Ex Parte Mathison

Patent Trial and Appeal Board

Jun 28, 2017

13669224 (P.T.A.B. Jun. 28, 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.
13/669,224 11/05/2012 Steve Mathison 87188-853708 (100200US) 8781
20350 7590 06/30/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
06/30/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE MATHISON
Appeal 2017-0016481
Application 13/669,224
Technology Center 3600
Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 12—17 and 20, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is First Data Corporation.
(App. Br. 3.)
Appeal 2017-001648
Application 13/669,224
STATEMENT OF THE CASE
Introduction
Appellant’s purported inventions “are directed toward selecting
transaction application and/or routing options that are provided by a
transaction card based on transaction application preference.” (November 5,
2012 Specification (“Spec.”) 13.) Claim 12 is representative and is
reproduced below (with minor reformatting):
12. A point of sale device comprising:
a near field communication (NFC) reader;
a merchant interface;
a network interface; and
a processor communicatively coupled with the NFC
reader, the merchant interface, and the network interface,
wherein the processor is configured to:
receive transaction information from a merchant
transaction system through the merchant interface,
wherein the transaction information comprises a
transaction amount;
receive a plurality of transaction applications from
a transaction card through the NFC reader, wherein each
of the plurality of transaction applications comprises a
plurality of routing options, and wherein each of the
plurality of transaction applications comprises a banking
identification number (BIN);
send the plurality of transaction applications and at
least a subset of the transaction information to a host
processor through the network interface;
receive a recommendation from the host processor
through the network interface indicating a preferred
transaction application and at least one alternative
transaction application from the plurality of transaction
applications, wherein the preferred transaction application
and the at least one alternative transaction application are
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selected and ordered based on a preferred one of the
plurality of routing options and an incentive received or a
transaction cost, and wherein the incentive received or the
transaction cost is determined based on the transaction
amount and the BIN.
Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
US 2004/0117302 A1 June 17, 2004
US 2005/0216424 A1 Sept. 29, 2005
May 31,2012
US 2012/0136780 A1 (filed Aug. 26,
2011)
Claims 12—17 and 20 stand rejected under 35U.S.C. § 101 because
the claims are not directed to patent eligible subject matter. (Final Office
Action (mailed Dec. 7, 2015) (“Final Act.”) 2—3.)
Claims 12—17 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gandre, in view of Weichert, and further in view of El-
Awady. (Final Act. 4—6.)
Weichert et al.
(“Weichert”)
Gandre et al.
(“Gandre”)
El-Awady et al.
(“El-Awady”)
ANAFYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 12—17 and 20 under 35 U.S.C. § 101.
We are persuaded that the Examiner erred in rejecting claims 12—17 and 20
under 35 U.S.C. § 103(a).
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Patent Eligibility
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, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
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63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores,” and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
The Examiner finds that claims 12—17 and 20 are “directed to a
judicial exception. (Final Act. 8.) According to the Examiner, the claims
are:
similar to the basic concept of fundamental economic practice
since the claim deals with cost saving[,] which has been found
by the courts to be an abstract idea see ALICE, in addition[,] it is
also an example of comparing new and stored information and
using rules to identify options, which has been found by the court
to be an abstract idea (see SmartGene, section IV.B.4).
Therefore[,] the claims are to an abstract idea.”
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(Id., emphasis omitted.) Appellant contends that the “present claims are
‘necessarily rooted in computer technology,’ as in DDR [] because they
necessarily require a special-purpose computer rather than a generic
computer. . . .” (App. Br. 5.) According to Appellant:
the claims recite point of sale (POS) terminals and a computer
system having a processor, which also require specific
programming to enable the performance of specific operations.
Specifically, operations related to receive a plurality of
transaction applications from a transaction card through the NFC
reader require specific programming and specific hardware (an
NFC reader) that are not present on a general purpose computer.
As such, the independent claims and those that depend therefrom
are not directed to an abstract idea.
(Id. at 6.)
Appellant has not persuaded us of Examiner error. We do not agree
with Appellant’s contention that “patent-eligible claims [] are ‘necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks’.” (Id. at 5.) Appellant’s
contention boils down to its argument that because the claims recite “point
of sale (POS) terminals and a computer system having a processor,
which[, according to Appellant,] also require specific programming to
