Ex Parte Pasupulati et al

Patent Trial and Appeal Board

Nov 20, 2018

13586763 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/586,763 08/15/2012 Srinivasa Rao Pasupulati
132906 7590 11/23/2018
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
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.
70481.690_82053 9998
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMISH PATEL, NICK GROLEAU, WILLIAM CHARLES
TAYLOR, and SALEEM QADIR
Appeal2017-008457
Applicationl3/586,763 1
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER L. MCKEOWN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-21. We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE. 2
1 According to Appellants, the real party in interest is Pay Pal, Inc. App. Br.
3.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed January
4, 2017; Reply Brief ("Reply Br.") filed May 24, 2017; Examiner's Answer
("Ans.") mailed March 23, 2017; Final Office Action ("Final Act.") mailed
August 4, 2016; and original Specification ("Spec.") filed August 15, 2016.
Appeal2017-008457
Application 13/586,763
STATEMENT OF THE CASE
Appellants' invention relates to "a method and system where
merchants are able to integrate financial transaction payment mechanism
code seamlessly into their own commercial websites." Spec. ,r 2.
Claims 1 and 10 are independent. Claim 1 illustrates the claimed
subject matter, as reproduced below:
1. A system, comprising:
a non-transitory memory; and
one or more hardware processors coupled to the non-transitory
memory and configured to read instructions from the non-
transitory memory to cause the system to perform operations
compnsmg:
rece1vmg a request to integrate an application
programming interface (API)-based mechanism with an online
website based at least on a first input received from a user
interface of a device;
accepting a plurality of credentials and parameters based
at least on a second input received from the user interface;
generating a plurality of code snippets and files based at
least on the plurality of credentials and parameters, wherein the
plurality of code snippets and files are configured to be tested in
a sandbox environment or integrated live with the online website;
transferring the plurality of code snippets and files to the
device for display of an indication of the transferred plurality of
code snippets and files on the user interface;
communicating integration instructions to the device
configured to integrate the plurality of code snippets and files
with the online website to offer the API-based mechanism to
visitors of the online website; and
communicating test instructions to the device configured
to test the plurality of code snippets and files in the sandbox
environment.
App. Br. 14 (Claims App'x).
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Application 13/586,763
REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea without significantly more.
Final Act. 2.
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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, 134 S. Ct. at
2355. The first step in the analysis 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 eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349
(Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis 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." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). 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
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Application 13/586,763
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (citing Mayo, 566 U.S. at 72-73). "'[W]ell-
understood, routine, [and] conventional activit[ies]' previously known to the
industry" are insufficient to transform an abstract idea into patent-eligible
subject matter. Id. (citing Mayo, 566 U.S. at 73).
In rejecting claims 1-21 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to an abstract idea of "payment
management in network" or alternatively, an abstract idea of "coding."
Final Act. 3--4; Ans. 2-3. The Examiner also determines "additional claim
elements do not provide meaningful limitations to transform the abstract
idea into a patent eligible application of the abstract idea" and, as such, do
not amount to significantly more than the abstract idea itself' because these
claims do not (i) "affect an improvement to another technology or technical
field;" (ii) "amount to an improvement to the functioning of a computer
itself;" and (iii) "move beyond a general link of an abstract idea to a
particular technological environment." Final Act. 3--4; Ans. 2-3. According
to the Examiner, the claims amount to "no more than coding for payment
management on a computer and sending data and code over a network."
Ans. 6.
Alice/Mayo--Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue "the
claims are not directed to an abstract idea" because "the Office Action
merely provides a conclusory statement" without reasoning and has
oversimplified the claims to either "payment management in a network" or
"coding," while ignoring "claim elements that provide clear evidence of the
claims being rooted in computer technology. App. Br. 7-8. According to
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Appellants, "[t]he present claims provide a particular solution to the
particular problem of integrating an API-based mechanism to a
merchant's website without the merchant having to understand the API
or having to know how to code in a language specific to the API." Id. at
8. Appellants also argue:
the claims are not directed to a general concept of coding, but
instead are specifically directed to "generating a plurality of code
snippets and files," "based at least on the plurality of credentials
and parameters, wherein the plurality of code snippets and files
are configured to be tested in a sandbox environment or
integrated live with the online website."
Reply Br. 3.
In response, the Examiner takes the position that "the instant claimed
invention is a computer technology solution to a financial/business
problem," i.e., "performance of an abstract business practice using a
conventional computer" and, as such, is "not directed to a specific
improvement to computer functionality." Ans. 7-8.
We are persuaded by Appellants' arguments only in part. First, we
note the Federal Circuit has interpreted Alice step 1 as asking "whether the
claims are directed to an improvement to computer functionality versus
being directed to an abstract idea," as recognized by Appellants. App. Br.
17 (quoting Enfzsh, 822 F.3d at 1335). The Federal Circuit has also
