Ex Parte Arthur et al

Patent Trial and Appeal Board

Jul 31, 2018

14052397 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/052,397 10/11/2013
20350 7590 08/02/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Steven E. Arthur
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.
87188-890441 2679
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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 STEVEN E. ARTHUR, CHRISTOPHER L.
TOOMER, SARAH OWEN, and THEODORE V ANDEBURG
Appeal 2016-006265
Application 14/052,397
Technology Center 3600
Before JEREMY J. CURCURI, BARBARA A. BENOIT, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20. See Final Act. 1. We have jurisdiction under 35
U.S.C. § 6(b).
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 5-8.
Claims 1--4 are rejected under pre-AIA 35 U.S.C. § 103(a) as obvious
over Mcisaac et al. (US 2008/0222046 Al; published Sept. 11, 2008),
Chrisekos et al. (US 2003/0014357 Al; published Jan. 16, 2003), and
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Labrou et al. (US 2007 /0022058 Al; published Jan. 25, 2007). Final Act. 9--
15.
Claims 5-8, 10, and 11 are rejected under pre-AIA 35 U.S.C. § I03(a)
as obvious over Mclsaac, Chrisekos, and Labrou. Final Act. 15-23.
Claims 9, 12, and 13 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Mclsaac, Chrisekos, Labrou, and Bortolin et al. (US
2007/0057051 Al; published Mar. 15, 2007). Final Act. 23-26.
Claim 14 is rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Mclsaac, Chrisekos, Labrou, and Barron et al. (US 2003/0101346 Al;
published May 29, 2003). Final Act. 26-27.
Claims 15-19 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Mclsaac, Chrisekos, Labrou, and Bortolin. Final Act. 27-35.
Claim 20 is rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Mclsaac, Chrisekos, Labrou, Bortolin, and Barron. Final Act. 35-36.
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to "payment systems supporting use of
mobile electronic devices in various types of financial transactions." Spec.
,r 4. Claim 1 is illustrative and reproduced below:
1. A method of sending an e-receipt to a mobile
device, the method comprising:
receiving from a point of sale device of a merchant, via a
server, a communication related to a function of a mobile wallet
application executed by the mobile device, wherein the
communication relates to a purchase initiated at the point of
sale device by a previously authenticated user of the mobile
device, wherein the previously authenticated user of the mobile
device has been authenticated by the point of sale device using
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an identity credential of the user of the mobile device that has
been transmitted to the point of sale device by the mobile
device, wherein the identity credential comprises information
for authenticating or verifying the previously authenticated
user, wherein the communication comprises the identity
credential and information identifying an account of the
previously authenticated user, and wherein the point of sale
device receives the identity credential from the mobile device
via a near field communication (NFC) interface;
providing one or more mobile commerce functions
including communicating with one or more financial
institutions that maintain a plurality of financial accounts;
sending an authorization request for the purchase to the
one or more financial institutions;
receiving an approval message in response to the
authorization request from one of the one or more financial
institutions, the approval message comprising an e-receipt that
includes information related to the completion of the purchase,
wherein the information related to the completion of the
purchase comprises at least one of a dollar amount, a
transaction amount, and a transaction date; and
transmitting thee-receipt to the point of sale device for
transmission to the mobile device for storage or use by the
mobile wallet application.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
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ANALYSIS
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 1-20
Contentions
The Examiner finds
Claims 1--4 is/are directed toward performing an
authentication in a transaction event and produc[ing] a receipt.
Specifically receiving information utilizing generic technology,
comparing the received information with stored information in
order to identify options. The claim( s) does/ do not include
additional elements that are sufficient to amount to significantly
more than the judicial exception because the claims as a whole,
do not amount to significantly more than the abstract idea itself.
This is because the claims do not affect 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. The
claims merely amount to the application or instructions to apply
the abstract idea (i.e. performing a authentication) using a mobile
device and a payment processing system, and is considered to
amount to nothing more than requiring a generic mobile device
and a generic computer to merely carry out the abstract idea
itself. As such, the claims, when considered as a whole, are
nothing more than the instruction to implement the abstract idea
(i.e. authentication) in a particular, albeit well-understood,
routine and conventional technological environment. The
specifics about the abstract idea do not overcome the rejection.
Additionally, in reference to "apply it" of the test, if the first steps
are data gathering for the abstract idea and the remaining are the
abstract idea, doing them on a generic "mobile device" or a
generic "processing system" would be just "apply it".
Final Act. 5---6; see also Final Act. 6-8 (addressing claims 5-20).
The Examiner further finds "the claims are not rooted in technology
but instead are rooted in solving an identification/authentication issue
utilizing generic computer hardware and/or software. Recitation of a general
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purpose computer device and/or internet is insufficient to add 'something
more' to claims otherwise directed to abstract subject matter (See Alice)."
