Ex Parte Biswas et al

Patent Trial and Appeal Board

Sep 24, 2018

13599561 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/599,561 08/30/2012 Sanjeev Kumar Biswas
119741 7590 09/26/2018
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
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.
20030.568 3338
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANJEEV KUMAR BISW AS, KIRAN KUMAR,
SURAJ RANJAN, MAY ANK GOY AL,
ANUBHA V MALHOTRA, and PRITOM BARUAH
Appeal2017-002083
Application 13/599,561
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI, and
ADAM J. PYONIN, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejectionofclaims 1,3-5, 7-11, 14, 16-18,and20-26. See Final Act. I.
We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 3-5, 7-11, 14, 16-18, and 20-26 are rejected under 35
U.S.C. § 101 as directed to a judicial exception without significantly more.
Final Act. 2-3.
Claims 1, 3-5, 7-11, 14, 16-18, and 20-26 are rejected under pre-
AIA 35 U.S.C. § 102(b) as anticipated by Fischler (US 2010/0088189 Al;
Apr. 8, 2010). Final Act. 4--12.
We affirm.
Appeal2017-002083
Application 13/599,561
STATEMENT OF THE CASE
Appellants' invention relates to "provisioning a price-differentiated
product while deterring piracy." Spec. ,r 1. Claim 1 is illustrative and
reproduced below:
1. A computer-implemented method executed by one or more
processors of a server, comprising the steps of:
storing, at the server,
a specific price-differentiated product,
a first code component uniquely identifying the specific price-
differentiated product, and
a second code component stored in association with a status of
the specific price-differentiated product indicating one of:
an unredeemed status applicable, prior to a sale, to the
specific price-differentiated product identified by the first code component,
or
a redeemed status applicable, after a sale to a verified
purchaser, to the specific price-differentiated product identified by the first
code component,
providing to a vendor the first code component for the specific price-
differentiated product to be made available by the vendor;
receiving, by the server from a system associated with the vendor, the
first code component when the specific price-differentiated product is sold
by the vendor to a purchaser;
receiving, by the server, the second code component upon verification
by a purchaser identification verifier of an identity of the purchaser;
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updating, at the server upon receiving the second code component, the
status to indicate the redeemed status of the specific price-differentiated
product; and
providing, by the server, product activation information to the
purchaser upon receiving the second code component, wherein the product
activation information enables use of the specific price-differentiated
product by the purchaser.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 1, 3-5, 7-11, 14, 16-18, AND 20-
26
Contentions
The Examiner determines:
The claimed invention is directed to a judicial exception
(i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Claims 1, 3--5, 7-11, 14, 16--18,
20--26 are directed to a method and apparatus for provisioning
price-differentiated products while deterring piracy. Such as in
Cyberfone, which uses categories to organize, store and
transmit information, the current invention creates a plurality of
triples, wherein each triple comprises a first component, a
second component, and a third component, wherein each triple
uniquely identifies a price-differentiated product. The method
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of receiving a first code identifying a price differentiated
product; a second code revealing the redeemed status of the
product after identity verification, and after receiving the code
pair activating the product, all describe the abstract idea.
None of the limitations, when considered individually or
an ordered combination, are sufficient to amount to
significantly more than the judicial exception because the
claims do no more than use "computer apparatus" and
"computer readable medium" to perform the steps of the
abstract idea of provisioning price-differentiated products while
deterring piracy. The additional elements of the claim do not
add a meaningful limitation to the abstract idea because they
would be routine in any computer implementation. The claims
recite the use of a generically recited data processor for
implementing the method and apparatus for provisioning price-
differentiated products while deterring piracy, which is
considered generic/routing computer technology.
Final Act. 2-3; see also Ans. 4 ("[the invention] may be categorized as a
method of organizing human activity") and Ans. 5-6 ( discussing
"significantly more").
Appellants present the following principal arguments:
1. The claims are not directed to an abstract idea. See Appeal Br.
11-15; see also Reply Br. 2--4 ("the Examiner's synthesized summary of the
claims is merely a high-level abstraction of the claims that is untethered to
the language of the claims"). "Similar to the '399 claims in DDR,
Applicant's claims are not directed toward a fundamental economic practice
because the claims are directed toward a business challenge particular to the
Internet. Furthermore, Appellant's claims are not a method of organizing
human activities." Appeal Br. 12.
For example, as described in the specification, conventional
systems for validating price-differentiated products at a point of
sale involves increased purchase time and is cumbersome for
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vendors as well as purchases. See Specification, ,r [0003]. In
contrast, the claimed invention enables effective management
of a purchase, redemption, verification, and activation of price-
differentiated products using a specific, detailed process
involving interactions between multiple computers/servers.
Appeal Br. 14.
