Ex Parte Browne et al

Patent Trials and Appeals Board

Apr 4, 2019

13846702 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/846,702
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
03/18/2013
04/08/2019
FIRST NAMED INVENTOR
John P. Browne
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.
BOKU-P078 9789
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/08/2019 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):
ariana@matterlightip.com
s tephen @matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. BROWNE, JAMES C. MCLNTYRE, and
MARCINL. PAWLOWSKI
Appeal 2017-005653
Application 13/846, 702 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL R. ZECHER, and
NINA L. MEDLOCK,Administrative Patent Judges.
FISCHETTI, Administrative Pa tent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
fmal rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Boku, Inc. as the real party in interest. App. Br. 3.
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THE INVENTION
Appellants state, " [ t ]his invention relates to a system and method for
managing subscriptions in a scenario where a merchant server repeatedly
instructs a billing server to charge a user account at a carrier server." Spec.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of managing subscriptions with
a billing server comprising:
a) executing an opt-in method with the
billing server, including:
receiving a first opt-in request at the billing
server including a msisdn;
generating, with the billing server, a PIN
code;
transmitting, with the billing server, a text
message to a consumer mobile phone at the msisdn
with the PIN code;
receiving a second opt-in request at the
billing server, including a PIN code;
verifying, at the billing server, the PIN code
received in the second opt-in request against the
PIN code transmitted in the text message; and
recording, at the billing server, an opt-in
status as active for the msisdn within the data
structure if the PIN code is verified;
b) executing a charge method with the
billing server including:
receiving, at the billing server, a charge API
call from a merchant server at the billing server,
including at least one identifier and an amount;
determining an opt-in status corresponding
to the identifier at the billing server; and
transmitting a request to charge a user
account to a carrier server if the opt-in status is
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active, but not if the opt-in status is inactive, the
request including an amount corresponding to the
amount received in the charge API call; and
c) executing a cancel method at the billing
server, including:
receiving a call to cancel the subscription at
the billing server; and
updating the opt-in status to inactive for the
msisdn in response to the call to cancel the
subscription, wherein, if the charge API call is
received from the merchant server at the billing
server after the opt-in status is updated from active
to inactive, the opt-in status is determined to be
inactive in response to the charge API call from
the merchant and a request to charge the user
account is not transmitted to the carrier server.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Matotek
Goodsall
Hoffman
US 2010/0030651 Al
US 2011/0125610 Al
US 8,768,838 Bl
Published Feb. 4, 2010
Published May 26, 2011
Issued July 1, 2014
The following rejections are before us for review.
Claims 1-19 are rejected on the ground of non-statutory double
patenting over claims 1-21 ofU.S. Patent No. 9,003,078 (formerly U.S.
Patent Application No. 13/846, 746).
Claims 1-19 are provisionally rejected on the ground of non-statutory
double patenting over claims 1-8 of co-pending U.S. Patent Application No.
13/928,046.
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Claims 1-19 are rejected on the ground of non-statutory double
patenting over claims 1-16 ofU.S. Patent No. 9,003,079 (formerly U.S.
Patent Application No. 13/928,016).
Claims 1-19 are provisionally rejected on the ground of non-statutory
double patenting over claims 1-20 of co-pending U.S. Patent Application
No. 13/927,574.
Claims 1-19 are provisionally rejected on the ground of non-statutory
double patenting over claims 1-11 of co-pending U.S. Patent Application
No. 13/927,982.
Claims 1-19 are provisionally rejected on the ground of non-statutory
double patenting over claims 1-20 of co-pending U.S. Patent Application
No. 13/873,068.
Claims 1-19 are rejected under 3 5 U.S. C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention.
Claims 1-19 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-3, 7-13, and 15-19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Matotek in view of Goodsall.
Claims 4---6 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Matotek in view of Goodsall and further in view of
Hoffman.
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FINDINGS OFF ACT
We adopt the Examiner's findings as set forth on pages 8-9 in the
Final Office Action2 and on pages 8-9 and 32-55 in Examiner's Answer,
concerning only the 35 U.S.C. § 101 rejection.