Ans. 2; see also Ans. 3---6 ( discussing "significantly more").
9.
Appellants present the following principal arguments:
1. The claims are not directed to an abstract idea. See App. Br. 7-
In fact, the particular problems being solved by the claims
only exist due to the existence of computer technology and
computer networks. E-receipts are clearly a product of computer
technology and computer networks. The development of mobile
device technology has enabled users to conduct purchase
transactions with mobile devices, which has necessitated the
advances in mobile authentication and e-receipt technology. As
such, the independent claims and those that depend therefrom are
not directed to an abstract idea.
App. Br. 8-9; see also Reply Br. 1.
11. The claims include elements sufficient to ensure that the claims
amount to significantly more than any abstract idea. See App. Br. 9-12; see
also Reply Br. 1-2.
Our Review
In Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), the
Supreme Court applied the framework as set forth in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) for determining
whether the claims are directed to patent-eligible subject matter. 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 [the judicially-recognized] 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
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the claims "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 78, 79).
However, the Federal Circuit has articulated that "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016). Accordingly, the Federal Circuit determined, if "the claims are
directed to a specific implementation of a solution to a problem in the
software arts," then "the claims at issue are not directed to an abstract idea."
Id. at 1339.
In the "Background of the Invention" section, Appellants'
Specification discloses the following:
[C]urrent payment systems that use contactless devices are
restricted to particular payment channels. For example, in some
systems, payment requests initiated by the use of a contactless
device are routed through a conventional debit or credit
authorization network. In other systems, payment requests are
processed offline by the device, which includes a "stored value"
account balance. In other cases, transactions involving such
stored value or pre-paid accounts are processed online by
systems maintaining account balance and other information. The
networks and systems handling credit, debit, pre-paid, and
possibly other accounts are separate from each other.
Furthermore, these networks and systems may not be compatible
or interoperable. Therefore, a device intended for use on one
network or system may not be usable on a POS device operating
on another network. Additionally, the ability of any given device
to handle more than one account or account type is limited.
Therefore, the use of such contactless devices has not
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successfully reduced the number of different forms of payment a
consumer carries.
Spec ,r 8 ( emphasis added).
In describing additional details of a system for processing transactions
utilizing a mobile electronic device according to the invention, Appellants'
Specification discloses the following:
FIG. 4 is a block diagram illustrating additional details of
the system of FIG. 3 according to one embodiment of the present
invention. In this example, the system 400 includes a mobile
device 324 such as described above. The mobile device 324 can
include a Near Field Communications (NFC) transponder 407
and can execute a mobile wallet application 408. The mobile
device 324 can be adapted to maintain at least one set of
information related to a financial account in the mobile wallet
408 and communicate at least a subset of the information related
to the financial account via the NFC transponder 407 upon
initiation of a transaction such as a purchase. In some cases, the
mobile wallet 408 of the mobile device 324 can maintain
information related to a plurality of financial accounts such as,
for example, debit accounts, demand deposit accounts, stored
value accounts, loyalty accounts under a customer loyalty
program, etc. In such cases, the mobile wallet 408 of the mobile
device 324 can be adapted to present the plurality of financial
accounts to a user of the mobile device 324 and receive a
selection of a financial account for the transaction. The mobile
device 324 can also be adapted to communicate at least a subset
of the information related to the selected financial account via
the NFC transponder 407 upon initiation of the transaction.
Spec. ,r 75 ( emphasis added). In describing an e-receipt, Appellants'
Specification further discloses the following:
According to one embodiment [illustrated in FIG. 16], the
approval message 1610 may comprise an electronic receipt.
That is, the approval message 1610 can include information
related to completion of the transaction such as a dollar amount,
time, date, payee information, and/ or other information useful to
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a user of the mobile device 324 to identify, record, and/or track
the transaction. In such a case, the POS device 310 may be
adapted to receive the approval message 1610 from the acquirer
system 312 and pass the approval message 1610 to the mobile
device 324 via the NFC transponders 406 and 407 to be stored
in or by the mobile wallet 408 of the mobile device 324.
Spec. ,r 120 ( emphasis added).
Appellants' claim 1 recites
receiving an approval message in response to the
authorization request from one of the one or more financial
institutions, the approval message comprising an e-receipt that
includes information related to the completion of the purchase,
wherein the information related to the completion of the purchase
comprises at least one of a dollar amount, a transaction amount,
and a transaction date; and
transmitting the e-receipt to the point of sale device for
transmission to the mobile device for storage or use by the
mobile wallet application.
App. Br. Claims Appendix.
We agree with Appellants that "E-receipts are clearly a product of
computer technology and computer networks. The development of mobile
device technology has enabled users to conduct purchase transactions with
mobile devices, which has necessitated the advances in mobile
authentication and e-receipt technology." App. Br. 8-9.
