Ex Parte Fung et al

Patent Trial and Appeal Board

Aug 23, 2017

12973856 (P.T.A.B. Aug. 23, 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.
12/973,856 12/20/2010 Daniel Y. Fung 032052-5653.US06 2579
25096 7590 08/25/2017
PFRKTNN TOTF TIP- NFA General
EXAMINER
PATENT-SEA WONG, ERIC TAK WAI
P.O. BOX 1247
SEATTLE, WA 98111 -1247 ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL Y. FUNG and
STEPHEN C. EVANS
Appeal 2016-0018021
Application 12/973,85 62
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, 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 1, 4—7, 10—13, and 16—26. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
June 17, 2015) and Reply Brief (“Reply Br.,” filed November 24, 2015), the
Examiner’s Answer (“Ans.,” mailed September 28, 2015), and Final Office
Action (“Final Act.,” mailed January 23, 2015).
2 Appellants identify Passgate Corporation as the real party in interest
(Appeal Br. 2).
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Application 12/973,856
CLAIMED INVENTION
Appellants’ claims relate generally “to the field of web site account
and e-commerce management and more particularly to a method, system and
computer readable medium for managing a plurality of web site accounts
and for providing a secure methodology for e-commerce transactions from a
central web site location” (Spec. 12).
Claims 1, 7, and 13 are the independent claims on appeal. Claim 1
reproduced below, with added bracketed notations, is illustrative of the
subject matter on appeal:
1. A method for managing a financial transaction of a
user, the method comprising:
[a] transmitting to a user device a merchant identification
signal including an identification of merchants available through
online interfaces;
[b] receiving from the user device a presence signal
indicating that the user is at an on line interface of a merchant
selected based on the merchant identification signal;
[c] receiving from the user device an authentication signal;
[d] authenticating the user based on the authentication
signal and transmitting a login signal to the online merchant;
[e] in response to the presence signal indicating that the
user is at the online interface, transmitting to the user device
information enabling an activation signal specific to the selected
merchant to be sent to a financial institution, wherein the
activation signal causes an account number of the user to be
activated and a payment request from the selected merchant to
be accepted; and
[f] transmitting to the user device information used by the
user device to send a deactivation signal to the financial
institution, wherein the de-activation signal causes an account
number of the user to be de-activated and a subsequent payment
request to be declined.
2
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REJECTION
Claims 1, 4—7, 10—13, and 16—26 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
ANALYSIS
Appellants argue claims 1, 4—7, 10-13, and 16—26 as a group (see
Appeal Br. 6—17). We select independent claim 1 as representative. Claims
4—7, 10-13, and 16—26 stand or fall with independent claim 1. See 37
C.F.R. § 41.37(c)(l)(iv).
In rejecting claims 1, 4—7, 10-13, and 16—26 as being directed to an
abstract idea, the Examiner finds “the claims are directed to [a] series of
steps for managing a financial transaction / temporary activation of an
account number, which is a fundamental economic practice and thus an
abstract idea” (Final Act. 2). The Examiner also finds that “[t]he concept of
temporary activation of an account number is well-established in the art” and
“[t]he claimed steps for receiving and sending signals to enable the
temporary activation of an account number do not add a meaningful
limitation to the method as they would be routinely used by those of
ordinary skill in the art in order to apply the abstract idea” {id. at 3).
Appellants “do[] not concede that the invention is[,] in fact[,] an
abstract idea, but for the sake of advancing prosecution, focus[] on the
second step analysis” (Appeal Br. 8). Consequently, Appellants first argue
that their claims are similar to the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (see Appeal Br. 9—
15; see also Reply Br. 2—9). More particularly, Appellants argue their
claims
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address a problem that didn’t exist in the pre-internet world:
invalid use of accounts (e.g., credit cards) at merchant online
interfaces. Furthermore, these features introduce an Internet-
centric solution necessarily rooted in computer technology.
Specifically, this solution is necessarily an internet-centric
solution (as opposed to merely implementing a known solution
on the internet) because it limits which online interfaces the
account can be used at to those identified in the “signal including
an identification of merchants available through online
interfaces” and transmitting the activation signal “in response to
the presence signal indicating that the user is at [one of] the
online interface^]” “selected based on the merchant
identification signal.”
(Appeal Br. 9; see also id. at 12 (characterizing claimed invention as a
“solution of preventing invalid use of accounts at merchant online
interfaces”)). In the Reply Brief, Appellants elaborate that the steps of
“transmitting ... a merchant identification signal including an
identification of merchants available through online interfaces”
and transmitting the activation signal “in response to the
presence signal indicating that the user is at [one of] the online
interface[s]” “selected based on the merchant identification
signal” . . . provide an Internet-centric solution “necessarily
rooted in computer technology”
(Reply Br. 5).3
Appellants purport that the claimed invention provides an Internet-
centric solution. But even assuming arguendo that the invention provides an
Internet-centric solution (cf. claim 1), not all claims purporting to address
Internet-centric challenges are eligible for patent. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d at 1264 (citing Ultramercial, Inc. v. Hulu, LLC,
3 We note that claim 1 does not recite “transmitting the activation signal,” as
described by Appellants, but instead recites “transmitting . . . information
enabling an activation signal.”
4
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Application 12/973,856
772 F.3d 709, 714 (Fed. Cir. 2014)). In Ultramercial, for example, the
patentee argued that its claims were “directed to a specific method of
advertising and content distribution that was previously unknown and never
employed on the Internet before.” Ultramercial, 772 F.3d at 714.
Nonetheless, the Federal Circuit found that the majority of the steps were
directed to the abstract idea of offering media content in exchange for
viewing an advertisement, and the “routine additional steps[,] such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Intemet[,]” and, as such,
were insufficient to transform the patent-ineligible abstract idea into patent-
eligible subject matter. Id. at 715—16.
In contrast, in DDR Holdings the Federal Circuit determined that 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 directed to
statutory subject matter because they claim a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Id.
