Ex Parte Lord et al

Patent Trial and Appeal Board

Dec 18, 2017

13011309 (P.T.A.B. Dec. 18, 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.
13/011,309 01/21/2011 Clint Walter Lord 19203.0018U1 4407
23859 7590
Ballard Spahr LLP
SUITE 1000
999 PEACHTREE STREET
ATLANTA, GA 30309-3915
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/20/2017 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):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLINT WALTER LORD,
WAYNE WILLIAM PECK,
CHRISTOPHER ANDREW MARK,
and HEATHER LEE MARK
Appeal 2016-005621
Application 13/011,309
Technology Center 3600
Before ELENI MANTIS MERCADER, ERIC S. FRAHM, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-27, 29-33, and 35-38, which are all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is ProPay, Inc. App. Br.
2.
Appeal 2016-005621
Application 13/011,309
INVENTION
Appellants’ invention relates to facilitating or executing electronic
payment transactions. Abstract. Claim 6 reads as follows:
6. A system to facilitate an electronic payment
transaction comprising:
a payment management system configured to
receive a request to initiate a communication session
between a merchant terminal and a wireless data connection
enabled computing device,
in response to the request, send identifying information
for the communication session to at least one of the merchant
terminal and the wireless data connection enabled computing
device,
receive a payment transaction request from the merchant
terminal during the communication session after sending the
identifying information,
send the payment transaction request to the wireless data
connection enabled computing device during the
communication session,
receive a purchase authorization for the payment
transaction request from the wireless data connection enabled
computing device,
send the payment transaction to a payment processor,
receive an approval of the payment transaction from the
payment processor, and
send notification of the approval of the payment
transaction to at least one of the merchant terminal and the
wireless data connection enabled computing device to conclude
the payment transaction.
REJECTIONS
Claims 1-27, 29-33, and 35-38 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Chen et al. (2007/0063017 Al; published Mar. 22,
2007) (“Chen”). Final Act. 10-16.
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Claims 1-27, 29-33, and 35-38 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.2 Ans. 3-5.
ANALYSIS
We have reviewed the rejections of claims 1-27, 29-33, and 35-38 in
light of Appellants’ arguments that the Examiner erred. We have considered
in this decision only those arguments Appellants actually raised in the
Briefs. Any other arguments which Appellants could have made, but chose
not to make, in the Briefs are deemed waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants’ arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Rejection of Claims 1—27, 29—33, and 35—38 under 35 U.S.C. § 102(b)
With respect to independent claim 6, Appellants contend the cited
portions of Chen do not disclose the limitation “a payment management
system configured to receive a request to initiate a communication session
between a merchant terminal and a wireless data connection enabled
computing device.” App. Br. 4. Appellants argue Figure 3 of Chen does not
disclose a request to initiate a communication session between Merchant 315
and Customer 305. Id. at 4-5. Appellants further argue the Examiner
attempts to define the disputed limitation based on an isolated portion of the
Specification. Id. at 5 (citing Spec. ^ 8). Appellants point to a different
2 In the Answer, the Examiner entered a new ground of rejection under
35 U.S.C. § 101. See Ans. 2-3. Appellants maintained the appeal. See
37 CFR§ 41.39(b)(2).
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portion of the Specification as describing the disputed limitation. Id. at 6
(citing Spec. 9-10).
We are not persuaded the Examiner erred. During prosecution, claims
must be given their broadest reasonable interpretation while reading claim
language in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The Examiner concluded the disputed limitation is
broad enough to encompass the teachings of Chen 42-44. Final Act. 12;
Ans. 6-11. Appellants, however, have not persuasively rebutted the
Examiner’s findings of fact and conclusions by, for example, presenting
persuasive argument or objective evidence that the cited paragraphs of Chen
do not disclose the limitation at issue, or by showing the Examiner’s claim
interpretation is overly broad, unreasonable, or inconsistent with the
Specification.
