Ex Parte Hollander et al

Patent Trial and Appeal BoardJan 30, 2017

13285175 (P.T.A.B. Jan. 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. 13/285,175 10/31/2011 Eran Hollander CITI-0708 1052 13708 7590 01/30/2017 Johnson, Marcou & Isaacs, LLC 317A East Liberty Street Savannah, GA 31401 EXAMINER SCHMUCKER, MICHAEL W ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 01/30/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERAN HOLLANDER, ANDREW JOHN KESE, CARRIE JUBINSKI, NICOLE CARROLL, and ALLISON LINDEMANN ____________ Appeal 2015-0019281 Application 13/285,1752 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. MEDLOCK, 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 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed August 20, 2014) and Reply Brief (“Reply Br.,” filed November 10, 2014), and the Examiner’s Answer (“Ans.,” mailed September 10 2014), and Final Office Action (“Final Act.,” mailed May 21, 2014). 2 Appellants identify Citibank, N.A. as the real party in interest. App. Br. 3. Appeal 2015-001928 Application 13/285,175 2 CLAIMED INVENTION Appellants’ claimed invention “relates generally to the field of electronically processing transaction information, and more particularly to methods and systems for communicating and processing transaction information from a specially programmed smart point-of-sale terminal.” (Spec. ¶ 2). Claims 1, 4 and 20 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of communicating information from a smart point-of-sale terminal, comprising: receiving, by a smart point-of-sale terminal processor, transaction information consisting at least in part of a transaction amount; recognizing, by the smart point-of-sale terminal processor, that the transaction information also consists at least in part of information related to a redemption function; performing, by the smart point-of-sale terminal processor, the redemption function to produce an adjusted transaction amount; and routing, by the smart point-of-sale terminal processor, a message consisting at least in part of an approval request for the adjusted transaction amount to a card issuer processor via a card association transaction processing network. REJECTIONS Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1–20 are rejected under 35 U.S.C. § 102(b) as anticipated by Mankoff (US 2007/0136131 A1, pub. June 14, 2007). Appeal 2015-001928 Application 13/285,175 3 ANALYSIS Non-Statutory Subject Matter Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” id., e.g., to an abstract idea. If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “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.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). In rejecting claims 1–20 under § 101, the Examiner finds that the claims are directed to account settlement, i.e., “settling accounts by credit cards, coupons, and/or other financial instruments/accounts,” which the Examiner determines is a “fundamental economic practice/account concept and is simply a series of mathematical formulations and/or steps to Appeal 2015-001928 Application 13/285,175 4 organizing what a human could do with the same information (human activity)” and, therefore, an abstract idea (Ans. 2). The Examiner further finds that the claims do not recite limitations that are “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. It should be noted the limitations of the current claims are performed by the generically recited computer/processor. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry Id. at 2–3. Putting aside whether the Examiner erred in finding that the claims are directed to the abstract idea of account settlement, we are persuaded that even if the claims are directed to an abstract idea, the Examiner has not adequately explained why the claims fail to recite limitations that are “significantly more” than the abstract idea itself. For example, the Examiner does not explain why Appellants’ claimed invention does not improve the functionality of the point-of sale terminal (“POS”) itself, or why the claimed invention would not be considered an improvement in the technical field of electronically processing transaction information. Instead, the Examiner summarily concludes, without any analysis, that the limitations beyond the abstract idea are “merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry” (id. at 3). Appeal 2015-001928 Application 13/285,175 5 In view of the foregoing, we do not sustain the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101. Anticipation Appellants argue that the Examiner erred in rejecting independent claims 1, 4, and 20 under 35 U.S.C. § 102(b) because Mankoff does not disclose “a smart point-of-sale terminal processor that itself recognizes that the transaction information relates to a redemption function, performs the redemption function, and routes an approval request for the adjusted transaction amount to the card issuer processor, as recited in amended independent claim 1” or “a smart point-of-sale terminal processor that recognizes that information received at the terminal relates to a third party function other than a card association transaction processing function and routes the information to the third party processor, as recited in independent claim 4 and similarly in independent claim 20” (App. Br. 10–11). Appellants assert that Mankoff instead describes a POS that is not capable of recognizing that the transaction relates to a redemption function or to another third party function, and simply routes every transaction authorization, either directly or via the card issuer, to a card-matching agent, which checks its database to determine, for example, whether a redemption is involved and, if so, applies or sends a credit back to the POS terminal (id. at 11). The Examiner does not contend that Mankoff discloses a POS terminal that itself performs all of the functions of the claims at the physical POS terminal; instead, the Examiner maintains that Appellants are arguing something (i.e., that the smart POS terminal is automatically performing the claimed method steps itself at the physical POS terminal without any Appeal 2015-001928 Application 13/285,175 6 interaction with any other processors or humans) that Appellants do not claim (Ans. 3–4; see also id. at 5–6). The Examiner, thus, concludes that Mankoff discloses a system that meets the claim language under a broadest reasonable interpretation standard. We agree. Independent claims 1 and 4 are directed to a method for communicating information from a smart point-of-sale terminal, and recite that the method comprises “recognizing, by the smart point-of-sale terminal processor” that the transaction information received by the POS terminal relates at least in part to a redemption function (claim 1) or to a third party function other than a card association transaction processing network function (claim 4). Independent claim 20 is directed to a corresponding system, and recites that the system comprises a smart point-of-sale terminal programed to receive information at the POS terminal and to “recognize that the information relates at least in part to a third party function other than a card association transaction processing network function.” During prosecution, the PTO gives claims their “broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). The term “recognize” is generally understood to mean “to show awareness of; approve of or appreciate” or equally “to perceive or show acceptance of the validity or reality of.” See The American Heritage® Dictionary of the English Language, Houghton Mifflin Harcourt Publishing Company (5th ed. 2016), accessed at http://www.thefreedictionary.com/ recognize (last visited on Jan. 20, 2017). And there is no indication in the Appeal 2015-001928 Application 13/285,175 7 Specification that Appellants have given the term a meaning different from its ordinary and customary meaning. Mankoff is directed to a system for redeeming virtual coupons by associating the coupons with consumers’ credit cards for redemption, and discloses that when a consumer uses his or her credit card for purchases at a merchant's POS terminal, information identifying the purchased items is added to an authorization request and sent from the POS terminal to the issuer of the consumer’s card (Mankoff ¶¶ 43–49). The card issuer forwards the information to a card-matching agent, which determines whether an accepted coupon offer is involved in the transaction; alternatively, the transaction information can be sent in the authorization request directly from the POS terminal to the card-matching agent (id. at ¶¶ 54–55). If the card- matching agent determines that a coupon is involved, the card-matching agent either applies the discount to the consumer’s credit card statement or transmits the discount back to the POS terminal (id. at ¶ 55). The POS terminal is, thus, made aware (i.e., the POS terminal recognizes) that the transaction information relates at least in part to a redemption function. We agree with the Examiner that Mankoff discloses the argued limitations of claims 1, 4, and 20 under a broad, but reasonable interpretation. Therefore, we sustain the Examiner’s rejection of independent claims 1, 4, and 20 under 35 U.S.C. § 102(b). We also sustain the rejection of dependent claims 2, 3, and 15–19, which are not argued separately except based on their dependence from claims 1 and 4 (App. Br. 12). Appeal 2015-001928 Application 13/285,175 8 DECISION The Examiner’s rejection of claims 1–20 under 35 U.S. C. § 101 is reversed. The Examiner’s rejection of claims 1–20 under 35 U.S. C. § 102(b) 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)(1)(iv). AFFIRMED