Ex Parte Goodwin

Patent Trial and Appeal Board

Jun 1, 2017

11762695 (P.T.A.B. Jun. 1, 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.
11/762,695 06/13/2007 Jonathan David Goodwin STAP.P0119US.C1/11600732 2251
29053 7590 06/05/2017
NORTON ROSE FULBRIGHT US LLP
2200 ROSS AVENUE
SUITE 3600
DALLAS, TX 75201-7932
EXAMINER
HALE, TIM B
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/05/2017 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):
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN DAVID GOODWIN
Appeal 2015-0013151
Application 11/762,6952
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
MATTHEW S. METERS, Administrative Patent Judges.
MEYERS, 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 12—20. We have jurisdiction under 35 U.S.C. § 6(b). An
Oral Hearing was held February 23, 2017.
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
May 1, 2014) and Reply Brief (“Reply Br.,” filed October 14, 2014), and the
Examiner’s Answer (“Ans.,” mailed August 13, 2014) and Final Office
Action (“Final Act.,” mailed December 4, 2013).
2 Appellant identifies Stamps.Com as the real party in interest
(Appeal Br. 1).
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Application 11/762,695
CLAIMED INVENTION
Appellant’s “invention relates to an on-line system for validating and
printing value-bearing indicia in a Wide Area Network (WAN)
environment” (Spec. 12).
Claim 12 is the only independent claim on appeal. Claim 12,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
12. A method of providing a value bearing indicium to an
end-user via a computer network, the method comprising:
[a] providing an indicium server, the indicium server
coupled to a database;
[b] generating a web interface by a distributor server
coupled to the computer network;
[c] receiving by the indicium server validation
information responsive to a value bearing indicium request
from an end-user machine, from the end-user machine via the
computer network;
[d] generating by the indicium server a digital signature,
using the validation information;
[e] generating by the indicium server value bearing
indicium data using the digital signature;
[f] storing the digital signature in the database;
[g] receiving a scanned copy of a printed value bearing
indicium data including a copy of the digital signature, from a
remote terminal including a scanning machine used to scan the
printed value bearing indicium data, by the indicium server via
the computer network;
[h] determining a validity status for the value bearing
indicium data by the indicium server from the received scanned
copy of the digital signature in the received scanned value
bearing indicium, and the stored digital signature in the
database; and
[i] transmitting the validity status to the remote terminal
by the indicium server via the computer network.
(Appeal Br. 15 (Claims App’x)).
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REJECTIONS
Claims 12—20 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§112, second paragraph (pre-AIA) as incomplete for omitting essential steps
(see Final Act. 9-10).
Claims 12 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leon (US 7,194,957 Bl, iss. Mar. 27, 2007), Kay
(US 6,223,166 Bl, iss. Apr. 24, 2001), and Heiden (US 6,408,286 Bl, iss.
June 18, 2002) (see Final Act. 10-13).
Claims 13—16 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leon, Kay, Heiden, and Fujimura (US 6,842,741 Bl, iss.
Jan. 11, 2005) (see Final Act. 13—14).
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Leon, Kay, Heiden, Pintsov (US 5,448,641, iss. Sept. 5, 1995), and Cordery
(US 6,085,182, iss. July. 4, 2000) (see Final Act. 14—15).
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Leon, Kay, Heiden, and Sit (US 6,898,707 Bl, iss. May 24, 2005) (see Final
Act. 15—16).
ANALYSIS
Omitting Essential Subject Matter
Independent claim 12 and dependent claims 13—20
We are persuaded the Examiner erred in rejecting independent claim
12 as being incomplete for omitting essential steps, such omission
amounting to a gap between the steps (see Final Act. 9-10; see also Ans. 3—
4).
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The Examiner takes the position that independent “claim[] 12 recites .
