Ex Parte Hafer et al

Patent Trial and Appeal Board

Mar 20, 2017

10687575 (P.T.A.B. Mar. 20, 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.
10/687,575 10/15/2003 Michael J. Hafer 90945-665391 (007610US) 7753
20350 7590 03/22/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. HAFER and MICHAEL J. MICHELSEN
Appeal 2015-004746
Application 10/687,5751
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael J. Hafer, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 49—51. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify The Western Union Company of Englewood,
Colorado as the real party in interest. App. Br. 2.
Appeal 2015-004746
Application 10/687,575
THE INVENTION
Claim 49, reproduced below, is illustrative of the subject matter on
appeal.
49. In a relationship between a customer, a transaction
provider and a service provider, the transaction provider
providing money transfer services for the customer and the
customer having an account, the account being associated with
a convenience card, a system for enhancing customer loyalty in
money transfer transactions, the system comprising:
a communication network, the communication
network being configured to transport information
relating to the money transfer services being provided by
the transaction provider;
means for receiving an identifier from the
convenience card, the identifier including sufficient
identifying information to allow the transaction provider
to identify the customer's account with the transaction
provider, the means for receiving an identifier from the
convenience card being situated at a particular
origination location;
means for receiving a request from the customer to
process a money transfer transaction to a particular
destination location to pay for a purchase of a good;
means for transmitting via the communication
network the identifier and the request to process a money
transfer transaction;
means for receiving via the communication
network the identifier and the request to process a money
transfer transaction;
means for identifying the customer's account based
on the identifying information included in the identifier;
means for returning to the point of sale device
stored transaction information identifying prior money
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transfer recipients of the customer for use by the point of
sale device to automatically prepare a transaction form
associated with the request to process the money transfer
transaction; and
means for determining a prevailing price for the
good at a location of the customer;
means for crediting the customer's account with an
award based at least in part on the request to process a
money transfer transaction, and at least in part on the
prevailing price for the good.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sosa US 2002/0099607 A1 July 25, 2002
Walker US 6,690,779 B2 Feb. 10, 2004
Liebermann US 7,287,009 B1 Oct. 23, 2007
The following rejections are before us for review:
Claims 49—51 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 49-51 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sosa, Walker and Liebermann.
ISSUES
Did the Examiner err in rejecting claims 49—51 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 49—51 under 35 U.S.C.
§ 103(a) as being unpatentable over Sosa, Walker and Liebermann?
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ANALYSIS
The rejection of claims 49—51 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLSBanklntT, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. The Examiner finds that
Claim 49 is directed to a system for providing money
transfer services. Claim 50 is directed to a system for providing
money transfer services and crediting an account with a default
award. Claim 51 is directed to a system for providing money
transfer services and crediting an account with an award smaller
than a default award.
Ans. 3. Presumably, the Examiner means to add that she finds said subject
matter to which the claims are directed are abstract ideas. That is the
Appellants’ understanding as well. See Reply Br. 2 (“The Answer states that
the claims are directed to an abstract idea, specifically, that claims 49, 50,
and 51 are directed to . . .”)
The Appellants do not challenge the Examiner’s articulation of the
subject matter the claims are directed to. Nor do the Appellants challenge
that said subject matter to which the claims are directed are abstract ideas.
Rather, the Appellants argue that the Examiner “does not support such a
conclusion with any evidence as required by Alice.'” Reply Br. 2.
The argument is unpersuasive.
Consideration of evidence in making a determination under the first
step of the Alice framework has merit. See Apple, Inc. v. Ameranth, Inc.,
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842 F.2d 1229 (Fed. Cir. 2016). But there is no requirement that examiners
must provide evidentiary support in every case before a conclusion can be
made that a claim is directed to an abstract idea. See, e.g., para. IV “July
2015 Update: Subject Matter Eligibility” to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
(“The courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.”) (emphasis added). Evidence may be helpful in certain
situations where, for instance, facts are in dispute. But it is not always
necessary. It is not necessary in this case.
Rather, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Ltd. v.