ANALYSIS
DOUBLE PATENTING REJECTION
As we explain above, the Examiner made the six double patenting
rejections. (Final Act. 2-5; Ans. 2-5).
These double patenting rejections were first made by the Examiner in
an Office Action dated August 20, 2014. Since then, the claims before us on
appeal have been amended by Appellants in various Responses and
Amendments. See, e.g.,claim amendmentsmadeonMarch3, 2015. Itis
unclear from the record before us whether the Examiner's double patenting
rejections of claims 1-19 in the last Final Office Action mailed October 16,
2015, considered claims 1-19 in their currently pending form.
As indicated above, at least some of the claims relied upon in the
provisional and non-provisional obviousness-type double patenting
rejections on appeal either clearly are, or may be, different in language or
status from the claims originally relied upon, when these rejections were
initially made by the Examiner. We decline to reach these double patenting
rejections, because the claims now relied upon are not clearly the same as
those originally considered by the Examiner, when the rejections were
initially made. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010)
2 All references to the Final Office Action refer to the Final Office Action
mailed on October 16, 2015.
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(precedential) (Panels have the flexibility to reach or not reach provisional
obviousness-type double patenting rejections.).
35 U.S.C. § 112(b)REJECTI0N
Concerning independent claim 1, the Examiner finds indefinite the
following claim language:
wherein, if the charge API call is received from the
merchant server at the billing server after the opt-
in status is updated from active to inactive, the opt-
in status is determined to be inactive in response to
the charge API call from the merchant and a
request to charge the user account is not
transmitted to the carrier server.
(Final Act. 6; Ans. 6 (emphasis omitted)). TheExaminermaintains that
"[ c ]laim language, such as 'if, may, might, can, could,' is deemed to be
optional claim language. As [a] matter of linguistic precision, optional claim
elements do not narrow claim limitations, since they can always be omitted."
Id.
We disagree with the Examiner because a conditional limitation is an
acceptable form of claim drafting, recognizing of course that, if "the
condition for performing a contingent step is not satisfied, the performance
recited by the step need not be carried out in order for the claimed method to
be performed." See Cybersettle, Inc. v. Nat 'l Arbitration Forum, Inc.,
243 F.App'x 603, 607 (Fed. Cir. 2007) (unpublished) ("It is of course true
that method steps may be contingent."). Therefore, we will not sustain the
indefmiteness rejection of claim 1.
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Concerning the rejection of claim 15, 3 the Examiner maintains that,
[t]he last claim set, as filed on June 24, 2015 is the
claim set upon which the rejections were made.
While Appellant, via their arguments, attempted to
amend claims for purposes of the instant appeal,
the claims have not been formally amended, thus
the arguments regarding Claims 15 and 5 are moot
and the rejection has been maintained.
(Ans. 31, 32).
Appellants argue, because the claims were "amended to correct the
typographical error for purposes of appeal," the claims are no longer subject
to the rejection. (App. Br. 12).
Our review of the record shows that the claims in the Appendix of the
Appeal Brief include the amendments which were made in the Response
filed on June 24, 2015. Based on these claims, we do not see the language
" ... carrier server active, due to the opt-in status being inactive ( emphasis
added)" which the Examiner fmds problematic. (Final Act. 7; Ans. 7).
Therefore, we will not sustain the indefmiteness rejection of claims 15, 18
and 19.
Concerning the rejection of claim 5 based on it being a "narrative in
form and replete with indefmite and functional or operational language,"
(Final Act. 7; Ans. 7), we fmd no indefmiteness here because the Examiner's
concerns are a matter of claim breadth, not indefmiteness. "Breadth is not
3 The 35 U.S. C. § 112(b) rejection also states that "Independent Claims 18
and 19 suffer from the same issue and are similarly rejected [ as with claims
5 and 15]." (Final Act. 7, Answer 7).
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indefmiteness." In re Gardner, 427 F.2d 786, 788 (1970). Therefore, we
will not sustain the indefmiteness rejection of claim 5.