11. The claims recite significantly more than provisioning price-
differentiated products. See Appeal Br. 15-17; see also Reply Br. 4--5 ("the
claimed invention overcomes problems associated with conventional
methods for distributing and validating price-differentiated products at the
time of sale"). "In particular, the currently amended independent claims are
eligible because they recite additional limitations that when considered as an
ordered combination demonstrates a technologically rooted solution to an
Internet-centric problem and thus amounts to significantly more than mere
instructions to implement an abstract idea on a computer." Appeal
Br. 17.
Our Review
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S.Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
( 1972) ("Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work."). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
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concepts may be deserving of patent protection. Mayo Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012). In Mayo, the
Court stated that "to transform an unpatentable law of nature into a patent-
eligible application of such a law, one must do more than simply state the
law of nature while adding the words 'apply it."' Mayo, 566 U.S. at 72
( citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S.Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then 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." Id. (quoting 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 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. (quoting Mayo, 566 U.S. at 72-73).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. at 2357 ( quoting Mayo, 566 U.S. at 77-
78). The prohibition against patenting an abstract idea "cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment or adding 'insignificant post[-]solution activity."'
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Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted). The Court
in Alice noted that "' [ s ]imply appending conventional steps, specified at a
high level of generality,' [was] not 'enough' [in Mayo] to supply the
'inventive concept."' Alice, 134 S.Ct. at 2357 (quoting Mayo, 566 U.S. at
82-83, 77-78, and 72-73).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Appellants' Specification describes the prior art as follows:
Currently, validation of a price-differentiated product
purchaser is performed at the time of sale. For example, in the
case of a student purchasing an STE, the student may be
required to display a student identification card and provide a
valid student email address, for example, and email address
with a .edu suffix. However, performing the validation at the
time of purchase involves increased purchase time and is
cumbersome for the vendor as well as the purchaser. An
alternate solution is to provide the purchaser with a special
store for price-differentiated products. However, having a
specialized store is costly and requires a dedicated setup.
Spec. ,r 3.
Appellants' Specification describes the invention as follows:
Embodiments of the invention relate to a method and
apparatus for provisioning a price-differentiated product while
deterring piracy. The method and apparatus create a plurality
of triples, wherein each triple comprises a first component, a
second component, and a third component, wherein each triple
uniquely identifies a price-differentiated product. The method
and apparatus provide to a vendor of the product a plurality of
pairs wherein each pair in the plurality of pairs comprises the
first component of the triple and the second component of the
triple for each price-differentiated product provided to the
vendor. The method and apparatus receive the pair from the
vendor when the product is sold and provide the pair to a
purchaser identification verifier. The method and apparatus
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receive from the purchaser identification verifier the second
component of the triple upon verification of an identity of a
purchaser; and provide product activation information to the
identity verified purchaser in response to receiving the second
component, wherein the activation information enables use of
the price-differentiated product.
Spec. ,r 5.
Claim 1 is directed to providing product activation information to the
purchaser upon verification of the identity of the purchaser, which we
conclude is an abstract idea because it is a fundamental economic practice,
long prevalent in our system of commerce, like the risk hedging in Bilski
(see Bilski v. Kappas, 561 U.S. 593 (2010)), the intermediated settlement in
Alice (see Alice, 134 S.Ct. at 2356-57), verifying credit card transactions in
CyberSource (see CyberSource Corp. v. Retail Decisions, Inc., 654 F .3d
1366, 1370 (Fed. Cir. 2011)), collecting and analyzing information to detect
and notify of misuses in FairWarning (see FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)), and guaranteeing
transactions in buySAFE (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1354 (Fed. Cir. 2014)).
We also conclude that providing product activation information to the
purchaser upon verification of the identity of the purchaser is an abstract
idea because it is organizing human activity. See Final Act. 2-3; see also
Ans. 4.
The various method steps among the server, vendor, purchaser
identification verifier, and purchaser are all part of the abstract idea of
providing product activation information to the purchaser upon verification
of the identity of the purchaser. These various steps are, like Cyberfone,
organizing, storing, and transmitting information, in particular, the first code
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component, second code component, and product activation information.
See Final Act. 2-3; see also Ans. 4.
Regarding Appellants' arguments, in reaching our conclusion, we
remain tethered to the claim language because, in particular, claim 1 recites
"providing, by the server, product activation information to the purchaser
upon receiving the second code component, wherein the product activation
information enables use of the specific price-differentiated product by the
purchaser." Further according to claim 1, the second code component is
received "upon verification by a purchaser identification verifier of an
identity of the purchaser." We do not agree that the claimed invention is
solving a business challenge particular to the Internet. The abstract idea of
providing product (activation information) to the purchaser upon verification
of the identity of the purchaser is not Internet-centric, and Appellants'
solution, although reciting computers, is directed to a fundamental economic
practice and organizing human activity using the steps of organizing,
storing, and transmitting information, with the computers used merely as
tools.
Step two: Is there something else in the claims that ensures they are directed
to significantly more than a patent-ineligible concept?
Because claim 1 is directed to an abstract idea, the question to be
settled next, according to Alice, is whether claim 1 recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than the abstract idea.
