Ex Parte Kumar et al

Patent Trial and Appeal Board

Feb 7, 2018

13095251 (P.T.A.B. Feb. 7, 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.
13/095,251 04/27/2011 Apurva Kumar IN920110025US1
(790.119)
2236
89885 7590 02/07/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
MASUD, ROKIB
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
02/07/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte APURVA KUMAR and AAMER IQBAL RANA
Appeal 2016-007178
Application 13/095,251
Technology Center 3600
Before JEAN R. HOMERE, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—6, 8, 10, 12—23, 25, and 27, which constitute all claims pending in
this application.1 App. Br. 5. Claims 7, 9, 11, 24, and 26 have been
cancelled. Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines Corporation. App. Br. 3.
Appeal 2016-007178
Application 13/095,251
Introduction
According to Appellants, the claimed subject matter relates to a
method and system for allowing a service provider to charge a customer’s
account, such as to authorize the customer to access requested content at a
mobile content provider. Spec. H 1, 2. In particular, upon receiving from
the customer (304) a request (including the customer’s mobile number) to
purchase selected content (312), the content provider (306) registers the
request along with a newly generated personal identification number (PIN),
which are forwarded to the service provider (308) for subsequently charging
to the customer’s account the requested transaction. Id. Tflf 6, 44, 45, Fig. 3.
Upon receiving from the service provider an SMS message including the
authorization code authorizing or declining the requested transaction, the
content provider activates a link previously provided to the customer so as to
permit or block the customer’s access to the requested content. Id.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method comprising:
utilizing at least one processor to execute computer code
configured to perform the following steps at a charging service
provider:
receiving notice of a customer request for content of a
third party content provider;
generating an authorization code on behalf of the content
provider and returning the authorization code to the customer
via a channel independent of the third party content provider;
accepting the authorization code from the third party
content provider once the third party content provider receives
the authorization code from the customer;
verifying the authorization code;
executing charging for the requested content; and
availing the requested content to the customer via:
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Application 13/095,251
receiving a communication originating
from the third party content provider, the
communication comprising a link which avails
customer access to the requested content; and
blocking customer access to the requested
content until said verifying of the authorization
code, via controlling access to a URL of the third
party content provider, the URL comprising the
link which avails customer access to the requested
content;
wherein the requested content comprises
content availed to the customer via a message
containing the URL, the message comprising the
communication originating from the third party
content provider and the URL comprising the link
which avails customer access to the requested
content;
said blocking comprising:
holding the message at the charging service
provider; and
releasing the message to the customer
subsequent to:
said generating and returning of the
authorization code; and
said accepting of the authorization
code.
Rejection on Appeal2
Claims 1—6, 8, 10, and 12—23, 25, and 27 stand rejected under 35
U.S.C. § 101 as being directed to patent ineligible subject matter. Final
Act. 2—3.
2 The Examiner withdrew the prior art rejections previously entered against
the claims on appeal. See Adv. Act. (mailed Aug. 18, 2015).
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Appeal 2016-007178
Application 13/095,251
ANALYSIS
We consider Appellants’ arguments seriatim, as they are presented in
the Appeal Brief, pages 12—18, and the Reply Brief, pages 11—18.3
Appellants argue the Examiner erred in concluding that claims 1—6, 8,
10, 12—23, 25, and 27 are merely directed to the abstract idea of‘“blocking
customer access to . . . requested content until. . . verifying of [an]
authorization code.’” App. Br. 14 (citation omitted). In particular,
Appellants argue because independent claims 1,21, and 22 recite at least a
processor and/or a computer readable storage medium to carry out the steps
recited therein, the underlying subject matter cannot be directed to mere
abstract idea. Id. As such, Appellants submit that the claims as a whole
recite significantly more than the abstract idea. Id. at 15. According to
Appellants, an abstract idea itself cannot be fairly associated with the
limitations: “requested content comprising content availed to a customer via
a message containing a URL, the message comprising a communication
originating from a third party content provider; and the URL comprising a
link which avails customer access to the requested content.” Id. at 15—16.
Likewise, Appellants argue that an abstract idea cannot be fairly associated
with certain embodiments of the invention described in the Specification that
