Ex Parte Arthur et alDownload PDFPatent Trial and Appeal BoardJan 11, 201811830409 (P.T.A.B. Jan. 11, 2018) Copy Citation 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. 11/830,409 07/30/2007 Steven E. Arthur 87188-722888 (079700US) 2774 20350 7590 01/16/2018 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER BRANDENBURG, WILLIAM A ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 01/16/2018 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 KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN E. ARTHUR, CHRISTOPHER L. TOOMER, SARAH OWEN, and THEODORE VANDEBURG Appeal 2016-0015851 Application 11/830,4092 Technology Center 3600 Before NINA L. MEDLOCK, BRUCE T. WIEDER, and MATTHEW S. METERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed April 24, 2015) and Reply Brief (“Reply Br.,” filed November 19, 2015), and the Examiner’s Answer (“Ans.,” mailed September 24, 2015) and Final Office Action (“Final Act.,” mailed November 26, 2014). 2 Appellants identify First Data Corporation as the real party in interest. App. Br. 3. Appeal 2016-001585 Application 11/830,409 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 12—14, 16, 18—22, 34, and 35.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED INVENTION Appellants’ claimed invention “relate[s] to payment systems supporting use of mobile electronic devices in various types of financial transactions” (Spec. 14). Claims 12 and 34, reproduced below, are the independent claims on appeal and representative of the claimed subject matter: 12. A system comprising: an acquirer system, wherein the acquirer system: generates a set of information identifying one or more marketing offers; determines one or more recipients for the marketing offers, including receiving, at the acquirer system from a service provider for one or more mobile devices, registration information identifying the one or more mobile devices; receives an authorization request from a point of sale device, the authorization request including at least financial account information received from a first mobile device; sends the authorization request to a financial institution; 3 Claims 1, 3, 4, 6, and 8—11 were cancelled by the Amendment filed February 26, 2015, which was entered by the Advisory Action mailed March 10, 2015. We treat references to these cancelled claims in the Answer (see, e.g., Ans. 2, 9) and in the Reply Brief (see, e.g., Reply Br. 2, 4) as inadvertent. 2 Appeal 2016-001585 Application 11/830,409 receives an approval message from the financial institution; and sends the approval message to the point of sale device; and a mobile wallet server communicatively coupled with a wireless communications network and the acquirer system, wherein the mobile wallet server: receives the set of information identifying the one or more marketing offers from the acquirer system; generates one or more marketing messages based on the set of information identifying the one or more marketing offers; and sends each of the one or more marketing messages to a mobile wallet application on the first mobile device via the wireless communications network wherein the first mobile device: transfers the one or more marketing messages from the first mobile device to a second mobile device, wherein messages between the first mobile device and the second mobile device when transferring the one or more marketing messages include a unique identifier generated by the first mobile device and the second mobile device. 34. A method of providing one or more marketing messages to a mobile device in a mobile commerce system, the method comprising: generating with an acquirer system a set of information identifying one or more marketing offers, the acquirer system for receiving an authorization request from a point of sale (POS) device for processing a transaction at the POS device, the authorization request including at least financial account information received from the mobile device, for sending the authorization request to a financial institution, for receiving an approval message from the financial institution, and for sending the approval message to the point of sale device; 3 Appeal 2016-001585 Application 11/830,409 determining with the acquirer system one or more recipients for the one or more marketing offers, including receiving, at the acquirer system from a service provider for one or more mobile devices, registration information identifying the one or more mobile devices; receiving at a mobile wallet server from the acquirer system the set of information identifying one or more marketing offers; generating at the mobile wallet server one or more marketing messages based on the set of information identifying the one or more marketing offers; sending each of the one or more marketing messages from the mobile wallet server to a first mobile device; transferring the one or more marketing offers based on the set of information from the first mobile device to a second mobile device; generating, by the first mobile device and the second mobile device, in combination, a unique identifier associated with the transfer; and including the unique identifier in messages between first mobile device and the second mobile when transferring the one or more marketing offers in order to correlate communications between the first mobile device and the second mobile device concerning the one or more marketing offers. REJECTIONS Claims 12—14, 16, 18—22, 34, and 35 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 12—14, 16, 18—22, 34, and 35 are rejected under 35 U.S.C. §§ 102(a) and 102(e) as anticipated by Teague et al. (US 2006/0212355 Al, pub. Sept. 21, 2006) (hereinafter “Teague”). 