Ex Parte Krikorian et al

Patent Trial and Appeal Board

Dec 22, 2016

12501297 (P.T.A.B. Dec. 22, 2016)

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.
12/501,297 07/10/2009 Shari L. Krikorian 070457.2585 4068
125665 7590
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112
12/27/2016 EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/27/2016 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):
nycdocket@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHARI L. KRIKORIAN, PHILIP J. PHILLIOU, and
EDWARD F. DOWNS
Appeal 2015-0022341
Application 12/501,2972
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
MATTHEW S. METERS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—9. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
May 7, 2014) and Reply Brief (“Reply Br.,” filed Dec. 3, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed Mar. 29, 2013) and
Answer (“Ans.,” mailed Oct. 3, 2014).
2 According to Appellants, the real party in interest is MasterCard
International Incorporated (Appeal Br. 3).
Appeal 2015-002234
Application 12/501,297
Introduction
Appellants’ disclosure relates to “a method and system for automated
payment authorization and settlement.” (Spec. 1,11. 16-17).
Claim 1, reproduced below, is the sole independent claim on appeal
and is illustrative of the subject matter on appeal:
1. A method for conducting a purchasing card
transaction between a buyer and supplier by way of an
electronic bill payment and presentment (EIPP) system
comprising a computer processor, the buyer having an
enterprise resource planning (“ERP”) system, the method
comprising:
receiving approval of an invoice for the purchasing
card transaction from the ERP system;
receiving scheduling information for scheduling the
invoice for payment from the ERP system;
extracting from the ERP system a payment file that
includes a transaction identifier identifying the
transaction;
submitting by the computer processor, based on said
scheduling information and subsequent to receiving said
approval, data describing the transaction, said data
including the transaction identifier, to a point-of-sale
(POS) device for authorization and settlement;
sending line item data describing the transaction,
the line item data including the transaction identifier,
from the EIPP system to a purchasing card payment
network for matching; and
providing to the ERP system a purchasing card
statement including statement data describing the
transaction, the statement data including the transaction
identifier.
(Appeal Br., Claims App.)
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Application 12/501,297
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1—9 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.3
II. Claims 1 and 3—9 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Smirnoff (US 2003/0093373
Al, pub. May 15, 2003), Holm (US 2003/0220863 Al,
pub. Nov. 27, 2003), and Peirce (US 5,384,449, iss. Jan.
24, 1995).
III. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Smirnoff, Holm, Peirce, and
Shinzaki (US 2002/0040350 Al, pub. Apr. 4, 2002).
ANALYSIS
Rejection I (Unpatentable subject matter)
In analyzing whether claimed subject matter is patent eligible, the
Court in Alice articulated the use of a two-step framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289
(2012):
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, “[wjhat else is there in the claims before us?” To
answer that question, we consider the elements of each claim
both individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application.
3 This rejection is set forth in the Answer pursuant to the procedures for a
new ground of rejection in the Answer.
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Application 12/501,297
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). See
also USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618, 74,621 (Dec. 16, 2014).
The Examiner determines that
the claims are directed towards conducting purchasing card
transaction. Performing money transfer is a fundamental
economic practice and thus, the claims include an abstract idea.
The claims do not include limitations that are “significantly
more” than the abstract idea because the claims do not include
an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. Note
that the limitations, in the instant claims, are done by the
generically recited device and payment processing system. The
limitations are merely instructions to implement the abstract
idea on a computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
(Ans. 4).
Appellants argue that claims 1—9 are not directed to an abstract idea
because (a) the claims are directed to methods for conducting a purchasing
card transaction between a buyer and a supplier by way of an electronic bill
payment and presentment (“EIPP”) system comprising a computer
processor, the buyer having an enterprise resource planning (“ERP”) system,
and (b) this method is not itself a building block of human ingenuity, a
fundamental economic practice, a method of organizing human activity, an
idea of itself, or a mathematical relationship or formula. (Reply Br. 4).
