Ex Parte Rammal

Patent Trials and Appeals Board

Mar 28, 2019

14222615 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/222,615 03/22/2014
95628 7590
The Villamar Firm PLLC
3424 Washington Drive
Falls Church, VA 22041
04/01/2019
FIRST NAMED INVENTOR
Karim Anwar Rammal
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.
151670-001 US CON2 6573
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
crvillamar@villamars.com
bevillamar@villamars.com
baravenwood@villamars.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARIM ANWAR RAMMAL
Appeal2017-003902
Application 14/222, 615 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER,
MATTHEWS. MEYERS, Administrative Patent Judges.
Opinion for the Board filed by CRAWFORD, Administrative Patent Judge.
Opinion Dissenting filed by Wieder, Administrative Patent Judge.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-19. We have jurisdiction under 35
U.S.C. § 6(b). Appellant appeared for oral hearing on February 14, 2019.
SUMMARY OF DECISION
We AFFIRM.
1 The Real Party in Interest in this appeal is NET2TEXT LTD.
Appeal2017-003902
Application 14/222,615
THE INVENTION
Appellant's claims are directed to methods and systems for
conducting secure purchase and payment transactions, and more particularly
to a method, system and computer program product for conducting secure
purchases and payment transactions using a mobile phone. (Spec. ,r 2).
Claim 1 is representative of the subject matter on appeal.
Claim 1: A computer implemented system for processing
payments for goods or services, the system comprising:
a mobile operator servicing a mobile phone account of a
user,
wherein a payment processor receives a payment request
for goods or services from a merchant, and the payment request
includes a mobile phone number associated with the mobile
phone account of the user;
the payment processor, based on the payment request, is
implemented by first circuitry configured to send a payment
authorization request to a mobile operator servicing the mobile
phone account of the user;
the mobile operator, based on the payment authorization
request, is implemented by second circuitry configured to send,
over a mobile network of the mobile operator, a payment
authorization request text message to a mobile phone of the
user connected to the mobile network of the mobile operator
requesting authorization for payment based on the payment
request;
the mobile phone of the user based on payment
authorization request text message, is implemented by third
circuitry configured to send, over the mobile network of the
mobile operator, a payment authorization text message
including a personal identification number of the user
associated with the mobile phone number of the user to the
mobile phone operator for authorization of payment based
on the payment request;
the second circuitry of the mobile operator is further
configured to receive the payment authorization text message
including the personal identification number of the user over
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the mobile network of the mobile operator for verification;
the first circuitry of the payment processor is further
configured to receive a payment authorization from the mobile
phone operator based on the payment authorization text
message for authorizing or not authorizing the payment based
on the payment request;
the first circuitry of the payment processor is further
configured to, if the payment authorization from the mobile
phone operator authorizes the payment based on the payment
request, pay the merchant for the goods or services from an
account of the mobile phone operator, wherein the mobile
phone operator charges the mobile phone account of the user
for the payment;
the first circuitry of the payment processor is further
configured to, if the payment authorization from the mobile
phone operator does not authorize the payment based on the
payment request or if the payment authorization text message is
not received by the mobile operator over the mobile network of
the mobile operator within a predetermined period of time,
decline to pay the merchant for the goods or services; and
wherein no financial information of the user nor the
personal identification number of the user are sent to the
payment processor.
THE REJECTIONS
Claims 1-19 under 35 U.S.C. § 112(a), first paragraph.
Claims 1-19 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. 2
2 The Examiner rejected claimsl-----12 on the ground of nonstatutory double
patenting over cfaims 1-12 of U.S. Patent No. 8,682,792 and provisionally
rejected claims 1-19 over claims 1-19 of copending Application No.
14/222,613 and Application No. 14/222,616. (Final Act. 10). Appellant
argues that this rejection is moot because Appellant filed a tenninal
disclaimer which has been entered. See Reply Br. 5. The Patent Office's
application database shows a terminal disclaimer fi]ed and approved in this
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Application 14/222,615
ANALYSIS
REJECTION UNDER 35 U.S.C. §112, FIRST PARAGRAPH
The Examiner concludes that the claims recite a mobile operator
implemented by second circuitry and that as the mobile operator is
interpreted as a carrier such as Verizon or AT&T, the mobile operator itself
could not be comprised of application specific circuitry. (Final Act. 11 ).
We will not sustain this rejection because we agree with the Appellant
that one would appreciate that the inventors had possession of the claimed
feature at the time the present application was filed. (App. Br. 8).
