Ex Parte Corner et al

Patent Trials and Appeals Board

Jun 27, 2019

14010369 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/010,369
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
08/26/2013
07/01/2019
FIRST NAMED INVENTOR
Katherine Ann Corner
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-P092 4252
EXAMINER
BRIDGES, CHRISTOPHER
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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 STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHERINE ANN CORNER, JOHN P. BROWNE,
DANIEL KEEGAN FLANIGAN and SAMANTHA ELENA NEBRICH
Appeal2018-004507
Application 14/010,369
Technology Center 3600
Before KARA L. SZPONDOWSKI, SCOTT B. HOW ARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1--4 and 21, i.e., all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Boku, Inc. Br. 3.
Appeal2018-004507
Application 14/010,369
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to "a method and
system for processing a sale of an article, a virtual article, a service or a
functionality such as a game using redeemable codes." Spec. ,r 1. 2 The
Specification explains that a "merchant may offer the sale of a unique code
that can be redeemed for the user to obtain access to the item." Id. ,r 2.
Hence, the invention endeavors to "allow for merchants to more easily sell
codes to users." Id.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A method of processing a sale of an article, a
virtual article, a service, or a functionality with a billing server
remotely connected to a merchant server, comprising:
receiving, with a billing server, a first message from a
user device, the first message being a request for a code;
transmitting, with the billing server, a charge request to
an account server to charge an account of a user for a value of a
code, the charge request being in response to the first message;
receiving, with the billing server, a confirmation from the
account server indicating that the account has been charged;
transmitting, with the billing server, a request for the
code to the merchant server
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed August 26, 2013; "Final Act." for the Final Office
Action, mailed May 26, 2017; "Br." for the Appeal Brief, filed October 2,
2017; and "Ans." for the Examiner's Answer, mailed January 25, 2018.
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wherein the billing server is configured to transmit
the request for the code in response to receiving the
confirmation from the account server indicating that the
account has been charged,
wherein the merchant server has a plurality of
codes stored that are available for distribution,
the merchant server receiving the request for the
code from the billing server,
the merchant server marking a selected one of the
codes stored by the merchant server as reserved,
the merchant server transmitting the code that is
marked as reserved to the billing server;
receiving, with the billing server, the code that is
transmitted from a merchant server in response to transmitting
the request for the code;
transmitting, with the billing server, the code to the user
device of the user, the user device being operable to redeem the
code with the merchant server and the merchant server marking
the code as redeemed, redemption of the code allowing access
to the user device to the article, virtual article, service, or
functionality;
receiving, with the billing server, payment from the
account server in response to the charge request; and
transmitting, with the billing server, a payment to the
merchant server in response to receiving the payment from the
account server.
Br. 31-32 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
Quirk et al. ("Quirk")
Foth et al. ("Foth")
US 2009/0089116 Al
US 7,647,278 Bl
3
Apr. 2, 2009
Jan. 12,2010
Appeal2018-004507
Application 14/010,369
Hirson et al. ("Hirson") US 2011/0217994 Al Sept. 8, 2011
The Re} ections on Appeal
Claims 1--4 and 21 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2-8.
Claims 1--4 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hirson, Quirk, and Foth. Final Act. 9-17.
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner's conclusion concerning ineligibility under § 101. We adopt the
Examiner's findings and reasoning regarding the§ 101 rejection in the Final
Office Action and Answer. See Final Act. 2-8; Ans. 3-9. But we disagree
with the Examiner's conclusion concerning unpatentability under § 103. We
provide the following to address and emphasize specific findings and
arguments.
The§ 101 Rejection of Claims 1--4 and 21
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever 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. In Mayo and Alice, the
Supreme Court explained that § 101 "contains an important implicit
exception" for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
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Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77-80; Alice, 573 U.S. at 217-18.
Under Mayo/Alice step one, we "determine whether the claims at
issue are directed to" a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the "focus" of the claims at issue and their "character as a whole."
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019
Guidance"). The 2019 Guidance applies to the Board. Id. at 50-51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility "for
providing policy direction" for the PTO). Neither the Examiner nor
Appellants had the benefit of the 2019 Guidance when advocating their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54--55. Prong one
requires evaluating "whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon." Id. at 54. "If the
claim does not recite a judicial exception, it is not directed to a judicial
exception," and it satisfies § 101. Id. "If the claim does recite a judicial
exception, then it requires further analysis" under prong two. Id. Prong two
requires evaluating "whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception." Id. "When
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the exception is so integrated, then the claim is not directed to a judicial
exception," and it satisfies § 101. Id. "If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception," and it "requires further analysis" under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than the judicial exception. Alice, 573 U.S. at 217-18,
221-22 (quoting Mayo, 566 U.S. at 78-79). Step two involves the search for
an "inventive concept." Alice, 573 U.S. at 217-18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). "[A]n inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
For Mayo/Alice step one, the Federal Circuit has noted that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to "a method for
processing a sale," which "is considered to be a fundamental economic
practice and method of organizing human activity such as performing
transactions between people similar to creating a contractual relationship."
Final Act. 3. According to the Examiner, the claimed invention "is a
business solution to a problem rooted in the abstract idea of processing a
sale." Ans. 4.
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Appellants assert that the Examiner characterizes the claims at an
improperly "high level of abstraction and untethered from the language of
the claims." Br. 15. Appellants also assert that "the claims are not simply
directed to any form of a method of processing a sale, but instead are
specifically directed to intermediary controlled payment based code
request and release." Id.
We disagree. In determining that the claims are directed to an abstract
idea, the Examiner accurately assesses the "focus" of the claims and their
"character as a whole." See, e.g., Final Act. 3--4, 6-7; Ans. 4--9; see also
SAP Am., 898 F.3d at 1167.
Moreover, we determine that the claims recite abstract ideas falling
within the three groupings of abstract ideas specified in the 2019 Guidance:
mathematical concepts, certain methods of organizing human activity, and
mental processes. See 84 Fed. Reg. at 51-52. As relevant here, the
Guidance identifies "marketing or sales activities or behaviors" as among
the enumerated methods of organizing human activity. Id. at 52. As
explained in the following paragraphs, each independent claim recites
"marketing or sales activities or behaviors" in various limitations.
Specifically, claim 1 recites the following limitations:
• "receiving ... a first message ... the first message being
a request for a code";
• "transmitting ... a charge request ... to charge an
account of a user for a value of a code, the charge request
being in response to the first message";
• "receiving ... a confirmation ... indicating that the
account has been charged";
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• "transmitting ... a request for the code ... transmit[ ting]
the request for the code in response to receiving the
confirmation ... indicating that the account has been
charged";
• "wherein ... a plurality of codes [are] stored that are
available for distribution";
• "receiving the request for the code";
• "marking a selected one of the codes stored ...
as reserved"·
'
• "transmitting the code that is marked as reserved";
• "receiving ... the code that is transmitted ... in response
to transmitting the request for the code";
• "transmitting ... the code to ... the user";
• "marking the code as redeemed, redemption of the code
allowing access to ... the article, virtual article, service,
or functionality";
• "receiving ... payment ... in response to the charge
request";
• "transmitting ... a payment ... in response to receiving
the payment."
Br. 31-32. Claim 21 recites similar limitations. Id. at 33-34.
The above-identified limitations encompass "marketing or sales
activities or behaviors" because they specify purchasing a redeemable code
for access to goods or services, redeeming the code, and transferring a
payment from a buyer's account to a seller's account through a third-party
intermediary. In Alice, the Supreme Court recognized that "[t ]he use of a
third-party intermediary (or 'clearing house') is ... a building block of the
modem economy." Alice, 573 U.S. at 217. Also, as noted above, the 2019
Guidance identifies "marketing or sales activities or behaviors" as among
the enumerated methods of organizing human activity, and thus an abstract
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idea. 84 Fed. Reg. at 52; see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1361-63 (Fed. Cir. 2015) (deciding that the claimed concept
of "offer-based price optimization" is an abstract idea "similar to other
'fundamental economic concepts' found to be abstract ideas by the Supreme
Court and this court").
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG Two
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54--55. "Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim 'directed to' a judicial exception
.... " Id. at 51.
As additional elements, claim 1 recites computer-system components,
i.e., a "user device," an "account server," a "merchant server," and a "billing
server." Br. 31-32. Claim 21 recites a "billing server" with certain
hardware components, i.e., a "processor," a "computer-readable medium,"
and a "network interface device." Id. at 33-34.
Claim 1 specifies using the computer-system components as follows:
• "receiving, with a billing server, a first message from a
user device, the first message being a request for a code";
• "transmitting, with a billing server, a charge request to an
account server to charge an account of a user for a value
of a code, the charge request being in response to the first
message";
• "receiving, with a billing server, a confirmationfrom the
account server indicating that the account has been
charged";
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• "transmitting, with a billing server, a request for the code
to the merchant server wherein the billing server is
configured to transmit the request for the code in
response to receiving the confirmationfrom the account
server indicating that the account has been charged";
• "wherein the merchant server has a plurality of codes
stored that are available for distribution, the merchant
server receiving the request for the code from the billing
server, the merchant server marking a selected one of the
codes stored by the merchant server as reserved, the
merchant server transmitting the code that is marked as
reserved to the billing server";
• "receiving, with a billing server, the code that is
transmitted from a merchant server in response to
transmitting the request for the code";
• "transmitting, with a billing server, the code to the user
device of the user, the user device being operable to
redeem the code with the merchant server and the
merchant server marking the code as redeemed,
redemption of the code allowing access to the user device
to the article, virtual article, service, or functionality";
• "receiving, with a billing server, payment from the
account server in response to the charge request";
• "transmitting, with a billing server, a payment to the
merchant server in response to receiving the payment."
Br. 31-32. Claim 21 recites similar limitations. Id. at 33-34.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53-54. The recited computer-system and hardware
components constitute generic computer components that perform generic
computer functions, i.e., collecting, manipulating, and communicating data.
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See Final Act. 4--6; Ans. 3--4, 5-9; see also Spec. ,r,r 22-30, 44--50, 55---61,
62-66.
Appellants argue that the claims focus "on an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity." Br. 13. Specifically, Appellants
assert that the claims are "directed to a specific improvement to the way
computers operate, embodied in intermediary controlled payment based
code request and release." Id. at 13; see id. at 15. In addition, Appellants
analogize the claims here to the claims in Enfzsh. See id. at 8-10, 23 (citing
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). In
particular, Appellants contend that the claims here have "a specific technical
benefit that extends beyond simply the abstract idea of an intermediate
broker." Id. at 23.
Enfish does not aid Appellants. The claims in Enfzsh recited a "self-
referential table" as "a specific type of data structure designed to improve
the way a computer stores and retrieves data in memory." Enfzsh, 822 F.3d
at 1339. Hence, the claims in Enfzsh were "directed to a specific
improvement to computer functionality." Id. at 1338. Further, the Federal
Circuit has explained that the claims in Enfzsh "did more than allow
computers to perform familiar tasks with greater speed and efficiency" and
"actually permitted users to launch and construct databases in a new way."
Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018).
Unlike the claims in Enfzsh, the claims here do not improve computer
functionality. See Final Act. 4; Ans. 3--4, 5-8. As the Examiner determines,
the claims "do not involve any improvements to another technology,
technical field, or improvements to the functioning of the computer itself."
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Ans. 3--4; see id. at 5-9. According to the Examiner, the argued
"intermediary controlled payment based code request and release" merely
provides "a generic server between the merchant server and the buyer
computer to execute the fundamental well-known economic practice of
confirming that the user's account has been charged prior to issuing the
purchased product" and "does not provide improved functionality to the
generic computer components claimed." Id. at 4.
For instance, the claims do not recite an advance in hardware or
software that causes a computer itself to operate faster or more efficiently.
Instead, the claims use conventional computer-system and hardware
components in their ordinary capacities to collect, manipulate, and
communicate data, e.g., "receiv[ e] ... a request for a code," "transmit[] ...
a charge request," "receiv[ e] a confirmation ... indicating that the account
has been charged," "transmit[] . . . a request for the code," "receiv[ e] ...
the code," "transmit[] ... the code," "receiv[ e] ... payment," and "transmit
... a payment." See Br. 16, 31-32, 33-34; Spec. ,r,r 22-30.
Appellants assert that Specification paragraph 27 explains how the
claimed invention achieves benefits "over conventional systems, such as the
ability for an intermediate billing server to perform payment based code
request and delivery in a manner that integrates with code availability and
redemption notations that are primarily controlled by a merchant server."
Br. 16 (emphasis omitted). But paragraph 27 does not describe an
improvement in the functioning of a computer itself. Instead, it describes
how a billing server acts as an intermediary by receiving a redeemable code
from a merchant server and then transmitting the redeemable code to a user
device:
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The merchant server 16 ... has a plurality of codes ( codes 1
to 7). . . . The merchant server 16 ... sends or transmits one
of the codes, in the present example code 4, to the billing
server 14. . . . The billing server 14 receives the code from
the merchant server 16 and then automatically ... sends
or transmits the code to the user mobile phone 12.
Spec. ,r 27.
In contrast to Appellants' assertions about improving computer
functionality, Specification paragraph 2 explains that the invention
endeavors to "allow for merchants to more easily sell codes to users." Id.
,r 2.
Appellants also analogize the claims here to the claims in McRO. See
Br. 20-21 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016)). In particular, Appellants contend that the claims
recite "an improvement in computer-related technology" based on
"a teaching in the specification about how the claimed invention improves a
computer or other technology." Id. at 21. Appellants also contend that the
claims recite "a particular solution to a problem or a particular way to
achieve a desired outcome." Id.
McRO does not aid Appellants. The claims in McRO recited a
"specific ... improvement in computer animation" using "unconventional
rules" that related "sub-sequences of phonemes, timings, and morph weight
sets" to automatically animate lip synchronization and facial expressions for
three-dimensional characters that only human animators could previously
produce. McRO, 837 F.3d at 1302---03, 1307---08, 1313-15. In McRO, "the
incorporation of the claimed rules" improved an existing technological
process. Id. at 1314.
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Unlike the claims in McRO, the claims here do not improve an
existing technological process. See Alice, 573 U.S. at 223 (explaining that
"the claims in Diehr were patent eligible because they improved an existing
technological process"); see also Final Act. 4; Ans. 3--4, 5-8. As the
Examiner determines, the claimed invention "is a business solution to a
problem rooted in an abstract idea." Ans. 7. And as the Examiner explains,
the claimed functions "such as 'receiving and transmitting' between multiple
servers are conventional functions of a computer system which add nothing
more than the abstract idea itself," and the "computer is merely a platform
on which the abstract idea of processing a sale is implemented." Id. at 7-8.
Appellants further analogize the claims here to the claims in
BASCOM. Br. 21-22 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). In particular, Appellants
argue that the claimed additional elements should be considered "in
combination, as well as individually, when determining whether a claim as
a whole amounts to significantly more, as this may be found in the
nonconventional and non-generic arrangement of known, conventional
elements." Id. at 22.
Appellants misplace their reliance on BASCOM. There, the claims
recited a "specific method of filtering Internet content" requiring "the
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user."
BASCOM, 827 F.3d at 1345--46, 1350. The Federal Circuit reasoned that the
claims covered "a technology-based solution ... to filter content on the
Internet that overcomes existing problems with other Internet filtering
systems" and "improve[ s] an existing technological process." Id. at 13 51
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(citing Alice, 573 U.S. at 223); see Alice, 573 U.S. at 223 (explaining that
"the claims in Diehr were patent eligible because they improved an existing
technological process").
Unlike the claims in BASCOM, the claims here do not cover a
technology-based solution that improves an existing technological process.
See Final Act. 4; Ans. 3--4, 8-9. As the Examiner determines, the claimed
invention "is a business solution (helping merchants sell codes) to a problem
rooted in an abstract idea of processing a sale." Ans. 9; see Spec. ,r 2. As
the Examiner also determines, the claimed invention "does not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer itself." Ans. 9. Hence, the claims here do not
resemble the claims in BASCOM.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims "may have integrated the uudicial]
exception into a practical application." 84 Fed. Reg. at 55 & nn.25-29
(citing Manual of Patent Examining Procedure§§ 2106.05(a}-(c),
2106.05(e)). As the above analysis indicates, we have evaluated Appellants'
arguments in light of those exemplary considerations. For the reasons
discussed above, however, we determine that each independent claim as a
whole does not integrate the recited abstract ideas into a practical
application. Thus, each claim is directed to a judicial exception and does not
satisfy§ 101 under Mayo/Alice step one.
MAYO/ALICE STEP Two: PTO STEP 2B
Because we determine that each independent claim is directed to a
judicial exception, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
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additional elements" add enough to transform the "nature of the claim" into
"significantly more" than the judicial exception. See Alice, 573 U.S.
at 217-18, 221-22 ( quoting Mayo, 566 U.S. at 78-79). Under Mayo/Alice
step two, we "look with more specificity at what the claim elements add, in
order to determine 'whether they identify an "inventive concept" in the
application of the ineligible subject matter' to which the claim is directed."
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An "inventive concept" requires more than
"well-understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But a
"non-conventional and non-generic arrangement of known, conventional
pieces" may provide an "inventive concept" satisfying step two. BASCOM,
827 F.3d at 1350.
As discussed above, claim 1 recites computer-system components,
i.e., a "user device," an "account server," a "merchant server," and a "billing
server," while claim 21 recites a "billing server" with certain hardware
components, i.e., a "processor," a "computer-readable medium," and a
"network interface device." Br. 31-32, 33-34. The Examiner correctly
finds that those additional elements operate in a "routine[] and
conventional[]" manner and "undertake their roles in performance of their
activities according to their generic functionalities which are well-
understood, routine and conventional." Final Act. 6; see Ans. 4. Further,
the Examiner correctly finds that those additional elements "carry out well-
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known functionalit[ies]," i.e., collecting, manipulating, and communicating
data. Ans. 4, 7-8.
Consistent with the Examiner's findings, the Specification describes
the required computer-system and hardware components generically and
evidences their conventional nature. See, e.g., Spec. ,r,r 22-30, 44--50,
55-61, 62---66. As an example, the Specification describes "a machine in the
exemplary form of a computer system" that may "operate[] as a standalone
device or may be connected ( e.g., networked) to other machines" and "may
operate in the capacity of a server or a client machine" or "as a peer
machine." Id. ,r 62. According to the Specification, a "machine" includes
"a personal computer (PC), a tablet PC, a set-top box (STB), a Personal
Digital Assistant (PDA), a cellular telephone, a web appliance, a network
router, switch or bridge, or any machine capable of executing a set of
instructions" and "any collection of machines that individually or jointly
execute a set ( or multiple sets) of instructions to perform any one or more of
the methodologies discussed herein." Id.
As another example, the Specification describes several types of
computer-readable media, including "read-only memory (ROM), flash
memory, dynamic random access memory (DRAM) such as synchronous
DRAM (SDRAM) or Rambus DRAM (RDRAM), etc.)" and "flash memory,
static random access memory (SRAM, etc.)." Id. ,r 63.
In addition, court decisions have recognized that generic computer-
system and hardware components operating to collect, manipulate, and
communicate data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226-27; SAP Am., 898 F.3d at 1164--65
& n.1, 1170; Apple, 842 F.3d at 1234, 1241--42; Intellectual Ventures I LLC
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v. Symantec Corp., 838 F.3d 1307, 1316-20 (Fed. Cir. 2016); Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014);
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 993
(Fed. Cir. 2014).
For example, the system claims in Alice recited a "data processing
system" ( e.g., a "processor") with a "communications controller" ( e.g., a
"network interface device") and a "data storage unit" (e.g., a "computer-
readable medium"). Alice, 573 U.S. at 226. The Supreme Court decided
that the system claims failed to satisfy § 101 because "[ n ]early every
computer" includes those generic components for performing "basic
calculation, storage, and transmission functions" and the system claims
simply implemented the same abstract idea as the method claims. Id.
at 226-27. The Supreme Court reasoned that (1) "the system claims are no
different from the method claims in substance"; (2) "[t]he method claims
recite the abstract idea implemented on a generic computer"; and (3) "the
system claims recite a handful of generic computer components configured
to implement the same idea." Id. at 226.
Here, the claimed "user device," "account server," "merchant server,"
"billing server," "processor," "computer-readable medium," and "network
interface device" perform "basic calculation, storage, and transmission
functions" that nearly every computer performs. Br. 31-32, 33-34; see
Final Act. 4--6; Ans. 4. For instance, nearly every computer includes a
"processor" to manipulate data, a "computer-readable medium" to store data,
and a "network interface device" to communicate data. Hence, the claimed
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generic computer-system and hardware components do not satisfy the
"inventive concept" requirement. See, e.g., Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (holding
that "generic computer components such as an 'interface,' 'network,' and
'database"' did not satisfy the "inventive concept" requirement);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095-96 (Fed. Cir.
2016) ( describing the claimed "microprocessor" and "user interface" as
"generic computer elements"); Prism Techs. LLC v. T-Mobile USA, Inc.,
696 F. App'x 1014, 1016-17 (Fed. Cir. 2017) (describing the claimed
"authentication server," "access server," "Internet Protocol network," "client
computer device," and "database" as "indisputably generic computer
components").
"Whether a combination of claim limitations supplies an inventive
concept that renders a claim 'significantly more' than an abstract idea to
which it is directed is a question of law." BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Given the claimed generic
computer-system and hardware components that perform generic computer
functions, we conclude that the combination of limitations in each
independent claim does not supply an "inventive concept" that renders the
claim "significantly more" than an abstract idea. Thus, each claim does not
satisfy§ 101 under Mayo/Alice step two.
SUMMARY FOR PATENT ELIGIBILITY
For the reasons discussed above, Appellants' arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
the independent claims. We also sustain the § 101 rejection of the
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dependent claims because Appellants do not argue eligibility separately for
them. See 37 C.F.R. § 4I.37(c)(l)(iv).
