Ex Parte Ringewald et al

Patent Trial and Appeal BoardAug 21, 2018

13489323 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/489,323 17169 7590 Stephen M. De Klerk MatterLight IP 2033 Gateway Place 5th Floor San Jose, CA 95110 06/05/2012 08/23/2018 FIRST NAMED INVENTOR Erich L. Ringewald 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. BOKU-P073 2196 EXAMINER POUNCIL, DARNELL A ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): ariana@matterlightip.com s tephen @matterlightip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERICH L. RINGEW ALD and AMIT GAUR Appeal2017-002417 Application 13/489,323 Technology Center 3600 Before THU A. DANG, CATHERINE SHIANG, and STEVEN M. AMUNDSON, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. A. INVENTION According to Appellants, the invention is directed to "a computer system for managing electronic transactions." Spec. ,r 5. 1 According to Appellants, the real party in interest is Boku, Inc. Br. 3. Appeal2017-002417 Application 13/489,323 B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A computer system for managing electronic transactions, compnsmg: a server computer system including: a processor; a computer-readable medium connected to the processor; a network interface device connected to the processor; and a set of instructions on the computer-readable medium, the set of instructions being executable by the processor and including: a data store; a consumer account setup module that receives a plurality of first card numbers over the network interface device and stores each respective first card number in the data store in association with a respective consumer account; a communication and routing module that receives a charge advisory over the network interface device, the charge advisory including a charge advisory card number and identifies a selected one of the consumer accounts by associating one of the first card numbers with the charge advisory card number; and a transaction processing system that processes the charge advisory based on an account detail of the selected consumer account. C. REJECTIONS 1) Claims 1-20 stand rejected under 35 U.S.C. Â§ 101. 2) Claims 1-20 stand rejected under 35 U.S.C. Â§ I03(a) over Ramachandran et al. (US 2013/0134215 Al; published May 30, 2013) and Davis et al. (US 6,282,522 Bl; issued Aug. 28, 2001). 2 Appeal2017-002417 Application 13/489,323 II. ISSUES The dispositive issues before us are whether the Examiner errs in: 1. Concluding that the claimed computer system comprising a "consumer account setup module" that "receives" data and "stores" data, a "communication and routing module" that "receives" data and "identifies" data; and "a transaction processing system" that "processes" data ( claim 1) is directed to patent-ineligible subject matter. 2. Combining the teachings of Ramachandran and Davis in rejecting the claims under 35 U.S.C. Â§ 103(a). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Appellants 'Invention 1. Appellants recognize that electronic transactions can be conducted in a similar way to paying at a store with a point-of-sale instrument such as a bank card or credit card. Spec. ,r 3--4. Appellants disclose using a communication and routing module that receives a charge advisory, including a charge advisory card number, and identifies a selected one of the consumer accounts by associating one of the first card numbers with the charge advisory card number. Id. ,r 4. To that end, a customer account setup module receives a plurality of first card numbers, identifies a selected one of the consumer accounts by associating one of the first card numbers with the charge advisory card number and stores each respective first card number in association with a respective consumer account. Id. ,r 4. 3 Appeal2017-002417 Application 13/489,323 Ramachandran 2. Ramachandran discloses an "automated transaction machine" (Ramachandran, ,r 83) that can provide cash dispensing. Id., Abst. In other embodiments, the "automated transaction machine" can also order and pay for purchases by crediting a merchant's account for the purchase. Id. ,r 225. The machine performs "a cash dispense transaction ... on a consumer account, responsive at least in part to computer-determined correspondence between" the consumer account and "consumer data usable to identify a consumer account." Id., claim 1. A card reader is used to provide the consumer data. Id., claim 1, Abst. Davis 3. Davis discloses a payment system for using a smart card to pay for goods and services purchased over the internet. Davis, Abst. Accordingly, a cardholder may "use the card at a service payment terminal" to purchase goods and/or services, where the terminal "debits the value from the card, thus creating a service payment." Id. at 5: 35-38. IV. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Arguments which Appellants could have made, but did not make in the Brief are deemed to be waived. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). On the record before us, we are unpersuaded the Examiner has erred in concluding that claims 1-20 are ineligible under 35 U.S.C. Â§ 101 and unpatentable under 35 U.S.C. Â§ 103(a). We adopt as our own the findings and reasons set forth in the rejections from which the appeal is taken and in 4 Appeal2017-002417 Application 13/489,323 the Examiner's Answer, and provide the following for highlighting and emphasis. Re} ection Under 3 5 US. C. Â§ 101 Appellants argue the Examiner erred in concluding the claims constitute patent-ineligible subject matter. Br. 5-8. 