Ex Parte LI et al

Patent Trial and Appeal Board

Mar 20, 2018

13348511 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/348,511 0111112012 David Ching Li
132897 7590 03/22/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
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.
P2395.10157US07 2515
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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
following e-mail address( es):
docket@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHING LI, DAVID YOUNG-JUNE KANG,
BENJAMIN GREGG LISTWON, and MAX R. LEVCHIN
Appeal2016-007807
Application 13/348,511
Technology Center 3600
Before NATHAN A. ENGELS, JAMES W. DEJMEK, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-21, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d
1420, 1423 (BPAI 1994) (precedential).
We affirm.
1 Appellants identify PayPal, Inc. as the real party in interest. App. Br. 2.
Appeal2016-007807
Application 13/348,511
Introduction
Appellants state their Application relates to "facilitating electronic
payment of goods and services corresponding to on-line purchases." Spec.
iJ 10. Appellants' disclosed and claimed invention relates to "facilitating
payment of goods and services via a third-party electronic payment service."
Spec. iJ 12. In a disclosed embodiment, to facilitate transaction payments, a
merchant provides a payment service server with a return address (URL) for
its website to which the merchant wants the payment service server to send
(re-direct) users during a purchase transaction. See Spec. iii! 15, 18, Fig. 2
(items 202, 214). The return address is stored at the payment service server
in user profile information. Spec. iJ 27.
Claim 1 is representative:
1. A method comprising:
communicating a web page, over a network, to a merchant
server associated with a merchant, the web page including a
plurality of input mechanisms for receiving a plurality of
reference return network addresses;
receiving a first reference return network address, over the
network, from the merchant, the first reference return network
address being received at a payment service server, the first
reference return network address identifying an interface that is
hosted by a first merchant web site that is operated by the
merchant and the interface being utilized as a first landing page
hosted by the first merchant web site to which a consumer user
is redirected to by the payment server, the redirection enabling
execution of a transaction between the consumer user and the
merchant;
responsive to the redirection, completing a purchase
transaction between the consumer user and the merchant; and
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storing the first reference return network address at the
payment service server in user profile information that is
associated with the merchant.
App. Br. 26 (Claims App'x).
Rejections and References
1. Claims 1-21 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Non-Final Act. 5-6.
2. Claims 1-21 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Agrawal et al. (US 2004/0098313 Al; pub. May 20,
2004, hereinafter "Agrawal"), Bartoli et al. (US 6,047,268; iss. Apr. 4, 2000,
hereinafter "Bartoli"), and Armes et al. (US 2003/0023549 Al; pub. Jan. 30,
2003, hereinafter "Armes"). Non-Final Act. 6-10.
ISSUES
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Accordingly, the issues are whether the Examiner errs in:
(a) concluding claims 1-21 are directed to patent-ineligible
subject matter (App. Br. 8-22; Reply Br. 2-5); and
(b) finding the combination of Agrawal, Bartoli, and Armes teaches
or suggests "responsive to the redirection, completing a purchase
transaction between the consumer user and the merchant," as
recited in independent claim 1, and recited commensurately in
independent claims 11 and 21 (App. Br. 23-24; Reply Br. 6).
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ANALYSIS
The 35 U.S.C. § 101 Rejection
Appellants dispute the Examiner's conclusion that claims 1-21 are
directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 8-22; Reply Br. 2-5.
Appellants assert the claims are entitled to a streamlined analysis as
set forth in the 2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 7 4618 (December 16, 2014) ("Interim Guidance"). App.
Br. 13-15. "For purposes of efficiency in examination, a streamlined
analysis can be used for a claim that may or may not recite a judicial
exception but, when viewed as a whole, clearly does not seek to tie up any
judicial exception such that others cannot practice it." Interim Guidance,
79 Fed. Reg. at 74625 (emphases added). Thus, a streamlined eligibility
analysis is available to examiners who are of the view that a claim clearly
does not have a subject matter eligibility problem. By contrast, the Interim
Guidance indicates a "full analysis should be conducted" if there is doubt
that the applicant is effectively seeking coverage for a judicial exception. Id.
Thus, it is at an examiner's discretion as to whether a streamlined
analysis is appropriate. Because the Examiner determined the application
may be directed to patent-ineligible subject matter, a full analysis, as
conducted by the Examiner, was appropriate.
