Ex Parte Rammal

Patent Trials and Appeals Board

Mar 28, 2019

14222616 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/222,616 03/22/2014
95628 7590
The Villamar Firm PLLC
3424 Washington Drive
Falls Church, VA 22041
04/01/2019
FIRST NAMED INVENTOR
Karim Anwar Rammal
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.
151670-001 US CON3 6514
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
crvillamar@villamars.com
bevillamar@villamars.com
baravenwood@villamars.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARIM ANWAR RAMMAL
Appeal2017-004916
Application 14/222,6161
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
Opinion for the Board filed by CRAWFORD, Administrative Patent Judge.
Opinion Dissenting filed by WIEDER, Administrative Patent Judge.
CRAWFORD, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Real Party in Interest in this appeal is NET2TEXT LTD.
Appeal2017-004916
Application 14/222,616
THE INVENTION
The present invention generally relates to methods and systems for
conducting secure purchase and payment transactions, and more particularly
to a method, system and computer program product for conducting secure
purchase and payment transactions using a mobile phone. (Spec. ,i 002).
Claim 1 is representative of the subject matter on appeal.
Claim 1 (Rejected): A computer implemented
system for processing payments for
goods or services, the system comprising:
a mobile phone of a user including a mobile
phone number associated with a mobile
phone account of the user,
wherein a payment processor implemented
by first circuitry is configured to receive a
payment request for goods or services from a
merchant, the payment request including the
mobile phone number associated with the mobile
phone account of the user;
the first circuitry of the payment processor,
based on the payment request, is further
configured to send a payment authorization request
to a mobile operator implemented by second
circuitry and configured to service the mobile
phone account of the user;
the second circuitry of the mobile operator,
based on the payment authorization request, is
configured to send, over a mobile network of the
mobile operator, a payment authorization request
text message to the mobile phone of the user
implemented by third circuitry and connected to
the mobile network of the mobile operator, the
payment authorization request text message
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requesting authorization for payment based on the
payment request;
the third circuitry of the mobile phone of the
user, based on the payment authorization
request text message, is configured to send, over
the mobile network of the mobile operator, a
payment authorization text message including a
personal identification number of the user
associated with the mobile phone number of the
user to the mobile phone operator for authorization
of payment based on the payment request;
the second circuitry of the mobile operator is
further configured to receive the payment
authorization text message including the personal
identification number of the user over the mobile
network of the mobile operator for verification;
the first circuitry of the payment processor is
further configured to receive a payment
authorization from the mobile phone operator
based on the payment authorization text
message authorizing or not authorizing the
payment based on the payment request;
the first circuitry of the payment processor is
further configured to, if the payment authorization
from the mobile phone operator authorizes the
payment based on the payment request, pay the
merchant for the goods or services from an account
of the mobile phone operator, wherein the mobile
phone operator charges the mobile phone account
of the user for the payment;
the first circuitry of the payment processor is
further configured to, if the payment
authorization from the mobile phone operator does
not authorize the payment based on the
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Application 14/222,616
payment request or if the payment authorization
text message is not received by the mobile
operator over the mobile network of the mobile
operator within a predetermined period of
time, decline to pay the merchant for the goods or
services; and
wherein no financial information of the user
nor the personal identification number of
the user are sent to the payment processor.
THE REJECTIONS 2
Claims 1, 5 and 9 are rejected under 35 U.S.C. §112, first paragraph.
Claims 1-19 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
2 The Examiner has withdrawn a rejection of claims 9-12 under 35 U.S.C.
§ 101 as directed to software per se. (Final Act. 2; cf Non-Final Action,
mailed November 17, 2014). The Examiner also has withdrawn a non-
statutory double patenting rejection over clairns 1-12. (See Ans. 5).
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ANALYSIS
REJECTION UNDER 35 U.S.C. §112, FIRST PARAGRAPH
The Examiner concludes that the claims recite a mobile operator
implemented by second circuitry and that as the mobile operator is
interpreted as a carrier such as Verizon or AT&T and therefore, the mobile
operator itself could not be comprised of application specific circuitry.