Appellants asserts that an exemplary claim recites the specific
limitations of (1) receiving approval of an invoice for the purchasing card
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transaction from the ERP system, (2) receiving scheduling information for
scheduling the invoice for payment from the ERP system, (3) extracting
from the ERP system a payment file that includes a transaction identifier
identifying the transaction, (4) submitting by the computer processor, based
on said scheduling information and subsequent to receiving said approval,
(5) data describing the transaction, (6) said data including the transaction
identifier, (7) to a point-of-sale (POS) device for authorization and
settlement, (8) sending line item data describing the transaction, the line item
data including the transaction identifier, (9) from the EIPP system to a
purchasing card payment network for matching, and providing to the ERP
system a purchasing card statement including statement data describing the
transaction, and (10) the statement data including the transaction identifier.
(id.).
Even accepting Appellants’ characterization of the invention as
“methods for conducting a purchasing card transaction between a buyer and
a supplier by way of an electronic bill payment and presentment (“EIPP”)
system comprising a computer processor, the buyer having an enterprise
resource planning (“ERP”) system” (id.), we agree with the Examiner that,
under step one of Alice, such a method for conducting a purchase and
scheduling payment for the purchase is abstract because it is directed to a
fundamental economic activity, e.g., an accounting practice for reconciling
transactions.
The next issue then, under step two of Alice, is whether the additional
claim recitations, taken individually, or as a whole, add significantly more to
transform the invention into patentable subject matter. Here again, we agree
with the Examiner’s findings that the claimed steps do not relate to advances
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in computer technology, but rather relate to the relaying of data over a
network, using conventional technology, and that this does not transform the
claimed invention into patentable subject matter. For example, assigning a
unique identifier has been held not to transform an invention into patentable
subject matter under an analogous set of facts. See, e.g„ Essociate, Inc. v.
Clickbooth.com, LLC, No. SACV 13-01886-JVS (DFMx), 2015 WL
1428919 (C.D. Cal. Feb. 11, 2015), affd 641 Fed. Appx. 1006, Nos.
2015-1332, 2015-1333 (Fed. Cir. Mar. 11, 2016) (Mem.).
Therefore, we sustain the Examiner’s rejection under § 101 of claims
1-9.
Rejections II and III (Obviousness)
Independent claim 1 and dependent claims 2 and 3
We are unpersuaded by Appellants’ argument that the prior art relied
on by the Examiner fails to disclose sending data describing a transaction to
(1) a point-of-sale device (2) based on scheduling information after
receiving approval for payment, as recited by independent claim 1, i.e.,
“submitting, by the computer processor, based on said scheduling
information and subsequent to receiving said approval, data describing the
transaction, said data including the transaction identifier, to a point-of-sale
(POS) device for authorization and settlement” (Appeal Br. 5—9).
Appellants assert that Smirnoff discloses sending payment information to a
credit card device (as opposed to a point-of-sale terminal) (Appeal Br. 7).
However, the Examiner relies on Holm’s teaching of payment
settlement in combination with Smirnoff’s teachings regarding credit card
transactions. In particular, the Examiner relies on paragraphs 14—20 and
Figure 1 (items 105, 106, and 108) of Holm for sending transaction data to a
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point-of-sale device (Final Act. 3—\\ Ans. 5—6). Indeed, paragraph 68 of
Holm, explaining Figure 1, describes that a notification is sent to the seller
system by the payer system to indicate acceptance of newly defined terms.
Appellants argue that Holm discloses sending the terms of a separate,
second transaction (i.e., a discount) to the payer or seller system for approval
by the offeree after the conclusion of a distinct first transaction, and that this
information is sent to a back end system (as opposed to a point-of-sale
terminal) (Appeal Br. 7-8). However, the Examiner is only relying on Holm
for its teachings of settlement between a payer and a seller where the payer
notifies the seller of approval with terms of approval, and is relying on
Holm’s teaching as a modification of Smirnoffs purchasing system (e.g.,
para. 47) relating to scheduling payment for a single transaction invoice (see
Final Act. 2-3).
Appellants relatedly argue that the Examiner has not provided
sufficient reasoning to modify Smirnoff in view of Holm to arrive at the
“submitting” limitation (see Appeal Br. 5-6). However, the Examiner
reasons that it would have been obvious to a person of ordinary skill to
modify Smirnoff’s purchasing system with Holm’s teachings of settlement
for the benefit of allowing payment to be made at a particular time after it is
approved (and further to include Peirce’s teachings of including a
transaction identifier for the benefit of preventing payment error by
identifying a transaction using an identifier) (Final Act. 3-4). We agree with
the Examiner that it would have been obvious to a person of ordinary skill in
the art to combine the payment teachings, i.e., in a system for processing a
single transaction, for these reasons (see id.).
