Ex Parte Cox et al

Patent Trial and Appeal Board

Jan 19, 2017

13363742 (P.T.A.B. Jan. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/363,742 02/01/2012 Jeffrey Allen Cox P00737-US-UTIL
(1788-76)
9771
71973 7590 01/19/2017
BudzynFortunato IP Law, LLC
120 Eagle Rock Avenue
Suite 328
East Hanover, NJ 07936
EXAMINER
ZIEGLE, STEPHANIE M
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
01/19/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte JEFFREY ALLEN COX and MOSTAFA HUSSEIN SABET
Appeal 2015-0015171
Application 13/363,7422
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 5, and 7. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
August 22, 2014) and Reply Br. (“Reply Br.,” filed November 14, 2014),
and the Examiner’s Answer (“Ans.,” mailed September 16, 2014) and Final
Office Action (“Final Act.,” mailed February 19, 2014).
2 Appellants identify MasterCard International, Incorporated as the real
party in interest. App. Br. 2.
Appeal 2015-001517
Application 13/363,742
CLAIMED INVENTION
Appellants’ claimed invention “relates to systems and methods for
pre-purchasing gasoline without taking delivery thereof at the time of
purchase” (Spec. 11).
Claim 1, reproduced below, is the sole independent claim and
representative of the claimed subject matter:
1. A method for permitting a consumer to purchase
gasoline from a retail location without contemporaneously taking
delivery of the gasoline, said method comprising:
recording details in a database of a purchase, based on a
financial transaction instrument, of a specified number of units
of gasoline at a specified price per unit, without delivery of said
gasoline, to establish, in an account, a first credit, said first credit
being associated with one or more gas retail locations, said
account being associated with said financial transaction
instrument;
authenticating a transaction of a sale amount, based on
said financial transaction instrument, over a computer network to
purchase a certain number of units of gasoline at a certain price
per unit, with delivery, from a transacted gas retail location;
processing said transaction, based on said financial
transaction instrument, including comparing said transaction
with said first credit, using a computing device,
wherein, if it is determined that said transacted gas
retail location does not correspond with any of said one or
more gas retail locations associated with said first credit,
then,
said sale amount is cleared against said
financial transaction instrument with no adjustment
of said first credit, and
wherein, if it is determined that said transacted gas
retail location corresponds with one of said one or more
gas retail locations associated with said first credit, then,
if it is determined that said specified number
of units is equal to or greater than said certain
number of units, a credit is established equal to said
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sale amount, and said first credit is adjusted to
reflect an adjusted first credit corresponding to a
number of units equal to the difference between said
specified number of units and said certain number
of units, and corresponding to said specified price
per unit, and,
if it is determined that said certain number of
units is greater than said specified number of units,
a charge is calculated by taking the difference
between said certain number of units and said
specified number of units and multiplying said
difference by said certain price per unit, said first
credit being adjusted to zero;
selectively adjusting said sale amount to reflect an
adjusted sale amount by,
if it is determined that said specified number of units
is equal to or greater than said certain number of units,
making said adjusted sale amount equal to said sale
amount reduced by said credit, and
if it is determined that said certain number of units
is greater than said specified number of units, making said
adjusted sale amount equal to said charge, and
clearing said adjusted sale amount as a final transaction
applied against said financial transaction instrument.
REJECTIONS
Claims 1, 2, 4, 5, and 7 are rejected under 35U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1, 2, 4, 5, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hwang (US 2010/0306078 Al, pub. Dec. 2, 2010),
Stouffer (US 2012/0130787 Al, pub. May 24, 2012), and Ruckart
(US 2007/0267482 Al, pub. Nov. 22, 2007).
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ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims 1, 2, 4, 5, and 7 as a group (Reply Br. 2-4).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts.” Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” id., e.g., to an
abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination”’
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In this regard, the Federal Circuit has instructed that claims are to be
considered in their entirety to determine “whether their character as a whole
is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)).
