Ex Parte Ansari

Patent Trial and Appeal Board

May 11, 2018

13621331 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/621,331 09/17/2012
15608 7590
Blackhawk Network, Inc.
5700 Granite Parkway
Suite 330
Plano, TX 75024
05/11/2018
FIRST NAMED INVENTOR
Ansar ANSARI
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.
4556.12203 1036
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
MAILDATE DELIVERY MODE
05/11/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANSAR ANSARI
Appeal 2016-004498 1
Application 13/621,331 2
Technology Center 3600
Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-20. We have jurisdiction under
§ 6(b). We AFFIRM.
1 Our Decision references the Examiner's Final Office Action ("Final Act.,"
mailed Mar. 5, 2015) and Answer ("Ans.," mailed Jan. 20, 2016), as well as
Appellant's Specification ("Spec.," filed Sept. 17, 2012), Appeal Brief
("Appeal Br.," filed Aug. 3, 2015), including the Amendments and Response
to Final Office Action ("Resp." filed May 4, 2015) referenced therein, and
Reply Brief ("Reply Br.," filed Mar. 21, 2016).
2 Appellant identifies Blackhawk Network, Inc. as the real party in interest.
Appeal Br. 4.
Appeal 2016-004498
Application 13/621,331
SUBJECT MATTER ON APPEAL
The invention relates to "[ m ]ethods, networks, and storage mediums
for efficient stored-value card transactions." Spec. i-f 3. Claims 1, 6, and 12
are the independent claims on appeal. Independent claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for replenishing a stored-value card by a
multicard transaction computer system, the multicard transaction
computer system comprising at least one processor and one or
more computer programs executable by the at least one processor
which causes the multicard transaction computer system to
perform the method, the method comprising:
receiving a stored-value card activation request associated
with the stored-value card which is already activated, wherein
the request is received from an access point; and
generating a replenish request based on receipt of the
stored-value card activation request.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Singh et al. ("Singh") US 2008/0114696 Al May 15, 2008
Schorr et al. ("Schorr") US 2008/0172306 Al July 17, 2008
Dubnicki et al. ("Dubnicki") US 2008/0221856 Al Sept. 11, 2008
Chai et al. ("Chai") US 7,617,152 B2 Nov. 10, 2009
Marchand US 2010/0043008 Al Feb. 18,2010
Nix et al. ("Nix") US 2010/0299195 Al Nov. 25, 2010
Fowler US 2011/0041006 Al Feb. 17, 2011
Schwarz, Jr. ("Schwarz") US 8,020,754 B2 Sept. 20, 2011
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Application 13/621,331
REJECTIONS
The Examiner rejects the claims on appeal as follows:
I. claims 1-2 0 under 3 5 U.S. C. § 1 01 as non-statutory subject matter;
II. claims 1--4 under 35 U.S.C. § 103(a) as unpatentable over Singh,
Nix, and Schwarz;
III. claim 5 under 35 U.S.C. § 103(a) as unpatentable over Singh, Nix,
Schwarz, Dubnicki, Marchand, and Chai;
IV. claims 6, 7, and 9-11under35 U.S.C. § 103(a) as unpatentable
over Nix and Schwarz;
V. claim 8 under 35 U.S.C. § 103(a) as unpatentable over Nix,
Schwarz, and Schorr; and
VI. claims 12-20 under 35 U.S.C. § 103(a) as unpatentable over Singh,
Nix, Dubnicki, Marchand, Chai, and Fowler.
ANALYSIS
Rejection I: Claims 1-20 under 35 USC§ 101 as non-statutory subject
matter
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 implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
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Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting the claims under 35 U.S.C. § 101 as non-statutory subject
matter, i.e., subject matter judicially excepted from statutory subject matter,
the Examiner analyzes the claims using this two-step framework.
Final Act. 2--4. Pursuant to the first step, the Examiner determines the
claims are directed to stored-value card processing and account funding,
which is a fundamental economic practice, and, therefore, an abstract idea.