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
"new and useful process, machine, manufacture, or composition of
matter." 35 U.S.C. § 101. The Supreme Court, however, long has
interpreted § 101 to include an implicit exception: "[l]aws of nature, natural
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phenomena, and abstract ideas" are not patent eligible. See, e.g., Alice Corp.
Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In Alice, the Supreme Court reiterated the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 72-73, 77-80 (2012), "for distinguishing patents that claim ...
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. If a claim falls within one of the
statutory categories of patent eligibility (i.e., a process, machine,
manufacture or composition of matter), the first step is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," e.g., an abstract idea. Id. If the claim is directed to an ineligible
concept, the second step is to determine whether any claim elements, when
"consider[ ed] both individually and 'as an ordered combination[,]' ...
'transform the nature of the claim' into a patent-eligible application" to
ensure the claim amounts to significantly more than the judicial exception
itself. Id. (quoting Mayo, 566 U.S. at 78-80). Our analysis below focuses
on whether the Examiner has committed reversible error under the two-step
Alice framework.
The Examiner concludes that although Appellants' claimed invention
broadly falls within the statutory categories of patent eligibility, the pending
claims are directed to an abstract idea, without reciting significantly more.
Non-Final Act. 5-6 (explaining "these claims do not effect an improvement
to another technology or technical field; the claims do not amount to an
improvement to the functioning of a computer itself; and the claims do not
move beyond a general link of the use of an abstract idea to a particular
technological environment"). The Examiner characterizes the claims as
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directed to the abstract idea of "facilitating electronic payments for goods
and services" and finds they "merely amount to the application or
instructions to apply the abstract idea ... on a computer, and is [sic]
considered to amount to nothing more than requiring a generic computer
system to merely carry out the abstract idea itself." Id. at 5-6. The
Examiner explains that "the claims, when 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." Id.
at 6. The Examiner further finds the claims "do not recite 'significantly
more' than any alleged abstract idea because the programming of a general
purpose computer or a microprocessor does nothing to limit the scope of the
claim and such programming does not create a 'significantly more'
limitation." Id. at 3.
Appellants argue that by not providing sufficient evidence in support
of the rejection, the Examiner fails to make out a prima facie case of patent
ineligibility under§ 101. App. Br. 9-13. We disagree. The Federal Circuit
has repeatedly noted that "the prima facie case is merely a procedural device
that enables an appropriate shift of the burden of production." Hyatt v.
Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992)). The Federal Circuit also has held that the
USPTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (quoting 35 U.S.C. § 132). Accordingly, the Office must set forth the
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statutory basis of the rejection and any useful references and/or other
information relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of§ 132. Id. 2
Examiners need not provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
United States Patent and Trademark Office, July 2015 Update: Subject
Matter Eligibility, §IV (July 30, 2015 update to the Interim Guidance)
(available at www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (last accessed Mar. 8, 2017)).
The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception
such as an abstract idea is being claimed) to be a question of
law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
Id. (citations omitted). Evidence may be helpful in certain situations where,
for instance, facts are in dispute. But it is not always necessary. It is not
necessary in this case.
Here, in rejecting the claims under § 101, the Examiner analyzed the
claims using the Alice two-step framework. Specifically, the Examiner
notified Appellants that the claims are directed to "facilitating electronic
payments for goods and services," and thus to an abstract idea, and that the
additional claim elements, other than the abstract idea, are merely generic
computing elements that do not amount to significantly more than the
2 See also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section
132 "is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.").
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abstract idea. Non-Final Act. 2-3, 5-6. Therefore, the Examiner notified
Appellants of the reasons for the rejection together with sufficient
information useful in judging the propriety of continuing prosecution of the
application. See 35 U.S.C. § 132. In doing so, we find that the Examiner set
forth a prima facie case of unpatentability, without the need to provide a
reference establishing that the claims are directed to an abstract idea.
Alice Step One
Appellants argue the pending claims are not directed to a judicial
exception and the Examiner's characterization of the independent claims as
an abstract idea is inaccurate. App. Br. 15-19; Reply Br. 2-3. More
specifically, Appellants assert the claims are not directed to a judicial
exception because the claims are not directed to a law of nature or the
following types of abstract ideas-an idea of itself, a mathematical formula
or algorithm, a method of organizing human activity, or a fundamental
economic practice. Id. at 15-19. Instead, Appellants assert the claims recite
a specific set of operations that solves technological problems relating to the
conventional industry practices of receiving payment for goods, fraud
protection, and accounting simplicity. App. Br. 16-17, 21-22. For the
reasons discussed infra, we disagree with Appellants and agree with the
Examiner that the claims are directed to an abstract idea.
