Ex Parte Martinez et al

Patent Trial and Appeal Board

Jul 25, 2017

13551406 (P.T.A.B. Jul. 25, 2017)

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.
13/551,406 07/17/2012 Jose-Luis Celorio MARTINEZ 0076412-000083 1983
21839 7590 07/27/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BAGGOT, BREFFNI
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE-LUIS CELORIO MARTINEZ,
ANDREA CHRISTINE GILMAN, and DANA MARIE KUO
Appeal 2016-003687
Application 13/551,406
Technology Center 3600
Before MICHAEL J. STRAUSS, HUNG H. BUI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-003687
Application 13/551,406
STATEMENT OF THE CASE
Appellants’ invention is directed to settlement of daily deals redeemed
at a merchant, and specifically to initiating and processing financial
transactions between the merchant and a deal provider. Spec. 11. Claim 1,
reproduced below with the disputed limitations in italics, is representative of
the claimed subject matter:
1. A method for initiating and processing a financial transaction,
comprising:
storing, in a database device, a plurality of controlled payment
numbers, each controlled payment number (i) being associated with a
respective payer identifier and (ii) having at least one restriction on
use associated therewith;
receiving, by a receiving device, a value of one or more deal
redemptions from at least one payee',
accumulating, by a processing device, the value of the one or
more deal redemptions received from the at least one payee',
receiving, by the receiving device, a request for payment, from
a payee, for at least a portion of a transaction amount associated with
a deal redeemed by a consumer, wherein the request for payment
includes at least a merchant identifier, a payer identifier, and a
transaction amount;
based on the payer identifier received in the request for
payment, identifying, by the processing device, from the database
device, a controlled payment number that is stored in association with
the payer identifier, wherein the identified controlled payment number
is restricted to the payee and the transaction amount;
initiating, by the processing device, a financial transaction for
the transaction amount included in the request for payment between a
payer corresponding to the payer identifier and the payee, wherein (i)
the payer is an entity different from the consumer who redeemed the
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deal and (ii) the controlled payment number, identified from the
database device, is used for payment of the financial transaction
between the payer and the payee; and
processing, by the processing device, the financial transaction
between the payer and the payee.
REJECTIONS & REFERENCES
(1) Claims 1—14 stand rejected under 35 U.S.C. § 101 as directed to
nonstatutory subject matter.
(2) Claims 1—14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Cervenka (US 2010/0312626 Al;
published Dec. 9, 2010) and Flitcroft et al. (US 2009/0037333 Al; published
Feb. 5, 2009) (“Flitcroft”).
ANALYSIS
35 U.S.C. § 101
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under 35 U.S.C.
§101. In the first step, “[w]e must first determine whether the claims at
issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
Appellants argue “the claims clearly do not seek to preclude the
practice of ‘settling a deal using an identifying number’ as there are
numerous additional ways, both computerized and non-computerized, to
settle a deal using an identifying number.” Appeal Br. 10; see also Appeal
Br. 11, Reply Br. 8—9. Appellants further argue the Examiner’s
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characterization of the claims is “an oversimplification and inaccurate.”
Appeal Br. 11.
Appellants’ arguments are not persuasive. We agree with the
Examiner that claims 1—14 are directed to the abstract idea of “settling a deal
using an identifying number.” See Final Act. 3, emphasis omitted; Ans. 4.
Further, the limitations recited involve storing, receiving, analyzing, and
processing data. In this regard, the claims are similar to the claims the
Federal Circuit determined were patent ineligible in Electric Power Grp.
LLCv. Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting
information and “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category.”)
Appellants have not adequately shown the claims are not directed to
an abstract idea. Although the claim language includes more words than the
phrase the Examiner used to articulate the abstract idea, any such word-
count criteria is not indicative the claims are not directed to an abstract idea
and is unpersuasive of Examiner error. Cf. Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240-1241 (Fed. Cir. 2016) (“An abstract idea can generally
be described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer.”)
As to Appellants’ argument the claims do not “pre-empt” all
applications of the abstract idea, we find that this argument is adequately
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addressed here by the remainder of the Alice analysis. See 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, as they are in this case,
preemption concerns are fully addressed and made moot.”); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”).
