Ex Parte Paschini et al

Patent Trial and Appeal Board

Oct 12, 2018

12786403 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/786,403 05/24/2010
15608 7590
Blackhawk Network, Inc.
5700 Granite Parkway
Suite 330
Plano, TX 75024
10/12/2018
FIRST NAMED INVENTOR
Miles Paschini
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.
4556.08808 2635
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
10/12/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MILES P ASCHINI and MARSHALL ROSE
Appeal2017-002940
Application 12/786,403 1
Technology Center 3600
Before MELISSA A. RAAP ALA, Acting Vice Chief Administrative Patent
Judge, ROBERT E. NAPPI, and CARLL. SILVERMAN, Administrative
Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 15, 16, 18-24, 26, 27, and 29-36, which constitute
all pending claims. 2 App. Br. 4, 12. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 The real party in interest is identified as Blackhawk Network, Inc. App.
Br. 3.
2 The first page of the Office Action lists claim 28 as pending. Final Act. 1.
We treat this as a typographical error because Appellants assert claim 28 is
canceled (App. Br 12, 28) and the body of the Office Action does not
include a rejection for claim 28 (see Final Act. 5-11; supra note 3).
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Application 12/786,403
STATEMENT OF THE CASE
The invention relates to managing an inventory of PIN s (personal
identification numbers) in a PIN distribution network wherein the
distribution network includes a hub coupled to one or more servers and each
of the servers is coupled to at least one client terminal. The hub dynamically
allocates PIN s of the inventory among the servers to maintain a quantity of
PIN s at each server at a desired level for each server. Abstract, Fig. 1, ,r,r
101,111.
Claim 15, reproduced below, is exemplary of the subject matter on
appeal ( emphasis added):
15. A method for managing an inventory of PIN s located on a
plurality of servers in a PIN distribution network, the PIN distribution
network including a hub coupled to each of the plurality of servers, each
of said plurality of servers coupled to at least one of a plurality of client
terminals, the hub having a processor and a non-transitory computer
readable memory, the processor executing programming code stored on
the non-transitory computer readable memory which causes the hub to
perform the method, the method comprising:
receiving, by the hub, a request for a PIN from a second server of
the plurality of servers; dynamically allocating, by the hub, PINs of said
inventory of PINs among said plurality of servers so as to substantially
maintain a quantity of PINs at each server at a desired level for each
server, wherein said dynamically allocating includes, in response to
receipt of the request for a PIN by the hub from the second server of said
plurality of servers, receiving, by the hub, a portion of said inventory of
P INs which are located at a first server of said plurality of servers and
sending, by the hub, the portion to the second server of said plurality of
servers.
App. Br. 26 (Claims Appendix).
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THE REJECTIONS
Claims 15, 16, 18-24, 26, 27, and 29-36 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter. Final Act. 5---6.
Claims 15, 16, 18, 20, 21, 23, 24, 26, 29, and 31-36 are rejected under
35 U.S.C. §103 as being unpatentable over Ronchi et al. (US 2002/0077973
Al; pub. June 20, 2002) ("Ronchi") in view ofBirjandi et al. (US 7,210,624;
iss. May 1, 2007) ("Birjandi"). Final Act. 6-10. 3
Claims 19, 22, 27, and 30 are rejected under 35 U.S.C. §103 as being
unpatentable over Ronchi, Cruse et al. (US 2002/0010659 Al; pub. January
24, 2002) ("Cruse"), and Jackson et al. (US 2004/0210489 Al; pub. October
21, 2004) ("Jackson"). Final Act. 10-11.
ANALYSIS
The§ 101 Rejection
The Examiner concludes the claimed invention is directed to non-
statutory subject matter because the claim(s) as a whole, considering all
claim elements both individually and in combination, do not amount to
significantly more than an abstract idea. Final Act. 5---6. The Examiner
concludes the claims are directed to the abstract idea of allocating PIN s and
distributing a PIN to a client and the additional elements or combination of
elements in the claims do not provide meaningful limitations to transform
the abstract idea to significantly more than the abstract idea itself. Id.
3 The header of this rejection lists claims 17, 25, and 28 as included in this
rejection. Final Act. 6. We treat this as a typographical error because these
claims are canceled and the body of the rejection does not include an
analysis of these claims. See App. Br. 12; Final Act. 6-10.
