Ex Parte Khilnani et al

Patent Trial and Appeal Board

Nov 6, 2017

13828150 (P.T.A.B. Nov. 6, 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.
13/828,150 03/14/2013 Reshma Khilnani 19487.361 4202
107193 7590 11/08/2017
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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):
docketing@kjpip.com
gj olley @ kj pip. com
tkusitor@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RESHMA KHILNANI, YONGYAN LIU, and
ABHISHEK DOSHI
Appeal 2016-0027321
Application 13/828,1502
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1—20. We have jurisdiction under
§ 6(b). We AFFIRM.
1 Our Decision references Appellants’ Specification (“Spec.,” filed Mar. 14,
2013), Appeal Brief (“Appeal Br.,” filed May 26, 2015), and Reply Brief
(“Reply Br.,” filed Dec. 28, 2015), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Dec. 4, 2014) and Answer (“Ans.,” mailed
Oct. 22,2015).
2 Appellants identify Facebook, Inc. as the real party in interest.
Appeal Br. 2.
Appeal 2016-002732
Application 13/828,150
SUBJECT MATTER ON APPEAL
The invention relates generally to electronic payments and, more
specifically, to a method for implementing an alternative payment.
Spec. 12. Claims 1 and 19 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, comprising:
receiving, from a computing device associated with a user,
a transaction request comprising an identity of the user, a
location of a vendor, and a price of a transaction;
identifying, by at least one processor, a set of payment
methods available to the user, a particular payment method in the
set of payment methods characterized by a discrete payment
structure defining a discrete payment increment;
generating, by the at least one processor, a ranked list of
the available payment methods according to a preferred payment
method associated with the location of the vendor, according to
the discrete payment structure of the particular payment method,
and according to the price of the transaction;
sending, to the computing device associated with the user,
the ranked list of the available payment methods;
receiving, from the computing device associated with the
user, a selection of the particular payment method for the
transaction; and
authorizing, by the at least one processor, a payment to the
vendor with the particular payment method.
REJECTION
The Examiner rejects claims 1—20 under 35 U.S.C. § 101 as
non-statutory subject matter.
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ANALYSIS
As an initial matter, we disagree with Appellants’ assertion that the
Examiner’s rejection fails to set forth a prima facie case of patent-ineligible
subject matter under 35 U.S.C. § 101. Appeal Br. 12. The Federal Circuit
has held that
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. §132, in
“notify[ing] the applicant... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(quoting § 132). All that is required of the Office is to set forth the statutory
basis of the rejection, as well as any reference on which the rejection relies,
in a sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Id. at 1363; see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (“Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Here, in rejecting the claims under § 101, the Examiner analyzes the
claims using the two-step framework set forth in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012)
and reiterated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014), which, in the first step, considers whether the claims are
directed to a patent-ineligible concept, e.g., an abstract idea, and, if so,
considers, in the second step, whether the claims recite an inventive
concept—an element or combination of elements sufficient to ensure the
claims amount to significantly more than the abstract idea and transform the
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nature of the claims into a patent-eligible concept. Final Act. 2—3. More
specifically, pursuant to the first step, the Examiner finds the claims are
directed to “implementing an alternative payment method in an electronic
payment system,” which is a fundamental economic practice and a method
of organizing human activity and, therefore, an abstract idea. Id. at 2, 4;
Ans. 6, 8. Under the second step, the Examiner finds the claims do not
include additional elements amounting to significantly more than the
abstract idea because the recited additional elements, alone or in
combination, amount to no more than mere instructions to implement the
abstract idea on a computer and recite generic computer structure that
performs generic computer functions that are well-known, routine, and
conventional activities previously known to the pertinent industry.
Final Act. 2; Ans. 6—7.
Given the Examiner notifies Appellants that the claims are ineligible
pursuant to the two-step framework for determining patent-eligibility, the
Examiner’s rejection satisfies the notice requirement of § 132. Furthermore,
there is no indication that Appellants do not recognize or understand the
Examiner’s rejection, as Appellants’ understanding is manifested in their
arguments traversing it. Accordingly, the Examiner has established a prima
facie case of patent-ineligible subject matter, and we consider Appellants’
remaining arguments.
Appellants contend the Examiner’s finding that the claims are directed
to an abstract idea under the first step of the patent-eligibility analysis is
insufficiently supported. Appeal Br. 12—13; Reply Br. 2—3. More
specifically, Appellants assert the Examiner’s characterization of the claims
as “implementing an alternative payment method in an electronic payment
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system” is conclusory and ignores specific claim limitations, which are
novel and nonobvious. Appeal Br. 12—13; Reply Br. 2—3. Appellants also
assert the Examiner has not provided evidentiary support for the claims
being directed to a fundamental economic practice. Appeal Br. 13. We
disagree with Appellants.
