Ex Parte WINNER et al

Patent Trial and Appeal Board

Jul 27, 2018

13211262 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/211,262 08/16/2011
131870 7590 07/31/2018
Shumaker & Sieffert P.A./Twitter, Inc.
1625 Radio Drive
Suite 100
Woodbury, MN 55125
FIRST NAMED INVENTOR
Jeffrey WINNER
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.
1228-004US01 3848
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY WINNER, GERAUD BOYER,
AMIT KUMAR, and ECKART WALTHER
Appeal2017-004475
Application 13/211,262
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and
DAVID J CUTITTA II, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 32-51. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention is directed to "a system and method for
monitoring for transactions" (Spec. ,r 2).
1 The real party in interest is Twitter Inc. (App. Br. 3).
Appeal2017-004475
Application 13/211,262
Independent claim 32, reproduced below, is exemplary of the subject
matter on appeal.
32. A method comprising:
receiving, at an offer engine including a computer
processor, a request to generate a merchant account for a
merchant;
in response to the request to generate the merchant
account, generating the merchant account;
receiving, the computer processor of the offer engine, a
request to authorize a transaction involving a payment card
configured for submitting a transaction request from the
merchant in order to extract identifying information associated
with the merchant wherein the request to authorize the
transaction is transmitted from the merchant to the offer engine
via a payment processor over a network, and wherein the offer
engine is part of a computer system of an issuing entity of the
payment card;
extracting, by the computer processor of the offer engine,
a merchant identification code assigned to the merchant from
the request to authorize the transaction;
associating, in a database, the merchant account with the
extracted merchant identification code assigned to the
merchant; and
monitoring transactions linked to the merchant via the
merchant identification code to redeem offers associated with
one or more customer payment cards.
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REJECTION2
The Examiner rejected claims 32-51 under 35 U.S.C. § 101 as
directed to non-statutory subject matter (Final Act. 3--4).
ANALYSIS
In Alice, the Supreme Court reiterates an analytical two-step
framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66, 79 (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 Bankint'l, 134 S. Ct. 2347, 2355 (2014). The first
step in the analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. Id. If
the claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims
are directed to a patent-ineligible concept, the second step in the analysis is
to consider the elements of the claims "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In other words,
the second step is to "search for an 'inventive concept'-i.e., an element or
2 The Examiner withdrew the rejection of claims 32-51 under 35 U.S.C.
§ 112, second paragraph (pre-AIA), as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventors regard as the invention (Final Act. 2-3) and under 35 U.S.C. § 103
(Final Act. 3).
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Application 13/211,262
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."' Id. (citing Mayo, 566 U.S. at 72-73).
The Examiner rejects claims 32-51 under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Specifically,
the Examiner finds (1) the claims as a whole are directed to an abstract idea
of "authorization of financial transactions" which is a fundamental economic
practice (Ans. 5), and (2) the additional claim elements, when considered
both individually and in combination, do not amount to significantly more
than an abstract idea of authorizing financial transactions-a fundamental
economic practice (Final Act. 3--4). Further, the additional elements in the
claims other than the abstract idea per se amount
to no more than 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. Viewed as a whole, these
additional claim element( s) do not provide meaningful
limitation( s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself.
(Final Act. 4 citing "Alice v. CLS Bank, US Supreme Court, No. 13-298,
6/19/2014").
Appellants contend the Examiner erred in finding Appellants' claims
are directed to non-statutory subject matter because the claims provide "a
specific solution to a technical problem arising in systems that monitor
electronic payment card transactions over a network, in real-time, to perform
offline conversion tracking" (App. Br. 5, 8). Appellants' arguments discuss
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Application 13/211,262
embodiments and elements in the Specification; however, the discussed
embodiments and elements are not recited in the claims (App. Br. 5-8).
Appellants also argue the Examiner has not made a prima facie case
under the first prong of the Alice test (.App. Br. 8-9). That is, Appellants
