Robyn R. Schwartz

Patent Trials and Appeals BoardJul 29, 2019

14087462 - (D) (P.T.A.B. Jul. 29, 2019)

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. 14/087,462 11/22/2013 Robyn R. Schwartz END920130083US1 5457 26681 7590 07/29/2019 DAUGHERTY & DEL ZOPPO CO., LP 38500 CHARDON ROAD DEPT. IEN WILLOUGHBY HILLS, OH 44094 EXAMINER MERCADO, GABRIEL S ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 07/29/2019 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): cgiacomazzo@DD-IPLAW.COM mwheeler@DD-IPLAW.COM usptocommunications@DD-IPLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBYN R. SCHWARTZ ____________ Appeal 2018-005135 Application 14/087,4621 Technology Center 3600 ____________ Before JOHN A. EVANS, CATHERINE SHIANG, and JASON J. CHUNG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–14, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies International Business Machines Corporation as the real party in interest. App. Br. 1. Appeal 2018-005135 Application 14/087,462 2 STATEMENT OF THE CASE Introduction The present invention relates to “financial data processing in an e- Currency platform, and more particularly, to processing e-Commerce tokens which have involved off-line transactions.” Spec. ¶ 1. Claim 1 is exemplary: 1. A computer implemented method for handling a self-aware token, comprising the steps of: receiving, on a memory device that is external to an e-Currency platform, a token file of a token from the e-Currency platform, said platform having a processor; performing a transaction involving said token file, wherein the transaction is off-line with respect to the e-Currency platform; in an off-line state with respect to the e-Currency platform, recording events of said off-line transaction in said token file on said memory device that is external to the e-Currency platform; transferring the recorded events into said e-Currency platform; and using said processor, estimating by said e-Currency platform, a price value of said token based upon an average estimated price value of nearby tokens in said platform and the recorded events, wherein the nearby tokens are other tokens that are of a same e-Currency type of said token and are associated with said token as a function of sharing data within an environment that is selected from the group consisting of an applied restrictions environment and a service privacy environment. Appeal 2018-005135 Application 14/087,462 3 References and Rejections2 Claims 1–14 are rejected under 35 U.S.C. § 101 because they are directed to patent-ineligible subject matter. Final Act. 5–8. Claims 13 and 14 are rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written-description requirement. Final Act. 8–9. Claims 13 and 14 are rejected under pre-AIA 35 U.S.C. § 112, second paragraph as being indefinite. Final Act. 9–10. Claims 1–5, 7–11, 13, and 14 are rejected under 35 U.S.C. § 103 as being obvious over Meredith (US 2008/0195499 A1, published Aug. 14, 2008) and Matonis (NPL, CoinDesk launches proprietary Bitcoin Price Index, published Sep. 13, 2013, http://web.archive.org/web/20131009204 735/http://www.coindesk.com/coindesk-launches-proprietary-bitcoin-price- index/). Final Act. 10–17. Claims 6 and 12 are rejected under 35 U.S.C. § 103 as being obvious over Meredith, Matonis, and Simunovic (US 2008/0281721 A1, published Nov. 13, 2008). Final Act. 17–19. ANALYSIS 35 U.S.C. § 101 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner erred in this case. 2 Throughout this opinion, we refer to the (1) Final Office Action dated Feb. 28, 2017 (“Final Act.”); (2) Appeal Brief dated July 7, 2017 (“App. Br.”); (3) Examiner’s Answer dated Feb. 21, 2018 (“Ans.”) and (4) Reply Brief dated Apr. 16, 2018 (“Reply Br.”). Appeal 2018-005135 Application 14/087,462 4 Section 101 of the Patent Act provides “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 Appeal 2018-005135 Application 14/087,462 5 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). Appeal 2018-005135 Application 14/087,462 6 “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the guidance set forth in the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev. 08.2017, 2018) (Step 2A, Prong 2). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54–56. Turning to Guidance Step 2A, Prong 1 (Alice step one), we agree with Appellant that the Examiner has failed to identify a patent-ineligible abstract idea. See App. Br. 4–7; Reply Br. 1–4. The Federal Circuit explains the “directed to” inquiry looks at the claims’ “character as a whole,” and is not simply asking whether the claims involve a patent-ineligible concept: Appeal 2018-005135 Application 14/087,462 7 The “directed to” inquiry [ ] cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”). Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a whole “focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”). Considering the claims as a whole, we determine each of claims 1–14 is directed to a method (or system) of handling self-awaken token by receiving a token file on a memory device that is external to an e-Currency platform, performing an off-line transaction involving the token file, recording events of the off-line transaction in the token file on the memory device; transferring the recorded events into the e-Currency platform; and estimating by the e-Currency platform, a price value of the token based on an average estimated price value of nearby tokens in the platform and the recorded events [“invented method (or system) of handling self-awaken token”]. See claims 1–14. Our determination is supported by the Specification, which describes conducting an off-line transaction with a Appeal 2018-005135 Application 14/087,462 8 token from an e-Currency platform, and the resulting need for the invented method (or system). See Spec. ¶¶ 1–4. In light of the Guidance, because the invented method (or system) of handling self-awaken token is not a mathematical concept, an identified method of organizing human activity, or a mental process, we conclude the claims are not directed to an abstract idea. See Guidance, 84 Fed. Reg. at 52; id. at 53 (“Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas, except” in rare circumstances.); see also Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (2017) (holding the claims are not directed to an abstract idea under Alice step one because the “claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform”). In particular, the invented method (or system) of handling self-awaken token is not a mathematical concept, because it is not a mathematical relationship, mathematical formula or equation, or mathematical calculation. See Guidance, 84 Fed. Reg. at 52. Further, it is not an identified method of organizing human activity, as it is not (i) a fundamental economic principle or practice (including hedging, insurance, mitigating risk), (ii) a commercial or legal interaction (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or (iii) managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Guidance, 84 Fed. Reg. at 52. In Appeal 2018-005135 Application 14/087,462 9 addition, the invented method (or system) of handling self-awaken token is not a mental process, as it is not a concept performed in the human mind (including an observation, evaluation, judgment, opinion). See Guidance, 84 Fed. Reg. at 52. Because the claims are not directed to an abstract idea, we do not sustain the Examiner’s rejection of claims 1–14 under 35 U.S.C. § 101. Pre-AIA 35 U.S.C.§ 112, First Paragraph The Examiner rejects claims 133 and 14 for failing to comply with the written description requirement with respect to the claim limitation “dividing a sum of asset values for thee-Currency type of said token.” Final Act. 8–9. We disagree. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. . . . . [T]he level of detail required to satisfy the written description requirement varies depending on the nature and 3 The Examiner rejects claim 15 (Final Act. 8–9), which does not exist. Because the Examiner cites claim 13 subsequently (Final Act. 9–10), he probably meant to reject claim 13 instead. In any event, Appellant is not prejudiced here, because Appellant acknowledges the rejection is directed to claim 13. See App. Br. 8–9. Appeal 2018-005135 Application 14/087,462 10 scope of the claims and on the complexity and predictability of the relevant technology. For generic claims, we have set forth a number of factors for evaluating the adequacy of the disclosure, including "the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue." Id. (internal quotations and citations omitted). [T]he description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba . . . . Id. at 1352 (citations omitted). Here, we agree with Appellant that the Specification reasonably conveys to skilled artisans that as of the filing date, Appellant possessed the claimed invention with respect to the above claim limitation. See Ariad Pharms., 598 F.3d at 1351; App. Br. 8–9. In particular, we agree with Appellant that paragraphs 39 and 40 of the Specification describe the invention with respect to the disputed limitation, as the Specification does not need to recite the disputed limitation in haec verba. See App. Br. 8–9; Ariad Pharms., 598 F.3d at 1352. Therefore, the “specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed” with respect to the above claim limitations. Ariad Pharms., 598 F.3d at 1351. Accordingly, we reverse the Examiner’s rejection of claims 13 and 14 under pre-AIA 35 U.S.C. § 112, first paragraph. Pre-AIA 35 U.S.C.