Concerning claim 6, the Examiner found that "[t]he term 'rm' is not
defmed in the claims or the specification and it is unclear what Applicant is
attempting to claim here." (Final Act. 8; Ans. 8).
"Appellants submit that one of ordinary skill in the art would be able
to determine the meaning of 'zip or rm. ' Zip is a regional designation used
within the United States. Rm should, therefore, be a similar designation."
(App. Br. 12).
In response, the Examiner accepts the explanation for the "zip" term,
but maintains the indefmiteness rejection for the rm term. (Ans. 32).
We agree with the Examiner that claim 6 is indefmite because the
abbreviation "rm" can have a number of interpretations, e.g., relative record
number, resident registration number, renewal reference number, retrieval
reference number. Upon reviewing the Specification, it is not clear to us
what interpretation for "rm" should apply in the context of claim 6.
Therefore, we will sustain the indefmiteness rejection of claim 6.
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1-19 under 35 U.S.C. § 101.
The Appellants argue, and we select claim 1 as the representative
claim for this group (App. Br. 17-19), and so the remaining claims stand or
fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 3 5 U.S. C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g.,AliceCorp. v. CLSBankint'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at217-18 (citing Mayo CollaborativeServs. v. Prometheus
Labs., Inc., 566U.S. 66, 75-77 (2012)). Inaccordancewiththat framework,
we frrst determine what concept the claim is "directed to." See id. at 219
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593,611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubberproducts"(Diamondv. Diehr,450U.S. 175,191
(1981)); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corningv. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochranev. Deener, 94 U.S. 780, 785 (1876))).
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In Di ehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that"[ a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr,450U.S. at 176;see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract .... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citingBensonandFlook);see, e.g.,Diehr,450U.S. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erelyrequir[ing] generic computer implementation[]
fail[ s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure ("MPEP") § 2106.05(a}-(c), (e}-(h)).
Only if a claim ( 1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP §2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
"the 'directed to' inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether 'their character as a whole is
directed to excluded subject matter."' Enfish, LLCv. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing, as indicated above, we apply a "directed to" two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
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claim recites a judicial exception, evaluate whether the claim "appl[ ies],
rel[ ies] on, or use[ s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Guidance at
53; see also MPEP §2106.05(a}-(c),(e}-(h).
The Specification and the preamble describe the invention as "a
method of managing subscriptions." Spec. ,r 4, Claim 1. Understood in light
of the Specification, claim 1, recites, in pertinent part, a method of managing
subscriptions comprising:
a) receiving a first opt-in request ... including a msisdn; generating ... a PIN
code; transmitting ... a text message to a consumer mobile phone at the
msisdn with the PIN code; receiving a second opt-in request ... including a
PIN code; verifying ... the PIN code received in the second opt-in request
against the PIN code transmitted in the text message; and recording ... an opt-
in status as active for the msisdn within the data structure if the PIN code is
verified;
b) executing a charge method ... including: rece1vmg ... a charge ... call
... including at least one identifier and an amount; determining an opt-in
status corresponding to the identifier ... ; and transmitting a request to charge
a user account ... if the optin status is active, but not if the opt-in status is
inactive, the request including an amount corresponding to the amount
received ... ; and
c) executing a cancel method ... , including: receiving a call to cancel the
subscription ... ; and updating the opt-in status to inactive for the msisdn in
response to the call to cancel the subscription, wherein, if the charge ... call is
received ... after the opt-in status is updated from active to inactive, the optin
status is determined to be inactive in response to the charge ... call from the
merchant and a request to charge the user account is not transmitted.
Accordingly, the Examiner found that the claims are directed to "an
opt in method of managing billed subscriptions." (Final Act. 9). The
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Examiner reasoned that "[p ]erformance of such activities is a fundamental
economic practice and[,] thus, the claims include an abstract idea." Id.
We agree with the Examiner that claim 1 is directed to fundamental
economic principle because its basis is the collection of money owed for the
sale in a transaction. Claim 1 requires, "executing a charge method" and
"transmitting a request to charge a user account." These are the basic
elements of a transaction, the engine of commerce. The patent-ineligible
end of the spectrum includes fundamental economic principles. Alice,
573 U.S. at 220.
In addition, we find that, because the claim also covers billing through
a subscription, claim 1 is also directed to a commercial or legal interaction.
