Ex Parte Kaplan et al

Patent Trial and Appeal Board

Oct 23, 2018

11125833 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/125,833 05/10/2005 Mark Mitchell Kaplan
22852 7590 10/25/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
UNITED ST A TES OF AMERICA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12096.0001-00 2178
EXAMINER
SHEDRICK,CHARLESTERRELL
ART UNIT PAPER NUMBER
2646
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK MITCHELL KAPLAN and COLIN RAND 1
Appeal 2016-000544
Application 11/125,833
Technology Center 2600
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 71, 73-78, and 80-89. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held October 9,
2018. A copy of the transcript will be entered to the record in due course.
We reverse.
Pursuant to our discretionary authority under 3 7 C.F .R. § 41. 50(b ), we
enter two new grounds of rejection under 35 U.S.C. § l 12(a) (Pre-AIA
§ 112, ifl) and§ 101.
1 Appellants list ShopText, Inc. as the real party in interest. Appeal Brief
filed April 27, 2015 ("App. Br.") 1.
Appeal 2016-000544
Application 11/125,833
STATEMENT OF THE CASE
The Invention
Appellants' invention relates to using the Internet to carry out retail
sales transactions. Spec. 1. Appellants acknowledge that the Internet
already was "a significant venue for [carrying out] retail sales." Id.
Appellants also acknowledge that various computer technologies
conventionally used for carrying out retail sales transactions included radio
frequency identification tags, bar codes, magnetic strips, mobile telephones
using Short Message Service (SMS) signals or texts, optical character
recognition, interactive voice recognition, web banners, and Internet-based
product catalogs. Id. at 1-2.
Appellants' invention, as claimed, more specifically relates to using
SMS texts to carry out retail sales transaction. Id. 2-5, 16. Appellants
explain that
Conventionally, mobile operating systems communicate
promotional content and information, without the ability to
detect the user handset or integrate into 3rd party databases or
systems. [Conventional] systems do not enable the purchasing
of physical product, billing via premium SMS or integration into
commercial databases, nor do they allow dynamic manipulation
of their mobile content.
Id. at 2.
Appellants' invention entails integrating distinct systems to provide
users a seamless, convenient and efficient shopping experience. Id.
Appellants achieve this by
provid[ing] an integrated mobile application server (IMAS)
system adapted to integrate a consumer experience, corporate
operations and brand communications across web, mobile,
wireless, physical spaces and traditional media. The IMAS
system enables commercial purchasing, user-profiling and
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community building using a mobile or wireless network as the
initiating transaction vehicle and/or as the method of confirming
a transaction.
Id. at 2-3.
Appellants' Figure 19 depicts the claimed embodiment. This
embodiment generally entails having a print advertisement 1100,
which is for a product or service, additionally set forth a destination
identification 1900 and a product identification 1910. Spec. 16;
Fig. 19. A consumer wishing to purchase the product or service can
do so by sending an SMS text message. Id. The consumer enters the
destination identification 1900 into the "TO" field of the text message,
enters the product identification 1910 into the body of the text
message, and sends the message to the recipient indicated by the
destination identification 1900 in the "TO" field. Id. Upon receiving
this text message, the IMAS uses the sending mobile phone number to
look up the consumer's previously collected profile, determine a
preferred payment plan, charge the customer's account, and cause the
product or service to be delivered to the customer. Id.
Independent claim 71, reproduced below with added emphasis,
illustrates the claimed invention:
71. A method of processing a transaction, the method
compnsmg:
receiving, by a computer system, a short message service
(SMS) message from a mobile device of a user to process a
transaction, the SMS message compnsmg a product
identification, wherein the SMS message was sent to a
destination identification;
determining, by the computer system, a requested product
based at least in part on the product identification and the
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destination identification, the product identification uniquely
corresponding to the destination identification;
determining, by the computer system, a purchase price for
the requested product;
determining, from the SMS message, a mobile phone
number associated with the mobile device used to send the SMS
message;
determining, by the computer system, a payment method
for processing the transaction by accessing a user profile
associated with the user and,
initiating, by the computer system, payment processing for
the transaction by charging the determined purchase price to the
user based at least in part on the determined payment method.