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Appellants argue the claims are not directed to an abstract idea and the
Examiner does not present the required prima facie case. App. Br. 5-11;
Reply Br. 8-25. Appellants argue, even assuming the claims are directed to
an abstract idea, the claimed hub element "is a physical device programmed
with software and having a processor (CPU), memory devices (RAM, ROM,
and a data storage device to perform the particular functions" and
"[t]herefore, because the instant claims require and recite a specifically
programmed processing computer (the hub) performing particular, recited
functions, the instant claims recite patent eligible subject matter." App. Br.
at 8 (citing In re Bilski, 545 F.3d. 943, 954 (Fed. Cir. 2009); In re Alappat,
33 F.3d 1526, 1545 (Fed. Cir. 1994)).
Appellants argue the hub is a machine programmed to perform
particular functions, including 1) receiving a request for a PIN from a second
server, 2) in response to receiving the request for a PIN from the second
server, receiving a portion of an inventory of PINs located at a first server,
and 3) sending the portion to the second server. Id. at 8-9. Appellants then
argue, under the second step of Alice, the recitation of a "hub" in the claims
provides the "inventive concept" because the hub is a "particular
machine/special purpose computer." Id. 8-9 (citing Alice 134 S. Ct. at 2347,
2355 (2014)).
Appellants argue the claims are patent eligible because they "recite a
solution necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer systems which
distribute PINs to clients." Id. at 9-10. According to Appellants:
Moreover, with operative communication with the hub along with the
recited functions for the hub's communication with the first and second
servers, the hub may accomplish PIN allocation (redistribution of PIN
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inventories when needed) in order to solve the problem specifically
arising in the realm of computer systems which distribute PIN s to
clients, namely, maintaining PIN inventory on multiple servers, for
example, such that inventory an [sic] any given server (e.g., the first
and second servers) is sufficient but not in excess. See, e.g., Appellants'
Specification at [0146] (in U.S. Publication No. 2010/229,221).
Thus, Appellants' method and system claims are patent eligible because
said claims recite a hub which provides a solution necessarily rooted in
computer technology in order to overcome the problem of PIN
inventory management arising in the realm of computer systems which
distribute PINs to clients. See DDR Holdings, LLC, 112 USPQ2d at
1097.
Id. at 10.
Appellants argue the claims are patent eligible as they do not "use the
internet" to perform a business practice and "instead recite a specific way to
reallocate PIN s already distributed to servers, from one server having an
ample inventory of PIN s to another server having an insufficient inventory
of PINs." Id. at 10-11 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1249 (Fed. Cir. 2014).
In the Answer, the Examiner determines claims 15, 16, 18-24, 26, 27,
and 29-36 are directed to the abstract idea of allocating PINs by a hub to
balance inventory and distributing a PIN to a client. Ans. 2. The Examiner
finds claim 15 recites, in part, receiving a pin request, dynamically
allocating between servers an inventory of PIN s, and these steps describe the
concept of using categories to organize, store and transmit information,
which corresponds to concepts identified as abstract ideas by the courts. Id.
(citing Cyberfone Systems, LLC v. CNN Interactive Group, 558 Fed. Appx.
988 (Fed. Cir. 2014). Id. at 2-3. Regarding Appellants' argument that the
claims are tied to a machine, the Examiner concludes the limitations are
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recited at a high level of generality and are recited as performing
conventional generic computer functions routinely used in computer
applications, amounting to no more than implementing the abstract idea with
a computerized system. Id. at 3.
Regarding the hub as an inventive concept, the Examiner concludes
the claim limitations are recited at a high level of generality and performing
generic computer functions routinely used in computer applications. Id. at 3.
According to the Examiner:
Generic computer components recited as performing generic
computer functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract idea with
a computerized system. . .. Examiner notes that although the claimed
process is performed by a computer system that the introduction of a
computer into the claims does not alter the analysis under Alice. "the
mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent--eligible invention. This
conclusion accords with the pre-emption concern that undergirds our §
101 jurisprudence. Given the ubiquity of computers, wholly generic
computer implementation is not generally the sort of "additional
feature" 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 (citations omitted).
Id. at 3--4.