Claim 1 recites, in pertinent part: determining an opt-in status corresponding
to the identifier, "transmitting a request to charge a user account to a carrier
server if the opt-in status is active, but not if the opt-in status is inactive, the
request including an amount corresponding to the amount received in the
charge API call; [] and executing a cancel method ( emphasis added)." These
are steps involved in the cancellation of a subscription based on a
determination of an active or inactive opt-in status which is a legal
interaction because it cancels what otherwise would be a subscription
agreement. The Specification substantiates our understanding of the
aforementioned limitations recited in claim 1 :
Consumers also purchase subscriptions online,
typically for services such as music or movies, and
then make repeat payments on a monthly or other
billing cycle. These subscriptions are usually
charged directly to a credit card account held by a
fmancial institution. Repeated communications
with the consumer to confrrm each renewal charge
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is not required in such a situation. However, if
such a charge would be submitted by a merchant
server to a carrier server, the carrier server
typically has a requirement to confirm the charge
with the consumer mobile phone.
Spec. ,r 3. Commercial or legal interactions are certain forms of methods of
organizing human activities, which is a judicial exception that falls within
the purview of the abstract ideas articulated in the recent Guidance.
Guidance at 52. The patent-ineligible end of the spectrum includes
commercial and legal interactions. buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014).
Turning to the second prong of the "directed to" test, claim 1 only
generically requires "a billing server," "a mobile phone," "a merchant
server," and "a carrier server." These components are described in the
specification at a high level of generality. See Spec. ,r,r 30, 31, 86, Figs. 1,
22. We fail to see how the generic recitations of these most basic computer
components and/ or of a system so integrates the judicial exception as to
"impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
Guidance at 53.
Thus, we fmd that the claims recite the judicial exception of a
fundamental economic practice and a commercial or legal interaction that is
not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to a cancellation of a purchase by subscription, does not make them
any less abstract. See GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362---63 (Fed. Cir. 2015) ("And thatthe 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.").
Turning to the second step of the Alice analysis, because we fmd that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at217-18 (quoting Mayo Collaborative Servs., 566 U.S. at
72-73).
Concerning this step the Examiner found the following:
The additional element( s) or combination of
elements in the claim( s) other than the abstract
idea per se amount(s) to no more than: (i) mere
instructions to implement the idea on a computer
or electronic device, and/or (ii) recitation of
generic computer structure that serves to perform
generic computer functions that are well
understood, routine, and conventional activities
previously known to the pertinent industry.
Viewed as a whole, these additional claim
element( s) do not provide meaningful limitation( s)
to transform the abstract idea into a patent eligible
application of the abstract idea such that the
claim( s) amount to significantly more than the
abstract idea itself.
Final Act. 9; Ans. 9. We agree with the Examiner. "[T]he relevant question
is whether the claims here do more than simply instruct the practitioner to
implement the abstract idea ... ona generic computer." Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
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computer to retrieve, select, apply decision criteria to data generate a result,
and transmit and update data amounts to electronic data query and transmit
same are some of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. See Elec. Power Grp., LLCv. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In re Katz Interactive
Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)
("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming"). In short, each
step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(receiving/verifying/recording/executing/transmitting/updating) and storing
is equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract), Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
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Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a fundamental economic practice
and a commercial or legal interaction using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at225-26.
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 12-29). We fmd that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue:
Claim 1 includes a number of limitations as recited
above that are beyond fundamental economic
practice in itself. In particular, claim 1 includes
limitations relating to charge API call based opt-in
determination for charge transmission or no-
transmission upon cancel that are not a
fundamental economic practice. In particular,
with respect to charge API call based opt-in
determination for charge transmission or no-
transmission upon cancel, claim 1 recites the
limitations of charge API call based opt-in
determination for charge transmission or no-
transmission upon cancel in bold type:
App. Br. 17 ( emphasis omitted).
