Ex Parte STIJEN et al

Patent Trial and Appeal Board

Jul 24, 2018

13785318 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/785,318 03/05/2013
21839 7590 07/26/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Rene A.A. STIJEN
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.
007 6412-000131 7904
EXAMINER
CHAKRA V ART!, ARUNA VA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RENE A.A. STIJEN and STEVEN ROBERT SHIRLEY
Appeal2016-007203 1
Application 13/785,3182
Technology Center 3600
Before MURRIEL E. CRAWFORD, WILLIAM V. SAINDON, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 We make reference to the Specification ("Spec.," filed Mar. 5, 2013),
Appeal Brief ("Appeal Br.," filed Dec. 18, 2015), and Reply Brief
("Reply Br.," filed July 19, 2016), as well as the Examiner's Answer
("Ans.," mailed May 19, 2016) and Final Office Action ("Final Act.,"
mailed July 28, 2015).
2 According to the Appeal Brief, the real party in interest is MasterCard
International Incorporated. Appeal Br. 2.
Appeal2016-007203
Application 13/785,318
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the
Examiner's decision to reject claims 1--4, 6-15, and 17-22. We have
jurisdiction under § 6(b ).
We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention "relates to methods and systems for providing
integrated electronic commerce marketplace and settlement functionality,
specifically increasing the efficiency throughout the supply chain by
integrating an electronic commerce marketplace with a payment card
processing network." Spec. ,r 2. Claims 1 and 12 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for facilitating a market transaction,
compnsmg:
storing, in a database, a plurality of quote data entries,
wherein each quote data entry includes data related to a supplier
quote for goods or services and is associated with a supplier;
receiving, by a receiving device, a purchase order for
goods or services, wherein the purchase order identifies a
supplier;
transmitting, by a transmitting device, the purchase order
to the supplier identified in the purchase order;
rece1vmg, by the rece1vmg device, an mv01ce
corresponding to the purchase order;
identifying, by a processing device, a virtual payment
number;
3 We use the term "Appellant" herein to refer to any and all appellants
collectively.
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transm1ttmg, by the transm1ttmg device, the virtual
payment number to the supplier for funding of a financial
transaction based on the invoice;
receiving, by the receiving device, transaction data for the
financial transaction; and
mapping the received transaction data to the purchase
order.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Singh
Baher
Lovelett et al. ("Lovelett")
US 2001/0047311 Al
US 2011/0137748 Al
US 2014/0324687 Al
REJECTIONS
Nov. 29, 2001
June 9, 2011
Oct. 30, 2014
The Examiner rejects the claims on appeal as follows:
I. claims 1--4, 6-15, and 17-22 under 35 U.S.C. § 101 as non-statutory
subject matter;
II. claims 1, 2, 4, 6-13, 15, and 17-22 under 35 U.S.C. § I03(a) as
unpatentable over Singh and Baher; and
III. claims 3 and 14 under 35 U.S.C. § I03(a) as unpatentable over Singh,
Baher, and Lovelett.
ANALYSIS
Rejection I: Non-Statutory Subject Matter
Appellant argues claims 1--4, 6-15, and 17-22 as a group.
Appeal Br. 5-9; Reply Br. 2-6. \Ve select independent claim 1 as
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representative. The remaining claims of the group stand or fall with
independent claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent eligible if it is a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include an
implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas
are not patentable." See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134
S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)).
To "distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts," the Supreme Court has provided a two-step
framework. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)). The first step considers
whether a claim is directed to a patent-ineligible concept, e.g., an abstract
idea. Id. (citing Mayo, 132 S. Ct. at 1296-97). Ifso, the second step then
considers whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Id. (citing Mayo, 132 S. Ct. at 1294,
1297-98).
