Ex Parte Neuwirth

Patent Trial and Appeal Board

Sep 4, 2018

14080292 (P.T.A.B. Sep. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/080,292 11/14/2013
122269 7590 09/06/2018
Brian Tucker
Kirton McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Volker Neuwirth
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.
24538.8 1829
EXAMINER
POE,KEVINT
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/06/2018 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):
btucker@kmclaw.com
kchamberlain@kmclaw.com
ipdocket@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER NEUWIRTH
Appeal2017-006897
Application 14/080,292 1
Technology Center 3600
Before MARC S. HOFF, JENNIFER S. BISK, and CARLL. SILVERMAN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 21--40. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant's invention is a method for enabling a merchant computing
system to obtain payment information from a remote user having a client
computing device. A merchant sends a request for payment information and
authorization to the remote user. A user interface having overlaid fields can
be used to receive the payment information in a secure manner; the payment
1 The real party in interest is Zukunftware, LLC.
2 Claims 1-20 have been cancelled.
Appeal2017-006897
Application 14/080,292
information is not stored on the client computing device. When the user
inputs a signature ( or other authorization information) into an input area
within the browser on the user's device, the signature can be routed over a
network to the merchant to provide transaction authorization. See Abstract.
Claim 21 is reproduced below:
21. In a server computing environment, a method for enabling a
merchant computing system to obtain payment information from a user, the
method comprising:
providing an interface to the merchant computing system, the
interface configured to receive communications from an application
executing on the merchant computing system, the server computing system
comprising memory that stores computer executable instructions defining
the interface and a processor that executes the computer executable
instructions to provide the interface;
receiving, via the interface, one or more first communications sent
over the internet by the application executing on the merchant computing
system, the one or more first communications including:
( 5) a request to obtain payment information from the user to be used
to make a payment,
( 6) a request to obtain user input to serve as authorization to make the
payment,
(7) an amount for which payment is requested, and
(8) contact information for the user;
extracting the contact information and the amount for which payment
is requested from the one or more first communications;
generating a first webpage that specifies the amount for which
payment is requested; formatting the first webpage to include one or more
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Application 14/080,292
secure overlay fields for receiving the payment information in a secure
manner;
generating a second webpage that includes an input area for receiving
the user input to serve as authorization to make the payment;
transmitting a second communication over a network to a client
computing device associated with the user based on the contact information
that was provided in the one or more first communications, the second
communication including a link which the user can select to cause the first
and second webpages to be displayed;
in response to the user selecting the link included in the second
communication, transmitting the first and second webpages to the client
computing device;
in response to the user providing the payment information into the one
or more secure overlay fields, receiving one or more third communications
that include the payment information, the one or more secure overlay fields
causing the one or more third communications to be received in a secure
manner;
in response to the user providing the user input to serve as
authorization to make the payment into the input area of the second
webpage, receiving one or more fourth communications that includes the
user input; and
sending the user input to the merchant computing system to enable the
merchant computing system to associate the user input with the payment.
Claims 21--40 stand rejected under 35 U.S.C. § 101 as being drawn to
patent-ineligible subject matter.
Throughout this Decision, we make reference to the Appeal Brief
("App. Br.," filed Apr. 7, 2016), the Reply Brief ("Reply Br.," filed Mar. 27,
2017), and the Examiner's Answer ("Ans.," mailed Feb. 13, 2017) for their
respective details.
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Application 14/080,292
ISSUE
Do the elements of Appellant's claimed invention, considered
individually and as an ordered combination, recite significantly more than an
abstract idea so as to transform the nature of the claim into a patent-eligible
application?
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
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Application 14/080,292
Cir. 2017). Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "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, 566 U.S. at 79, 78).
ANALYSIS
ALICE STEP 2A - ABSTRACT IDEA
Appellant argues that the Examiner erred in finding that the claims are
