Ex Parte Brendell et al

Patent Trial and Appeal Board

Aug 13, 2018

13215145 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/215,145 08/22/2011
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
08/15/2018
FIRST NAMED INVENTOR
Brian Brendell
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.
5109-LPV-0134 1649
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN BRENDELL, I-HSIN CHUANG,
CARLOS KORTEN, and NICOLE LEWIS
Appeal 2016-006793
Application 13/215,145 1
Technology Center 3600
Before NINA L. MEDLOCK, MATTHEWS. MEYERS, 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's
decision rejecting claims 1, 3---6, and 11-24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify III Holdings 1, LLC as the real party in interest.
Appeal Br. 2.
Appeal 2016-006793
Application 13/215,145
ILLUSTRATIVE CLAIM
1. A merchant system, comprising:
at least one processor; and
a memory configured to communicate with the at least
one processor and having instructions stored thereon that, in
response to execution by the at least one processor, cause the
merchant system to perform operations comprising:
generating a bill for a purchase associated with a
consumer;
associating a unique identifier with the bill,
wherein the unique identifier is accessible via a
contactless interface of a mobile device of the consumer
and communicable by the mobile device within a
payment request to a payment network;
transmitting the bill and the unique identifier to the
payment network; and
receiving confirmation of payment of the bill from
the payment network in response to a transaction
authorization based on a first reception of the unique
identifier from the mobile device and a second, separate
reception of the unique identifier from the merchant
system.
CITED REFERENCES
The Examiner relies upon the following references:
Wentker et al. US 2008/0167017 Al July 10, 2008
(hereinafter "W entker")
Melby et al. US 2012/0173396 Al July 5, 2012
(hereinafter "Melby")
Hammad et al. US 2012/0209749 Al Aug. 16, 2012
(hereinafter "Hammad")
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Application 13/215,145
REJECTIONS
I. Claims 1, 3---6, and 11-24 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1, 3---6, and 11-24 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. 2
III. Claims 1, 3---6, 11, 17, 19, 21, and 22 are rejected under
35 U.S.C. § 102(e) as anticipated by Hammad.
IV. Claims 12-16 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hammad and Melby.
V. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hammad and Official Notice.
VI. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hammad and W entker.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
2 The rejection under 35 U.S.C. § 112, first paragraph, is set forth as a new
ground of rejection in the Examiner's Answer (pages 2-3).
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Application 13/215,145
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply"' these basic tools of scientific and
technological work. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
into a patent-eligible invention." Id. (internal quotation marks and citation
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
As to the first Alice step, the Final Office Action states that "the
claims are directed towards the concept of bill payment, which is
considered a fundamental economic practice and a method of organizing
human activities, therefore the claims are drawn to an abstract idea."
Final Action 5. The Examiner's Answer refines this description of the
abstract idea, stating that "more specifically," the claims are directed to
"using a mobile device to make a payment by sending a payment request to
a payment network." Answer 3. "This concept is considered a method of
organizing human activities and an 'idea of itself which is merely an
abstract idea." Id.
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With regard to the second Alice step, the Final Office Action states:
The claims do not recite limitations that are "significantly
more" than the abstract idea because the claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. The
limitations are merely instructions to implement the abstract
idea on a computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Final Action 5-6.
The Appellants' argument, regarding the second Alice step, persuades
us of error in the rejection. Accordingly, the following discussion focuses
on the Appellants' argument regarding the second Alice step.
Notably, the Appellants argue, in part, that the Examiner does not
sufficiently consider the extent to which the claimed elements, operating as
an ordered combination of features, amount to significantly more than the
identified abstract idea. See Appeal Br. 8-10. The Appellants "submit[]
that the claims do not merely recite, for example, a 'contactless interface,'
but rather a specific application of this interface." Id. at 8. The Appellants
argue that the coordinated operation of the claimed elements is
unconventional and even accomplishes significant advantages:
[C]laim 1 recites a potentially untrusted entity (e.g., a
"merchant system") "transmitting [data (e.g., a bill)] and the
unique identifier to [a] network." Claim 1 also recites "the
unique identifier is accessible via a contactless interface of a
mobile device of the consumer and communicable by the
mobile device within a [ ] request [having confidential
information (e.g., payment information)] to a [] network."
These separate communications prevent the untrusted entity
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(i.e., the merchant) from obtaining the confidential information.
Inclusion of the unique identifier in both communications
allows the recipient (i.e., the payment network) to associate the
transmitted data with the confidential information. Such a
solution addresses the data security flaw of the prior system in
which all information is transmitted via the untrusted entity
(i.e., the merchant).
Reply Br. 7.
Moreover, the Appellants contend that "the Examiner has not
provided any supporting evidence for asserting that all claimed functions are
'well-understood routine, conventional activit[ies]."' Appeal Br. 9 ( quoting
Final Action 3).
