Ex Parte Webber et al

Patent Trial and Appeal Board

Oct 3, 2017

13431023 (P.T.A.B. Oct. 3, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/431,023 03/27/2012 Jo WEBBER 101035-5005 7294
9629 7590 10/05/2017
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/05/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents @ morganlewis.com
karen.catalano @ morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JO WEBBER and PRADEEP ITTYCHERIA
Appeal 2015-003647
Application 13/431,023
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and SHEILA F.
McSHANE, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1—23 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-003647
Application 13/431,023
THE INVENTION
The Appellants’ claimed invention is directed to an Internet payment
system and method (Spec., para. 6). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A computer-implemented method of establishing an online
account for a prospective user, comprising a non-transitory computer
readable medium including a program and a computer executable
program code, the method comprising:
establishing, by a custodian at a first server computer, a first
account having a direct deposit component linked to a debit card
component, both components being associated with a prospective
user, the settings of the first account being stored in a database and
being controlled by the custodian, the prospective user being different
from the custodian;
establishing a username and password associated with the
prospective user, the username and password being stored in the
database;
establishing, at a service requester server computer, a merchant
account with a service requester to transact payment from the debit
card component of the first account upon a purchase request by the
prospective user, the service requester being previously approved by
the custodian in the settings of the first account;
funding the direct deposit component of the first account by
contributors approved by the custodian; and
transacting the purchase request by supplying the prospective
user's username and password to the first account and verifying that
this information is consistent with the settings of the first account, and
transferring payment from the debit card component of the first
account to the merchant account,
wherein the prospective user is identified to the merchant
account solely by the username and password, and
wherein shipping information for the purchase request is
provided to the merchant account from the online account according
to the specific control parameters, such that the prospective user
cannot change the shipping information during the purchase request
transaction.
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Appeal 2015-003647
Application 13/431,023
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—6 and 12—17 are rejected under 35U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1—23 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement and
show possession of the invention.
3. Claims 7—9, 12, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Perlman (US 2010/0223184 Al; Sept. 2, 2010) and
Bishop et al. (US 2009/0299841 Al; Dec. 3, 2009).
4. Claims 1-6, 10, 11, 13, 15, and 18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Perlman, Bishop, and Collas et al. (US
2010/0114733 Al; May 6, 2010).
5. Claims 16, 17, 22, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Perlman, Collas, Bishop, and Scipioni et al. (US
2009/0112763; Apr. 30, 2009).
6. Claims 19 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Perlman, Collas, Bishop, and Vishnik et al. (US
2003/0204445 Al; Oct. 30, 2003).
7. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Perlman, Collas, and Vishnik.
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Appeal 2015-003647
Application 13/431,023
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner has determined that rejection under 35 U.S.C. § 101 is
properly made (Ans. 3, 4, Final Rej. 7, 8).
In contrast, the Appellants argue that the rejection of claims 1—6 and
12—17 under 35 U.S.C. § 101 is improper (App. Br. 15, 16).
We agree with the Appellants. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-003647
Application 13/431,023
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept,” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id at 2358.
Here, the Answer was mailed on November 28, 2014 which was after
the date Alice was decided. The Answer fails to set forth any analysis to
show both that the claims are directed to an abstract idea, and also that that
the claims do not amount to “significantly more” than any abstract idea. The
Final Rejection mailed June 18, 2014 also provided an incomplete analysis
and appears to only apply the machine-or-transformation test which is a
useful clue but not the sole test for deciding patent eligibility. See Bilski v.
Kappos, 561 U.S. 593 (2010) slip opinion at 8. As an incomplete analysis
has been performed for patent eligibility under 35 U.S.C. § 101, this
rejection is not sustained.
Rejection under 35 U.S.C. § 112 (firstparagraph)
The Examiner has rejected the claims under 35 U.S.C. § 112 (first
paragraph) for failure to provide support for the claim limitation:
wherein the prospective user is identified to the merchant
account solely by the username and password, and
wherein shipping information for the purchase request is
provided to the merchant account from the online account according
to the specific control parameters, such that the prospective user
cannot change the shipping information during the purchase request
transaction
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Appeal 2015-003647
Application 13/431,023
(Ans. 2, 3).
In contrast, the Appellants argue support for this claim limitation is
found in the Specification at paragraphs 3—6, 46-49, 73, and 75 (App. Br.
14, 15). A review of these cited portions fails to disclose the above cited
claim limitation. For example, paragraph 48 states that a password may be
used, but not this is not disclosed as solely the method that can be used as
claimed. Further, there is no specific mention of restriction on shipping
information as claimed at these cited portions.
The Appellants also states that application 13/431,023 is a parent
which incorporates application 12/991,059 and cites support in that
application at paras 71, 74, and 75 as providing support (App. Br. 15). As
an initial matter, the Specification does not cite to these applications as being
parent applications. Regardless, a review of the 12/991,059 (which lists the
same inventors as this application) at the cited paragraphs fails to disclose
the cited claim limitation as well.
For these above reasons, this rejection of record is sustained.
Rejections under 35 U.S.C. § 103
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation requiring:
wherein the prospective user is identified to the merchant
account solely by the username and password, and
wherein shipping information for the purchase request is
provided to the merchant account from the online account according
to the specific control parameters, such that the prospective user
cannot change the shipping information during the purchase request
transaction.
(App. Br. 18—22).
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Appeal 2015-003647
Application 13/431,023
In contrast, the Examiner has determined that the cited claim
limitation is shown by Bishop at paras. 52 and 76, or would have been an
obvious modification (Final Rej. 10, Ans. 7).
We agree with the Appellants. Here, the citations to Bishop at paras.
52 and 76 fail to specifically disclose that the user is identified to the
merchant solely by the username and password, or that the shipping
information cannot change during the purchase request transaction. The
rejection also fails to provide an articulated reasoning with rational
underpinnings for the combination without impermissible hindsight and the
rejection of claim 1 and its dependent claims is not sustained. Claims 15 and
18 are rejected on the same grounds and the rejection of these claims and
their dependent claims is not sustained as well.
Independent claim 7 contains a similar limitation to those identified
above for which the Examiner relies on Bishop at paras. 52 and 76 for
disclosure. As noted above Bishop at those portions fails to disclose those
claim limitations. Likewise the rationale in this rejection also fails to
provide articulated reasoning with rational underpinnings for the
combination without impermissible hindsight and the rejection of claim 7
and its dependent claims is not sustained. Claim 12 is rejected on the same
grounds and the rejection of this claim and its dependent claims is not
sustained as well.
The Appellants also argue that the rejection of claim 22 is improper
because the cited combination would not have been obvious (App. Br. 22,
23). The Examiner in the Answer at the Appeal Brief states that similar
features were addressed in the analysis of claims 1 and 7 addressed above.
We agree that the cited similar rejection here, like the rejections for claim 1
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Appeal 2015-003647
Application 13/431,023
and claim 7 addressed above fails to provide articulated reasoning with
rational underpinnings for the combination without impermissible hindsight
and the rejection of claim 22 and its dependent claim is not sustained.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 35U.S.C. § 112 (first paragraph) as listed in the
Rejections section above.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 and 35 U.S.C. § 103(a) as listed
in the Rejections section above.
DECISION
The Examiner’s rejection of claims 1—23 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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