Ex Parte Martinez de Velasco Cortina et al

Patent Trial and Appeal Board

Feb 28, 2019

14585057 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/585,057 12/29/2014 Francisco Martinez de Velasco Cortina
27189 7590 03/04/2019
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
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.
l 16546-613CT12 2009
EXAMINER
OUSSIR, EL MEHDI
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
docketing@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte
FRANCISCO MARTINEZ DE VELASCO CORTINA and
MANFRED RIETZLER
Appeal2017-010934
Application 14/5 85,057 1
Technology Center 3600
Before ALLEN R MacDONALD, IRVINE. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6-8, 10-12, 14, 15, 17, and 18, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to wirelessly providing payment information
from a device when the device authenticates whether received biometric
1 According to Appellants, the real party in interest is Neology, Inc. App.
Br. 2.
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Application 14/585,057
information corresponds to stored biometric information. Spec. Abstract;
App. Br. 13 (Claim 12).
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A mobile device, comprising:
radio frequency (RF) cellular circuitry;
memory configured to store biometric authentication
information and payment information;
a biometric module configured to read biometric
information;
an authentication module configured to determine whether
the biometric information read by the biometric module
corresponds to the biometric authentication information stored in
memory; and
a transaction module configured to provide the payment
information via the RF cellular circuitry for use in a transaction
when the biometric information read by the biometric reading
device is successfully authenticated as being associated with the
biometric authentication information by the authentication
module.
2 Appellants' Claim Appendix mis-numbers claim 1 as claim 3. App. Br. 13
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Application 14/585,057
References and Re} ections3, 4
Claims 1--4, 6-8, 10-12, 14, 15, 17, and 18 stand rejected under 35
U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter. Final Act. 8-12.
Claims 1-3, 6, and 8 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over the combination of Walker et al. (US 6,163,771; Dec.
19, 2000) ("Walker") and Holmes (US 6,848,048 Bl; Jan. 25, 2005). Final
Act. 13-15.
Claims 4, 10-12, 15, 17, and 18 stand rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over the combination of Walker, Holmes,
and Chen et al. (US 5,590,197; Dec. 31, 1996) ("Chen"). Final Act. 15-19.
Claims 7 and 14 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Walker, Holmes, Chen, and Voltmer
et al. (US 2002/0112177 Al; published Aug. 15, 2002) ("Voltmer"). Final
Act. 19-20.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We have considered in this Decision only those arguments
3 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief filed February
9, 2017 ("App. Br."), as well as the following documents for their respective
details: the Final Rejection mailed May 9, 2016 ("Final Act."), the
Examiner's Answer mailed June 21, 2017 ("Ans."), and Appellants' Reply
Brief filed August 21, 2017 ("Reply Br.").
4 Several non-statutory double patenting rejections are pending. See Final
Act. 20-27. Appellants do not argue these rejections but rather have
requested these rejections "be held in abeyance pending the indication of
allowable subject matter." App. Br. 6; see Ans. 3. We summarily sustain
these rejections.
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Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We adopt the Examiner's findings
and conclusions as our own, to the extent consistent with our analysis herein.
The 35 US.C. § 101 Rejection
A. Section 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
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mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id.
at 187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
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claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first
look to whether the claim recites:
( 1) (see Memorandum Step 2A - Prong One) any judicial exceptions,
including certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) (see Memorandum Step 2A - Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP §
2106.05(a}-(c), (e}-(h)). 5
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See USPTO's January
7, 2019 Memorandum, "2019 Revised Patent Subject Matter Eligibility
Guidance."
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(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Memorandum Step 2B.
C. Examiner's§ 101 Rejection -Alice/Mayo - Step 1
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to a judicial exception, an abstract idea. Specifically, the
Examiner determines the claims are directed to "a payment transaction using
a mobile device to complete the transaction with a point of sale terminal