Two additional independent claims are pending, and they are
generally similar in scope. Independent claim 80 recites, in relevant part,
"determining, by the computer system, a requested product based at least in
part on the product identification and the destination identification;"
( omitting the additional language of claim 71, "the product identification
uniquely corresponding to the destination identification"). Independent
claim 85 recites, in relevant part,
determining a requested product based at least in part on
the product identification and the destination identification;
determining a unique merchant identification from which
the product will be purchased based at least in part on the product
identification and the destination identification.
Procedural History
This is Appellants' second appeal of rejected claims for the present
application. Some nine years ago, Appellants appealed the obviousness
rejection of then pending claims 21, 23-28, 32-33, 35--40, 44, 46-51, 55-
56, 58---63, and 66-70. See Appeal Brief filed October 20, 2009 in relation
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to appeal 2010-006456 ("the '6456 Appeal" and "the '6456 App. Br."). The
claims of the '6456 Appeal included language that presents a common issue
with the claims presently on appeal.
Then-pending claim 21, which was added by way of claim
amendment subsequent to the filing of Appellants' original application,
recited, inter alia, the following ( emphasis added):
21. A system comprising:
a request module, associated with a short code such that
messages directed to the short code are received by the request
module, wherein the request module receives a text message
directed to a short code from a mobile device that is associated
with a mobile number, and wherein the text message includes an
identifier that uniquely corresponds, for that short code, to a
particular consumer product at a particular price, and wherein the
text message initiates a purchase transaction for the particular
product at the particular price;
a determination module, operatively cooperating with the
request module, that determines, based on the short code to
which the text message was sent and the identifier included in the
text message, the particular consumer product being requested
in the text message and the price to be paid for that consumer
product as part of the purchase transaction.
The claim term, "short code" did not appear in Appellants' originally
filed Specification, but a prior Panel of the Board ("the Panel") interpreted
this term as corresponding to the currently recited "destination
identification" 1900. Ex parte Kaplan, 2010-006456, 5-7 (BP AI April 27,
2012) ("the '6456 Decision"). Appellants later agreed that this interpretation
is proper: "The ['6456] Decision correctly acknowledges that the short code
references the destination of the message, not the content [ of the message]."
Amendment and Response to Final Office Action filed June 27, 2012 (citing
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'6456 Decision 7). Appellants also further explained how the "short code"
corresponds to the destination identification code 1910:
[the method associated with Figure 19] begins with a consumer
entering text message destination characters [ 1900] into the 'TO'
field and the product identification characters [1910] into the
message body field on wireless device 1000. The user would
then initiate a communication via mobile communication
network 1010 which is connected to 1020. The messaging
gateway 1020 passes the data to IMAS 700 where the submission
is processed.
Id. at 13-14 (citing Spec. 16:18-22; Fig. 19).
Returning back to the first appeal, based upon this interpretation, the
Panel reversed the previous obviousness rejections, finding the Examiner's
interpretation of "short code" to be unreasonably broad and further finding
the Examiner failed to establish that the cited art taught a short code or
destination identifier that was used in the manner set forth by the following
"determination-module limitation" of claim 21:
a determination module, operatively cooperating with the
request module, that determines, based on the short code to
which the text message was sent and the identifier included in
the text message, the particular consumer product being
requested in the text message and the price to be paid for that
consumer product as part of the purchase transaction.
Claim language cited in '6456 Decision 7; analyzed in id. at 8-9. The Panel
then issued a new ground of rejection for all of the pending claims under
35 U.S.C. (pre-AIA) § 112, ,r 1, because the Panel determined that
Appellants' originally filed Specification did not provide adequate written
description to support the determination-module limitation of independent
claim 21 or the similar language of the other independent claims.
