Ron Hirson et al.

Patent Trials and Appeals Board

Sep 26, 2019

13012589 - (D) (P.T.A.B. Sep. 26, 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.
13/012,589 01/24/2011 Ron Hirson BOKU-P030 7082
17169 7590 09/26/2019
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
ariana@matterlightip.com
stephen@matterlightip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RON HIRSON and DAVID YOO
________________

Appeal 2018-005482
Application 13/012,5891
Technology Center 3600
________________

Before JASON V. MORGAN, DANIEL N. FISHMAN, and
NABEEL U. KHAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 2, 4, and 6–19. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Summary of the disclosure
Appellants disclose systems and methods “to facilitate online
transactions via mobile communications.” Abstract.

1 Appellants identify Boku, Inc., as the real party in interest. Appeal Br. 3.
Appeal 2018-005482
Application 13/012,589

2

Representative claim (key limitations emphasized and formatting added)
1. A computer-implemented method, comprising:
displaying, by a host, to a user at a user terminal system an
interface of the host at a first domain on a browser of the user
with an option selectable by the user if the user selects to either
sign in via the mobile phone of the user or to sign in an account
on the host using a username and password or to sign in via a
mobile pone of the user;
(i) if the user selects to sign in using a username and password[:]
receiving, at the host, a username and password from the
user terminal system;
determining, by the host, whether the username and
password are correct; and
if the username and password are correct then signing the
user into the account on the host without transmitting a
request to a computer to authenticate the user by
communicating with the mobile phone to confirm an
identity of the user; and
(ii) if the user selects to sign in via the mobile phone of the user:
transmitting from the host and receiving at the computer,
a request from the host to the computer to authenticate
the user to sign in the account on the host including
providing an identifier to uniquely represent the user
among a plurality of users on the host;
redirecting, by the host, the browser of the user to display
an interface of the computer at a second domain that is
different than the first domain, to receive the phone
number specified by the user to confirm an identity of the
user;
communicating, by the computer, with the mobile phone
of the user at a phone number specified by the user to
confirm an identity of the user;
if the identity of the user is confirmed via the
communicating with the mobile phone[:]
Appeal 2018-005482
Application 13/012,589

3

providing, by the computer, information to the host
to allow the user to sign in the account including
providing the identifier to uniquely represent the
user among the plurality of users on the host; and
signing the user into the account on the host
corresponding to the identifier to uniquely
represent the user among the plurality of users on
the host without requiring the username and
without requiring the password to be entered at the
user terminal displayed by the host.
Rejections
The Examiner rejects claims 1 and 19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 8–9.
The Examiner rejects claims 1 and 19 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 9.
The Examiner rejects claims 1, 22, 4, and 6–19 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 5–8.
The Examiner rejects claims 1, 2, 4, and 6–19 under 35 U.S.C.
§ 103(a) as being unpatentable over Labrou et al. (US 2006/0206709 A1;
published Sept. 14, 2006) (“Labrou”), Seidl et al. (US 2011/0289573 A1;
published Nov. 24, 2011) (“Seidl”), and Yared et al. (US 2003/0149781 A1;
published Aug. 7, 2003) (“Yared”). Final Act. 10–17.

2 The Examiner only lists claims 1 and 19 in the statement of the rejection.
Final Act. 5. The Examiner, however, further determines the “[d]ependent
claims do not resolve the deficiency of independent claims and accordingly
stand rejected under 35 USC 101 based on the same rationale.” Id. at 7.
Appeal 2018-005482
Application 13/012,589

