Ex Parte Honnef et al

Patent Trial and Appeal Board

Jul 27, 2018

13243972 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/243,972 09/23/2011 William L. Honnef
66945 7590 07/31/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
79900-819649 5237
EXAMINER
LI,SUNM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM L. HONNEF and DONALD L. ENDRES
Appeal2016-007805 1
Application 13/243,972
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. PETTING, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify CyberSource Corporation as the real party in interest.
App. Br. 3.
Appeal2016-007805
Application 13/243,972
STATEMENT OF THE CASE2
William L. Honnef and Donald L. Endres (Appellants) seek review
under 35 U.S.C. § 134 of the Examiner's Final rejection of claims 1-3, 5, 6,
8-19, 21, 22, 24--35, 37, 38, 40-48, and 53-59, the only claims pending in
the application on appeal. Final Act. 4. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a way to provide electronic stored value
certificates. Spec.para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method, performed by a stored value certificate computer
system having one or more processors, the method comprising:
[1] receiving, by the one or more processors, data for generating
a virtual value account from an issuer server, the data including
customer data identifying a customer,
initial value data identifying an initial value,
and
one or more unique online merchant group identifiers
that each correspond to a specified group of online
merchants;
2 Our decision will make reference to the Appellants' Appeal Brief ( filed
January 27, 2016, "App. Br.") and Reply Brief (filed August 26, 2016,
"Reply Br."), and the Examiner's Answer (mailed June 16, 2016, "Ans."),
and Final Action (mailed July 27, 2015, "Final Act.").
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Application 13/243,972
[2] receiving, by the one or more processors, a request to
generate the virtual value account from the issuer server;
[3] generating, by the one or more processors, the virtual value
account,
the generating including binding the one or more unique
online merchant group identifiers to the virtual value
account,
the binding indicating that only online merchants in
groups associated with one of the unique online merchant
group identifiers will recognize the virtual value account;
[ 4] activating, by the one or more processors, the virtual value
account,
the activating including associating the virtual value
account with
a unique account identifier,
a unique customer identifier corresponding to the
customer data,
and
an account value corresponding to the initial value;
[5] receiving, by the one or more processors, a request for an
event identifier corresponding to a transaction from an online
merchant server;
[ 6] generating, by the one or more processors, the event
identifier,
the event identifier being unique and sequentially
generated;
[7] sending, by the one or more processors, the event identifier
to the online merchant server;
[8] receiving, by the one or more processors, a redemption
request for the transaction from the online merchant server,
the redemption request including
a unique account identifier,
a unique customer identifier,
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Application 13/243,972
a unique online merchant identifier corresponding
to an online merchant associated with the
transaction and that operates the online merchant
server,
and
a transaction amount;
[9] determining, by the one or more processors, whether the
unique account identifier and the unique customer identifier
associated with the virtual value account matches the unique
account identifier and the unique customer identifier associated
with the transaction;
[10] determining, by the one or more processors, whether a
unique online merchant group identifier bound to the virtual
value account matches a unique online merchant group
identifier associated with the unique online merchant identifier
included in the redemption request;
and
[ 11] processing, by the one or more processors, the transaction
when the unique account identifiers, the unique customer
identifiers, and the unique online merchant group identifiers
match, the processing including updating the account value.
Claims 1-3, 5, 6, 8-19, 21, 22, 24--35, 37, 38, 40-48, and 53-59 stand
rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. 3
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
3 A rejection under 35 U.S.C. § 112(b) (Final Act. 10) was withdrawn in an
Advisory Action mailed Oct. 8, 2015.
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Application 13/243,972
The Examiner finds
ANALYSIS
Claims 1-3, 5-6, 8-19, 21-22, 24-35, 37-38, 40-48, and 53-59,
as a whole, represent the abstract idea of having a third party to
issue a stored value certificate (i.e. prepaid electronic voucher)
for a customer to shop online with a specified/a group of online
merchant, redeeming such prepaid value toward the purchase
amount and updating the balance of the stored value certificate,
which is considered abstract ideas (i.e. an idea itself,
mathematical formula, method of organized human activities or
fundamental economic practice) of basic and fundamental
economic practice, because they merely reflect a prevalent
business practice where issuing, redeeming, and updating the
balance of the prepaid electronic voucher is well-known,
conventional marketing/advertising business practice.
Final Act. 11-12.
The Examiner expands on this by determining "the claims recite a third
party (i.e. 'an issuer server') to information and request to generate/open a
virtual account, however, delegating a third party to receive information and
open a virtual account on behalf of a merchant or a group of merchants is
conventional and well known activities in the marketing/advertising
industry. There is nothing that is sufficient to amount to significantly more
than the judicial exception." Final Act. 12.
The Examiner goes on to determine
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims do nothing more than use a
"computing system[,]" ("one or more processors" coupled with
a computer readable medium[]), "issue server[,]" and "merchant
