Ex Parte Kothandaraman et al

Patent Trials and Appeals Board

Jul 16, 2018

12827882 - (D) (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/827,882 06/30/2010 Mahana Krishnan Kothandaraman
132906 7590 07/18/2018
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
70481.00235 5838
EXAMINER
TRAN,HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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
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 MOHANA KRISHNAN KOTHANDARAMAN,
SATHISH KUMAR VENKOBA ROA, and
MOHANASIVAMUMAPATHY
Appeal2017-003798
Application 12/827 ,882
Technology Center 3600
Before ST. JOHN COURTENAY III, BETH Z. SHAW, and
JAMES W. DEJMEK, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 6-15, and 18-26, which are all the claims pending in this
application. Claims 3-5, 16, and 17 are cancelled. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants' invention "generally relates to on-line payments and more
particularly to payments made from links on an on-line content page." Spec.
Appeal2017-003798
Application 12/827,882
Exemplary Claim
Claim 1 is exemplary of the invention and reads as follows:
1. A method of performing a payment, comprising:
receiving, by a payment provider processor, a request for
a payment directly from a user
accessing a link from a content page, wherein the link is
in-line with text as part of a non-payment related article on the
content page and wherein the link and the content page do not
directly convey to the user a solicitation to make a payment;
associating the link that does not directly convey to the
user a solicitation to make a payment to a specific payment
request related to the non-payment related article;
initiating a payment process in response to a two-step
selection by the user comprising:
presenting the user with a new window overlaying a
portion of the content to make the specific payment request
after receiving an indication the user has moved an indicator
over the link; and
presenting the user with a payment page to make a
payment from the specific payment request after receiving an
indication the user has clicked on a portion of the new window;
receiving information from the user through the payment
page; and
processing the request based on the information to make
a payment for the specific payment request.
Rejection
Claims 1, 2, 6-15, and 18-26 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 4.
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We give the claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). To the extent Appellants have not advanced
separate, substantive arguments for particular claims, or other issues, such
arguments are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We highlight and
address specific findings and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 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," such as an
abstract idea. Abstract ideas may include, but are not limited to,
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fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017). Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
Rejection under 35 USC§ 101
Regarding the first part of the Alice/ Mayo analysis, the Examiner
concludes claims 1, 2, 6-15, and 18-26 are directed to the abstract idea of
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"a fundamental economic practice and a method of organizing human
activities." Final Act. 5. 1
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims considered as a whole are:
nothing more than the instruction to implement the abstract idea
in a particular, albeit well-understood, routine, and conventional
technological environment. The claim does not purport to
improve the function of the computer itself, or to improve any
other technology or technical field. Use of an unspecified
generic computer does not transform an abstract idea into a
patent-eligible invention. Claims 2 and 6-13 do no more than
provide additional instructions to implement the abstract idea in
claim 1. Therefore, the claims do not amount to significantly
more than the abstract idea of transaction processing.
Final Act. 6 ( emphases added). 2
The Examiner sets forth essentially the same reasoning for rejecting
the remaining claims 14, 15, and 18-26 on appeal. Final Act. 6-7. The
Examiner summarizes the basis for the rejection: "Viewed as a whole, the
additional claim elements do not provide meaningful limitations sufficient to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the abstract idea
itself." Final Act. 7.
1 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
2 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Thus, the Examiner concludes that claims 1, 2, 6-15, and 18-26 are
not patent-eligible under 35 U.S.C. § 101.
alia:
Mayo/Alice Analysis -Step 1
In response, and regarding Alice Step 1, Appellants contend, inter
the Examiner fails to identify the exact limitations of the claims
that are allegedly directed to an abstract idea. Further, the
Examiner fails to explain why "a method for a user to make a
payment over a new pop-up window on a content page"
corresponds to a concept that the courts have identified as an
abstract idea. Indeed, no such abstract idea has been identified
by the courts and the Examiner has erroneously gone beyond
those concepts that are similar to what the court have identified
as abstract idea.
App. Br. 9, emphases added.
We disagree with Appellants, because we conclude the claimed
"method of performing a payment" ( claim 1) is directed to a fundamental
economic practice. The Supreme Court has identified fundamental
economic practices as being directed to an abstract idea. Alice, 134 S. Ct. at
2355-57.
Nor do we find Appellants' additional argument regarding preemption
persuasive: i.e., "the present claims recite limitations that are narrowly
focused such that they do not 'tie up ... excepted subject matter."' App.
Br. 11.
Our reviewing court provides applicable guidance: "[ w ]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
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Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Therefore, we are not persuaded by Appellants' argument regarding the
absence of complete preemption. App. Br. 11.
Mayo/Alice Analysis -Step 2
In support of the arguments advanced above regarding Alice Step 1
Appellants assert that "the present claims are closely analogized to those of
DDR Holdings[:]" 3
For example, the present claims recite: "initiating a payment
process in response to a two-step selection by the user