Openet Telecom, Ltd., 841 F.3d 1288, 1294 (Fed. Cir. 2016):
[A] search for a single test or definition in the decided cases
concerning § 101 from this court, and indeed from the Supreme
Court, reveals that at present there is no such single, succinct,
usable definition or test [for, what an ‘abstract idea’
encompasses]. Instead of a definition, then, the decisional
mechanism courts now apply is to examine earlier cases in
which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided. See,
e.g., [Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016)]. [n. 2] That is the classic
common law methodology for creating law when a single
governing definitional context is not available. See generally
Karl N. Llewellyn, The Common Law Tradition: Deciding
Appeals (1960). This more flexible approach is also the
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approach employed by the Supreme Court. See also Alice, 134
S. Ct. at 2355—57. We shall follow that approach here.
[Amdocs (Israel) Ltd., 841 F.3d 1288 at n.2.]
See also Robert W. Bahr, Deputy Comm’r for Patent
Examination Policy, USPTO, Recent Subject Matter
Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and
TLI Commc ’ns LLC v. A. V. Automotive, LLC) (2016) at
2: “In summary, when performing an analysis of whether
a claim is directed to an abstract idea (Step 2A),
examiners are to continue to determine if the claim
recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the
courts.
In that regard, the concepts of money transferring and credit
accounting to which the claims have been found directed to are similar to,
for example, “[performing a sales transaction over the Internet, or in
conjunction with an auction and a competitive activity" (Priceplay.com, Inc.
v. AOL Advert., Inc., 83 F. Supp. 3d 577, 581 (D. Del. 2015), affd, 627 F.
App'x 925 (Fed. Cir. 2016)) which has been found to be an abstract idea.
Step two is “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, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
The Examiner found
The claims as a whole, do not amount to significantly more
than the abstract idea itself. This is because the claims do not
effect an improvement to another technology or technical field;
the claims do not amount to an improvement to the functioning
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of a computer itself; and the claims do not move beyond a
general link of the use of an abstract idea to a particular
technological environment.
Ans. 3.
The Appellants disagree, arguing that “even if we assume, in
arguendo, that the Answer has properly identified and substantiated that the
present claims are directed to an abstract idea, the Answer is incorrect
that the remainder of the claims do not add significantly more the potential
abstract idea itself.” Reply Br. 3. According to the Appellants, (a) “[cjlaims
which do not risk tying up the use of an abstract idea do not pose a risk of
pre-empting others from exploiting these ‘building blocks’ of human
ingenuity” (Reply Br. 3) and (b) “[t]he substantive allowability of the claims
indicate that they recite new possible ways of implementing some alleged
abstract idea over other possible ways that came before it (i.e., the prior art)”
(Reply Br. 3).
(a) The difficulty with this argument is that it confuses the pre­
emption concern with the level of abstraction describing the abstract idea.
The Appellants submit that when “claims recite only one of many particular
ways of implementing an abstract idea, such claims are patent eligible.”
Reply Br. 3. But with respect to the pre-emption concern, “[w]hat matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept’s
every practical application.” CLSBanklnt’l. v. Alice Corp. Pty. Ltd., Ill
F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, the more
limited way of implementing the abstract idea (e.g., rather than simply
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providing money transfer services, “receiving a request from the customer to
process a money transfer transaction to a particular destination location to
pay for a purchase of a good” (claim 49)), narrows the abstract idea so that it
is described at a lower level of abstraction. It does not render the abstract
idea to which the claim is directed any less an abstract idea.
Pre-emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[wjhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”).
We have considered the Appellants’ position in “look[ing] at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs
of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). Here, the Appellants do not persuasively show that any claim
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limitation supports viewing said focus and determination as not directed to
said abstract idea but rather rooted in technology. Cf. DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.”) Instead,
the Appellants make a case for “one of many particular ways of
implementing an abstract idea.” Reply Br. 3. But that does little to ensure
that the claimed subject matter as a whole amounts to significantly more
than the abstract idea itself. While a particular approach may prevent pre­
emption of all possible ways of providing money transfer services, it does
not make the claimed subject matter any less directed to an abstract idea. Cf.
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—1363 (Fed. Cir.)
{cert, denied, 136 S. Ct. 701, 193 L. Ed. 2d 522 (2015)) (“[Tjhatthe 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.”).
