Ex Parte Ehbauer et al

Patent Trial and Appeal Board

Feb 26, 2018

12896511 (P.T.A.B. Feb. 26, 2018)

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.
12/896,511 10/01/2010 JOSEF EHBAUER 13913-0454001/2010P002151 9894
32864 7590 02/28/2018
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/28/2018 ELECTRONIC
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEF EHBAUER, RALF RUBEL, STEFAN TROEGER,
YANGNING PENG, GERO SCHULZ, CHRISTOPH GERSTLE,
CHRISTIAN KLUMPP, MARINA LAUMENIS, ANGELA KUBITZEK,
ALISSA RYZHOVA, MARCUS BOUWHUIS, MARTIN DAUER, and
GOKULA SUNDAR PONNUSAMY
Appeal 2016-001705
Application 12/896,5111
Technology Center 3600
Before, JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellants identify SAP SE as the real party in interest. Br. 4.
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Application 12/896,511
SUMMARY OF DECISION
We REVERSE (37 C.F.R. § 41.50(b)).
THE INVENTION
Appellants’ claims are directed to a method/system “for processing an
online transaction involving a payment service provider” (Abstr. 2).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method for processing an
online transaction involving a payment service provider, the
method comprising:
receiving, in a backend system and from a ffontend
system, an initiate payment call triggered by a user application
for a transaction involving a payment service provider external
to a merchant system comprising the frontend and backend
systems, wherein the frontend system is configured to be
accessible to a user using the user application and the backend
system is configured to perform transaction logistics and to
control storage of financial records;
forwarding a set checkout instruction from the backend
system to the payment service provider with first information
about the transaction, the set checkout instruction causing the
payment service provider to open a session regarding the
transaction before the user application is redirected from the
ffontend system to the payment service provider;
redirecting the user application from the frontend system
to the payment service provider;
receiving a finalize payment instruction in the backend
system from the frontend system after redirecting the user
application from the frontend system; and
forwarding, in response to the finalize payment
instruction, a perform checkout instruction from the backend
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system to the payment service provider with second
information about the transaction, wherein forwarding the
perform checkout instruction is performed after the payment
service provider has confirmed payment and redirected the user
application from the payment service provider to the frontend
system, and wherein the payment service provider posts
payment and payment confirmation in response to the perform
checkout instruction.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Rieck et al. US 2008/0103923 A1
(hereinafter “Rieck”)
Puuraetal. US 2011/0106709 Al
(hereinafter “Puura”)
Stocker US 2012/0197756 Al
The following rejection is before us for review.
Claims 1-20 are rejected under 35 U.S.C. § 103.
ANALYSIS
35 U.S.C. § 103 REJECTION
Each of independent claims 1, 9 and 15, recites in pertinent part,
receiving, in a backend system and
from a frontend system, an initiate
payment call triggered by a user
application for a transaction involving
a payment service provider external to
a merchant system comprising the
frontend and backend systems,
wherein the frontend system is
May 1,2008
May 5,2011
Aug. 2, 2012
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configured to be accessible to a user
using the user application and the
backend system is configured to
perform transaction logistics and to
control storage of financial records; . .
Claim 1 App'x. 18.
Concerning this limitation, the Examiner however found,
(see figs. 3 and 4; 0038, which
discloses that "A customer 100
initiates a purchase over a
communication network 102 through
by a hosting website 108);
...(emphasis original) (Answer 3—4);
[and] [s]econdly[,] the limitation
‘wherein the frontend system is
configured to be accessible to a user
using the user application and the
backend system is configured to
perform transaction logistics and to
control storage of financial records’ is
an intended use limitation or at best a
non-functional descriptive material
which further explains the functions
of the claimed front end system and
the back end system but does not
further limit the claimed invention.
(Answer 11).
Appellants argue,
at least the cited portions of Rieck fail
to disclose or render obvious
receiving, in a backend system and
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from a frontend system, an initiate
payment call triggered by a user
application for a transaction involving
a payment service provider external to
a merchant system comprising the
frontend and backend systems
(emphasis original). Instead, and as
discussed above, Rieck discusses
providing an arbitration forum to a
payment service provider with a
centralized gateway (Rieck, [0002]),
where CPG is a Java application 122
deployed separately from a company's
e-commerce platforms 146 (Rieck,
[0039] and FIG. 2, emphasis added).
That is, the centralized payment
gateway (CPG) of Rieck is deployed
separately from a company's
ecommerce platforms 146, which is
different than a merchant system
comprising the frontend and back end
systems, as provided in claims 1, 9
and 15.
(Appeal Br. 14-15).
We disagree with the Examiner’s claim construction here, and hence
with the Examiner’s rejection being proper. A key part of the limitation at
issue is, “wherein the frontend system is configured to be accessible to a
user using the user application and the backend system is configured to
perform transaction logistics and to control storage of financial records . . .”
(emphasis added). We construe the use of the phrase “fr configured to” to
require a specially programmed computer to effect the required functions,
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and, as such, each instance constitutes a positive limitation. See WMS