. . ‘receiving a scanned copy of a printed value.’ However there []is no step
of scanning” (Final Act. 4). The Examiner also finds “the recitation of ‘a
scanning machine used to scan . . . ’ does not cure this defect as it is unclear
if the received scanned copy is the same as the copy scanned by the scanning
machine” (Ans. 4). However, we agree with Appellant that “[t]he ‘scanning
step’ is not included in the method claim 12, because the method claim is
directed to the remote servers and database, and not to the point of
redemption of the ticket, that is, where the scanning machine would be
located” (Appeal Br. 2). We, thus, find that one skilled in the art is able to
understand what is claimed without the Examiner-numerated essential step
of scanning. Accordingly, we do not sustain the rejection under 35 U.S.C.
§112, second paragraph.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 12 under 35 U.S.C. § 103(a) because the
combination of Leon, Kay, and Heiden fails to disclose or suggest
“transmitting the validity status to the remote terminal by the indicium
server via the computer network,” as recited by limitation [i] of independent
claim 12 (see Appeal Br. 13—14; see also Reply Br. 7—8).
The Examiner maintains that the rejection is proper, and cites Kay, at
column 4, line 14 through column 5, line 55, as disclosing the argued
limitation (see Final Act. 11). In the Answer, the Examiner also appears to
rely on Heiden, at column 10, line 56 through column 11, line 19 and
column 11, line 65 through column 12, line 11 (see Ans. 9).
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Leon is directed to “a method for printing one or more value indicia
onto a printable medium using a remote device coupled to a computer server
via a communications network” (Leon, col. 4,11. 47—50). Leon discloses
“user computers 112a, 1126, and 112c communicate over a communication
network 116, e.g., the Internet, to a server system 118, which may include
one or more Web servers 120” {id. at col. 7,11. 46-49; see also id. at Figs.
1A, IE). Leon also discloses a database coupled to its server system {see id.
at col. 7,11. 60-61; see also id. at col. 9,11. 5—9, col. 16,11. 36-47, Figs. 1A,
IE). Leon discloses that its “Web server 352 may receive a request to
purchase postage from the user computer 112, and may validate this
purchase request. Numerous validation checks may be performed, such as,
for example, validating credit card information, user identity, serial numbers,
etc.” {id. at col. 19,11. 21—25; see also id. at col. 16,11. 64—66). Leon further
discloses “[o]ne or more [Postal Security Device Module (PSDM)] servers
354 then generate the information for printing the requested indicium (or
indicia). The information for printing an indicium includes a digital
signature signed by cryptographic module 356 coupled to PSDM server
354” {id. at col. 19,11. 36-40; see also id. at col. 19,11. 47—53).
Kay is directed to “a ticket issuing and collection system and method
of operation in a distributed information system in which cypher-coded,
electronic tickets for an event are issued in hard copy form by a purchaser
for authentication at the event by a scanning device” (Kay, col. 2,11. 29-33).
In this regard, Kay discloses that its system utilizes “the Internet, and
portable collection terminals for generating, distributing and collecting
cypher-coded tickets personalized to the purchaser through cryptographic
techniques” {id. at col. 2,11. 46—50). More particularly, Kay discloses that
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its “ticket collectors use a portable terminal pre-loaded with an asymmetric
or symmetric key for decrypting the code in the ticket. The decrypted code
is evaluated to ensure that the ticket is valid, after which the ticket
information is stored in the terminal” (id. at col. 2,11. 61—65). Kay further
discloses
the portable terminal 27 includes a scanning element 29, such
as a laser light, which is activated by the operator for scanning a
ticket 31 including a bar code 33 representing cypher code
definitive of the ticket information in an asymmetric
cryptographic system. ... A processor 39 receives an output
from the receiver 37 and checks the bar code against an
asymmetric key stored in a memory 40 and assigned to the
event by the seller. Using an asymmetric key assigned by the
seller to the event, the bar code is decoded and compared
against an event description stored in the memory 40. If the
event description and decoded cypher code compare, the ticket
is authenticated and the holder is granted admission to the
event. If the event description and the decoded cypher code do
not compare, the ticket holder is denied admission to the event.
(Id. at col. 4,11. 42—58).