Turning to the framework set forth in Alice, and as the first step of
that analysis, we agree with the Examiner that claim 1 is directed to
conducting a transaction for the purchase of goods, i.e., gasoline, for future
delivery, i.e., to a fundamental economic practice, which is an abstract idea
(Ans. 2).
Appellants ostensibly argue that the rejection is improper because
Examiner has “provided no proof that the actual limitations of the appealed
claims constitute a fundamental economic principle and, thus, may be
considered an abstract idea” (Reply Br. 2). But there is no such requirement.
Instead, the Federal Circuit has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
Cf. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, “all that is
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required of the office to meet its prima facie burden of production is to set
forth the statutory basis of the rejection and the reference or references relied
upon in a sufficiently articulate and informative manner as to meet the notice
requirement of § 132.” Id. at 1363.
In rejecting the pending claims under § 101, the Examiner notified
Appellants that the claims are directed to the abstract idea of conducting a
transaction, which is a fundamental economic practice, and that the
additional claim elements or combination of elements in the claims amount
to no more than “mere instructions to implement the idea on a computer or
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” (Ans. 2). The
Examiner, thus, notified Appellants of the reasons for the rejection “together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35 U.S.C.
§132. And, in doing so, the Examiner set forth a prima facie case of
unpatentability.
Appellants did not respond in their Reply Brief by asserting that they
did not understand the Examiner’s new ground of rejection. To the contrary,
Appellants’ understanding of the rejection is clearly manifested by their
substantive response to the rejection as set forth in their Brief (Reply Br. 2—
4).
We also are not persuaded of error on the part of the Examiner by
Appellants’ argument that systems are known in the prior art that permit pre­
purchasing of gasoline credits, and that the claims do not preempt use of a
fundamental economic practice {id. at 3). Although the Supreme Court, in
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Alice, described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption,” Alice, 134 S. Ct. at 2354, characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed.Cir.2015) (citing Alice, 134 S. Ct. at 2354).
Yet, although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Turning to step two of the Alice analysis, Appellants argue that the
“recording” step recited in claim 1, i.e., “recording details in a database of a
purchase, based on a financial transaction instrument, of a specified number
of units of gasoline at a specified price per unit,” is a “meaningful limitation
which goes beyond the notion of merely conducting a transaction within a
computer environment” (Reply Br. 3—4). Yet recording, i.e., storing, data in
a database is undisputedly well-known. See, e.g., Content Extraction and
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347
(Fed.Cir.2014) (“Applying Mayo/Alice step one, we agree with the district
court that the claims of the asserted patent are drawn to the abstract idea of
1) collecting data, 2) recognizing certain data within the collected data set
and 3) storing that recognized data in a memory. The concept of data
collection, recognition, and storage is undisputedly well-known. Indeed,
humans have always performed these functions.”). As such, merely storing
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data, i.e., the purchase details, in a database, does not provide a meaningful
limitation that elevates the claim to the level of patentable subject matter.
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2, 4, 5, and 7, which
fall with claim 1.
Obviousness
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because
none of the cited references discloses or suggests using a single financial
transaction instrument to pre-purchase gasoline where a user, in taking
delivery, may redeem credits based on the pre-purchased gasoline and may
process any amount beyond what is redeemable by credit as a financial
transaction, i.e.,
wherein, if it is determined that said transacted gas retail
location corresponds with one of said one or more gas retail
locations associated with said first credit, then,
***
if it is determined that said certain number of units [the
number of units for delivery] is greater than said specified
number of units [the number of units pre-purchased], a
charge is calculated by taking the difference between said
certain number of units and said specified number of units
and multiplying said difference by said certain price per
unit, said first credit being adjusted to zero;
selectively adjusting said sale amount to reflect an adjusted sale
amount by,
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if it is determined that said certain number of units is
greater than said specified number of units, making said
adjusted sale amount equal to said charge, and
clearing said adjusted sale amount as a final transaction applied
against said financial transaction instrument^]
as recited in claim 1 (App. Br. 5—12). Instead, we agree with the Examiner
that Hwang, Stouffer, and Ruckart, in combination, disclose the argued
features (Ans. 3).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner cites
Hwang as disclosing a system and method for fuel price protection where a
customer can pre-purchase gasoline units at a specified price for use in
subsequent transactions and as further disclosing that a secondary credit card
can be used if the pre-paid units are not sufficient for the transaction (Final
Act. 3).3 The Examiner cites Ruckart as disclosing a system and method for
pre-purchasing goods, including gasoline, and utilizing the pre-paid units in
conjunction with a credit card to make a purchase where the sale price is
adjusted to equal the difference between the purchased units and pre-paid
units multiplied by the current price per-unit (id.). The Examiner further
relies on Stouffer as disclosing a single payment card that contains a
plurality of pre-paid purses, including a purse for gas purchases, and that can
also contain a credit card, which can be used to conduct a seamless split-
tender transaction when the pre-paid purse contains insufficient funds for the
entire transaction (id.)