In the Reply Brief, Appellants argue the Examiner's conclusion is
based on "an out of date, improper standard." Reply Br. 8-9 (citing Enfzsh,
LLC v. Microsoft Corporation, 822 F.3d 1327, 1339 (Fed. Cir. 2016); May
19, 2016 Recent Subject Matter Eligibility Decisions, 2). According to
Appellants, claims 15 and 23 "require implementation of a specialized hub
to manage a PIN inventory via the recall and reallocation of said PIN
inventory" and this constitutes an improvement to computer functionality
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such that the overall memory requirements of the system's servers can be
reduced due to the servers no longer needing to maintain an oversupply of
PINs due to the ability of the hub to balance the inventory. Id. (citing Spec.
,r,r8-11, 165,166).
As discussed below, we are persuaded by Appellants' arguments that
the Examiner does not establish the claims are directed to an abstract idea,
and, thus, does not establish the claims are patent ineligible.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.
Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) for
"distinguishing patents that claim ... abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in the analysis is to determine if the claim is directed toward a
patent-ineligible concept and, if so, the second step is to determine whether
there are additional elements that transform the nature of the claim into a
patent eligible application. Id. (citing Mayo, 566 U.S. at 79, 78). The
second step searches for an inventive concept that is sufficient to ensure that
the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 566 U.S. at 72-73).
The question is not whether claims mention a computing environment
but what they are "directed to." The "directed to" inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376,
(Fed. Cir. 2016) (inquiring into "[t]he focus of the claimed advance over the
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prior art"); Enfish, 822 F.3d at 1335. "The 'abstract idea' step of the inquiry
calls upon us to look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In determining the eligibility of
respondents' claimed process for patent protection under § 101, their claims
must be considered as a whole." Diamond v. Diehr, 450 U.S. 175, 188
(1981).
Here, we agree with Appellants' argument that the Examiner is
oversimplifying claim 15 and ignoring the claim elements. See Enfish, LLC,
v. Microsoft Corp. 822 F.3d 1337, ("describing the claims at such a high
level of abstraction and untethered from the language of the claims all but
ensures that the exceptions to§ 101 swallow the rule."). In particular,
although the Examiner cites Cybeifone Systems as an analogous case, unlike
the current claims, Cyberfone Systems is directed to capturing, storing and
separating data, using a telephone. See Cybeifone Systems 558 Fed. Appx.
988, 989. We agree with Appellants that Enfzsh and DDR are more
analogous. Additionally, we note Cyberfone Systems is not a precedential
decision.
In Enfzsh, the court determined the claimed self-referential database
feature constitutes an improvement to the way computers operate, is not an
abstract idea under step one of Alice, and there is no need to consider step
two. See Enfzsh 822 F.3d at 1338.
In DDR, the claims at issue involved, inter alia, "web page[] displays
[with] at least one active link associated with a commerce object associated
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with a buying opportunity of a selected one of a plurality of merchants."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at 1249 (claim 18 of US
7,818,399). The Federal Circuit found the claims in DDR to be patent
eligible under step two of the Mayo/Alice test because "the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. at 1257.
Specifically, the Federal Circuit found the claims addressed the "challenge
of retaining control over the attention of the customer in the context of the
Internet." Id. at 1258. Here, the rejected claims are directed to maintaining
PIN inventory among multiple servers such that the inventory is sufficient.
This is similar to DDR in that it is rooted in computer technology and solves
a problem "specifically arising in the realm of computer networks."
Therefore, independent claims 15 and 23 are patent eligible as these
claims are not directed to an abstract idea, and there is no need to consider
step two of Alice.
In view of the above, we do not sustain the rejection of independent
claims 15 and 23, and dependent claims 16, 18-22, 26, 27, and 29-36.
The§ 103 Rejection
Appellants argue the Examiner errs in finding Birjandi teaches the
disputed independent claim 15 limitation
receiving, by the hub, a request for a PIN from a second server
of the plurality of servers; dynamically allocating, by the hub, PINs of
said inventory of PINs among said plurality of servers so as to
substantially maintain a quantity of P INs at each server at a desired level
for each server, wherein said dynamically allocating includes, in
response to receipt of the request for a PIN by the hub from the second
server of said plurality of servers, receiving, by the hub, a portion of said
inventory of P INs which are located at a first server of said plurality of
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servers and sending, by the hub, the portion to the second server of said
plurality of servers.