Heiden “is directed to a postage printing system including subsidies
for printing of third party coupons” (Heiden, col. 1,11. 25—27). Heiden
discloses that its “printed coupons may include secure information,
preferably in the form of a bar code, by which the coupon may be
authenticated upon redemption” (id. at col. 3,11. 41 44). In this regard,
Heiden discloses
[conventional methods of authenticating documents, such as
verifying a unique number, digital signature, digital certificate
or other encrypted information, may be used. The coupon may
further include information identifying the mailpiece addressee
and/or the user who generated the mailpiece. Such information
may be encoded as secure information and may be printed as
part of a bar code, such as a 2-D bar code.
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(Id. at col 10,11. 28—35). Heiden further discloses
data center 200 may buy postage in advance from postal
authority and store it in the postage meter in conventional
fashion. Thus, the data center 200 may establish one postage
meter per account or multiple accounts per postage meter. In
either event, the postage meter manufacturer takes care of
obtaining, recharging and inspecting the postage meter as
required by the postal authority.
(Id. at col. 6,11. 28—35). Heiden still further discloses
[w]hen retaile[r] 400, receives the coupon, retailer preferably
authenticates the coupon in an on-line transaction with a
redemption center 500 via a retailer computer 402. Redemption
center 500 includes a control system 502 that is in
communication over a suitable communication network 510,
such as: telephone lines, public and private network system
(Internet) or the like; with a control system 202 from the data
center 200.
(Id. at col. 6,11. 51—58).
We have reviewed the cited portions of Kay and Heiden, in view of
Leon, and agree with Appellant that the cited prior art fails to disclose or
suggest “transmitting the validity status to the remote terminal by the
indicium server via the computer network,” as recited by limitation [i] of
independent claim 12. Here, as Appellant points out (Appeal Br. 13), Kay
discloses that its portable terminal 27 which includes a scanning element 29
“checks the bar code against an asymmetric key stored in a memory 40”
(Kay, col. 4,11. 42—51 (emphasis added)). Thus, we agree with Appellant
that “[tjhere is no transmission of ‘the validity status to the remote terminal
by the indicium server via the computer network’ in Kay” (Appeal Br. 13).
Responding to Appellant’s argument in the Response to Argument
section of the Answer, the Examiner takes the position
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transmitting the information to a remote site where the validity
is determined (which would necessarily involve comparison of
the send digital signature with a verification copy stored in a
database) (See H[e]iden; col. 10 In 56- col. 11 In 19 and col. 11
In 65-col. 12 In 11
(Ans. 9).
The difficulty with the Examiner’s finding is that limitation [i] does
not merely require “transmitting the validity status to the remote terminal;”
but rather, requires transmitting the validity status to the remote termination
from the same server that generated the value bearing indicium, i.e.,
“transmitting the validity status to the remote terminal by the indicium
server via the computer network” (emphasis added). We fail to see, and the
Examiner does not adequately explain, how Heiden’s disclosure regarding
database center 200, retailer 400, and redemption center 500 discloses or
suggests “transmitting the validity status to the remote terminal by the
indicium server via the computer network,” as required by limitation [i] of
independent claim 12 (see, e.g., Heiden, Fig. 3; see also id. at col. 6,11. 24—
67). The Examiner does not rely on Leon to address this deficiency.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 12 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejections of claims 13—20, which depend
therefrom.
NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
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Non-Statutory Subject Matter
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. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts.” Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” (id.) e.g., to an
abstract idea. If the claims are not directed to 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 of the claim’ into a patent-eligible application.” Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
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, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Applying the framework set forth in Alice, and as the first step of that
analysis, we find that the claims are directed to the concept of determining
the validity of a value bearing indicium, and as such, the claims are directed
to a “longstanding commercial practice” and a “method of organizing human
activity.” See Alice at 134 S. Ct. at 2356—57.
In making this determination, we note that according to the
Specification the “present invention relates to generating value-bearing
indicia such as postage or ticket indicia,” and more specifically “to an on­
line system for validating and printing value-bearing indicia in a Wide Area
Network (WAN) environment” (Spec. 12). The Specification identifies that
“[vjalue-bearing indicia (VBI) are used in a variety of transactions where a
holder of a VBI is entitled to receive goods or services” {id. 13). The
Specification observes, however, that
[a] significant drawback of existing ticketing systems is that the
user may need to take physical possession of the ticket before it
can be used. Physical receipt of the ticket usually requires that
the airline or ticket agency mail the ticket to the user.