(Final Act. 11 ). We will not sustain this rejection because we agree with the
Appellant that the Specification provides support for the recitations.
REJECTION UNDER 35 U.S.C. §1 OJ
We will sustain the rejection of claims 1-19 under 35 U.S.C.
§ 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, ... determine
whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, ... then
ask, "[ w ]hat else is there in the claims before us?"
. . . To answer that question, . . . 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 .... [The
Court] described step two of this analysis 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."
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Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)) ( citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception; and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50-57, PT0-2018-0053 (Jan. 7, 2019).
The Examiner determines that the claims are directed to payment
processing which the Examiner concludes is a fundamental economic
practice. (Final Act. 7). The Examiner found that the additional elements or
combination of elements in the claims other than the abstract idea per se
amount to no more than the instructions to implement the idea on a
computer, and/or recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine and
conventional activities previously known. (Final Act. 8).
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We note that the Specification discloses that the claims are directed to
conducting secure purchase and payment transactions (Spec. ,-J 2). The
Specification identifies that "security, fraud and identity theft are major
concerns" for consumers while using credit and debit cards. (Spec. ,-J,-J 3, 4,
6). According to the Specification, other alternative options such as "money
transfer using a third independent financial entity, E-mail payments, and
mobile wallet applications that act as intermediaries or interfaces between a
customer's financial institution (typically a bank or a credit card company)
and the retailer/merchant)" also share the same drawbacks as credit and debit
cards. (Spec. ,-J 4). However, these alternative payment options may also
include "unreasonable hidden costs that are additionally charged by credit
cards, mobile wallets and other financial instruments that are above and
beyond what the retailer is already charging." (Spec. ,-J 6). The
Specification further discloses that "[ c Jonventional systems of payment and
methods using mobile phones" are also known in the art, but "have
limitations, including requiring downloading of complex software, need to
use hi-tech mobile phones, need for additional security codes, hidden costs,
and additional charges by the customer's bank or credit card company."
(Spec. ,-J 7).
To address these limitations and concerns, transactions are processed
in exemplary independent claim 1 by the mobile phone, the mobile operator,
and the payment processor in a way such that no personal information is sent
to the payment processor, i.e., "[t]he present method as described above
virtually presents an anti-fraudulent payment system that provides peace of
mind and convenience to customers as they and their mobile operator are the
only ones who know the PIN Code to authorize payments to retailers."
(Spec. ,-J,-J 2, 20, 34). To accomplish this, the mobile operator checks the
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customer's mobile number account balance, and if found sufficient to pay
for the purchase, sends a text message to the customer on their mobile
number giving them details of the retailer and the total amount payable. If
the customer agrees to the purchase, the customer sends a unique PIN code
to the mobile operator and the mobile operator then agrees to pay the
payment processor. (Spec. ,i,i 20-21 ). As such, the payment process is
between the mobile operator and the payment processor with the mobile
operator essentially acting as an intermediary debiting/charging the
customer's mobile account for the amount of the purchase. (Spec. ,i,i 23-
24 ). From this disclosure it follows that the claimed invention is directed to
conducting secure purchase and payment transactions as determined by the
Examiner.
The recitations in claim 1 demonstrate further that the claimed subject
matter relates to conducting secure purchase and payment transactions. For
example, claim 1 recites a "mobile operator", a "payment processor" and a
"mobile phone." Claim 1 further recites that the "payment processor is
configured to receive a payment request for goods and services from a
merchant," and that the payment processor includes "circuitry configured to
send a payment authorization request to a mobile operator." The mobile
operator includes "circuitry configured to send ... a payment authorization
request text message to a mobile phone." Claim 1 also recites "the mobile
phone ... based on the payment authorization request text message ... is
configured to send ... a payment authorization text message." The payment
processor is configured "to receive payment authorization from the mobile
phone operator based on the payment authorization." Claim 1 also recites
"wherein no financial information of the user nor the personal identification
number of the user is sent to the payment processor." Claim 1 is directed to
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conducting secure purchase and payment transactions which is a sales
activity. Sales activity is a certain method of organizing human activity and
is a judicial exception. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR at 52.
