph. This would lead one of
ordinary skill in the art to understand that Applicants had possession of the
claimed subject matter." (Appeal Br. 9).
We agree with Appellants that claimed confirmation code would be
understood from this paragraph by one of ordinary skill in the art as the code
that is used by the merchant to confirm receipt of an order, because
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"confirmation" connotes an expectation of reply.
b. The Examiner rejected claim 19 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. "Specifically, the claim recites [] the
device is configured to print only the plurality of the SMS messages during a
particular time period even if other messages are received in that time
period. The specification fails to provide support for such a limitation."
(Final Act. 4 ).
argue,
Appellants however, citing to paragraph 119 of the Specification,
A configuration if [sic] a device to print messages with a same
ID in a time period as a single output would be understood by
one of skill in the art to include printing messages in that time
period without interrupting outputs that would render that
single output multiple outputs. This would lead one of ordinary
skill in the art to understand that Applicants had possession of
the claimed subject matter.
(Appeal Br. 9).
We disagree with Appellants. The excerpt from paragraph 119 of the
Specification only describes "an SMS printer may be configured to print all
messages with a same ID received in a period of time as a single output."
But, this mentions nothing about the exclusion of other print SMS messages
during a particular time period. Therefore, we will sustain the rejection of
claim 19 under this section.
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35 U.S.C. § 102 (b) REJECTION
The Appellants argued claims 18 and 20 as a group, making claim 18
representative (Appeal Br. 11, 13), and the remaining independent claim
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue,
the Examiner admits on page 5 of the Office Action that
portions of this limitation were ignored. This is a clearly
erroneous Examination procedure that cannot possibly amount
to a prima facie showing of anticipation. The Examiner
contends that the limitation includes non-functional material.
However, that contention is erroneous. For example, the order
identifier has the clear function of identifying an order across a
plurality of SMS message.
(Appeal Br. 12).
The Examiner found,
that the content of the SMS messages (i.e., "that each indicate a
same order identifier and that collectively indicate a plurality of
items that have been ordered by a user from a merchant") is
non-functional descriptive material as it does not functionally
affect the way in which the step of receiving the messages is
performed and thus is given little to no patentable weight.
(Final Act. 5).
We begin by construing the scope of the claims. Claim 18 recites in
pertinent part, "receive a plurality of SMS messages that each indicate a
same order identifier and that collectively indicate a plurality of items that
have been ordered by a user from a merchant." We thus construe the SMS
messages to have two characteristics as follows: 1) each message indicates a
same order identifier, and 2) the messages collectively indicate a plurality of
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items that have been ordered by a user from a merchant. Thus, we construe
the "that" in the claim phrase to refer to the message, and not the order
identifier. As such, the order identifiers, other than being the same in the
"plurality of SMS messages," stands by itself without functionality, and the
claimed indication "of a plurality of items" is merely a list without
independent functionality. Accordingly, we find that claim 18 concludes
only in the recitation of a desired effect, "print[ing] the plurality of SMS
messages as a single output on paper without message breaks." This phrase
fails to tie the order identifier with the print[ing] of the plurality of SMS
messages as a single output on paper without message breaks. We find that
while Yannay is silent as to how consolidation occurs, it does explicitly
disclose, "the SMS messages are combined at the point-of-sale terminal in
order to form a single order." (FF. 2). Therefore, to the extent that claim 18
fails to integrate the order identifier functionally within the context of the
claimed result, we agree with the Examiner that this information, to that
extent, is nonfunctional descriptive material. Non-functional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious. In re Ngai, 367 F.3d 1336, at 1339 (Fed. Cir. 2004).
Appellants next argue concerning Yannay, "[t]hese portions do not
teach or mention either the treatment of message breaks or a plurality of
SMS messages." (Appeal Br. 13).
We disagree with Appellants. We find Y ennay discloses
"compressing the text messages employing a base 70 Latin character
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alphanumeric code" in at least paragraph 39. Yennay also discloses "if a
plurality of SMS messages are transmitted, the above steps are repeated and
the SMS messages are combined at the point-of-sale terminal in order to
form a single order. (FF. 2). Thus, Yanney clearly mentions "the treatment
of message breaks or a plurality of SMS messages."
35 U.S.C. § 103 REJECTION
Appellants' argument to claim 19 simply state, "[ t ]hese portions do
not teach or suggest SMS messages or any messages being separately
received and printed during a particular time period." (Appeal Br. 16).
Against this backdrop, the Examiner finds that the combination of Yannay in
view ofFerlitsch meets the limitations of claim19. (Final Act. 6). We are
thus unpersuaded by Appellants' argument based on the mere existence of
differences between the prior art and the claim which does not establish
nonobviousness. See Dann v. Johnston, 425 U.S. 219, 230 (1976). The
issue is "whether the difference between the prior art and the subject matter
in question 'is a differen[ ce] sufficient to render the claimed subject matter
unobvious to one skilled in the applicable art."' Dann, 425 U.S. at 228
(citation omitted).
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35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-5 and 8-17 under 35 U.S.C.
§ 101.
We also enter a new ground of rejection against claims 18-20 under
35 U.S.C. § 101 pursuant to our authority under 37 C.F.R. § 41.50(b).
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 those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat
else is there in the claims before us?" To answer that question,
. . . consider the elements of each claim both individually and
"as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a
patent-eligible application. [The Court] described step two of
this analysis as 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 Corp., Pty. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case's claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The steps in claims 1 and 17 result in, facilitating delivery of the order
from the merchant in response to receiving an indication of the confirmation
code from the merchant. The steps in claims 18 and 20 result in receiving
the plurality of SMS messages, print the plurality of SMS messages as a
single output on paper without message breaks. The Specification states,
It is recognized that in some embodiments, receiving
technology and/or communication links may fail. Accordingly,
in some implementations, a confirmation code may be included
in a SMS message and/or any other indication of an order sent
to a merchant. After sending such an indication, a merchant
may be asked to call a number and enter the code into an
automated system, enter the code into a website, through an
email, and so on to confirm receipt of the order. In some
embodiments, a phone call may be made to the merchant asking
the merchant to enter the code.