'6456 Decision 9-10.
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The Panel based its reversal of the obviousness rejection and its
determination regarding the Specification's inadequate written description
on the following reasoning:
Interpreting the claim term "short code" as corresponding
to the disclosed message destination character set, this claim
limitation requires that the determination module determines the
particular consumer product being requested in the text message,
as well the product's price, based upon two pieces of
information: ( 1) "the short code to which the text message was
sent" ( or message destination character set 1900); and (2) "the
identifier included in the text message" ( or product identification
code 1910). That is, claim 21 does not merely require that the
message destination character set 1900 be used to connect to the
IMAS. The claim further requires that the IMAS additionally
uses the message destination character set 1900, in combination
with the product identification character set 1910, to determine
the identity of the consumer product being requested. We reach
this conclusion because the express language of the claim
requires that the module makes the determination based on both
the short code and the identifier. The claim language does not
recite that the module makes the determination based only on the
identifier subsequent to, or in response to, a request being
directed to a short code.
Id. at 7-8; see also id. at 9-10 (setting forth the new written-
description ground of rejection).
That is, the Panel found Appellants' Specification to disclose in
relation to Appellants' Figure 19 embodiment that the IMAS is
reached by virtue of the consumer typing the destination identifier
1900 into the "TO" field of the SMS message, but once reached, the
IMAS determines a unique product or service based solely upon the
product identification 1910. Id. In contrast, the Panel found that the
claims require additional functionality similar to that of a call center
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that receives calls that were directed to different numbers or on behalf
of plural clients:
The following analogy helps describe and clarify what this
claim limitation requires. If the IMAS were equated with a
telephone call center, the call center would have to be provided
with the ability to receive customer phone calls that were placed
to various phone numbers. The call center would also have to be
designed to determine which product is being requested based
upon not only a product code conveyed within the message of a
call, but also based upon the particular phone number that was
used to connect to the call center.
Id. at 8.
Subsequent to the '6456 Decision issuing with the reversal of the art-
based rejections and the issuance of the new written-description rejection,
Appellants further prosecuted the present application before the Examiner.
Of relevance, Appellants eventually canceled all of the previously pending
claims and added new claims 71-90. See Amendment and Response filed
Jan. 18, 2013 ("Jan. 18, 2013 Response"). In Appellants' Jan. 18, 2013
Response, Appellants also argued to the Examiner that the Panel's written-
description rejection should be withdrawn because Appellants had canceled
and replaced all of the claims that had recited the term "short code," thereby
rendering the written description rejection moot:
The Office Action [mailed July 19, 2012] maintained the
Section 112 rejection of claims 21, 23-28, 30-33, 35--40, 42, 44,
46-51, 53-56, 58---63, and 65-70 of the Appeal Decision because
"nowhere does the original disclosure include the explicit terms
[sic] 'short code."' Office Action at p. 4. By this reply,
Applicants have cancelled claims 21, 23-28, 30-33, 35--40, 42,
44, 46-51, 53-56, 58-63, and 65-70. The Section 112 rejection
is now moot based on cancellation of these claims. Added claims
71-90 no longer recite the term "short code," which was the basis
for BPAI's Section 112 rejection.
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Applicants note that support for Claims 71-90 can be
found in at least Figure 19 and paragraphs 0086 - 0088 of the
specification as published (U.S. Patent Pub.
2006/0258397). Accordingly, Applicants respectfully request
that the Examiner reconsider and withdraw the Section 112
rejection of the Appeal Decision.
Jan. 18, 2013 Response 6.
In response to these claim amendments and arguments of Appellants,
the Examiner subsequently withdrew the written-description rejection
without further explanation or comment. See Non-Final Action mailed
Mar. 15, 2013. The Examiner thereafter only issued obviousness rejections.
Id.
