Ex Parte Saito et al

Patent Trial and Appeal Board

Oct 13, 2017

12354048 (P.T.A.B. Oct. 13, 2017)

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.
12/354,048 01/15/2009 Akira Saito JP920070199US1_8150_0284 4076
52021 7590 10/17/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
10/17/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKIRA SAITO,
TAKEYUKI SHIMURA,
SHIGEKI TAKEUCHI,
DAISUKE TOMODA,
HAYATO UENOHARA,
and SATOSHI YOKOYAMA
Appeal 2016-001597
Application 12/354,048
Technology Center 3600
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
1 Our decision will make reference to the Appellants’ Appeal Brief (“Appeal
Br.,” filed March 26, 2015) and Reply Brief (“Reply Br.,” filed November
20, 2015), and the Examiner’s Answer (“Ans.,” mailed September 21,
2015), and Final Action (“Final Act.,” mailed October 29, 2014).
Appeal 2016-001597
Application 12/354,048
Akira Saito, Takeyuki Shimura, Shigeki Takeuchi, Daisuke Tomoda,
Hayato Uenohara, and Satoshi Yokoyama (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1—20, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented “an electronic payment system that executes
payment processing using a merchant terminal and e-payment (electronic
payment) account information stored in a user’s mobile device, such as a
smartphone, a personal digital assistant or a converged form of such
devices.” Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A mobile apparatus for use in an electronic payment system
comprising a merchant terminal, said mobile apparatus
comprising:
[1] a memory component for storing a list of electronic
payment accounts that might be used in completing an
electronic payment transaction;
[2] a transmitting unit for sending said list to the merchant
terminal;
[3] a receiving unit for receiving account-related information
back from the merchant terminal, said account-related
information comprising account identifiers for each electronic
payment account on the list and additional information relating
to one or more of the electronic payment accounts on the list;
[4] a payment method selection component for using account-
related information received from the merchant terminal to
generate a set of payment method candidates, each payment
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method including the use of at least one of the electronic
payment accounts;
and
[5] a user input component for receiving a user’s selection of
one of the payment method candidates in the generated set.
The Examiner relies upon the following prior art:
Grunbok US 6,305,603 B1 Oct. 23, 2001
Claims 1—10 and 16—18 stand rejected under 35 U.S.C. § 101 as directed
to non—statutory subject matter.
Claims 1—20 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Grunbok.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice on gathering data and making a
selection for a payment method.
The issues of anticipation turn primarily on the degree of patentable
weight afforded limitations not performed by the recited structure in
structural claims and whether the steps recited in the method claims are
described by Grunbok.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Grunbok
01. Grunbok is directed to convenient electronic financial
transactions and financial account(s) access with immediate
account updates via a personal digital assistant (PDA). Grunbok
1:8-12.
02. A “personal digital assistant” (hereinafter “PDA”) is defined as
a hand held microcomputer designed for individual use and
includes at least a local central processing unit (CPU), a touch
screen (or other equivalent user interface such as a keypad, a
screen with mouse, voice recognition system, or pen-based input,
etc.), memory for storing information, and input/output capability
for reading and writing information. The I/O capability may be to
various cards such as smart cards, magnetic cards, or optical cards,
etc. The PDA may also include a microphone, a modem, a serial
port and/or a parallel port so as to provide direct communication
capability with peripheral devices, e.g., point of sale (POS) and
automated teller machine (ATM) terminals, and capability for
transmitting or receiving information through wireless
communications such as radio frequency (RF) and infrared (IR)
communications. Examples of such devices are an International
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Business Machine (IBM) Workpad® or an Apple Newton®.
Grunbok 3:8—25.
03. In step S2, the PDA user chooses the financial account or
accounts and amount to debit from each to cover the amount of
the financial transaction. The financial account(s) can be at a
single financial institution or a number of financial institutions.
The selections would be presented on the output device of PDA
and selectable by the user as desired. For instance, PDA may
include a touch screen, a screen with mouse, a pen-based system,
a keypad, or voice recognition system, etc., for item selection by
the user. Input of amounts to be debited to each financial account
could be provided with the same selection mechanisms. Grunbok
4:14—24.
ANALYSIS
Claims 1—5, 11—16, 19, and 20 are structural claims directed to either an
apparatus or software for directing an apparatus. Claims 6—10, 17, and 18
are method claims.
As to the structural claims, such claims must be distinguished from the
prior art in terms of structure rather than function, see, e.g., In re Schreiber,
128 F.3d 1473, 1477—78 (Fed. Cir. 1997). In order to satisfy the functional
limitations in an apparatus claim, however, the prior art apparatus as
disclosed must be capable of performing the claimed function. Id. at 1478.
When the functional language is associated with programming or some other
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structure required to perform the function, that programming or structure
must be present in order to meet the claim limitation. Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)). In some circumstances generic structural disclosures
may be sufficient to meet the functional requirements, see Ergo Licensing,
LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing
Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376—77 (Fed. Cir.
2010)).
No patentable weight is accorded the structure modifiers “transmitting,”
“receiving,” “user input,” “payment selection component,” and “merchant”
because they are, at best, descriptions of the use to which the parts are put
and do not limit the structure of the parts.
Also, a structural invention is not distinguished by the work product it
operates upon, such as data in a computer. “[Expressions relating the
apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim.” Ex parte
Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “inclusion of
material or article worked upon by a structure being claimed does not impart
patentability to the claims.” In re Otto, 312 F.2d 937, 940 (CCPA 1963).
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Claims 1—10 and 16—18 rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter
The Examiner splits the analysis between claims 1—5 and 16—18 and
claims 6—10. The Examiner finds that the structural claims recite no more
than generic computer parts.2 In the claims as drafted, generic computer
parts are sufficient to meet the functional requirements. Every general
purpose computer has memory, is capable of transmitting and receiving data,
accepting user input, and accepting selections. The operating system
provides the requisite services for all of these relatively primitive functions.
The structural claims do not recite any processing of the data received,
transmitted, and accepted that requires any particular programming. Any
generic computer is capable of transmitting and receiving, accepting user
input, and accepting selections of the data as recited as well as any other
data. A claim directed to a generic computer is the degenerate result of any
analysis under Alice. Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347,