Alternatively, the user may accept receipt of the ticket at a
location prior to redeeming the ticket when boarding the
specified flight.
{Id. 110). To address this drawback, the Specification identifies “a
software based on-line ticketing system is needed that is capable of
issuing a ticket directly to the user so that the user can print the ticket
for themselves. Furthermore, the issued ticket must be capable of
being validated when the user redeems the ticket” {id. 111). Thus,
according to the Specification
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a data processing system receives validation information from a
user via a computer network. The data processing system
generates a value bearing indicium using the validation
information and stores the value bearing indicium in a
validation information database. The data processing system
transmits the value bearing indicium to the user via the
computer network. The value bearing indicium is redeemed by
scanning the value bearing indicium using a scanning
application. The [data processing system] accepts the value
bearing indicium from a scanning application via the computer
network and determines a validity status for the value bearing
indicium using the validation information database. The data
processing system then transmits the validity status to the
scanning application.
{Id. 113). We also note that independent claim 12 is directed to “[a] method
of providing a value bearing indicium to an end-user via a computer
network” and includes steps for “providing an indicium server,” “generating
a[n] . . . interface by a distributor server,” “receiving by the indicium server
validation information responsive to a value bearing indicium request,”
“generating by the indicium server a digital signature, using the validation
information,” “generating by the indicium server value bearing indicium
data using the digital signature,” “storing the digital signature,” “receiving a
scanned copy of a printed value bearing indicium data including a copy of
the digital signature,” “determining a validity status for the value bearing
indicium data by the indicium server,” and “transmitting the validity status.”
Our reviewing courts have held certain fundamental economic and
conventional business practices, like verifying the validity of credit card
transactions {see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011), detecting fraud and/or misuse in a computer
environment {see FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1093—94 (Fed. Cir. 2016), guaranteeing transactions {see buySAFE,
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Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014), and
intermediated settlement {see Alice, 134 S. Ct. at 2356—57), to be abstract
ideas. Here, the concept to which the claims are directed to, e.g,
determination of a validity status for a value bearing indicium data to which
independent claim 12 is directed to, is similar to these abstract ideas, and
thus, we determine that independent claim 12 is directed to an abstract idea.
Turning to the second step of the Alice analysis, because we find that
independent claim 12 is directed to an abstract idea, the claim must include
an “inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to “significantly more” than the abstract idea itself.
Here, we find nothing in the claim elements, taken individually or as an
ordered combination, which removes the claims from the class of patent
ineligible subject matter.
In this regard, independent claim 12 includes several components of a
data processing system comprising an “indicium server,” “database,”
“distributor server,” “computer network,” and “remote terminal.” However,
these components merely recite generic computer elements, and “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice 134 S. Ct. at 2358. C.f. Inventor
Holdings, LLC v. Bed Bath & Beyond Inc., 123 F. Supp. 3d 557, 560 (D.
Del. 2015), aff d, 643 F. App’x 1014 (Fed. Cir. 2016) (claims directed to the
use of a POS terminal to transmit transaction-related information and to
process payments held invalid under 35 U.S.C. § 101). The Specification
supports this view (see Spec, 27—35, 70-72; see also Fig. 1).
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Nothing in independent claim 12 purports to improve computer
functioning or “effect an improvement in any other technology or technical
field.” Alice, 134 S. Ct. at 2359. In fact, the Specification discloses that its
“software-based system has been developed that does not require specialized
hardware for each user” (Spec. 1 7). Nor does the claim solve a problem
unique to the Internet. See DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014).
Therefore, because independent claim 12 is directed to an abstract
idea and nothing in the claim adds an inventive concept, we find the claim is
not patent-eligible under § 101. Therefore, we enter a new rejection of claim
12 and its dependent claims 13—20 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 12—20 under 35 U.S.C. § 112(b)
or 35 USC. § 112, second paragraph (pre-AIA), is reversed.
The Examiner’s rejections of claims 12—20 under 35 U.S.C. § 103(a)
are reversed.
A NEW GROUND OF REJECTION of claims 12-20 under
35 U.S.C. § 101 has been entered.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
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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(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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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