App. Br. 13-21; Reply Br. 5-8.
According to Appellants, the claim 15 method for managing PIN
inventory requires the hub, in the context of an inventory of PIN s located on
a plurality of servers: i) to receive a request for a PIN from a second server
of the plurality of servers, ii) in response to receiving the request, receive a
portion of the inventory of PINs located at a first server, and iii) send the
portion of the inventory of PIN s to the second server ( also referred to as
"allocation features"). Id. at 14. Appellants argue the Examiner relies on
Birjandi for the allocation features but Birjandi discloses only unidirectional
flow of parts. Id. at 14--16 (citing Birjandi, Abstract, 3:10-25, 6:10-25); see
also Fig. 1. According to Appellants, "Birjandi, at most, discloses the
general concept of determining a path for transferring an excess part from
one location to another ( sometimes via an intermediary) as well as
optimization of an algorithm ( transfer function) for distribution, and an
example method for estimating availability lead-time of a part." Id. at 16.
Appellants argue, however, there is no disclosure in Birjandi that the
intermediary requests a part from its supply in response to a request for a
part from its requesting recipient and Birjandi does not teach the allocation
features. Id.
Referring to Figure 1 of Birjandi, Appellants argue, even assuming
Birjandi's central location 22a is a hub, warehouse location 22b or 22c is a
second server, and the other of warehouse location 22b or 22c is a first
server, the solid arrows show the flow of parts only from the central location
22a to warehouses 22b or 22c. Id. at 17-18. Appellants then argue
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"Birjandi fails to disclose a flow of parts from either of warehouse locations
22b or 22c to the central location 22a, i.e., Birjandi fails to disclose flow of a
PIN from a first server to second server via a hub." Id. at 18. Appellants
then argue Birjandi fails to disclose a "hub" which receives a portion of PIN
inventory from a "first server" and sends the portion of the PIN inventory to
a "second server." Id.
Appellants argue the Examiner has unreasonably construed the
claimed servers or hub to include Birjandi warehouses or central location
22a. Id. (citingMPEP § 2lll;Phillips v. AWHCorp., 415 F.3d 1303, 1316,
(Fed. Cir. 2005); In re Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999)).
Appellants refer to the Specification as describing hub and server as a
computer-based device and argue that one of ordinary skill in the art would
not consider these terms to include non-computer device embodiments such
as Birjandi's central location and warehouse locations. Id. at 19 (citing
Spec. ,r,r,r 5 8, 148, 151 ). Additionally, Appellants argue Birjandi describes
computer devices for inventory distribution and this distinguishes between
computer based (inventory distribution) and non computer based (central
location and warehouse locations). Id. n. I.
Appellants additionally argue Birjandi should not be considered as it
is non-analogous art. Id. at 19--20, n.2 (citing MPEP § 2141.0l(a)).
In the Answer, the Examiner finds Birjandi discloses an intermediary
( e.g. hub) requesting a part from its supply in response to a request for a part
from its requesting recipient (e.g. server) and teaches the concept of a "hub
facilitating the transfer of an inventory item between two servers." Ans. 5
(citing Birjandi 3:6-26):
In one embodiment, locations 22 include a central location 22a and one
or more warehouse locations 22b d. Although central location 22a and
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warehouse locations 22b dare illustrated, distribution network 20 may
include any suitable number of central locations 22 and warehouse
locations 22. Each location 22 may comprise a supply location and/or
a demand location. A supply location supplies a part to a demand
location, and may supply the part in response to an order for the part
sent from the demand location. For example, warehouse location 22b
supplies parts to warehouse location 22d. For example, warehouse
locations 22b c supply parts to location 22d. A location 22 may
comprise both a demand location and a supply location.
For example, warehouse location 22b receives parts from central
location 22a and supplies parts to warehouse location 22d. A supply
endpoint such as central location 22a receives parts from one or
more external suppliers 24, for example, a vendor, and distributes
the parts to warehouse locations 22b d. A demand endpoint such as
warehouse location 22d provides parts to one or more external demands
32, for example, a customer.
Ans. 5 (emphasis added by Examiner).