In rejecting independent claim 1 under 35 U.S.C. § 101, the Examiner
analyzes the claim using this two-step framework. Final Act. 2-3. Pursuant
to the first step, the Examiner determines the claim is directed to "electronic
commerce marketplace and settlement," which the Examiner determines is a
fundamental economic practice and, therefore, an abstract idea. Id. at 2.
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Under the second step, the Examiner determines the claim does not recite
significantly more than the abstract idea because the additional elements,
considered alone or in combination, amount to no more than "mere
instructions to implement the abstract idea on a computer" or "recitation of
generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry." Id. at 3.
At the outset, we are not persuaded of Examiner error by Appellant's
argument that independent claim 1 does not preempt others from using the
abstract idea of "electronic commerce marketplace and settlement."
Appeal Br. 6-7. Although preemption may be the basis for excluding
abstract ideas from eligible subject matter, it is not the test for determining
whether a claim is patent eligible. Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability .... For this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." (citation omitted)).
Under the first step of the analysis, Appellant contends that the
Examiner overgeneralizes independent claim 1 by omitting key features.
Reply Br. 3--4. Appellant, however, does not explain, and we fail to see,
how the omitted claim features change the character of the claim as a whole
being directed to "electronic commerce marketplace and settlement." See
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015) ("Under step one of Mayo/Alice, the claims are considered
in their entirety to ascertain whether their character as a whole is directed to
excluded subject matter.").
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Here, independent claim 1 recites a method "for facilitating a market
transaction," and the steps of the claim result in a completed transaction.
Moreover, the Specification explains that the invention provides "integrated
electronic commerce marketplace and settlement functionality." Spec. ,r 2.
As such, Appellant does not apprise us of error in the Examiner's
determination that the claim is directed to "electronic commerce marketplace
and settlement."
Appellant also asserts the Examiner has not shown that "electronic
commerce marketplace and settlement" is similar to a concept that the courts
have identified as an abstract idea. Reply Br. 5. We disagree. Contrary to
Appellant's assertion, the Examiner determines "electronic commerce
marketplace and settlement" is a fundamental economic practice
(Final Act. 2), which is a concept the courts have routinely held to be an
abstract idea. See, e.g., Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) ("[T]he patent claims here are directed
to a fundamental economic practice, which Alice made clear is, without
more, outside the patent system.").
Seeing no error in the Examiner's determination that independent
claim 1 directed to an abstract idea pursuant to the first step of the Alice
analysis, we tum to Appellant's arguments under the second step. Appellant
contends the claim recites significantly more than the abstract idea because it
recites using a virtual payment number unique to a transaction to complete
the transaction, as well as mapping the completed transaction to the
underlying purchase order using the virtual payment number. Appeal Br. 6.
Appellant's argument is not convincing.
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The second step of the Alice analysis considers "the elements of each
claim both individually and 'as an ordered combination' to deten11ine
whether the additional elements 'transforni the nature qf the claim' into a
patent-eligible application." Alice, 134 S. Ct at 2355 (emphasis added)
(quoting lviayo, 132 S. Ct. at 1298, 1297). Using a virtual payment number
and mapping the completed transaction to the purchase order further
describe the abstract idea of "electronic commerce marketplace and
settlement," and, therefore, do not transfmm the nature of the claim into a
patent-eligible application.
Appellant also asserts independent claim l recites additional
limitations that, as an ordered combination, amount to significantly more
than the abstract idea. Appeal Br. 8. In doing so, Appellant relies on the
steps of receiving a purchase order, transmitting the purchase order to a
supplier, receiving a corresponding invoice from the supplier, identifying a
virtual payment number for that invoice, transmitting the virtual payment
number to the supplier for funding a transaction based on that invoice,
receiving transaction data for the transaction, and then mapping the
transaction data to the purchase order. Id. Appellant's argument is not
persuasive of error.
As set forth above, the second step of the Alice analysis considers
whether the additional elements of a claim transform the nature of the claim
into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citation
omitted). Here, Appellant does not explain how these steps, as an ordered
combination, transform the nature of the claim into something other than the
abstract idea of "electronic commerce marketplace and settlement." To the
contrary, these steps simply describe the abstract idea.
