Ex Parte Rampell et al

Patent Trial and Appeal Board

Nov 21, 2016

13444266 (P.T.A.B. Nov. 21, 2016)

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.
13/444,266 04/11/2012 Alastair Rampell TR-99001US15/090426-30434 9633
113349 7590 11/23/2016
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALASTAIR RAMPELL, ALEXANDER E. CAMPBELL, and
TERRY ANGELOS
Appeal 2014-0066401
Application 13/444,2662
Technology Center 3600
Before: PHILIP J. HOFFMANN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Nov. 8, 2013), Reply Brief (“Reply Br.,” filed May 13,
2014), and Specification (“Spec.,” filed Apr. 11, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Mar. 13, 2014) and Final Office Action
(“Final Act.,” mailed May 24, 2013).
2 According to the Appellants, the real party in interest is “TRIALPAY,
INC.” Appeal Br. 2.
Appeal 2014-006640
Application 13/444,266
STATEMENT OF THE CASE
The Appellants’ invention relates generally to payment for products or
services and specifically to “methods and systems that enable providing an
alternate form of payment for products or services.” Spec. 12.
Claims 1, 7, and 14 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and is reproduced below
(bracketing added for reference):
1. A method of electronic commerce wherein a user is
engaged with a primary offer of a vendor that includes a purchase
price, comprising:
[(a)] presenting, from a facilitator to a mobile device for
display, the primary offer of the vendor;
[(b)] presenting, from the facilitator to a mobile device for
display, alternate payment offers, wherein fulfillment of any one
of the alternate offers which were presented entitles the user to
receive the primary offer;
[(c)] establishing, via a server, a credit for the primary
offer to be paid by the facilitator to the vendor, the credit
including a fixed cost related to a retail cost and a variable
portion determined when one of the alternate offers is fulfilled;
[(d)] receiving, at the server, an indication of the user’s
fulfillment of one of the alternate offers; and
[(e)] paying the credit from the facilitator to the vendor.
Appeal Br. 20, Claims App.
REJECTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Final Act. 2.
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker (US 2011/0131089 Al, pub. June 2, 2011)
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Appeal 2014-006640
Application 13/444,266
(hereafter “Walker ’089”) and Walker (US 2002/0147663 Al, pub. Oct. 10.
2002) (hereafter “Walker ’663”). Id. at 3.
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.3
ANALYSIS
Indefiniteness - § 112
The Examiner finds claims 1—20 indefinite because the independent
claims 1, 7, and 14 recite a “wherein clause” regarding fulfilment of the
alternate offers (limitation (b) of claim 1) that makes it unclear whether or
not the Appellants are claiming fulfilment of the alternate offers “when there
are instances when the claimed subject matter is not being carried out.”
Ans. 7; see also Final Act. 2.
We agree with the Appellants that the claims are not indefinite and
that one of ordinary skill in the art would understand what is claimed when
the claim in read in light of the Specification. Appeal Br. 18. The
Examiner’s concerns regarding infringement and intended use (Final Act. 2)
are matters of claim breadth, not indefmiteness. “Breadth is not
indefmiteness.” In re Gardner, 427 F.2d 786, 788 (1970). As the
Appellants point out, “that acceptance of the primary offer is not expressly
required by the claim . . . does not make the claim unclear. It simply reflects
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/444,266
the fact that the primary offer provides necessary context for the alternate
offers and corresponding credits that are the subject of the claim.” Reply
Br. 7.
Thus, we are persuaded that the Examiner’s rejection of claims 1—20
under 35U.S.C. § 112, second paragraph, is in error, and we do not sustain
the rejection.
Obviousness - § 103(a)
Independent claims 1, 7, and 14 each recites limitations requiring that
a vendor credit including a fixed cost and a variable cost to be paid to the
vendor, similar to limitations (c) and (e) of claim 1. Appeal Br. 20-22,
Claims App. The Appellants contend that the Examiner’s rejection of the
independent claims is in error because, in relevant part, the Walker
references do not “teach, suggest, or otherwise render obvious” these
limitations. See Appeal Br. 14—16, Reply Br. 4—5.
The Examiner finds that Walker ‘089 discloses the method of claim 1
comprising presenting the primary offer, as recited in limitation (a),
presenting alternate payment offers, as recited in limitation (b), and paying
the credit, as recited in limitation (e). Final Act. 3^4. The Examiner finds
Walker ‘663 discloses establishing a credit, as recited in limitation (c) and
paying the credit, as recited in limitation (e). Id. at 5—6 (citing Walker ‘663
143). The Examiner finds it would have been obvious to add the
establishing and paying steps of Walker ‘663 to the method of Walker ‘089
“in order to allow merchants to exercise control over their profit margins by
making deals with 3rd party vendors, other merchants, and customers to
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Application 13/444,266
maximize their profits.” Id. at 6. The Examiner relies on these same
findings in rejecting claims 7 and 14. Id. at 12, 19.
Even assuming arguendo that the merchant subsidy of Walker ‘663
meets the claimed portion of the credit including a fixed cost related to a
retail cost (Ans. 4) and the third party subsidy of Walker ‘663 meets the