We disagree with Appellants frrst because, as found above, "opt-in
determination for charge transmission or no-transmission upon cancel"
constitutes the abstraction. As to the recitation of a "charge API call,"
Appellants offer insufficient evidence as to why reference to API format
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("application programmable interface", Specification ,r 34) is meaningful
beyond the face of the language itself other than being the way that data are
carried within the network. See App. Br. 17-20. There is no further
discussion in the Specification of the particular technology for performing
this claimed step. See Affinity Labs a/Texas, LLCv. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, LLCv. Microsoft Corp.,
822 F.3d 1327 at 1336 (Fed. Cir. 2016) (focusing on whether the claim is
"an improvement to the computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity.")
That the language also includes a general reference to the use of an
"API call" access function, does not make the corresponding generic
recitations of the claimed basic computer components and/ or of a system so
effective as to integrate the judicial exception in a way that "imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Guidance at
53. Absent evidence to the contrary, we view the "API call" to be only an
indication of the environment in which the abstract idea is practiced.
MPEP 2106.05(h)concem[s] generally linking use
of a judicial exception to a particular technological
environment or field of use, including a discussion
of the exemplars provided herein, which are based
on Bilski, 56 l U.S. at 612, and Flook, 43 7 U.S. at
588-90. Thus, the mere application of an abstract
method of organizing human activity in a
particular field is not sufficient to integrate the
judicial exception into a practical application.
Guidance at 53 n.32, see also Alice Corp., 573 U.S. at 223.
Although an "API call" to communicate with a server is in some sense
technological, its use in operating system functionality can be said to be so
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notoriously settled that merely invoking it is no more than abstract
conceptual advice to use well known technology for its intended purpose.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 612---613 (Fed.
Cir. 2016). (Using a generic telephone for its intended purpose was a well--
established "basic concept" sufficient to fall under Alice step 1.)
Appellants further argue the following:
there are many ways that others may be involved
in the computerization of an opt-in method of
managing billed transactions without infringing
the claims. A clearing house such as amazon. com
or wallmart.com, for example, may freely practice
the computerization of an opt-in method of
managing billed transactions provided they do not
also include all other limitations of claim 1.
(App. Br. 19).
We disagree with Appellants because, again, the nature of the
technology recited in claim 1 is so general as to not impose a meaningful
limit on the judicial exception. See Guidance at 53.
Appellants argue that "a claim for the present invention has to be read
as a whole and cannot be rejected simply because it includes elements for an
opt-in method of managing billed transactions." (App. Br. 20 (emphasis
omitted)).
Although we agree with Appellants that the claims must be read, as a
whole, we nevertheless fmd, on balance, that claim 1 is directed to an opt-in
method of managing billed transactions for the reasons specified above with
respect to our "directed to" fmdings. As found supra, claim 1 only includes
the following generically recited device limitations: "a billing server," "a
mobile phone," "a merchant server," and "a carrier server." What remains in
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the claim after disregarding these device limitations, are abstractions, i.e.,
"transmitting a request to charge a user account to a carrier server if the
optin status is active, but not if the opt-in status is inactive." "A claim for a
new abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566
U.S. at 90). To the extent Appellants are arguing that these are additional
elements constituting an inventive concept, such features cannot constitute
the "inventive concept." Berkheimerv. HP, Inc., 890 F.3d 1369, 1374 (Fed.
Cir. 2018) (Moore, J., concurring) ("It is clear from Mayo that the 'inventive
concept' cannot be the abstract idea itself, and Berkheimer ... leave [ s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged 'inventive concept' is the abstract idea.");
see also BSG Tech. LLCv. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) ("It has been clear since Alice that a claimed invention's use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention 'significantly more' than that ineligible concept.").
Citing to DDRHoldings, LLCv. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants next argue the following:
Similarly, the claims in the present invention relate
to charge API call based opt-in determination for
charge transmission or no-transmission upon
cancel as detailed above and address a
technological problem "particular to the internet"
by implementing a charge API call based opt-in
determination for charge transmission or no-
transmission upon cancel solution specific to that
technological environment and different from the
manner suggested by routine or conventional use
within the field.
