Ex Parte Blewett et al

Patent Trial and Appeal Board

Feb 26, 2018

12646419 (P.T.A.B. Feb. 26, 2018)

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.
12/646,419 12/23/2009 Charles Blewett 2009-1243 (40147/17201) 1071
83719 7590 02/27/2018
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
02/27/2018 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 CHARLES BLEWETT, MEGAN BLEWETT, JUAN GARAY,
ROBERT HAARDE, THOMAS KILLIAN, and SIMON URBANEK
____________

Appeal 2016-007509
Application 12/646,419
Technology Center 3600
____________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
JASON M. REPKO, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–19, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Introduction
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According to the Specification, the present invention relates to
identity theft resistant transactions. See generally Spec. 1. Claim 1 is
exemplary:
1. An authorization device, comprising:
an input module to receive, from a purchaser, a request to authorize a
transaction between a mobile device and a merchant terminal;
a key generator to generate a key used for authorizing the transaction,
the key relating uniquely to the transaction and having a time-out period
wherein, the key becomes invalid once the time-out period lapses;
an output module to transmit the key to the purchaser; and
an authenticator to receive the key from a merchant terminal and to
authenticate the key,
wherein the output module transmits a verification request for the
transaction to the purchaser based on the authentication of the key by the
authenticator,
wherein the authenticator receives a response to the verification
request from the purchaser, and
wherein the output module transmits an authorization for the
transaction to the merchant if the response indicates that the purchaser
verifies the transaction.

References and Rejections

Claims 1–19 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.
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Claims 1–19 are rejected under 35 U.S.C. § 101 because the claims
are directed to patent-ineligible subject matter.
Claims 1–19 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Labrou (US 2004/0107170 A1, pub. June 3, 2004) and
Sovio (US 2005/0187882 A1, pub. August 25, 2005).

ANALYSIS

35 U.S.C. § 112, First Paragraph

The Examiner asserts claims 1–19 fail to comply with the written
description requirement with respect to “wherein the output module
transmits a verification request,” as recited in independent claims 1 and 11
(emphasis added) and corresponding dependent claims. See Final Act. 5;
Ans. 5.
We disagree. To satisfy the written description requirement, the
disclosure must reasonably convey to skilled artisans that Appellants
possessed the claimed invention as of the filing date. See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
Specifically, the description must “clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. (internal quotations and citations omitted).
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We have reviewed the Specification and concur with Appellants’
assertion that paragraph 21 demonstrates Appellants possessed the claimed
invention. See App. Br. 13–14. In particular, paragraph 21 discloses
transmitting a prompt that solicits a verification response. Based on that
disclosure, we find one skilled in the art would understand transmitting the
prompt constitutes transmitting “a verification request.” Accordingly, we do
not sustain the Examiner’s rejection of claims 1–19 under 35 U.S.C. § 112,
first paragraph. 1

35 U.S.C. § 101

We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.2
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2–4; Ans. 2–
5. In particular, the Examiner finds the claims are directed to the abstract
idea of receiving, transmitting, and generating information. See Ans. 2–4.
The Examiner further finds the claims use generic computer components to

1 In the Response to Arguments, the Examiner appears to argue about the
“output module.” (Ans. 5). We agree with Appellants that the Specification
also discloses “the output module transmits a verification request.” See
Reply Br. 5; Spec. ¶ 21, Fig. 2.
2 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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perform generic computer functions. See Ans. 4–5. Appellants argue the
Examiner erred. See App. Br. 3–13; Reply Br. 2–5.3
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides “[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101. That provision “‘contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. . . . If so, we then ask,
“[w]hat else is there in the claims before us?” . . . To answer
that question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. . . . We have
described step two of this analysis as a 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.”
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as

