Ex Parte Hirson

Patent Trial and Appeal Board

Aug 30, 2017

12961393 (P.T.A.B. Aug. 30, 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.
12/961,393 12/06/2010 Ron HIRSON BOKU-P028 9067
17169 7590 09/01/2017
F)e Klerk Rr T .linHmark
EXAMINER
15732 Los Gatos Blvd. MAGUIRE, LINDSAY M
PMB# 100
Los Gatos, CA 95032 ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
ariana@dk-lund.com
stephen@dk-lund.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RON HIRSON
Appeal 2016-002263
Application 12/961,3931
Technology Center 3600
Before, JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—12 and 15—18. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Boku, Inc. as the real party in interest. Br. 3.
Appeal 2016-002263
Application 12/961,393
THE INVENTION
Appellant’s claims relate to online transactions via mobile
communications. Spec. 111.
THE REJECTION
The following rejection is before us for review.
Claims 1—12 and 15—18 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
ANALYSIS
35 U.S.C. § 101 REJECTION
Claims 1—12, and 15-18 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
The Appellant argued claims 1—12, and 15—18 as a group (Appeal
Br. 8), selecting claim 1 as representative. (Appeal Br. 13). The remaining
claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Independent claim 1 recites:
A computer-implemented method, comprising:
storing, by a computer of an interchange, an account
identifier of a user in connection with a telephone number of
the user, the account identifier comprising an account identifier
of the user to identify an account of the user at a payment
intermediary service;
maintaining, by the computer of the interchange, a
balance for the user in connection with the telephone number of
the user;
transmitting, by the computer of the interchange, a
message to a telephone at the telephone number of the user to
2
Appeal 2016-002263
Application 12/961,393
prompt the user to confirm a transaction to fund the account via
the telephone, the message being transmitted via a
telecommunication carrier of the telephone;
in response to the transaction being confirmed via
communicating with the telephone, transmitting, by the
computer of the interchange, one or more messages via the
telecommunication carrier to the telephone at the telephone
number to bill an amount to an account identified by the
telephone number at the telecommunication carrier;
collecting, by the computer of the interchange, funds
according to the amount billed through the telecommunication
carrier of the telephone to increase the balance;
adding, by electronically communicating with the
payment intermediary service using the computer of the
interchange, the funds collected through the telecommunication
carrier to the account of the user having the account identifier at
the payment intermediary service to decrease the balance;
receiving, by the computer of the interchange, a request
from a merchant computer for a payment on behalf of the user,
the request identifying the telephone number of the user;
in response to the request, transmitting, by the computer
of the interchange, a message to the telephone at the telephone
number of the user to prompt the user to confirm the request for
the payment;
in response to the request being confirmed via the
computer of the interchange, electronically communicating, by
the computer of the interchange, with the payment intermediary
service to obtain funds from the account of the user at the
payment intermediary service using the account identifier to
increase the balance; and
providing, by the computer of the interchange, the
payment to the merchant computer on behalf of the user using
the funds obtained from the payment intermediary service to
decrease the balance.
3
Appeal 2016-002263
Application 12/961,393
Appeal Br. 18—19.
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, we 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., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
4
Appeal 2016-002263
Application 12/961,393
The steps in claim 1 result in providing payment to the merchant on
behalf of the user using the funds obtained from the payment intermediary
service. The Specification at paragraph 47 recites:
In one embodiment, the mobile phones (117) are used by the
corresponding users to make payments and/or manage funds,
such as for making purchases in various websites hosted on the
servers (113) of merchants and service providers and/or for
transferring funds to or from an account identified by the
account information (121), such as phone bills of land-line
telephone services, credit card accounts, debit card accounts,
bank accounts, etc., or an account hosted on the data storage
facility (107) or telecommunication accounts of the mobile
phones (117) with telecommunication carriers. The mobile
phones (117) are used to confirm and/or approve the
transactions associated with the account identified by the
account information (121) (or other accounts). The interchange
(101) interfaces the mobile phones (117) and the servers (113)
to confirm and/or approve transactions and to operate on the
account identified by the account information (121) (and/or
other accounts associated with the phone number (123)).
Thus, all this evidence shows that claim 1 is directed to providing payment
to a merchant on behalf of a user using the funds obtained from a payment
intermediary service to increase the balance at the interchange and then
decrease the balance to pay the merchant. It follows from prior Supreme
Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that
the claims at issue here are directed to an abstract idea. Insuring payment to
a merchant for services rendered and/or goods received is a fundamental
economic practice. The patent-ineligible end of the 35 U.S. C. § 101
spectrum includes fundamental economic practices. See Alice Corp. Pty.
5
Appeal 2016-002263
Application 12/961,393
Ltd., 134 S. Ct. at 2355—1257. Thus, providing payment to a merchant on
behalf of a user using the funds obtained from a payment intermediary
service is an “abstract idea” beyond the scope of § 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of providing payment to a merchant on behalf of the user using the funds
obtained from a payment intermediary service to increase the intermediary
balance and decrease it to pay the merchant, at issue here. Both are squarely
within the realm of “abstract ideas” as the Court has used that term. That the
claims do not preempt all forms of the abstraction or may be limited to
telephone transactions, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the 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 “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
6
Appeal 2016-002263
Application 12/961,393
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to transfer funds, i.e., take in data, compute a result, and return the
result to a user amounts to electronic data query and retrieval—some of the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of providing payment to a merchant on behalf of a user
using the funds obtained from a payment intermediary service to decrease
the intermediary balance by paying the merchant. The claims do not, for
7
Appeal 2016-002263
Application 12/961,393
example, purport to improve the functioning of the computer itself. Nor do
they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than
instructions to provide payment to a merchant on behalf of a user using the
funds obtained from a payment intermediary service, on a generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
Appellant argues patent eligibility based on a claimed
“telecommunications carrier based pre-fimding” feature. (Appeal Br. 13).
However, in light of the breadth of the claim, the Appellant’s argument is
not persuasive as to error in the rejection. We note independent claim 1 does
not even recite “prefund,” and regardless, we find nothing in a prefunding
feature which would cause the claims to be any more directed to patent
eligible subject matter. In fact, we find prefunding by any party to a
transaction to be in furtherance of our finding of a fundamental business
practice because it is nothing more than a method of exchanging financial
8
Appeal 2016-002263
Application 12/961,393
obligations. See In re Smith 815 F.3d. 816-818 (Fed. Cir. 2016). That
claim 1 recites collecting funds through a telecommunications carrier does
not make it patent eligible because claim 1 does not recite any specific
means constituting an improvement in the technical field or technology of
telecommunications carriers. See McRO, Inc. v. Bandai Namco Games Am,
Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—12 and
15-18 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1—12 and 15—18 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
9