Over the course of several further rounds of prosecution, various ones
of claims 71-90 were either amended or canceled. See Reply filed June 17,
2013; Amendment After Final filed Nov. 22, 2013; Response to Office
Action filed July 9, 2014. The Examiner, in tum, modified the art-based
rejections. See Final Action mailed July 23, 2013; Final Action mailed
Jan. 10, 2014; Non-Final Action mailed Aug. 28, 2014 (or more simply,
"Non-Final Act."). Appellants eventually appealed the art-based rejections
of the Non-Final Action, which stand as follows:
Claims 71, 80, and 85 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Stadelmann (US 6,415,156 Bl; issued July 2, 2002). Non-
Final Act. 5-6.
Claims 71, 73-78, and 80-89 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Meyer (US 2001/0049277 Al; published December 6,
2001) and Eisenberg (US 2006/0047568 Al; published Mar. 2, 2006). Non-
Final Act. 8-11.
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Appellants' Arguments and the Examiner's Determinations
In the Briefs of the present appeal, Appellants once again argue, inter
alia, that the cited references do not "teach or suggest the claimed
'determining' a product based on the product identification and the
destination identification." App. Br. 8 (argued in relation to Stadelmann);
see also id. 26 (presenting the same argument in relation to the combination
of Meyer and Eisenberg).
As far as we can discern from reviewing the Examiner's 55-page
Answer, the Examiner appears not to be disputing Appellants' contention
that the cited references fail to teach the claim language if the destination-
determination limitations are interpreted in the manner that the Panel
adopted in the'6456 Decision and as Appellants argue for now. See
Examiner's Answer mailed Aug. 7, 2015 ("Ans."). The Examiner, instead,
indicates that in the prior appeal, the Examiner based the rejection upon the
broader interpretation that actually was supported by Appellants'
Specification-the interpretation merely requiring the IMAS to read the
product identification, which would not invoke a written-description
rejection:
[ t ]he Examiner [ interpreted the claims] based on a reasonable
interpretation of what the Appellant[ s] could have possessed at
the time of the invention. The Examiner further presented to the
Board in the ['6456 Answer] an explanation as to why
[Appellants'] alternate interpretation would invoke a new matter
[ sic: written description] rejection.
Ans. 8.
The Examiner also appears to be adopting again this same broader
interpretation in maintaining the current rejections: "The Applicant's
specification appears to be consistent with the plain meaning (i.e., where the
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message being sent [is] based on the product identification," as discussed in
paragraphs 86-87 of Appellants' Specification. Ans. 20 (emphasis omitted).
"[ A ]s illustrated above and in the rejection[,] the ordered products are
indicated via [SMS] and sent to a destination for processing (e.g., a unique
destination)[.]" Id. "Stadelmann's distinct service provider would meet the
claimed merchant identification." Id. at 3 2 ( emphasis omitted). In relation
to the obviousness rejection over Meyer and Eisenberg, the Examiner
explains that "[the destination-identification] limitation is met by at least the
product being requested in the message request adequately 'identifies' the
product being request[ ed] and the request message is sent 'to a destination'
that is unique with respect to the product in the request[]." Id. at 41
( emphasis omitted).
Based on this history, we review the appealed rejections for error
based upon the issues identified by Appellants, and in light of the arguments
and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075
(BP AI 2010) (precedential).
ANALYSIS OF THE CLAIM INTERPRETATIONS AND
THE ART-BASED REJECTIONS
Appellants argue that Stadelmann differs in two aspects: "First,
Stadelmann fails to teach or suggest an 'SMS message' 'to process a
transaction.' Second, Stadelmann fails to teach or suggest the claimed
'determining' a product based on the product identification and the
destination identification." Id. at 8 (emphasis added and omitted).
Appellants present similar arguments in relation to the combination of
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Meyer and Eisenberg. Id. at 20-28. In sections I and II, below, we address
these two arguments seriatim.
I.
