Ex Parte BLYTHE

Patent Trial and Appeal Board

May 31, 2018

13962289 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/962,289 08/08/2013
71973 7590
Budzyn IP Law, LLC
120 Eagle Rock Avenue
Suite 328
East Hanover, NJ 07936
05/31/2018
FIRST NAMED INVENTOR
SIMON BLYTHE
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.
P-00330-US-CONT
(1788-17
CONFIRMATION NO.
9341
EXAMINER
ZIEGLE, STEPHANIE M
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 SIMON BLYTHE
Appeal2017-003176
Application 13/962,289 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Simon Blythe ("Appellant") seeks our review under 35 U.S.C. § 134
from the rejection of claims 1--4. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies MasterCard International, Inc. as the real party in
interest (Br. 2).
Appeal2017-003176
Application 13/962,289
THE INVENTION
The "invention generally relates to financial transaction systems, and
more particularly to conducting a financial transaction using a mobile
communication device." (Spec. para. 2).
Claim 1 is representative, and is reproduced below:
1. A mobile communication device comprising:
a global positioning system receiver configured to use a
global positioning system to determine a current geographic
location of the mobile communication device;
an interface configured to accept a user-inputted
geographic location and configured to accept a user-inputted
transaction amount for a financial transaction;
a payment module memory configured to automatically
initiate the financial transaction instruction over a network with
said determined current geographic location being within a
particular distance of said user-inputted geographic location; and
a communication interface configured, upon the financial
transaction having been initiated, to wirelessly transmit
authentication details to the network to charge the user-inputted
transaction amount against a particular account.
Br. 11 (Claims Appendix).
THE REJECTION
The following rejection is before us for review:
Claims 1--4 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2
Appeal2017-003176
Application 13/962,289
ANALYSIS
The rejection of claims 1-4 under 35 US.C. § 101 as being directed to non-
statutory subject matter.
The Appellant argues these claims as a group. See Br. 5-10. We
select claim 1 as the representative claim for this group, and the remaining
claims 2--4 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
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, 82-84 (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,
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. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, 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 the additional
elements "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 78).
3
Appeal2017-003176
Application 13/962,289
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined that the claims are directed to the abstract idea of
"conducting a payment transaction using mobile devices" (Final Act. 4).
According to the Examiner, the claimed invention is similar to claims held
ineligible in SmartGene, Inc. v. Advanced Biological Labs., SA,
555 F. App'x. 950 (Fed. Cir. 2014), Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014), and Cyberfone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014)
(nonprecedential) (Final Act. 3). According to the Examiner, the invention
is "a fundamental economic practice" and "a method of organizing human
activity" (Id.).
Proceeding to the second step of Alice, the Examiner determined that
"[ t ]he additional limitations of the claims include a mobile device that
contains a global positioning receiver, an interface, a payment module
memory, and a communications interface." (Id.). According to the
Examiner, these additional limitations "do not affect an improvement to
another technology or technical field; [] do not amount to an improvement to
the functioning of a computer itself; and [] do not move beyond a general
link of the use of an abstract idea to a particular technological environment."
(Id. at 3--4). The Examiner also determined that "the additional limitations
are merely receiving or transmitting data over a network and receiving,
processing, and storing data; both of which have been held to be well-
understood, routine and conventional functions." (Id. at 4).
The Appellant contends that the Examiner erred and that claim 1 is
not directed to an abstract idea. (Br. 5-7).
4
Appeal2017-003176
Application 13/962,289
We are not persuaded of error in the Examiner's rejection.
The "directed to" inquiry in the claims applies a stage-one filter to the
claims, considered in light of the Specification, based on whether "their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(Inquiring into "'the focus of the claimed advance over the prior art."').
Here, claim 1 calls for gathering and storing information, and using
the information to initiate a financial transaction. Claim 1 recites a mobile
communication device comprising: (1) a global positioning system receiver
configured to determine a current geographic position, (2) an interface
configured to accept user input, (3) a payment module memory configured
to initiate a financial transaction, and ( 4) a communication interface
configured to transmit information.
The court in Enfish put the question as being "whether the focus of the
claims is on [a] 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." Enfish, 822 F.3d at 1335-1336.
