Ex Parte Dessert et al

Patent Trial and Appeal Board

Oct 25, 2017

14147289 (P.T.A.B. Oct. 25, 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.
14/147,289 01/03/2014 Robert L. DESSERT 102153C1 / 1376-2204C1 4789
111523 7590 10/27/2017
The Marbury Law Group/Qualcomm
11800 Sunrise Valley Drive, 15th Floor
Reston, VA 20191
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
ptonoticesqc @marburylaw.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT L. DESSERT
and ROBERT D. CANTERBURY
Appeal 2016-0038451
Application 14/147,2892
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 41—70. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed
August 21, 2015) and the Examiner’s Answer (“Ans.,” mailed December
30, 2015), and Final Office Action (“Final Act.,” mailed June 29, 2015).
2 Appellants identify QUALCOMM Incorporated, as the real party in
interest (Br. 2).
Appeal 2016-003845
Application 14/147,289
CLAIMED INVENTION
Appellants’ claims relate generally to a “method and system for
managing transactions with a portable computing device” (Spec. 17).
Claims 41, 49, 55, and 63 are the independent claims on appeal.
Claim 41 reproduced below, with minor formatting changes and added
bracketed notations, is illustrative of the subject matter on appeal:
41. An electronic purchase transaction method comprising:
[a] transmitting over a communications network, from a
client portable computing device, user credentials of the client
portable computing device;
[b] transmitting over the communications network, from
the client portable computing device, a merchant identifier
corresponding to a merchant;
[c] receiving over the communications network, by the
client portable computing device, matches of the merchant
identifier to loyalty account data associated with the merchant,
wherein the loyalty account data indicates the availability of at
least one of a discount or benefit to a purchase transaction
associated with the client portable computing device; and
[d] receiving over the communications network, by the
client portable computing device, a message that lists one or
more preferred payment options that may be selected to complete
the purchase transaction associated with the client portable
computing device.
REJECTION
Claims 41—70 are rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
2
Appeal 2016-003845
Application 14/147,289
ANALYSIS
Non-statutory subject matter
Appellants argue claims 41—70 as a group (see Appeal Br. 6—13). We
select claim 41 as representative. Claims 42—70 stand or fall with
independent claim 41. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
Turning to the first step of the Alice framework, Appellants argue that
“claims 41—70 are not directed toward an abstract idea or a fundamental
economic practice” (Br. 7). Instead, Appellants argue their claims are
directed to overcoming problems with “conventional systems and methods
for effecting purchase transactions” in the field of electronic purchase
transactions {id. at 7—8). Appellants’ argument is not persuasive.
By way of background, the Examiner finds the claims “are directed to
the abstract idea of a purchase transaction” (Final Act. 4; see also Ans. 5—8).
The Examiner also finds “[t]he purchase transaction relationship as recited
in the claim is a commercial arrangement involving contractual relations
similar to the fundamental economic practices found by the courts to be
abstract ideas (e.g., hedging in Bilski, mitigating settlement risk in AliceY
(Final Act. 4—5). In making this determination, the Examiner observes that
[t]he concept of “a purchase transaction,” is described by the
[steps of] “transmitting . . . user credentials . . . ; transmitting . . .
a merchant identifier corresponding to a merchant; receiving . . .
matches of the merchant identifier to loyalty account data
associated with the merchant, wherein the loyalty account data
indicates the availability of at least one of a discount or benefit
to a purchase transaction . . . ; and receiving ... a message that
3
Appeal 2016-003845
Application 14/147,289
lists one or more preferred payment options that may be selected
to complete the purchase transaction ...”
(Id. at 4).
We are not persuaded by Appellants’ argument that “claims 41—70 are
not directed toward an abstract idea per se” (Br. 7). Instead, we agree with
the Examiner that the claims as a whole are directed to a purchase
transaction, and as such, cover an abstract idea. In making this
determination, we note that independent claim 41 is directed to “[a]n
electronic purchase transaction method,” and includes steps for 1)
transmitting user credentials, 2) transmitting a merchant identifier, 3)
receiving matches of the merchant identifier to loyalty account data
associated with the merchant, and 4) receiving lists of preferred payment
options to complete the purchase transaction. When we remove the
computer related terms, we discern that the recited steps are those that would
be performed in a run-of-the-mill purchase transaction. And, according to
the Specification, the disclosure is related to “[a] method and system for
managing transactions with a portable computing device (PCD) are
described” (Spec. 17). Thus, we agree with and adopt the Examiner’s