Specifically, we agree with the Appellant that mobile operators are
implemented using circuitry, which is a fact that is well appreciated in the
art. (Reply Br. 3).
REJECTION UNDER 35 U.S.C. § 101
We will sustain the rejection of claims 1-19 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, ... determine
whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, ... then
ask, "[ w ]hat else is there in the claims before us?"
... To answer that question, ... consider the
elements of each claim both individually and "as an
ordered combination" to determine whether the
additional elements "transform the nature of the
application on June 14, 2019. Therefore, we will not review these
rejections.
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Application 14/222,615
claim" into a patent-eligible application .... [The
Court] described step two of this analysis as a 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."
Alice Corp. v. CLSBankint'l, 573 U.S. 208, 217-18 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012))
( citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
The Examiner determines that the claims are directed to a
fundamental economic practice similar to mitigating settlement risk or
creating a contractual relationship. (Final Act. 7). The Examiner also
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Application 14/222,615
determines that the claims are directed to methods and systems for
conducting secure purchase and payment transactions. (Ans. 4). The
Examiner finds that the additional elements or combination of elements in
the claims other than the abstract idea per se amount to no more than the
instructions to implement the idea on a computer, and/or a recitation of
generic computer structure that serves to perform generic computer
functions that are well-understood, routine and conventional activities
previously known. (Final Act. 8).
We note that the Specification discloses that the claims are directed to
conducting secure purchase and payment transactions. (Spec. ,r 2). The
Specification identifies that "security, fraud and identity theft are major
concerns" for consumers while using credit and debit cards. (Spec. ,r,r 3, 4,
6). According to the Specification, other alternative options such as "money
transfer using a third independent financial entity, E-mail payments, and
mobile wallet applications that act as intermediaries or interfaces between a
customer's financial institution (typically a bank or a credit card company)
and the retailer/merchant)" also share the same drawbacks as credit and debit
cards. (Spec. ,r 4 ). However, these alternative payment options may also
include "unreasonable hidden costs that are additionally charged by credit
cards, mobile wallets and other financial instruments that are above and
beyond what the retailer is already charging." (Spec. ,r 6). The
Specification further discloses that "[c]onventional systems of payment and
methods using mobile phones" are also known in the art, but "have
limitations, including requiring downloading of complex software, need to
use hi-tech mobile phones, need for additional security codes, hidden costs,
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Application 14/222,615
and additional charges by the customer's bank or credit card company."
(Spec. ,r 7).
To address these limitations and concerns, transactions are processed
in exemplary independent claim 1 by the mobile phone, the mobile operator,
and the payment processor in a way such that no personal information is sent
to the payment processor, i.e., "[t]he present method as described above
virtually presents an anti-fraudulent payment system that provides peace of
mind and convenience to customers as they and their mobile operator are the
only ones who know the PIN Code to authorize payments to retailers."
(Spec. ,r,r 2, 20, 34). To accomplish this, the mobile operator checks the
customer's mobile number account balance, and if found sufficient to pay
for the purchase, sends a text message to the customer on their mobile
number giving them details of the retailer and the total amount payable. If
the customer agrees to the purchase, the customer sends a unique PIN code
to the mobile operator and the mobile operator then agrees to pay the
payment processor. (Spec. ,r,r 20-21 ). As such, the payment process is
between the mobile operator and the payment processor with the mobile
operator essentially acting as an intermediary debiting/charging the
customer's mobile account for the amount of the purchase. (Spec. ,r,r 23-
24). From this disclosure it follows that the claimed invention is directed to
conducting secure purchase payment transactions as determined by the
Examiner.
The recitations in claim 1 demonstrate further that the claimed subject
matter relates to conducting secure purchase and payment transactions. For
example, claim 1 recites a "mobile operator", a "payment processor" and a
"mobile phone." Claim 1 further recites that the "payment processor
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receives a payment request for goods and services from a merchant," and
that the payment processor includes "circuity configured to send a payment
authorization request to a mobile operator." The mobile operator includes
"circuitry configured to send ... a payment authorization request text
message to a mobile phone." Claim 1 also recites "the mobile phone ...