The court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
5
Appeal2017-003176
Application 13/962,289
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
In this case, we determine that claim 1, as a whole, is focused on
initiating a financial transaction based on a user's geographic location. We
do not see that claim 1 is focused on an improvement to any technology such
as an improved global positioning system receiver or an improved payment
module memory.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Background section of the Specification discusses
the problem, which is that "[ w ]ith cellular technology providing consistent
communication capabilities and the use of GPS-based devices becoming
more accessible and prevalent, there is a need in the art for techniques for
utilizing GPS-based capabilities in financial transactions." (Spec. para. 5).
According to the Specification, the inventors solved that problem by
combining "communications aspects of mobile devices with financial
transaction system capabilities" to enable "a user to automatically initiate a
financial transaction with a merchant upon the user being located in a
particular geographic vicinity." (Id. para. 6). In light of the Specification's
6
Appeal2017-003176
Application 13/962,289
description of the problem and solution, the advance over the prior art by the
claimed invention is in initiating a financial transaction based on a user's
geographic location.
Given the focus of claim 1 as a whole, in light of the Specification, is
on data gathering activities2 in support of initiating a financial transaction
based on a user's geographic location, the claims are properly characterized
as being "directed to" initiating a financial transaction based on a user's
geographic location. Initiating a financial transaction based on a user's
geographic location is an abstract idea. Cf Front Row Techs., LLC v. NBA
Media Ventures, LLC, 204 F. Supp. 3d 1190, 1267 (D.N.M. 2016), ajfd sub
nom. Front Row Techs. LLC v. MLB Advanced Media, L.P., 697 F. App'x
701 (Fed. Cir. 2017) (claims were "directed to the abstract idea of
authorizing handheld devices to receive streaming video based on a user's
location"). See also, Callwave Commc 'ns, LLC v. AT & T Mobility,
207 F. Supp. 3d 405,412 (D. Del. 2016), aff'd 672 F. App'x 995 (Fed. Cir.
2017) ("Requesting and receiving location information is an abstract idea.").
Although not argued, we note that claim 1 additionally calls for the
communication interface to "wirelessly transmit authentication details."
Nevertheless, transmitting information, including where such information
involves authentication details, per se, is an abstract idea. Cf Easy Web
Innovations, LLC v. Twitter, Inc., 2016 WL 1253674 (E.D.N.Y. 2016), ajfd,
No. 2016-2335 (Fed. Cir. 2017) ("receiving, authenticating, and publishing
2 Cf Elec. Power Grp., LLC, 830 F.3d at 1353 (When "[t]he focus of the
asserted claims" is "on collecting information, analyzing it, and displaying
certain results of the collection and analysis," the claims are directed to an
abstract idea.)
7
Appeal2017-003176
Application 13/962,289
data" is an abstract idea.) Also, claims that include authentication steps have
been found patent ineligible. See e.g., Intellectual Ventures I LLC v. J. Crew
Group, Inc., 703 F. App'x. 991 (Mem.) (Fed. Cir. 2017); Front Row
Technologies LLC v. MLB Advanced Media, L.P., 697 F.Appx. 701 (Mem.)
(Fed. Cir. 2017), cert. denied, 138 S. Ct. 1597 (Mem) (2018); GoDaddy.com
LLC v. RPost Communications Limited, 685 Fed.Appx. 992 (Mem) (Fed.
Cir. 2017), cert. denied, 138 S.Ct. 568 (2017); Clarilogic, Inc. v. FormFree
Holdings Corporation, 681 Fed.Appx. 950 (Fed. Cir. 2017).; Morsa v.
Facebook, Inc., 622 F. App'x. 915 (Mem.) (Fed. Cir. 2015); and, Prism
Technologies LLC v. T-Mobile USA, Inc., 696 F. App'x. 1014 (Fed. Cir.
2017).
Merely combining several abstract ideas ( e.g., initiating a financial
transaction based on a user's geographic location and transmitting particular
information) does not render the combination any less abstract. Cf
Shortridge v. Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS,
2015 WL 1739256, *11 (N.D. Cal. Apr. 14, 2015), aff'd, No. 2015-1898,
2016 WL 3742816 (Fed. Cir. July 13, 2016).
The Appellant contends that the claims are not directed to a
fundamental economic practice. According to the Appellant, a "fundamental
economic practice" "must be a 'foundational' or 'basic' concept 'relating to
the economy and commerce."' (Br. 6). The Appellant contends that "[ t ]here
is nothing 'foundational' or 'basic' in the use of a mobile communication
device that requires a GPS to determine a current location of the device to be
used to authenticate and carry-out a wireless financial transaction," and
therefore the claimed invention is not directed to "a fundamental economic
practice." (Id.).
8
Appeal2017-003176
Application 13/962,289
The difficulty with the Appellant's argument is that the category of
abstract ideas to which claims may be directed to is not limited to (1) an idea
or algorithm of itself, (2) a mathematical formula, or a (3) a fundamental
economic practice. "[I]n applying the § 101 exception [Laws of nature,
natural phenomena, and abstract ideas], we must distinguish between patents
that claim the "'buildin[g] block[s] "' of human ingenuity and those that
integrate the building blocks into something more [Mayo], thereby
"transform[ing]" them into a patent-eligible invention [Mayo]." Alice,
134 S. Ct. at 2355. (Emphasis added.) "The former 'would risk
disproportionately tying up the use of the underlying' ideas, id., at-- (slip
op., at 4), and are therefore ineligible for patent protection." Alice, 134 S.
Ct. at 2354--55.
Thus, the abstract idea category of judicially-excepted subject matter
broadly covers building blocks of human ingenuity. Like fundamental
economic practices, determining one's location and initiating a financial
transaction is such a building block. Whether initiating a financial
transaction based on a user's geographic location is or is not a "fundamental
economic practice," it is nevertheless a concept fairly characterized as a
building block of human ingenuity. Initiating a financial transaction based
on a user's geographic location is a fundamental practice of human behavior
that, for example, is commonly resorted to as one finds merchants within
one's vicinity and initiates transactions with those merchants. Therefore,
like fundamental economic practices, initiating a financial transaction based
on a user's geographic location is an abstract idea.
In view of the above, we see no error in the Examiner's determination
that claim 1 is directed to an abstract idea.
9
Appeal2017-003176
Application 13/962,289
We now tum to the second step of the Alice framework: "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, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 US 66, 73
(2012)).
We cannot agree with the Appellant's contention that the claims
before us are similar to the claims held eligible in SiRF Tech., Inc. v. Int 'l
Trade Comm 'n, 601 F.3d 1319 (Fed. Cir. 2010). Br. 6-9. According to the
Appellant, the claims before us are similar to the claims in SiRF Tech.
because "it is apparent that the GPS receiver required by the claims of the
present invention is integral to it, and without [the GPS receiver] the
invention could not be carried out." Id. at 7.
In SiRF Tech., the Federal Circuit determined that the patent claims at
issue addressed the problem of "calculating an absolute position of a GPS
receiver." SiRF Tech., 601 F.3d at 1332. The court noted that the patents at
issue disclose "a GPS receiver that can calculate its position without having
to wait to receive time information from a satellite, thereby allowing the
receiver to calculate its position more quickly and even in weak-signal
environments." Id. at 1323. In the two patents challenged under section
101, the claims are directed to specific techniques for computing the position
of the GPS receiver. The court noted that the claims of a first patent3 require
"'pseudoranges' that estimate the distance from 'the GPS receiver to a
plurality of GPS satellites"' and that "[p ]seudoranges, which are the
3 US 6,417,801 (issued July 9, 2002).
10
Appeal2017-003176
Application 13/962,289
distances or estimated distances between satellites and a GPS receiver, can
exist only with respect to a particular GPS receiver that receives the satellite
signals." Id. at 1332. Regarding a second patent,4 the court noted that the
claims require "the estimation of 'states' that are 'associated with a satellite
signal receiver,' and the formation of a 'dynamic model ... to compute [the]
position of the satellite signal receiver."' Id. The court determined that the
claims of both patents are directed to statutory subject matter because "the
methods at issue could not be performed without the use of a GPS receiver;
indeed without a GPS receiver it would be impossible to generate
pseudoranges or to determine the position of the GPS receiver whose
position is the precise goal of the claims." Id. In other words, the claims of
both patents were determined patent-eligible not simply because the claims
require a GPS receiver, but because they are directed to improved techniques
for computing the position of the GPS receiver.
No such technological advance is evident in the claimed invention.