server" to implement the abstract idea. The additional elements
of the claims do not add a meaningful limitation to the abstract
idea because they are generic computer components (processor,
memory user interface to display) which perform generic
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Application 13/243,972
computer functions and they would be routing in any computer
implementation. Therefore the combinations of elements in the
claim are not sufficient to amount to significantly more than the
abstract idea.
Final Act. 12.
As to the Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 11-15 and Answer 3-20 and
reach similar legal conclusions. We now tum to the Reply Brief arguments.
We are not persuaded by Appellants' argument that "the Examiner's
inability to clearly articulate what the abstract idea is suggests that there is
no abstract idea in the claims at all." Reply Br. 3. The Examiner clearly
articulated the abstract idea claim 1 is directed to as "issuing, redeeming,
and updating the balance of the prepaid electronic voucher" supra. Final
Act. 12. The Examiner expands on this in Answer 4--5, but remains
consistent with this determination.
We are not persuaded by Appellants' argument that "[s]ince an abstract
idea has not been identified as being similar to any existing facts in [a] court
case." Reply Br. 3--4. The instant claim 1 receives data and requests,
generates and activates an account, receives, generates and sends data for an
identifier, receives another request, determines whether the data match
properly, and process a transaction. Thus claim 1 receives, analyzes,
modifies, and transmits data. These processes are similar to the processes in
the cases the Examiner cites. The Examiner's determination is also similar
to that in in Electric Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (Holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept."); see also In re TL!
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Communications LLC Patent Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). As to the data operated upon, "even if a process of collecting and
analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." SAP America Inc. v. InvestPic LLC, 890 F.3d 1016, 1022 (Fed.
Cir. 2018).
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 4---6. The claims differ from those found patent
eligible in Enfzsh, where the claims were "specifically directed to a self-
referential table for a computer database." Enfish, 822 F.3d at 1337. The
claims thus were "directed to a specific improvement to the way computers
operate" rather than an abstract idea implemented on a computer. Id. at
1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to improve
the accuracy of the process of transaction validity, our reviewing court has
held that speed and accuracy increases stemming from the ordinary
capabilities of a general purpose computer "do[] not materially alter the
patent eligibility of the claimed subject matter." Bancorp Services, L.L. C.
v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed.
Cir. 2012). Instead, the claims are more analogous to those in
FairWarning, wherein claims reciting "a few possible rules to analyze
audit log data" were found directed to an abstract idea because they
asked "the same questions ( though perhaps phrased with different words)
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that humans in analogous situations detecting fraud have asked for
decades." FairWarning, 839 F.3d at 1094, 1095.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 6-7. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." DDR, 773 F.3d at 1257. There,
the Court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to
resolve a problem that had no "pre-Internet analog." Id. at 1258. The
Court cautioned, however, "that not all claims purporting to address
Internet-centric challenges are eligible for patent." Id. For example, in
DDR Holdings the Court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See DDR, 77 3 at
1258-59 (citing Ultramercial, 772 F.3d 7 09, 715-16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were "directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before." Id. at 1258
(quoting Ultramercial, 772 F.3d at 715-16). Nevertheless, those claims
were patent ineligible because they "merely recite[ d] the abstract idea of
'offering media content in exchange for viewing an advertisement,' along
with 'routine additional steps such as updating an activity log, requiring a
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request from the consumer to view the ad, restrictions on public access, and
use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." Ultramercial, 772 F.3d at 712. Similarly, Appellants' asserted
claims recite receiving, analyzing, modifying, and transmitting data. This
is precisely the type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that
An "inventive concept" is that which is not conventional, or one
that is not present in the prior art. Thus, contrary to the
Examiner's statement, the second prong of the 101 test does
involve an analysis that is similar to an analysis that might be
performed under 35 U.S.C. 102/103.
Reply Br. 8. "[A] claim for a new abstract idea is still an abstract idea.
The search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty." Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d
1138, 1151 (Fed. Cir. 2016). More to the point, Appellants' definition of an
inventive concept is incomplete as the claims must recite it with some
technological implementation detail to tum the concept into a concrete
embodiment of that idea.
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At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(2016).
CONCLUSIONS OF LAW
The rejection of claims 1-3, 5, 6, 8-19, 21, 22, 24--35, 37, 38, 40-48,
and 53-59 under 35 U.S.C. § 101 as directed to non-statutory subject matter
1s proper.
DECISION
The rejection of claims 1-3, 5, 6, 8-19, 21, 22, 24--35, 37, 38, 40-48,
and 53-59 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) (2011).
AFFIRMED
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