BlackBerry Limited

Patent Trials and Appeals BoardAug 31, 2021

2021001466 (P.T.A.B. Aug. 31, 2021)

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. 16/119,386 08/31/2018 Siamak SARTIPI 1679-2194 3790 136869 7590 08/31/2021 Wilson Lue LLP/BlackBerry Files 250 University Avenue, 5th Floor Toronto, ONTARIO M5H 3E5 CANADA EXAMINER BARTLEY, KENNETH ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/31/2021 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): docketing@wilsonlue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SIAMAK SARTIPI ____________ Appeal 2021-001466 Application 16/119,386 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and BRUCE T. WIEDER, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 2–4, 6, 7, and 13–15. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims an electronic payment system using mobile wireless communications device and associated methods. (Spec. ¶ 2, Title). 1 The word “Appellant” is used to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies BlackBerry Limited as the real party in interest. Appeal Br. 3. Appeal 2021-001466 Application 16/119,386 2 Claim 2 is representative of the subject matter on appeal. 2. A method for controlling transmission of information during a purchase transaction in a privacy-enhancing manner, the method comprising: a purchaser device initiating a purchase transaction by autonomously generating a transaction identifier and transmitting the transaction identifier and a device identifier over a wireless network to a remote payment processor server system, wherein the purchaser device is a mobile wireless communications device, and wherein the remote payment processor server system recognizes the purchaser device using the device identifier; the merchant device obtaining the transaction identifier but not the device identifier directly from the purchaser device; the merchant device transmitting, over a network to the remote payment processor server system, the transaction identifier obtained directly from the purchaser device and transaction information; the purchaser device receiving, from the remote payment processor server system, the transaction information; the purchaser device transmitting a transaction confirmation and account access information to the remote payment processor server system. THE REJECTIONS Claims 2–4, 6, 7, and 13–15 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 2–4, 6, 7, and 13–15 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement.2 Claims 2–4, 6, 7, and 13–15 are rejected under 35 U.S.C. § 112(b) as being indefinite. 2 Claim 5 has been cancelled. Therefore, we will only address this rejection as it is directed to claims 2–4, 6, 7, and 13–15. Appeal 2021-001466 Application 16/119,386 3 ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 2–4, 6, 7, and 13–15 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 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. CLS Bank Int’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 specification, 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. v. Active Network, Inc., 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 Appeal 2021-001466 Application 16/119,386 4 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 imposes a meaningful limit on the judicial exception such that it is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, pp. 50–57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims recite claim elements which cover commercial interactions including transaction activities and therefore recite a certain method of organizing human activity. (Final Act. 9). The Examiner finds the judicial exception is not integrated into a practical application because the computer hardware is recited at a high-level of generality such the recitation amounts to no more than mere instructions to apply the exception using a generic computer component. The Examiner also finds that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not add significantly more to the exception. (Final Act. 10). The Examiner considers the steps such as obtaining (receiving) and transmitting to be steps that are considered extra solution activity and mere instructions to apply the exception using general computer components. (Id.) The Specification discloses that the invention relates to the field of electronic payment systems and more particularly to using a mobile wireless communications device to facilitate an electronic payment at a point-of-sale (POS). (Spec. ¶ 2). A payment processor server is configured to receive the purchaser device ID and purchaser account access information (Spec. ¶ 19). The Specification also discloses that the payment processor server does not Appeal 2021-001466 Application 16/119,386 5 send the purchaser device ID to the POS terminal thereby shielding the purchaser device ID and preserving the privacy of the mobile wireless communications device from the merchant and POS service provider server. (Spec. ¶ 39). Consistent with this disclosure, claim 2 recites “a purchaser device initiating a purchase transaction by autonomously generating a transaction identifier,” “merchant device obtaining the transaction identifier,” “merchant device transmitting . . . the transaction identifier,” “the purchaser device receiving . . . the transaction information,” and “purchaser device transmitting a transaction confirmation.” We agree with the Examiner’s findings that claim 2 is directed to controlling the behavior of persons concerning a purchase transaction. More specifically, we determine that claim 2 recites a method of conducting a purchase transaction between a merchant device and a purchaser device in such a way as to protect the identity of the purchaser, i.e., a commercial or legal interaction. See Guidance 84 Fed. Reg. at 52. Moreover, controlling the behavior of persons concerning a purchase transaction is a fundamental economic practice. Thus claim 2 recites the judicial exception of a method of organizing human behavior, which is not patentable subject matter. See Alice, 573 U.S. at 217–20. Also, we find the steps of “transmitting the transaction identifier,” “obtaining the transaction identifier,” “receiving . . . transaction information,” and “transmitting a transaction confirmation” constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Appeal 2021-001466 Application 16/119,386 6 Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that the claims recite the judicial exceptions of methods of organizing human activity and in the alternative, a mental process. Turning to the second prong of the “directed to test,” claim 2 requires a “mobile wireless communications device,” a “merchant device,” and a “remote payment processor server system.” These recitations do not integrate the recited judicial exceptions into a practical application because these recitations do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 54. In this regard, we find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 2 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. Appeal 2021-001466 Application 16/119,386 7 at 55. In addition, the recitations do not affect an improvement in the functioning of mobile wireless communications device, merchant device, or remote payment processor server system or other technology, do not recite a particular machine or manufacture that is integral to the claims, and do not transform or reduce a particular article to a different state or thing. Guidance, 84 Fed. Reg. at 54–55. Claim 2 