Ex Parte Godsey

Patent Trial and Appeal Board

Nov 30, 2016

13537217 (P.T.A.B. Nov. 30, 2016)

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.
13/537,217 06/29/2012 Sandra Lynn Godsey P1571US1 / 70481.629 5939
132906 7590 12/02/2016
Havnes & Rome. T T P 670481 ^ EXAMINER
2323 Victory Ave. #700
Dallas, TX 75219
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDRA LYNN GODSEY
Appeal 2014-006851
Application 13/537,217
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1—20 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE and ENTER A NEW GROUND OF REJECTION
under 37 C.F.R. §41.50(b).
Appeal 2014-006851
Application 13/537,217
THE INVENTION
The Appellant’s claimed invention is directed to electronic
transactions and pushing payments to merchants (Spec., para. 1). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. An electronic device, comprising:
a memory storing instructions; and
one or more processors in communication with the memory
configured to execute the instructions to:
initiate a payment transaction to purchase a good from a
merchant;
receive merchant credentials for a financial service provider
account of the merchant: and
instruct a funding source of a consumer to process a payment to
the merchant according to the payment transaction.
THE REJECTION
The following rejection is before us for review:
Claims 1—20 are rejected under 35 U.S.C. § 102(e) as anticipated by
Yoo, US 2012/0173348 Al, pub. July 5, 2012.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2014-006851
Application 13/537,217
ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation for “receiv[ing]
merchant credentials for a financial service provider account of the
merchant” (App. Br. 6—8, Reply Br. 2—7).
In contrast, the Examiner has determined that the cited claim
limitation is taught by Yoo in the Abstract, paragraphs 64 and 322, Figures
5, 6, and claim 1 (Final Rej. 3, 6; Ans. 3, 4).
We agree with the Appellant. Here, in claim 1, the cited claim
limitation requires “receiving] merchant credentials for a financial service
provider account of the merchant” and the above citations fail to disclose
this. For example, Yoo at paragraph 64 discloses transferring funds based
on account information 121 but this account is for the user, not the merchant.
Yoo at paragraph 56 identifies the account information 121 as being for the
user. Yoo at paragraph 322 discloses the use of other accounts but none
specifically shown for the merchant specifically or the receiving of any
“merchant credentials” for such an account. The remaining above citations
to Yoo also fail to disclose this claim limitation as well. For this reason the
rejection of claim 1 and its dependent claims is not sustained.
The remaining claims contain a similar limitation and the rejection of
these claims is not sustained for the same reasons given above.
NEW GROUND OF REJECTION
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
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Appeal 2014-006851
Application 13/537,217
to include an implicit exception: “laws 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).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine assess whether the additional elements
“transform the nature of the claim” into a patent-eligible application of the
abstract idea. Id. This is a search for an “inventive concept” an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id. The Court also stated
that “the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Id. at 2358.
Here, we find that the claim is directed to the concept of initiating
payment between two parties. This is a fundamental economic practice long
prevalent in our system of commerce, and is an abstract idea beyond the
scope of § 101.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
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Appeal 2014-006851
Application 13/537,217
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. For these
reasons, we add a new ground of rejection for claim 1 under 35 U.S.C.
§101. The remaining claims 2—20 are similarly directed to the same
abstract idea, and also fail to transform the nature of the claim into a patent-
eligible application of the abstract idea and are, thus, also rejected under 35
U.S.C. § 101.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner’s rejection of claims 1—20 is reversed. A new grounds
of rejection is applied under 37 C.F.R. § 41.50(b).
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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 C.F.R. § 41.50(b) also provides that the Appellant, 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:
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Appeal 2014-006851
Application 13/537,217
(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
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 ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R, $ 41.50(b)
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