"emphasized that the key question is 'whether the focus of the claims is on
the specific asserted improvement in computer capabilities (i.e., the self-
referential table for a computer database [in Enfzsh])." Visual Memory, 867
F.3d at 1258 (citing Enfzsh, 822 F.3d at 1335-36).
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Application 13/586,763
The focus of Appellants' claims is neither "payment management in a
network" nor a general concept of "coding" as the Examiner has
characterized. Final Act. 3--4; Ans. 2-3. Instead, we agree with Appellants
that their claims provide a particular solution to the particular problem of
integrating an API-based mechanism to a merchant's website without
the merchant having to understand the API or having to know how to
code in a language specific to the API. App. Br. 8. For example,
independent claim 1 recites, inter alia:
generating a plurality of code snippets and files based at
least on the plurality of credentials and parameters, wherein the
plurality of code snippets and files are configured to be tested in
a sandbox environment or integrated live with the online website;
transferring the plurality of code snippets and files to the
device for display of an indication of the transferred plurality of
code snippets and files on the user interface;
communicating integration instructions to the device
configured to integrate the plurality of code snippets and files
with the online website to offer the API-based mechanism to
visitors of the online website; and
communicating test instructions to the device configured
to test the plurality of code snippets and files in the sandbox
environment.
App. Br. 14 (Claims App'x).
According to Appellant's Specification,
[0010] According to one embodiment, a method is provided to
integrate payment mechanisms and a web-site integration system
that offers online merchants a flexible, user friendly and
customizable way to integrate payment mechanisms into their
online commercial websites without having to understand the
detailed intricacies of an API or other computer code.
Spec. ,r 10.
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As recognized by Appellants, the claims
are specifically directed to "generating a plurality of code
snippets and files," "based at least on the plurality of credentials
and parameters, wherein the plurality of code snippets and files
are configured to be tested in a sandbox environment or
integrated live with the online website."
Reply Br. 3.
We acknowledge, however, Appellants' claims, like the claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
"do not recite a mathematical algorithm ... [ n ]or do they recite a
fundamental economic or longstanding commercial practice" identified as an
"abstract idea" by the Supreme Court in its trilogy of Benson, 3 Flook, 4 and
Diehr, 5 and its recent duet of Bilski6 and Alice. DDR, 773 F.3d at 1257; see
also App. Br. 8. Nor do these claims recite "payment management in a
network" or "coding" as the Examiner has characterized. Final Act. 3--4;
Ans. 2-3. Because "identifying the precise nature of the abstract idea [ of
Appellants' claims] is not as straightforward," we proceed to analyze the
claims under Alice step 2.
Alice/Mayo--Step 2 (Inventive Concept)
Turning now to the second step of the Alice inquiry, Appellants argue
the claims contains an "inventive concept," and like the claims in Bascom
(Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016),
3 See Gottschalkv. Benson, 409 U.S. 63 (1972).
4 See Parker v. Flook, 437 U.S. 584 (1978).
5 SeeDiamondv. Diehr, 450U.S. 175 (1981).
6 See Bilski v. Kappas, 561 U.S. 593 (2010).
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the amended claim 1 similarly recites a technology-based
solution (not an abstract-idea based solution implemented with
generic technical components in a conventional way) to specific
improvements in computer technology, e.g., directed to
automatically generating code snippets and files that can be
automatically integrated with an online website so that an API
based mechanism can be used with the online website (see
Specification at [0013], [0014], [0063], and [0100] and
corresponding Figures) ...
the combination of elements ... provides a practical
application of "coding" that generates code snippets based on
credentials and parameters input by a user and integrates the
code snippets with an online website.
Reply Br. 7-9. According to Appellants,
the claims, taken as an ordered combination, solve the problem of
integrating an AP! based mechanism to a merchant's website without
the merchant having to understand the AP! or having to know how to
code in a language specific to the AP!. Appellant thus respectfully
submits that, similar to the analysis of Bascom, 11 [a] s is the case here,
an inventive concept can be found in the non-conventional and non-
generic arrangement of known, conventional pieces. 11 Bascom at 14
and 15.
Id. at 9 ( emphasis added).
We are persuaded by Appellants' arguments that their claims contain
an "inventive conceptive" because (1) Appellants' claims, like the claims in
DDR Holdings, provide a technical solution to a technical problem unique to
the Internet, i.e., generating code snippets and files that can be automatically
integrated with an online website so that an API-based mechanism can be
used with the online website; and (2) the combination of Appellants' claim
elements, like the claims in Bascom, provides a practical application of
integrating an API based mechanism to a merchant's website without the
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merchant having to understand the API or having to know how to code in a
language specific to the APL In particular, we find Appellants' integration
of the code snippets and files with the online website to offer the API-based
mechanism to visitors of the online website transforms the abstract idea (i.e.,
"coding" or "payment management in network") into "a particular, practical
application of that abstract idea," similar to the claims in Bascom.
For these reasons, we find Appellants' claims contain an "inventive
concept" and recite something "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 134 S. Ct. at 2357.
Accordingly, we do not sustain the Examiner's rejection of claims 1-21
under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1-21 under 35 U.S.C. § 101.
DECISION
As such, we reverse the Examiner's rejection of claims 1-21 under
35 U.S.C. § 101.
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).
REVERSED
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