4 Appeal 2016-001585 Application 11/830,409 ANALYSIS Non-Statutory Subject Matter Under 35 U.S.C. § 101, 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 an implicit exception: “[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). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Incorporated, 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” id., e.g., to an abstract idea. If the claims are not directed to a patent- ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “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.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). The Court acknowledged in Mayo, that “all 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. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine 5 Appeal 2016-001585 Application 11/830,409 “whether their character as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner finds that the claims are directed to “delivering marketing messages to mobile users and transaction authorization,” i.e., to a fundamental economic practice and, therefore, to an abstract idea; and that the claims do not recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (Final Act. 3). Appellants first argue that the pending claims recite significantly more than “the Examiner’s characterized abstract idea of ‘delivering marketing messages to mobile users and transaction authorization’” because claim 34, for example, recites the involvement of an “acquirer system,” a “POS device,” a “mobile wallet server,” a “first mobile device” and a “second mobile device,” as well as numerous interactions between the acquirer system, POS device, mobile wallet server, and first mobile device and second mobile device (App. Br. 7). Appellants maintain that these components are not “‘generically recited’” devices and “‘generic computer functions’” that are well-understood, routine, and conventional activities previously known in the industry, and that this is evidenced by the fact that the claimed invention is neither disclosed nor suggested by the cited art {id. at 7—8). 6 Appeal 2016-001585 Application 11/830,409 Although claim 34 recites physical components, the focus of claim 34 is not on the improvement of any technology or technical field but instead on implementation of the abstract idea, i.e., delivering marketing messages to mobile users. In the “Brief Summary of the Invention,” for example, the Specification explicitly describes the present invention as “[mjethods, systems, and machine-readable media ... for providing marketing messages to a mobile device” (Spec. 19). We also find no indication in the Specification that any specialized hardware or inventive computer components are involved. Instead, the physical components, i.e., the acquirer system, POS device, mobile wallet server, and the first and second mobile devices, as disclosed in the Specification, are generic components (see Spec. ]Hf 40 (describing the acquirer system as “any system capable of receiving a communication from another system or entity and processing information on behalf of that entity), 43 (stating that a mobile device can include a cellular telephone, personal digital assistance (PDA), smart card, or other contactless device), 45 (describing a mobile wallet server as “a server and/or server-side process communicating with and supporting functions of a mobile wallet application), and 49 (describing the POS device as “any physical device situated at a location where a consumer may provide payment in support of a transaction”), and merely provide the generic environment in which to carry out the abstract idea. Appellants ostensibly contend that because the claimed invention is allegedly novel and non-obvious in view of the cited art, the claimed features necessarily are not “‘well-understood, routine and conventional activities previously known in the industry’” (App. Br. 8). Yet, this is not 7 Appeal 2016-001585 Application 11/830,409 the test for determining patent-eligibility under § 101. That the Examiner allegedly has found no prior art references that disclose or suggest all of the claimed features does not apprise us of error in the § 101 rejection. An abstract idea does not transform into an inventive concept just because the prior art does not disclose or suggest it. A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S. 175, 188—89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within categories of possibly patentable subject matter.”). We also are not persuaded of Examiner error by Appellants’ further argument that the claimed invention addresses problems and corresponding issues in providing marketing messages to mobile devices {id. at 8). Appellants assert that the claimed invention benefits both consumers and merchants by having marketing messages sent to mobile devices where the marketing messages and recipients are determined by an acquirer system operated by an entity that has business relationships with merchants and financial institutions and that is advantageously connected for deploying marketing messages between merchants and customers using mobile devices communicating over a service provider network {id.). However, as the Examiner observes, any alleged improvement is to a business practice, i.e., the abstract idea itself, and not to any technology or technical field (Ans. 4). Appellants’ argument that the pending claims “do not attempt to preempt every application of the idea of ‘delivering marketing messages to mobile users and transaction authorization’” (App. Br. 8) is similarly unpersuasive of Examiner error. Although the Supreme Court has described 8 Appeal 2016-001585 Application 11/830,409 “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption,” see Alice Corp., 134 S. Ct. at 2354, characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.Cir.2015) (citing Alice Corp., 134 S. Ct. at 2354). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. Responding to the Examiner’s Answer, and ostensibly challenging the Examiner’s finding that the claims require no more than generic computer components, Appellants charge that the Examiner has provided no evidence that a generic computer is capable of performing the functionality recited in the claims (Reply Br. 2). Appellants assert that a specially-programmed computer is required to perform the functions of the recited acquirer system, POS device, mobile wallet server, and first and second mobile devices, and that a specially programmed general purpose computer is, in fact, a special- purpose computer {id. (citing In reAlappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994)). However, the Federal Circuit, in Eon Corp. v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015), explicitly noted that “Alappat has been superseded by Bilski, 561 U.S. at 605-06, 130 S. Ct. 3218, and Alice Corp. v. CLS Bank Inti,----- U.S.------ , 134 S. Ct. 2347, 189 L.Ed.2d296 (2014).” And it is clear from the Supreme Court decision in Alice that merely 9 Appeal 2016-001585 Application 11/830,409 implementing an abstract idea on a general purpose computer is not patent- eligible. Further responding to the Answer, Appellants assert that several of the limitations of the claims are not taught by Teague, and that the claims are, therefore, novel and nonobvious (Reply Br. 3—4). Yet to the extent Appellants maintain that the claims necessarily contain an “inventive concept” based on their alleged novelty and non-obviousness {id.), Appellants misapprehend the controlling precedent. Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “‘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.’” Alice Corp., 134 S. Ct. at 2355. As described above, a novel and nonob vious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. We are not persuaded for the reasons set forth above that the Examiner erred in rejecting claims 12—14, 16, 18—22, 34, and 35 under 35 U.SC. § 101. Therefore, we sustain the Examiner’s rejection. Anticipation Independent Claim 34 and Dependent Claim 35 We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 34 under 35 U.S.C. §§ 102(a) and (e) because Teague does not disclose “receiving, at the acquirer system from a service provider for one or more mobile devices, registration information identifying the one or more mobile devices,” as recited in claim 34 (App. Br. 9—10). 10 Appeal 2016-001585 Application 11/830,409 The Examiner cites paragraphs 33—37, 41—46, and 88—93 of Teague as disclosing the argued limitation (Final Act. 7). However, we agree with Appellants that there is nothing in the cited portions of Teague that discloses “receiving, at the acquirer system from a service provider for one or more mobile devices, registration information identifying the one or more mobile devices,” as called for in claim 34. Instead, these paragraphs merely disclose that user profile information, e.g., contact and other identifying information and the user’s preferences for offer content and delivery, is created and transmitted by the user to the content management system (the “CMS”), which the Examiner equates to the acquirer system (see Final Act. 7). Responding to Appellants’ argument, the Examiner acknowledges that Teague discloses that the user creates the user profile, including contact and other identifying information (Ans. (citing Teague 141)). However, the Examiner notes that after the user profile is created, the user initiates communication to the CMS from the mobile device through gateway 122. And the Examiner takes the position that when the communication is made from the user’s mobile device through gateway 122, which the Examiner interprets as the “‘service provider [network] for one or more mobile devices,”’ “registration information identifying the one or more mobile devices” has been provided to the CMS (i.e., the “acquirer system”) from the gateway 122 (i.e., “service provider”), as called for in claim 34. The difficulty with the Examiner’s reasoning is that the claim requires that the acquirer system receives the registration information “from a service provider for one or more mobile devices,” i.e., from the service provider itself. We agree with Appellants that a person of ordinary skill in the art 11 Appeal 2016-001585 Application 11/830,409 would understand, from the Specification (including paragraphs 95 and 113), that the registration information is not forwarded from a mobile device using a service provider’s network, as disclosed in Teague, but instead is actually processed by the service provider and sent to the acquirer system by the service provider itself. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 34 under 35 U.S.C. §§ 102(a) and (e). For the same reasons, we also do not sustain the rejection of dependent claim 35. Independent Claim 12 and Dependent Claims 13, 14, 16, and 18—22 Independent claim 12 includes language substantially similar to the language of independent claim 34. We are persuaded that the Examiner erred in rejecting claim 12 for the same reasons set forth above with respect to claim 34. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. §§ 102(a) and (e) of independent claim 12, and claims 13, 14, 16, and 18—22, which depend therefrom. DECISION The Examiner’s rejection of claims 12—14, 16, 18—22, 34, and 35 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 12—14, 16, 18—22, 34, and 35 under 35 U.S.C. §§ 102(a) and 102(e) 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)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation