Ex Parte Mylet et al

Patent Trial and Appeal Board

Oct 27, 2017

13329950 (P.T.A.B. Oct. 27, 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.
13/329,950 12/19/2011 Darrin Michael Mylet 04-6217-Cl 8155
63710 7590
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRIM MICHAEL MYLET, LEE M. AMAITIS
and ALAN BRENT WILKINS
Appeal 2015-007742
Application 13/329,950
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and KENNETH
G. SCHOPFER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—12 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-007742
Application 13/329,950
THE INVENTION
The Appellants’ claimed invention is directed to a system and method
for facilitating a wireless transaction (Spec., 1). Claim 7, reproduced below,
is representative of the subject matter on appeal.
7. A method, comprising:
determining, by at least one server, that a location of a device is
within an approved area,
wherein a user of the device is permitted to engage in
transactions of items via the device when the device is used by the
user within approved areas,
wherein the user is not permitted to engage in transactions of
items via the device when the device is used by the user within
unapproved areas, and
wherein the at least one server is communicating with the
device via a communications network;
receiving, by the at least one server, from the user via the
device, while the location of the device is within the approved area, a
request to engage in a transaction of an item;
executing, by the at least one server, the transaction of the item
based at least in part on determining that the location of the device is
within the approved area;
determining, by the at least one server, that a location of the
device is within an unapproved area subsequent to determining that
the location of the device is within the approved area;
receiving, by the at least one server, from the user via the
device, while the location of the device is within the unapproved area,
a request to engage in another transaction of an item; and
not executing, by the at least one server, the another transaction
of the item based at least in part on determining that the location of
the device is within the unapproved trading area.
THE REJECTIONS
1. Claims 1—12 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Application 13/329,950
2. Claims 1—4 and 7—10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schroeder et al. (US 2004/0203667 Al, pub. Oct 14,
2004), Maung et al. (US 2002/0120571 Al, pub. Aug. 29, 2002), and Song
(KR 2004003934, pub. May 10, 2006).
3. Claims 5 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schroeder, Maung, Song, and Bade et al. (US 6,778,837
B2, iss. Aug. 17, 2004).
4. Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schroeder, Maung, Song, and Richard (US 6,785,551 Bl,
iss. Aug. 31, 2004).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S.C. §101
The Examiner has rejected claims 1—12 under 35 U.S.C. § 101 (Ans.
3,4). The Examiner has determined that the claims amount to the
application of an abstract idea of executing a trade on a computer (Ans. 4).
The Examiner has also determined that the claims do not amount to
significantly more than the abstract idea itself (Ans. 4).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/329,950
In contrast, the Appellants have argued that this rejection is improper
(Reply Br. 2-4). The Appellants argue that claims are not shown to be an
abstract idea or shown to not add “significantly more” to the alleged abstract
idea (Reply Br. 2-A).
We agree with the Examiner. Claim 7 is representative. Under 35
U.S.C. § 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.
The Supreme Court, however, has long interpreted § 101 to include an
implicit exception: “laws of nature, natural phenomena, and abstract ideas”
are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt’l, 134 S.
Ct. 2347,2354 (2014).
In judging whether claim 7 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id at 2358.
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Appeal 2015-007742
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Here, we determine that the claim is directed to the abstract concept of
permitting a transaction based on a physical location. This is directed to a
method of organizing human activities and is an abstract idea beyond the
scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
Here, the claim is not rooted in technology but rather in the abstract
concept of permitting a transaction based on a physical location using
generic computer components in a conventional manner. For this reason the
rejection of claim 7, and it’s dependent claims which are not separately
argued is sustained.
Claim 1 is directed to similar subject matter, and the rejection of this
claim and its dependent claims which were not separately argued is
sustained as well for the same reasons addressed above with respect to claim
7. Here, as in Alice, “the system claims are no different in substance from
the method claims. 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.” Alice 134 S.
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Appeal 2015-007742
Application 13/329,950
Ct. at 2351. “[T]he 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.” Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294).
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art does not disclose or suggest the claim limitation requiring
the system:
wherein a user of the device is permitted to engage in
transactions of items via the device when the device is used by the
user within approved areas,
wherein the user is not permitted to engage in transactions of
items via the device when the device is used by the user within
unapproved areas... [and]...
subsequent to determining that the location of the device is
within the approved area, determine that a location of the device is
within an unapproved area;
receive from the user via the device, while the location of the
device is within the unapproved area, a request to engage in another
transaction of an item; and
based at least in part on determining that the location of the
device is within the unapproved area, not execute the another
transaction of the item.
(App. Br. 5-7).
In contrast, the Examiner has determined that the argued claim
limitation is shown Song at pages 6 and 7 and Maung at para. 44 (Ans. 10-
12, Final Act. 6).
We agree with the Examiner. We agree with the Examiners
determination that the argued portions of the cited claim limitations are
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found in the prior art as listed in the Answer at pages 10-12 and Final
Rejection at pages 5—7. In Song, at page 6 for instance it is disclosed that
the user with a credit card uses a mobile device having a GPS in the mobile
device to determine the location. It is also disclosed in Song that by
combining the status of the credit card, and matching the locations of the
mobile device and franchisee that the credit card is approved or
disapproved. Here in Song, the “matching” of or “not matching” of the
credit card and franchisee would serve as “approved” and “unapproved”
areas. Simply using the mobile device a second time would serve as a
“subsequent” use or ongoing process.
The Appellants have also argued in the Appeal Brief at page 6 that
Song does not disclose the limitation directed to requiring “receiv[ing] from
the user via a device.. .a request to engage in ...[a] transaction”, but the
rejection of record in the Final Rejection cites to Maung at para. 44 as
disclosing this (Final Act. 6). Maung at para. 44 discloses that argued claim
limitation. For these reasons the rejection of claim 1 is sustained. The
Appellants have presented the same arguments for the remaining claims and
the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejections section above.
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DECISION
The Examiner’s rejection of claims 1—12 is sustained.
AFFIRMED
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