finding that “[t]he purchase transaction relationship as recited in the claim is
a commercial arrangement involving contractual relations similar to the
fundamental economic practices found by the courts to be abstract ideas
(e.g., hedging in Bilski, mitigating settlement risk in Alice)” (see Final Act.
«).
Equally unpersuasive is Appellants’ argument that claims 41—70 are
not directed toward an abstract idea because claims they overcome
“problems associated with tracking a plurality of benefits and payment
4
Appeal 2016-003845
Application 14/147,289
methods that are available to a consumer for purchasing goods or services”
(see Br. 7—8, 12).
Although “claims ‘purporting] to improve the functioning of the
computer itself,’ or ‘improving] an existing technological process[,]’ might
not succumb to the abstract idea exception” (Enfish, LLC v. Microsoft Corp.,
822 F.3d, 1327, 1335 (Fed. Cir. 2016)), the question in such cases is
“whether the focus of the claims is on the specific asserted improvement in
computer capabilities” or whether “computers are invoked merely as a tool.”
Id. at 1335-36.
Here, Appellants have not shown that their claims are directed to an
improvement in computer technology or to an existing technological
process. Nor have Appellants shown that their claims are directed to a
combined order of specific rules that improve a technological process.
Instead, we find independent claim 41 invokes generic components (see,
e.g., Spec. 39-41) in the transmission and processing of data in an effort
to “overcome the problems associated with tracking a plurality of benefits
and payment methods which are available to a consumer for purchasing
goods or services (or both)” (see id. 1 6).
We also are not persuaded by Appellants’ argument that the claims
“do not pre-empt every approach to effecting electronic purchase
transactions” (Appeal Br. 8, 11). Contrary to Appellants’ suggestion, there
is no requirement for the Examiner to establish pre-emption, and “the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[TJhatthe
5
Appeal 2016-003845
Application 14/147,289
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Turning to the second step of the Mayo/Alice analysis, Appellants
argue that even if the claims recite an abstract idea, the claims are patent-
eligible because they amount to significantly more than the alleged abstract
idea itself (see Br. 9—13). More particularly, Appellants argue that their
claims are analogous to the invention deemed patentable in DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed the problem of retaining website visitors who, if adhering
to the routine, conventional functioning of Internet hyperlink protocol,
would be transported instantly away from a host’s website after “clicking”
on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at
1257. The Federal Circuit, thus, held that the claims were “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and were not directed to an
abstract idea. Id. at 1265. No such technological advance is evident here.
Unlike the situation in DDR Holdings, Appellants do not identify any
problem particular to computer networks and/or the Internet that the claims
allegedly overcome. Here, Appellants identify that their claims specifically
address a problem in this field of “electronic purchase transactions” related
to “keeping track of a plurality of benefits and payment methods that are
available to a consumer for purchasing goods or services” (Br. 9—10).
However, we find that the “improvement” to which Appellants refer is
6
Appeal 2016-003845
Application 14/147,289
related to a business or customer-service improvement, i.e., “[t]he problem
of the consumer bearing all the responsibility to track these benefits and
discounts may grow exponentially when the consumer has similar loyalty
cards, credit cards, and coupons for a plurality of other second merchants”
(see Spec. 4), as opposed to an improvement to a computer or other
technological or technical field.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea on generic computer components. Here, we agree with the
Examiner
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements are simply a generic
recitation of a computer and a computer network performing
their generic computer functions. The claim[s] amount[ ] to no
more than stating create a contract on a computer and send it over
a network. Taking the elements both individually and as a
combination, the computer components in claims 41, 49, 55 and
63 perform purely generic computer functions. The claims as a
whole do not amount to significantly more than the abstract idea
itself.
(Final Act. 5). Thus, we agree with the Examiner that independent claim 41
is directed to an abstract idea without some element or combination of
elements sufficient to ensure that the claim in practice amounts to
significantly more than the abstract idea itself, and as such, is not patent-
eligible under § 101.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 41, and claims 42—70, which fall with
independent claim 41.
7
Appeal 2016-003845
Application 14/147,289
DECISION
The Examiner’s rejection of claims 41—70 under 35 U.S.C. § 101 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
8