Ex Parte Kim

Patent Trial and Appeal Board

Jan 18, 2018

13144909 (P.T.A.B. Jan. 18, 2018)

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.
13/144,909 07/15/2011 Jong Ho Kim 4900-0064 1186
22429 7590 01/22/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
AMELUNXEN, BARBARA J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONG HO KIM
Appeal 2016-003232
Application 13/144,909
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Motion for Rehearing (“Req. Reh’g.”), pursuant to
37 C.F.R. § 41.52, on December 27, 2017, seeking reconsideration of our
Decision on Appeal mailed November 1, 2017 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 1—4, 6—8, 10, 13—15, and 17
under 35 U.S.C. § 101 as directed to non-statutory subject matter.1 We have
jurisdiction over the Request under 35 U.S.C. § 6(b).
1 We also reversed the Examiner’s rejections of claims 1—4, 6—8, 10, 13—15,
and 17 under 35 U.S.C. § 103(a). Appellant seeks reconsideration only of
the affirmed rejection under § 101. See Req. Reh’g. 1.
Appeal 2016-003232
Application 13/144,909
DISCUSSION
We note at the outset that a request for rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the [Patent Trial and Appeal Board (the “Board”)].” 37 C.F.R.
§ 41.52(a). A request for rehearing is not an opportunity to rehash
arguments raised in the briefs. Neither is it an opportunity to merely express
disagreement with a decision without setting forth the points believed to
have been misapprehended or overlooked. Arguments not raised in the
briefs before the Board and evidence not previously relied on in the briefs
also are not permitted except in the limited circumstances set forth in
§§ 41.52(a)(2) though (a)(4).2
Turning to the Request, Appellant asserts that the Decision “did not
seem to have considered” the recent Federal Circuit decisions in Enfish, LLC
v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016), McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016), and
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016) (Req. Reh’g. 2). And Appellant requests that this case be
reheard in view of these recent decisions, pursuant to 37 C.F.R.
§ 41.52(a)(2), and that the § 101 rejection be reversed (id.).
Addressing Enfish, Appellant first argues that, similar to the claims at
issue in Enfish, independent claim 1 is not merely directed to generic
computer components performing a fundamental economic practice (id.
2 Appellant may present a new argument based on a recent relevant decision
of either the Board or a federal court; new arguments responding to a new
ground of rejection designated as such under § 41.50(b) and new arguments
that the Board decision contains an undesignated new ground of rejection
also are permitted.
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Appeal 2016-003232
Application 13/144,909
at 3). Instead, according to Appellant, “the claimed subject matter provides
a specific implementation of a solution to a problem realized by the inventor
in the developing art of electronic money, i.e., low compatibility of various
types of electronic money and/or payment systems” (id.). Pointing to
“execute the preset default electronic money application,” “execute the
selected electronic money application” and “execute the appointed
compatible electronic money application,” as recited in claim 1, Appellant
asserts that claim 1 recites a “specific implementation of the solution to the
problem of electronic money compatibility” (id.). Appellant, thus, maintains
that, similar to Enfish, the claims are directed to an improvement in existing
technology, i.e., the technology of electronic money (id.).
The claims at issue in Enfish were directed to a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data. Enfish, 822 F.3d. at 1335—36. There, in rejecting a § 101
challenge, the court held that “the plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Id. at 1336.
Appellant has not adequately explained here how the court’s holding
in Enfish impacts the present analysis under the Mayo!Alice framework. For
example, Appellant does not point to anything in the claims that resembles
the inventive self-referential data structure at issue in Enfish. We also find
nothing in Appellant’s Specification, nor does Appellant point to us to
anything in the Specification, to indicate that the invention provides an
improvement in computer functionality. To the contrary, as we indicated in
the Decision, “it is clear from the Specification, including the claim
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Application 13/144,909
language, that the focus of the claims is not on the improvement of
electronic money card units and/or electronic money terminal units, but
instead on implementation of the abstract idea, i.e., identifying multiple
types of electronic money”; “[t]hese physical components merely provide
the generic environment in which to implement this abstract idea”
(Decision 8).
Although Appellant ostensibly suggests otherwise (App. Br. at 4 (the
claimed invention provides benefits unachievable or unavailable in the
exiting technology as “evident by the Decision’s reversal of the prior art
rejection”); see also id. at 6 (“the claim in the instant application is to ... a
specific technique ... for implementing a solution not previously identified
in the prior art)), it also is immaterial that the Board reversed the Examiner’s
rejections of claims 1—4, 6—8, 10, 13—15, and 17 under 35 U.S.C. § 103(a) as
unpatentable over the prior art. A finding of novelty or non-obviousness
does not automatically lead to the conclusion that the claimed subject matter
is patent-eligible. Although the second step in the Mayo!Alice framework is
termed a search for an “inventive concept,” the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice Corp., 134 S. Ct. at 2355 (citation omitted).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass ’n. for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S. 175, 188—89
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Application 13/144,909
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.”).
Appellant next argues claim 1 is not directed to an abstract idea
because “[sjimilar to McRO, independent claim 1 includes specific
limitations . . . that prevent preemption of all techniques for improving
electronic money compatibility” (Req. Reh’g. 4—5). That argument is not
persuasive at least because preemption is not the test for patent-eligibility.
There is no dispute that the Supreme Court has described “the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption.” See Alice Corp., 134 S. Ct. at 2354. But,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). Although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.
Finally, addressing BASCOM, Appellant notes that the Federal Circuit
held there that “the claimed subject matter recites significantly more than the
abstract idea, because it contains an inventive concept,” and that the court, in
doing so, confirmed that “‘an inventive concept can be found in the non-
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Application 13/144,909
conventional and non-generic arrangement of known, conventional pieces’”
(Req. Reh’g 5 (citing BASCOM, 827 F.3d at 1350)).
Appellant ostensibly maintains that the present claims are patent-
eligible because “[similar to BASCOM, independent claim 1 . . . recites a
specific arrangement of components allegedly found by the PTO [to be]
generic computer components,” i.e., the components are “arranged (or
configured to) in ‘an unconventional and nongeneric’
application/arrangement via which improvement of electronic money
compatibility can be improved in some embodiments” {id. at 6). However,
the Federal Circuit did not find that the claims in BASCOM recited an
inventive concept based solely on the specificity of the claimed filtering
method. Instead, the Federal Circuit based its determination that the claims
of the ‘606 patent at issue include an inventive concept on the fact that the
claims represent a technical improvement to filtering content on the Internet.
More particularly, in BASCOM, the Federal Circuit held that “[t]he
inventive concept described and claimed in the ’606 patent is the installation
of a filtering tool at a specific location, remote from end-users, with
customizable filtering features specific to each end user.” BASCOM,
827 F.3d at 1350. The court, thus, explained that the remote location of a
filtering tool having customizable user-specific filtering features provides
the filtering tool both the benefits of a filter on a local computer and the
benefits of a filter on the ISP server and is a technical improvement over
prior art ways of filtering content. Id. at 1350—51.
Here, Appellant has not pointed to any particular arrangement in the
claims as providing an inventive concept. Appellant offers only the
conclusory statement that “[a]s in BASCOM, the claim in the instant
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Application 13/144,909
application is not to a high level concept, but to a specific technique, that is
neither conventional nor generic, for implementing a solution to an issue not
previously identified in the prior art” (Req. Reh’g. 6).
Claim 1, for example, recites two components: (1) “an electronic
money card unit” and (2) “an electronic money terminal unit.” The card unit
stores electronic money. The terminal unit reads information from the card
unit, stores electronic money applications, and executes an appointed
electronic money application. Appellant has not explained how the claimed
arrangement amounts to an inventive concept comparable to that found in
BASCOM.
We are not persuaded that the Examiner erred in rejecting claims 1—4,
6—8, 10, 13—15, and 17 under 35 U.S.C. § 101. Therefore, we decline to
modify our original decision.
DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of Appellant’s Request, but is
denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a).
DENIED
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