The Examiner finds PIN s are a type of inventory and
Birjan[ d]i discloses a process of inventory management, absent any
language in the claim that specifies an inventory management step
that is unique to PIN s, the Examiner submits that it would have been
obvious to one of ordinary skill in the art at the time of the invention
that the inventory management system of Birjandi could be applied to
the PIN system of the present invention.
Id. at 6.
The Examiner finds one of ordinary skill in the art would consider the
recited "hub" and "server" to include non-computer device embodiments,
such as Birjandi's central location or warehouse locations. Id. The
Examiner finds that Birjandi discloses discrete warehouse locations, but
there is no language in Birjandi that precludes the inventory from being in a
"virtual" or non-physical form such as a PIN, and it would have been
obvious to one of ordinary skill in the art at the time of the invention that the
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"warehouse" as disclosed by Birjandi could merely be a server at a discrete
location storing PINs. Id. The Examiner asserts that the term warehouse is
understood to be a location for storing inventory which could be real or
virtual and it is reasonable to construe the scope of Appellants' claimed
"servers" or "hub" to include Birjandi's warehouses or central location. Id.
at 6-7.
The Examiner finds Birjandi is analogous art because Birjandi is
directed to inventory balancing and is in the same field of endeavor as the
claimed invention. Id. at 7.
In the Reply Brief, Appellants argue the Examiner errs in finding
"Birjandi's disclosure of transferring inventory between warehouses via a
central location is sufficient in terms of art to teach the inventive concept of
'hub facilitating the transfer of an inventory item between two servers'."
Reply Br. 5-6 (citing Ans. 4--5; Birjandi 3:6-26). According to Appellants,
"nothing in Birjandi discloses 'transferring inventory between warehouses
via a central location'." Id. at 6. Appellants argue "Birjandi is limited to
disclosing that a warehouse receives inventory from a central location and
then that warehouse may transfer inventory to another warehouse - there is
simply no disclosure in Birjandi that a warehouse transfers inventory to
another warehouse via a central location as an intermediary." Id. (citing
Birjandi, Fig. 1, 6: 10-25). Appellants argue the Examiner "wholly
disregards the explicit claim elements requiring the hub to receive a portion
of an inventory of PIN s from a first server and to send said portion of an
inventory of PINs to a second server." Id. at 7. Appellants additionally
argue the Examiner does not find that Birjandi discloses "a first warehouse
returning goods to a central location so the central location can supply the
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first warehouse's returned goods to a second warehouse (i.e., inventory recall
and reallocation by a central hub) - because Bi,jandi contains no such
disclosure." Id. at 7.
Based on the record before us, we are persuaded by Appellants'
arguments regarding claim interpretation. In particular, the Examiner's
claim interpretation of "hub" to include the Birjandi warehouse system is
unreasonably broad and not consistent with the Specification. See, e.g.,
Spec. ,r,r 243,251. Even assuming Birjandi's warehouse system teaches a
hub functionality, Birjandi's warehouse system does not teach a hub
comprising a processor and memory as recited in independent claims 15 and
23. Claim terms in a patent application are given the broadest reasonable
interpretation consistent with the Specification, as understood by one of
ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
As discussed, supra, the Examiner relies on Birjandi for the disputed
limitation in which a hub performs the allocation features and, therefore, in
view of the Examiner's unreasonably broad claim interpretation, the reliance
on Birjandi is not supported. Additionally, we note, on the record before us,
the Examiner does not present sufficient evidence that Ronchi teaches a hub
and in particular, a hub that is consistent with the Specification. Therefore,
in view of the unreasonably broad claim interpretation, the Examiner
presents insufficient evidence as required for obviousness.
In view of the above, we do not sustain the rejection of independent
claim 15, and its dependent claims 16, 18, 20, 21, 31, 32, and 34--36 as these
claims stand of fall with claim 15. App. Br. 12. We also do not sustain the
rejection of independent claim 23, and its dependent claims 24, 26, 29, and
33 as these claims stand of fall with claim 23. Id.
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Because our decision with regard to the disputed limitation is
dispositive of the rejections, we do not address additional arguments raised
by Appellants.
DECISION
We reverse the Examiner's decision rejecting claims 15, 16, 18-24,
26, 27, and 29-36 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 15, 16, 18-24,
26, 27, and 29-36 under 35 U.S.C. § 103.
REVERSED
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