Appellants' argument that Stadelmann fails to teach a message that
more specifically is "to process a transaction," is based upon the premise
that the independent claims require the transaction be completed in direct
response solely to the receipt of the text message, alone. App. Br. at 8-15.
As Appellants summarize,
Stadelmann requires several separate communications with the
consumer in order "to process a transaction." Stadelmann fails
to disclose an "SMS message" "to process a transaction,"
without requiring further confirmation. The system of
Stadelmann process[ es] a transaction only after three separate
communications are exchanged, unlike the claimed methods
where the initial, initiating SMS message is sufficient "to process
a transaction."
Id. at 11.
Appellants' premise is faulty. The recited claim limitation "to process
a transaction" does not require that all of the argued limitations occur solely
in response to the receipt of the SMS message. Under the broadest
reasonable interpretation of the disputed language, "to process a transaction"
merely constitutes a goal or motive for why the SMS message is being sent.
At best, the phrase sets forth one of potentially multiple prerequisite actions
that must be satisfied for the transaction to be processed. By way of
analogy, one may go to law school with the goal to become a licensed
attorney. But going to law school alone is insufficient to accomplish this
goal. To become a licensed attorney, one also must pass a state bar
examination.
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Appellants further argue that the language of various dependent
claims supports their interpretation. Id. at 11-12. Specifically, Appellants
note that dependent claims 75, 83, and 88 each recites that the methods
further comprising "communicating, to the mobile device, a confirmation
request to confirm the transaction." Id. at 12. Appellants argue that the
doctrine of claim differentiation indicates that the message for initiating an
SMS message to process a transaction "is different than the subsequent
'confirming' message." Id.
We agree with Appellants' premise, at least for the purposes of the
stated dependent claims, that by additionally reciting a confirmation request
to confirm the transaction, the dependent claims exclude the initial "message
... to process a transaction" from including a confirmation message.
However, this fact further supports the Examiner's position that the claims
are not so narrow as to require the transaction be processed solely in
response to receipt of the initial transaction, alone. These dependent claims,
instead, evidence that processing the transaction can be delayed until after
the user sends a second, confirmation communication. See also Spec. 4: 17-
18 ("In the system, the confirmation may be adapted to prompt a response
from the user to authorize the request").
Accordingly, Appellants' arguments regarding the claim language "to
process a transaction" are unpersuasive.
II.
We now tum to Appellants' arguments regarding the claim language
"determining ... based at least in part on the product identification and the
destination identification."
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We note as a threshold matter that Appellants have misrepresented to
the Examiner the Board's determinations and reasoning regarding the
written-description rejection. Contrary to Appellants' assertion (see Jan. 18,
2013 Response 6), the Board did not maintain the written-description
rejection of the claims on the basis alleged by Appellants-that Appellants'
originally filed Specification failed to include the explicit term "short code."
As noted above, the '6456 Decision explained that the Panel
interpreted the term "short code" as corresponding to the disclosed
destination identification character set. '6456 Decision 6-7. The Panel even
stated expressly that it declined to decide whether the claim term "short
code" differs in scope from the Specification's term "destination identifier."
Id. at 11.
Contrary to Appellants' allegations, the Panel issued the written-
description rejection because Appellants' originally filed Specification does
not disclose a determining module that determines a particular consumer
product being requested based on a short code. The Specification discloses
the determination as being based only on a product identification. Id. at 7.
That conclusion would have been the same regardless of whether the claims
recited the term "destination identification" in place of "short code." As
such, Appellants' amendment changing "short code" to "destination
identification" (see Jan. 18, 2013 Response) was not a proper basis for the
Examiner to withdraw the written-description rejection.