Notably, "[ 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). Accordingly, assertions in a rejection that claim elements are well-
understood, routine, and conventional - whether individually or as an
ordered combination - require adequate support. Here, notwithstanding
whether each of the individual claimed elements, in isolation, might be
regarded properly as well-understood, routine, and conventional (see
Answer 4--5), support is lacking for the assertion that the same would be true
for their ordered combination, as recited in claim 1. Here, the Examiner's
Answer states that "[t]aking these computer limitations as an ordered
combination adds nothing that is not already present when the elements are
taken individually." Id. at 5. Yet, no evidence or reasoning demonstrates
that this must be so.
Therefore, we are persuaded that the rejection does not adequately
establish that independent claim 1 lacks a combination of elements
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amounting to significantly more than the identified abstract idea. The same
reasoning also applies to independent claims 11 and 21 (neither of which is
addressed separately by the Appellants or the Examiner), such that we do not
sustain the rejection of claims 1, 3---6, and 11-24 under 35 U.S.C. § 101.
Written Description
Independent claims 1, 11, and 21, along with their associated
dependent claims, stand rejected for failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph, because "[t]here
appears to be no support for separate receptions of the unique identifiers, let
alone, a first reception of the unique identifier received from the mobile
device and a second reception of the unique identifier received from a
merchant system/merchant." Answer 3.
To satisfy the written description requirement, the patent disclosure
must "reasonably convey[ ] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). The Specification must describe the claimed subject matter, although
it need not contain the exact wording used in the claim. See Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
The relevant language of independent claim 1, containing the
limitations that the Examiner identified, recites:
receiving confirmation of payment of the bill from the
payment network in response to a transaction authorization
based on a first reception of the unique identifier from the
mobile device and a second, separate reception of the unique
identifier from the merchant system.
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(Emphasis added).
The Appellants contend that the Specification's Abstract and
paragraphs 17, 19, and 21 provide the requisite support. Reply Br. 5-6.
With regard to the claimed "first reception ... from the mobile
device," the Appellants refer to the portion of the Abstract stating that a
"contactless-enabled device" (which, according to the Abstract, may be a
"smartphone") "submits a payment transaction request to the payment
network, where the payment transaction request includes the unique
identifier and an account identifier," such that "[t]he payment network
receives the payment transaction request and locates the total bill using the
unique identifier as a key." See Reply Br. 5 (citing Spec. (Abstract)).
According to the Abstract, the "payment network receives the payment
transaction request" and the "payment transaction request includes the
unique identifier." Spec. (Abstract). Therefore, this "rece[ption]" by the
"payment network" (id.) amounts to the claimed "reception of the unique
identifier." In the referenced portion of the Abstract, it is the "contactless-
enabled device" that "submits [the] payment transaction request to the
payment network." Id.
Further, the Abstract states that the "contactless-enabled device" may
be a "smartphone" (id.), which a person of ordinary skill in the art would
understand be an example of the recited "mobile device." Therefore, we are
persuaded the Abstract provides adequate written-description support for the
claimed recitation of the recited "first reception ... from the mobile device."
With regard to the claimed "second, separate reception ... from the
merchant system," the Appellants refer to a portion of the Abstract that
describes "transmitting the total bill and associated unique identifier to a
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consumer accessible payment network." Reply Br. 5 (citing Spec. (Abstract)
( emphasis omitted)). The Appellants acknowledge that the identified
portion of the Abstract does not identify the "unique identifier" as being
"from the merchant system," per claim 1. Id. However, the Appellants
contend that paragraph 17 of the Specification discloses that "[m]erchant
system 13 0 loads the total bill and unique identifier onto a network
accessible by the consumer." Id. at 5---6 ( quoting Spec. ,r 17).
The Appellants go on to argue that the term "separate" in claim 1 's
phrase "second, separate reception" indicates that each "unique identifier" in
the above-identified claim limitation "originates from separate sources -
i.e., the merchant system and the contactless-enabled device." Id. at 6. The
claim language is not so narrow, however. The two claimed "reception[ s ]"
of the "unique identifier," in claim 1, are received from different sources
(i.e., "a first reception ... from the mobile device" and "a second, separate
reception ... from the merchant system"), but the language of claim 1 does
not require that the "unique identifier[ s ]" originate from separate sources, as
the Appellants contend.
Notwithstanding the Appellants' position regarding the construction
of the term "separate" in claim 1, we are persuaded that adequate written-
description support exists for the recited "second, separate reception ...
from the merchant system," as properly construed.
The foregoing discussion also applies to the similar language of
independent claims 11 and 21 (see Answer 3 and Reply Br. 4), such that we
do not sustain the rejection of claims 1, 3---6, and 11-24 under 35 U.S.C.