Appellants next contend Chen does not disclose “a payment
management system configured to . . . receive a payment transaction request
from the merchant terminal during the communication session after sending
the identifying information,” as claim 6 requires. App. Br. 7. Appellants
again rely on Figure 3 of Chen in arguing that “ezMobilePay Center 320
receives Charge Transaction Request 335 before—not after—sending
Authorization request 350.” Id. Appellants further argue that the Examiner
attempts to define the limitation at issue based on an isolated portion of the
Specification. Id. at 7-8 (citing Spec. ^ 15).
Appellants’ arguments are not persuasive. The Examiner concluded
the disputed limitation is broad enough to encompass the teachings of Chen
27, 42^14, and 48. Final Act. 12; Ans. 6-11. Appellants have not
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persuasively rebutted the Examiner’s findings or conclusions through
persuasive argument, objective evidence, or a showing that the Examiner
erred in interpreting the claims.
Regarding independent claim 19, Appellants contend Chen does not
disclose the limitation “a wireless data connection enabled computing device
configured to . . . receive an approval of the payment transaction to conclude
the payment transaction.” App. Br. 8. Appellants argue that, based on Chen
Figure 3, “Merchant 315—not Customer 305—receives Approval 385.” Id.
Appellants also argue that the Examiner erred in relying on paragraphs 8 and
15 of Appellants’ Specification in interpreting the disputed limitation. Id. at
9.
Appellants’ arguments are not persuasive. The Examiner concluded
the disputed limitation is broad enough to encompass the teachings of Chen
43^14. Final Act. 14; Ans. 12. Again, Appellants have not persuasively
rebutted the Examiner’s findings based on paragraphs 43 and 44 of Chen, or
persuaded us that the Examiner’s interpretation of the disputed limitation is
overly broad, unreasonable, or inconsistent with the Specification.
Regarding claim 33, Appellants contend Chen lacks the limitation “at
least one merchant terminal device configured to send non-payment-
transaction information for the wireless data connection enabled computing
device during the communication session,” because Chen is only concerned
with securely making payments and deposits. App. Br. 10.
We are not persuaded of error. We agree with the Examiner that
Appellants’ Specification does not specifically define the limitation “non­
payment transaction information.” See Ans. 13. The Examiner interpreted
“non-payment transaction information” as broad enough to encompass
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identifying information disclosed in Chen. Id. at 13-14 (citing Chen^f 42-
44). Appellants have not persuasively rebutted the Examiner’s findings or
shown that the Examiner’s claim interpretation is overly broad,
unreasonable, or inconsistent with the Specification. See Reply Br. 3.
For these reasons, we are not persuaded that the Examiner erred in
finding that Chen discloses the disputed limitations of claims 6, 19, and 33.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of independent claims 6, 19, and 33, as well as the Examiner’s 35 U.S.C.
§ 102(b) rejection of independent claims 1,11, and 27, which Appellants
argue are patentable for similar reasons. App. Br. 10. We also sustain the
Examiner’s rejection of dependent claims 2-5, 7-10, 12-18, 20-26, 29-32,
and 35-38, not argued separately.
Rejection of Claims 1—27, 29—33, and 35—38 under 35 U.S.C. § 101
The Examiner concluded claims 1-27, 29-33, and 35-38 are directed
to the abstract idea of “facilitating or executing electronic payment
transactions,” which is a fundamental economic practice and is similar to
concepts that have been identified by the courts as abstract ideas, such as
hedging in Bilski and mitigating settlement risk in Alice. Ans. 4. The
Examiner also found the claims do not include additional elements sufficient
to amount to significantly more than the judicial exception because the
additional elements are simply a generic computer, a wireless data
connection enabled computing device, and a computer network performing
their generic computer functions. Id.