Claim 1 recites "one or more processors of a server," "a system
associated with the vendor," and "a purchaser identification verifier." These
claimed computers are generic, purely conventional elements. Appellants'
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Specification confirms this. See Spec. ,r 60 ("computer system 600 may be
any of various types of devices, including, but not limited to ... any type of
computing or electronic device."). Thus, the claims do no more than require
generic computer elements to perform generic computer functions, rather
than improve computer capabilities. Put another way, looking beyond the
abstract idea of providing product activation information to the purchaser
upon verification of the identity of the purchaser, we do not see any
inventive concept in the remaining claim limitations individually or in
combination. Claiming various combinations of conventional computers is
not enough to transform the idea into a patent-eligible invention. See Alice,
134 S.Ct. at 2358 ("[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.").
Further regarding Appellants' arguments, again, the abstract idea of
providing product (activation information) to the purchaser upon verification
of the identity of the purchaser is not Internet-centric, and Appellants'
solution, although reciting computers, is directed to organizing human
activity and organizing, storing, and transmitting information, with the
computers used merely as tools.
Conclusion
We sustain the Examiner's rejection under 35 U.S.C. § 101 of claim 1.
We also sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 3-
5, 7-11, 14, 16-18, and 20-26, which are not separately argued with
particularity. See Appeal Br. 10-17; see also Reply Br. 2-5.
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THE ANTICIPATION REJECTION OF CLAIMS 1, 3-5, 7-11, 14, 16-18, AND 20-
26
Contentions
The Examiner finds Fischler describes all limitations of claim 1. Final
Act. 4--5. In particular, the Examiner finds Fischler describes "receiving, by
the server from a system associated with the vendor, the first code
component when the specific price-differentiated product is sold by the
vendor to a purchaser" as recited in claim 1. See Final Act. 4 ( citing Fischler
,r,r 11, 46).
Appellants present, among arguments, the following principal
argument:
Fischler does not describe "receiving, by the server from a system
associated with the vendor, the first code component when the specific
price-differentiated product is sold by the vendor to a purchaser" as recited
in claim 1. See Appeal Br. 19-21. In particular, Appellants argue:
Th[ e] interaction between the customer and the point of sale [ in
Fischler], however, fails to include any communication between
the point of sale and the redemption server. Rather, Fischler
describes that the point of sale receives (from a customer) a
product identifier as part of a purchase and, in response to
processing the sale, the point of sale prints the redemption code
on a receipt that is given to the customer. In other words,
Fischler describes that a point of sale receives a product
identifier and provides a redemption code to the customer on a
receipt.
Appeal Br. 20.
In response, the Examiner finds "the redemption code that prints on
the receipt is the first code component. It is obvious and inherently
understood that the redemption code would be supplied by the vendor
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because the next step of the process is directed [to] using the code as part of
the process to access the product software." Ans. 7.
In the Reply Brief, Appellants repeat the argument that "Fischler does
not describe any communication between the point of sale and the
redemption server." Reply Br. 6.
Our Review
Fischler discloses "A point of sale maps the product identifier to a
redemption code. Finally, a fulfillment portal module processes an order
using the redemption code to ship the product to a customer." Fischler ,r 11.
Fischler discloses "the retail store provides the customer with a receipt
including a redemption code." Fischler ,r 47. Fischler discloses "Following
the instructions on the receipt, the customer may provide the redemption
code to a redemption server." Fischler ,r 48.
Thus, Fischler does not describe "receiving, by the server from a
system associated with the vendor, the first code component when the
specific price-differentiated product is sold by the vendor to a purchaser" as
recited in claim 1 because Fischler describes printing a redemption code on a
receipt given to the customer, and the customer-not a system associated
with the vendor-provides the redemption code to the (redemption) server
when the product is sold by the vendor the purchaser. 1 Fischler ,r 4 7 ("The
coupon code may be printed on the receipt provided to the customer.").
1 In light of the Specification, we find the customer (and customer-related
systems such as the purchaser's computer) are not a system associated with
the vendor, within the meaning of the claim. See Fig. 2; Spec. ,II 6.
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We, therefore, do not sustain the Examiner's rejection of claim 1. We
also do not sustain the Examiner's rejections of claims 3-5, 7, and 21-26,
which depend from claim 1.
Independent claim 8 recites "receive, from a system associated with a
vendor, a first code component for a specific price-differentiated product
sold by the vendor to a purchaser." Independent claim 14 recites "receiving,
by the server from a system associated with the vendor, a pair when a
corresponding specific price-differentiated product is sold." The limitations
of claims 8 and 14 capture the same subject matter as the argued limitations
of claim 1 discussed above. We, therefore, also do not sustain the
Examiner's rejections of claims 8 and 11. We also do not sustain the
Examiner's rejections of claims 9-11, 14, 16-18, and 20, which variously
depend from claims 8 and 11.
ORDER
Because we sustain one ground of rejection, the Examiner's decision
rejecting claims 1, 3-5, 7-11, 14, 16-18, and 20-26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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