Gaming Inc. v. Inti Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999),
{citing In reAlappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (enbanc)).
Therefore, we disagree with the Examiner that the use of the phrase
‘“configured to’ is an intended use or a functional language that does not
structurally distinguish the claimed invention from the prior art.” (Final
Act. 6, see also Answer 11).
The Examiner finds that Rieck discloses the claimed frontend system,
backend system, and payment service, respectively, in shopping site 104,
hosting site 108, and centralized payment gateway 112 disclosed by Rieck.
(Answer 3—4, citing Rieck 38). However, because the Examiner does not
give weight to the “configured to” clauses attached to each of the claimed
front and backend systems referenced above, they are left unmapped in the
rejection.
Accordingly, we cannot sustain the rejection of independent claims 1,
9, and 15. Since claims 2-8, 10-14, and 16-20 depend from one of claims
1, 9, and 15, and since we cannot sustain the rejection of claims 1, 9, and 15,
the rejection of claims 2-8, 10-14, and 16-20 likewise cannot be sustained.
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35 U.S.C. § 101 REJECTION
Pursuant to our authority under 37 CFR § 41.50(b), we enter a new
grounds of rejection of claims 1-20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[wjhat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
The preamble states it is a method for processing an online transaction
involving a payment service provider. The steps in claim 1, which are
representative of the scope of all the independent claims before us, result in:
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forwarding, in response to the finalize payment
instruction, a perform checkout instruction from
the backend system to the payment service
provider with second information about the
transaction, wherein forwarding the perform
checkout instruction is performed after the
payment service provider has confirmed payment
and redirected the user application from the
payment service provider to the frontend system,
and wherein the payment service provider posts
payment and payment confirmation in response to
the perform checkout instruction.
Claim 1 App’x 18.
The Specification further states,
Payment service providers act in online
environments as facilitators of financial
transactions between a payer and a payee, for
example when one or more customers purchase
goods or services from a vendor. Payment service
providers use different models for integration with
the vendor system. Some customers have accounts
with a payment service provider where they
maintain their payment preferences such as credit
or debit cards, bank accounts, etc.
Specification 1:2-7. Thus, all this evidence shows that claim 1 is directed to
insuring payment confirmation is made against any of various forms
payment preferences before directing the order-taking portion of a merchant
system to perform checkout. It follows from prior Supreme Court cases, and
Gottschalkv. Benson, 409 U.S. 63 (1972) in particular, that the claims at
issue here are directed to an abstract idea. Insuring payment confirmation is
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made against any of various forms payment preferences before directing the
order-taking portion of a merchant system to perform checkout is a
fundamental economic practice of a transaction because payment for
goods/services is the engine of commerce. The patent-ineligible end of the
35U.S.C. § 101 spectrum includes fundamental economic practices. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2355-1257. Thus, insuring payment
confirmation is made against any of various forms payment preferences
before directing the order-taking portion of a merchant system to perform
checkout is an “abstract idea” beyond the scope of § 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of insuring payment confirmation is made against any of various forms
payment preferences before directing the order-taking portion of a merchant
system to perform checkout, at issue here. Both are squarely within the
realm of “abstract ideas” as the Court has used that term. That the claims do
not preempt all forms of the abstraction or may be limited to monetary
exchanges at checkout, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
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Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. “They do
not.” Id.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval—some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
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industry. 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’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ claims simply
recite the concept of insuring payment confirmation is made against any of
various forms payment preferences before directing the order-taking portion
of a merchant system to perform checkout. The claims do not, for example,
purport to improve the functioning of the computer itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than instructions to
insuring payment confirmation is made against any of various forms
payment preferences before directing the order-taking portion of a merchant
system to perform checkout. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
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Also, as to the dependent claims, nothing in these claims make an
otherwise ineligible claim patent-eligible. That is, steps such as updating
price data (claim 2), using a URL to communicate data between front and
backend systems (claims 3, 4), and messaging to indicate status of order
(claims 5-8) are all recitations of generic computer limitations which do not
make an otherwise ineligible claim patent-eligible. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-20 under
35U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to the
examiner....
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
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).
REVERSED (37 C.F.R, § 41.500?))
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