Ex Parte McIver et al

Patent Trial and Appeal Board

Aug 31, 2018

13717482 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/717,482 12/17/2012
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
09/05/2018
FIRST NAMED INVENTOR
MarkMciver
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.
5109-LPV-0055 5921
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK McIVER and RICHARD A. FORBES
Appeal2017-002873
Application 13/717,482 1
Technology Center 3600
Before JOHN A. JEFFERY, LARRY J. HUME, and SCOTT B. HOWARD,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-12, 21, and 23-28, which are all claims pending in the
application. Appellants have canceled claims 13-20, and 22. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is III Holdings 1, LLC.
App. Br. 3.
Appeal2017-002873
Application 13/717,482
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to a
method, system, and computer program product for electronic transmission
of messages (Spec. ,r 1) and, are particularly related to:
A browser-based simulator [that] may be used to create
and send test messages to one or more transaction processing
facilities (TPFs) to determine the response of the TPF system. It
allows a user or plurality of users to create ISO 8583 messages,
send the messages to the TPF systems, receive a response, and
display the results to the users. Messages created by the
simulator are stored within an ANSI queryable SQL database to
make test selection simple. The TPF test messages and results
are thus available worldwide. Further, the simulator is server-
based, so desktop licenses are not required. The simulator
allows a user to either select a preformatted message or derive a
new message by selecting the data of interest.
Spec. 21 (Abstract).
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method, comprising:
receiving, by a computing device, a user selection of a
message type from a plurality of available message types for
testing transaction processing functionality of an electronic
transaction processing facility;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 21, 2016); Reply Brief ("Reply Br.," filed Dec. 19, 2016); Examiner's
Answer ("Ans.," mailed Oct. 28, 2016); Final Office Action ("Final Act.,"
mailed Apr. 22, 2016); and the original Specification ("Spec.," filed
Dec. 17, 2012).
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Application 13/717,482
retrieving, by the computing device, a message shell
from a plurality of message shells corresponding to the plurality
of available message types, wherein the plurality of stored
message shells are stored in a queryable database, wherein the
message shell comprises previously-specified values for one or
more fields corresponding to the selected message type,
wherein the previously-specified values correspond to at least
one of a transaction authorization message type, a security key
exchange message type, a transaction reversal message type, or
a settlement message type;
causing, by the computing device, a display of available
user-selectable fields corresponding to the selected message
type;
receiving, by the computing device, user input for the
available user-selectable fields corresponding to the selected
message type, wherein the user input selects a subset of the
available user-selectable fields to include in a particular test
message having the selected message type and wherein the user
input specifies one or more values for one or more of the
available fields to include in the particular test message;
generating, by the computing device, the particular test
message based on one or more of the previously-specified
values of the message shell and the user input such that the
particular test message includes the subset of available user-
selectable fields, at least a portion of the one or more values
specified by the user input, and at least a portion of the
previously-specified values;
sending, by the computing device via a communications
network, the test message to the transaction processing facility
to test the transaction processing facility response to the
message type; and storing, by the computing device, a response
to the particular test message received from the transaction
processing facility via the communications network.
3
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Application 13/717,482
Rejection on Appeal
Claims 1-12, 21, and 23-28 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 13-16), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1-12, 21,
and 23-28 on the basis of representative claim 1. 3
ISSUE
Appellants argue (App. Br. 13-16; Reply Br. 2--4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more?
ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to claims 1-12, 21, and 23-28 for the specific reasons discussed below. We
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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highlight and address specific findings, conclusions, and arguments
regarding claim 1 for emphasis as follows.
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "examine the elements of
the claim to determine whether it contains an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
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to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "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 Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
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of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellants initially contend, "testing computing systems using one or
more test messages is a technical field directed to improving the function of
the computing systems, e.g., by improving reliability and detecting faulty
hardware." App. Br. 13. Appellants cite Enfzsh, 4 and further argue:
[T]he fact that the claims are directed to improvements in
computer-related technology is relevant to the first step of the
Alice inquiry .... Appellant submits that the improvements to
testing technology embodied in the claims further show that the
claims are not directed to an abstract idea. In fact, the Examiner
has admitted that the claims are directed to "an improvement of
a 'process' for testing TPF." Advisory Action at 2. Appellant
4 See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (The
court found the claims directed to "a specific improvement to the way
computers operate.").
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submits that various types of testing operations are understood
to be technical in nature (consider build-in-self-test (BIST)
techniques, for example), and that improvements to testing
processes are improvements to computer-related technology.
App. Br. 14.
In response, the Examiner concluded:
The claimed invention is similar to Cyberfone and
SmartGene as recited in the 101 analysis by the Examiner. All
the steps in the claims perform generic computer functions that
do not improve another technology or technical field, improve
the functioning of the computer itself, nor move beyond a
general link of the use of an abstract idea to a particular
technological environment. Using a generic computer to
perform the steps of the claim does not make the claim eligible
for patent. The claimed invention is directed to an improvement
of a "process" for testing TPF using well-understood, routine
and conventional functions of computer components. The
claimed invention uses generic computer performing generic
computer functions to achieve this. This is similar to using a
generic computer to perform generic computer functions in
Alice and Bilski. There is no underlining improvement to the
TPF or the computer itself. The invention is simply electronic
messaging and response. The claimed invention is not patent
eligible.
Ans. 2-3.
We disagree with the Examiner's analysis. We disagree because we
find the claims in Cybeifone (using categories to organize, sore and transmit
information was determined to be an abstract idea) and SmartGene
( comparing new and stored information and using rules to identify options
was determined to be an abstract idea), cited by the Examiner, are not
sufficiently analogous to the claimed subject matter, which is generally
directed to, e.g., a simulator used to create and send test messages to one or
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more transaction processing facilities (TPFs) to determine the response of
the TPF system utilizing messages and protocols of the ISO 8583 standard.
Thus, under step one, we disagree with the Examiner's conclusion that
the inventions claimed in each of independent claims 1, 21, and 25 are
directed to an abstract idea. 5 Because we conclude the claims are directed to
a patent-eligible concept, we need not proceed to the Alice/Mayo Step 2
"inventive concept" analysis.
CONCLUSION
The Examiner erred with respect to patent-ineligible subject matter
Rejection RI of claims 1-12, 21, and 23-28 under 35 U.S.C. § 101, and we
do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-12, 21,
and 23-28.
REVERSED
5 "Moreover, our conclusion that the claims are directed to an improvement
of an existing technology is bolstered by the specification's teachings that
the claimed invention achieves other benefits .... " Enfish, LLC, 822 F .3d
at 1337 (citing Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-14
(Fed. Cir. 2015) (finding that a specification's disparagement of the prior art
is relevant to determine the scope of the invention)). See, e.g., Spec. ,r 48.
9