Ex Parte Etchegoyen

Patent Trial and Appeal Board

Apr 28, 2017

13707454 (P.T.A.B. Apr. 28, 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.
13/707,454 12/06/2012 Craig S. ETCHEGOYEN UN-NP-CI-088 6170
96051 7590 05/02/2017
T Tnilnr T TS» A Tnr EXAMINER
Legacy Town Center
7160 Dallas Parkway
MILEF, ELDA G
Suite 380 ART UNIT PAPER NUMBER
rlano, IX /jUZ4 3694
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
sean.burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN
Appeal 2017-005918
Application 13/707,4541
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 “The real parties in interest are Uniloc USA, Inc. and the assignee Uniloc
Luxembourg S.A.” Appeal Br. 4.
Appeal 2017-005918
Application 13/707,454
ILLUSTRATIVE CLAIM
1. A computer implemented method for conducting an
energy resource dispensing transaction with a customer
computing device, the method comprising:
receiving a request for dispensing of an energy resource
from the customer computing device, wherein the request
includes a customer computing device identifier;
retrieving customer data that is stored prior to creation of
the request and that associates the customer computing device
identifier with one or more customer financial accounts;
determining that the one or more customer financial
accounts that are associated with the customer computing
device have funds of at least a cost of a proposed amount of the
energy resource;
causing a resource dispenser to dispense the energy
resource in a dispensed amount that is no greater than the
proposed amount;
effecting transfer of funds from the one or more customer
financial accounts to one or more seller financial accounts
associated with the resource dispenser, wherein the funds
correspond to the dispensed amount of the energy resource.
REJECTIONS
I. Claims 1—5 are rejected under 35U.S.C. § 101 as directed to
patent-ineligible subject matter.
II. Claims 1—5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Call et al. (US 2005/0192832 Al, pub. Sept. 1, 2005)
(“Call”) and Silverman (US 2012/0271686 Al, pub. Oct. 25, 2012).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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Application 13/707,454
ANALYSIS
Rejection Under 35 U.S.C. §101
Applying the first analytical step of Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347, 2355 (2014), the Examiner maintains that
claims 1—5 are directed to an abstract idea, characterized as “conducting an
energy resource dispensing transaction.” Answer 2; see also Final Action 3—
5, 8—9. Under the second step of the Alice analysis, the Examiner
determines that the claims recite generic computer functionality that does
not amount to an inventive concept that would meaningfully limit the use of
the abstract idea, so as to render the claims patent-eligible. Answer 2, 4—7;
see also Final Action 4—5.
The Appellant (Appeal Br. 9-10) argues that the purported abstract
idea fails to embrace the recited features of the independent or dependent
claims. This argument is not persuasive of error in the rejection, at least
because the Appellant does not explain how any such non-analyzed claim
features might lead to a determination that any claim is not directed to an
abstract idea.
The Appellant also criticizes the Examiner’s characterization of the
abstract idea to which the claims are directed, especially the Examiner’s
approach of looking to similar claimed subject matter that courts have
determined to be abstract ideas. See Appeal Br. 10-13. This argument is
unpersuasive, as the Supreme Court and the Court of Appeals for the Federal
Circuit have endorsed such an approach. See Alice, 134 S. Ct. at 2356 (“It
follows from our prior cases, and Bilski [v. Kappos, 561 U.S. 593 (2010)] in
particular, that the claims at issue here are directed to an abstract idea.”);
Amdocs (Israel) Limited v. Openet Telecom, Ltd., 841 F.3d 1288, 1294 (Fed.
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Appeal 2017-005918
Application 13/707,454
Cir. 2016) (“[T]he decisional mechanism courts now apply [for determining
whether a claim is directed to an abstract idea] is to examine earlier cases in
which a similar or parallel descriptive nature can be seen — what prior cases
were about, and which way they were decided.”).
In addition, the Appellant contends that the claims are patent-eligible,
regardless of whether they are directed to an abstract idea, because they
recite “significantly more” than the purported abstract idea and do not
preempt all implementations thereof. Appeal Br. 13—17. Yet, the
Appellants do not identify any claimed features that would constitute
“significantly more” than the abstract idea, in accord with Alice. Further, as
the Examiner points out (Answer 7—8) preemption is not a separate test, but
is inherently addressed within the Alice framework. See Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
The Appellants arguments, therefore, are not persuasive of error in the
rejection. The rejection of claims 1—5 under 35 U.S.C. § 101 is sustained.
Rejection Under 35 U.S.C. § 103(a)
The Appellant advances several arguments alleging error in the
obviousness rejection of various claims on appeal. See Appeal Br. 18—24.
In view of the evaluation of these arguments, provided below, we sustain the
rejection of claims 1, 2, and 5, and do not sustain the rejection of claims 3
and 4, under 35 U.S.C. § 103(a).
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Appeal 2017-005918
Application 13/707,454
1. “retrieving customer data that is stored prior to creation of
the request and that associates the customer computing
device identifier with one or more customer financial
accounts ”
The Appellant argues that independent claim 1 was rejected
erroneously, because the cited references fail to teach or suggest the recited
“association]” between the “customer computing device identifier” and the
“one or more customer financial accounts.” Appeal Br. 18—19. The
Appellant contends that, although Call teaches a kiosk (corresponding to the
claimed “customer computing device”) and account information
(corresponding to the claimed “customer data that is stored prior to creation
of the request”), Call shows no “association]” between the accounts and an
“identifier” of the kiosk. Id. at 18.
Yet, the Examiner points out that Call teaches such an “association],”