Id. at 3. Under the second step, the Examiner determines the claims do not
recite significantly more than the abstract idea because they do not effect an
improvement to another technology or technical field, improve the
functioning of the computer itself, or move beyond a general link of the use
of the abstract idea to a particular technological environment. Id. The
Examiner further determines the claim limitations are merely instructions to
implement the abstract idea on a computer and require no more than a
generic computer performing generic computer functions that are
well-understood, routine, and conventional activities previously known in
the industry. Id.
Appellant argues claims 1-20 as a group. Appeal Br. 7-19;
Reply Br. 7-12. \Ve select independent claim 1 as representative. The
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Application 13/621,331
remaining claims of the group stand or fall with independent claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
At the outset, we are unpersuaded of error by Appellant's argument
that independent claim 1 does not preempt all applications of the abstract
idea of stored-value card processing and account funding. Appeal Br. 7-11;
Reply Br. 10-12. Even if we were to agree with Appellant that the claim
does not preempt all uses of the abstract idea, preemption is not the test for
determining whether a claim is judicially-excepted from statutory subject
matter. Said differently, although preemption may be the basis for excluding
abstract ideas from eligible subject matter, preemption is not the test. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability. For this reason, questions
on preemption are inherent in and resolved by the § 101 analysis." (citation
omitted)). Accordingly, we consider Appellant's arguments under the
two-step patent-eligibility analysis.
Pursuant to the first step, Appellant asserts the Examiner's
determination that independent claim 1 is directed to an abstract idea is
unsupported and improper because the Examiner has not compared the
concept to which the claim is directed to other concepts the courts have held
to be abstract ideas. Reply Br. 7-10. More specifically, Appellant contends
that the Examiner has not supported the determination that the claim is
directed to stored-value card processing and account funding or the
determination that the claim is directed to a fundamental economic practice
because the Examiner has not compared either of these concepts to other
abstract ideas. Id. at 9-10. Furthermore, to the extent the Examiner, in the
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Answer, determines the claim is directed to concepts that the courts have
held to be abstract ideas, Appellant argues this determination results in a
new ground of rejection, which is improper and not entitled to consideration
on appeal. Id. at 9--10 n.1.
As a preliminary matter, Appellant's argument that the Examiner's
Answer includes a new ground of rejection is a petitionable, not appealable,
matter. 37 C.F.R. § 41.40(a). Appellant's failure to file a petition prior to
filing the Reply Brief constitutes a waiver of the argument. Id.
Accordingly, Appellant's assertion that the Examiner's Answer includes a
new ground of rejection is not before us on appeal.
That notwithstanding, we disagree with Appellant that the Examiner
has not compared the concept to which independent claim 1 is directed, i.e.,
stored-value card processing and account funding, to concepts the courts
have held to be abstract ideas. Here, the Examiner does not determine
separately that the claim is directed to stored-value card processing and
account funding and to a fundamental economic practice. Rather, the
Examiner compares the concept stored-value card processing and account
funding to a fundamental economic practice (Final Act. 3), which, as
Appellant acknowledges, the Supreme Court has held to be an abstract idea
(Reply Br. 8 (citing Alice, 134 S. Ct. at 2350)). Moreover, we see no
meaningful distinction between the concept of stored-value card processing
and account funding and other types of fundamental economic practices,
such as "local processing of payments for remotely purchased goods" in
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017). Accordingly, Appellant does not apprise us of error in the
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Examiner's determination that independent claim 1 is directed to an abstract
idea.
Seeing no error in the Examiner's determination that independent
claim 1 is directed to an abstract idea pursuant to the first step of the
patent-eligibility analysis, we tum to Appellant's arguments under the
second step. Appellant argues that independent claim 1 recites significantly
more than the abstract idea because the claim effects transformations.
Appeal Br. 14--1 7. More specifically, Appellant contends the claimed
invention transforms: a stored-value card from an unreplenished state to a
replenished state, an activation request into a replenish request, and an
access point having no functionality for replenishing already-activated
stored-value cards to having replenishment functionality. Id. at 15-16.
Appellant's argument does not apprise us of error.