Turning from the claim interpretation to the appealed art-based
rejections, the Examiner errs for a second time by again tortuously
interpreting Appellants' reasonably clear claim language so that the
language will read on subject matter that actually is supported by
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Appellants' Specification. We appreciate the Examiner's goal of affording
the claim terms their broadest reasonable interpretation consistent with
Appellants' Specification. See, e.g., Ans. 18 ( citing the claim interpretation
guidance of the Manual of Patent Examining Procedure (MPEP) § 2111.01 );
see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). But that canon of claim construction is intended to be used to
resolve an ambiguous term's meaning in favor of a reasonable interpretation
that is consistent with a specification over an unreasonable interpretation
that is inconsistent with a specification. That canon is not intended to favor
an unreasonable interpretation over a reasonable one merely because only
the unreasonable interpretation is supported by a specification. Under the
Examiner's approach to claim construction, no later-added claim language
ever would be subject to a written-description rejection because a clever
examiner always could formulate some unreasonably crabbed interpretation
that would render the claim language consistent with the specification.
To be sure, it is a close question in the present case whether the claim
language "determin[ing] ... a requested product based on [a destination
identification and a product identification]" reasonably may be interpreted,
as the Examiner does, as reading on a receiving module that only reads the
product identification. We understand the Examiner's reasoning that such a
receiving module receives the SMS message based on the destination
identification, and therefore one arguably might say that the subsequent
product determination ultimately is "based on" the destination identification
by virtue of the fact that, but for receiving the message, the receiving module
would not be able to determine the requested product.
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But ultimately, the prior Panel decided that the broadest reasonable
interpretation of the "based on" claim language would not be satisfied by a
module that determines a requested product merely because the module is
associated with the destination number that receives the SMS message. The
Panel decided that the claim recites additional functionality wherein the
receiving module specifically analyzes the destination identification to
determine the requested product. '6456 Decision 7-8.
As such, the Panel's interpretation of the claim language is the law of
the case, and absent sufficient new evidence that would justify adopting a
different interpretation, the Examiner is constrained to apply the Board's
interpretation. But the Examiner does not cite to any new evidence that
reasonably would provide a basis for the Examiner to newly adopt a broader
interpretation than the one adopted by the prior Panel. See, e.g., Ans. 8, 20
( wherein the Examiner explains that the interpretation underlying the
anticipation and obviousness rejections is based on what Appellants'
Specification supports, as opposed to on what the claim recites).
Because independent claims 71, 80, and 85 each recites determining a
requested product based at least in part on the destination identification, we,
therefore, reverse the § 102(b) rejection of claims 71, 80, and 85 over
Stadelmann. We likewise reverse the§ 103(a) rejection of claims 71, 73-78,
and 80-89 over Stadelmann and the combination of Meyer and Eisenburg.
Furthermore, Appellants provide insufficient new evidence that their
originally filed Specification does, in fact, support the narrower
interpretation that the prior Panel adopted and for which Appellants continue
to argue. See, e.g., App. Br. 16 (wherein Appellants argue that Stadelmann
identifies the product based upon the content of the SMS message alone,
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"and not based on the combination of the product identification in the SMS
message and the destination identification," as the claims require); see also
id. 1-3 ( wherein Appellants merely assert that the current claim language is
supported by Figure 19 and the associated discussion appearing at page 16,
lines 10 through 26, of their original disclosure). The prior Panel already
has determined that these portions of Appellants' Specification do not
provide adequate written-description support for the disputed claim
language. '6456 Decision 7-10.
To summarize, independent claims 71, 80 and 85 each recites that the
product-determining step is base at least on the product identification and the
destination identification. We, therefore, exercise our discretionary
authority under 37 C.F.R. § 4I.50(b) and newly reject claims 71, 73-78, and
80-89 under 35 U.S.C. § 112(a) for lacking adequate written description in
the originally filed Specification.
PATENT ELIGIBILITY UNDER 35 U.S.C. § 101
Principles of Law
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Accordingly, in applying the § 101 exception, the Supreme Court cautioned:
[W]e must distinguish between patents that claim the "buildin[g]
block[ s ]" of human ingenuity and those that integrate the
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building blocks into something more, thereby "transform[ing]"
them into a patent-eligible invention. The former "would risk
disproportionately tying up the use of the underlying" ideas, and
are therefore ineligible for patent protection. The latter pose no
comparable risk of pre-emption, and therefore remain eligible for
the monopoly granted under our patent laws.