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Appellants further argue that Smirnoffs project identifier does not
identify the transaction (Appeal Br. 9). However, the Examiner finds that
Smirnoff’s project identifier is associated with a particular transaction (Ans.
4 (discussing Smirnoff 133)). We agree. Smirnoff (133) discloses that the
customer may associate the project identifier with the transaction and
provides the examples of a project name or code, a purchase order identifier,
and/or job number.
We, therefore, sustain the Examiner’s rejection under § 103 of
independent claim 1. Appellants do not argue the rejection under § 103 of
dependent claims 2 and 3 separately from that of independent claim 1. We,
therefore, sustain the Examiner’s rejection under § 103, of dependent claims
2 and 3, for similar reasons as for independent claim 1.
Dependent claim 4
Appellants argue that submitting the transaction amount to a POS
device “based on said scheduling information and subsequent to receiving
said approval,” as recited in dependent claim 4, is not old and well known in
the art, and that Appellants have traversed the Examiner’s taking of Official
Notice on this point (Appeal Br. 9-10). However, we agree with the
Examiner that Appellants have not adequately challenged the Examiner’s
taking of Official Notice (see Ans. 6). In particular, Appellants have not
specifically pointed out the supposed errors in the Examiner’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art. 37 C.F.R. § 1.104(d)(2), Manual of
Patent Examining Procedure (MPEP) § 707.07(a) (9th Ed., Mar. 2014); In re
Boon, 439 F.2d 724, 728 (CCPA 1971) (an adequate traverse must contain
adequate information or argument to create on its face a reasonable doubt
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regarding the circumstances justifying Examiner’s notice of what is well
known to one of ordinary skill in the art).
We, therefore, sustain the Examiner’s rejection under § 103 of
dependent claim 4.
Dependent claim 6
We are unpersuaded by Appellants’ argument that Holm, whether
alone or in combination with the other references, does not disclose or
suggest “wherein submitting said data describing the transaction to the POS
device based on said scheduling information comprises submitting said data
describing the transaction to the POS device on the future payment date,” as
recited in claim 6 (Appeal Br. 11). Appellants assert that Holm is directed to
a method for exchanging messages including an offer and acceptance of new
terms for payment other than the established terms (Appeal Br. 10 (citing
Holm, Abstract).
However, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner
instead relies on Smirnoff flflf 47, 64 & Fig. 3) for the teaching of scheduling
a future payment, and, as above, Holm is not relied on for the teaching of
discounting a previous transaction but only is relied on for the teaching of
transmitting terms of settlement from a payer to a seller. Indeed, paragraph
47 of Smirnoff expressly discloses that a customer can schedule a future
payment. Therefore, we sustain the Examiner’s rejection under § 103 of
dependent claim 6.
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Dependent claim 9
We are unpersuaded by Appellants’ argument that Holm, whether
alone or in combination with the cited references, fails to disclose or suggest
a method for conducting a purchasing card transaction between a buyer and
supplier by way of an EIPP system including, among other things, “wherein
the purchase order comprises a change purchase order,” as recited in claim 9
(Appeal Br. 11-12). Appellants assert that the terms of the first transaction
in Holms are not sent to a POS device after they are approved, that it is the
terms of a second transaction that may be sent to the payer or seller system
for approval by the offeree, and that “data describing the transaction,” relate
to new terms. However, the Examiner relies on Official Notice, rather than
Holms, for the understanding that a “change purchase order” was well-
known. Therefore, we sustain the Examiner’s rejection under § 103 of
dependent claim 9.
Dependent claims 5, 7, and 8
Although listed separately, Appellants do not argue the rejection under
§ 103 of dependent claims 5, 7, and 8 separately from those of dependent
claims 6 and 9. We, therefore, sustain the Examiner’s rejection under § 103,
of dependent claims 5, 7, and 8, for similar reasons as for independent claim
1 and dependent claims 6 and 9.
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DECISION
The Examiner’s decision to reject claims 1—9 is affirmed.
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).
AFFIRMED
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