We disagree with Appellants because, as explained infra, the claims
are directed to a fundamental economic practice. We also note, contrary to
Appellants assertions, the categories of abstract ideas enumerated by
Appellants are merely exemplary and are not limiting. See Alice, 134 S. Ct.
at 2355-57; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1313 (Fed. Cir. 2016) ("[T]he category of abstract ideas is not limited to
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economic or commercial practices or methods of organizing human
activity.").
In determining whether a claim is directed to an abstract idea, instead
of using a definition of an abstract idea, "the decisional mechanism courts
now apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353-54 (Fed. Cir. 2016)). 3 As part of this inquiry, we must
"look at the 'focus of the claimed advance over the prior art' to determine if
the claim's 'character as a whole' is directed to excluded subject matter."
Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir.
2016).
Generally, claim 1 recites the steps of communicating data to a
merchant, a payment service server receiving data from the merchant such
that the payment service can redirect the consumer to the merchant, thereby
enabling execution of a purchase transaction between the consumer and
merchant, completing the purchase transaction, and storing the data received
from the merchant. See Ans. 8 (finding the independent claim limitations
that "set forth or describe the abstract idea are [the] 'communicating,'
'receiving,' 'completing,' and 'storing' steps"). As further context,
Appellants describe their invention as facilitating payment of goods and
services corresponding to purchases by providing an efficient mechanism for
3 Accord July 2015 Update to the Interim Guidance at 3 (instructing
examiners that "a claimed concept is not identified as an abstract idea unless
it is similar to at least one concept that the courts have identified as an
abstract idea.").
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enabling merchants to offer purchase payments via third-party payment
services. Spec. iii! 10, 12, 24.
Although the claims recite using one or more computer processors, a
web site and a web page, a network including a network address, and
servers, we agree with the Examiner that the claims are directed to an
abstract idea-facilitating payment for goods and services via a third-party,
which is a fundamental economic practice. See Non-Final Act. 2-3, 5-6;
Ans. 8-9.
The Supreme Court similarly has determined that various fundamental
economic practices are "squarely within the realm of 'abstract ideas."'
Alice, 134 S. Ct. at 2357 (discussing methods for risk hedging and
third-party intermediated settlement as non-limiting examples of
fundamental economic practices). The Federal Circuit also has concluded
that abstract ideas include fundamental economic practices such as
processing information through a clearinghouse and the local processing of
payments for remotely purchased goods. Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372 (Fed. Cir. 2017). In Inventor Holdings, our
reviewing court concluded claims similar to Appellants' claims patent
ineligible as directed to an abstract idea, explaining that
[t]he idea that a customer may pay for items ordered from a
remote seller at a third-party's local establishment is the type of
fundamental business practice that, when implemented using
generic computer technology, is not patent-eligible under Alice,
134 S. Ct. at 2355 (quoting Le Roy v. Tatham, 55 U.S. (14
How.) 156, 175, 14 L. Ed. 367 (1852) ("A principle, in the
abstract, is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in either of them
an exclusive right.")).
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876 F.3d at 1378. Additionally, as the Examiner concludes, the Federal
Circuit has said that abstract ideas include collecting data, recognizing
certain data within the collected data set, and storing the data. 4 Ans. 8
(citing Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014)).
Further, we disagree with Appellants' characterization of the claims as
a specific way computers operate and an improvement to computer
functionality itself, similar to the claims in Enfish. 5 Reply Br. 2-3.
The claims in Enfish were directed to a specific improvement in the way
computers operate-embodied in a self-referential database table-and
recited technical details for a software component that distinguished that
particular software component from the prior art, thus improving how the
computer was configured. See Enfish, 822 F.3d at 1338-39. By contrast,
the claims at issue focus not on such an improvement in computer
technology, but on an abstract idea-facilitating payment for goods and
services via a third-party-that uses generic computing elements. See Elec.
Power Grp., 830 F.3d at 1354 (explaining that claims directed to collecting
information, analyzing the information, and displaying the results were
different from the claims in Enfish: "the focus of the claims is not on such
4 The Federal Circuit also recently affirmed two District Court decisions
finding abstract the ideas of performing a sales transaction over the Internet
and financing purchases via a series of checks. Priceplay.com, Inc. v. AOL
Advert., Inc., 83 F. Supp. 3d 577, 581 (D. Del. 2015), aff'd, 627 F. App'x
925 (Fed. Cir. 2016); Glob. Check Servs., Inc. v. Elec. Payment Sys., LLC,
No. CV14CV01430PABCBS, 2016 WL 9735716, at *6 (D. Colo. Sept. 14,
2016), aff'd, 698 F. App'x 611 (Fed. Cir. 2017).