Alice, 134 S. Ct. at 2354--55 (all brackets in original except first set)
(internal citations omitted).
Subsequent to the issuance of the prior Panel's '6456 Decision, the
Alice Court set forth an analytical "framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Id. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73
(2012)). In the first step of the analysis, we determine whether the claims at
issue are "directed to" a judicial exception, such as an abstract idea. Id. at
2355. If not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343,
1346 (Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339
(Fed. Cir. 2016). If the claims are determined to be directed to an abstract
idea, then we consider under step two whether the claims contain an
"inventive concept" sufficient to "transform the nature of the claim[ s] into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quotations and
citation omitted).
In considering whether the claims are directed to an abstract idea
under step one, we acknowledge, as did the Supreme Court, that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We
therefore look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
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effect that, itself, is the abstract idea and merely invokes generic processes
and machinery. See Enfzsh, 822 F.3d at 1336.
In the second step of the Alice analysis, if applicable, we must
consider whether the claims contain an element or a combination of
elements that is sufficient to transform the nature of the claim into a patent-
eligible application. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714
(Fed. Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claim[] do[es] significantly more than
simply describe [the] abstract method" and thus transform the
abstract idea into patentable subject matter. We look to see
whether there are any "additional features" in the claim[] that
constitute an "inventive concept," thereby rendering the claim[]
eligible for patenting even if [it is] directed to an abstract idea.
Those "additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted). Claim that "merely require generic computer
implementation[] fail to transform [an] abstract idea into a patent-eligible
invention." Alice, 134 S. Ct. at 2357.
Central to our analysis herein is the fundamental principle that the
Alice framework must be applied to the claims, as properly construed. As
our reviewing court has stated, "[ t ]he § 101 inquiry must focus on the
language of the Asserted Claims themselves." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016); see also Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
(Fed. Cir. 2013) (admonishing that "the important inquiry for a§ 101
analysis is to look to the claim"); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014)
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(focusing on "whether the claims of the asserted patents fall within the
excluded category of abstract ideas") ( emphasis added)).
These principles are based on long-established jurisprudence that "[i]t
is the claims [that] define the metes and bounds of the invention entitled to
the protection of the patent system." In re Warmerdam, 33 F.3d 1354, 1360
(Fed. Cir. 1994) (citing Zenith Lab. Inc. v. Bristol-Myers Squibb Co., 19
F.3d 1418, 1424 (Fed. Cir. 1994)); see also In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) ("the name of the game is the claim.").
Alice Step One Inquiry
Independent claim 71 is directed to, in relevant part,
( 1) receiving a message from a user to process a transaction, the message
comprising a product identification, and the message being sent to a
destination identification;
(2) the receiving party determining a requested product based at least in
part on the product identification and the destination identification, the
product identification uniquely corresponding to the destination
identification;
(3) determining a purchase price for the requested product;
( 4) determining the identity of the user;
( 5) determining a payment method for processing the transaction
by accessing a user profile associated with the user, and
( 6) initiating payment processing for the transaction by charging
the determined purchase price to the user based at least in part on the
determined payment method.
These limitations indicate that claim 71 is directed to a method of
carrying out a commercial transaction that entails receiving a request for a
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product, verifying the product requested, verifying the consumer requesting
the product, determining the preferred payment method, and billing the
customer for the purchased product. The claimed method is analogous, then,
to pre-Internet commercial transactions between humans wherein a customer
walks into a department store and requests merchandise by brand and unique
description, followed by the salesperson receiving the customer's charge
card to verify the customer's identity and to determine the payment method,
and then processing the transaction payment either by obtaining an imprint
of the customer's charge card using a flatbed manual credit card imprinting
machine or by recording the transaction with a pencil in a ledger.
