Ex Parte Bank et al

Patent Trial and Appeal Board

May 8, 2017

13611469 (P.T.A.B. May. 8, 2017)

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.
13/611,469 09/12/2012 JUDITH H. BANK RSW920120098US1 5542
8152-0201
112978 7590 05/10/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, EL 33498
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/10/2017 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUDITH H. BANK, LIAM HARPUR, RUTHIE D. LYLE,
PATRICK J. O’SULLIVAN, and LIN SUN
Appeal 2015-003358
Application 13/611,4691
Technology Center 3600
Before ANTON W. FETTING, SHEILA F. McSHANE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1, 4, 5, 8—10 and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify IBM Corporation as the real party in interest.
Appeal Br. 1.
Appeal 2015-003358
Application 13/611,469
ILLUSTRATIVE CLAIM
1. A method of conducting a financial transaction using
near field communication, the method comprising:
determining an amount of money owed for a first
commercial transaction;
receiving from each of a plurality of mobile devices, via
near field communication, respective financial account
information;
allocating to each respective financial account, via a
processor, a respective portion of the money owed for the first
commercial transaction, wherein each respective financial
account is identified by the financial account information
provided by a respective one of the plurality of mobile devices;
and
charging, to each of the respective financial accounts, the
respective allocated portion of the money owed.
REJECTIONS2
I. Claims 1, 4, 5, 8—10 and 19 are rejected under 35 U.S.C. § 101
as directed to ineligible subject matter.
II. Claims 1, 4, 5, 8—10 and 19 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Tumminaro et al. (US 2011/0320347 Al, pub.
Dec. 29, 2011) (“Tumminaro”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
2 The rejection of claim 10 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph (see Final Action 2) has been withdrawn (see
Answer 5).
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Application 13/611,469
ANALYSIS
Rejection Under 35 U.S.C. § 101
1. Claims 1, 4, 5, 8—10, and 19
The Final Office Action analyzed the patent-eligibility of claims 1, 4,
5, and 8—10 according to whether they recite a process that is tied to a
machine or that transforms underlying subject matter into a different state or
thing. Final Action 3—6. The Answer (pages 5—7) designated a new ground
of rejection under 35 U.S.C. § 101 — concerning claims 1, 4, 5, and 8—10,
as well as claim 19 — applying the prevailing analytic framework set forth
by the Supreme Court in Alice Corp. Pty. Ltd. v. CIS Bank International,
134 S. Ct. 2347, 2355 (2014). The Answer neither reprises the issue of
whether claims are tied to a machine or achieve a transformation, nor does
the Answer address the Appellants’ response on that issue. See Appeal Br.
14—16, Reply Br. 2.
According to the Examiner, claims 1, 4, 5, 8—10, and 19 “are directed
to the abstract idea of a fundamental economic practice” (per Alice's first
step) and there are no “meaningful limitations” recited that give rise to
patent eligibility (per Alice's second step), as the claims amount to no more
than instructions to implement the abstract idea on a computer. Answer 5—7.
Regarding Alice's first step, the Appellants argue that the claims are
not directed to a fundamental economic practice, as described in case law,
and, in any event, the Examiner has not identified any “fundamental
economic practice to which the claims are allegedly directed.” Reply Br. 4.
Regarding Alice's second step, the Appellants argue that the Examiner could
not perform a proper analysis, having failed to identify an abstract idea;
nevertheless, the Examiner incorrectly determined that the claims merely
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Application 13/611,469
provide instructions to implement an abstract idea on a computer —
“[w]hatever the alleged abstract idea, it does not require either a plurality of
mobile devices or the use of near field communication.” Id. at 4—5.
The Appellants argue claims 1, 4, 5, 8—10, and 19 as a group. Id. at 2.
Claim 1 is selected for analysis herein. See 37 C.F.R. § 41.37(c)(l)(iv). As
to the first Alice step, we agree with the Examiner that claim 1 is directed to
a fundamental economic practice — making a joint payment. As to the
second Alice step, the Appellants argue that the claimed “plurality of mobile
devices” and “near field communication” amount to an element or
combination of elements “‘sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). Although claim 1 restricts the joint-payment process to one that
employs a “plurality of mobile devices” and “near field communication,”
these do not constrain the claimed technology in the manner required by
Alice's second step. Indeed, “the prohibition on patenting an ineligible