4

35 U.S.C. § 112, FIRST PARAGRAPH
In rejecting claim 1 under 35 U.S.C. § 112, first paragraph, the
Examiner finds the Specification fails to provide sufficient written
description support for the recitation of redirecting, by the host, the browser
of the user to display an interface of the computer at a second domain that is
different than the first domain, to receive the phone number specified by the
user to confirm an identity of the user. Final Act. 8. Appellants contend the
Examiner erred because the Specification provides sufficient written
description support in paragraph 196 of the Specification. Appeal Br. 24.
The Examiner “reviewed the entire paragraph but could not discern the
claimed limitation either expressly disclosed or disclosed by implication.”
Ans. 4.
We agree with Appellants that the Specification reasonably apprises
an artisan of ordinary skill that Appellants had possession of the disputed
recitation at the time of filing. The Specification depicts an interface at a
first domain (www.songs.com) that provides button 509 to allow for a user
to sign into an account via mobile phone. Spec. Fig. 20. After the user
selects button 509, server 113 redirects the user to another website for
authentication. Spec. ¶ 180. This second website is at a second domain
(www.mobillcash.com) different from the first domain. Spec. Fig. 21. At
this site, the user is prompted to provide or verify a mobile number to sign
into the account at the first domain. Id.; see also Spec. ¶ 196. Based on
these disclosures, we are unable to discern what features of the disputed
recitation the Examiner finds are not sufficiently supported by the
Specification.
Appeal 2018-005482
Application 13/012,589

5

Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claim 1, and claim 19, which the Examiner similarly
rejects. Final Act. 8.
35 U.S.C. § 112, SECOND PARAGRAPH
In rejecting claim 1 under 35 U.S.C. § 112, second paragraph, the
Examiner finds that “displaying by a ‘host’ a host [sic] and computer are not
the same thing.” Final Act. 9. Appellants contend the Examiner erred
because “the technology of the subject patent application deals with
computer technologies and that a ‘host’ is therefore a ‘computer.’” Appeal
Br. 24; see also Reply Br. 29.
The Specification contains multiple disclosures to server 113 (Spec.
Fig. 1) serving as a host for an online game environment or a virtual reality
world (id. ¶ 47), for websites (id. ¶¶ 54, 109), for account-based services (id.
¶ 175), and for accounts (id. ¶¶ 176, 207, 210, 216, 219–22, 228). See also
id. Fig. 20, ¶¶ 178–80 (disclosing presenting a user interface to the user for
signing in and server 113 redirecting the user to a website of an interchange
for authentication). These disclosures provide sufficient evidence that the
claimed host is a server and, as Appellants’ contend, a computer. See
Appeal Br. 24. Therefore, we agree with Appellants that the host recitation
is not indefinite.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112,
second paragraph, rejection of claim 1, and claim 19, which the Examiner
similarly rejects. Final Act. 9.
Appeal 2018-005482
Application 13/012,589

6

35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in § 101, including: (1) laws of nature; (2) natural phenomena; and
(3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217–18.
“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Pat. Litig., 823
F.3d 607, 611 (Fed. Cir. 2016)).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO, 2019
Appeal 2018-005482
Application 13/012,589

7

Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Memorandum”). Under that 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) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Memorandum, 84 Fed. Reg. at 52–55.
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.
See Memorandum, 84 Fed. Reg. at 56.
Memorandum step 2A, prong one
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines that claim 1 “is directed to displaying [an]
interface for signing in (with optional limitations that may or may not
Appeal 2018-005482
Application 13/012,589

8

occur)” and thus is directed to an abstract idea in the form of a “fundamental
economic practice long prevalent in our system of commerce.” Final Act. 6;
see also Ans. 3.
We agree with the Examiner that claim 1—which includes recitations
directed to receiving and using a username and password and recitations in
the alternative directed to authentication using mobile phone without using a
username and password—recites an abstract idea. Final Act. 6. In
particular, claim 1 recites steps related to controlling access to resources,
which represents a certain method of organizing human activity (e.g.,
enforcing a degree of ownership and control over a resource). See, e.g.,
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1017 (Fed.
Cir. 2017) (citing In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1367 (Fed. Cir. 2015)).
Memorandum step 2A, prong two
Appellants contend the Examiner erred because “[i]n finding that the
claims were directed simply to ‘displaying an interface and signing in’ the
Examiner oversimplified presence detection by a remote computer as an
alternative to password login on a host of the claims and downplayed the
invention’s benefits.” Appeal Br. 17; see also Reply Br. 9 (“[s]imply
because the claim includes the term ‘if’ does not mean that it is a limitation
that may or may not occur. Instead, it is a limitation that is included in the
method and represents a branch of the algorithm.”).
We do not agree with Appellants that the claimed alternative to
password login steps may be sufficient to make claim 1 patent-eligible (e.g.,
by representing a practical application of the underlying abstract idea). In
Appeal 2018-005482
Application 13/012,589

9

particular, the recited steps providing an alternative to a password login on a
host are recited as conditional recitations. That is, in at least one scenario—
such as the user selecting to sign in using a username and password rather
than via a mobile phone—the conditional recitations need not be performed.
See Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at
*5 (PTAB 2016) (precedential) (the broadest reasonable interpretation of a
claim to a method excludes conditional steps that need not be performed).
Thus, we need only consider whether the embodiment that uses a username
and password login integrates the underlying abstract idea into a practical
application. Cf. Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275,
1295 (Fed. Cir. 2017) (citing MPEP § 2106 (9th ed. Mar. 2014)) (“a claim
[that] covers ‘both statutory and non-statutory embodiments,’ . . . is not
eligible for patenting”).
The use of usernames and passwords (i.e., evidence to identify and
authenticate an entity requesting access to a resource) claimed without, for
example, any particular technique for determining whether the username and
password are correct amounts to the equivalent of merely reciting use of a
computer to control access to a resource. See Memorandum, 84 Fed. Reg. at
55 (citing, e.g., Alice, 573 U.S. at 222–26). “Given the ubiquity of
computers wholly generic computer implementation is not generally the sort
of additional feature that provides any practical assurance that the process is
more than a drafting effort designed to monopolize the abstract idea itself.”
Alice, 573 U.S. at 223–24 (citations omitted) (internal quotation marks and
alteration indications omitted).
Appeal 2018-005482
Application 13/012,589

10

For these reasons, we determine that claim 1, which does not recite
additional elements sufficient to integrate the recited abstract idea into a
practical application, is directed to the abstract idea.
Memorandum step 2B
The Examiner further determines that:
[t]he use of a computer implementing the abstract idea [of
claim 1] does not render the claim patent eligible because it does
not provide meaningful limitations beyond generally linking the
use of an abstract idea to a particular technology environment
and requires no more than a generic computer to perform generic
computer functions.
Final Act. 7.
The Examiner’s determinations are reasonable and Appellants do not
contest the Examiner’s rejection under Alice step 2. Appeal Br. 19
(“[b]ecause the claims are not directed to an abstract idea under step one of
the Alice analysis, we do not need to proceed to step two of that analysis”).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1, and claims 2, 4, and 6–19, which Appellants do not argue
separately. Appeal Br. 23.
35 U.S.C. § 103(A)
In rejecting claim 1 as obvious, the Examiner finds, and Appellants
acknowledge, that Labrou teaches or suggests use of a username and
password to sign a user into an account. Final Act. 10 (citing Labrou ¶ 78);
see also Appeal Br. 26. Appellants contends, however, the Examiner erred
in finding that Labrou, even in combination with Seidl and Yared, teaches or
suggests recitations related to a user signing in via a mobile phone. See
Appeal Br. 26 (“Logging in using a mobile phone is not the same as
Appeal 2018-005482
Application 13/012,589

11

presence detection by a remote computer”), 27 (“The combination of
references thus fails to teach or suggest presence detection by remote
computer as an alternative to password log in on a host”); see also Reply
Br. 30–38.
Appellants’ arguments are unpersuasive of error because the disputed
recitations are conditional recitations that need not be performed. See
Schulhauser, 2016 WL 6277792, at *5. Therefore, the Examiner’s findings
showing that Labrou teaches or suggests recitations related to the use of a
username and password are sufficient to show that claim 1, given its
broadest reasonable interpretation, would have been obvious in light of the
combined teachings and suggestions of Labrou, Seidl, and Yared. Final Act.
10.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2, 4, and 6–19, which Appellants do not argue
separately. Appeal Br. 27.
Appeal 2018-005482
Application 13/012,589

12

DECISION
We reverse the Examiner’s decision rejecting claims 1 and 19 under
35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s decision rejecting claims 1 and 19 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 1, 2, 4, and 6–19
under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1, 2, 4, and 6–19
under 35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claims 1, 2, 4, and 6–19.
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.
§ 41.50(f).
AFFIRMED