claims portion of the credit including a variable portion {id. at 5), the
Examiner has not adequately shown how the credit comprising the merchant
subsidy and third party subsidy is paid to the vendor. As the Appellants
point out, the credit of Walker ‘663 is “given by the merchant[ ]to a
customer, as readily distinguished from the claimed credit, which is paid by
a facilitator to a vendor.'” Reply Br. 5; see also Walker ‘663 142. To the
extent the Examiner relies on the combination of Walker ‘089 and Walker
‘663 for paying the vendor (see Ans. 3 (“A central server may be operable to
. . . distribute the appropriate funds”) (emphasis omitted)), the Examiner
does not explain how the central server of Walker ‘089, i.e., the facilitator,
would be modified to pay the credit to the vendor.
Thus, we are persuaded that the Examiner’s rejection of claims 1,7,
and 14 as unpatentable under 35 U.S.C. § 103(a) is in error, and we do not
sustain the rejection. For the same reasons, we also do not sustain the
rejection of dependent claims 2—6, 8—13, and 15—20.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We find the claims are ineligible for patent protection because they
are directed to an abstract idea.
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Application 13/444,266
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134
S. Ct. 2347 (2014) identified a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§101. We analyze the claims using the two part analysis: 1) determine
whether the claims are directed to an abstract idea; and 2) if an abstract idea
is present in the claims, determine whether any element, or combination of
elements, in the claims is sufficient to ensure the claims amount to
significantly more than the abstract idea itself to transform the claims into a
patent-eligible invention. See id. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to the concept of providing various offers and
compensating vendors in the area of electronic commerce. The providing of
offers and payment to vendors are fundamental building blocks of commerce
and, as such, are abstract ideas. Further, according to the Specification, the
invention “specifically relates to methods and systems that enable providing
an alternate form of payment for products or services.” Spec. 12. In that
context, providing alternate offers for customers to pay for a product is a
fundamental economic and conventional business practice. The Supreme
Court has held certain fundamental economic and conventional business
practices, like intermediated settlement {see Alice, 134 S. Ct. at 2356—57),
using advertisement as currency (see Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 713 (Fed.Cir.2014)), and determining a price {see Versata
Development Group, Inc. v. SAP America Inc., 793 F.3d 1306, 1333 (Fed.
Cir. 2015)), as being abstract ideas. The providing of alternate offers to pay
for products of claim 1 is similar to these abstract ideas, and, thus, claim 1 is
directed to an abstract idea.
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Application 13/444,266
Under the second step of the analysis, we find neither independent
claims 1, 7, and 14, nor dependent claims 2—6, 8—13, and 15—20 have any
additional elements that amount to significantly more to transform the
abstract idea of providing alternate offers. Independent claims 1 and 7 and
dependent claims 2—6 and 8—13 recite a method of presenting offers by a
facilitator, establishing a credit, receiving an indication of the user’s
fulfillment, and paying the vendor. Any general purpose computer available
at the time the application was filed would have been able to perform these
function. The Specification supports that view. See Spec. 1496.
Independent apparatus claim 14 and dependent claims 15—20 recite a
system that comprise a memory and processor, i.e., a general computer, to
perform the functions of the claims. See id. The introduction of a computer
to implement an abstract idea is not a patentable application of the abstract
idea. Alice, 134 S. Ct. at 2357—58. The computer implementation here is
purely conventional and performs basic functions. See id. at 2359-60. The
claims do not purport to improve the functioning of the computer itself, not
do they effect an improvement in any other technology or technical field.
See id. at 2359.
Thus, under the two-part analysis, we find that claim 1 covers claimed
subject matter that is judicially-excepted from patent eligibility under §101.
The other independent claims — method claim 7 and system claims 14
parallel claim 1 — similarly cover claimed subject matter that is judicially-
excepted from patent eligibility under §101. See id. at 2360. The dependent
claims describe various versions of providing alternate offers and
determining credit that do little to patentably transform the abstract idea.
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Therefore, we enter a new ground of rejection of claims 1—20 under
35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112,
second paragraph, is REVERSED.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103(a) is
REVERSED.
A NEW GROUND OF REJECTION has been entered for claims
1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
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 Appellant(s), 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:
(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 examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
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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).
REVERSED; 37 C.F.R. $ 41.50(b)
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