5 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
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an improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools.").
We also disagree with Appellants' characterization of the claims as
solving a technological problem in conventional industry practice that is
rooted in computer technology and arising particularly in electronic
storefronts and online commerce, similar to the claims in Diehr6 and DDR. 7
App. Br. 21-22. The claims in Diehr have nothing to do with solving a
problem relating to purchase payments or transaction parties, but instead
they use a digital computer to determine the amount of time that a rubber
molding press should remain closed during the synthetic rubber-curing
process. See Diehr, 450 U.S. at 208. Accordingly, we find the claims in
Diehr are not analogous to Appellants' claims.
The claims in DDR addressed an Internet-unique problem of retaining
website visitors by modifying the conventional technological solution by
generating and directing users to a dual-source integrated hybrid web page.
DDR, 773 F.3d at 1257-59 (cautioning "that not all claims purporting to
address Internet-centric challenges are eligible for patent" (p. 1258)). By
contrast, the focus of Appellants' claims is on a traditional process-using
third-party services to execute transactions between parties-that existed
long before computers or the Internet. See Alice, 134 S Ct. at 2356 ("The
use of a third-party intermediary (or 'clearing house') is ... a building block
of the modem economy.") (citing Yadav, The Problematic Case of
6 Diamond v. Diehr, 450 U.S. 175, 177, 178 (1981).
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014).
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Clearinghouses in Complex Markets, 101 Geo. L.J. 387, 406-12 (2013); J.
Hull, Risk Management and Financial Institutions 103-04 (3d ed. 2012)).
Although the claims recite various computing elements, these merely
amount to the generic and conventional implementation over the Internet,
providing more efficient implementation of the aforementioned traditional
process. See Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1351 (Fed. Cir. 2016) (distinguishing the patent-eligible claims at
issue from those in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362 (Fed. Cir. 2015), because the invention in OIP was simply the generic
automation of a traditional price-optimization technique); CLS Bank Int 'l v.
Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en bane) aff'd,
134 S. Ct. at 2347 ("simply appending generic computer functionality to
lend speed or efficiency to the performance of an otherwise abstract concept
does not meaningfully limit claim scope for purposes of patent eligibility").
We note Appellants' Specification describes concepts such as incorporating
a service's application program interface (API) into a merchant's website-
which may exhibit similarities to the claims in DDR-but Appellants have
not incorporated such subject matter into the claims. See, e.g. Spec. ,-i 16,
Fig. 2, item 204.
In sum, for the reasons stated above, we agree with the Examiner that
claim 1 is directed to an abstract idea. For the same reasons, we also agree
with the Examiner that independent claims 11 and 21, which recite elements
similar to claim 1, and dependent claims 2-10 and 12-20, for which
Appellants offer no arguments separate from those for claim 1, are directed
to an abstract idea.
Alice Step Two
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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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78, 79)
(brackets omitted) (describing this step "as a 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'" (quoting Mayo, 566 U.S. at 72-73)). We
also agree with the Examiner that the claims do not recite significantly more
than an abstract idea.
The claims recite additional elements-"web page," "network,"
"server " "interface " "web site " "redirection " "machine readable medium "
' ' ' ' '
"machine," and "one or more computer processors,"8 but the Examiner
finds, and we agree, these elements are nothing more than generic and
known computing elements or functionalities. See Non-Final Act. 3, 6;
Ans. 9. Consistent with this finding, the Specification discloses that "a
generally conventional computer server ... is suitable for use in connection
with practicing the embodiments of the present invention." Spec. ,-i 25.9 The
Specification further describes the use of "existing network infrastructure" to
implement their invention. Id. ,-i 4. As is the case here, "the use of generic
8 Each of the pending claims recites "web page," "network," "server," "web
site," and "redirection," whereas claims 11-20 additionally recite "machine
readable medium" and "machine," and claim 21 additionally recites "one or
more computer processors."
9 See also id. ,-i 26 (describing computer server 400 "as is generally well
known to those skilled in the art"), Fig. 4 (showing conventional computer
server 400).