Turning to the second prong of the "directed to test", we note that
claim 1 requires a "payment processor," a "mobile operator," and a "mobile
phone" to perform the steps of claim 1. These recitations do not affect an
improvement in the functioning of the processor, mobile operator of phone
or other technology. In addition, claim 1 does not recite a particular
machine or manufacture. In fact, Appellant's Specification discloses that all
or a portion of the devices and subsystems of the exemplary embodiments
can be conveniently implemented using one or more general purpose
computer systems, microprocessors, digital signal processors, or micro-
controllers. (Spec. ,i 49). The mobile operator is disclosed as the mobile
phone service provider/operator/carrier with a processor which is configured
to send, receive, process and store data (Spec. ,i 16). No improvement to the
mobile operator is disclosed or claimed. These recitations do not impose
meaningful limits on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception." 2019
Revised Patent Subject Matter Eligibility Guidance at 55. Thus, claim 1 is
directed to a judicial exception and thus recites an abstract idea without a
practical application.
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
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See Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The introduction of a processor, a mobile phone and a mobile operator
into the claims does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
"while adding the words 'apply it"' is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological
environment."' Stating an abstract idea while
adding the words "apply it with a computer"
simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a
computer amounts to a mere instruction to
"implemen[t]" an abstract idea "on . . . a
computer," that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
generally the sort of "additional featur[ e ]" that
provides any "practical assurance that the process
is more than a drafting effort designed to
monopolize the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval-one of
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the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
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The claims do not, for example, purport to improve the functioning of
the mobile phone, payment processor or mobile operator. As we stated
above, the claims do not affect an improvement to any other technology or
technical field.
The Specification spells out that the devices and subsystems of the
exemplary embodiments can be implemented on the World Wide
Web. In addition, the devices and subsystems of the exemplary
embodiments can be implemented by the preparation of application-specific
integrated circuits or by interconnecting an appropriate network of
conventional component circuits, as will be appreciated by those skilled in
the electrical art( s ). Thus, the exemplary embodiments are not limited to
any specific combination of hardware circuitry and/or software. (Spec. ,-J49).
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea of secure payment processing using
some unspecified, generic computers. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
We have reviewed all the arguments (Appeal Br. 8-19; Reply Br. 5-
11) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims are directed to an abstract idea because
claim 1 is not directed to a contractual relationship, hedging or mitigating
settlement risk. (Brief 11 ). Even if the Appellant is correct, the claims are
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directed to conducting secure purchase and payment transactions which is a
sales activity and thus is a method of organizing human activities which is
an abstract idea. 2019 Revised Patent Subject Matter Eligibility Guidance,
52.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims are rooted in and are analogous to the
claims in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed.
Cir. 2014). (Brief 13). In DDR Holdings, the Court evaluated the
eligibility of claims "address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host's website after 'clicking' on an advertisement and activating a
hyperlink." DDR, 773 F.3d at 1257. There, the Court found that the claims
were patent eligible because they transformed the manner in which a
hyperlink typically functions to resolve a problem that had no "pre-
Internet analog." Id. at 1258. The Court cautioned, however, "that not
all claims purporting to address Internet-centric challenges are eligible
for patent." Id. For example, in DDR Holdings the Court distinguished
the patent-eligible claims at issue from claims found patent-ineligible in
Ultramercial. See DDR, 773 at 1258-59 (citing Ultramercial, 772 F.3d
7 0 9 , 715-16 (Fed. Cir. 2014) ). As noted there, the Ultramercial claims
were "directed to a specific method of advertising and content distribution
that was previously unknown and never employed on the Internet before."
Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-16). Nevertheless,
those claims were patent ineligible because they "merely recite[ d] the
abstract idea of 'offering media content in exchange for viewing an
advertisement,' along with 'routine additional steps such as updating an
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activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet."' Id.
Appellant's asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." Ultramercial, 772 F.3d at 712. Similarly, Appellant's asserted
claims recite receiving, analyzing, modifying, and transmitting data. This
is precisely the type of Internet activity found ineligible in Ultramercial.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims include an element or combination of
elements that amount to significantly more than the judicial exception.