Specification i-fl20. The Specification describes,
[i]n some embodiments, SMS messages may include an
indication that they should be combined with one another to
form a single output. For example, a marker such as a message
ID may be used by multiple SMS messages to indicate they are
part of a same message and an SMS printer may be configured
to print all messages with a same ID received in a period of
time as a single output (e.g., in a same paper, with a same
formatting, without a message break, etc.).
Specification i-f 119. Thus, all this evidence shows that claims 1 and 1 7 are
directed to confirming receipt of an order by a merchant, and claim 18 is
directed to consolidating separated parts of a message into a single message.
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It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409
U.S. 63 (1972) in particular, that the claims at issue here are directed to an
abstract idea. Confirming receipt of an order is a fundamental economic
practice of a transaction because it insures that the order was received. The
patent-ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental
economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355-1257.
Consolidating separated parts of a message into a single message based on
some type of identifier common to the separated messages
constitutes physical acts by a human and/or "analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category."
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016). See also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014) (claims directed to certain arrangements involving contractual
relations are directed to abstract ideas). The Federal Circuit has also 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). Thus, confirming receipt of an order, or
consolidating separated parts of a message into a single message are
"abstract ideas" beyond the scope of§ 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
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recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice, and the concept
of confirming receipt of an order, or consolidating separated parts of a
message into a single message, at issue here. Both are squarely within the
realm of "abstract ideas" as the Court has used that term. That the claims do
not preempt all forms of the abstraction or may be limited to order messages,
does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[ t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
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"[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." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval-some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants' claims simply
recite the concept of confirming receipt of an order or consolidating
separated parts of a message into a single message, at issue here. The claims
do not, for example, purport to improve the functioning of the computer
itself. Nor do they effect an improvement in any other technology or
technical field. Instead, the claims at issue amount to nothing significantly
more than instructions to confirm receipt of an order or to consolidate
separated parts of a message into a single message, at issue here. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
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As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] . . . against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
We have reviewed all the arguments (Reply Br. 3--4) Appellants have
submitted concerning the patent eligibility of the claims before us which
stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue, "[ t ]he Examiner has provided no evidence or
discussion that these limitations are not substantially more than 'transmitting
an order in a series of messages'. To make a findings [sic] of fact, the
Examiner must present substantial evidence showing that such limitations
are well-understood, routine and conventional activities previously known to
the industry." Reply Br. 4.
We disagree with Appellants. Appellants' argument is not persuasive
at least because there is no absolute requirement that an examiner provide
evidentiary support in every case before a conclusion can be made that a
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claim is directed to an abstract idea. 2 Although evidence may be helpful,
e.g., where facts are in dispute, it is not always needed. See Mortgage
Grader, Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1325-26 (Fed.
Cir. 2016) ("[I]t is also possible, as numerous cases have recognized, that a §
101 analysis may sometimes be undertaken without resolving fact issues.").
Appellants' bare assertion here that evidence is needed, without any
supporting reasoning as to why, is insufficient to require the Examiner to
provide evidentiary support.
Appellants also argue, "[ t Jo be novel and non-obvious, these claims
must then add something significantly more than just "transmitting an order
in a series of messages". Otherwise, the Examiner would have been able to
provide a prior art rejection." (Reply Br. 4).
We disagree with Appellants. We are not persuaded by Appellants'
argument because the standard for patentability under 35 U.S.C. § 103(a) is
obviousness and the standard for patentability under 35 U.S.C. § 102 is
novelty. These are not the tests for patent eligibility under 35 U.S.C. § 101.
See, e.g., Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
2 See, e.g., MPEP 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Thus, the court does not require 'evidence' that a claimed
concept is a judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues." (Citations omitted.))
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the§ 101 categories of possibly patentable subject matter."). Each of these
standards is separately required to be met before patentability can be
conferred on invention, which is not the case here based on the latter
standard. The question in step two of the Alice framework is not whether an
additional feature is novel, but whether the implementation of the abstract
idea involves "more than the performance of 'well-understood, routine,
[and] conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347--48 (quoting Alice, 134 S. Ct. at 2359). On the claims before us
here, we see no evidence of such nonconventional activity.
35 U.S.C. § 101 DOUBLE PATENTING REJECTION
We summarily affirm the rejection of claims 18 and 20 under this
section (Final Act. 3) because Appellants did not argue the rejection in the
Appeal Brief or file a terminal disclaimer.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-5 and 8-17
under 35 U.S.C. § 112(a), and did not err in rejecting claim 19 under 35
U.S.C. § 112(a).
We conclude the Examiner did not err in rejecting claims 18 and 20
under 35 U.S.C. § 102(b).
We conclude the Examiner did not err in rejecting claim 19 under 35
U.S.C. § 103(a).
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We conclude the Examiner did not in rejecting claims 1-5 and 8-1 7
under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 18 and 20
on the ground of nonstatutory obviousness-type double patenting.
DECISION
The decision of the Examiner to reject claims 1-5 and 8-20 is
affirmed.
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; 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 CPR§ 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
exammer ....
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• (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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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