(App. Br. 23 (emphasis omitted)).
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Appellants provide no support for their contention that the claims
address a technological problem "particular to the internet" by implementing
a "charge API call based opt-in determination for charge transmission
or no-transmission upon cancel," or for their contention that this
implementation "does not employ mere ordinary use of a computer or the
Internet." (App. Br. 23, 24). Again, we fmd that the claimed use of an "API
call," at best, reflects the network environment in which the judicial
exception is practiced. Limiting the use of an abstract idea to a particular
technological environment, e.g., a network using API protocol, does not
make a claim less abstract. See Alice Corp., 573 U.S. at 223.
We further fail to see the similarities asserted by Appellants (App. Br.
23-25) between the claims on appeal here and those adjudicated in DDR
Holdings. InDDR Holdings, the court evaluated the eligibility of claims
"address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host's website after
'clicking' on an advertisement and activating a hyperlink." DDR Holdings,
773 F.3d. at 1257. There, the court found that the claims were patent
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no "pre-Internet
analog." Id. at 1258. In contrast, the problem to be resolved in the case on
appeal here is "[a] billing cycle may go by wherein the consumer has
neglected to confrrm the charge, in which case the subscription would be lost
to the merchant." Spec. ,r 2. This is a problem related to an interaction
between parties to a commercial transaction, and not to an innovation in
technology, such as an improvement in hyperlink functions.
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Appellants seek equivalents between a generically recited "API call"
and the transformative hyperlink in DDR Holdings. (App. Br. 24). Unlike
the hyperlink claimed in DDR, which performed a function in the claim, the
term "API call" does not cause a function to occur in a particular way in the
claim, except to act as an adjective for the noun "call." Accordingly, we
disagree with Appellants that the claim term "charge API call based opt-in
determination for charge transmission or no-transmission upon cancel
specif-1 ies] how interactions with the Internet are manipulated to yield a
desired result." (App. Br. 26).
Accordingly, we disagree with Appellants that, "[ u ]nlike the claims in
Ultramerci al, the claims at issue here specify how interactions with the
Internet are manipulated to yield a desired result-a result that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink." (App. Br. 27). In DDR Holdings, the court distinguished
the patent-eligible claims at issue from claims found patent-ineligible in
Ultramercial. See DDR Holdings, 773 F.3d. at 1258-59. As noted there,
the Ultramerci al claims, like those before us here, were directed to an
abstraction, a specific method of advertising and content distribution that
was previously unknown and never employed on the Internet before." Id.
at 1258 (quoting Ultramercial, 772 F.3d at 715-16). Those claims were
similarly patent ineligible because they "merely recite[ d] the abstract idea
of 'offering media content in exchange for viewing an advertisement,'
along with 'routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet."' Id.
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Appellants argue that "[ n ]ovelty has been clearly demonstrated by the
submissions that are on record for this matter. Because the invention as
claimed is novel, the concept that is claimed cannot be considered
'fundamental.'" (App. Br. 24--25). Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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, 573 U.S. at217-218 (alteration
in original). A novel and non-obvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also
Diamondv. Diehr,450 U.S. at 188-89 ("The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter."). The question in step two
of the Alice "framework is not whether an additional feature is novel but
whether the implementation of the abstract idea involves "more than
performance of'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347--48 ( quoting
Alice, 573 U.S. at225).
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner's § 101 rejection
of claims 1-19.
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Application 13/846, 702
35 U.S.C. § 103(a)REJECTION
Each of independent claims 1, 18, and 19 requires, in one form or
another, "recording, at the billing server, an opt-in status as active for the
msisdn within the data structure if the PIN code is verified" and
"transmitting a request to charge a user account to a carrier server if the opt-
in status is active, but not if the opt-in status is inactive."
Appellants argue the following:
Figure 9 of Matotek, if the subscriber is not
subscribed at 17 6, then the process proceeds to 184
wherein a charge is placed and if the subscriber is
already subscribed, then the process proceeds to
178 and 179 where no charge is placed and the
process ends. Matotek thus describes the opposite
of the present invention. The present invention
differs from Matotek because when a charge
request is received from a merchant server, a
charge is placed only if the opt-in status is active.
