Ex Parte Feldman

Patent Trials and Appeals Board

Jun 25, 2019

12684634 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/684,634 01/08/2010
138886 7590 06/27/2019
Patterson + Sheridan, LLP - Intuit Inc.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Marc Feldman
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.
INTU-104881 5655
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
Pair_Eofficeaction@pattersonsheridan.com
psdocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC FELDMAN
Appeal2017-008637 1
Application 12/684,6342
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8, 17-20, 25-29, and 31-34. An oral hearing was held
on May 2, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed Jan.
4, 2017) and Reply Brief ("Reply Br.," filed May 26, 2017), and the
Examiner's Answer ("Ans.," mailed Mar. 31, 2017) and Final Office Action
("Final Act.," mailed July 15, 2016).
2 Appellant identifies Intuit, Inc. as the real party in interest. App. Br. 3.
Appeal2017-008637
Application 12/684,634
CLAIMED INVENTION
Appellant's claimed invention relates to "techniques for
authenticating transactions in a network, such as the Internet." Spec. ,r 1.
Claims 1, 17, and 25 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method for conducting a
transaction via a network comprising:
[(a)] a server computer receiving transaction information
associated with the transaction via the network from a network
browser executing on a client computer via a first
communication session;
[ (b)] in response to receiving the transaction information,
the server computer causing an application executing on the
client computer to display, at the client computer, a copy of the
received transaction information by sending back the copy of the
received transaction information via the network to the
application via a second communication session, wherein the
first communication session and the second communication
session are different, wherein communications between the
network browser and the server computer are independent of
communications between the application and the server
computer, and wherein the application is separate from the
network browser;
[ ( c)] the server computer receiving a response from the
network browser via the network using the first communication
session; and
[ ( d)] the server computer conditionally performing the
transaction based on the response.
REJECTIONS
Claims 1-8, 17-20, 25-29, and 31-34 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
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Claims 1-8, 17-20, 25-29, and 31-34 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Baghdasaryan (US 2011/0082800 Al, pub.
Apr. 7, 2011) and Lu (US 2005/0071282 Al, pub. Mar. 31, 2005).
ANALYSIS
Judicially-Excepted Subject Matter
Appellant argues the pending claims as a group. App. Br. 7-16. We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(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. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Sers. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice Corp., 573 U.S. at 217. The first step
in that analysis is to "determine whether the claims at issue are directed to
one of those patent-ineligible concepts." Id. If the claims are not directed to
a patent-ineligible concept, e.g., 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
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of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, 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 Am., 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)).
The USPTO recently published revised guidance on the application of
§ 101; that guidance "extracts and synthesizes key concepts identified by the
courts as abstract ideas to explain that the abstract idea exception includes"
the following three groupings: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("Revised Guidance"). 3 The Revised
Guidance instructs that "[ c ]laims that do not recite [ subject matter] that falls
within these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas" except in rare circumstances, Revised Guidance,
84 Fed. Reg. at 53, and further instructs that even if a claim recites one of
these three groupings of abstract ideas, the claim is still not "directed to" a
3 The Revised Guidance, by its terms, applies to all applications, and to all
patents resulting from applications, filed before, on, or after January 7, 2019.
84 Fed. Reg. 50.
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Application 12/684,634
judicial exception, e.g., an abstract idea, "if the claim as a whole integrates
the recited judicial exception into a practical application of that Uudicial]
exception." Id. The Revised Guidance references MANUAL OF PATENT
EXAMINING PROCEDURE ("MPEP") §§ 2106.05(a}-(c) and (e}-(h) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Id. at 55. If the recited judicial exception
is integrated into a practical application, as determined under one or more of
these MPEP sections, the claim is not "directed to" the judicial exception.
Only if the 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 "[ a ]dds a specific limitation or combination of
limitations" that is not "well-understood, routine, conventional activity in the
field" or simply "appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception" ("Step 2B"). Id. at 56. With the legal principles
outlined above, and the 2019 Revised Guidance in mind, we tum to the
Examiner's§ 101 rejection.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that limitations (a) through ( d), as recited in claim 1, are directed
to "performing a transaction," i.e., a fundamental economic practice, which
is a certain method of organizing human activity and, thus, an abstract idea.
Final Act. 3. The Examiner also determined that claim 1 does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception "because the claim limitations simply describe the
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abstract idea," and the claimed server computer and client computer are
generically recited computer structure to perform the limitations. Id. at 3--4.
Appellant argues that the Examiner erred in determining that the
claims are directed to an abstract idea of "performing a transaction." App.
Br. 8-14; see also Reply Br. 2--4. Appellant contends that claim 1, instead,
is directed to determining whether a network browser is compromised by a
computer virus, which is a problem necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks. See id. Appellant's argument is persuasive.
Here, Appellant's Specification describes in the Background section a
new technological problem in completing online financial transactions
securely. Namely, a new class of computer viruses ("browser-helper-object
viruses") have been developed, making web browsers unsafe for financial
transactions. Spec. ,r,r 5---6, 31. These viruses are a rapidly growing threat to
online financial transactions that often remain undetected by anti-virus
