Ex Parte Neuwirth

Patent Trials and Appeals Board

Apr 2, 2019

13731942 - (D) (P.T.A.B. Apr. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/731,942 12/31/2012
122269 7590 04/04/2019
Brian Tucker
Kirton McConkie
36 South State Street, Suite 1900
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Volker Neuwirth
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.
24538.5 7602
EXAMINER
POE,KEVINT
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
04/04/2019 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):
btucker@kmclaw.com
ipdocket@kmclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER NEUWIRTH
Appeal 2017-011046
Application 13/731,942 1
Technology Center 3600
Before MARC S. HOFF, JENNIFER S. BISK, and CARLL. SILVERMAN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 1, 3-10, 21-25, and 27-31. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appellants' invention is a system, method, and computer program
product for processing a request for user input to a client computing device
over a network. A first request for user input is received from a merchant
computing system, including contact information for a user. A second
1 The real party in interest is Zukunftware, LLC.
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request for user input is sent using the contact information, requesting user
input to enable the merchant computing system to perform a transaction. In
response to user selection of a link, a web page is displayed that includes an
area for receiving user input from a user via a touch screen of a client
computing device. The user input is then sent to a merchant computing
system to enable the merchant computing system to perform the transaction.
Spec. 3-4.
Claim 1 is reproduced below:
1. In a server computing system, a method for enabling a
merchant computing system to obtain user input from a user,
the method comprising:
providing, by the server computing system, an interface
to the merchant computing system, the interface configured to
receive communications from an application executing on the
merchant computing system, the server computing system
compnsmg memory that stores computer executable
instructions defining the interface and a processor that
executes the computer executable instructions to provide the
interface;
rece1vmg, via the interface, one or more first
communications sent over the internet by the application
executing on the merchant computing system, the one or more
first communications including:
(1) a request to obtain user input to serve as
authorization for the merchant computing system to perform a
transaction to an account of the user,
(2) contact information for the user, and
(3) information representing the transaction;
extracting the contact information and the information
representing the transaction from the one or more first
communications;
generating a webpage that includes an input area for
receiving the user input;
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formatting the webpage to include the information
representing the transaction that was provided in the one or
more first communications;
transmitting a second communication over a network to a
client computing device associated with the user based on the
contact information that was provided in the one or more first
communications, the second communication including a link
which the user can select to cause the webpage to be displayed;
in response to the user selecting the link included in the
second communication, transmitting the webpage to the client
computing device such that the webpage is displayed to the
user to allow the user to provide the user input into the input
area;
in response to the user providing the user input, receiving
one or more third communications that include the user input;
and·
' sending the user input to the merchant computing system to enable the
merchant computing system to associate the user input with the account for
the user on the merchant computing system such that the user input can
serve as authorization from the user to perform the transaction to the
account. The Examiner relies upon the following prior art in rejecting the
claims on appeal:
N ascenzi et al.
S tarai et al.
Prather et al.
Henderson
US 2002/0022609 Al
US 2010/0241565 Al
US 2012/0142403 Al
US 2013/0132274 Al
July 25, 2002
Sept. 23 2010
June 7, 2012
May 23, 2013
Claim 1, 3-10, 21-25, and 27-31 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Claims 1, 3-10, 21-25, 28, 30, and 31 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Henderson, Starai, and Nascenzi.
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Claims 27 and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Henderson, Starai, Nascenzi, and Prather.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Sept. 9, 2017), and the Examiner's Answer ("Ans.,"
mailed June 6, 201 7) for their respective details.
ISSUES
1. Is the claimed invention directed to a judicial exception?
2. Is the judicial exception integrated into a practical application?
3. Does the combination of Henderson, Starai, and Nascenzi disclose
or fairly suggest the three specific communications limitations recited in the
independent claims?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category,
we are guided by the Supreme Court's two-step framework, described in
Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed
to." See Alice, 573 U.S. at 219 ("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."); see also Bilski v. Kappas, 561 U.S.
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593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978));
and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450
U.S. 17 5, 192 (1981) ); "tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning
v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 at 176; see also id. at 192 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. ( citing Benson and Flook); see, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
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mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Revised Guidance"). 84 Fed. Reg.
50. Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim ( 1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(seeMPEP § 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
ANALYSIS
SECTION 101 REJECTION
Appellants make a unitary argument directed to all pending claims 1,
3-10, 21-25, and 27-31. See App. Br. 8-20. Accordingly, we will select
independent claim 1 as representative of the rejected claims.
Claim 1 recites the following limitations:
(a) providing, by the server computing system, an interface to the
merchant computing system, the interface configured to receive
communications from an application executing on the merchant computing
system; (b) receiving, via the interface, one or more first communications
sent over the internet by the application executing on the merchant
computing system; 2 ( c) extracting the contact information and the
information representing the transaction from the one or more first
communications; ( d) generating a webpage that includes an input area for
2 The "one or more first communications" are to include three specific items:
(1) a request to obtain user input to serve as authorization for the merchant
computing system to perform a transaction; (2) contact information for the
user; and (3) information representing the transaction.
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receiving the user input; ( e) formatting the webpage to include the
information representing the transaction; (f) generating a second webpage
that includes an input area for receiving the user input; (g) transmitting a
second communication over a network to a client computing device
associated with the user based on the contact information that was provided,
the second communication including a link that the user can select to cause
the webpage to be displayed; (h) transmitting the webpage to the client
computing device ... to allow the user to review the document and provide
user input; (i) in response to the user providing the user input, receiving one
or more third communications that include the user input; and (j) sending the
user input to the merchant computing system to enable the merchant
computing system to associate the user input with the account for the user on
the merchant computing system, such that the user input can serve as
authorization from the user to perform the transaction to the account.
These limitations, under their broadest reasonable interpretation,
recite presenting information to a user, and obtaining "user input" in
response to the presented information. Specifically, the claimed invention
concerns obtaining authorization for a transaction to be entered into by a
user.
We regard the claimed concept of obtaining authorization for a
transaction to be a method of organizing human activity found by the courts
to constitute patent-ineligible subject matter. Parties have been entering into
contracts for the sale of goods or property, for the performance of services,
and for myriad other purposes for centuries if not millennia. We conclude
that the claimed obtention of authorization is analogous to commercial or
legal interactions, including agreements in the form of contracts, and
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entering into legal obligations, that the courts have found to be patent-
ineligible. See, e.g., buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1355
(Fed. Cir. 2014) (holding that concept of "creating a contractual
relationship----a 'transaction performance guaranty"' is an abstract idea); In
re Comiskey, 554 F.3d 967, 981 (Fed. Cir. 2009) (claims directed to
''resolving a legal dispute between two parties by the decision of a human
arbitrator" are ineligible); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed Cir. 2014) (holding that claim "describe[ing] only the abstract idea
of showing an advertisement before delivering free content" is patent
ineligible); In re Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009)
(holding methods "directed to organizing business or legal relationships in
the structuring of a sales force ( or marketing company)" to be ineligible);
Credit Acceptance, 859 F .3d 1044 at 1054 ("The Board determined that the
claims are directed to the abstract idea of 'processing an application for
financing a purchase.' ... We agree.").
Accordingly, we conclude that the claims recite commercial or legal
interactions, which constitute one of certain methods of organizing human
activity identified in the Revised Guidance. 84 Fed. Reg. at 52. We thus
conclude that the claims recite an abstract idea.
Appellants argue that the claims are not directed to an abstract idea,
but rather to one particular way, out of many different possible ways, in
which a server computing system enables a merchant to obtain authorization
input from a user. App. Br. 9-10. Appellants' argument is not persuasive.
The claimed invention concerns the adaptation of the abstract idea of
obtaining authorization for a transaction, e.g. manually, to the context of a
computer system. See Ans. 18. That the claims limit the claimed invention
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to one particular mode of such adaptation does not change the character of
the invention.
INTEGRATED INTO A PRACTICAL APPLICATION
We next evaluate whether the claims integrate the identified abstract
idea of obtaining user authorization for a purchase or other legal agreement
into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. We
consider whether there are any additional elements beyond the abstract ideas
that, individually or in combination, "integrate the [ abstract ideas] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit." Revised Guidance, 84 Fed. Reg. at
54--55.