Because we find the claimed subject matter covers patent-ineligible
subject matter, the pre-emption concern is necessarily addressed. “Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, [jpreemption concerns are fully addressed and
made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
(b) The Appellants argue that “the repudiated § 102 or § 103
rejections” affect the determination that the claims are judicially-excepted
from patent-eligibility under §101. Reply Br. 3. The argument is
unpersuasive because §§102 and 103 and § 101 are separate inquiries. See
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Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016):
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188—89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303—04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s
general finding that Symantec did not prove by clear and
convincing evidence that three particular prior art references do
not disclose all the limitations of or render obvious the asserted
claims does not resolve the question of whether the claims
embody an inventive concept at the second step of Mayo/Alice.
Finally, the Appellants argue that “the blanket rejection of all claims
without analysis of each claim under the Alice test is improper.” Reply Br.
4. In fact, the Examiner did address each claim. See the discussion above
with respect to the Examiner’s analysis regarding Alice Step 1.
Nevertheless, we find that the Examiner has followed the law and guidance
in existence at the time the rejection was made. While it is always helpful to
give more analysis, the Appellants do not persuasively show and we see no
reason for the necessity to do so in this case.
For the foregoing reasons, the Appellants’ arguments are unpersuasive
as to error in the rejection. Accordingly, the rejection is sustained.
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The rejection of claims 49—51 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sosa, Walker and Liebermann.
Claim 49 includes the limitations
means for determining a prevailing price for the good at a
location of the customer;
means for crediting the customer's account with an award
based at least in part on the request to process a money transfer
transaction, and at least in part on the prevailing price for the
good.
We agree with the Appellants that the Final Rejection “does not
specifically point to any portion of any reference teaching or suggesting such
recitations. See Office Action, pp. 35 & 36. Applicant also cannot find any
teaching or suggestion in any of the three presently cited references of an
award based on a prevailing price for a good in a purchase.” App. Br. 5.
The Answer attempts to fill the void by explaining that, in light of the
Specification, the claim phrase “prevailing prices” broadly encompasses the
manner in which the incentive and motivation schemes disclosed in Sosa and
Walker are practiced, as well as Liebermann, wherein determining of a
location of a customer is disclosed. See Ans. 4—10. Specifically, for
example, the Examiner argues that “Walker teaches determining a prevailing
price for good (para, (col.2, lines 43-60 and col.8, line 50 to col.9, line 24).”
Ans. 9. “[T]he Examiner is interpreting the combination of Sosa, Walker,
and Lieberman disclosing and teaching ‘means for determining a prevailing
price for the good at a location of the customer.’” Ans. 10.
We have reviewed said references but have been unable to find where
exactly said claim limitations are disclosed or how the combination of
references would have led one to the claimed subject matter as a whole. For
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example, the cited Walker passages describe awarding and redeeming
telephone time to a member of an incentive award program. As we
understand it, the Examiner means to argue that redeeming telephone time
necessarily implies that the telephone time that is redeemed is at the
prevailing price for the telephone time at the location of the customer.
While that may be the case, claim 49 requires more; that is, a prevailing
price for the good at a location of the customer is determined and based, in
part, on that determination an award is credited to the customer’s account.
While Walker may cover redeeming telephone time at a prevailing price for
the telephone time at the location of the customer, no determination is
disclosed as having been made and based, in part, on that determination an
award is credited to the customer’s account. It is a matter of speculation
whether one of ordinary skill would have been led to make such a
determination and base an award on it. As it stands, Walker is insufficient to
lead one to what is claimed. The same difficulty is present with respect to
the other prior art disclosures, invidually and in combination.
We reach the same conclusions for claims 50 and 51. For the reasons
stated in the Appeal Brief (App. Br. 6—7), we do not find the cited prior art
adequate to lead one of ordinary skill in the art to “credit [an] account with
an award larger than a default award based at least in part upon [a] requested
money transfer transaction, and at least in part on the time of day of the
requested money transfer transaction being an underutilized time of the
service provider, the award being redeemable by the customer for credit
toward the purchase of a product from a service provider” (claim 50) and
“credit the customer's account with an award smaller than a default
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award based at least in part on the request to process a money transfer
transaction, and at least in part on the time of day of the money transfer
transaction being an heavily utilized time of the service provider” (claim
51).
For the foregoing reasons, the rejection is not sustained.
CONCLUSIONS
The rejection of claims 49-51 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 49-51 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sosa, Walker and Liebermann is reversed.
DECISION
The decision of the Examiner to reject claims 49—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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