Ex Parte Padam et al

Patent Trial and Appeal Board

Oct 31, 2016

12911427 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/911,427 10/25/2010
7590 10/31/2016
AMARJIT S. P ADAM
67 S. BEDFORD STREET
SUITE400W
BURLINGTON, MA 01803
FIRST NAMED INVENTOR
Amarjit S. Padam
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.
CCJ-00101 1146
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
MAILDATE DELIVERY MODE
10/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMARJIT S. P ADAM and
GAURA V MALLIK
Appeal2014-009239
Application 12/911,427
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-8, 10-18, and 202 which are all the claims
pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as "Payment Transaction
Services, Inc. (DBA CaptureCode )," (Br. 1 ).
2 Appellants request reversal of the rejection of claims 1-8 and 10, and do
not contest the rejections of claims 11-18 and 20 (Br. 10).
Appeal2014-009239
Application 12/911,427
STATEMENT OF THE DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
CLAIMED INVENTION
The claimed invention relates to "transaction processing methods and
systems that allow merchants to more effectively and efficiently provide
offerings to consumers such as marketing promotions (e.g., coupons),
loyalty and reward programs, and stored value card programs (e.g., prepaid
gift cards and store credit)" (Spec. para. 2). Claims 1 and 11 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the subject matter on appeal (Br. 11, Claims App.).
1. A computer-implemented transaction processing method
allowing consumers to access offerings across a plurality of
merchants using a single unique identification for each
consumer, the method comprising:
(a) storing information on the consumers in a database including
a unique identification associated with each of the consumers;
(b) storing information on one or more merchant offerings from
each of the plurality of merchants in a database; and
( c) for each of said plurality of merchants:
(i) receiving from a merchant over a communications
network information on a proposed transaction with a
consumer involving a merchant offering, said information
including an identification of the merchant and the
merchant offering, and the unique identification of the
consumer;
(ii) verifying that the unique identification of the consumer
is valid and that the consumer is eligible to participate in
the merchant offering, and transmitting a message to the
merchant over the communications network indicating
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Appeal2014-009239
Application 12/911,427
that the unique identification of the consumer is valid and
that the consumer is eligible to participate in the merchant
offering such that the merchant can proceed with applying
the merchant offering to the transaction; and
(iii) rece1vmg settlement information over the
communications network from the merchant confirming
that the merchant offering was applied to the transaction
with the consumer, and storing the settlement information
in a database.
REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Iannacci
Wik en
US 2002/0062249 Al
US 2007 /0094080 Al
May 23, 2002
Apr. 26, 2007
1. Claims 1-8 and 10 stand rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
2. Claims 11-18 and 20 stand rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim
the subject matter which Appellants regard as the invention. 3
3. Claims 11-18 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Iannacci and Wiken.4
3 Although the heading of the rejection includes claims 1-8 and 10, the
Examiner did not provide any explanation as to why these claims are
indefinite (Final Act. 6-8). Accordingly, we consider the rejection as
applying only to claims 11-18 and 20.
4 The Examiner withdrew the rejection of claims 1-8 and 10 under 35
U.S.C. § 103(a) as being unpatentable over Iannacci and Wiken in the
Answer (Ans. 2-3).
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Appeal2014-009239
Application 12/911,427
ISSUES
Did the Examiner err in rejecting claims 1-8 and 10 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement?
Did the Examiner err in rejecting claims 11-18 and 20 under
35 U.S.C. § 112, second paragraph, for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Did the Examiner err in rejecting claims 11-18 and 20 under
35 U.S.C. § 103(a) as being unpatentable over Iannacci and Wiken?
ANALYSIS
The rejection of claims 1--8 and 10 under 35 U.S. C. § 112, first paragraph,
as failing to comply with the written description requirement.
The Examiner finds that said claimed subject matter is not adequately
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor at the time the application was
filed had possession of it (Ans. 3-10). According to the Examiner, although
the claimed "verifying ... " step was present in claim 1 as originally filed,
this step "represents a genus of software algorithms" (Ans. 4) (citing Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010)). The
Examiner also indicates that the rejection should be maintained for the
additional reason that the Appellants have not enabled the full scope of the
claim (Ans. 8-9).
The Appellants dispute this rejection on the grounds that the "simple
step of verifying ... is conventional and well within the realm of what one