3 In Hwang, if an account has insufficient credit, the transaction is denied,
and the payment for the entire delivery is made using another form of
payment, i.e., the secondary credit card (see, e.g., Hwang, Fig. 6b)
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The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of Appellants’ invention to combine
the prepaid gas system of Hwang with the seamless split-tender transaction
system of Stouffer because “it easily, quickly, and conveniently allows for a
consumer to utilize a multitude of accounts to conduct a transaction while
allowing for the consumer to carry less transaction instruments with them”
{id. at 7 (citing Stouffer || 2, 3)). However, the Examiner acknowledges
that the combination of Hwang and Stouffer does not disclose that the
adjusted sales amount “is calculated by taking the difference between said
certain number of units and said specified number of units and multiplying
said difference by said certain price per unit,” and cites Ruckart to cure this
deficiency {id.). The Examiner then concludes that it would obvious to a
person skilled in the art at the time of Appellants’ invention to include the
ability to calculate a remaining balance, as disclosed in Ruckart, in the
Hwang/Stouffer combination because “the claimed invention is merely a
combination of old elements, and in the combination each element merely
would have performed the same function as it did separately, and one of
ordinary skill in the art would have recognized that the results of the
combination were predictable” {id.).
Appellants state that they are “in agreement with the Examiner on the
disclosures of Hwang, Ruckart and Stouffer” (App. Br. 12). But Appellants
maintain that the combination of Hwang, Ruckart and Stouffer fails to yield
the claimed invention because (1) Hwang allows for pre-purchase of
gasoline with subsequent redemption only if sufficient credits are available;
(2) Stouffer allows for splitting payment over multiple sources but, in all
instances, the transactions are monetary based; and (3) Ruckart requires
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utilizing pre-paid units in conjunction with a credit card as separate
transactions, and also requires consumer involvement4 (see id. at 8—12).
Appellants’ argument is not persuasive at least because it is based on
the bodily incorporation of the features of Ruckart and Stouffer into the
Hwang system, which is not the test for obviousness. Instead, the test is
what the combined teachings of these references would have suggested to a
person of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(“[I]t is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”); In re Nievelt,
482 F.2d 965 (CCPA 1973) (“Combining the teachings of references does
not involve an ability to combine their specific structures.”).
In the absence of persuasive arguments or technical reasoning to
explain why the motivation set forth by the Examiner is insufficient or why
the modification described by the Examiner is more than the predictable use
of prior art elements according to their established functions, we are not
persuaded of error on the part of the Examiner.
Therefore, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103(a). We also sustain the rejection of dependent
claims 2, 4, 5, and 7, which are not argued separately.
4 Ruckart discloses that at the point of sale, the consumer is presented with
an option to apply pre-paid units for the current purchase. The consumer
can accept by entering the number of pre-paid units to apply via a keypad;
alternatively, the consumer can press a button to decline (Ruckart 131).
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DECISION
The Examiner’s rejection of claims 1, 2, 4, 5, and 7 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 1, 2, 4, 5, and 7 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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