2 In particular, with respect to claim 1, Appellants concede that the claim is directed to "how to link a card to an account for purposes of processing a charge." Id. at 6-7. According to Appellants, however, claim 1 "is substantially more than the abstract idea" (id. at 7), since the technical problem "is not simply the computerization of an abstract idea" (id.) and includes, for example, "a consumer account setup module that receives a plurality of first card numbers over the network interface device and stores each respective first card number in the data store in association with a respective consumer account." Id. at 8 ( quoting claim 1). Appellants contend claim 1 is analogous with DDR Holdings because the technical solution "overrides the routine and conventional sequence of events." Id. at 6-7 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). Based on the record before us, we are not persuaded of Examiner error. Under 35 U.S.C. Â§ 101, the Supreme Court has long interpreted the statute to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, 2 Appellants do not provide substantive arguments for claims 2-20 separate from those for claims 1 and 11 from which they depend (Br. 8), and thus we choose claim 1 as representative of the group. 37 C.F.R. Â§ 4I.37(c)(l)(iv). 5 Appeal2017-002417 Application 13/489,323 in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78- 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 is to "determine whether the claims at issue are directed to one of those patent- ineligible concepts," such as an abstract idea, as the Examiner concludes in this case. If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "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 (quoting Mayo, 566 U.S. at 79, 78). In the present application, the representative claim 1 merely recites a "consumer account setup module" that "receives" data and "stores" data, "a communication and routing module" that "receives" data and "identifies" data; and "a transaction processing system" that "processes" data. Claim 1. That is, claim 1 merely recites receiving, storing, identifying, and processing data. In this regard, the claims are similar to the claims that our reviewing courts have found patent ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting information and "analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category"), Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) (using organizational 6 Appeal2017-002417 Application 13/489,323 and product group hierarchies to determine a price), and Parker v. Flook, 437 U.S. 584 (1978) (mathematical algorithm used for adjusting an alarm limit). A person would also be capable of performing the claimed steps or functions as mental steps, or with the aid of pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011 ). That is, claim 1 involves nothing more than collecting and analyzing data for output, without any particular inventive technology-an abstract idea. See Elec. Power Grp., 830 F.3d at 1354. We further refer to Content Extraction, where the Federal Circuit provided additional guidance on the issue of patent-eligible subject matter by holding that claims to collecting data, recognizing certain data within the collected data set, and storing that recognized data in memory were directed to an abstract idea and therefore ineligible under Â§ 101. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014). On this record, we conclude the claims include an abstract idea under step one of Alice. As to Alice step two, "the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer." Alice, 134 S. Ct. at 2359. Berkheimer informs the inquiry into whether an additional element represents well-understood, routine, or conventional activity. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369--70 (Fed. Cir. 2018). Here, we find that each claim as a whole does not amount to significantly more than the abstract idea itself. The claim limitations are all part of the process of receiving, storing, identifying, and processing data, and simply elaborate on the abstract idea. 7 Appeal2017-002417 Application 13/489,323 Although claim 1 recites a "server computer system" including "a processor," "a network interface device," and "a computer-readable medium" having stored therein a "set of instructions" including a "data store," "modules," and "system" to perform data receiving and processing functions, we agree with the Examiner that claim 1 does nothing more beyond generally linking an abstract idea to a technological environment. 3 2nd Ans. 4. Similarly, we agree with the Examiner that claim 11, reciting a "computer-based" method comprising the steps of receiving, storing, identifying, and processing various data "with a processor," also merely links an abstract idea to a technological environment. Id. As set forth in Alice, the introduction of a "processor of a computer system" into the claims to implement an abstract idea is not a patentable application of the abstract idea. Alice, 134 S. Ct. at 2357-58. Like Alice, the computer implementation here is purely conventional and performs basic computer functions, e.g., processing data. See id. at 2359---60. That is, the claims do not effect an improvement to another technology or technical field, and do not amount to an improvement to the functioning of a computer itself. Id. Instead, we find a person would also be capable of performing the claimed steps or functions as mental steps, even though the steps could be performed by a computer. See CyberSource, 654 F.3d at 1375 ("That purely 3 The patent-eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer, 881 F.3d at 1368. 8 Appeal2017-002417 Application 13/489,323 mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson."). We agree with Examiner's finding that the claims do not achieve improvements beyond a general link of an abstract idea to a technological environment (2nd Ans. 3--4) and that claims 1 and 11 do no more than merely recite the use of "a processor," "a network interface device," and/or "a computer-readable medium" for their ordinary functions of performing analysis and output of information, and therefore are not patent eligible. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co., 687 F.3d 1266, 1278-79 (Fed. Cir. 2012) (finding a computer used for its most basic function, the performance of repetitive calculations, does not impose a meaningful claim limitation). In particular, we do not find the additional nominal recitations of conventional computer hardware elements, i.e., "a processor," "a network interface device," or "a computer-readable medium" transform the nature of the claims into a patent-eligible application. For at least the aforementioned reasons, on this record, we sustain the patent-ineligible subject matter rejection under 35 U.S.C. Â§ 101 of claims 1 and 11, and the claims depending respectively therefrom. See 3 7 C.F .R. Â§ 4I.37(c)(l)(iv). Rejection Under Pre-AJA 35 US.C. Â§ 103(a) As for claim 1, while Appellants acknowledge that the Examiner relies on Ramachandran for disclosing and suggesting "all the elements of the claims except for the transaction processing system that processes the charge advisory," and relies on Davis to disclose and suggest this missing limitation, Appellants contend "[ o ]ne of ordinary skill in the art would not 9 Appeal2017-002417 Application 13/489,323 combine Ramachandran and Davis as suggested by the Examiner." Br. 9. According to Appellants, while Davis is similar to the claimed invention, which relates to payments using a smartcard (id. at 10), Ramachandran "discloses a cash dispensing apparatus" and, thus, is not relevant to the claimed invention. Id. at 9. Appellants contend the "Examiner has not established that one of ordinary skill in the art would look to Ramachandran for teaching transaction between users and merchants in commerce." Id. at 10. We have considered all of Appellants' arguments and evidence presented. However, we disagree with Appellants' contentions that one of ordinary skill in the art would not have combined the teachings of Ramachandran and Davis. Id. In particular, we are unpersuaded by Appellants' argument that Ramachandran is "not relevant" to the claimed invention. Id. The nonanalogous-art test considers the threshold question whether a prior-art reference is "too remote to be treated as prior art." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). A reference is analogous art to the claimed invention if: ( 1) the reference is from the same field of endeavor as the claimed invention ( even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor ( even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As the Examiner finds, to which Appellants do not contest, Ramachandran discloses paying for purchases by crediting a merchant's account (FF 2; 2nd Ans. 4--5), utilizing a computer-determined 10 Appeal2017-002417 Application 13/489,323 correspondence between the consumer account and consumer data (FF 2), similar to Appellants' claimed invention for managing electronic transactions by identifying consumer accounts ( Claim 1; 2nd Ans. 4 ). Moreover, the invention is also similar to the disclosure in Davis of using customer card data at a terminal to purchase goods over the internet, where the terminal debits the value from the card to create a service payment. FF 3; 2nd Ans. 4--5. Thus, we are unpersuaded that Ramachandran or Davis is not from the same field of endeavor as the claimed invention (managing electronic transactions) or is not reasonably pertinent to the problem faced by the inventor (using consumer data to identify consumer accounts). See Bigio, 381 F.3d at 1325. That is, we are unpersuaded that Ramachandran or Davis is "too remote to be treated as prior art." See Clay, 966 F.2d at 658 (quoting Sovish, 769 F.2d at 741). Furthermore, we agree with the Examiner's finding that it would have been obvious to use the specific payment system in Davis with the charge advisory account of Ramachandran, yielding a predictable result. 2nd Ans. 4--5, Final Rej. 6. The Supreme Court has clearly stated the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, Appellants have presented no evidence that utilizing the payment processing system that processes transactions based on account detail of the selected consumer account, such as in Davis, with the charge advisory accounts of Ramachandran was "uniquely challenging or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). 11 Appeal2017-002417 Application 13/489,323 Instead, as the Examiner concludes, one of ordinary skill in the art, upon reading Davis, would have found it obvious to combine Ramachandran's transaction processing system that processes the charge advisory with Davis's teaching and suggestion of processing transactions based on an account detail of the selected consumer account (2nd Ans. 4, Final Rej. 6). Thus, we find no error in the Examiner's reliance on Davis in combination with Ramachandran to teach or at least suggest "a transaction processing system that processes the charge advisory based on an account detail of the selected consumer account." Claim 1. On this record, we affirm the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) over Ramachandran and Davis. With respect to claims 2-10 depending from claim 1, Appellants do not provide substantive arguments but rather merely repeat the arguments above with respect to claim 1. Br. 10. As independent claim 11 and claims 12-20 depending therefrom, Appellants merely contend these claims are allowable for the same reason as claim 1. Id. For at least the reasons discussed above with respect to claim 1, we also affirm the rejection of claim 2-20 (Br. 10) under 35 U.S.C. Â§ 103(a) over Ramachandran and Davis. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). V. CONCLUSION AND DECISION The Examiner's rejections of claims 1-20 under 35 U.S.C. Â§ 101 and under 35 U.S.C. Â§ 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12