3 Appellants cite In re Renald Poisson, Appeal 2012-011084 (App. Br. 4–5),
but that opinion is not precedential.
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looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Federal Circuit has explained in determining whether claims are
patent eligible, “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).
Further, “examiners are to continue to determine if the claim recites (i.e.,
sets forth or describes) a concept that is similar to concepts previously found
abstract by the courts.” Amdocs, 841 F.3d at 1294 n.2 (citation omitted).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348–49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In a
similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec.
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Power, 830 F.3d at 1354 (emphasis added); see also In re TLI Commc’ns.
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 3–10; Reply Br. 2–4), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to collecting information (“receive . . . ,”
“transmit . . . ,” “transmits . . . ,” “receives . . .”), and analyzing (including
generating) information (“generate a key . . . the key becomes invalid once
the time-out period lapses,” “if the response indicates . . .”). Similarly, claim
11 is directed to collecting information (“receiving . . .,” “transmitting . . .”),
and analyzing (including generating and authenticating) information
(“generating . . .,” “authenticating . . .”). See Elec. Power, 830 F.3d at 1353;
see also Content Extraction & Transmission, 776 F.3d at 1347. The
dependent claims are directed to similar functions or processes, and
Appellants have not shown such claims are directed to other non-abstract
functions or processes. See claims 2–10 and 12–19.
Appellants’ assertion regarding pre-emption (App. Br. 7–8) is
unpersuasive, because “[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility . . . . Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362–63 (“that the claims do not preempt all price
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optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
Regarding Alice step two, contrary to Appellants’ assertion (App. Br.
10–13; Reply Br. 4–5), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants’ arguments (App. Br. 10–13; Reply
Br. 4–5), the claims are similar to the claims of Electric Power, because they
do not require any nonconventional computer or mobile components, or
even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection and analysis functions on generic computer and
mobile components. See Elec. Power, 830 F.3d at 1355; see also Claim 1
(reciting “an input module . . . a mobile device and a merchant terminal;” “a
key generator,” “an output module,” “an authenticator”); Claim 11 (reciting
“a mobile device and a merchant terminal”). The dependent claims call for
similar generic components and devices, and Appellants have not shown
such claims require any non-conventional components or devices. See
claims 2–10 and 12–19.
Appellants’ augments about the U.S. Patent and Trademark Office’s
Eligibility guidelines (App. Br. 10–13; Reply Br. 4–5) are unpersuasive. .
Appendix 1 of the U.S. Patent and Trademark Office’s July 2015 Update
explains “hypothetical claims . . . are modeled after the technology in
Google Inc. v. Simpleair, Inc., Covered Business Method Case No. CBM
2014‐00170 (Jan. 22, 2015), but are revised to emphasize certain teaching
points.” July 25th Update, Appendix, p.1. Therefore, contrary to Appellants’
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assertion (App. Br. 10–11), the guidelines are directed to hypothetical
claims—not claims from a court opinion. In any event, the rejected claims
are unlike the hypothetical claims in Google because they do not address any
“Internet-centric challenge” (July 25th Update, Appendix, p.4). Instead, they
are similar to the claims of Electric Power, because “the focus of the claims
is not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools.” Elec. Power, 830
F.3d at 1354.
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer and mobile
technology for collecting and analyzing the desired information. See Elec.
Power, 830 F.3d at 1354. Such invocations of computers and mobile
devices are “insufficient to pass the test of an inventive concept in the
application” of an abstract idea. See Elec. Power, 830 F.3d at 1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1–19 under 35 U.S.C. § 101.

35 U.S.C. § 103

We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention that the Examiner erred in finding the cited portions of Labrou
teach “a key generator to generate a key used for authorizing the transaction,
the key relating uniquely to the transaction and having a time-out period
wherein, the key becomes invalid once the time-out period lapses,” as recited
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in independent claim 1 (emphasis added).4 See App. Br. 14–17; Reply Br.
6–8.
In the Final Action, the Examiner cites Labrou’s paragraphs 187, 555,
and 574 for teaching the above claim limitation, but does not specifically
map the italicized claim limitation. See Final Act. 6. In response to
Appellants’ arguments, the Examiner additionally cites paragraph 551, but
still does not specifically map the italicized claim limitation. See Ans. 6, 8.
We have reviewed the cited Labrou portions, and they do not teach “the key
becomes invalid once the time-out period lapses,” as required by
independent claim 1. Absent further explanation from the Examiner, we do
not see how the cited Labrou portions teach the italicized claim limitation.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 103.
Independent claim 11 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 11. Therefore, for
similar reasons, we reverse the Examiner’s rejection of independent claim 11
under 35 U.S.C. § 103.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2–10 and 12–19 under 35 U.S.C. § 103.

4 Appellants raise additional arguments with respect to the obviousness
rejection. Because the identified issue is dispositive of the appeal with
respect to the obviousness rejection, we do not reach the additional
arguments.
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DECISION
We reverse the Examiner’s decision rejecting claims 1–19 under 35
U.S.C. § 112, first paragraph.
We affirm the Examiner’s decision rejecting claims 1–19 under 35
U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1–19 under 35
U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting claims 1–
19. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED