Ex Parte GodseyDownload PDFPatent Trial and Appeal BoardNov 30, 201613537217 (P.T.A.B. Nov. 30, 2016) Copy Citation 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). 2 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 3 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. 4 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: 5 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) 6 Copy with citationCopy as parenthetical citation