The claimed invention does not constitute an improvement to the
functioning of a computer; rather, it merely constitutes the adaptation of the
abstract idea of obtaining authorization input from a user, previously
performed mentally or manually, to execution as steps performed by a
computer. MPEP 2106.05(a). There is no disclosure to the effect that the
claimed invention is applied with, or by use of, a particular machine. MPEP
2106.05(b). Appellants' invention does not effect the transformation or
reduction of a particular article to a different state or thing. MPEP
2106.05(c).
Appellants argue that "the claims are not merely about automating the
process of obtaining user input. That process has been automated since at
least the advent of computers. Instead, the claims are directed to a very
specific way for obtaining authorization input that would be beneficial in
very specific circumstances." App. Br. 11. Appellants do not point to any
disclosure concerning the claimed specific process that would constitute an
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improvement to the functioning of a computer. Appellants do not identify
application of the claimed invention with, or by use of, a particular machine.
Appellants disclose that the problem to be overcome with the present
invention is the "burdensome requirement" of printing, signing, and
returning a document. Spec. ,r 4. To that end, the invention "enables a
merchant to send a signature request ... to any device having a browser and
touch screen or other means for receiving user input. An input area is
displayed within the browser on the user's device. When the user inputs a
signature, the signature can be routed over a network back to the merchant to
provide authorization for a transaction." Spec. ,r 5. What the Specification
does not disclose, and what Appellants do not establish in argument, is any
manner in which the disclosed and claimed invention amounts to more than
the established, "manual" process of obtaining user authorization, adapted to
generic computer components.
Turning to further elements under the Guidelines for determining
whether an abstract idea is integrated into a practical application, as
discussed supra we determine that Appellants' invention constitutes mere
instructions to implement an abstract idea on a computer. MPEP 2106.05(f).
We determine that the claim limitations directed to ( 1) generating and
formatting a webpage that includes information representing the transaction,
(2) transmitting a second communication to a client computing device such
that the webpage is caused to be displayed upon the user's selection of a
link, are claim limitations that constitute insignificant extra-solution activity.
See MPEP 2106.0S(g).
Appellants argue that the series of steps that "defines a process by
which the server generates and links together two different types of network
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communications ... so that the user will ultimately be able to provide user
input" defines "a unique way in which the server can facilitate the receipt of
the user input." App. Br. 13. Appellants' argument is not persuasive
because Appellants do not explain why this ordered combination of steps
"amounts to significantly more than the abstract idea of receiving user
input." App. Br. 14. Appellants do not establish how the recited steps
constitute more than insignificant extra-solution activity. Appellants do not
explain how the asserted linkage of network communications improves the
functioning of a computer, for example, or how the claimed steps are more
than a generic arrangement of network components.
WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL
Having determined that the claims recite a judicial exception, and do
not integrate that exception into a practical application, we consider whether
the claim adds a specific limitation beyond the judicial exception that is not
"well understood, routine, and conventional" in the field. Revised Guidance
Fed. Reg. at 56.
Appellants' claims recite such technical elements as a "server
computing system," "merchant computing system," and "client computing
device." Appellants disclose that "[ c ]lient computing device 103 represents
any device having a browser and a touch screen or other means for receiving
a user's signature." Spec. ,r 34. "Merchant computing system 102
represents one or more servers or other computing devices that a merchant
uses to send requests to server system 101 over network 104." Spec. ,r 35.
"Server system 101 represents one or more computing devices used to
receive requests from merchant computing system 102, and to send requests
for signatures to client computing device 103 and receive signatures back."
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Spec. ,r 3 6. "Server system 101 can comprise one or more server computing
devices or a cloud of server computing systems." Id.
We determine that Appellants disclose and claim generic computer
components used conventionally. We are not persuaded that Appellants
provide a non-generic arrangement of known, conventional elements. Id.
Rather, we conclude that the disclosed and claimed invention uses generic
computer components as a mere tool to implement the abstract idea of
obtaining authorization from a user.
As Appellants have not disclosed any features of the claimed
merchant system, server system, or client computing system that would be
considered as other than "well-understood, routine, and conventional," these
claim limitations fail to indicate the presence of an inventive concept. We
further find that Appellants' disclosure, discussed supra, is specified at a
high level of generality.
MISCELLANEOUS ARGUMENTS
Appellants argue that the claims under appeal should be found to be
patent-eligible because the claims were rewritten to conform substantially to
hypothetical claims based on the Board's holding in covered business
method proceeding CBM 2014-00170. App. Br. 14. This argument is not
persuasive for two reasons. First, patent applications are examined and
adjudicated on their own merits. The outcome in CBM2014-00170 is not
controlling authority with respect to this proceeding. Second, Appellants
admit that the claims of CBM2014-00170 were found to be patent eligible
for reasons having nothing to do with the subject matter of the claimed
invention: "primarily based on how the information is disseminated ... the
Board found it significant that the patent addressed a way to disseminate
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information to a user's computing device when the device is not online."
App. Br. 16; see CBM2014-00170, Paper 13.
Appellants also contend that the practices of Art Unit 3692 violate due
process. App. Br. 17. Appellants' argument is not persuasive because it
lacks factual support. By Appellants' own admission, its argument that Art
Unit 3692 is predisposed not to pass applications to allowance is "based on
speculation." App. Br. 19. That different art units have different allowance
rates for patent applications examined therein is not, by itself, probative of
any violation of constitutional due process, or even violation of USPTO
procedures. One practitioner's opinion concerning a "typical Alice
rejection," an opinion that does not even identify a particular examiner or art
unit, has no relevance whatever to establishing the practices of the art unit in
which this application was examined. App. Br. 20.
In response to Appellants' argument (App. Br. 9) that the claims do
not pre-empt the abstract idea of obtaining authorization input from a user,
we note that lack of preemption will not demonstrate patent eligibility.
"Where 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
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We conclude that none of the claim limitations, viewed "both
individually and as an ordered combination," amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355
(internal quotations omitted) (quoting Mayo, 132 S. Ct. at 1297).
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Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims
1, 3-10, 21-25, and 27-31.
SECTION 103 REJECTIONS
Independent claim 1 recites, inter alia, receiving one or more first
communications sent over the internet by the application executing on the
merchant computing system, including (1) a request to obtain user input to
serve as authorization for the merchant computing system to perform a
transaction to an account of the user; (2) contact information for the user;
and (3) information representing the transaction. Independent claim 21 also
recites these limitations.
The Examiner finds that Starai discloses the claimed "receiving one or
more first communications," in that Starai teaches a merchant server 12 that
submits a payment request 22 to gateway 14, where the request may include
a redirect URL address that points back to the merchant server. Non-Final
Act. 9; Ans. 21; Starai ,r 18. The Examiner finds that the claimed "one or
more first communications" is not clearly defined in Appellants'
Specification, and concludes that the payment request of Starai may fairly be
interpreted as corresponding to the claimed "one or more first
communications." Ans. 21.
We do not agree with the Examiner's finding. While the phrase "one
or more first communications" may not appear in haec verba in Appellants'
Specification, Appellants do disclose (1) communication including a request
to obtain user input to serve as authorization, (2) user contact information,
and (3) information representing a transaction, as independent claim 1
recites. See, e.g., Spec. ,r,r 5-7, 24-27. We further agree with Appellants that
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Starai's payment request does not correspond to the three communication
items recited in claim 1. App. Br. 27.
Because Starai does not disclose the claimed "one or more first
communications," the combination of Henderson, Starai, and Nascenzi fails
to disclose or suggest all of the elements of representative independent claim
1. We do not sustain the Examiner's§ 103(a) rejection of claims 1, 3-10,
21-25, 28, 30, and 31.
Claim 27 depends from independent claim 1. Claim 29 depends from
independent claim 21, which itself recites the same "one or more first
communications" contained in claim 1. We do not sustain the Examiner's
§ 103(a) rejection of claims 27 and 29 over Henderson, Starai, Nascenzi, and
Prather, then, for the same reasons expressed with respect to the rejection of
independent claim 1, supra.
CONCLUSIONS
1. The claimed invention is directed to a judicial exception.
2. The judicial exception is not integrated into a practical application.
3. The combination of Henderson, Starai, and Nascenzi does not
disclose or fairly suggest the three specific communications limitations
recited in the independent claims.
ORDER
The Examiner's decision to reject claims 1, 3-10, 21-25, and 27-31
under 35 U.S.C. § 101 is affirmed. The Examiner's decision to reject claims
1, 3-10, 21-25, and 27-31 under 35 U.S.C. § 103(a) is reversed.
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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(±).
AFFIRMED
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