As such, claim 71 reasonably can be interpreted as being directed to a
fundamental economic practice, such as concepts relating to agreements
between people or performing financial transactions. See MPEP
§ 2106.04(a)(2) (Part I). The courts have held that various methods of
carrying out commercial transactions are directed to patent-ineligible subject
matter. See, e.g., Inventor Holdings, LLC v. Bed Bath & Beyond Inc., 123
F.Supp.3d 557, 561 (Fed. Cir. 2015) (holding that "the concept of local
processing of payments for remotely purchased goods is an abstract idea").
Other activities that have been characterized as constituting patent-ineligible
abstract ideas include certain methods of organizing human activity, such as
concepts relating to advertising, marketing, and sales activities or behaviors.
See MPEP § 2106.04(a)(2) Part (II).
Accordingly, we determine independent claim 71 to be directed to a
patent-ineligible abstract idea under step 1 of the Alice framework. We,
therefore, tum to the question of whether the limitations of claim 71 contain
an element or a combination of elements that is sufficient to transform the
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nature of the claim into a patent-eligible application. Ultramercial, Inc., 772
F.3d at 714.
Alice Step Two Inquiry
Claim 71 additionally recites that all of the method steps for carrying
out the commercial transaction are performed with a computer system
responsive to receipt of an SMS message. Appellants acknowledge that at
the time of the invention, using the Internet to carry out retail sales was
conventional. Spec. 1: 10-13. Appellants also acknowledge that
communicating information with SMS messages was conventional. Id. at
2: 1-2. Appellants explain that their invention entails providing an integrated
mobile application server (IMAS) system that integrates "a consumer
experience, corporate operations and brand communications across web,
mobile, wireless, physical spaces and traditional media." Id. at 2:27-29.
However, claim 71 does not focus on a specific means or method that
improves SMS communications or server-system technology. See Enfzsh,
822 F.3d at 1336 (explaining how to determine whether a claim recites
significantly more than an abstract idea). Claim 71 instead merely invokes
generic processes and machinery to carry out the claimed abstract idea. See,
e.g., Spec. 16 ( setting forth improvements to the SMS-communication
protocol and !MAS-processing protocols at high levels without describing
specific means of improving the underlying technologies themselves). In
fact, the portion of Appellants' Specification that Appellants alleged to
provide support for claim 71 does not even disclose the claimed particular
protocol of "determining, by the computer system, a requested product based
at least in part on the product identification and the destination
identification, the product identification uniquely corresponding to the
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destination identification." Appellants' Specification instead indicates that
SMS messaging is just one of a laundry list of communication technologies
that Appellants' server can use to collect data. See, e.g., Spec. 1-2.
Accordingly, we conclude that Appellants' claimed invention uses common
computer components in their well-understood, routine, and conventional
manner.
For the foregoing reasons, we exercise our discretionary authority
under 37 C.F.R. § 4I.50(b) and newly reject independent claim 71 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Although we decline to reject remaining claims 73-78 and 80-89
pursuant to our discretionary authority under 37 C.F.R. § 4I.50(b), we
emphasize that our decision does not mean that the remaining claims are
necessarily patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
DECISION
The Examiner's decision rejecting claims 71, 73-78, and 80-89 under
35 U.S.C. §§102 and 103 is reversed.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b ), we
enter a new ground of rejection for claims 71, 73-78, and 80-89 under
35 U.S.C § 112(a) (pre-AIA § 112, ,r 1). We also enter a new ground of
rejection for claim 71 under 35 U.S.C. § 101.
Rule 4I.50(b) provides that "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
Rule 4I.50(b) also provides the following:
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Application 11/125,833
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
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). Further guidance on responding to a new ground of
rejection can be found in the Manual of Patent Examining Procedure
(MPEP) § 1214.01 (9th Ed., Rev. 9, Nov. 2015).
REVERSED
37 C.F.R. § 4I.50(b)
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