Ex Parte Webber et al

Patent Trial and Appeal Board

Oct 3, 2017

13567610 (P.T.A.B. Oct. 3, 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.
13/567,610 08/06/2012 Jo WEBBER 101035-5008 7339
9629 7590 10/05/2017
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/05/2017 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):
patents @ morganlewis.com
karen.catalano @ morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JO WEBBER and PRADEEP ITTYCHERIA
Appeal 2015-003796
Application 13/567,610
Technology Center 3600
Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and SHEILA F.
McSHANE, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-29 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-003796
Application 13/567,610
THE INVENTION
The Appellants’ claimed invention is directed to an Internet payment
system (Spec., para. 2). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A computer-implemented method of establishing an online
account for a prospective user, comprising a non-transitory computer
readable medium including a program and a computer executable
program code, the method comprising:
establishing, by a custodian at a first server computer, a first
account having a direct deposit component linked to a debit card
component, both components being associated with a prospective
user, the settings of the first account being stored in a database and
being controlled by the custodian, the prospective user being different
from the custodian;
establishing a username and password associated with the
prospective user, the username and password being stored in the
database;
establishing, at a service requester server computer, a merchant
account with a service requester to transact payment from the debit
card component of the first account upon a donation request by the
prospective user, the service requester being previously approved by
the custodian in the settings of the first account;
funding the direct deposit component of the first account by
contributors approved by the custodian; and
transacting the donation request by supplying the prospective
user's username and password to the first account and verifying that
this information is consistent with the settings of the first account, and
transferring payment from the debit card component of the first
account to the merchant account,
wherein the prospective user is identified to the merchant
account solely by the username and password, and
wherein billing information for the purchase request is provided
to the merchant account from the online account according to the
specific control parameters, such that the prospective user cannot
change the billing information during the donation request transaction.
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Appeal 2015-003796
Application 13/567,610
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-23, 25, 26, 28, and 29 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. Claims 1-29 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement and show
possession of the invention.
3. Claims 7-9, 12, 14, 26, 28, and 29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Perlman (US 2010/0223184 Al, published
Sep. 2, 2010), Scipioni (US 2009/0112763 Al, published Apr. 30, 2009),
and Bishop (US 2009/0299841 Al, published Dec. 3, 2009).
4. Claims 1-6, 10, 11, 13, 15-25, and 27 are rejected under 35
U.S.C. § 103(a) as unpatentable over Perlman, Collas (US 2010/0114733
Al, published May 6, 2010), Scipioni, and Bishop.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
1 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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Appeal 2015-003796
Application 13/567,610
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner has determined that rejection under 35 U.S.C. § 101 is
properly made (Ans. 3, 4).
The Appellants provided arguments in regard to claims 7-11, 26, 28,
and 29 stating the rejection is improper (Br. 16).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept,” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id at 2358.
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Appeal 2015-003796
Application 13/567,610
Here, the Answer was mailed on December 19, 2014, which was after
the date Alice was decided. The Answer fails to set forth any analysis that
both that the claim is directed to an abstract idea, and that the claims do not
provide “significantly more” than any abstract idea. The Answer provides
an incomplete analysis and appears to only apply the machine-or-
transformation test (Ans. 3). In determining patent eligibility the machine -
or-transformation test is a useful clue but not the sole test for deciding patent
eligibility. See Bilski v. Kappos, 561 U.S. 593 (2010) slip opinion at 8.
Accordingly, as an incomplete analysis has been presented before us the
rejection under 35 U.S.C. § 101 is not sustained for claims 1-6, 12-23, and
25.
The Answer at pages 4 and 5 provides an incomplete analysis using
the framework set forth in Alice for claims 7-11, 26, 28, and 29 as well. As
an incomplete analysis has not been performed for patent eligibility under 35
U.S.C. § 101 this rejection is not sustained for these claims as well.
Rejection under 35 U.S.C. §112 (firstparagraph)
The Examiner has rejected claim 1 under 35 U.S.C. § 112 (first
paragraph) for failure to provide support for the claim limitation:
wherein the prospective user is identified to the merchant
account solely by the username and password, and
wherein billing information for the purchase request is provided
to the merchant account from the online account according to the
specific control parameters, such that the prospective user cannot
change the billing information during the donation request transaction.
(Ans. 2, 3).
In contrast, the Appellants argue support for this claim limitation is
found in the Specification at paragraphs 3-6, 46-49, 73, and 75 (Br. 15, 16).
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Appeal 2015-003796
Application 13/567,610
A review of these cited portions fails to disclose the cited claim
limitations. For example, paragraph 46 states that a user name and password
may be used, but not this is not disclosed as solely the method that can be
used. Further, there is no specific mention of restriction on billing
information as claimed at these cited portions.
The Appellants also states that application 13/431,023 is a parent
which incorporates application 12/991,059 and cites support in that
application at paras 71, 74, and 75 as providing support (Br. 16). A review
of the 12/991,059 at the cited paragraphs fails to disclose the cited claim
limitation as well.
For these above reasons, this rejection of record is sustained.
Rejection under 35 U.S.C. §103
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation requiring:
the prospective user is identified to the merchant account solely
by the username and password, and
wherein billing information for the purchase request is provided
to the merchant account from the first account according to the
specific control parameters, such that the prospective user cannot
change the billing information during the donation request transaction
(Br. 19-20).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Bishop at paras. 52 and 76, or would have been an
obvious modification (Ans. 7-9).
We agree with the Appellants. Here, the citations to Bishop at paras.
52 and 76 fail to specifically disclose that the user is identified to the
merchant solely by the username and password, or that the billing
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Appeal 2015-003796
Application 13/567,610
information cannot change during the purchase request transaction. The
rejection also fails to provide an articulated reasoning with rational
underpinnings for the combination without impermissible hindsight and the
rejection of claim 1 and its dependent claims is not sustained. Claims 15, 18
and 24 are rejected on the same grounds and the rejection of these claim and
its dependent claims is not sustained as well.
Independent claim 7 contains a similar limitation to those identified
above for which the Examiner relies on Bishop at paras. 52 and 76 for
disclosure. As noted above Bishop at those portions fails to disclose those
claim limitations. Likewise the rationale in this rejection also fails to
provide articulated reasoning with rational underpinnings for the
combination without impermissible hindsight and the rejection of claim 7
and its dependent claims is not sustained. Claims 12 and 28 are rejected on
the same grounds and the rejection of these claims and their dependent
claims is not sustained as well.
CONCLUSIONS OL LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 35U.S.C. § 112 (first paragraph) as listed in the
Rejections section above.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims under 35U.S.C. § 101 and 35 U.S.C. § 103(a) as listed
in the Rejections section above.
DECISION
The Examiner’s rejection of claims 1-29 is sustained.
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Appeal 2015-003796
Application 13/567,610
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 37 C.F.R. §
1.136(a)(l)(iv).
AFFIRMED
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