is directed to judicial exceptions that are not integrated into a practical application and thus claim 2 is directed to abstract ideas. Turning to the second step of the Alice analysis, because we find that the claim 2 is directed to abstract ideas, the claim 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 ideas themselves. See Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73). The introduction of computers into the claim 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 ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any Appeal 2021-001466 Application 16/119,386 8 “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Id. at 223 (citations omitted). Instead, “the relevant question is whether claim 2 here does more than simply instruct the practitioner to implement the abstract ideas . . . on a generic computer.” Id. at 225. It does not. Taking the claim elements separately, the function performed by the computers at each step of the process is 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 trading 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, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computers of Appellant’s claim 2 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 Appeal 2021-001466 Application 16/119,386 9 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 ordering of the steps is, therefore, ordinary and conventional. Claim 2 does not, for example, purport to improve the functioning of the computers. As we stated above, the claims do not effect an improvement in any other technology or technical field. The Specification spells out different generic computers and equipment that might be used to implement the invention. (See, e.g., Spec. ¶¶ 29–31). Thus, claim 2 at issue amounts to nothing significantly more than instructions to apply the abstract ideas recited in the claim 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. at 226. We have reviewed all the arguments (Appeal Br. 5–6; Reply Br. 2–4) 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 emphasis, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that claim 2 recites an improved technical result in operation of communication systems that support commercial transactions Appeal 2021-001466 Application 16/119,386 10 because the method carries out the purchase transactions in such a way as to safeguard at least some of the purchaser’s privacy. However, claim 2 is “focused on providing information . . . , not on improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power, the purported advance ‘is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.’ We thus conclude that the claim[ is] directed to an abstract idea.” Id. at 1385 (citation omitted). In cases involving software innovations, such as we have here, the inquiry as to whether a claim is directed to an abstract idea “often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, 822 F.3d at 1335–36). Here, the recited devices and servers are invoked merely as tools. The only improvement relates to the abstract idea of conducting transactions without sending the purchaser device ID to the merchant. The focus of the claim is not on physical-realm improvement but on an improvement in wholly abstract ideas. SAP Am., Inc, 898 F.3d at 1168. Appellant argues that the claims recite a method that conserves computer resources because if the mobile device is unable to communicate, the transaction is not initiated at all so the resources of the merchant system or payment system are not engaged and therefore recites a technical improvement to the computers recited in claim 2. (Appeal Br. 6). We find the Appellant’s argument unpersuasive as to error in the Examiner’s or our Appeal 2021-001466 Application 16/119,386 11 characterization of what the claim is directed to because the method as claimed fails to adequately support it. We are unable to identify any claim language suggestive of an improvement in computer performance. Nor has Appellant directed us to any suggestion of the argued improvements in the Specification so as to find that “the specification as a whole . . . makes clear . . . the technological benefit.” Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1152 (Fed. Cir. 2019). An attorney argument that such an improvement exists is alone insufficient. See generally In re Glass, 474 F.2d 1015, 1019 (CCPA 1973); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and, In re Schulze, 346 F.2d 600, 602 (CCPA 1965). In any case, the fact that the resources of a mobile device are not consumed if the device is not on or able to initiate a purchase transaction is not a technical improvement to the purchaser device, merchant device, or server. In view of the foregoing, we will sustain this rejection as it is directed to claim 2. We will also sustain the rejection of claim 13 because the Appellant argues claims 2 and 13 as a group. (Appeal Br. 5). We will also sustain the rejection as it is directed to the remaining claims subject to this rejection for the same reasons. REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH We will not sustain this rejection. The Examiner finds that there is no teaching of the negative limitation recited in claim 2, i.e., “but not the device identifier” in the Specification. Negative claim limitations are governed by the same general law covering the written description requirement as positively recited claim elements, however, our reviewing court has also specifically addressed this Appeal 2021-001466 Application 16/119,386 12 category of claim limitations. In particular, the Federal Circuit has held that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Here, we identify the claim language at issue in this appeal to be a negative claim limitation, that is, the limitation expressly excludes a device identifier from the transaction identifier received by the merchant device. Based on the guidance of our reviewing court, we determine whether the Specification identifies any reason to exclude the device identifier. We find that the Specification at paragraph 39 discloses that the device identifier is excluded to preserve the privacy of the mobile wireless device. As such the Specification discloses a reason to exclude the device identifier from the data sent to the merchant device. In view of the foregoing, we will not sustain this rejection. REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH The Examiner finds that the word “remote” to describe the payment processor server is indefinite because the Specification does not define the term so the distance could by any distance. (Final Act. 12). We agree with Appellant’s argument in response to this rejection that the term “‘remote’ . . . is notorious in the field of electronic communication as referring to communications between devices that are physically separated by any distance.” (Appeal Br. 9). In view of the foregoing, we will not sustain this rejection. Appeal 2021-001466 Application 16/119,386 13 CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 2–4, 6, 7, and 13–15 under 35 U.S.C. § 101. We conclude the Examiner did err in rejecting claims 2–4, 6, 7, and 13–15 under 35 U.S.C. § 112 first and second paragraph. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–4, 6, 7, 13–15 101 Eligibility 2–4, 6, 7, 13–15 2–4, 6, 7, 13–15 112(a) Written Description 2–4, 6, 7, 13–15 2–4, 6, 7, 13–15 112(b) Indefiniteness 2–4, 6, 7, 13–15 Overall Outcome 2–4, 6, 7, 13–15 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)(1)(iv). AFFIRMED