contend, the Examiner did not perform a "thorough analysis" of the rejection
by merely stating the claims are directed to the abstract idea of authorizing
financial transactions (App. Br. 9). Thus, according to Appellants assert,
there is insufficient notice and they are unable to effectively respond
(App. Br. 8-9). We do not agree.
Patent eligibility is a question of law that is reviewable de nova (see
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)). The
Federal Circuit has repeatedly noted that "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has held
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." In re Jung, 637 F.3d 1356,
13 62 (Fed. Cir. 2011 ). Thus, all that is required of the Office is that it set
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id., see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is
violated when [the] rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
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rejection."). In the instant application, Appellants do not contend the
Examiner's rejection under§ 101 is not understood or that the Examiner's
rejection, otherwise, fails to satisfy the notice requirements of§ 132.
Indeed, Appellants' understanding of the rejection is clearly manifested by
their response as set forth in the briefs.
Further, we find the Examiner has provided an adequate explanation
to meet the notice requirement (see Final Act. 3--4; Ans. 5---6). Specifically,
we find the Examiner met this burden by determining the claims, based on
Appellants' Specification, are directed to authorizing financial
transactions-a fundamental economic practice (Final Act. 3--4; Ans. 6-8).
Appellants provide no argument persuasively demonstrating the claims are
not directed to a fundamental economic practice. As we find the first step of
Alice results in a patent ineligible concept, we tum to step 2 to determine if
there is some inventive concept of the abstract idea in the application.
Appellants argue the additional elements of the claims amount to
"significantly more" than the "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" (App. Br. 9). Appellants assert there is no "novelty rejection under
35 U.S.C. § 102 or an obviousness rejection under 35 U.S.C. § 103"
evidencing that the additional elements are not well understood or routine
(App. Br. 10). Appellants also assert the Examiner has not demonstrated
that implementing claim 32 would "preempt previously existing
implementations of the alleged abstract idea" and claim 32 does not tie up
the underlying financial transactions, therefore, claim 32 does not preempt
the "alleged abstract idea" (id.). Further, Appellants argue the claims add
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unconventional features not found in the prior art (App. Br. 10-11;
"receiving ... a request to authorize a transaction involving a payment card
configured for submitting a transaction request from the merchant in order to
extract identifying information associated with the merchant wherein the
request to authorize the transaction is transmitted from the merchant to the
offer engine via a payment processor over a network, and wherein the offer
engine is part of a computer system of an issuing entity of the payment
card"). We do not agree.
As to Appellants' argument there is no novelty or obviousness
rejection thus the claims recite "significantly more," we agree with the
Examiner that "the concept of inventiveness [ under § 101] is distinct from
that of novelty" (Ans. 9) and "[t]he inventiveness inquiry of§ 101 should
therefore not be confused with the separate novelty inquiry of§ 102 or the
obviousness inquiry of§ 103." See Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1312 (Fed. Cir. 2016).
As to Appellants' preemption argument, we note "[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter" under
the Alice/ Mayo framework, "preemption concerns are fully addressed and
made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016) "the absence of
complete preemption does not demonstrate patent eligibility." ( quoting
Ariosa Diagnostics, 788 F.3d at 1379).
As to Appellants' argument that the claims add unconventional
features not found in the art, we agree with the Examiner that using a
computer to perform abstract steps like those claimed, is not enough under
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Alice ( Ans. 11 ). Appellants' Specification states the invention is a system
and method for monitoring transactions and their claim recites "the offer
engine is part of a computer system," presenting no evidence as to how or
why the claim limitations are unconventional, other than to state they are
(App. Br. 11 ).
In light of the above, we conclude the Examiner did not err in finding
Appellants' claimed invention is directed to patent ineligible subject matter.
Thus, we sustain the Examiner's rejection of claims 32-51 under 35 U.S.C.
§ 101.
DECISION
The Examiner's decision rejecting claims 32-51 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)(l)(iv).
AFFIRMED
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