Ex Parte Rom et al

Patent Trial and Appeal Board

Feb 22, 2019

13196742 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/196,742 08/02/2011
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
02/26/2019
FIRST NAMED INVENTOR
Guy Rom
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.
26295-18986 4411
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY ROM and GEORGE LEE
Appeal2017-010419
Application 13/196,742
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and SCOTT B. HOWARD,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1-7, 9-21, and 29. Final Act. 2.
Claims 8 and 22-28 are cancelled. Id. We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE. 2
1 Appellants state the real party in interest is Facebook, Inc. App. Br. 2. We
apply our own page numbering to Appellant's unnumbered Appeal Brief and
Reply Brief.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed April 11, 2017, "App. Br."), the Reply Brief
(filed August 2, 2017, "Reply Br."), the Examiner's Answer (mailed
June 2, 2017, "Ans."), the Final Action (mailed September 15, 2016, "Final
Appeal2017-010419
Application 13/196,742
STATEMENT OF THE CASE
The claims relate to a system for payment providers to interact with an
online service provider. See Abstract.
Invention
Claims 1, 7, and 16 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A computer implemented method comprising:
maintaining by an online service provider, user accounts
for storing credits for users of the online service provider, the
credits for making purchases from the online service provider;
maintaining a standard interface to be provided to a
payment provider, the standard interface comprising a function
that allows multiple different payment providers to initiate a
transaction at the online service provider that adds credits to
one or more user accounts;
receiving by the online service provider, a purchase
request from a user to purchase a service offered by the online
service provider;
receiving, from the payment provider, a request to add
credits to a user account of the user, the payment provider
newly introduced and not having previously supported users of
the online service provider;
providing, to the payment provider, the maintained
standard interface;
receiving a payment request from the payment provider
via the standard interface, the payment request comprising
Act."), and the Specification (filed August 2, 2011, "Spec.") for their
respective details.
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Application 13/196,742
information identifying the user of the online service provider
and an amount for crediting to the user account for the user;
executing a transaction by a processor of the online
service provider to increase a number of credits in the user
account for the user based on the amount received in the
payment request;
sending information comprising an invoice based on the
amount by which credits are increased in the user account; and
providing the requested service offered by the online
service provider to the user.
Rejection3
Claims 1-7, 9-21, and 29 4 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter without significantly more. 5 Final
Act. 2-8.
ANALYSIS
We have reviewed the rejection of Claims 1-7, 9-21, and 29 in light
of Appellants' arguments that the Examiner erred. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief 5-16.
CLAIMS 1-7, 9-21, AND 29: INELIGIBLE SUBJECT MATTER
Appellants argue all claims as a group in view of the limitations of
Claim 1. See App. Br. 15-16. Therefore, we decide the appeal of the§ 101
rejections with reference to Claim 1, and refer to the rejected claims
3 The present application was examined under the pre-AIA first to invent
provisions. Final Act. 2.
4 Canceled claim 8 is indicated as rejected. We do not reach the merits
therein and assume the rejection of this claim to be harmless error.
5 The rejection under§ 112 is withdrawn. Final Act. 4. Because the
rejection is withdrawn, we do not reach the merits of the arguments thereto.
See Ans. 2--4; App. Br. 5---6.
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collectively herein as "the claims." See 37 C.F.R. § 4I.37(c)(l)(iv); In re
King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Preemption
Appellants contend the claims do not seek to preempt or monopolize a
fundamental economic practice. App. Br. 13.
While preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See Fair Warning, IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
such an analysis below. In response to Supreme Court and Federal Circuit
opinions, the USPTO has issued updated guidance. 6 We review this appeal
within the framework of the Revised Guidance which specifies and
particularizes the Mayo/Alice framework.
35 u.s.c. § 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "[l]aws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
6 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50-57 (January 7, 2019) ("Revised Guidance").
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aims to promote. Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
(quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)); see also Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72-78 (2012); Diamond v. Diehr, 450 U.S. 175, 185
(1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellants' claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental
processes), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not integrate
that exception into a practical application, do we then reach the issue of
whether the claim:
3. adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
4. simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Judicial Exceptions
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract idea
exception includes the following groupings of subject matter, when recited
as such in a claim limitation(s) (that is, when recited on their own or per se):
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(a) mathematical concepts,7 i.e., mathematical relationships, mathematical
formulas, equations, 8 and mathematical calculations9; (b) certain methods of