Appellants contend the Examiner erred because “[facilitating or
executing electronic payment transactions is not abstract in the sense that
hedging and mitigating settlement risk may be,” and “the devices (and
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associated operation thereof) of infrastructure that connects two parties and
permits the flow of electronic value therebetween are not abstract.” Reply
Br. 2. Appellants also argue the claims do not seek to block all innovation
related to electronic payment transactions. Id. Appellants further argue that
the claims to do not recite mere generic computer function, but rather
particular operation that plays a role in improving operation of electronic
payment. Id. at 2-3.
Appellants’ arguments are not persuasive. The Supreme Court in
Alice identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). The first step
is to “determine whether the claims at issue are directed to one of those
patent-ineligible concepts,” such as an abstract idea. Id. If the claims are
directed to a patent-ineligible concept, the second step is to consider the
elements of the claims “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.” Id. (internal quotation
omitted). 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. (internal quotations omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants’ claim 1 is directed generally to “a method to
facilitate an electronic payment transaction,” which is a fundamental
economic practice. See Ans. 3—4. ft follows from prior Supreme Court
cases, and In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) in particular, that the
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claims at issue here are directed to an abstract idea. Like the risk hedging in
Bilski, the concept of information exchange between merchants and
customers is a fundamental business practice long prevalent in our system of
commerce (see Spec. ^ 7) and is a long-used practice to protect the interests
held by different parties in data. Thus, information exchange between
merchants and customers, like hedging, is an “abstract idea” beyond the
scope of §101. See Alice Corp., 134 S. Ct. at 2356.
Moreover, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. 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 TLI
Commc ’ns LLC Patent Litig., 823 F.3d at 611; FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Here, the claims,
unlike the claims found non-abstract in prior cases, use generic computer
technology to perform data collection, analysis, and processing and do not
recite an improvement to a particular computer technology. See, e.g.,
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15
(Fed. Cir. 2016) (finding claims not abstract because they “focused on a
specific asserted improvement in computer animation”). As such, the claims
are directed to the abstract idea of receiving, analyzing, and processing data.
Appellants have not persuasively shown the claims are not directed to
an abstract idea. Appellants argue that that the devices of infrastructure in
the claim are not abstract. Reply Br. 2. Appellants, however, offer
insufficient persuasive argument or objective evidence to persuade us the
Examiner erred. Appellants overlook that the first step in the Alice
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framework looks to whether the claim is directed to an abstract idea, not
whether the claim as whole is simply an abstract idea. Moreover, we are
unpersuaded by Appellants’ argument that the claims do not preempt every
application of some abstract idea and are, therefore, patentable. See Reply
Br. 2. Lack of preemption does not make the claims any less abstract. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(collecting cases); Accenture Glob. Servs., GmbHv. Guidewire Software,
Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.”).
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything “significantly more” to transform the abstract
concept of facilitating an electronic payment transaction into a patent-
eligible application. Alice, 134 S.Ct. at 2357. Appellants argue that sending
identifying information for a communication session to a merchant terminal
and wireless data connection enabled computing device in response to
receiving a request to initiate a communication session between the
merchant terminal and wireless data connection enabled computing device is
not mere generic computer function but rather a particular operation that
plays a role in improving operation of electronic payment transaction
infrastructure. Reply Br. 2-3.
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp., 134 S.Ct. at 2359. They do not. Appellants have
not persuaded us that the contents of what is sent and received in claim 1
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amounts to anything more than data. Using a computer to receive data,
determine what data is needed, generate data, store data, and process
payments in the form of data amounts are the most basic functions of a
computer. All of these computer functions, including requesting and
initiating a wireless data connection, are well-understood, routine,
conventional activities previously known to the industry. The claims do not,
for example, purport to improve the functioning of the computer itself. Nor
do they effect an improvement in any other technology or technical field.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately.
For these reasons, we are not persuaded the Examiner erred in
concluding claims 1-27, 29-33, and 35-38 are directed to patent-ineligible
subject matter. Accordingly, we sustain the Examiner’s rejection of claims
1-27, 29-33, and 35-38 under 35 U.S.C. § 101.
DECISION
We affirm the decision of the Examiner rejecting claims 1-27, 29-33,
and 35-38.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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