2355 (2014).
We are not persuaded by Appellants’ argument that the “memory
component,” “transmitting unit,” “receiving unit,” and “user input
component” of claim 1 are all machine components. Appeal Br. 14—15.
They are all components of a generic computer. Claiming generic processes
in a generic computer, without more, is insufficient to show more than an
2 The Examiner erroneously includes method claims 17 and 18 in the list of
structural claims.
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abstraction. Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2360
(2014).
As to method claims 6—10, the Examiner has not articulated why the
processes performed on the particular data elements as recited should be
given no weight. This applies to claims 17 and 18 as well.
Claims 1—20 rejected under 35 U.S.C. § 102(b) as anticipated by Grunbok
As to the structural claims, because the structures claimed are no more
than generic computer parts as we find supra, and the computer Grunbok
describes is capable of performing these recited low level functions, we find
Gunbok anticipates the claims.
As to the method claims, the Examiner did not separately analyze these,
but instead relied on the structurally related findings as to claim 1.
We are persuaded by Appellants’ argument that the method claims do
not recite account identifiers for each electronic payment account on the list
and additional information relating to one or more of the electronic payment
accounts on the list in claims 6—10 or the equivalent limitation in claims 17
and 18. We express no opinion as to whether such data elements are
deserving of patentable weight because this issue is not raised.3
3 If prosecution continues, the Examiner may consider whether patentable
weight should be afforded based on King Pharm., Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010).
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CONCLUSIONS OF LAW
The rejection of claims 1—5 and 16 under 35 U.S.C. § 101 as directed to
non—statutory subject matter is proper.
The rejection of claims 6—10, 17, and 18 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is improper.
The rejection of claims 1—5, 11—16, 19, and 20 under 35 U.S.C. § 102(b)
as anticipated by Grunbok is proper.
The rejection of claims 6—10, 17, and 18 under 35 U.S.C. § 102(b) as
anticipated by Grunbok is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1—20 are rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter. This is an alternative basis that
applies to the method claims as well as the structural claims.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[wjhat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
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eligible application. [The Court] described step two of this
analysis as 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to method claim 6 does not recite what it is directed to, but
the steps in claim 6 result in selecting a payment method for processing.
The Specification at paragraph 1 recites that the invention relates to payment
processing. Thus, all this evidence shows that claim 6 is directed to payment
processing.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of payment
processing is a fundamental business practice long prevalent in our system
of commerce. The use of payment processing is also a building block of any
market economy. Thus, payment processing, like hedging, is an “abstract
idea” beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
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As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of payment
processing at issue here. Both are squarely within the realm of “abstract
ideas” as the Court has used that term. See Alice Corp. Pty. Lid. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d at 611; FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016). Claim 1, unlike
the claims found non-abstract in prior cases, uses generic computer
technology to perform data collection and transmission, analysis, and
selection and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 is directed to the abstract idea of receiving, transmitting,
analyzing, and selecting data.
The remaining claims merely describe parameters used in the process.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
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The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to store, receive, transmit and select data amounts to electronic
data query and retrieval—one of the most basic functions of a computer. All
of these computer functions are well-understood, routine, conventional
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activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of payment processing as performed by a generic
computer. To be sure, the claims recite doing so by advising one to recall a
list of available payment methods and send the list with the selection and
related parameters identified. But this is no more than abstract conceptual
advice to bring up a memory jogger for such selection and the generic
computer processes necessary to retrieve and transmit the data and selection,
and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 18 pages of specification only
spell out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of selecting a payment method under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of payment
processing using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. at 2360.
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Finally, we note the referral to several structures in the method claims.
The preamble to claim 6 refers to a mobile apparatus having a memory
component, a transmitting unit, a receiving unit. Of course such units are
required inherent parts of any mobile computer capable of network
connection. The elements in the body of claim 6 refer to a merchant
terminal. This is yet another generic computing device. As in Intellectual
Ventures /, the combination of a mobile and merchant computer does little
more than provide a generic technological environment to allow users to
access information, which is insufficient to transform an otherwise abstract
concept.
IV argues that the claimed mobile interface is a particular
software-driven machine that performs specific operations to
solve a problem unique to the field of computer networks. Yet
the claimed invention does not recite any particular unique
delivery of information through this mobile interface. Rather, it
merely recites retrieving the information through the mobile
interface. Nor do the claims describe how the mobile interface
communicates with other devices or any attributes of the mobile
interface, aside from its broadly recited function. Thus, the
mobile interface here does little more than provide a generic
technological environment to allow users to access information.
And as we have previously observed, “[a]n abstract idea does
not become nonabstract by limiting the invention to a particular
field of use or technological environment, such as the Internet.”
Intellectual Ventures ILLC v. Erie Indemnity Company, 850 F.3d 1315,
1330 (2017).
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
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computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd. at 2360.
DECISION
The rejection of claims 1—5, 11—16, 19, and 20 is affirmed.
The rejection of claims 6—10, 17, and 18 is reversed.
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1—20 are rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter.
Our decision is not a final agency action.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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
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matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
See 21 C.F.R. § 1.136(a)(l)(iv) (2011).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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