(Brief 14). The Appellant argues that the present invention includes benefits
such as increased flexibility, faster search times and smaller memory
requirements. Yet the advantages that Appellant touts do not concern an
improvernent to computer capabilities, but instead relate to an irnprovement
to the process for conducting payments for which a computer system is used
as a too1 in its ordinary capacity. In this case, a generic graphical user
interface performs the weII-understood function of receiving user input, and
a generic computer system performs routine data processing steps. Appellant
fails to identify, and we do not find, any indication in the record that the
claimed invention improves computer functionality, requires specialized
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computer hardware or other inventive components, invokes inventive
programming, or is othenvise directed to something other than the abstract
idea identified by the Examiner.
\Ve are not persuaded of error on the part of the Examiner by
Appe11ant's argument that the claims are novel. (Brief 17). To the extent
Appellant maintains that the limitations of claim l necessarily amount to
"significantly more" than an abstract idea because the claimed apparatus is
allegedly patentable over the prior art, Appellant rnisapprehends the
controlling precedent Although the second step in the Alice/lvfayo
framework is termed a search for an "'inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for "'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'" Alice, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Afayo 566 U.S. 66, 72-73.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims perform functions that were not known
in the art and therefore the claims recite significantly more than any abstract
idea. (Brief 17). Specifically, Appellant argues that the elements of the
system are configured or programmed in a way to perform the functions that
were not known in the art. (Brief 17). Appellant's argument does not
apprise us of error because Appellant conflates the conventionality of the
steps that the processor performs and the conventionality of the computer
functions required to implement the steps. In this regard, Appellant does not
explain how the computers involved in the present invention perform
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functions other than the conventional transmission, storage, and analysis of
data which are well known functions of any computer.
We do not agree with the Appellant that the claims are analogous to
the claims in BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016). (Reply 11). Appellant argues that sending a
payment authorization including a PIN of the user to the mobile phone
operator which then sends a payment authorization to the payment processor
does not merely select information by content and source. SpecificaHy,
AppeHant argues that the sequence of events in the instant process differs
from the routine and conventional sequence of events for conducting mobile
payments.
In BASCOlvl, the Federal Circuit 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-eHgibility analysis, "the relevant question is
,vhether the claims here do more than simply instn1ct the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer." Alice 134 S. Ct. 2347, 2359 (2014). 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.
Turning to BASCOA1, the Federal Circuit held "[t]he inventive
concept described and claimed in the '606 patent is the installation of a
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filtering tool at a specific location, remote frmn 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
exp fained 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 detennined that "the
claims may be read to 'improve[] an existing technological process."' Id. at
1351 ( citing Alice, 134 S. Ct. at 2358).
In BASCOM it was filtering by an ISP server which was the focus of
the claims, whereas claim 1 focuses on processing and exchanging data
between a mobile operator and a payment processor regarding a payment
which is authorized by a user PIN. Claim 1 recites a process in which the
payment is made between the mobile operator and a payment processor with
the payment being authorized by a user PIN without revealing any personal
information of the customer. There is no improvement to the mobile phone,
mobile operator or the payment processor.
In addition, we agree with the Examiner, that it is well known and
conventional to use a PIN code to authorize a payment using a mobile phone
as demonstrated by the prior art of Goldthwaite (US 2004/0019564) which is
discussed by the Examiner. 3 As such, the sequence of events recited in
3 In a related application (U.S. Application No.: 14/222,615 ('"615
Application"); Appeal No.: 2017-003902), the Examiner also discussed
"prior art as evidenced by the prior art associated with the prosecution of the
parent case 13/148,043 now patent 8,862, 792," ('615 Application
Examiner's Answer, mailed, November 22, 2016, at 5), "[u]sing a PIN code
to authorize a financial transaction through a mobile phone using sms" (' 615
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claim 1 is well known and conventional. Therefore, we agree with the
Examiner that claim 1 does not include an inventive concept.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1 under 35 U.S.C. §101. We will also sustain the rejection as it is
directed to the remaining claims because the Appellant has not argued the
separate eligibility of these claims.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1, 5 and 9 under
35 U.S.C. § 112, first paragraph.
We conclude that the Examiner did not err in rejecting claims 1-19
under 35 U.S.C. § 101.