directed to the abstract idea of "enabling a merchant computing system to
obtain payment information from a user." App. Br. 9. According to
Appellant, the claims are directed to "a particular way to allow a computing
device to be employed to receive input of sensitive information without
having to customize the computing device to comply with applicable
security standards." App. Br. 10.
We are not persuaded by Appellant's argument that the Examiner
erred. First, the preamble explicitly states, as the Examiner found, that the
claim concerns "a method for enabling a merchant computing system to
obtain payment information from a user." Second, we have considered the
claim as a whole, and we agree with the Examiner that claim 21 is drawn to
"concepts involving [ organizing] human activity relating to commercial
practices." Ans. 8. Claim 21 is directed to processing a payment from a user
by a merchant. The claim further includes limitations directed to displaying
certain interfaces to a user and receiving certain information from said user,
as well as transmitting information from said user back to the merchant once
the user gives his or her authorization.
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Application 14/080,292
ALICE STEP 2B - SIGNIFICANTLY MORE
Having determined that the claimed invention is directed to a judicial
exception, i.e. an abstract idea, we next inquire whether the elements of the
claims, considered individually and as an ordered combination, recite
significantly more such that the additional elements transform the nature of
the claim into a patent-eligible application. Alice, 134 S. Ct. at 2355.
The Examiner finds that independent claims 21 and 32 recite "one or
more secure overlay fields," but that he is unable to identify how these
overlay fields "add a meaningful limitation to the abstract idea." Ans. 9.
Looking to the disclosure, the Examiner finds that "[i]t is clear that the
secure overlay field includes any possible way of gathering secure data from
a website. Applicant does not have any specific details as to how these
overlay fields actually function." Id.
We do not agree with the Examiner's conclusion that the claims fail to
recite "significantly more" under Step 2B of the Alice analysis. We find that,
considering the elements of the claim both individually and as an ordered
combination, independent claims 21 and 32 contain additional elements that
transform the nature of the claim into a patent-eligible application.
The Examiner overlooks Appellant's disclosure that the overlay fields
of the invention are part of a web page which is displayed overtop of the
typical content of an application program. Spec. ,r 58. The disclosed
advantage of the invention is the combination of the application program and
web page elements, such that the sensitive data entered by the user will be
secured via the well-known HTTPS standard employed by the web page.
Spec. ,r 58, 59. This means that the application program need not be
customized to comply with the Payment Application Data Security Standard
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(PA DSS), which saves the application developer substantial computing
resources as well as program development costs. See App. Br. 2; Spec. ,r 5,
6, 11.
The Federal Circuit recently found that an invention directed to
retaining website visitors who would conventionally be transported away
from a host's website after clicking on an advertisement and activating a
hyperlink, constituted patent-eligible subject matter. DDR Holdings, LLC v.
Hotels.com, LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014). The court held that
"the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks." Id.
Similarly, the invention under appeal is rooted in computer
technology. An application program is used to conduct a purchasing
transaction, in combination with a web page that displays fields overlaid on
top of the application program interface. The invention under appeal further
seeks to overcome a problem specifically arising in the realm of computer-
based transaction processing. As explained in the Specification, the web
page's HTTPS security is used to secure sensitive payment information.
Sensitive data is thus never stored on the client computing device, and the
application program itself does not store, process, or transmit secure data.
The application program does not need to comply with PA DSS, but still
provides a secure interface for receiving sensitive data. Spec. ,r,r 11, 58.
We find that the Examiner erred in rejecting the claims as patent-
ineligible under § 101, because we find that the claims recite an inventive
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concept constituting significantly more than an abstract idea. 3 We do not
sustain the Examiner's rejection of claims 21--40.
CONCLUSION
The elements of Appellant's claimed invention, considered
individually and as an ordered combination, recite significantly more than an
abstract idea so as to transform the nature of the claim into a patent-eligible
application.
ORDER
The Examiner's decision to reject claims 21--40 is reversed.
REVERSED
3 We need not reach Appellant's further arguments that the USPTO failed to
properly analyze the claims, or that the practices of the art unit to which the
application was assigned violate due process. App. Br. 13-21.
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