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computer elements like a microprocessor or user interface do not alone
transform an otherwise abstract idea into patent-eligible subject matter."
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (citing DDR, 773 F.3d at 1256).
Claim limitations such as "redirection,"10 "webpage," "website," and
"network" are well-known, routine terms of art related to the Internet and
simply "limit the use of the abstract idea to a particular technological
environment," which "does not transform an otherwise abstract idea into
patent-eligible subject matter." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2358); see also
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370-71 (Fed. Cir. 2015).
Appellants argue the claims recite significantly more than an abstract
idea because they recite specific steps at a low level of generality. App.
Br. 19-21; Reply Br. 3. But Appellants' arguments do little more than
highlight certain claim language (e.g., the "specially configured" computer
processor of claim 21) without any persuasive explanation as to why these
10 The concept of "redirection," as claimed, is simply the exchange and use
of reciprocal links between website owners-a common technique known
since the early days of the World Wide Web. See, e.g., US Patent 7,818,399
Bl, 1:35-38 (iss. Oct. 19, 2010) ("In the early stages, website programmers
increased visitor traffic by placing 'links' within their websites to other
websites, usually related in content or function in exchange for a reciprocal
link."); see also US Patent 7,082,470 Bl, 1:50-53, 63-64 (iss. July 25,
2006) ("The Owners or managers of websites (Webmasters) all share a
common interest: increased user traffic to their websites. A common way
this is promoted among W ebmasters is their mutual agreement to include
links to each other's websites. . . . When two W ebmasters agree to mutual
links, these are often referred to as reciprocal links, because of their
reciprocal agreement.").
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elements amount to significantly more. Further, merely reciting that a
computer processor is "specially configured" does not render otherwise
ineligible abstract ideas patent eligible. "Steps that do nothing more than
spell out what it means to 'apply it on a computer' cannot confer patent-
eligibility." Intellectual Ventures I, 792 F.3d at 1370-71 (quoting Alice, 134
S. Ct. at 2359 (warning against a§ 101 analysis that turns on the draftsman's
art)); see also Parker v. Flook, 437 U.S. 584, 593 (1978).
Appellants further argue the Examiner failed to consider properly all
additional elements as an ordered combination. We disagree. The Examiner
explicitly addresses the claimed invention as an ordered combination in
stating that "[t]aken as a combination, the elements add nothing more than
what is present when the elements are considered individually" and that
"claims 1-21, as a whole, do not amount to significantly more than the
abstract idea itself." Ans. 8-9 (emphasis added); see also Non-Final Act. 3,
5-6. Indeed, considering each of the claims as an ordered combination adds
nothing because it follows from the underlying idea of facilitating payments
for goods and services via a third-party service. Mayo, 566 U.S. at 79-80.
Thus, Appellants have not presented, nor do we find, any persuasive
evidence to support the assertion that the additional elements recited in
independent claim 1 amount to significantly more than an abstract idea. For
the same reasons, Appellants have not persuaded us that independent claims
11 and 21, and dependent claims 2-10 and 12-20, recite significantly more
than an abstract idea.
Appellants additionally argue "the pending claims recite a specific
implementation involving the alleged abstract idea, which does not
impermissibly preempt all research or development related to the alleged
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abstract idea." App. Br. 9. Appellants explain that "while the claims ...
may be related generally to the alleged abstract idea of performing a money
transfer, ... this general idea is not what would be preempted by granting a
patent [in] this case. Instead, what would be preempted is a specific set of
operations" as set forth by the recited claim language. App. Br. 16
(quotations and emphasis omitted).
This argument is unpersuasive. "[T]he absence of complete
preemption does not demonstrate patent eligibility." FairWarning, 839 F.3d
at 1098 (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015)). Accordingly, even if Appellants' claims do not
preempt all possible methods of performing money transfers or facilitating
payment of goods and services corresponding to purchases, this "do[ es] not
make them any less abstract." OIP, 788 F.3d at 1362-63. Moreover,
"[w]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d
at 1379.
Accordingly, having considered the Examiner's rejection in light of
each of Appellants' arguments and the evidence of record, we agree with the
Examiner that claims 1-21 are directed to patent-ineligible subject matter
under 35 U.S.C. § 101, and we sustain this rejection.