(App. Br. 30).
The Examiner found, concerning these limitations that Matotek
discloses, the following:
recording, at the billing server, an opt-in status as
active for the msisdn within the data structure if
the PIN code is verified; (See Matotek paragraphs
144-147, 148, 152-158, 164-172, 193-198 and
Figures 4,9a-10,13) ... transmitting a request to
charge a user account to a carrier server if the opt-
in status is active, but not if the opt-in status is
inactive, the request including an amount
corresponding to the amount received in the charge
API call; and (See Matotek paragraphs 86-87, 90-
101, 106-111, 144-147, 152-158, 164-172, 193-
198 and Figures 4, 9a-10, 13).
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(Final Act. 11; Ans. 11 ).
We agree with Appellants. Matotek at paragraph 15 5 states the
following:
if the subscriber is not an existing customer of the
subscription service, then the information alert
platform 23 activates a subscription for the
specified alert service ( operation 180). The
information alert platform 23 then sends a
confirmation to the VAS server 18 that the
subscription process has been initiated and was
successful ( operation 182). The VAS server 18
notifies the M-Commerce server 16, which
instructs thee-Wallet server 22 to deduct the
payment amount, preferably the recommended
retail price less commission, from the retailer's
electronic wallet account ( operation 184), and
sends a notification SMS message to the subscriber
( operation 186) and the retailer 10 ( operation 18 8)
confirming successful subscription. The respective
notification messages are similar to the ones earlier
described. The transaction concludes when the
retailer 10 collects cash currency from the
subscriber ( operation 190).
Matotek,r 155 (emphasis omitted).
Thus, according to Matotek, transmitting of a request to charge occurs
regardless whether a user opt-in status is active or is inactive, which works
contrary to the claim requirements. That is, if the subscription is not active,
platform 23 nevertheless goes ahead and activates a subscription:
if the subscriber is not an existing customer of the
subscription service, then the information alert
platform 23 activates a subscription for the
specified alert service ( operation 180). The
information alert platform 23 then sends a
confrrmation to the VAS server 18 that the
subscription process has been initiated and was
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successful ( operation 182).
Id. ( emphasis added).
We further disagree with the Examiner that Goodsall remedies the
deficiency in Matotak identified above with respect to the limitation of
"recording, at the billing server, an opt-in status as active for the msisdn
within the data structure if the PIN code is verified." (Final Act. 11; Ans.
11). The Examiner cites to paragraphs 122-133 of Goodsall to show this
opt-in recording feature. (Final Act. 12.) However, our review ofGoodsall
at paragraph 126 shows different options for payment for a yearly
subscription, e.g., "opt-in or opt-out," "automatically schedule monthly
transactions (e.g., monthly, weekly, or yearly)," or "reject some or all of the
scheduled transactions." It is not apparent to us, and the Examiner does not
explain, how these disclosed ways of treating subscription payments would
be combined with Matotek to result in the claimed "recording, at the billing
server, an opt-in status as active for the msisdn within the data structure if
the PIN code is verified." See Final Act. 14.
Therefore, we will not sustain the Examiner's obviousness rejection of
independent claims 1, 18, and 19.
Because claims 2-17 depend from claim 1, and because we cannot
sustain the Examiner's obviousness rejection of claim 1, the Examiner's
obviousness rejection of claims 2-17 likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-19 under
35 U.S.C. § 101.
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We conclude the Examiner erred in rejecting claims 1-19 under 3 5
U.S.C. § 103.
We conclude the Examiner erred in rejecting claim 1-5, 7-19 under
35 U.S.C. § 112(b), but did not err in rejecting claim 6 under35 U.S.C.
§ 112(b).
We do not reach the Examiner's provisional rejection of claims 1-19
on the ground of non-statutory obviousness-type double-patenting.
DECISION
Because we have affrrmed at least one ground of rejection with
respectto each claim on appeal, the Examiner's decision is affrrmed.
See 37 C.F.R. §4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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