Unlike the situation in SiRF Tech, the Appellant does not identify any
improvement to GPS technology. Instead, the Appellant's claim merely
involves the use of "a global positioning system receiver" as a data-
gathering tool "to determine a current geographic location of the mobile
communication device." Br. 11, Claims Appendix. Determining a current
geographic location of a GPS receiver is precisely the expected manner of
operation of a GPS receiver. Nothing in the claim, understood in light of the
Specification, requires anything more than a conventional mobile
communication device having a conventional GPS receiver. "The
4 US 6,937,187 (issued August 30, 2005).
11
Appeal2017-003176
Application 13/962,289
[S]pecification fails to provide any technical details for the tangible
components, but instead predominately describes the system and methods in
purely functional terms." In re TL! Comm. LLC Patent Litig., 823 F.3d 607,
612 (Fed. Cir. 2016). For example, with respect to the claimed "mobile
communication device," the Appellant's Specification discloses that "GPS-
enabled cell phones are becoming more prevalent in the marketplace."
(Spec. para. 3). Regarding the claimed "communication interface," the
Specification simply discloses that "communication interface 14 preferably
includes a particular structure and functionality based upon the type of the
device 10." (Id. para. 24). Regarding the claimed "global positioning
system receiver" the Appellant's Specification discloses that "the receiver 12
calculates the distance using low-power radio signals received from the
satellites using a technique known as Trilateration, which is known in the
art." (Id. para. 28). The Specification does not disclose, for example, a new
way of computing the position of the GPS receiver.
The Appellant cites claim 2 of Example 21 of the July 2015 Update
Appendix 1 of the 2014 Interim Guidance Matter Eligibility (hereinafter
"Example 21 "). According to the Appellant, "[ t ]he inclusion of hardware
elements in claim 2, not found in claim 1 [ of Example 21 ], provide
'significantly more' than the abstract idea."
Claim 2 of Example 21 of the July 2015 Update Appendix 1 of the
2014 Interim Guidance Matter Eligibility is not a strong basis for arguing
that claim 1 on appeal is patent-eligible.
First, claim 2 of Example 21 is a hypothetical claim, not an actual
claim present in US 7,035,914 Bl that was at issue in Google Inc. v.
12
Appeal2017-003176
Application 13/962,289
Simpleair, Inc., Covered Business Method Case No. CBM 2014-00170 (Jan.
22, 2015), the Board decision on which hypothetical Example 21 is based.
Second, the Board did not hold a claim like claim 2 of Example 21, or
any claim in US 7,035,914 Bl for that matter, patent-eligible as a matter of
law. Rather, the Board found that the Petitioner had not "shown sufficiently
that claims 1-3, 7, and 22-24 [of US 7,035,914 Bl] are more likely than not
unpatentable as being directed to patent-ineligible subject matter under 35
U.S.C. § 101." Id. at 16. ("Petitioner's generalized arguments, not directed
to the specific language of the challenged claims, are insufficient to show
that the claims more likely than not are directed to a patent-ineligible
abstract idea.")
Third, be that as it may, claim 2 of Example 21 is not comparable to
what is claimed. Claim 2 of Example 21 includes the limitation "[an] alert
[which] activates [a] stock viewer application to cause the stock quote alert
to display on the remote subscriber computer and to enable connection via
the URL to the data source over the Internet when the wireless device is
locally connected to the remote subscriber computer and the remote
subscriber computer comes online." The Appellant has not explained how
claim 1 on appeal contains any comparable limitation.
Fourth, reliance on examples in USPTO guidance is problematic at
best. The Board decides cases in accordance with the law, not in accordance
with hypothetical "examples [ ] intended to be illustrative only" (page 1 of
July 2015 Update).
To the extent that the Appellant suggests that the "inclusion of
hardware elements" in a claim is the governing test under the second step of
the Alice framework, the Appellant misapprehends the applicable law.
13
Appeal2017-003176
Application 13/962,289
Indeed, "after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
We have fully considered the Appellant's arguments. For the
foregoing reasons, they are unpersuasive as to error in the rejection of
claim 1, and claims 2--4, which fall with claim 1.
The rejection is sustained.
CONCLUSIONS
The Appellant has not shown that the Examiner erred in rejecting
claims 1--4 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
DECISION
The decision of the Examiner to reject claims 1--4 is affirmed.
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
14