Ex Parte ANSARI

Patent Trial and Appeal Board

Aug 21, 2018

13619226 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/619,226 09/14/2012
15608 7590
Blackhawk Network, Inc.
5700 Granite Parkway
Suite 330
Plano, TX 75024
08/21/2018
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.
4556.14603 2674
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
08/21/2018 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
Appeal2017-004496
Application 13/619,226
Technology Center 3600
Before ERIC B. CHEN, DAVID J. CUTITT A II, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-20, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's 1 invention relates to the approving and distributing of
transaction credits to a designated recipient in real-time. (Abstract.)
Claims 1, 11, and 20 are independent claims. Claim 1 is exemplary,
with disputed limitations in italics:
1 According to Appellant, the real party in interest is Blackhawk Network,
Inc. (App. Br. 3.)
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Application 13/619,226
1. A system for providing a transaction credit, the
system comprising a reception processor, a decision processor,
and a response processor which execute instructions provided by
a non-transitory computer readable medium, causing:
the reception processor to receive a transaction credit
request, wherein the request may be received through an
application programming interface based on representational
state transfer;
the decision processor to determine approval of the
request;
an accessible resource encoded in the non-transitory
computer-readable medium to interface with the reception
processor, the decision processor, and the response processor of
the system; and
the response processor to distribute an approved
transaction credit and/or an alternate message,
wherein the reception, decision, and response processors
interface with each other to coincidentally receive a user request,
determine approval of the request, create a transaction credit
account, and distribute the approved transaction credit to a user
or third party,
wherein the transaction credit request is an activation or
redemption transaction associated with a product and the
transaction credit is associated with the product in a catalog of
products available in the accessible resource.
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 2, 4, 11, 12, 13, 14, and 20 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Erikson (US 2007/0228153 Al; publ. Oct. 4,
2007), Khosravy (US 2009/0319348 Al; publ. Dec. 24, 2009), and Smith
(US 2010/0125510 Al; publ. May 20, 2010).
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Claims 3, 7, and 17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Erikson, Khosravy, Smith, and Ahlers (US 2009/0254441
Al; pub 1. Oct. 8, 2009).
Claims 5 and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Erikson, Khosravy, Smith, and Zalik (US 2008/0177655
Al; publ. July 24, 2008).
Claims 6 and 16 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Erikson, Khosravy, Zalik, Smith, and Ross (US
2012/0265681 Al; publ. Oct. 18, 2012).
Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Erikson, Khosravy, Smith, and Goermer (US
2011/0035446 Al; publ. Feb. 10, 2011).
Claim 9 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Erikson, Khosravy, Smith, and Zara (US 2002/0169648 Al; publ. Nov. 14,
2002).
Claims 10 and 19 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Erikson, Khosravy, Smith, and Benkert (US
2011/0125645 Al; publ. May 26, 2011).
ANALYSIS
§ 101 Re} ection
We are unpersuaded by Appellant's arguments (App. Br. 19-46; see
also Reply Br. 8-11) that independent claims 1, 11, and 20 are directed to
patent-eligible subject matter under 35 U.S.C. § 101.
The Examiner found that "claims 1-20 ... are directed to an abstract
idea of creating and distributing transaction credit" which "is similar to an
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Application 13/619,226
idea of itself found by the courts to be abstract ideas ( e.g., obtaining and
comparing intangible data in Cybersource)." (Ans. 12; see also Final
Act. 5.) The Examiner further states, "claims 1-20, as a whole, do not
amount to significantly more than the abstract idea itself' because
these claims do not effect an improvement to another technology
or technical field; the claims do not amount to an improvement
to the functioning of a computer itself; and the claims do not
move beyond a general link of the use of an abstract idea to a
particular technological environment.
(Ans. 13.) We agree with the Examiner's findings and ultimate conclusion
that the claims are directed to non-statutory subject matter.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this "provision
contains an important implicit exception: [l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (internal citaiton and quotation
marks omitted); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature, though just discovered, mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work"). Notwithstanding that a law of nature or an abstract
idea, by itself, is not patentable, the application of these concepts may be
deserving of patent protection. Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71-72 (2012). In Mayo, the Court stated that "to
transform an unpatentable law of nature into a patent-eligible application of
such a law, one must do more than simply state the law of nature while
adding the words 'apply it."' Mayo, 566 U.S. at 72 (internal citation
omitted).
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In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "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. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id.