The machine-or-transformation is not the standard for determining
whether a claim recites significantly more than the abstract idea. DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[S]atisfying the machine-or-transformation test, by itself~ is not sufficient
to render a claim patent-eligible, as not all transformations or machine
irnp1ementations infuse an otherwise ineligible claim with an 'inventive
concept."'). Moreover, .Appellant does not explain how the claimed
invention transfonns a stored-value card from an unreplenished state to a
replenished state, an activation request into a replenish request, and an
access point having no replenishment functionality into an access po int
having replenishment functionality. As such, there is nothing that
distinguishes the asserted transformations from rnanipulations of
infonnation, which is insufficient for patent-eligibility. See Elec. Pmver
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Grp., LLC v. Alstom S.A .. , 830 F.3d 1350, 1355 (Fed. Cir. 2016) (explaining
that the mere selection and manipulation of information does not transform
an abstract idea into a patent-eligible application).
Appellant also argues that, like the claims in DDR floldings,
independent claim 1 recites a so 1ution necessarily rooted in computer
technology to overcome a problem specifically arising in the realm of
computer systems. Appeal Br. 17-----19. According to Appellant, the claimed
invention avoids the expense of retrofitting the access points, i.e., front end,
to send a replenishment request instead of an activation request by
generating, at the back end, a replenishment request based on the receipt of
an activation request. Id. at 17-18 (citing Spec. ,-r 37). Appellant's
argument is not convincing.
Contrary to Appellant's argument, the expense of changing each
access point to send a replenishment request instead of an activation request
is not a problem unique to computerized access points. For example, if each
access point is a person, there would be an expense associated with training
each person to send a replenishment request instead of an activation request.
Similarly, generating, at the back end, a replenishment request based on the
receipt of an activation request does not require the use of a computer, as it
could be done by a person. Thus, unlike DDR Holdings, independent
claim 1 does not solve a problem specifically arising in the realm of
computer systems with a solution necessarily rooted in computer
technology. Said differently, we fail to see how the claimed invention is
something other than the generic computer implementation of a business
practice that generates, at the back end, a replenishment request based on the
receipt of an activation request to avoid the cost of updating every access
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point to send a replenishment request, which is insufficient for patent
eligibility. Ans. 3; see also DDR Holdings, 773 F.3d at 1256 ("[T]hese
claims [of prior cases] in substance were directed to nothing more than the
performance of an abstract business practice on the Internet or using a
conventional computer. Such claims are not patent-eligible.").
Appellant further contends that independent claim 1 recites
significantly more than the abstract idea because it provides an improvement
to the functioning of access points that handle stored-value card transactions.
Appeal Br. 13 (citing Resp. 15). More specifically, Appellant asserts that
the claimed invention transforms the access point into a computer which can
function to replenish funds on a stored-value card, in addition to performing
traditional purchasing and activating functions. Resp. 15. Appellant's
argument does not apprise us of error.
As Appellant points out, the claimed invention avoids the expense
retrofitting every access point by generating, at the back end, a replenish
request based on the receipt of an activation request. Appeal Br. 17-18
(citing Spec. i-f 37). As such, the claimed invention is not an improvement to
the access point itself. Rather, the claimed invention is an improvement to
the process for handling stored-valued card transactions, which is not
technical.
Appellant additionally alleges that independent claim 1 recites
significantly more than the abstract idea because the claim recites
meaningful features that sufficiently limit its practical application.
Appeal Br. 12-13 (citing Resp. 14). More specifically, Appellant contends
the claimed "multicard transaction computer system" is a meaningful
feature, not a generic computer. Resp. 14. We, however, fail to see how
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handling multicard transactions requires something other than generic
computer components. For instance, as explained above, the recited steps do
not effect an improvement to the computer components. Accordingly,
Appellant's argument does not apprise us of error in the Examiner's
determination that the claimed invention is nothing other than the generic
computer implementation of a business practice. Ans. 3.
Appellant also argues the Examiner erroneously believes that
Appellant must show more than two reasons why independent claim 1
recites significantly more than the abstract idea. Appeal Br. 13-14.
Appellant's argument is inapposite because, as we discuss supra, we fail to
see how the claim recites significantly more.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that independent claim 1 is patent-ineligible, i.e.,
judicially excepted from statutory subject matter. Accordingly, we sustain
the rejection of independent claim 1, with claims 2-20 falling therewith.
Rejection II: Claims 1-4 under 35 USC§ 103(a) as unpatentable over
Singh, Nix, and Schwarz
Appellant argues the Examiner has not shown that the combined
teachings of the cited prior art would have resulted in generating a
replenishment request based on receipt of an activation request for an
already activated stored-value card, as recited in independent claim 1.