§ 112, Second Paragraph The Examiner rejects claims 13 and 14 as being indefinite with respect to the limitation “dividing a sum of asset values for the e-Currency type of said token.” Final Act. 9–10. The Examiner determines “it is Appeal 2018-005135 Application 14/087,462 11 unclear “which sum needs to be divided: (1) the sum of assets values (a sum of token values) owned by a user, (2) the sum of assets values owned by all users (a sum of all possible token values), or (3) other sum, like a subset of values (e.g., prices) of similar tokens, as in the values in certain exchange sites.” Final Act. 9–10. We disagree. Claims must “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” Pre-AIA 35 U.S.C. § 112, second paragraph. Because each of the claims clearly recites dividing a sum of asset values “for the e-Currency type of said token,” one skilled in the art would understand the subject matter of the claims. Accordingly, we reverse the Examiner’s rejection of claims 13 and 14 under pre-AIA 35 U.S.C. § 112, second paragraph. 35 U.S.C.§ 103 We have reviewed the Examiner’s rejections in light of Appellant’s contentions and evidence of record. We concur with Appellant’s contention that the Examiner erred in finding the cited portions of Matonis teach “a price value of said token based upon an average estimated price value of nearby tokens in said platform and the recorded events, wherein the nearby tokens are other tokens that are of a same e-Currency type of said token and are associated with said token as a function of sharing data within an environment that is selected from the group consisting of an applied restrictions environment and a service privacy environment.” as recited in independent claim 1 (emphases added). See App. Br. 11–13; Reply Br. 7–8. Appeal 2018-005135 Application 14/087,462 12 The Examiner cites Matonis for teaching the italicized claim limitation. See Final Act. 13–14. The Examiner finds: Matonis teaches Coin Desk’s Bitcoin Price Index which represents “an average of leading global bitcoin exchanges but the formula is flexible enough to maintain only those exchange rates that conform to certain minimum criteria for price discovery and validity” and is based on "price data from Bitstamp, BTC-e, and CampBX using each exchange’s bid/ask midpoint” (Matonis). Final Act. 13–14; see also Ans. 8–9. We have reviewed the cited Matonis portions, and they do not describe “the nearby tokens are other tokens that are of a same e-Currency type of said token and are associated with said token as a function of sharing data within an environment that is selected from the group consisting of an applied restrictions environment and a service privacy environment.” as required by claim 1. In particular, Examiner has not explained why Matonis’ bitcoin index teaches the claimed “nearby tokens.” Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1. Independent claim 7 recites a similar claim limitation, and Examiner applies the same findings and conclusions discussed above with respect to that claim limitation. See claim 7; Final Act. 10, 13–14. Therefore, for similar reasons, we reverse the Examiner’s rejection of independent claim 7. We also reverse the Examiner’s rejection of corresponding dependent claims 2–6 and 8–14. Although the Examiner cites an additional reference for rejecting some dependent claims, the Examiner has not shown the Appeal 2018-005135 Application 14/087,462 13 additional reference overcomes the deficiency discussed above in the rejection of claim 1. DECISION We reverse the Examiner’s decision rejecting claims 1–14 under 35 U.S.C. § 101. We reverse the Examiner’s decision rejecting claims 13 and 14 under pre-AIA 35 U.S.C. § 112, first paragraph. We reverse the Examiner’s decision rejecting claims 13 and 14 under pre-AIA 35 U.S.C. § 112, second paragraph. We reverse the Examiner’s decision rejecting claims 1–14 under pre- AIA 35 U.S.C. § 103. REVERSED