Ex Parte Lanford

Patent Trial and Appeal Board

Nov 15, 2017

12553499 (P.T.A.B. Nov. 15, 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.
12/553,499 09/03/2009 Matthew Lanford P00499-US-UTIL 6676
98665 7590 11/15/2017
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
11/15/2017 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 MATTHEW LANFORD
Appeal 2015-004115
Application 12/553,499
Technology Center 3600
Before-. MURRIEL E. CRAWFORD, JAMES A. WORTH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing (“Request”), dated September
28, 2017, asking that the Decision on Appeal, mailed July 28, 2017
(“Decision”), be reheard (Request 1). In the Decision, we affirmed the
Examiner’s rejections under 35 U.S.C. $ 1031a) and 35 U.S.C. $ 101.
Decision 13.
Rejection of claim 26 under 35 U.S.C. §103
Appellant argues that the rejection of claim 26 under 35 U.S.C. § 103
should be considered separately and reversed.
Appeal 2015-004115
Application 12/553,499
Upon consideration of Appellant’s argument we reverse the rejection
of claim 26 under 35 U.S.C. § 103. The Examiner relies on paragraph 174
of Fordyce for teaching an electronic payment processor through which said
merchant facility and said acquiring entity dispatch an authorization request
to said issuing entity of a given payment device. Fin. Act. 4. We agree with
the Appellant that paragraph 174 of Fordyce does not disclose an electronic
payment processor through which said merchant facility and said acquiring
entity dispatch an authorization request to said issuing entity of a given
payment device. In explaining this rejection, the Examiner found that the
merchant point of sale system disclosed in Fordyce is the electronic payment
processor. Ans. 10. We agree with the Appellant and find that paragraph
174 of Fordyce does not disclose that the authorization request is sent to the
issuing entity via the merchant point of sale system. Although the Fordyce
merchant point of sale system 110 sends data to the acquirer 108 and the
acquirer sends data to the issuer entity 104, such data are not sent via the
merchant point of sale system 110 as found by the Examiner.
Therefore, we will not sustain this rejection as it is directed to claim
26 and claims 27 and 28 dependent therefrom.
Rejection of claim 26 under 35 U.S.C. §101
Appellant argues that the opinion is not clear on whether the rejection
of claim 26 under 35 U.S.C. §101 is affirmed or reversed.
Upon consideration of the Appellant’s argument, we amend the
sentence on page 9, lines 12 to 13 of our original opinion regarding the 35
2
Appeal 2015-004115
Application 12/553,499
U.S.C § 101 to read as follows: “We will sustain the rejection as it is
directed to claim 26 for the same reasons.”
Appellant also presents new arguments regarding the patent eligibility
of claim 26 under 35 U.S.C. § 101 based on the decision in BASCOM Global
Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Appellant argues that the Examiner should have considered the additional
elements, beyond the abstract idea, in combination, as well as, individually,
when determining whether the claim as a whole amounts to significantly
more than the con ventional generic arrangement of known convention
elements. Specifically, Appellant argues that the claimed merchant facility,
which is configured to determine that the given payment device is associated
with a promotion which is located proximate to the products and devices so
as to thereby permit line-item level approvals, amounts to significantly more
than a judicial exception.
BASCOM provides guidance in relation to the second step of the two-
step framework for determining patent-eligibility. Id. We have considered
Appellant’s arguments in light of BASCOM, and, for the reasons set forth
below, we conclude BASCOM does not alter our determination that,
pursuant to the second step of the patent-eligibility analysis, clai m 26 does
not include an inventive concept—an element or combination of elements
sufficient to ensure that the claim amounts to significantly more than the
abstract idea and to transform the nature of the claim into a patent-eligible
concept.
3
Appeal 2015-004115
Application 12/553,499
The Federal Circuit in BASCOM, followed the Supreme Court’s guidance
for determining whether the claims recite an inventive concept set forth in
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2357-60
(2014).
In Alice, the Supreme Court explained that, under the second step of
the patent-eligibility analysis, “the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea of intermediated settlement on a generic computer.” 134 S.Ct. at 2359.
The Supreme Court also provided examples of claims that represent more
than instructions to implement an abstract idea on a generic computer, such
as claims that purport to improve the functioning of the computer itself and
claims that effect an improvement in any other technology or technical field,
Id. at 2359-60.
In BASCOM, the Federal Circuit held “[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.” 827 F.3d at 1350. In determining this
feature to be an inventive concept, the Federal Circuit 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.
Notably, the Federal Circuit specifically determined that “the claims may be
read to ‘improved an existing technological process.”’ Id. at 1351 (citing
Alice, 134 S. Ct. at 2358).
4
Appeal 2015-004115
Application 12/553,499
Furthermore, in discussing recent case law regarding the second step
of the patent-eligibility analysis, the Federal Circuit emphasized that the
claims of the '606 patent are a technical solution that improves computer
technology. For example, in analogizing the claims of the '606 patent to the
patent-eligible claims in DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
1245 (Fed. Cir. 2014), the Federal Circuit explained:
[Although the invention in the '606 patent is engineered in the
context of filtering content, the invention is not claiming the
idea of filtering content simply applied to the Internet, The '606
patent is instead claiming a technology-based solution (not an
abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content
on the Internet that overcomes existing problems with other
Internet filtering systems. By taking a prior art filter solution
(one-size-fits-all filter at the ISP server) and making it more
dynamic and efficient (providing individualized filtering at the
ISP server), the claimed invention represents a “software-based
invention[] that improvefs] the performance of the computer
svstem itself.”o'
BASCOM, 827 F.3d at 1351 (citations omitted). Similarly, in distinguishing
the claims of the '606 patent from claims that lack an in ventive concept, the
Federal Circuit explained that, unlike the claims of the '606 patent, the
claims lacking an inventive concept do not provide a specific technical
solution apart from using generic computer concepts in a conventional way
to carry out the abstract idea. Id. at 1351-52.
Accordingly, in BASCOM, the Federal Circuit premised its
determination that the claims of the '606 patent include an inventive concept
on the fact that the claims represent a technical improvement to filtering
conten t on the Internet.
5
Appeal 2015-004115
Application 12/553,499
has not established, in fact have not argued, that the
merchant facility recited in claim 26 represents a specific technical solution
to a technical problem. To the contrary, the merchant facility uses a generic
computer in a conventional way to carry out the abstract idea. In this regard,
the merchant facility determines whether a given payment device is
associated with a promotion which is located proximate to the products and
devices by (1) receiving data in the form of a list of device identifying
numbers association with the promotion, (2) loading the list of numbers into
the point of sale system and (3) consulting this list to determine if a device
used during a purchase is on the list. The merchant facility therefore is
merely receiving data in the form of a list, storing that data and processing
that data by determining whether a device is on the list. Each of these steps
is a conventional step performed by a generic computer. There is no
improvement to the merchant In this addition, there
is no technical improvement to the steps of receiving, storing and processing
data. We determine that the merchant facility is nothing more than a generic
computer, performing generic, well-understood and routine computer
functions.
As such, we are not persuaded that our affirmance of the rejection of
claim 26 was in error in accordance with BASCOM,
CONCLUSIONS
The Request for Rehearing has been considered and is granted to the
extent that we have reversed the Examiner’s rejection of claim 26 under
35 U.S.C, § 103. We have also considered Appellant’s further arguments
6
Appeal 2015-004115
Application 12/553,499
related to the patent eligibility of claim 26 and amended our opinion to make
it clear that we affirm the Examiner’s rejection of claim 26 under 35 U.S.C.
§101. We decline to make any further modifications to our opinion.
GRANTED-IN-PART
7