The§ 103 Rejection of Claims 1--4 and 21
INDEPENDENT CLAIMS 1 AND 21
As noted above, the § 103 rejection of claims 1 and 21 rests on
Hirson, Quirk, and Foth. See Final Act. 9-16. Appellants argue that the
Examiner erred in rejecting claims 1 and 21 because the combination of
Hirson, Quirk, and Foth does not teach or suggest the following limitations
in claim 1 and similar limitations in claim 21 :
transmitting, with the billing server, a request for the code to
the merchant server wherein the billing server is configured to
transmit the request for the code in response to receiving the
confirmation from the account server indicating that the account
has been charged ... the merchant server marking a selected
one of the codes stored by the merchant server as reserved, the
merchant server transmitting the code that is marked as
reserved to the billing server.
See Br. 27-29.
Specifically, Appellants assert that the sections of the references cited
do not teach that "the billing server is configured to transmit the request for
the code in response to receiving the confirmation from the account server
indicating that the account has been charged." Br. 29. Appellants also
assert that Quirk does not teach a billing server "located 'between' the user
mobile phone 12 and the merchant server 16," as claimed, and instead
teaches a code server "located between the user device and the financial
management system." Id. at 27. According to Appellants, Quirk's
arrangement differs from the claimed arrangement because Quirk "fails to
teach or suggest the sequence of steps wherein the billing server 14 is
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configured to wait for the confirmation 32 before doing the code 34 and the
merchant server 16 then marks the code as reserved." Id. Appellants further
assert that Foth's use of a broker computer does not teach "that there is a
request for a code in response to receiving the confirmation from the account
server." Id. at 29.
The Examiner finds that Quirk teaches using a content-specific code
for a media item and retrieving the code after determining that the media
item has been purchased. Final Act. 12 ( citing Quirk ,r 49). The Examiner
also finds that Foth teaches ( 1) a merchant server generating a unique code
Kprod representing a digital-content item and (2) a broker server receiving a
request from a purchaser and confirming that "the Kprod is correct."
Ans. 10. The Examiner reasons that the code Kprod "is generated by the
merchant and saved on the website (i.e. server)" and "is unique to each
product as is equivalent to marking a code reserved." Final Act. 15; see id.
at 14--15 (citing Foth col. 5, 11. 9-67, col. 6, 11. 1-13, 56-67, col. 7, 11. 26-58,
col. 9, 11. 43---67, col. 11, 11. 11-32). According to the Examiner, it "would
not be a reasonable interpretation of [Foth] to think that the customer would
receive the Kprod (i.e., code) prior to paying for" the digital-content item.
Ans. 10.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Hirson,
Quirk, and Foth teach or suggest that the billing server transmits "a request
for the code to the merchant server ... in response to receiving the
confirmation from the account server indicating that the account has been
charged," as required by claims 1 and 21.
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Quirk discloses awaiting a determination that a purchase has been
made before retrieving the purchased media item. See Quirk ,r 49. But the
cited portions of Quirk do not discuss acquiring a media item by
"transmitting, with the billing server, a request for the code to the merchant
server ... in response to receiving the confirmation from the account server
indicating that the account has been charged." See, e.g., Quirk ,r,r 47--49.
Foth discloses a merchant computer encrypting a digital-content item
for sale by first calculating a unique product key Kprod for the item. See
Foth col. 5, 11. 14--17. But Foth also discloses a broker computer
"generat[ing] the product key." See Foth col. 7, 11. 40-67. Further, the cited
portions of Foth do not discuss acquiring a digital-content item by
"transmitting, with the billing server, a request for the code to the merchant
server ... in response to receiving the confirmation from the account server
indicating that the account has been charged."
Hence, we do not sustain the § 103 rejection of claims 1 and 21.
DEPENDENT CLAIMS 2--4
Claims 2--4 depend directly from claim 1. For the reasons discussed
for claim 1, we do not sustain the § 103 rejection of claims 2--4.
Because our determination resolves the obviousness issue for
claims 1--4 and 21, we need not address Appellants' other arguments
regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may
render a decision based on "a single dispositive issue").
DECISION
We affirm the rejection of claims 1--4 and 21 under 35 U.S.C. § 101.
We reverse the rejection of claims 1--4 and 21 under 35 U.S.C. § 103.
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Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner's decision to reject all of the claims on
appeal. 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)(l)(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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