If the claims are directed to a patent-ineligible concept, then the
second step in the analysis is to consider the elements of the claims
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "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. (brackets in original) (quoting Mayo, 566
U.S. at 72-73). "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. at 2357 (brackets in
original) (quoting Mayo, 566 U.S. at 77-78). The prohibition against
patenting an abstract idea "cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post[-]solution activity." Bilski v. Kappas, 561 U.S. 593, 610-
11 (2010) (internal citation and quotation marks omitted). The Court in
Alice noted that "' [ s ]imply appending conventional steps, specified at a high
level of generality,' was not 'enough' [in Mayo] to supply an 'inventive
concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83,
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77-78, 72-73).
Alice Step One: Are the claims at issue
directed to a patent-ineligible concept?
Claim 1 is a system claim, which recites a "non-transitory computer
readable medium" for performing several steps, each of which can be
performed in the human mind or by a human using pen and paper.
The steps of "receiv[ing] a transaction credit request," "determin[ing]
approval of the request," and "distribut[ing] an approved transaction credit,"
as recited in claim 1, can be performed in the human mind or by a human
using pen and paper. For example, a person can receive an in-person request
for a transaction credit, approve the request by cross referencing the
requester's name with a ledger, and manually provide the requester with a
voucher for the transaction credit.
Because all the steps of claim 1 can either be performed by human
thought alone, or by a human using pen and paper, claim 1 is directed to a
patent-ineligible abstract idea. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ("[U]npatentable mental
processes" include "steps [that] can be performed in the human mind, or by
a human using a pen and paper"). Claim 11, a corresponding method claim,
and claim 20, a corresponding non-transitory computer-readable medium
claim, recite limitations similar to those discussed with respect claim 1.
Thus, claims 11 and 20 are also directed to a patent-ineligible abstract idea.
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Step Two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent-ineligible concept?
Because claims 1, 11, and 20 are directed to an abstract idea, the
question to be settled next, according to Alice, is whether these claims recite
an element, or combination of elements, that is enough to ensure that the
claim is directed to significantly more than an abstract idea.
Claim 1 is a system claim, which recites a "computer readable
medium," a "reception processor," a "decision processor," and a "response
processor." Claim 11, a corresponding method claim, and claim 20, a
corresponding non-transitory computer-readable medium claim, recite
similar limitations. With respect to the claimed hardware components,
Appellant's Specification discloses the following:
In some embodiments, the accessible resource may be encoded
in a computer-readable medium configured to interface with any
of the processors or applications of the disclosed system( s ),
method(s), or apparatus. A computer-readable medium may
include a single medium or multiple media, such as but not
limited to a centralized or distributed database, and/or associated
caches and servers that store one or more sets of instructions. A
computer-readable medium may also include any medium that is
capable of storing, encoding or carrying a set of instructions for
execution by a processor or that cause a computer system to
perform any one or more of the methods or operations disclosed
herein.
The application programming interface 104 may facilitate
interaction with a user, such as but not limited to a client or a
customer software program. The at least one processor 106 is
configured to interface with a memory unit 114, and may be
portioned to comprise a reception processor 108, a decision
processor 110, and a response processor 112 configured to
interface with each other, alternatively the processor 106 may be
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configured to perform the functions of the reception processor
108, the decision processor 110, and the response processor 112
sans partioning.
The generalized functional terms by which the computer components
are described reasonably indicate that Appellant's Specification discloses:
(i) a conventional computer-readable medium (i-f 32); (ii) conventional
processors, including reception processor 108, decision processor 110, and
response processor 112 (i-f 51). In view of Appellant's Specification, the
claimed hardware components, including the "computer readable medium,"
the "reception processor," the "decision processor," and the "response
processor" reasonably may be determined to be generic, purely conventional
computer elements. Thus, the claims do no more than require generic
computer elements to perform an abstract idea, rather than improve
computer capabilities.
Accordingly, appending a conventional "computer readable medium,"
"reception processor," "decision processor," and "response processor" to an
abstract idea is not enough to transform the abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention").
First, Appellant argues that "[i]nstead of disproportionately tying up
the use of the alleged abstract idea of 'creating and distributing transaction
credit' in all fields, others are free to perform 'creating and distributing
transaction credit' in myriad other ways which do not involve the specific
tasks ... recited in Appellant's claims" (App. Br. 23-24), and accordingly,
"[b ]ecause Appellant's claims clearly do not seek to tie-up or pre-empt
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others from 'creating and distributing transaction credit' in all fields at least
for the reasons identified above, the streamlined analysis for patent
eligibility applies to Appellant's claims" (id. at 24). However, although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Where claims are deemed to recite only patent ineligible subject matter
under the two-step Alice analysis, as they are here, "preemption concerns are
fully addressed and made moot." Id.
Second, Appellant argues that "the claims require the utilization of
distributed processors (the reception processor, the decision processor, and
the response processor) which interface with each other and are dedicated to
perform the specific tasks recited in Appellant's claims" and accordingly,
"Appellant's claims result in 'an improvement to computer-related
technology,' namely, the recitation that the computer system which is
configured to operate, via distributed, interfaced processors to overcome
problems associated with effort and time delay traditional systems impart to
customers for activating a card." (App. Br. 30.) However, Appellant has
not adequately explained the way in which the claim "purport[ s] to improve
the functioning of the computer itself' or "any other technology or technical
field." Alice, 134 S. Ct. at 2359. In particular, Appellant has not explained
why the approval of a transaction credit, which can be performed in the
human mind or by a human using pen and paper, improves the function of a
computer or other technology.
Third, Appellant argues that "the Examiner fails to provide a
comparison of the alleged abstract idea of' creating and distributing
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transaction credit on a computer' to any other similar concept that a court
has determined to be an abstract idea." (App. Br. 31-32.) Contrary to
Appellant's arguments, the Examiner has identified the appropriate judicial
exception as "an 'idea of itself"' and has properly compared the claimed
concepts of independent claim 1 to a prior Federal Circuit decision,
CyberSource. (Ans. 12; see also Final Act. 5.) Moreover, for Alice step
one, "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 (Isr.) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
Fourth, Appellant argues that "the instant claims are directed to a
specific improvement to technologies in the marketplace, e.g., facilitating
more efficient transaction credit transactions via the interfacing of various
system processors ( distributed processing) and said processors
coincidentally performing various transaction activities (reduced processing
time)" and "[ s ]uch technological improvements are patent eligible." (App.
Br. 35.) However, as discussed previously, Appellant's Specification,
provides sufficient basis that the claimed hardware components are generic,
purely conventional computer elements and accordingly, supports the
conclusion that claim 1 does not recite significantly more than the abstract
idea.
Fifth, Appellant argues that "the claims are all tied to a machine or
apparatus, i.e., the tasks recited in the claims are performed by and through
the reception, decision, and response processors of the system" (App.
Br. 37), and thus, "claims which satisfy the 'machine or transformation' test
comprise patent eligible subject matter" (id. at 36). However, although "the
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machine-or-transformation test is a useful and important clue, and
investigative tool" such test "is not the sole test for deciding whether an
invention is a patent-eligible 'process."' Bilski v. Kappas, 561 U.S. 593, 604
(2010).
Sixth, Appellant argues that "Appellant's claims result in
'improvements to the functioning of the computer itself,' namely, that
"Appellant's claims are patent eligible because the recited tasks are
implemented by and through a computer system which provides a solution
necessarily rooted in computer technology in order to overcome problems
associated with effort and time delay traditional systems impart to customers
attempting to activate a prepaid card." (App. Br. 46.) Appellant has not
adequately explained why the claim "purport[ s] to improve the functioning
of the computer itself' or "any other technology or technical field." Alice,
134 S. Ct. at 2359. In particular, Appellant has not explained why the
approval of a transaction credit, which can be performed by a human using
pen and paper, improves the function of a computer or other technology.
Last, Appellant argues that "the instant claims do not recite 'an idea of
itself because the instant claims cannot be performed entirely by a human,
i.e., the instant claims cannot be performed without a machine." (Reply
Br. 11.) However, as discussed previously, Appellant has not demonstrated
the steps of "receiv[ing] a transaction credit request," "determin[ing]
approval of the request," and "distribut[ing] an approved transaction credit,"
which can be performed in the human mind or by a human using pen and
paper, improve the function of a computer or other technology. Moreover,
"the inability for the human mind to perform each claim step does not alone
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confer patentability." FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1098 (Fed. Cir. 2016).
Thus, we agree with the Examiner that claims 1, 11, and 20 are
directed towards patent-ineligible subject matter. Accordingly, we sustain
the rejection of independent claims 1, 11, and 20 under 35 U.S.C. § 101.
Claims 2-10 and 12-19 depend from independent claims 1 and 11.
We sustain the rejection of claims 2-10 and 12-19 under 35 U.S.C. § 101
for the same reasons discussed with respect to independent claims 1 and 11.
§ 103 Rejection-Erikson, Khosravy, and Smith
We are persuaded by Appellant's arguments (App. Br. 16) that the
combination of Erikson, Khosravy, and Smith would not have rendered
obvious independent claim 1, which includes the limitation "wherein the
reception, decision, and response processors interface with each other to
coincidentally receive a user request, determine approval of the request,
create a transaction credit account, and distribute the approved transaction
credit to a user or third party."
The Examiner found that computer system 300 of Erikson, which
includes processor 304 connected to communication infrastructure 306,
corresponds to the limitation "wherein the reception, decision, and response
processors interface with each other to coincidentally receive a user request,
determine approval of the request, create a transaction credit account, and
distribute the approved transaction credit to a user or third party." (Final
Act. 7; see also Ans. 4.) We do not agree with the Examiner's findings.
Erikson relates to "using an identification card to obtain ...
transaction accounts." (i-f 2.) Figure 2 of Erikson includes a flowchart
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illustrating process 200 (i-f 13), including step 222, in which "the result of the
decision is transmitted back to the credit requester ( e.g., the store merchant)"
and step 224, in which "the transaction account is then either approved or
rejected in step 224" (i-f 33). Figure 3 of Erikson illustrates a block diagram
of computer system 300 for generating a transaction account with the use of
a consumer's identification card. (i1i114--15.) Erikson explains that "[t]he
computer system 300 includes one or more processors, such as processor
304" and "[t]he processor 304 is connected to a communication
infrastructure 306 (e.g., a communications bus, cross-over bar, or network)."
(i136.)
Although the Examiner cited to computer system 300 of Erikson and
Figure 2 of Erikson, in which credit transactions are approved, the Examiner
has provided insufficient evidence to support a finding that Erikson teaches
the limitation "wherein the reception, decision, and response processors
interface with each other to coincidentally receive a user request, determine
approval of the request, create a transaction credit account, and distribute the
approved transaction credit to a user or third party." While Erikson explains
that credit transactions can be approved and that computer system 3 00
includes one or more processors, Erikson is silent with respect the function
of each individual processor. Therefore, on this record, the Examiner has
not demonstrated that Erikson teaches the limitation "wherein the reception,
decision, and response processors interface with each other to coincidentally
receive a user request, determine approval of the request, create a transaction
credit account, and distribute the approved transaction credit to a user or
third party."
We are, therefore, persuaded by Appellant's arguments that
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Erikson fails to disclose that the processor 304 (i.e., the one of
"one or more processors") interfaces with other processors to
accomplish any sort of task ( e.g., Erikson fails to disclose the
reception, decision, and response processors of Appellant's
claims which interface to coincidentally perform the recited
functions) ....
(App. Br. 16 ( emphasis omitted).)
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a). Claims 2 and 4 depend from claim 1. We do not
sustain the rejection of claims 2 and 4 under 35 U.S.C. § 103(a) for the same
reasons discussed with respect to claim 1.
Independent claims 11 and 20 recite limitations similar to those
discussed with respect to claim 1. We do not sustain the rejection of
claims 11 and 20, as well as its dependent claims 12, 13, and 14, for the
same reasons discussed with respect to claim 1.
§ 103 Rejection-Erikson, Khosravy, Smith, and Ahlers
Claims 3, 7, and 1 7 depend from independent claims 1 and 11. Ahlers
was cited by the Examiner for teaching the additional features of claims 3, 7,
and 17. (Final Act. 8-9.) However, the Examiner's application of Ahlers
does not cure the above noted deficiencies of Erikson, Khosravy, and Smith.
§ 103 Rejection-Erikson, Khosravy, Smith, and Zalik
Claims 5 and 15 depend from independent claims 1 and 11. Zalik was
cited by the Examiner for teaching the additional features of claims 5 and
15. (Final Act. 10.) However, the Examiner's application of Zalik does not
cure the above noted deficiencies of Erikson, Khosravy, and Smith.
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§ 103 Rejection-Erikson, Khosravy, Zalik, Smith, and Ross
Claims 6 and 16 depend from independent claims 1 and 11. Ross was
cited by the Examiner for teaching the additional features of claims 6 and
16. (Final Act. 10-11.) However, the Examiner's application of Ross does
not cure the above noted deficiencies of Erikson, Khosravy, Zalik, and
Smith.
§ 103 Rejection-Erikson, Khosravy, Smith, and Goermer
Claims 8 and 18 depend from independent claims 1 and 11. Goermer
was cited by the Examiner for teaching the additional features of claims 8
and 18. (Final Act. 11-12.) However, the Examiner's application of
Goermer does not cure the above noted deficiencies of Erikson, Khosravy,
and Smith.
§ 103 Rejection-Erikson, Khosravy, Smith, and Zara
Claim 9 depends from independent claim 1. Zara was cited by the
Examiner for teaching the additional features of claim 9. (Final Act. 12-13.)
However, the Examiner's application of Zara does not cure the above noted
deficiencies of Erikson, Khosravy, and Smith.
§ 103 Rejection-Erikson, Khosravy, Smith, and Benkert
Claims 10 and 19 depend from independent claims 1 and 11. Benkert
was cited by the Examiner for teaching the additional features of claims 10
and 19. (Final Act. 13-14.) However, the Examiner's application of
Benkert does not cure the above noted deficiencies of Erikson, Khosravy,
and Smith.
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DECISION
The Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision rejecting claims 1-20 under 35 U.S.C.
§ 103(a) is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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