utilizing security measures to increase security measures and operate using a
short range radio frequency, which is a fundamental economic practice or an
idea of itself." Final Act. 11.
We disagree with the Examiner's determination. Taking claim 1 as
exemplary, we determine the claims are directed to a device that determines
whether biometric information read by a biometric module corresponds to
stored biometric authentication information. Thus, we disagree that the
claims are directed to either a mathematical concept, certain methods of
organizing human activity such as a fundamental economic practice, or a
mental process. See Memorandum Step 2A - Prong One. We do not find
the claims to be subject matter ineligible otherwise, and therefore need not
proceed with further analysis of this rejection.
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For the foregoing reason, we do not sustain the Examiner's subject
matter eligibility rejection of claim 1, and we do not sustain the rejection of
claims 2--4, 6-8, 10-12, 14--15, 17, and 18 for the same reason.
The 35 US.C. § 103 Rejections
Claim 1 recites, in relevant part, "a transaction module configured to
provide the payment information via the RF cellular circuitry for use in a
transaction when the biometric information read by the biometric reading
device is successfully authenticated as being associated with the biometric
authentication information by the authentication module."
The Examiner finds Walker discloses using a biometric to access a
device for providing payment information. Final Act. 13-14 ( citing, inter
alia, Walker 6: 18-19 ("The cardholder first inputs his PIN or biometric data
to access the device"). The Examiner finds Walker also discloses
transmitting the payment information to a merchant. Ans. 18-22 ( citing
Walker 8:31-33 ("The resulting credit card number CCN is then displayed
on the display screen 102 (step 806) and read, shown or otherwise
transmitted to the merchant.) ( emphasis added)). The Examiner finds
Holmes discloses transmitting payment information using RF
communication. Id.
Appellants argue the Examiner's rejection of claim 1 because Walker
does not teach or suggest "provid[ing] the payment information via the RF
cellular circuitry for use in a transaction when the biometric information
read by the biometric reading device is successfully authenticated as being
associated with the biometric authentication information by the
authentication module." App. Br. 10. Appellants contend that "[t]he device
of Walker uses a biometric to control access to the device" but "does not
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associate biometric information with payment information," and "further
does not use biometric information to control the provision of payment
information." Id. Appellants further contend that "it does not appear the
device of Walker is capable of establishing a data transfer protocol of any
kind for the purpose of transmitting the transaction data." Id. See Reply
Br. 9 ("Walker does not teach transmitting the transaction information at all,
nor does Walker appear to even teach the ability to transmit the transaction
information.").
Appellants' arguments are unpersuasive of error for the reasons stated
by the Examiner. Ans. 16-22. In particular, Appellants' argument that
"[t]he device of Walker uses a biometric to control access to the device" but
"does not associate biometric information with payment information" (App.
Br. 10), is unpersuasive because claim 1 does not recite "associate biometric
information with payment information." Rather, claim 1 recites "biometric
information read by the biometric reading device is successfully
authenticated as being associated with the biometric authentication
information by the authentication module." Appellants' argument that
Walker "does not use biometric information to control the provision of
payment information" (id.) is unpersuasive because Walker's use of
biometric information to control access to the device does, in fact, control
whether payment information may be transmitted (see Walker 6: 18-19).
Appellants' argument that "it does not appear the device of Walker is
capable of establishing a data transfer protocol of any kind for the purpose of
transmitting the transaction data" (App. Br. 10) is unpersuasive because
Walker explicitly discloses "otherwise transmitting" the payment
information (Walker 8:31-33).
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Accordingly, we sustain the Examiner's rejection of claim 1 as
obvious over Walker and Holmes. We also sustain the rejections of the
remaining claims because Appellants argue the claims collectively. See
App. Br. 9--11.
DECISION
For the reasons above, we reverse the Examiner's decision to reject
claims 1--4, 6-8, 10-12, 14--15, 17, and 18 under 35 U.S.C. § 101 but we
affirm the Examiner's decision rejecting these claims under 35 U.S.C. § 103.
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.
§ 4I.50(f).
AFFIRMED
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