concept cannot be circumvented by limiting the use of an ineligible concept
to a particular technological environment.” Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir. 2015) (citations omitted).
Therefore, the Appellants’ arguments are not persuasive of error in the
rejection of claim 1.
Accordingly, we sustain the rejection of claims 1, 4, 5, and 8—10 as
constituting patent-ineligible subject matter. Our determinations apply to
claim 19, but the Appellant has presented additional argument as to the
patent eligibility of claim 19 which we address below.
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2. Claim 19
Independent claim 19 recites, in part, “[a] computer program
product. . . comprising ... a computer-readable storage medium having
stored thereon program code that, when executed, configures a processor to
perform executable operations.”
The Examiner’s position is that the claim may encompass a transitory
signal wave, such that the recited subject matter is non-statutory. Final
Action 6—8; Answer 7—8.
According to the Appellants, the construction of the claimed
“computer-readable storage medium,” in view of paragraphs 10 and 11 of
the Specification, excludes a transitory signal. Appeal Br. 16—18; Reply Br.
5-6.
The Court of Appeals for the Federal Circuit has held that transitory,
propagating signals are not covered by the four statutory classes of subject
matter (“process, machine, manufacture, or composition of matter”) of 35
U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Further,
the Board has “conclude[d] that those of ordinary skill in the art would
understand the claim term ‘machine-readable storage medium’ would
include signals per se” and that the respective claims must be rejected under
35 U.S.C. § 101 as covering non-statutory subject matter. Ex parte
Mewherter, Appeal 2012-007692, 2013 WF 4477509 at *7 (PTAB 2013)
(precedential) (citations omitted).
According to the Specification, “[a] computer-readable storage
medium may be, for example, but not limited to, an electronic, magnetic,
optical, electromagnetic, infrared, or semiconductor system, apparatus, or
device, or any suitable combination of the foregoing” and “[i]n the context
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of this document, a computer-readable storage medium may be any tangible
medium that can contain, or store a program for use by or in connection with
an instruction execution system, apparatus, or device.” Spec. 110 (emphasis
added). The Specification also lists several examples of a “computer-
readable storage medium.” Id. Yet, the Specification does not preclude the
possibility that a “computer-readable storage medium” could be a transitory
signal. Therefore, in view of Mewherter and the absence of a clear contrary
statement in the Specification or in claim 19, the claim term “computer-
readable storage medium” could include a transitory signal. Although the
Appellants refer to various unrelated applications in which rejections under
35 U.S.C. § 101 were withdrawn (see Reply Br. 5—6), the Appellants have
not shown why such an outcome should ensue in the instant Appeal.
Accordingly, we sustain the rejection of claim 19 under 35 U.S.C.
§ 101 as encompassing non-statutory subject matter.
Rejection Under 35 U.S.C. § 102(e)
The Appellants contend that independent claim 1 was rejected in error
because Tumminaro does not disclose the claimed use of “near field
communication.” Appeal Br. 19; Reply Br. 6—7.
The Examiner’s position is that the claimed “near field
communication” is “within the scope” of communications techniques
disclosed in Tumminaro. Answer 8 (citing Tumminaro 16—24, 72, Figs.
2, 6).
“[A] claim is anticipated if each and every limitation is found either
expressly or inherently in a single prior art reference.” King Pharms., Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quotation marks and
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citation omitted). The claim term “near field communication” is a particular
technique that is defined in the Specification as “short range wireless
communication via interacting electromagnetic fields in lieu of direct radio
transmissions.” Spec. 117. Even if this claimed feature were “within the
scope” of the identified portions of Tumminaro, as stated in the Answer
(page 8), the portions have not been shown to expressly or inherently
disclose “near field communication.” Therefore, the Appellants’ argument
is persuasive of error in the rejection of independent claim 1 and, for similar
reasons, independent claims 10 and 19, as well as their respective dependent
claims.
Accordingly, the rejection of claims 1,4, 5, 8—10 and 19 under 35
U.S.C. § 102(e) is not sustained.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 4, 5, 8—10
and 19 under 35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1, 4, 5, 8—10
and 19 under 35 U.S.C. § 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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