software. Id. ,r 6. The browser-helper-object virus disassociates information
associated with the financial transaction from the web browser by
manipulating the document object mode ("DOM") in the web browser. Id.
,r 5. The virus modifies information such that information sent to the server
differs from information to the user on the web browser. Id. In a wire
transfer, for example, the virus modifies bank deposit information sent to the
server, causing the wire transfer to be deposited to a different bank account
without the user's knowledge. Id. ,r,r 5, 31-33.
To address this problem, Appellant's system provides two
communication sessions to detect whether the network browser is
compromised. See, e.g., id. ,r,r 7, 19-21. One session is between the server
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computer and a network browser executing on a client computer, and
another session is between the server computer and an application executing
on the client computer. See id. ,r 19, Fig. 1. Content sent to the server is
displayed to the user, and the user indicates whether the information
displayed matches the original information input by the user. Id. ,r,r 37, 43.
Appellant's claim 1 recites a method for conducting a transaction
comprising limitations (a) through (d). "[R]eceiving transaction information
associated with the transaction," as recited in limitation (a), and
"conditionally performing [a] transaction," as recited in limitation (d), recite
steps for performing a transaction, which is a fundamental economic practice
and, thus, an abstract idea. Revised Guidance 52. Having determined that
claim 1 recites an abstract idea, we next consider whether the abstract idea is
integrated into a practical application. Id. at 54.
Beyond the abstract idea, claim 1 additionally recites: (a) a first
communication session between a server computer and a network browser
executing on a client computer; (b) in response to receiving the transaction
information [at a server computer (limitation (a))], the server computer
causing an application executing on the client computer to display, at the
client computer, a copy of the received transaction information by sending
back the copy of the received transaction information via the network to the
application via a second communication session, wherein the first
communication session and the second communication session are different,
wherein communications between the network browser and the server
computer are independent of communications between the application and
the server computer, and wherein the application is separate from the
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network browser; and ( c) the server computer receiving a response from the
network browser via the network using the first communication session.
This combination of elements provides an improvement in a technical
field, i.e., the detection of computer viruses in an online financial
transaction, by providing two independent communication sessions that
enable a user to confirm that data provided at a web browser matches data
received by a server. See MPEP § 2106.05(a) ("Improvements to the
Functioning of a Computer or to Any Other Technology or Technical
Field"); see also BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) (holding that the '606 patent is
claiming a technology-based solution (not an abstract idea based solution) to
filter content on the Internet that overcomes existing problems with other
Internet filtering systems); DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1258 (Fed. Cir. 2014) (holding that the '399 patent is claiming a
solution for retaining control over the attention of a customer in the context
of the Internet by manipulating the routine functioning of Internet hyperlink
protocol). On the present record, Examiner has not sufficiently explained
why, in view the express claim language read in light of the above-
referenced portions of the Specification, the claimed invention would not be
considered an improvement in technology or a technical field.
We conclude that claim 1 is not directed to a judicial exception and,
thus, is patent-eligible. Accordingly, we do not sustain the Examiner's
rejection of claims 1-8, 17-20, 25-29, and 31-34 under 35 U.S.C. § 101.
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Obviousness
We are persuaded that the Examiner erred in rejecting independent
clams 1, 17, and 25 under 35 U.S.C. § 103(a), because Lu does not disclose
or suggest that communications between the network browser and the server
computer are independent of communications between the application and
the server computer, as recited by claim 1, limitation (b ), and similarly
recited in claims 17 and 25. The Examiner relies on Lu at paragraphs 82,
89, and 91 to teach the argued limitation.
Lu relates to preventing identify theft during interaction over a
computer network. Lu ,r 2. Paragraphs 82, 89, and 91 relate to a push model
in which an Internet smart card pushes confidential personal data to the
remote server. In the push model, a user connects to the Internet smart card
via a web browser on a local computer (see id. ,r,r 72-73), the user uses the
Internet smart card to establish a secure connection with a service provider
presented from a list of trusted service providers (id. ,r 74), and the Internet
smart card provides information to the remote server, which creates an
internal map for the IP address of the local computer (id. ,r,r 75-80). The
user clicks a link in the first instance of the web browser and creates another
instance of the web browser to the remote server. Id. ,r 81. The second
browser instance connects to the remote server to request a new session. Id.
,r 82. The user sends the confidential information from the Internet smart
card to the remote server. Id. ,r,r 89-90.
The Examiner takes the position that paragraph 82 of Lu teaches
communication between the network browser and the server computer are
independent of communication between the application and server computer.
However, as an initial matter, because the first instance and the second
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instance share a single browser (i.e., a single Internet client application) on a
single local computer, it is unclear how Lu teaches or suggests that an
application that is separate from the network browser, as required by
limitation (b ). Further, because both communications flow through the same
network browser on the same local computer, it is unclear how the
communications are "independent" of one another, as required by limitation
(b).
Accordingly, we do not sustain the rejection of independent claims 1,
17, and 25, and their dependent claims under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-8, 17-20, 25-29, and 31-34
under 35 U.S.C. § 101 is reversed.
The Examiner's rejection of claims 1-8, 17-20, 25-29, and 31-34
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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