based on the payment authorization request text message ... configured to
send ... a payment authorization text message." The payment processor is
configured "to receive payment authorization from the mobile phone
operator based on the payment authorization." As such, claim 1 is directed
to conducting secure purchase and payment transactions and thus is a sales
activity. Therefore, we agree with the Examiner that the claims are directed
to a method of organizing human activity. Certain methods of organizing
human activity such as fundamental economic practices are included in the
abstract idea exception. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the "directed to test", we note that
claim 1 requires a "payment processor," a "mobile operator," and a "mobile
phone" to perform the steps of claim 1. These recitations do not affect an
improvement in the functioning of the processor, mobile operator of phone
or other technology. In addition, claim 1 does not recite a particular
machine or manufacture. In fact, Appellant's Specification discloses that all
or a portion of the devices and subsystems of the exemplary embodiments
can be conveniently implemented using one or more general purpose
computer systems, microprocessors, digital signal processors, or micro-
controllers. (Spec. ,r 49). The mobile operator is disclosed as the mobile
phone service provider/operator/carrier which has a processor which is
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configured to send, receive, process and store data (Spec. ,r 16,). No
improvement to the mobile operator is disclosed or claimed. These
recitations "do not impose meaningful limits on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 55. Thus, claim is directed to a judicial exception
without a practical application.
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
See Alice, 573 US 208 at 218 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The introduction of a processor, a mobile phone and a mobile operator
into the claims does not alter the analysis at Alice step two.
[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. Nor is limiting the use of an
abstract idea "'to a particular technological
environment."' Stating an abstract idea while
adding the words "apply it with a computer" simply
combines those two steps, with the same deficient
result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t ]" an
abstract idea "on ... a computer," that addition
cannot impart patent eligibility. This conclusion
accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of
"additional featur[e]" that provides any "practical
assurance that the process is more than a drafting
effort designed to monopolize the [ abstract idea]
itself."
Alice, 573 US 208. at 223-224 (alterations in original) (citations omitted).
Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 225.
Taking the claim elements separately, the functions performed by the
computers at each step of the process are purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result, amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) ("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming"). In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
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Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The steps of claim 1 are, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the mobile phone, payment processor or mobile operator. As we stated
above, the claims do not affect an improvement in any other technology or
technical field. The Specification spells out the devices and subsystems of
the exemplary embodiments can be implemented on the World Wide Web.
The exemplary embodiments are not limited to any specific combination of
hardware circuitry and/or software but can be implemented using one or
more general purpose computer system, microprocessor, digital signal
processors, micro-controllers, and the like, programmed according to the
teachings of the exemplary embodiments of the present invention. (Spec.
,I49). Thus, the recitation of the mobile operator, the payment processor and
mobile phone and the associated circuitry recited in claim 1 amount to
nothing significantly more than instructions to apply the abstract idea of
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payment processing using some unspecified, generic computers. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. 208. at 226.
We have reviewed all the arguments (App. Br. 9-19, Reply Br. 5-9)
Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of the same.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims are not directed to an abstract idea
because claim 1 is not directed to a contractual relationship, hedging or
mitigating settlement risk. (App. Br. 11 ). Even if the Appellant is correct,
the claims are directed to conducting secure purchases and payment
transactions, which is a sales activity and thus is a method of organizing
human activities, i.e. an abstract idea. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims are rooted in and are analogous to the
claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014). (App. Br. 13). In DDR Holdings, the Court evaluated the
eligibility of claims "address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host's website after 'clicking' on an advertisement and activating a
hyperlink." DDR, 773 F.3d at 1257. There, the Court found that the claims
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Application 14/222,615
were patent eligible because they transformed the manner in which a
hyperlink typically functions to resolve a problem that had no "pre-
Internet analog." Id. at 1258. The Court cautioned, however, "that not
all claims purporting to address Internet-centric challenges are eligible
for patent." Id. For example, in DDR Holdings the Court distinguished
the patent-eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258-59 ( citing Ultramercial, 772 F.3d 7 0 9,
715-16). As noted there, the Ultramercial claims were "directed to a
specific method of advertising and content distribution that was
previously unknown and never employed on the Internet before." Id. at
1258 (quoting Ultramercial, 772 F.3d at 715-16). Nevertheless, those
claims were patent ineligible because they "merely recite[ d] the abstract
idea of 'offering media content in exchange for viewing an advertisement,'
along with 'routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet."' Id.
Appellant's asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." Ultramercial,_772 F.3d at 712. Similarly, Appellant's asserted
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claims recite receiving, analyzing, modifying, and transmitting data. This
is precisely the type of Internet activity found ineligible in Ultramercial.
