Ex Parte Kobres

Patent Trial and Appeal Board

Jan 11, 2017

13285386 (P.T.A.B. Jan. 11, 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.
13/285,386 10/31/2011 Erick Kobres 11-407 (1592.171US1) 6248
107681 7590
NCR Corporation
3097 Satelite Boulevard
Building 700, 2nd Floor, Law Department
Duluth, GA 30096
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/13/2017 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):
PTOMail.Law @ ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICK KOBRES
Appeal 2015-0000591
Application 13/285,3862
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
June 9, 2014) and Reply Brief (“Reply Br.,” filed September 23, 2014), and
the Examiner’s Answer (“Ans.,” mailed July 24, 2014) and Final Office
Action (“Final Act.,” mailed December 18, 2013).
2 Appellant identifies NCR Corporation as the real party in interest. App.
Br. 2.
Appeal 2015-000059
Application 13/285,386
CLAIMED INVENTION
Appellant’s claimed invention relates to “a method for visually
conducting an automated transaction with an enterprise system” (Spec. 1 6).
Claim 1, reproduced below, is the sole independent claim and
representative of the subject matter on appeal:
1. A non-transitory processor-readable medium
having instructions programmed into a mobile device to perform
a method, comprising:
obtaining, on the mobile device, a visual identifier for a
transaction, the visual identifier acquired from a terminal device
of an enterprise;
decoding, on the mobile device, the visual identifier in
order to obtain payment details for completing the transaction;
confirming, on the mobile device the payment details and
also augmenting, on the mobile device, the payment details;
generating, on the mobile device, a visual transaction
envelope for completing the transaction on the terminal device,
the visual transaction envelope includes digitally signed and
encrypted information for a transaction identifier for the
transaction, payment information for payment of the transaction
including the payment details, and a loyalty card for a customer
of the transaction;
providing, from the mobile device, the visual transaction
envelope to the terminal device to conclude the transaction; and
displaying an interactive video presentation of the
concluded transaction to the customer to obtain instant feedback
from the customer on completion of the transaction.
REJECTIONS3
Claims 1—12 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
3 In identifying the grounds of rejection applicable to the appealed claims,
the Examiner omits any reference to the rejection of claims 1—12 under
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Application 13/285,386
Claims 1—12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hasson (US 2009/0240626 Al, pub. Sept. 24, 2009).
ANALYSIS
Non-Statutory Subject Matter
The patent statute provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof.” 35 U.S.C. § 101. Yet 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. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass ’n for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
“[phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously 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 those concepts.” Alice Corp., 134 S. Ct. at 2355.
The first step in that analysis is to “determine whether the claims at issue are
35 U.S.C. § 112, second paragraph, set forth in the Final Rejection.
See Ans. 2; see also Final Act. 2. Appellant also makes no reference to the
rejection in their Appeal Brief. Therefore, we assume that the rejection has
been withdrawn.
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Application 13/285,386
directed to one of those patent-ineligible concepts.” Id. If so, the second
step is to consider the elements of the claims “individually and ‘as an
ordered combination”’ to determine whether the additional elements
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1298). In other words, the second step is to
“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.’” Id.
(alteration in original) (citing Mayo, 132 S. Ct. at 1294).
In rejecting claims 1—12 under 35 U.S.C. § 101, the Examiner found
that (1) the claims are directed to an abstract idea, i.e., to the fundamental
economic practice of performing a payment transaction; (2) the limitations
recited in the claims 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 in the industry; and (3) the claims
do not include limitations that are significantly more than the abstract idea
itself (Ans. 2—3).
Responding to the Examiner’s rejection, Appellant quotes the
language of claim 1, with emphasis, and asserts that the emphasized
elements are more than simply applying a known economic principle to a
computer implementation, and are not “a typical financial transaction and
represent a completely new and novel manner of conducting a financial
transaction” (Reply Br. 2). Appellant summarily concludes that even if
conducting a financial transaction is considered a fundamental economic
principle for which § 101 is triggered, Appellant “has done more than simply
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Application 13/285,386
apply that principle in a computer implementation” and “has substantially
changed it to a different mechanism for conducting a transaction” (id. at 2—
3). But Appellant does not explain how or why, and we fail to see how or
why, the claims do more than implement the abstract idea of performing a
payment transaction on a generic mobile device, e.g., a smart phone, tablet,
laptop, etc. For example, Appellant does not contend that the claims are
directed to an improvement in any technology or technical field. And
although Appellant asserts that the claims represent a “new and novel”
manner of conducting a financial transaction, a novel claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct.
at 1304.
Absent further explanation, we are not persuaded that the Examiner
erred in rejecting claims 1—12 under 35 U.S.C. § 101. Therefore, we sustain
the Examiner’s rejection.
Obviousness
Appellant argues that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because Hasson does not disclose or
suggest any video capability that occurs after the conclusion of a transaction,
i.e., “displaying an interactive video presentation of the concluded
transaction to the customer to obtain instant feedback from the customer on
completion of the transaction,” as recited in claim 1 (App. Br. 7—8).
Appellant acknowledges that Hasson discloses a video capability in
connection with verifying the transaction before the transaction has
completed (id. at 7 (citing Hasson 134)). But Appellant argues that in every
instance in Hasson, the video is used in connection with activity before the
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Application 13/285,386
transaction is completed with the customer, and never after completion of
the transaction to obtain instant customer feedback (id.).
In the Final Office Action, the Examiner cites Figure 2 and
paragraphs 32 through 36 of Hasson as disclosing the argued limitation
(Final Act. 3). However, we agree with Appellant that although the cited
portions of Hasson disclose that video is used in conducting the payment
transaction, we find nothing in the cited paragraphs that discloses or
suggests “displaying an interactive video presentation of the concluded
transaction to the customer to obtain instant feedback from the customer on
completion of the transaction,” as called for in claim 1.
We also cannot agree with the Examiner that the argued limitation is
not entitled to patentable weight (Ans. 3—4). That the interactive video
presentation is displayed at the conclusion of the transaction for the purpose
of obtaining customer feedback, i.e., that the intended use of the video
presentation is to obtain customer feedback, does not mean that the
displaying step cannot be relied on to distinguish over the prior art for
purposes of patentability.
Claim 1 positively recites the step of “displaying an interactive video
presentation of the concluded transaction to the customer to obtain instant
feedback from the customer on completion of the transaction.” Therefore, to
establish a prima facie case of obviousness of claim 1, the Examiner must
show that Hasson discloses or suggests each of the steps recited in the claim,
including “displaying an interactive video presentation of the concluded
transaction to the customer.” The Examiner has made no such showing, and
has, thus, failed to establish a prima facie case of obviousness.
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Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the
rejection of dependent claims 2—12. Cf. In reFritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).
DECISION
The Examiner’s rejection of claims 1—12 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—12 under 35 U.S.C. § 103(a) is
reversed.
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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