Ex Parte Ballout

Patent Trial and Appeal Board

May 31, 2018

14691499 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/691,499 04/20/2015
28357 7590
SAMUEL A. KASSA TL Y
20690 View Oaks Way
SAN JOSE, CA 95120
05/31/2018
FIRST NAMED INVENTOR
Rabih S. Bailout
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.
BAL-005.CIPl.Cl 7055
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
05/31/2018 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 RABIH S. BALLOUT
Appeal2017-001029
Application 14/691,499
Technology Center 3600
Before JOHN A. EV ANS, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-13. App. Br. 4. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellant identifies the real party in interest as Rabih S. Ballout.
App. Br. 4.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed January 21, 2016; the Appeal Brief ("App. Br.") filed June 23, 2016;
the Examiner's Answer ("Ans.") mailed September 6, 2016; and the Reply
Brief ("Reply Br.") filed October 22, 2016.
Appeal2017-001029
Application 14/691,499
THE INVENTION
Appellant's invention relates to financial transactions in a mobile-
telecommunications environment. Abstract. In Appellant's system, users do
not need to tender a financial instrument to deposit, withdraw, transfer, and
exchange currency, commodities, and coupons. Id. Rather, the invention
uses a code transmitted from a mobile device. Spec. ,r 30. In one
embodiment, the user's mobile device generates a code with information
related to a financial transaction. Id. ,r 122. The user's mobile device then
transfers the code to an ATM to carry out the transaction. Id. According to
the Specification, Appellant's system prevents fraud, among other
advantages. Id.
Claim 1 is reproduced below:
1. A method to provide a cashless platform that prevents
fraudulent transactions by supervising and controlling the
execution of a financial transaction, without tendering a financial
instrument, such as a credit card or a check, the method
compnsmg:
a user mobile station recognizing a proximately located
financial station and establishing communication with a mobile
transaction platform;
wherein the financial station interfaces with a financial
institution;
the mobile transaction platform recognizing the financial
institution;
the financial institution recognizing the mobile transaction
platform, and establishing direct communication with the mobile
transaction platform;
entering financial information related to a financial
transaction on the user mobile station;
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the user mobile station generating a code containing the
financial information on the user mobile station and identifying
the type of the financial transaction;
the user mobile station automatically transferring the
generated code to the mobile transaction platform;
the mobile transaction platform automatically transmitting
the code to the financial institution;
based on the transferred code, the financial institution
determines whether to accept or decline the financial transaction;
wherein when the financial transaction is accepted by the
financial institution, the financial station directly executing the
financial transaction;
wherein when the financial transaction is declined by the
financial institution, the financial station preventing the
execution of the financial transaction; and
the financial station transmitting a reverse code to the user
mobile station, to confirm whether the financial transaction was
either accepted or declined by the financial station.
THE REJECTI0N3
Claims 1-13 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2-3.
ANALYSIS
The Examiner rejected representative4 claim 1 under 35 U.S.C. § 101
because the claim as a whole (1) is directed to an abstract idea and (2) does
3 The Examiner has withdrawn the provisional obviousness-type double-
patenting rejection of claims 1-13. Ans. 2.
4 Appellant argues claims 1-13 together. See App. Br. 9-50. We select
independent claim 1 as representative of claims 1-13. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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not contain an "inventive concept" sufficient to transform the claimed
abstract idea into a patent-eligible application. Final Act. 2-3. For the
reasons discussed below, Appellant has not persuaded us of error.
I
The Supreme Court's two-step framework guides our analysis. See
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014).
According to step one, "[ w ]e must first determine whether the claims at
issue are directed to a patent-ineligible concept," such as an abstract idea.
Id.
Claim 1 recites a method for "preventing fraudulent transactions."
The recited method prevents fraud by supervising and controlling a financial
transaction in a cashless platform. According to the claim, the user does not
have to tender a financial instrument, such as a credit card or check. The
claimed method recites a "user mobile station" and a "mobile transaction
platform" to carry out the method steps. These elements generate and
exchange codes, as claimed. According to Appellant, this invention relates
to protecting financial transactions from fraud, and thus is not a judicial
exception. App. Br. 38.