§ 112, first paragraph.
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Anticipation
The Appellants argue claims 1, 3---6, 11, 17, 19, 21, and 22 as a group.
Appeal Br. 14. Claim 1 is selected for analysis herein. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Appellants contend that claim 1 stands rejected erroneously as
anticipated by Hammad, because Hammad does not teach claim 1 's
limitation of "a transaction authorization based on a first reception of the
unique identifier from the mobile device and a second, separate reception of
the unique identifier from the merchant system." See Appeal Br. 14--16.
The rejection relies upon Hammad's disclosure of a user providing a
quick response (QR) code, displayed on a mobile device, to a point-of-sale
(POS) terminal, as teaching the claimed "first reception of the unique
identifier from the mobile device"; further, the rejection relies upon
Hammad's disclosure of the QR code being sent from the POS terminal to
the payment network, as teaching the claimed "second, separate reception of
the unique identifier from the merchant system." See Answer 5---6 ( citing
Hammad ,r 25). The Examiner's Answer explains:
For example, at a merchant store, the user may scan barcodes
for a number of products at a point-of-sale ("POS") terminal in
the store, and then indicate that the user wishes to checkout the
scanned items. In some implementations, the POS terminal
may generate a Quick Response ("QR") code, including
information on the scanned product items, as well as merchant
information for processing the purchase transaction via a
payment network. The user may capture an image of the QR
code generated by the POS terminal using a user device, such
as a smartphone. The user device may utilize the information
extracted from the QR code, along with information on a virtual
wallet tied to the user device to initiate a purchase transaction.
For example, the user device may utilize the product and
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merchant information extracted from the QR code, and
financial payment information from the virtual wallet, to create
a purchase transaction request, and submit the request to a
payment network ( e.g., credit card processing network).
Id. at 6 (citing Hammad ,r,r 21-25, Figs. IA-IE, 4A--4D).
According to the Appellants, the rejection erroneously asserts that
"the transmission of QR code information from the user's mobile device
through the POS terminal to the payment network can constitute both the
'first reception' and the 'second reception' of claim 1." Reply Br. 9. The
Appellants explain:
[T]he Examiner is asserting that the entire transmission from
the mobile device to the payment network is the "first reception
of the unique identifier from the mobile device" of claim 1 and
that the portion of the transmission onward from the POS
terminal to the payment network is also the "second[ ] reception
of the unique identifier from the merchant system" of claim 1.
Id. According to the Appellants, the Examiner's position is defective,
because "the Examiner [is] not giving any weight to the word 'separate' in
the phrase 'a second, separate reception.'" Id. The Appellants continue:
Id.
That is, the Examiner cannot assert that the same
transmission of QR code information is both a "first
reception" and "second, separate reception," as recited in
claim 1. The Examiner's attempt to conflate the "first
reception" and "second, separate reception" into a single
reception runs directly contrary to what is actually recited in
claim 1.
Thus, the Appellants contend that intermediate "reception[ s ]" of the
QR code information - in the course of transmitting the QR information
among the POS terminal, the mobile device, and the payment network- are
not "separate" receptions, because they are links in the same chain of
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communication. See id. Yet, the Appellants do not explain why the word
"separate," in claim 1, should be so limited, and we see no justification for
such a construction. Accordingly, the Examiner's mapping of the claim
language to Hammad, in the rejection, does not involve "the same
transmission of QR code information" being both the recited "first
reception" and the recited "second, separate reception," as the Appellants
contend; nor does such mapping "conflate" these claim features "into a
single reception." Id.
Therefore, in view of the foregoing analysis, we are not persuaded of
error in the rejection of claim 1. Accordingly, we sustain the rejection of
claims 1, 3---6, 11, 17, 19, 21, and 22 under 35 U.S.C. § 102(e).
Obviousness
In regard to the obviousness rejection of dependent claims 12-16 and
20, the Appellants rely upon the arguments presented in regard to the
rejection of independent claim 11 as anticipated by Hammad. See Appeal
Br. 16. For the reasons set forth above, the arguments pertaining to claim 11
are not persuasive of error.
The Appeal Brief does not otherwise address the obviousness
rejections of claims 18, 23, and 24.
Accordingly, we sustain the rejection of claims 12-16, 18, 23, and 24
under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3---6, and
11-24 under 35 U.S.C. § 101.
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We REVERSE the Examiner's decision rejecting claims 1, 3---6, and
11-24 under 35 U.S.C. § 112, first paragraph.
We AFFIRM the Examiner's decision rejecting claims 1, 3---6, 11, 17,
19, 21, and 22 under 35 U.S.C. § 102(e).
We AFFIRM the Examiner's decision rejecting claims 12-16, 18, 20,
23, and 24 under 35 U.S.C. § 103(a).
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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