skilled in the art would understand and could implement" (Br. 5).
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Appeal2014-009239
Application 12/911,427
Although we commend the Examiner for providing a detailed
discussion of the issue, we will not sustain the rejection.
"[T]he level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology." Ariad at
13 51. In this case, although the claimed "verifying" step at issue here is
described in purely functional terms, the Examiner and the Appellants are in
agreement that the "verifying" step is conventional. 5 The Examiner has
provided no evidence that the "verifying" step yields anything unexpected,
or that undue experimentation would be required to implement such a
function. Cf, Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549 (Fed.
Cir. 1997) (functional description of software satisfied best mode
requirement because "writing code for such software is within the skill of
the art, not requiring undue experimentation, once its functions have been
disclosed."). Regarding enablement, the Examiner has not provided any
analysis of the factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988). Accordingly, the rejection is not sustained.
The rejection of claims 11-18 and 20 under 35 U.S. C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
Appellants have not contested the rejection under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and distinctly claim
5 The Examiner found every element of the claimed "verifying" step in
Iannacci (Final Act. 9).
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Appeal2014-009239
Application 12/911,427
the subject matter which Appellants regard as the invention (Br. 4 ). Thus,
we summarily sustain the rejection.
The rejection of claims 11-18 and 20 under 35U.S.C.§103(a) as being
unpatentable over Iannacci and Wiken.
Appellants have not contested the rejection of claims 11-18 and 20
under 35 U.S.C. § 103(a) as being unpatentable over Iannacci and Wiken
(Br. 10). Thus, we summarily sustain the rejection of claims 11-18 and 20.
NEW GROUND OF REJECTION
Claims 1-8, 10-18, and 20 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. According
to Alice step one, "[w]e must first determine whether the claims at issue are
directed to a patent-ineligible concept," such as an abstract idea. Alice, 134
S. Ct. at 2355.
Taking the independent claims 1 and 11 as representative of the
claims on appeal, the claimed subject matter is directed to the abstract idea
of confirming a consumer's eligibility for a merchant's promotional offer.
As such, the claims are directed to a "longstanding commercial practice" and
a "method of organizing human activity." See Alice at 2356-57.
Step two of the Alice framework is "a 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.
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Application 12/911,427
In that regard, each of the claims lacks meaningful limitations on the
abstract idea. Claim 1 is a "computer-implemented transaction processing
method" including the steps of (a) storing a unique identification for a
consumer in a database, (b) storing a merchant offering in a database, and ( c)
for each of a plurality of merchants: (i) receiving a proposed transaction
(e.g., from a POS system), (ii) verifying the consumer's eligibility for the
offering, and (iii) receiving settlement information and storing it in a
database. Claim 11 is directed to a system including a server in
communication with a plurality of client devices operated by a plurality of
merchants and a database, with the system implementing essentially
identical steps as the method of claim 1. The claims simply tell a
practitioner that a merchant device (e.g., POS system) can connect to a
server to confirm the consumer's eligibility for a promotional offer.
Although the claims recite generic computer elements such as "client
devices," "a server," and "a database," "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice 134 S. Ct. at 2358. Cf, Inventor Holdings, LLC
v. Bed Bath & Beyond Inc., 123 F.Supp.3d 557, 560 (D. Del. 2015), affd,
643 F. App'x 1014 (Fed. Cir. 2016) (claims directed to the use of a POS
terminal to transmit transaction-related information and to process payments
held invalid under 35 U.S.C. § 101).
Therefore, we enter a new ground of rejection of claims 1-8, 10-18,
and 20 under 35 U.S.C. § 101.
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Application 12/911,427
CONCLUSIONS
The rejection of claims 1-8 and 10 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
not sustained.
The rejection of claims 11-18 and 20 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention is sustained.
The rejection of claims 11-18 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Iannacci and Wiken is sustained.
Claims 1-8, 10-18, and 20 are newly rejected under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-8 and 10 is reversed.
The decision of the Examiner to reject claims 11-18 and 20 is
affirmed.
Claims 1-8, 10-18, and 20 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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Application 12/911,427
( 1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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