Appeal Br. 22-24; Reply Br. 14--15. Appellant's argument is persuasive.
Independent claim 1 recites "receiving a stored-value card activation
request associated with the stored-value card which is already activated" and
"generating a replenish request based on receipt of the stored-value card
activation request." As such, independent claim 1 requires generating a
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replenish request based on receipt of the activation request for a stored-value
card that is already activated.
In rejecting independent claim 1, the Examiner finds Singh discloses
receiving a stored-value card activation request. Final Act. 4 (citing
Singh i-fi-f 12, 13, 15). Singh discloses that a transaction card may be
activated at a point of sale by a consumer and subsequently used to transact
business. Singh i-f 12. Although Singh may disclose receiving an activation
request for a stored-value card, the cited portions of Singh do not disclose
receiving an activation request for a stored-value card that has already been
activated.
The Examiner relies on Nix and Schwarz for teaching generating a
replenish request based on receipt of the stored-value card activation request.
Final Act. 6. Nix teaches that a merchant may obtain a consumer's
contractual consent in advance to automatically top-up or increase the
balance of a prepaid account. Nix i1 77. Similarly, Schwarz teaches that
upon enrollment, computer files 4301 through 430n are created, and files
4301 through 430n contain information that may be used to replenish the
prefunded account balances. Schwarz 7:15-30. Even if we agree with the
Examiner that Nix and Schwarz teach generating a replenishment request
based on information received with an activation request for a stored-value
card, the cited portions do not teach that the activation request is for a
stored-value card that has already been activated.
In view of the foregoing, the Examiner has not shown that the
combined teachings of the prior art would have resulted in generating a
replenishment request based on information received with an activation
request for a stored-value card that is already activated, as independent
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claim 1 requires. We, therefore, do not sustain the Examiner's rejection of
independent claim 1 and claims 2--4 depending therefrom.
Rejection III: Claim 5 under 35 US.C. § 103(a) as unpatentable over Singh,
Nix, Schwarz, Dubnicki, Marchand, and Chai
Claim 5 depends from independent claim 1, and the Examiner does
not rely on Dubnicki, Marchand, or Chai in a way that cures the deficiency
in the Examiner's rejection of independent claim 1. Final Act. 9--11.
Accordingly, for the same reasons as independent claim 1, we do not sustain
the Examiner's rejection of claim 5.
Rejection IV: Claims 6, 7, and 9--11under35 US.C. § 103(a) as
unpatentable over Nix and Schwarz
Independent claim 6 includes limitations similar to the limitations of
independent claim 1 discussed above, and independent claim 6 likewise
requires generating a replenish request based on receipt of the activation
request for a stored-value card that is already activated. The Examiner's
rejection of independent claim 6 suffers from the same deficiency as the
rejection of independent claim 1. Final Act. 12-14. Accordingly, for the
reasons discussed above in regard to independent claim 1, we do not sustain
the Examiner's rejection of independent claim 6 and claims 7 and 9--11
depending therefrom.
Rejection V: Claim 8 under 35 US.C. § 103(a) as unpatentable over Nix,
Schwarz, and Schorr
Claim 8 depends from independent claim 1, and the Examiner does
not rely on Schorr in a way that cures the deficiency in the Examiner's
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rejection of independent claim 6. Final Act. 24. Accordingly, for the same
reasons as independent claim 6, we do not sustain the Examiner's rejection
of claim 8.
Rejection VI: Claims 12-20 under 35 USC§ 103(a) as unpatentable over
Singh, Nix, Dubnicki, Marchand, Chai, and Fowler
Independent claim 12 recites similar limitations as the limitations of
independent claim 1 discussed above, and independent claim 12 likewise
requires generating a replenish request based on receipt of the activation
request for a stored-value card that is already activated. The Examiner's
rejection of independent claim 12 suffers from the same deficiency as the
rejection of independent claim 1. Final Act. 16-19. Accordingly, for the
same reasons as independent claim 1, we do not sustain the Examiner's
rejection of independent claim 12 and claims 13-20 depending therefrom.
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision to reject claims 1-20 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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