Accordingly, Appellants' claim provides receiving an e-receipt from a
financial institution, and transmitting thee-receipt to the point of sale device
for transmission to the mobile device. Thus, Appellants' claimed invention
is directed to an e-receipt in the context of a mobile wallet application on a
mobile device, and thee-receipt does not exist without the computer
technology and computer networks. See Spec. ,r,r 8, 75, 120.
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To the extent Appellants' claimed invention is considered an abstract
idea, such claimed invention is a "specific asserted improvement in
computer capabilities" rather than "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." See Enfzsh, 822
F.3d at 1335-36. Accordingly, because "the claims are directed to a specific
implementation of a solution to a problem in the software arts," claim 1 is
not directed toward an abstract idea. See id. at 13.
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 101. We also do not sustain the rejection of claims 2-20
for the same reasons discussed with respect to claim 1.
THE OBVIOUSNESS REJECTION OF CLAIMS 1--4 OVER MCISAAC, CHRISEKOS,
ANDLABROU
Contentions
The Examiner finds Mclsaac, Chrisekos, and Labrou teach all
limitations of claim 1. Final Act. 9-13; see also Ans. 6-13. The Examiner
uses Mclsaac as the primary reference. See Final Act. 9-13.
The Examiner finds Chrisekos teaches
wherein the communication relates to a purchase initiated at the
point of sale device by a previously authenticated user of the
mobile device, wherein the previously authenticated user of the
mobile device has been authenticated by the point of sale device
using an identity credential of the user of the mobile device that
has been transmitted to the point of sale device by the mobile
device, wherein the identity credential comprises information for
authenticating or verifying the previously authenticated user,
wherein the communication comprises the identity credential and
information identifying an account of the previously
authenticated user
as recited in claim 1. Final Act. 11-12. The Examiner reasons
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It would have been obvious to expand the teaching ofMcisaac to
include the teaching of Chrisekos since Chrisekos teaches the
motivation of providing a system for registering for a mobile
transaction a mobile device in order to provide secure
transactions and payment option in an interactive medium
customized by the user with a plurality of mobile device devices.
Final Act. 12.
The Examiner finds Labrou teaches "wherein the point of sale device
receives the identity credential from the mobile device via a near field
communication (NFC) interface" as recited in claim 1. Final Act. 13. The
Examiner reasons
It would have been obvious to expand the communication
between the transaction device of the customer and POS device
of Mclsaac to include the communication systems as taught by
Labrou since Labrou teaches the motivation of a near field
communication system at a POS terminal in order to utilize
wireless technology and to identify the transacting party.
Final Act. 13.
In the Examiner's Answer, the Examiner further finds "[t]here is no
explicit limitation in the claims that negates the 'anonymity' of the prior art
[in Mclsaac]." Ans. 7; see also Ans. 12 ("encrypted information shared [in
Mclsaac] is still shared information").
Appellants present the following principal arguments:
1.
[C]ombining such an identity credential of Chrisekos with the
anonymous transaction device of Mclsaac would necessitate the
sharing of user information with a merchant, thus rendering the
intended purpose - anonymity of a buyer - of Mclsaac
inoperable. Moreover, Mclsaac teaches away from being
combined with any secondary reference related to sharing such
identifying information with a merchant, as such a combination
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would impennissibly render Mcisaac inoperable for its intended
purpose.
App. Br. 14--15; see also Reply Br. 3 ("while [in Mcisaac] the merchant may
possess a packet of information from the buyer, the merchant is unable to
decrypt and access any of this information.") and Reply Br. 6 ("the
merchant's point of sale systems [in Mcisaac] do not authenticate users
based on an identity credential to maintain the anonymity of the buyer").
11.
Mcisaac relates to a method and system for effecting anonymous
credit card purchases over the Internet and does not disclose in-
person transactions, there is no motivation to combine the online
transaction system of Mcisaac with an in person transaction
system of Labrou. Additionally, in Mcisaac a buyer transmits
the information directly to the 3rd party security server system for
encryption. Thus, there is no way that the identity credential is
received by the merchant (point of sale device) using NFC, as
that would require the unencrypted identifying information to be
received by the merchant from the mobile device. Thus, the
anonymity of the transaction would be destroyed.
App. Br. 15; see also Reply Br. 9 ("there is no way that the identity
credential is received by the merchant (point of sale device) using NFC, as
that would require the unencrypted identifying information to be received by
the merchant from the mobile device").
Our Review
Mcisaac, in its pertinent part, discloses a "Method and System for
Effecting Anonymous Credit Card Purchases over the Internet." Mclsaac
Title. Mcisaac further discloses a merchant server system, a buyer system, a
security server system "receiving buyer information from the buyer system,
encrypting the buyer information in an encryption key that prevents the
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merchant server system from decrypting the buyer information, and
transferring the encrypted buyer information to the merchant server system."