In the second step of Alice, we “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Services v. Pometheus Laboratories, Inc., 132 S. Ct. 1289 at 1297—98
(2012)). In other words, the second step is to “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.’” Id. (quoting Mayo, 132 S. Ct. at 1294).
Appellants argue the claims “are limited to particularly configured
machines with a specific purpose and not merely an instruction to ‘apply’ the
identified idea of ‘settling a deal using an identifying number’ to a
computer.” Appeal Br. 11; see Reply Br. 10-11. Appellants further argue
“[t]he database of controlled payment numbers and the particular manner in
which the controlled payment numbers are implemented with the additional
data received and processed by the Appellants’ claims offers a level of
security that cannot be provided apart from the claimed system and method.”
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Application 13/551,406
Appeal Br. 11—12; see Reply Br. 11. According to Appellants, the “claims
implement particular computer technology to result in an improved and
efficient manner of settling deal redemptions between a merchant and a deal
provider, by offering a system and method to accomplish on demand
settlement in a secure and efficient fashion.” Appeal Br. 13.
We are not persuaded by Appellants’ arguments and agree with the
Examiner’s findings and conclusions. See Final Act. 3—5; Ans. 4—5.
Appellants have not adequately shown how the claims are performed such
that they are not routine, conventional functions of a generic computer.
Although Appellants argue “one of skilled in the art would understand the
implementation of Appellants’ claimed invention [would] require more than
a ‘generic computer” (Reply Br. 12), there is no indication in the record that
any specialized computer hardware or other ‘inventive’ computer
components are required. See Spec. Fig. 5, H 39-47. For example,
paragraph 43 of Appellants’ Specification states “[processor device 504
may be a special purpose or a general purpose processor device.” Rather
than reciting additional elements that amount to “significantly more” than
the abstract idea, the pending claims, at best, add a “processing device,”
“receiving device,” and “database device,” i.e., generic components (see
Spec. Fig. 5,H39-47), which are conventional computer components and
do not satisfy the inventive concept. See, e.g., DDR Holdings, LLC v.
Hotels.com etal., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual realm is beside
the point.”); see Ans. 4—5; Final Act. 3-4,
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Relying on DDR Holdings, Appellants further argue “the present
claims require the technical elements recited therein to achieve the new and
useful results provided thereby.” Appeal Br. 12—13. Appellants argue “[t]he
present claims could not be performed absent the electronic devices
involved.” Appeal Br. 14. We are not persuaded. “Settling a deal using an
identifying number” is not a challenge particular to computer networks, nor
is it necessarily rooted in computer technology, as are the claims in DDR
Holdings. Rather, Appellants’ claims are an implementation on generic
components of the abstract idea itself, more akin to the claims in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (2014) than to the claims in
DDR Holdings. See DDR Holdings, 773 F.3d at 1258—1259; see Ans. 4.
According to Appellants, “it is noted that the very nature of controlled
payment numbers requires particular computer configuration for which there
is no ‘human equivalent.’” Appeal Br. 13—14; see Spec. 1—2. However,
“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert, denied, 136
S. Ct. 701 (2015) (citing Alice, 134 S. Ct. at 2359 (“use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept)). The claims when viewed as
whole are nothing more than performing conventional processing functions
that courts have routinely found insignificant to transform an abstract idea
into a patent-eligible invention. As such, the claims amount to nothing
significantly more than an instruction to implement the abstract idea on a
generic computer — which is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2360.
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Accordingly, we sustain the Examiner’s rejection of claims 1—14
under 35 U.S.C. § 101.
35 U.S.C. § 103(a) Rejections
Issue 1: Did the Examiner err in finding the combination of Cervenka
and Flitcroft teaches or suggests “receiving, by a receiving device, a value of
one or more deal redemptions from at least one payee,” and “accumulating,
by a processing device, the value of the one or more deal redemptions
received from the at least one payee,” as recited in independent claim 1 and
commensurately recited in independent claim 8?
Appellants argue paragraphs 8 and 33 of Cervenka “generally disclose
record keeping of authorized transactions,” which is “entirely different from
the accumulation of the value of deal redemptions in a usable manner.”
Appeal Br. 7. According to Appellants,
[ujnlike the Appellants’ claims, Cervenka does not allow for the
on-demand settlement of coupons to be triggered at the
merchant’s request. Instead, Cervenka allows for the
authorization of coupon card transactions and the clearing of all
coupon card transactions to occur at specified intervals (e.g.,
end of day clearing).