Rejection under 35 U.S.C. § 103(a)
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner relies on
the combination of Agrawal, Bartoli, and Armes. Non-Final Act. 6-8 (citing
Agrawal ,-i,-i 13, 67, 171, 173; Bartoli 5:47-52, 25:22-24; Armes ,-i 61). The
Examiner finds, inter alia, Agrawal teaches "the first merchant web site to
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which a consumer user is redirected to by the payment server" because
Agrawal discloses a network-based online payment service in which, during
a payment transaction process, a visitor's browser may be redirected from a
payment service provider's web site to a "thank you" URL or page on the
payee's external website. Non-Final Act. 6-7 (citing Agrawal iii! 13, 171,
173), see also Agrawal Fig. 21, item 8, Fig. 22, item 9, iJ 57 (describing the
pay page "owner" as the "payee"). The Examiner also finds that although
"Agrawal in view of Bartoli does not show that responsive to the redirection,
executing a transaction between the consumer user and the merchant,"
Armes teaches "responsive to the redirection, completing a purchase
transaction between the consumer user and the merchant." Non-Final Act. 7
(citing Armes iJ 61). In particular, the Examiner identifies Armes's
disclosure of redirecting the consumer to an account administrator for the
purpose of authenticating certain consumer information, after which the
transaction is completed. See Armes iJ 61 (discussing redirection to the
administrator for "facilitating consumer purchases").
Appellants argue "the alleged redirection shown in Armes does not
have anything to do with executing a transaction between a consumer user
and a merchant (as claimed) but relates only to an authorization and the
provision of a payment number to blind a value source." App. Br. 23
(discussing Armes iJ 61 ). Appellants further assert that "Armes distinguishes
between authentication and effecting payment" and "[t]o the extent any
consumer in Armes is 'redirected,' this is for authentication purposes[,] not
to complete a purchase transaction." Id. at 24.
In response, the Examiner explains "[ w ]hile the redirection takes the
consumer to the account administrator, the redirection nevertheless results
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[in] the completion of the purchase. Armes, thus, teaches completing the
purchase between the consumer and the merchant responsive to redirection."
Ans. 10. We agree with the Examiner.
In response, Appellants contend that "directing a user to an account
administrator means there is a problem, that in fact a transaction has not
been enabled and is now problematic. This is completely opposite to what is
claimed. A user is not directed to an account administrator. As claimed, the
redirection enables the cited functionality," i.e., "execution of a
transaction." Reply Br. 6.
Appellants' arguments are unpersuasive because they are not
commensurate with the scope of the claim. Claim 1 recites method steps
using the open-ended transition term "comprising," which does not preclude
steps in addition to those recited. See Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997) (citation omitted) ("'Comprising' is a term of
art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim."). 11 Neither the plain language of claim 1 nor the
Specification limits the steps involved in "completing" a transaction by
precluding additional steps that can be associated with (or responsive to) the
redirection. Rather, consistent with the plain language of claim 1, the
Specification describes embodiments in which, responsive to the redirection,
additional steps (e.g., consumer authorization) are performed prior to
completing the purchase. See, e.g., Spec. ,-i,-i 22-23. For example, the
Specification discloses "the CGI command redirects the browser back to the
11 See also Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371
(Fed. Cir. 2005); MPEP § 2111.03 (9th ed. Rev. 08.2017, Jan. 2018).
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merchant's web server to merchant page 2, which begins the augmented
check out flow. In conjunction with this, a reply is passed to the server ...
that indicates whether or not the consumer is authorized to use the payment
service." Spec. iJ 22 (emphasis added).
Thus, claim 1 does not preclude an additional step such as sending the
consumer to the account administrator for authentication purposes as part of
enabling and completing the purchase. Accordingly, we agree with the
Examiner that claim l's "responsive to the redirection, completing a
purchase transaction between the consumer user and the merchant"
limitation encompasses Armes's disclosure of completing the purchase
transaction "indirectly" (i.e., completing it responsive to the redirection,
albeit involving an indirect action as part of the completion).
Accordingly, Appellants do not persuade us the Examiner errs in
rejecting independent claim 1 under 35 U.S.C. § 103(a), and we sustain its
rejection. We also, therefore, sustain the§ 103(a) rejection of independent
claims 11 and 21, which recite similar requirements, and claims 2-10 and
12-20, which depend from claims 1 or 11, for which Appellants present no
substantive arguments separate from those for claim 1.
DECISION
We affirm the Examiner's decision rejecting claims 1-21 under
35 U.S.C. §§ 101 and 103(a).
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 ). See 3 7 C.F.R.
§ l.136(a)(l)(iv)(2016).
AFFIRMED
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