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Appellant further argues independent claim l recites significantly
more than the abstract idea because the claimed invention uses computer
technology to overcome a problem specifically arising in the realm of
computer networks and electronic commerce marketplace and settlement,
namely "mapping of a purchase order to a financial transaction that has been
processed as related to that purchase order, where a single real account
number may be used to fund an overwhelmingly large number of
transactions, making mapping of the transactions to purchase orders
unfeasible." Appeal Br. 7. As Appellant's argument demonstrates,
however, the problem is the inability to map a purchase order to a financial
transaction when a single real account number is used, not a problem
specifically arising in the realm of computer networks and electronic
comrnerce marketplace and settlement.
Appellant additionally contends independent claim 1 recites
significantly more than the abstract idea because it is "not claiming a
business method per se, but instead providing a technical method of
mapping transaction data to the purchase order based on [ the virtual payment
number]." Reply Br. 6. Appellant's argument is not persuasive of error.
Here, the claim recites various computing components. According to the
Supreme Court, however, "[g]iven the 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,
134 S. Ct. at 2358 (citation omitted) (quoting Mayo, 132 S. Ct., at 1297). As
such, the Court explained that "the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
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idea ... on a generic computer." Id. at 2359. Appellant's simple assertion
that the claim provides a "technical method" does not distinguish the claim
from the generic computer implementation of the abstract idea.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that independent claim 1 is patent-ineligible.
Accordingly, we sustain the rejection of independent claim 1 with claims 2-
4, 6-15, and 17-22 falling therewith.
Rejection II: Obviousness based on Singh and Baher
As an initial matter, we are not persuaded of error by Appellant's
contention that the Final Office Action does not comply with MPEP
§ 707.07([) because the Examiner failed to respond to all of the arguments.
Appeal Br. 9-11. The Examiner's alleged failure to follow the examination
guidelines set forth in the MPEP invokes the supervisory authority of the
Director and is reviewable by petition, not appeal. 37 C.F.R. § 1.181.
Appellant also argues that Singh does not disclose
"receiving ... transaction data for the financial transaction," as recited in
independent claim 1 and similarly recited in independent claim 12.
Appeal Br. 11-13; Reply Br. 6-7. According to Appellant:
"[T]ransactions" in Singh consist of the matching of a buyer to a
supplier, without any additional data regarding a financial
transaction being retrieved or obtained in any way. Once the
procurement transaction is set up by the system in Singh, the only
additional actions that are performed are delivery actions. As
such, there is no suggestion in Singh of receiving transaction data
for the financial transaction, as recited in the appealed claims.
Appeal Br. 12. Appellant's argument is not convincing.
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In addition to matching a buyer to a supplier, Singh's method
"includes executing, by a processor connected with the website and
according to inputs transmitted to the website from a user associated with
the matched purchase order and/or quote, an electronic transaction with data
from the matched purchase order and quote." Singh ,r 19 (emphasis added).
Singh also discloses "[t]he invention allows the buyer to receive quotes from
a virtually unlimited number of suppliers, and then to negotiate and
conclude the transaction entirely online." Singh ,r 27 (emphasis added).
Singh further discloses "the transaction system 111 also includes a database
server 124 connected with a database 130 for long-term archival of
transaction data, and a transaction server 126 for executing a transaction
program on data stored in the database 130 and accessible from the database
server 124." Singh ,r 35.
Although Singh does not explicitly disclose receiving transaction data,
Singh discloses executing transactions online with data from the matched
purchase order and quote, as well as archiving transaction data. A person of
ordinary skill in the art would have understood that in order to execute
transactions online and to archive transaction data, Singh's transaction
system receives transaction data. See In re Jacoby, 309 F.2d 513, 516
( CCP A 1962) ( explaining that persons skilled in the art "must be presumed
to know something" about the art "apart from what the references disclose").