Beginning with the Examiner’s characterization of the claims, even if
the claims recite specific features which may distinguish the claims from the
prior art, we fail to see how these specific features separate the claims from
the concept of “implementing an alternative payment method in an
electronic payment system.” As Appellants point out, claim 1, for example,
recites the steps of: receiving a transaction request including the identity of
a user, a location of a vendor, and a price of a transaction; identifying a set
of payment methods available to the user, whereby each payment method is
characterized by a discrete payment structure; generating a ranked list of the
available payment methods according to a preferred payment method
associated with the location of the vendor, the discrete payment structure,
and the price of the transaction; sending the ranked list of available payment
methods to the user; receiving the user’s selection of a payment method; and
authorizing a payment with the selected payment method. Appeal Br. 13;
Reply Br. 3. A method involving these steps, including the step of
generating a ranked list of available payment methods, is nonetheless a
method of “implementing an alternative payment method in an electronic
payment system.” See also Spec. 12 (explaining the invention relates to a
“method for implementing an alternative payment”). Accordingly, the
specific steps are tied to the concept of “implementing an alternative
payment method in an electronic payment system” and simply suggest that
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the Examiner’s characterization is at a high level of abstraction, which is not
persuasive of error. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
41 (Fed. Cir. 2016) (“An abstract idea can generally be described at different
levels of abstraction.”).
Apart from the claimed steps, the claims recite computing
components, such as a computing device and a processor. It is
well-established, however, that the mere recitation of generic computing
components as tools to carry out the abstract idea do not distinguish the
claimed invention from the abstract idea. See, e.g., In re TLI Commc ’ns
LLC Patent Litig., 823 F,3d 607, 612 (Fed. Cir. 2016) (determining claims
simply directed to the use of conventional or generic technology in a nascent
but well-known environment are directed to an abstract idea under the first
step of the patent-eligibility analysis). Here, there is no indication that the
recited computing hardware components are something other than generic
computing components. The Specification, for instance, explains that “[t]he
computer system can be a cloud-based computer (e.g., Amazon EC3), a
mainframe computer system, a grid-computer system, or any other suitable
computer system,” and that the computing device can be “a laptop computer,
a desktop computer, a tablet, a smartphone, a PDA, a personal music player,
etc.” Spec. 114. Given that recited hardware components are generic
components for performing the recited steps, which, as set forth above, do
not separate the claimed invention from the abstract idea, Appellants do not
apprise us of error in the Examiner’s finding that the claims are directed to
“implementing an alternative payment method in an electronic payment
system.”
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Turning to the Examiner’s finding that “implementing an alternative
payment method in an electronic payment system” is an abstract idea, in
making this finding, the Examiner compares the concept of “implementing
an alternative payment method in an electronic payment system” to concepts
held to be abstract ideas. Ans. 6, 8; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“[T]he decisional
mechanism courts now apply 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.”). Appellants do not differentiate this
concept from these abstract ideas, and we fail to see any meaningful
distinction. For example, like the abstract ideas of risk hedging in Bilski v.
Kappos, 130 S. Ct. 3218 (2010) and intermediated settlement in Alice, the
concept of “implementing an alternative payment method in an electronic
payment system” is a basic economic practice. Accordingly, Appellants do
not apprise us of error in the Examiner’s finding that “implementing an
alternative payment method in an electronic payment system” is an abstract
idea.
Appellants also argue that the claims are not directed to a
longstanding fundamental economic practice, but instead recite a solution
that is necessarily rooted in computer technology to overcome a problem
arising in the realm of computer networks, similar to the claims in DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appeal Br. 14—16; Reply Br. 3. According to Appellants, the need to
determine payment methods available to make a purchase over a computer
network is a need that has existed only after the advent of e-commerce, and
the ability to solve the problem of generating and providing a ranked list of
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available payment methods is realized only through the use of computer
technology. Appeal Br. 15; Reply Br. 3. We disagree.
The fact that the claimed invention applies to computer networks and
computers, in and of itself, does not mean the claimed invention addresses a
problem unique to computer networks or is rooted in computer technology.
As set forth above, Appellants assert that invention addresses the problem of
determining payment methods available for a purchase made over a
computer network. Appeal Br. 15; Reply Br. 3. Determining payment
methods available to a user, however, is not a problem unique to purchases
made over a computer network, nor is it a need that has arisen after the
advent of e-commerce. Any purchaser would need to determine the
available payment methods for a purchase, e.g., cash, check, debit card, or
credit.
Furthermore, the purchaser would not need a computer to rank the
available payment methods. To wit, the purchaser could rank the available
payment methods by performing a series of mental steps, including
considering the available funds, interest rates, and spending limits associated
with the various forms of payment, as well as which forms of payment are
accepted by a vendor. As such, the claimed invention does not address a
problem unique to computer networks, nor is it rooted in computer
technology. Rather, the claimed invention represents the application of the
abstract business practice of implementing an alternative payment method
via the use of generic computing components, which is not patent-eligible.
Cf. DDR Holdings, 773 F.3d at 1256 (“[T]hese claims [of prior cases] in
substance were directed to nothing more than the performance of an abstract
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business practice on the Internet or using a conventional computer. Such
claims are not patent-eligible.”).
After considering Appellants’ arguments pursuant to the first step of
the patent-eligibility analysis, we are not persuaded the Examiner erred in
finding the claims are directed to the abstract idea of “implementing an
alternative payment method in an electronic payment system.” Accordingly,
we turn to Appellants’ arguments under the second step.
Appellants argue the claims recite significantly more than the abstract
idea because, like the claims in DDR Holdings, the present claims do more
than merely recite the performance of some business practice known from
the pre-Internet world along with the requirement to perform it on the
Internet. Appeal Br. 16—18; Reply Br. 4—5. Appellants additionally argue
that the claims recite significantly more than the abstract idea because the
elements of the claims, as an ordered combination, recite a solution that
addresses the computer-centric and Internet-centric challenges of generating
and providing a ranked list of available payment methods to make a
purchase over a computer network. Reply Br. 5—7.
We find these arguments unpersuasive under the second step of the
patent-eligibility analysis for essentially the same reasons we find
unpersuasive Appellants’ similar arguments under the first step. Namely,
determining payment methods available to a user is not a problem unique to
purchases made over a computer network, nor is it a need that has a risen
after the advent of e-commerce. Rather, as set forth above, any purchaser, as
a matter of course, determines the available payment methods for a
purchase. Moreover, determining payment methods, including the steps of
generating and providing a ranked list of available payment methods, does
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not require the use of a computer. As such, we fail to see how the elements
of the claims, individually and as an ordered combination, amount to
something other than the generic computer implementation of the abstract
business practice of implementing an alternative payment method.
Appellants also argue the Examiner’s rejection does not consider the
dependent claims, which, according to Appellants, recite elements
amounting to significantly more than the abstract idea. Appeal Br. 18—19.
More particularly, Appellants contend that “holding an overage for the
payment according to the discrete payment increment of the particular
payment method that exceeds the price of the transaction,” as recited in
claim 9 is significantly more than the abstract idea. Id. Appellants’
arguments do not apprise us of Examiner error.
At the outset, we disagree with Appellants that the Examiner’s
rejection does not consider the dependent claims. In applying the two-step
patent-eligibility analysis, the Examiner takes independent claim 1 as
exemplary and finds the dependent claims do not resolve the deficiencies of
the independent claims. Ans. 6—7. Indeed, the dependent claims, including
claim 9, more specifically describe the abstract idea of “implementing an
alternative payment method in an electronic payment system,” without
providing any technical description of the recited computing components or
the implementation of the recited steps. With specific reference to claim 9,
Appellants do not explain, and we fail to see, how the recited step of
“holding an overage for the payment according to the discrete payment
increment of the particular payment method that exceeds the price of the
transaction” amounts to significantly more than the abstract idea of
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“implementing an alternative payment method in an electronic payment
system.”
Appellants further argue that the claims do not preempt all
applications of the abstract idea of “implementing an alternative payment
method in an electronic payment system.” Appeal Br. 20—21. Appellants’
argument is not persuasive of error. Although preemption may be the
concern driving the exclusion of abstract ideas from patent-eligible subject
matter, preemption is not the test for eligibility. See Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability. For this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” (citation omitted)); see
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir.), cert, denied, 136 S. Ct. 701 (2015) (“And that the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.”).
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that the claims are directed to non-statutory
subject matter. We, therefore, sustain the rejection of claims 1—20 under
35U.S.C. § 101.
DECISION
The Examiner’s decision to reject claims 1—20 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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