Preventing fraudulent financial transactions, however, is not a
problem rooted in technology. Rather, preventing fraud is a business
problem that existed before the Internet and computers. Spec. ,r 20
(discussing counterfeiting paper notes); see also App. Br. 12. Here, the
claim is directed to a concept relating to commerce and the economy, like
other claims that the courts have described as "fundamental economic
practices." See, e.g., Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1054 (Fed. Cir. 2017) (explaining that processing an application for
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financing a purchase is a "fundamental economic practice"); In re Smith,
815 F.3d 816, 818-19 (Fed. Cir. 2016) (concluding that a wagering game's
rules compare to other "fundamental economic practice[s]" found abstract);
accordMPEP § 2106.04(a)(2) I. (9th ed. Rev. 08.2017, Jan. 2018) ("The
courts have used the phrases 'fundamental economic practices' or
'fundamental economic concepts' to describe concepts relating to the
economy and commerce, such as agreements between people in the form of
contracts, legal obligations, and business relations."). In this regard, we
agree with the Examiner that the claims are directed to a fundamental
economic practice. Final Act. 3.
To be sure, the claims recite computer components. But the claims
are not directed to an improvement to the computer's capabilities. Rather,
the claims use the computer as a tool to carry out the abstract idea. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)
("[T]he first step ... 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.").
For example, the recited computer components are used for
exchanging data to carry out the transaction, instead of improving how the
data is transmitted or created. Here, the claimed method carries out the
fraud-prevention steps on generic computers. Accord App. Br. 3 8. In this
way, Appellant's claims are similar to those deemed abstract ideas by our
reviewing court where the computer was used as a tool to detect or prevent
fraud. See, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093-94 (Fed. Cir. 2016) ( finding ineligible claims directed to detecting
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fraud or misuse in a computer environment); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (finding ineligible
claims directed to detecting fraud in financial transaction between a
consumer and merchant). Similarly, the Federal Circuit has also found
claims "directed to the formation of financial transactions in a particular
field ... and data collection related to such transactions" to be abstract.
Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1372
(Fed. Cir. 2017).
On this record, we are unpersuaded that the Examiner erred in
concluding that claim 1 is directed to an abstract idea.
II
Because the claim is "directed to an abstract idea," we analyze the
claim to determine if the limitations, when considered both "individually and
as an ordered combination" contain an "inventive concept" sufficient to
transform the claimed "abstract idea" into a patent-eligible application.
Alice, 134 S. Ct. at 2355-58.
We agree with the Examiner that the claim lacks an inventive concept.
Final Act. 3.
Appellant argues that the Examiner has not met their burden to
explain why the claim is unpatentable. App. Br. 41--46; see also
Reply Br. 2-5. Appellant contends that the Examiner has presented
unsupported conclusions that the claim does not recite significantly more
than the abstract idea itself. See id. In Appellant's view, the Examiner has
failed to consider the invention as a whole and ignores the goal of the
invention-i.e., fraud prevention. See id. at 41--49. We disagree.
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To be sure, "[ w ]hether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination." Berkheimer v. HP Inc., 881 F.3d 1360, 1369
(Fed. Cir. 2018). Although the Examiner makes broad and generalized
statements about what constitutes a prima facie case, the Examiner,
nevertheless, expressly supports the rejection by referring to court decisions
that recognize the well-understood, routine, and conventional nature of the
additional elements. See Final Act. 14 (citing July 2015 Update: Subject
Matter Eligibility 7 (July 30, 2015), https://www.uspto.gov/sites/default/
files/documents/ieg-july-2015-update.pdf ("Examiner Guidance")). For
instance, the Examiner finds that the recited transmitting is a general
function and refers to page 7 of the Examiner Guidance. Final Act. 14. And
as the cited page of the Examiner Guidance points out, the Federal Circuit
has recognized that the function of "receiving or transmitting data" as well-
understood, routine, and conventional. See, e.g., buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (explaining that "computers in
Alice were receiving and sending information over networks connecting the
intermediary to the other institutions involved, and the Court found the
claimed role of the computers insufficient"), cited in Examiner Guidance, 7
n. 25. The Examiner further finds that these limitations do not add
significantly more to the abstract idea itself. See, e.g., Final Act. 3, 14.
