Ex Parte Andersen et al

Patent Trial and Appeal Board

Sep 10, 2018

13443519 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/443,519 04/10/2012
20350 7590 09/12/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Tonya Andersen
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.
90945-837535 (005330US) 3981
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/12/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TONY A ANDERSEN, KAREN KAUKOL, DEBORAH REX,
and GARY JEFFORDS 1
Appeal2017-007187
Application 13/443 ,519
Technology Center 3600
Before ROBERT E. NAPPI, JENNIFER L. McKEOWN, and
JASON M. REPKO, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 2 through 23. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is W estem Union
Company. Br. 2.
Appeal2017-007187
Application 13/443,519
INVENTION
Appellants' disclosed invention is directed to a method for validating
and activating a purchase card, the method involves using a purchase card
that is removably attached to a card carrier. See Abstract. Claim 2 is
representative of the invention and reproduced below.
2. A method of using a stored value card, comprising:
providing the stored value card removably attached
to a card carrier, wherein:
the stored value card has encoded thereon an
account identifier in a machine-readable format;
the account identifier is inaccessible while the
stored value card is attached to the card carrier; and
the card carrier has encoded thereon a carrier
identifier;
populating, by a host computer system, a database
linking the carrier identifier to the account identifier;
receiving, by the host computer system, from a
point-of-sale device at a merchant location, the carrier
identifier and an indication of a purchaser-provided
amount; and
associating, by the host computer system, using the
carrier identifier, the purchaser-provided amount with the
account identifier; and
activating, by the host computer system, the account
identifier of the stored value card such that the account
identifier is eligible to be used for a purchase transaction.
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Appeal2017-007187
Application 13/443,519
REJECTION AT ISSUE2
The Examiner rejected claims 2 through 23 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Final Act. 2---6; Answer 2-
6.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court sets
forth a two-part "framework 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.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... [Mayo, 566 U.S. at
76-77]. If so, we then ask, "[w]hat else is there in the claims
before us?" Id., at [77-78]. To answer that question, we consider
the elements of each claim both individually and "as an ordered
combination" to determine whether the additional elements
2 Throughout this Decision, we refer to the Appeal Brief filed August 22,
2016, Final Office Action mailed January 20, 2016, and the Examiner's
Answer mailed January 12, 2017.
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Appeal2017-007187
Application 13/443,519
Id.
"transform the nature of the claim" into a patent-eligible
application. Id., at [78-79]. We have 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." Id., at [71-73].
Although an abstract idea itself is patent ineligible, an application of
the abstract idea may be patent eligible. Alice, 134 S. Ct. at 2355. Thus, we
must 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-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78). The claim must contain elements or a
combination of elements that are "sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ abstract idea]
itself." Id. (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit has
explained that, in determining whether claims are patent-eligible under
Section 101, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
The Federal Circuit also noted in that decision that "examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
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Appeal2017-007187
Application 13/443,519
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's conclusion that the claims are directed to patent-ineligible
subject matter.
Appellants argue, on page 4 of the Appeal Brief, that the Examiner's
rejection under § 101 is in error as claim 1 is not directed to an abstract idea.
Appellants argue that the Examiner has failed to support the finding that the
abstract idea is a long-prevalent or longstanding fundamental economic
practice. Br. 4. With respect to the second part of the Alice analysis
Appellants argue that the office merely concludes the claims do not add
anything more than the abstract idea without an adequate explanation. Br. 5.
Further, Appellants argue that the claims recite one of many ways of
implementing the abstract idea. Br. 5.
The Examiner finds that the claims recite a fundamental economic
practice of validating and activating a purchase card. Answer 2. The
Examiner finds that the economic practice recited in the claims are similar to
those found abstract by the courts. Answer 3 ( citing buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014), Bilski v. Kappas, 130 S. Ct.
3218 (2010), and Alice). Further, the Examiner finds that the claimed use of
a computer in the implementation of the abstract idea is using a computer to
perform well-understood, routine, and conventional functions. Answer 4--5
(citing Parker v. Flook, 437 U.S. 584 (1978), Bancorp Servs., L.L.C. v. Sun
Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012), Alice,
Content Extraction and Transmission LLC. v. Wells Fargo Bank, Nat 'l
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Application 13/443,519
Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014), Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709 (Fed. Cir. 2014), buySAFE, and Cyberfone Sys., LLC v. CNN
Interactive Grp., 558 F. App'x 988 (Fed. Cir. 2014)).
We have reviewed the Examiner's rejection and response to
Appellants' arguments and we concur with the Examiner's conclusion that
the claims recite an abstract idea and do not recite significantly more.
Claim 2 recites limitations directed to "populating ... a database
linking the carrier identifier to the account identifier," receiving "carrier
identifier and an indication of a purchaser-provided amount," "associating ..
. using the carrier indenter, the purchaser-provided amount with the account
identifier," and "activating ... the account identifier." These limitations are
merely directed to reading data and associating it together. Thus, the claim
recites collecting data, and correlating the data.
As identified by the Examiner these limitations are reciting an abstract
process similar to that addressed by the court in Content Extraction, 77 6
F .3 d at 134 7 (holding that the claims were "drawn to the abstract idea of 1)
collecting data, 2) recognizing certain data within the collected data set, and
3) storing that recognized data in a memory."). These limitations are similar
to those considered to be abstract by the court in Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding that claims
directed to a process of gathering and analyzing information of a specific
content are directed to an abstract idea); and Smart Sys. Innovations LLC v.
Chi Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017) (holding that
claims directed to data collection and a financial transaction in a particular
file, are directed to an abstract idea) and thus, we find that representative
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Application 13/443,519
claim 2 is directed to concepts that our reviewing court has considered to be
abstract and we conclude that the claims are directed to an abstract idea.
Turning to the second part of the Alice test, we concur with the
Examiner's conclusion that the claims do not recite significantly more than
the abstract idea. As discussed above, claim 2 discusses an abstract concept
of gathering data and correlating it for a financial transaction. Claim 2
recites that the data is from a stored value card, packaging of the card ( card
carrier) and the gathering of the data is via a host computer. As discussed
above is similar to those at issue in Electric Power Group, although the type
of information is different, the claims are directed to collecting information
for analysis. The recitation of the information being obtained from the
stored value card and it's packaging is merely use of a conventional means
of providing the information (e.g., the use of account numbers on credit
cards and bar codes on packaging are well known methods of conveying
information).
Further, we concur with the Examiner that the recitation of using a
host computer to correlate the data is merely reciting a generic component to
implement the abstract idea. Neither the claim nor Appellants'
Specification, identify that the host computer system is anything other than a
generic computer. See Specification para. 50 (which identifies numerous
generic computer components to implement the method). As such, we do
not find that the recitation of a host computer system is directed to
significantly more than the abstract idea. Our reviewing court has said "[ w ]e
have repeatedly held that such invocations of computers and networks that
are not even arguably inventive are 'insufficient to pass the test of an
inventive concept in the application' of an abstract idea." Electric Power
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Application 13/443,519
Group, 830 F.3d at 1355 (citing buySAFE, 765 F.3d at 1353, 1355). Thus,
we do not find that the claims recite, or the Specification identifies the
invention is directed to an improvement to the operation of the computers,
but rather recite using the computer as a tool (to solve an economic problem
of improving the validation and activation of stored value cards, see Spec.
para. 5). Accordingly, we are not persuaded that claim 2 recites significantly
more and conclude the claims are directed to patent-ineligible subject matter
and we sustain the Examiner's rejection of claim 2 and claims 3 through 23
grouped with claim 2.
DECISION
We affirm the Examiner's rejections of claims 2 through 23 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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