enable the performance of specific operations,” the claims are therefore not
abstract because they “cover more than a generic computer.” (Reply 3; App.
Br. 5-6.) This argument is unconvincing because claim 12 is directed to an
abstract idea that is focused on collecting information, processing the
information by mathematical algorithms, and presenting the results. See
Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir.
2016) (“The advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
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not any particular assertedly inventive technology for performing those
functions.”). For example, while claim 12 recites a POS device comprising
of various components (e.g., near field communication reader (“NFC”),
interfaces, processor), the claim is directed to receiving two pieces of
information (via a merchant interface and the NFC reader), sending the
received information via another interface (i.e., network interface) to a host
processor, and receiving a recommendation from the host processor. (App.
Br. 8 (“The present claims ... are directed to a point of sale device that is
configured to receive transaction information and a plurality of transaction
applications that are used to generate a recommendation for a preferred
transaction application.”).) Therefore, “the focus of the claim[] is not on
such an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools.” See Elec. Power, 830 F.3d at
1354.
Regarding step two of Alice, Appellant argues that, even if “the claims
are directed to an alleged abstract idea . . . the claims contain sufficient
elements to ensure that the claims amount to significantly more than the
alleged abstract idea itself In particular, [Appellant argues that] the claims
contain several elements that specifically show a patent-eligible application
of the alleged abstract idea.” (App. Br. 8-9, emphasis added.) We are not
persuaded by Appellant’s argument but instead agree with the Examiner’s
finding that “the elements involved in the recited process [(i.e., the various
components in the POS device)] undertake their roles in performance of
their activities according to their generic functionalities which are well-
understood, routine and conventional.” (Ans. 4.) Specifically, we agree
with the Examiner that the “elements together execute in routinely and
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conventionally accepted coordinated manners and interact with their partner
elements to achieve an overall outcome which, similarly, is merely the
combined and coordinated execution of generic computer functionalities
which are well-understood, routine and conventional activities previously
known to the industry.” (Id.)
Appellant’s further contention that “the claimed invention . . . enables
a significant amount of the processing power to be present in the host
computer rather than in the numerous point of sale devices” is mere attorney
argument and a conclusory statement, which is unsupported by factual
evidence, and, thus is entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).
We are also not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims do not “pre-empt all implementations
of the abstract idea itself.” (App. Br. 9.) “[W]hile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Fair Warning IP, LLC, v. Iatric Sys.,
Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhatthe claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). Further, “[wjhere 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.
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For the foregoing reasons, because claims 12—17 and 20 are directed
to an abstract idea and nothing in the claims adds an inventive concept, the
claims are not patent-eligible under § 101. Therefore, we sustain the 35
U.S.C. § 101 rejection of claims 12—17 and 20.
Obviousness
With regard to claim 12, the Examiner finds that paragraphs 11 to 45
of Gandre2 teach or suggest “receiv[ing] a plurality of transaction
applications from a transaction card ...” and “sending] the plurality of
transaction applications ... to a host processor . . . .” (Final Act. 4.)
Appellant contends that the Examiner erred because “Gandre discloses only
receiving a single transaction application from a single payment card with a
single BIN.” (App. Br. 10.) Here, the Examiner has not shown that Gandre
teaches or suggests that the process receives a plurality of transaction
applications from a transaction card. Specifically, the Examiner does not
explain how the cited portions of Gandre teach or suggest “receiving] a
plurality of transaction applications from a transaction card ...” and
“sending] the plurality of transaction applications ... to a host processor.”3
(Ans. 5—6; Final Act. 4.)
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 12, as well as claims 13—17 and 20, which depend on
2 Gandre contains a total of 45 paragraphs. Therefore, the Examiner is citing
to almost the entirety of Gandre.
3 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellant’s further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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claim 12. Therefore, we do not sustain the 35 U.S.C. § 103 rejection of
claims 12—17 and 20.
DECISION
We affirm the decision of the Examiner to reject claims 12—17 and 20
under 35 U.S.C. §101. We reverse the decision of the Examiner to reject
claims 12—17 and 20 under 35 U.S.C. § 103(a).
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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