We are not persuaded of error on the part of the Examiner by
Appellant's arguments that the claims include an element or combination of
elements that amount to significantly more than the judicial exception.
(App. Br. 15). The Appellant argues that the present invention includes
benefits such as increased flexibility, faster search times and smaller
memory requirements. (App. Br. 14). Yet, the advantages that Appellant
touts do not concern an improvement to computer capabilities, but instead
relate to an improvernent to the process for conducting payments for which a
computer system is used as a tool in its ordinary capacity. Here, a generic
graphical user interface perfonns the well-understood function of receiving
user input, and a generic computer system performs routine data processing
steps. Appellant fails to identify, and we do not find, any indication in the
record that the claimed invention improves computer functionality, requires
specialized computer hardware or other inventive cornponents, invokes
inventive programming, or is otherwise directed to sornething other than the
abstract idea identified by the Examiner.
\Ve are not persuaded of enor on the part of the Examiner by
Appellant's argument that the claims are novel and distinguish over the prior
art cited by the Examiner. (App. Br. 17, Reply Br. 8----11). To the extent
Appellant rnaintains that the limitations of claim l necessarily amount to
"signi:ficant1y more" than an abstract idea because the claimed apparatus is
allegedly patentable over the prior art, Appellant misapprehend the
controlling precedent Although the second step in the Alice/A1ayo
framework is termed a search for an "inventive concept," the analysis is not
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an evaluation of novelty or non-obviousness, but rather, a search for '"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."' Alice, 573 U.S. 208 at 217-18. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304. We note, that contrary to the
arguments presented by the Appellant on pages 8-9 of the Reply Brief, the
Examiner has not cited prior art against the instant claims to show
obviousness but rather to establish that the use of a transaction process that
uses a PIN code for authorization and in which no personal identification
number of users is sent to the payment processor and a process in which a
mobile phone is used to make purchases are well-known and conventional.
(See, e.g., Ans. 6-10).
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims perform functions that were not known
in the art and therefore the claims recite significantly more than any abstract
idea. Specifically, Appellant argues that the elements of the system are
configured or programmed in a way to perform the functions that were not
known in the art. (App. Br. 17). Appellant's argument does not apprise us
of error because Appellant conflates the conventionality of the steps that the
processor performs and the conventionality of the computer functions
required to implement the steps. In this regard, Appellant does not explain
how the computers involved in the present invention perform functions other
than the conventional transmission, storage, and analysis of data, which are
well known functions of any computer.
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We do not agree with the Appellant that the claims are analogous to
the claims in BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016). (Reply Br. 12). Appellant argues that sending a
payment authorization including a PIN of the user to the mobi]e phone
operator which then sends a payment authorization to the payment processor
does not merely select information by content and source. Specifically,
Appellant argues that the sequence of events in the instant process differs
from the routine and conventional sequence of events for conducting mobile
payments.
In BAS'COA1, the Federal Circuit followed the Supreme Court's
guidance for determining whether the claims recite an inventive concept set
forth in Alice Corp. v. CLS Bank Int'!, 573 U.S. 208, 221-227 (2014). In
Alice, the Supreme Court explained that, under the second step of the patent-
eligibility analysis, "the relevant question is whether the claims do more
than simply instruct the practitioner to implement the abstract idea of
intermediated settlement on a generic computer." 573 U.S. 208, 225 (2014).
The Supreme Court also provided examples of claims that represent more
than instructions to implement an abstract idea on a generic computer, such
as claims that purport to improve the functioning of the computer itself and
claims that effect an improvement in any other technology or technical field.
Id. at 225.
Tun1ing to BASCOA1, the Federal Circuit held "[t]he inventive
concept described and claimed in the '606 patent is the installation of a
filtering tool at a specific location, remote from end-users, with
customizable filtering features specific to each end user." 827 F.3d at 1350.
In determining this feature to be an inventive concept, the Federal Circuit
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explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server and
is a technical improvement over prior art ways of filtering content. Id. at
1350-51. Notably, the Federal Circuit specifically determined that "the
claims may be read to 'improve[] an existing technological process."' Id. at
1351 ( citing Alice, 573 U.S. 208 at 223).
In BASCOM it was filtering by an ISP server which was the focus of
the claims, whereas claim 1 focuses on processing exchanging data between
a mobile operator and a payment processor regarding a payment which is
authorized by a user PIN. Claim 1 recites a process in which the payment is
made between the mobile operator and a payment processor with the
payment being authorized by a user PIN without revealing any personal
information of the customer. There is no improvement to the mobile phone,
mobile operator or the payment processor.