Id. Appellants further argue “the Flitcroft reference cannot be relied upon
for curing the above noted deficiencies of Cervenka.” Id. at 7.
We are not persuaded by Appellants’ arguments and agree with the
Examiner that Cervenka teaches or suggests the disputed limitations. See
Ans. 6—8. As the Examiner correctly finds, the claims do not recite
“accumulation of the value of deal redemptions in a usable manner” or “on
demand settlement of coupons to be triggered at the merchant’s request.”
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See Ans. 7, emphasis omitted. Appellants’ arguments are, therefore,
incommensurate with the scope of the claim language.
Paragraph 8 of Cervenka describes, in part:
[receiving a first authorization request for the application of a
discount associated with an electronic coupon stored on a
portable coupon device. The electronic coupon is associated
with a sponsor account and is receivable by a merchant for a
discount on a purchase. The discount is to be debited from the
sponsor’s account and credited to the merchant. . . If the
authorization request includes an approval of the application of
the discount to the transaction ... a payment request [is sent] to
the issuer of the sponsor’s account to debit the sponsor’s
account for the discount amount.
The transaction is authorized by the issuer using a transaction handler.
Cervenka 132. The transaction handler may maintain a log or history of
authorized transactions. Id. In addition, a list of authorized transactions is
maintained by the merchant. Id. Paragraph 33 of Cervenka describes the
payment process and discloses, in part, “[mjerchant (m) 110 may, at discrete
periods, such as the end of the day, submit a list of authorized transactions to
acquirer (a) 106 or other transaction related data for processing through the
payment processing system 100.” See also Fig. 4; Cervenka 177.
We agree with the Examiner that Cervenka’s disclosure teaches or at
least suggests receiving a value of one or more deal redemptions from at
least one payee (receiving a first authorization request for the application of
a discount) and accumulating the value of the one or more deal redemptions
received from the at least one payee (maintaining a log, history, or list of the
authorized transactions). As described in paragraph 33, the merchant may
submit a list of authorized transactions for payment processing at discrete
time periods, such as, for example, at the end of the day.
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Accordingly, we are not persuaded the Examiner erred in finding the
combination of Cervenka and Flitcroft teaches or suggests the disputed
limitation.
Issue 2\ Did the Examiner err in combining Cervenka and Flitcroft?
The Examiner finds, inter alia, the combination of Cervenka and
Flitcroft is “a simple combination of known elements according to known
methods to produce predictable results.” Ans. 8.
Appellants argue “[i]f Flitcroft were to be combined with Cervenka,
the controlled payment numbers of Flitcroft may be used during the initial
authorization request of the coupon card (e.g., Cervenka, Para. [0008] —
[0010]), but not to initiate the clearing of the transaction.” Appeal Br. 7—8.
Appellants also argue the Examiner “does not explain why these alleged
features are accomplished by the suggested combination nor why they would
be apparent to one skilled in the art at the time of the invention without
resorting to hindsight or the Appellants’ own teachings.” Appeal Br. 8.
We are not persuaded by Appellants’ arguments. The Examiner’s
rejection is not based upon a bodily incorporation of the controlled payment
number of Flitcroft into the Cervenka system, but rather the combined
teachings of the references. It is well established that the obviousness
inquiry does not ask “whether the references could be physically combined
but whether the claimed inventions are rendered obvious by the teachings of
the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants
have not provided sufficient evidence or explanation to persuade us the
Examiner’s asserted combination is anything other than a combination of
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familiar elements yielding no more than predictable results. See KSR Int 7
Inc. v. Teleflex Inc., 550 U.S. 398, 416-417 (2007). We find that the
Examiner has articulated how the claimed features are met by the proposed
combination of the reference teachings with sufficient rational underpinning,
consistent with the guidelines stated in KSR. See Final Act. 6—7; Ans. 7—8.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claims 1 and 8 under 35 U.S.C. § 103(a), and, therefore, sustain
those rejections. For the same reasons, we sustain the 35 U.S.C. § 103(a)
rejections of dependent claims 2—7 and 9-13, which were not separately
argued.
DECISION
The Examiner’s 35 U.S.C. § 101 rejection of claims 1—14 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 1—14 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)(l)(iv).
AFFIRMED
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