in its description of sending retrieved account information to computer
systems, such as the kiosk. See Answer 9 (citing Call ^flf 42, 46,2 62, Fig. 1
(elements 101, 105, 107—109)).
The Appellant’s argument is unpersuasive. Call teaches the identified
limitation, because the claimed “association]” between the “customer data”
and with an “identifier” of the kiosk is achieved in order to send the
retrieved information to the kiosk or to other computers. See Call 146.
The Appellant also relies upon this argument as to dependent claims
2-4 and independent claim 5. Appeal Br. 19. Accordingly, the Appellant’s
reasons for error, relating to the claimed features addressed above regarding
claim 1, are also not persuasive of error in the rejection of claims 2—5.
2 The Answer (page 9) mistakenly identifies the source of text, quoted from
Call 146, as Call 147.
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Appeal 2017-005918
Application 13/707,454
2. “digitalfingerprint ”
The Appellant argues that claim 2 was rejected erroneously because
the cited references do not teach or suggest that “the identifier of the
customer computing device is a digital fingerprint of the customer
computing device.” Appeal Br. 19-21. The Appellant contends that the
rejection relies upon Silverman 1251 for the recited feature and that this
portion of the reference teaches biometric authentication (concerning the use
of biological attributes for identification) — as opposed to information in
“digital” form, per the claimed “digital fingerprint.” Id. at. 20. According to
the Appellant, “[cjomputing devices don’t have biometric fingerprints
because computing devices don’t have biological fingers.” Id. Further, the
Appellant questions the propriety of using Silverman’s biometric identifier
with the kiosk taught in Call, because the kiosk would be available for use
by the general public, rather than any specific user. Id. at 21.
In response, the Examiner finds that Silverman teaches non-biometric
identifiers of computing devices, for example referring to “device
identification with the help of a unique machine id.” Answer 10 (quoting
Silverman 1258). In addition, the Answer refers to a statement in the
Specification that digital fingerprints are described in various prior art
references. Id. at 9-10 (quoting Spec. 132).
The Appellant’s argument regarding claim 2 is unpersuasive of error,
because the rejection does not rely exclusively upon Silverman’s teaching of
biometric features of living things, for identification. Rather, the disclosure
of a “unique machine id” (Silverman 1258) teaches or suggests the claimed
“digital fingerprint” for identifying a device, as claimed.
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Application 13/707,454
3. “the proposed amount is a maximum resource amount
corresponding to a maximum amount of available funds in
the customer financial accounts upon a condition in which
the maximum amount is determined to be less than a
requested amount ”
The Appellant argues that claim 3 was rejected erroneously because
Call 149, relied upon in the rejection, teaches that dispensing fuel requires a
sufficient balance in a fuel purchasing account, but does not address the
circumstance of claim 3 wherein a “requested amount” exceeds a “maximum
amount.” Appeal Br. 22. The Appellant contends that, in such a situation,
the “proposed amount” will be the “maximum resource amount” and will be
dispensed, per the recitations of claim 3. Id.
In response, the Answer refers to various portions of Call. Answer 10
(citing Call 42, 48, 49). Further, the Answer states that claim 3 does not
recite “what happens when the fuel purchasing account does not have a
sufficient balance.” Id. at 10—11.
We disagree with the Examiner because the interplay of the features
recited in independent claim 1 and dependent claim 3 achieves what the
Appellant describes. Namely, where the “maximum amount is determined
to be less than a requested amount,” the “proposed amount is a maximum
resource amount” (per claim 3), such that claim 1 ’s “dispensed amount”
(which is “no greater than the proposed amount”) will therefore not exceed
the “maximum amount.” Therefore, the Examiner’s position on claim
interpretation — i.e., that claim 3 does not address the situation of an
insufficient balance — is mistaken. Further, the portions of Call cited by the
Examiner (see Answer 10 (citing Call 42, 48, 49)) — although teaching
confirmation that the fuel purchasing account has a sufficient account
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Application 13/707,454
balance to purchase fuel (see Call 148) — do not teach capping the extent of
a fuel purchase based upon the account balance. Accordingly, the
Appellant’s argument is persuasive of error, such that the rejection of claim
3 is not sustained.
4. “authenticating the transaction on condition that the
customer computing device establish a communication link
through a local area network with a terminal control
computer of the resource dispenser using a communication
protocol that also requires transmission and reception of
near-filed audio signals between the customer computing
device and the terminal control computer to complete
authentication ”
The Appellant (Appeal Br. 23—24) argues that claim 4 was rejected
erroneously because Call 138 and Fig. 1 (cited in the Final Office Action,
page 14) teach the use of various types of network configurations, but do not
teach or suggest claim 4’s “authenticating the transaction on condition that”
a particular type of communication link is employed.
The Appellant’s argument is persuasive of error in the rejection
because the cited portions of (Call 1 38 and Fig. 1) do not refer to
authentication being achieved by using a particular type of communication
technique. Accordingly, the rejection of claim 3 is not sustained.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—5 under 35
U.S.C. § 101.
We AFFIRM the Examiner’s decision rejecting claims 1, 2, and 5
under 35 U.S.C. § 103(a).
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Appeal 2017-005918
Application 13/707,454
We REVERSE the Examiner’s decision rejecting claims 3 and 4
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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