organizing human activity-fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions) 10; and (c) mental processes 11----concepts performed in the
7 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea.").
8 Diamond v. Diehr, 450 U.S. at 191 ("A mathematical formula as such is
not accorded the protection of our patent laws"); Parker v. Flook, 437 U.S.
584, 594 (1978) ("[T]he discovery of [a mathematical formula] cannot
support a patent unless there is some other inventive concept in its
application.").
9 SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas).
10 Alice, 573 U.S. at 219-20 ( concluding that use of a third party to mediate
settlement risk is a "fundamental economic practice" and thus an abstract
idea); see Revised Guidance, p. 52, n.13 for a more extensive listing of
"certain methods of organizing human activity" that have been found to
abstract ideas.
11 If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Revised Guidance, p. 52,
n. 14; see Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) ("[W]ith the exception of generic computer-
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human mind (including observation, evaluation, judgment, opinion). 12
Citing various claim limitations, the Examiner concludes the claims
are directed to the abstract idea of intermediated settlement, similar to the
case in Alice. Final Act 5. The Examiner finds the claimed abstract idea is
similar to the abstract idea in Alice because the claims are designed to
facilitate the exchange of financial obligations between two parties by using
a computer system as a third-party intermediary (a payment provider using a
standard interface). Id.
Appellants contend the claims are not directed towards the method of
"intermediated settlement," as found by the Examiner. Appellants argue
rather, the claims recite a method for providing and "maintaining a standard
interface invoked by different payment providers [that] requires fewer
development and maintenance resource compared to maintaining
functionality that invokes interfaces provided by different payment
providers." App. Br. 7 (quoting Spec. ,r 14). Appellants argue the claims
represent a technological improvement in a particular process in which an
online service provider can interact with a payment provider such that a
payment for a service rendered to a user of the online service provider can
be received. Id. at 7-8.
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.").
12 Mayo, 566 U.S. at 71 ("[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work" ( quoting Gottschalk v. Benson, 409 U.S. 63, 67)).
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The Examiner finds the technological improvement which the claims
provide of requiring fewer development and maintenance resources on the
part of the online services provider is offset by a requirement that the user
and payment provider expend additional resources. Ans. 5---6.
The Examiner finds the claims solve a business problem, but do not
improve the computer or related technology. Id. at 10. We agree with the
Examiner that the claims address a business challenge (i.e., allowing various
remote users and payment providers to interact with a common internet
service provider), but "it is a challenge particular to the Internet." See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
The Examiner finds the claims merely recite the idea of a solution
because the claimed "standard interface" is not specified in detail in either
the claims or the Specification, but merely described based on intent and
with a high degree of generality. Ans. 10.
Appellants contend in a conventional scenario, where an online
service provider interacts with N different payment providers, the online
service provider would require up to N different interfaces ( assuming one
conventional interface for each payment provider). Reply Br. 4. But,
Appellants argue, where the online service provider implements a standard
interface, as claimed, only a single standard interface is provided to each of
the N different payment providers. Id. Moreover, according to Appellants,
each payment provider would require only a single application programming
interface ( API) to interact with the online service provider through the
interface, again resulting in a reduction of required resources. Id.
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In view of the Examiner's findings and Appellants' response, we
conclude the disputed limitation relates to the technology of computing
interfaces and required APis. The Examiner's finding that the claims do not
result in the intended savings of technological resources (Ans. 5-6) may
indict the effectiveness of the claims, but not the subject matter to which
they are directed.
But these claims stand apart because they do not merely recite
the performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
DDR Holdings, 773 F.3d at 1257. Similar to Bascom Global, 13 where the
claims were found to be directed to where and how a single internet filtering
tool is located, we find the present claims are directed to the inventive
concept of where and how a single internet interface is provided. In finding
the Trading Technologies 14 claims recite eligible subject matter, the Federal
Circuit found:
The claims require a specific, structured graphical user interface
paired with a prescribed functionality directly related to the
graphical user interface's structure that is addressed to and
resolves a specifically identified problem in the prior state of
the art.
675 F. App'x. at 1004.
13 Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016).
14 Trading Techns. Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001 (2017).
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In view of the foregoing, we find the claims "amount to significantly
more in practice than a patent upon the [ineligible concept itself]". Trading
Technologies, 675 Fed. Appx. at 1004 (quoting Mayo, 566 U.S. 66, 73. We,
therefore, decline to sustain the rejection of Claims 1-7, 9-21, and 29 under
35 U.S.C. § 101.
DECISION
We reverse the rejection of Claims 1-7, 9-21, and 29 under 35 U.S.C.
§ 101.
REVERSED
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