Mcisaac Abstract. "[T]he merchant server system transmits at least a
portion of the encrypted buyer information to [a] third server system for
processing during the transaction." Id.
Thus, in Mcisaac, the merchant server system is prevented from
understanding the "buyer information" because the "buyer information" is
encrypted by the security system server before reaching the merchant server
system. See Mcisaac Abstract.
Chrisekos, in its pertinent part, discloses "receiving a customer ID and
a transaction information from a transaction provider." Chisekos Abstract.
Labrou, in its pertinent part, discloses near field communication.
Labrou ,r 185.
We are persuaded by Appellants' argument (i) that combining
Chrisekos with Mcisaac would render Mcisaac inoperable for its intended
purpose-anonymity of the buyer. Further, contrary to the Examiner's
position (see Ans. 7, 12), we conclude that the claim language does require a
lack of anonymity. For example, claim 1 recites "wherein the previously
authenticated user of the mobile device has been authenticated by the point
of sale device using an identity credential of the user of the mobile device
that has been transmitted to the point of sale device by the mobile device."
In order for the point of sale device to authenticate the user of the mobile
device, a lack of anonymity is required.
Accordingly, the Examiner's reasons (see Final Act. 12) for
combining Chrisekos with Mcisaac lack a rational underpinning because the
language of claim 1 requires a lack of anonymity, and modifying Mcisaac to
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eliminate anonymity of the buyer renders Mcisaac inoperable for its
intended purpose-anonymity of the buyer.
We are similarly persuaded by Appellants' argument (ii) that
combining Labrou with Mcisaac would render Mcisaac inoperable for its
intended purpose-anonymity of the buyer.
We, therefore, do not sustain the Examiner's rejection of claim 1. We
also do not sustain the Examiner's rejection of claims 2--4, which depend
from claim 1.
THE OBVIOUSNESS REJECTION OF CLAIMS 5-8, 10, AND 11 OVER MCISAAC,
CHRISEKOS, AND LABROU
Independent claim 5 recites limitations similar to the limitations of
claim 1 discussed above; claims 6-8, 10, and 11 depend from claim 5. The
Examiner's findings for this ground of rejection do not cure the deficiencies
discussed above with respect to claim 1. See Final Act. 15-23; see also
Ans. 13.
We, therefore, do not sustain the Examiner's rejection of claims 5-8,
10, and 11.
THE OBVIOUSNESS REJECTION OF CLAIMS 9, 12, AND 13 OVER MCISAAC,
CHRISEKOS, LABROU, AND BORTOLIN
Claims 9, 12, and 13 depend from claim 5, which recites limitations
similar to the limitations of claim 1 discussed above. The Examiner's
findings for this ground of rejection do not cure the deficiencies discussed
above with respect to claim 1. See Final Act. 23-36; see also Ans. 13-14.
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We, therefore, do not sustain the Examiner's rejection of claims 9, 12,
and 13.
THE OBVIOUSNESS REJECTION OF CLAIM 14 OVER MCISAAC, CHRISEKOS,
LABROU, AND BARRON
Claim 14 depends from claim 5, which recites limitations similar to
the limitations of claim 1 discussed above. The Examiner's findings for this
ground of rejection do not cure the deficiencies discussed above with respect
to claim 1. See Final Act. 26-27; see also Ans. 13-14.
We, therefore, do not sustain the Examiner's rejection of claim 14.
THE OBVIOUSNESS REJECTION OF CLAIMS 15-19 OVER MCISAAC, CHRISEKOS,
LABROU, AND BORTOLIN
Claims 15-19 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Mcisaac, Chrisekos, Labrou, and Bortolin. Final Act. 27-35.
Independent claim 15 recites limitations similar to the limitations of
claim 1 discussed above; claims 16-19 depend from claim 15. The
Examiner's findings for this ground of rejection do not cure the deficiencies
discussed above with respect to claim 1. See Final Act. 27-25; see also
Ans. 13.
We, therefore, do not sustain the Examiner's rejection of claims 15-
19.
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THE OBVIOUSNESS REJECTION OF CLAIM 20 OVER MCISAAC, CHRISEKOS,
LABROU, BORTOLIN, AND BARRON
Claim 20 depends from claim 15, which recites limitations similar to
the limitations of claim 1 discussed above. The Examiner's findings for this
ground of rejection do not cure the deficiencies discussed above with respect
to claim 1. See Final Act. 35-36; see also Ans. 14.
We, therefore, do not sustain the Examiner's rejection of claim 20.
ORDER
The Examiner's decision rejecting claims 1-20 is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
REVERSED
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