3 Rather than reiterate all of Appellants’ arguments and all of the Examiner’s
findings, we refer to the Appeal Brief (filed Nov. 18, 2015) (“App. Br.”), the
Reply Brief (filed July 18, 2016) (“Reply Br.”), and the Examiner’s Answer
(mailed May 18, 2016) (“Ans.”) for the respective details. We have
considered in this Decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made but chose
not to make in the Briefs are deemed to be waived. See 37 C.E.R.
§ 41.37(c)(l)(iv) (2012).
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Application 13/095,251
help inform a clearer understanding of the claimed elements (id. (citing
Spec. 1146-76)).
These arguments are not persuasive. The U.S. Supreme Court
provides a two-step test for determining whether a claim is directed to
patent-eligible subject matter under 35 U.S.C. § 101.4 In the first step, we
determine whether the claims are directed to one or more judicial exceptions
(i.e., laws of nature, natural phenomenon, and abstract ideas) to the four
statutory categories of invention. Alice Corp., 134 S. Ct. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
In the second step, 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.” Id. (quoting Mayo, 566 U.S. at 78—79). In other words, the
second step is to “search for an ‘inventive concept’—i.e., 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.’” Id. (alteration in original) (quoting Mayo, 566 U.S. at 72—
73).
At the outset, we note Appellants do not dispute the Examiner’s
conclusion that the field of the claimed subject matter pertains generally to
the abstract idea of a third party providing requested content access to a
customer upon receiving verification/authorization from a service provider.
App. Br. 15, Ans. 3. Further, we do not agree with Appellants that the
claimed third party verification and content access authorization are directed
4 Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014).
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Application 13/095,251
to significantly more than the abstract idea itself. App. Br. 16. Although the
claims recite computer-readable storage medium, and a computer system,
these components are claimed and described in the Specification with broad,
general terms, rather than specific language characterizing these recitations
as particular devices or even as general purpose devices modified using
particular algorithms. See, e.g., Spec, 46—76. Furthermore, although the
claim recites a content provider providing the customer with a URL to
access the requested document, the use of the URL does not, per se, remove
the claimed invention out of the realm of a mere abstract idea because the
URL simply involves the conventional use of a computer to facilitate access
to the requested data. Additionally, we agree with the Examiner that the
recited functions of receiving data, generating data, verifying data, executing
data, blocking access, and releasing data are generic functions routinely
performed by a computer. Ans. 4. See, e.g., Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (claims directed to
collection, manipulation, and display of data); Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(customizing information and presenting it to users based on particular
characteristics); Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat’lAss’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting data,. .
. recognizing certain data within the collected data set, and . . . storing that
recognized data in a memory”). Therefore, the claimed subject matter
pertains to the well-known practices of employing a computer to determine
whether a service provider approves the charge associated with a customer’s
request before the computer can permit the customer to access data at the
content provider’s location. Thus, we agree with the Examiner that the
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Application 13/095,251
elements of claim 1 do not amount to “significantly more” than the abstract
idea of using a computer to facilitate third party charging authorization for
mobile services providers or that they do not add any meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. Id. at 9.* * * 5 Accordingly, we affirm the Examiner’s patent
ineligible subject matter rejection of claim 1, as well as claims 2—6, 8, 10,
12—23, 25, and 27, which were rejected on the same basis.
DECISION
For the above reasons, we affirm the Examiner’s patent ineligible
subject matter rejection of claims 1—6, 8, 10, 12—23, 25, and 27.
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
5 Considerations for determining whether a claim with additional elements
amounts to “significantly more” than the judicial exception itself include
improvements to another technology or technical field {Alice Corp., 134
S. Ct. at 2359-60 (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)));
adding a specific limitation other than what is well-understood, routine, and
conventional in the field, or adding unconventional steps that confine the
claim to a particular useful application {Mayo, 566 U.S. at 82, 87); or other
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment {Alice Corp., 134 S. Ct.
at 2360). See, e.g., Intellectual Ventures I, 792 F.3d at 1370 (“[Mjerely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea”).
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