Ex Parte MathisonDownload PDFPatent Trial and Appeal BoardJun 28, 201713669224 (P.T.A.B. Jun. 28, 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. 13/669,224 11/05/2012 Steve Mathison 87188-853708 (100200US) 8781 20350 7590 06/30/2017 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER SHAAWAT, MUSSA A ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 06/30/2017 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVE MATHISON Appeal 2017-0016481 Application 13/669,224 Technology Center 3600 Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 12—17 and 20, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is First Data Corporation. (App. Br. 3.) Appeal 2017-001648 Application 13/669,224 STATEMENT OF THE CASE Introduction Appellant’s purported inventions “are directed toward selecting transaction application and/or routing options that are provided by a transaction card based on transaction application preference.” (November 5, 2012 Specification (“Spec.”) 13.) Claim 12 is representative and is reproduced below (with minor reformatting): 12. A point of sale device comprising: a near field communication (NFC) reader; a merchant interface; a network interface; and a processor communicatively coupled with the NFC reader, the merchant interface, and the network interface, wherein the processor is configured to: receive transaction information from a merchant transaction system through the merchant interface, wherein the transaction information comprises a transaction amount; receive a plurality of transaction applications from a transaction card through the NFC reader, wherein each of the plurality of transaction applications comprises a plurality of routing options, and wherein each of the plurality of transaction applications comprises a banking identification number (BIN); send the plurality of transaction applications and at least a subset of the transaction information to a host processor through the network interface; receive a recommendation from the host processor through the network interface indicating a preferred transaction application and at least one alternative transaction application from the plurality of transaction applications, wherein the preferred transaction application and the at least one alternative transaction application are 2 Appeal 2017-001648 Application 13/669,224 selected and ordered based on a preferred one of the plurality of routing options and an incentive received or a transaction cost, and wherein the incentive received or the transaction cost is determined based on the transaction amount and the BIN. Prior Art and Rejections on Appeal The following table lists the prior art relied upon by the Examiner in rejecting the claims on appeal: US 2004/0117302 A1 June 17, 2004 US 2005/0216424 A1 Sept. 29, 2005 May 31,2012 US 2012/0136780 A1 (filed Aug. 26, 2011) Claims 12—17 and 20 stand rejected under 35U.S.C. § 101 because the claims are not directed to patent eligible subject matter. (Final Office Action (mailed Dec. 7, 2015) (“Final Act.”) 2—3.) Claims 12—17 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gandre, in view of Weichert, and further in view of El- Awady. (Final Act. 4—6.) Weichert et al. (“Weichert”) Gandre et al. (“Gandre”) El-Awady et al. (“El-Awady”) ANAFYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We are not persuaded that the Examiner erred in rejecting claims 12—17 and 20 under 35 U.S.C. § 101. We are persuaded that the Examiner erred in rejecting claims 12—17 and 20 under 35 U.S.C. § 103(a). 3 Appeal 2017-001648 Application 13/669,224 Patent Eligibility An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978) (“Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S. 4 Appeal 2017-001648 Application 13/669,224 63, 64 (1972) (“They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals.”). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores,” and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. If the claim is “directed to” a patent-ineligible abstract idea, we then consider the elements of the claim—both individually and as an ordered combination—to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an “inventive concept”—an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. The Examiner finds that claims 12—17 and 20 are “directed to a judicial exception. (Final Act. 8.) According to the Examiner, the claims are: similar to the basic concept of fundamental economic practice since the claim deals with cost saving[,] which has been found by the courts to be an abstract idea see ALICE, in addition[,] it is also an example of comparing new and stored information and using rules to identify options, which has been found by the court to be an abstract idea (see SmartGene, section IV.B.4). Therefore[,] the claims are to an abstract idea.” 5 Appeal 2017-001648 Application 13/669,224 (Id., emphasis omitted.) Appellant contends that the “present claims are ‘necessarily rooted in computer technology,’ as in DDR [] because they necessarily require a special-purpose computer rather than a generic computer. . . .” (App. Br. 5.) According to Appellant: the claims recite point of sale (POS) terminals and a computer system having a processor, which also require specific programming to enable the performance of specific operations. Specifically, operations related to receive a plurality of transaction applications from a transaction card through the NFC reader require specific programming and specific hardware (an NFC reader) that are not present on a general purpose computer. As such, the independent claims and those that depend therefrom are not directed to an abstract idea. (Id. at 6.) Appellant has not persuaded us of Examiner error. We do not agree with Appellant’s contention that “patent-eligible claims [] are ‘necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks’.” (Id. at 5.) Appellant’s contention boils down to its argument that because the claims recite “point of sale (POS) terminals and a computer system having a processor, which[, according to Appellant,] also require specific programming to enable the performance of specific operations,” the claims are therefore not abstract because they “cover more than a generic computer.” (Reply 3; App. Br. 5-6.) This argument is unconvincing because claim 12 is directed to an abstract idea that is focused on collecting information, processing the information by mathematical algorithms, and presenting the results. See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (“The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and 6 Appeal 2017-001648 Application 13/669,224 not any particular assertedly inventive technology for performing those functions.”). For example, while claim 12 recites a POS device comprising of various components (e.g., near field communication reader (“NFC”), interfaces, processor), the claim is directed to receiving two pieces of information (via a merchant interface and the NFC reader), sending the received information via another interface (i.e., network interface) to a host processor, and receiving a recommendation from the host processor. (App. Br. 8 (“The present claims ... are directed to a point of sale device that is configured to receive transaction information and a plurality of transaction applications that are used to generate a recommendation for a preferred transaction application.”).) Therefore, “the focus of the claim[] is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” See Elec. Power, 830 F.3d at 1354. Regarding step two of Alice, Appellant argues that, even if “the claims are directed to an alleged abstract idea . . . the claims contain sufficient elements to ensure that the claims amount to significantly more than the alleged abstract idea itself In particular, [Appellant argues that] the claims contain several elements that specifically show a patent-eligible application of the alleged abstract idea.” (App. Br. 8-9, emphasis added.) We are not persuaded by Appellant’s argument but instead agree with the Examiner’s finding that “the elements involved in the recited process [(i.e., the various components in the POS device)] undertake their roles in performance of their activities according to their generic functionalities which are well- understood, routine and conventional.” (Ans. 4.) Specifically, we agree with the Examiner that the “elements together execute in routinely and 7 Appeal 2017-001648 Application 13/669,224 conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry.” (Id.) Appellant’s further contention that “the claimed invention . . . enables a significant amount of the processing power to be present in the host computer rather than in the numerous point of sale devices” is mere attorney argument and a conclusory statement, which is unsupported by factual evidence, and, thus is entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). We are also not persuaded of error on the part of the Examiner by Appellant’s argument that the claims do not “pre-empt all implementations of the abstract idea itself.” (App. Br. 9.) “[W]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Fair Warning IP, LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhatthe claims do not preempt all price optimization or may be limited to price optimization in the e- commerce setting do not make them any less abstract.”). Further, “[wjhere a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. 8 Appeal 2017-001648 Application 13/669,224 For the foregoing reasons, because claims 12—17 and 20 are directed to an abstract idea and nothing in the claims adds an inventive concept, the claims are not patent-eligible under § 101. Therefore, we sustain the 35 U.S.C. § 101 rejection of claims 12—17 and 20. Obviousness With regard to claim 12, the Examiner finds that paragraphs 11 to 45 of Gandre2 teach or suggest “receiv[ing] a plurality of transaction applications from a transaction card ...” and “sending] the plurality of transaction applications ... to a host processor . . . .” (Final Act. 4.) Appellant contends that the Examiner erred because “Gandre discloses only receiving a single transaction application from a single payment card with a single BIN.” (App. Br. 10.) Here, the Examiner has not shown that Gandre teaches or suggests that the process receives a plurality of transaction applications from a transaction card. Specifically, the Examiner does not explain how the cited portions of Gandre teach or suggest “receiving] a plurality of transaction applications from a transaction card ...” and “sending] the plurality of transaction applications ... to a host processor.”3 (Ans. 5—6; Final Act. 4.) For the foregoing reasons, we are persuaded of Examiner error in the rejection of claim 12, as well as claims 13—17 and 20, which depend on 2 Gandre contains a total of 45 paragraphs. Therefore, the Examiner is citing to almost the entirety of Gandre. 3 Because we do not sustain the Examiner’s rejection for the reasons discussed herein, we need not address Appellant’s further arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). 9 Appeal 2017-001648 Application 13/669,224 claim 12. Therefore, we do not sustain the 35 U.S.C. § 103 rejection of claims 12—17 and 20. DECISION We affirm the decision of the Examiner to reject claims 12—17 and 20 under 35 U.S.C. §101. We reverse the decision of the Examiner to reject claims 12—17 and 20 under 35 U.S.C. § 103(a). 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 10 Copy with citationCopy as parenthetical citation