DECISION
The Examiner's rejection under 35 U.S.C. § 112 is not affirmed.
The Examiner's rejection under 35 U.S.C. §101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
Application Examiner's Answer 7 ( citing paragraphs 11 and 93 of US Patent
Pub. No. 2007/0107044 to Yuen)), and "[b]illing to a mobile operator" ('615
Application Examiner's Answer 9 (citing paragraph 7 of US Patent Pub. No.
2006/0149644 to Sulmar; paragraphs 38 and 65 of US Patent Pub. No.
2001/0037264 to Husemann)).
18
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARIM ANWAR RAMMAL
Appeal2017-004916
Application 14/222,616
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority opinion affirming the
Examiner's rejection of claims 1-19 under 35 U.S.C. § 101.
In analyzing whether a claim recites patent-eligible subject matter, we
apply a two-step framework, earlier set out in Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S. 208,217 (2014).
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
Appeal2017-004916
Application 14/222,616
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 221 ( citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed
to" two prong test to: 1) evaluate whether the claim recites a judicial
exception, i.e., a law of nature, natural phenomenon, or abstract idea, and
2) if the claim recites a judicial exception, evaluate whether the claim
"appl[ies ], rel[ies] on, or use[ s] the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 54 (Jan. 7, 2019) (hereinafter "2019 Guidance").
With regard to the first prong of the 2019 Guidance, I agree with the
majority opinion "that the Specification discloses that the claims are directed
to conducting secure purchase and payment transactions." (Opinion 7
( citing Spec. ,-J 2).) I also agree with the majority opinion that "the claims
are directed to conducting secure purchase and payment transactions which
is a sales activity and thus is a method of organizing human activities which
is an abstract idea. (Opinion 12-13; see also id. at 8-9.)
With regard to the second prong, I do not agree with the majority
opinion that the recitations in claim 1 "do not impose meaningful limits on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." (Opinion 9 (citing 2019
Guidance at 55).)
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Appeal2017-004916
Application 14/222,616
Claim 1 recites "a mobile phone of a user ... associated with a mobile
phone account," "a payment processor implemented by first circuitry is
configured to receive a payment request," "the first circuitry ... is further
configured to send a payment authorization request to a mobile operator
implemented by second circuitry," "second circuitry ... is configured to
send, over a mobile network of the mobile operator, a payment authorization
request text message to the mobile phone," "third circuitry of the mobile
phone ... is configured to send, over the mobile network of the mobile
operator, a payment authorization text message," "the second circuitry ... is
further configured to receive the payment authorization text message .. .
over the mobile network of the mobile operator," "the first circuitry ... is
further configured to receive a payment authorization from the mobile
operator," "wherein no financial information of the user nor the personal
identification number of the user are sent to the payment processor."
(Emphasis added.)
Claim 1 refers to four entities: a mobile phone of a user, a merchant,
a payment processor, and a mobile operator. Claim 1 does not recite via
what method or system information is sent between ( 1) the merchant and the
payment processor, or (2) the payment processor and the mobile operator.
But claim 1 does recite that information sent between (3) the mobile
operator and the mobile phone of the user is sent via a mobile network of the
mobile operator. (See Claim 1.) In short, claim 1 recites a specific network
via which the recited communications between the mobile operator and the
mobile phone of the user, i.e., the payment request and authorization text
messages, are sent.
In view of the recitation in claim 1 of a specific network via which the
recited communications between the mobile operator and the mobile phone
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Appeal2017-004916
Application 14/222,616
of the user are sent, I would, in this case, determine that claim 1 imposes a
meaningful limit on the abstract idea to which claim 1 is directed, i.e.,
"conducting secure purchase and payment transactions (see Opinion 12-13;
see also id. at 8-9), such that "the claim is more than a drafting effort
designed to monopolize the judicial exception" (see 2019 Guidance at 54).
I respectfully dissent from the affirmance of the rejection under § 101.
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