We agree with the Examiner's findings. To the extent that the method
relies on computer components, claim 1 broadly recites a "user mobile
station," "mobile transaction platform," and "financial station." Regarding
the user mobile station, the Specification explains that "[t]he user station 105
can be a standalone device, such as a mobile phone, tablet, or computer, or it
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can be used with other auxiliary devices, such as an external speaker 355, a
GPS receiver 356, a microphone 357, a cellular (mobile or satellite) phone
358, or any other available compatible device 360." Spec. ,r 93 (emphasis
added). The recited "mobile transaction platform" is a generic computing
platform that includes servers and databases connected by a network. See
id. ,r 77. Regarding the "financial station," the Specification discloses that
"[t]he dispensation is effected by a financial station, for example, through an
ATM, a vending machine, or any other machine, device, system, or network
that allows for the dispensation of cash." Id. ,r 24 ( emphasis added). The
method uses these elements for their basic function of transmitting
information. On this record, the limitations of the claim, taken individually,
recite generic computer, network, and Internet components. Final Act. 3.
Appellant contends that, although the invention uses generic
computing elements, the combination of elements performs functions that
are not generic and amounts to significantly more than the abstract idea.
App. Br. 46. Specifically, Appellant argues the invention (1) allows direct
communication between parties to eliminate third-party interference,
(2) does not directly transfer financial information, and (3) uses codes to
send and receive information. Id. at 46-49. According to Appellant, the
invention, as a whole, provides a solution to the problem of preventing fraud
in a mobile environment by performing non-generic functions using a
combination of components. Id. at 47.
We disagree. Claim 1 is distinguishable from the patent-eligible
claims in BASCOM Global Internet Services, Inc. v. AT&T Mobile LLC, 827
F.3d 1341 (Fed. Cir. 2016), for example. See App. Br. 15-16; Reply Br. 3.
In BASCOM, the inventive concept was found in the non-conventional and
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non-generic arrangement of known, conventional pieces: "a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user." BASCOM, 827 F.3d at 1350. That
design gave "the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server." Id. The Federal
Circuit reasoned that the claims covered "a technology-based solution ... to
filter content on the Internet that overcomes existing problems with other
Internet filtering systems" and "improve[s] an existing technological
process." Id. at 1351 ( citing Alice, 134 S. Ct. at 2358 ( explaining that "the
claims in [Diamond v. Diehr, 450 U.S. 175 (1981)] were patent eligible
because they improved an existing technological process")).
Appellant has not provided, nor do we find, any similar arrangement
even considering the limitations as an ordered combination. Unlike the
claims in BASCOM, the claims here do not "improve[] an existing
technological process." BASCOM, 827 F.3d at 1351. The purported
improvement here is directly transferring financial information to avoid
third-party interference. App. Br. 46-49. Yet, direct communication
between parties can be accomplished with or without a computer. Accord
Final Act. 8. The computer components here are so broadly disclosed that
they add little to a technology-based solution to this communication. See,
e.g., Spec. ,r,r 22, 77, 93. Even the codes broadly encompass many different
types of codes that can be read by many different devices. Id. ,r 42. In this
way, the claimed method adds generic technology after the fact as a tool to
carry out the abstract idea. See Final Act. 14 ( discussing the high level of
generality in the claim). On this record, we agree with the Examiner
(id. at 3) that the recited combination of elements does not add meaningful
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limitations to the abstract idea that we identified in Alice step one.
Essentially, the claims amount to nothing more than an instruction to apply
the abstract idea using a generic computer, which does not render the
abstract idea eligible under Alice step two. Alice, 134 S. Ct. at 2357.
Therefore, Appellant has not persuaded us of error in the rejection of
representative claim 1 under 35 U.S.C. § 101, and claims 2-13, which are
not separately argued with particularity.
DECISION
We affirm the Examiner's rejection of claims 1-13.
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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