comprising: presenting the user with a new window overlaying
a portion of the content to make the specific payment request
after receiving an indication the user has moved an indicator
over the link; and presenting the user with a payment page
to make a payment from the specific payment request after
receiving an indication the user has clicked on a portion of
the new window. " (Emphasis added.) Thus, the present claims
provide a solution to the business challenge of retaining users at
an original website during a payment process. In this regard, the
claimed solution employs a two-step user selection operation that
utilizes pop-up windows overlaying the original content page for
initiating payment transactions. For example, this may include
the processing of contents on an interactive display, such as
generation, selective display, and processing of active computer
links. Similar to those found statutory in the DDR Holdings, the
pending claims also "specify how interactions with the Internet
3 We note the arguments advanced by Appellants regarding DDR Holdings
(under the "Mayo Test-Part 1" heading in the Appeal Brief 8-11) are
properly considered under Mayo/Alice step 2, because the court in DDR
Holdings found under any characterization of the abstract idea, "the '399
patent's claims satisfy Mayo/Alice step two." DDR Holdings, 773 F.3d at
1257. Emphasis added.
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are manipulated to yield a desired result" and "recite an invention
that is not merely the routine or conventional use of the Internet."
Thus, similar to DDR Holdings, the claimed solutions ( e.g.,
two-step user selection operation using a pop-up window in a
website for payment process) to the identified business
challenge ( e.g., retaining users at the website) are "necessarily
rooted in computer technology." Therefore, the claims in the
present application are necessarily rooted in challenges and
solutions not possible in pre-Internet days. As such, similar to
the claims in DDR Holdings, the present claims are not directed
to an abstract idea.
App. Br. 9--10.
In response to Appellants' arguments (id.), we do not find Appellants'
claims are similar to the claimed solution the court held to be patent-eligible
in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
In particular, we note the court in DDR emphasized that the '399 patent
claims did not "recite a fundamental economic or longstanding commercial
practice." DDR, 773 F.3d at 1257. As distinguished from the claims
considered by the court in DDR, Appellants' claims 1, 2, 6-15, and 18-26,
which perform payments, are directed to a fundamental economic practice,
for the reasons discussed above regarding Alice step 1.
In DDR, the Federal Circuit applied the Supreme Court's Alice two-
step framework, and upheld the validity of DDR's patent on its web-page
display technology. DDR, 773 F.3d at 1255. However, we find the problem
addressed by Appellants' claims (performing payments) is also not similar
or otherwise analogous to the specific technical problem addressed by the
subject claims in DDR, which were directed to retaining a website visitor
when the visitor clicked on a third-party merchant's advertisement on the
host website. Instead of taking the visitor to the third-party merchant's
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website (and thus losing the visitor to the third-party merchant), DDR's
claimed system generated a hybrid web page that: (1) displayed product
information from the third-party merchant, but also (2) retained the host
website's "look and feel."
As distinguished from the claims considered by the court in DDR,
Appellants' claims 1, 2, 6-15, and 18-26 are not directed to generating a
hybrid web page that retains the host website's "look and feel" while
displaying product information from a third-party merchant. See DDR, 773
F.3d at 1257. Although Appellants' invention is directed to the result of
"processing the request ... to make a payment for the specific payment
request" by using "a payment page" ( claim 1 ), we find no language in the
claims on appeal that focuses on a specific means or method that improves
the recited generic processor that performs all the recited steps or functions
of claims 1, 2, 6-15, and 18-26.
In particular, we find the claims on appeal are silent regarding specific
limitations directed to an improved computer system, processor, memory,
network, database, or Internet. Therefore, we find Appellants' claimed
invention does not provide a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR, 773 F.3d at 1257. (Emphasis added).
Further, regarding the use of the recited generic processor(s), the
Supreme Court held "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; see also Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract
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idea on 'an Internet computer network' or on a generic computer is still an
abstract idea.").
Our reviewing court has "repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (internal citations omitted); see also Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017)
("Rather, the claims recite both a generic computer element-a processor-
and a series of generic computer 'components' that merely restate their
individual functions . . . . That is to say, they merely describe the functions
of the abstract idea itself, without particularity. This is simply not enough
under step two.").
Because none of Appellants' claims are directed to an improvement
in a processor, database, or other computer/network component, we
conclude that none of the claim limitations, viewed both individually and as
an ordered combination, amount to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analyses,
that each of Appellants' claims 1, 2, 6-15, and 18-26, considered as a
whole, is directed to a patent-ineligible abstract idea (under step one), and
under step two, does not recite something "significantly more" to transform
the nature of the claim into a patent-eligible application.
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Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1, 2, 6-15, and 18-26,
as being directed to patent-ineligible subject matter. 4
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 6-15, and 18-26,
under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 6-15, and
18-26 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 4I.50(f).
AFFIRMED
4 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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