Appellant, therefore, does not apprise us of error in the Examiner's finding
that Singh discloses receiving transaction data for the financial transaction,
as required by independent claims 1 and 12. Final Act. 4--5; Ans. 6-7.
Appellant further argues Singh does not disclose "mapping the
received transaction data to the purchase order," as recited in independent
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claim 1 and similarly recited in independent claim 12. Appeal Br. 13-14.
Per Appellant, "Singh fails to disclose or suggest obtaining financial
transaction data, and therefore is unable to map financial transaction data to
a purchase order." Id. at 14. We, however, do not find Appellant's
argument persuasive of error because, as we explained above, Appellant
does not apprise us of error in the Examiner's finding that Singh discloses
receiving transaction data.
Appellant additionally argues that Singh fails to disclose this
limitation because "no matching in Singh occurs following the execution of
the transaction, and therefore no matching can be made of the purchase order
to the transaction data." Appeal Br. 13-14. Appellant's argument, however,
is not commensurate with the scope of the claims. Namely, Appellant
suggests that transaction data does not exist before a transaction is executed,
but the claims are not so limited. The claims do not define "transaction
data." Moreover, the Specification uses "transaction data" to describe data
associated with a transaction. Spec. ,r 39 ("Transaction data may include a
transaction amount, the transaction time and/or date, an invoice number, a
purchase order, the [ virtual payment number] used for payment, etc.").
Here, as the Examiner finds, Singh's system matches purchase orders and
supplier quotes. Final Act. 5---6 ( citing Singh ,r,r 46, 51 ). Like the
"transaction data" described in the Specification, supplier quotes are part of
a transaction between a purchaser and a supplier. Accordingly, we
determine that supplier quotes fall within the broadest reasonable
interpretation of "transaction data." Appellant, therefore, does not apprise us
of error in the Examiner's finding that Singh discloses mapping the received
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transaction data to the purchase order, as recited in independent claims 1 and
12.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's rejection of independent claims 1 and 12, and we, therefore,
sustain the Examiner's rejection of these claims. Appellant does not present
arguments for the dependent claims 2, 4, 6-11, 14, 15, and 17-22 apart from
the arguments for the independent claims. Accordingly, we similarly sustain
the Examiner's rejection of these dependent claims.
Rejection III: Obviousness based on Singh, Baher, and Lavelett
Appellant contends that Lovelett is not available as prior art.
Reply Br. 7. Appellant is correct that common ownership may disqualify a
reference as prior art for purposes of 35 U.S.C. § 103. Namely, in
accordance with 35 U.S.C. § 103(c)(l), subject matter developed by another
person, which qualifies as prior art only under one or more of subsections
( e ), ( f), and (g) of§ 102, "shall not preclude patentability under this section
where the subject matter and the claimed invention were, at the time the
claimed invention was made, owned by the same person or subject to an
obligation of assignment to the same person." Lovelett appears to be prior
art only under § 102( e ), and, therefore, would not be available as prior art for
this rejection under § 103 upon a sufficient showing that Lovelett and the
claimed invention, were, at the time the claimed invention was made,
commonly owned or subject to an obligation to be commonly owned.
Appellant, however, makes this argument for the first time in the
Reply Brief. Consequently, this argument is untimely, and is waived here in
the absence of any showing of good cause why the argument could not have
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been timely presented in Appellant's Appeal Brief. 37 C.F.R. § 4I.41(b )(2);
see also In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an
argument not first raised in the brief to the Board is waived on appeal).
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's rejection of claims 3 and 14. We, therefore, sustain the
Examiner's rejection of these claims.
DECISION
The Examiner's decision to reject claims 1--4, 6-15, and 17-22 under
35 U.S.C. § 101 is affirmed.
The Examiner's decision to reject claims 1--4, 6-15, and 17-22 under
35 U.S.C. § 103(a) 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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