Ex Parte KobresDownload PDFPatent Trial and Appeal BoardJan 11, 201713285386 (P.T.A.B. Jan. 11, 2017) Copy Citation 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 2 Appeal 2015-000059 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. 3 Appeal 2015-000059 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 4 Appeal 2015-000059 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 5 Appeal 2015-000059 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. 6 Appeal 2015-000059 Application 13/285,386 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 7 Copy with citationCopy as parenthetical citation