Here, we find the claimed invention more akin to the claims in
Ultramercial than those in DDR. Claim 1 does not, for example, purport to
override the conventional sequence of events ordinarily triggered by the
click of a hyperlink to recite an invention that is “not merely the routine or
conventional use of the Internet.” DDR Holdings, 773 F.3d at 1259. Nor
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does it purport to improve the functioning of the computer itself. Nor does it
affect an improvement in any other technology or technical field.
Instead, claim 1, viewed as a whole and in light of the Specification,
amounts to nothing significantly more than an instruction to apply the
abstract idea of “managing a financial transaction / temporary activation of
an account number” (Final Act. 2), which under our precedents, is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2360 (2014).
Considered individually, the steps recited in claim 1 (i.e., transmitting
data, receiving data, and analyzing data) represent conventional data
gathering and processing steps, specified at a high level of generality, which
add nothing of practical significance to the underlying abstract idea. See
Ultramercial, 772 F.3d at 716; see also Elec. Power Grp., 830 F.3d at 1255
(selection and manipulation of information does not transform abstract
processes of information collection and analysis).
Appellants’ Specification, for example, describes that a “web active or
dormant payment card feature” enables the account to be active “only while
the user is actually online using the central web site’s services” (Spec. 1 68).
Specifically, software transmits an “update file” every time a user clicks on a
favorite link to a favorite e-commerce web site (id. ). The update file is
transmitted via encrypted email, secure facsimile, secure wireless
communication, secure telephone communication, to the credit issuing
financial institution at a time before a charge authorization request is
received by the credit card network from an online retailer (id.; see also id.
174). When a user makes a credit card transaction, an update file
verification file server (“UFVS”) verifies the central web site’s accounts
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against the update file (id. 176). If an update file is not present, then the
transaction is rejected; whereas, if the update file is present, then the
transaction is allowed to be processed (id. H 76—77). In this way, the credit
card network authenticates that the user is online (id. 177). The credit card
network then transmits a charge request to the financial institution using
known processes, and the after the transaction is processed by the financial
institution, instructions are sent to the UFVS to initiate deletion of the update
file (id.). The invention requires minimal activation time of the credit card
account, and minimal development time because the system uses existing
architectures (id. at 178). We find no indication that the claimed invention
requires something other than normal, conventional technology for
transmitting data, receiving data, and analyzing the data (see Ans. 3 (citing
Gephart (US 6,339,766 Bl, iss. Jan. 15, 2002)).
Moreover, as the Examiner also points out (Ans. 5—6), the
Specification discloses that “[a]ll or a portion of the exemplary embodiments
of FIGs. 1—41 can be conveniently implemented using one or more
conventional general purpose computer systems” (Spec. 1234; see also, e.g.,
Spec. 11110 (“the user interface 1002 is a conventional personal computer
having an input device,” “a voice mail system, [or] an electronic or voice
communications system,” or “[a] device[], such as a facsimile machine, a
cellular phone, a PDA, a pager, etc.”)). Thus, each limitation does no more
than require a generic components to perform generic functions. “[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.” Id. at 1256
(citing Alice, 134 S. Ct. at 2358).
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Consequently, when considering the claim limitations individually
and as an ordered combination, the claimed invention is not necessarily
rooted in computer technology to overcome a problem specific to the realm
of computers, but instead embodies the use of generic components in a
conventional manner to perform an abstract idea, which, as the court in DDR
Holdings explained, is not patent-eligible. DDR Holdings, 773 F.3d at 1256
(“[T]hese claims [of prior cases] in substance were directed to nothing more
than the performance of an abstract business practice on the Internet or using
a conventional computer. Such claims are not patent-eligible.”).
Appellants further argue that “[t]he Examiner having withdrawn his
prior art rejections demonstrates that the features of claim 1 are not a
‘conventional’ method of ‘managing a financial transaction by temporary
activation of an account number’” (Appeal Br. 11), and as such, independent
claim 1 includes “significantly more” than an abstract idea. For example,
Appellants argue that none of the prior art discloses or suggest a “‘presence
signal4 indicating that the user is at an online interface of a merchant
selected based on the merchant identification signal,’ as claim 1 recites”
(id.). However, to the extent Appellants argue that the claims necessarily
contain an “inventive concept” based on their alleged novelty and non­
obviousness over the cited references, Appellants misapprehend the
controlling precedent. That is, although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
4 Appellants identity support for the term “presence signal,” as it appears in
limitation [b] of independent claim 1, at paragraphs 49, 59, 68, 73, 76, and
188 (see Appeal Br. 3). However, we note that neither “presence” nor
“presence signal” appear in the Specification.
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an evaluation of novelty or non-obviousness, but rather, a search for “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, 134 S. Ct. at 2355 (internal citation
omitted). A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1304 (2012)).
We also are not persuaded by Appellants’ argument that “the claims
are not a monopoly on ‘managing a financial transaction’ or ‘temporary
activation of an account number,’ because they contain other material
features” (Appeal Br. 15). There is no dispute that the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption.” Alice, 134 S. Ct. at 2354. But characterizing pre-emption as a
driving concern for patent eligibility is not the same as characterizing pre­
emption as the sole test for patent eligibility. “The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability” and “[f]or this reason, questions on preemption are inherent
in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice,
134 S. Ct. at 2354). Yet although “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 4—7, 10-13, and 16—26,
which fall with independent claim 1.
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DECISION
The Examiner’s rejection of claims 1, 4—7, 10-13, and 16—26 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
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