In addition, we agree with the Examiner's findings that the sequence
of events recited in the claim are well known and conventional as
demonstrated by "prior art as evidenced by the prior art associated with the
prosecution of the parent case 13/148,043 now patent 8,862, 792" (Ans. 5),
"[u]sing a PIN code to authorize a financial transaction through a mobile
phone using sms" (Ans. 7 (citing paragraphs 11 and 93 of US Patent Pub.
No. 2007/0107044 to Yuen)), and "[b]illing to a mobile operator" (Ans. 9
(citing paragraph 7 of US Patent Pub. No. 2006/0149644 to Sulmar;
paragraphs 38 and 65 of US Patent Pub. No. 2001/0037264 to Husemann)).
As such, the sequence of events recited in claim 1 is well known and
conventional. Therefore, we agree with the Examiner that claim 1 does not
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include an inventive concept.
In view of the foregoing, we will sustain this rejection of claim 1. We
will also sustain the rejection of the remaining claims because the Appellant
has not argued the separate eligibility of these claims.
DECISION
The rejection of claims 1-19 under 35 U.S.C. § 112, first paragraph is
not affirmed.
The rejection of claims 1-19 under 35 U.S.C. §101 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARIM ANWAR RAMMAL
Appeal2017-003902
Application 14/222,615
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority opinion affirming the
Examiner's rejection of claims 1-19 under 35 U.S.C. § 101.
In analyzing whether a claim recites patent-eligible subject matter, we
apply a two-step framework, earlier set out in Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 566 U.S. 66 (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
Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,217 (2014).
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
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idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 221 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed
to" two prong test to: 1) evaluate whether the claim recites a judicial
exception, i.e., a law of nature, natural phenomenon, or abstract idea, and
2) if the claim recites a judicial exception, evaluate whether the claim
"appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 54 (Jan. 7, 2019) (hereinafter "2019 Guidance").
With regard to the first prong of the 2019 Guidance, I agree with the
majority opinion "that the Specification discloses that the claims are directed
to conducting secure purchase and payment transactions." (Opinion 6
( citing Spec. ,r 2).) I also agree with the majority opinion that "the claims
are directed to conducting secure purchases and payment transactions, which
is a sales activity and thus is a method of organizing human activities, i.e. an
abstract idea." ( Opinion 12 ( emphasis omitted); see also id. at 8.)
With regard to the second prong, I do not agree with the majority
opinion that the recitations in claim 1 "do not impose meaningful limits on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." (Opinion 8 (citing 2019
Guidance at 55).)
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Claim 1 recites that "the payment processor ... is implemented by
first circuitry configured to send a payment authorization request to a mobile
operator," that "the mobile operator ... is implemented by second circuitry
configured to send, over a mobile network of the mobile operator, a payment
authorization request text message to a mobile phone of the user," "the
mobile phone ... payment authorization request text message, is
implemented by third circuitry configured to send, over the mobile network
of the mobile operator, a payment authorization text message," "the second
circuitry ... is further configured to receive the payment authorization text
message ... over the mobile network of the mobile operator," "wherein no
financial information of the user nor the personal identification number of
the user are sent to the payment processor." (Emphasis added.)
Claim 1 refers to four entities: a mobile phone of a user, a merchant,
a payment processor, and a mobile operator. Claim 1 does not recite via
what method or system information is sent between ( 1) the merchant and the
payment processor, or (2) the payment processor and the mobile operator.
But claim 1 does recite that information sent between (3) the mobile
operator and the mobile phone of the user is sent via a mobile network of the
mobile operator. (See Claim 1.) In short, claim 1 recites a specific network
via which the recited communications between the mobile operator and the
mobile phone of the user, i.e., the payment request and authorization text
messages, are sent.
In view of the recitation in claim 1 of a specific network via which the
recited communications between the mobile operator and the mobile phone
of the user are sent, I would, in this case, determine that claim 1 imposes a
meaningful limit on the abstract idea to which claim 1 is directed, i.e.,
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"conducting secure purchases and payment transactions" (see Opinion 12;
see also id. at 8), such that "the claim is more than a drafting effort designed
to monopolize the judicial exception" (see 2019 Guidance at 54).
I respectfully dissent from the affirmance of the rejection under§ 101.
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