Ex Parte Shakkarwar

Patent Trial and Appeal Board

Jan 3, 2017

13651219 (P.T.A.B. Jan. 3, 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.
13/651,219 10/12/2012 Rajesh G. Shakkarwar VERI/0017U S P1 7524
26290 7590 01/05/2017
PATTERSON & SHERIDAN, L.L.P.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
01/05/2017 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):
PS Docketing @ pattersonsheridan .com
pair_eofficeaction@pattersonsheridan.com
jcardenas @pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJESH G. SHAKKARWAR
Appeal 2014-009365
Application 13/651,219
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 9-13, 23—27, and 29—32. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed May
12, 2014) and Reply Brief (“Reply Br.,” filed Aug. 11, 2014), the
Examiner’s Answer (“Ans.,” mailed June 10, 2014), and the Final Office
Action (“Final Act.,” mailed Oct. 10, 2013).
2 Appellant identifies Verient, Inc. as the real party in interest. App. Br. 3.
Appeal 2014-009365
Application 13/651,219
THE INVENTION
Claim 9, reproduced below, is illustrative of the subject matter on
appeal.
9. A method of transmitting a financial product data from a
NFC enabled device to a reader device for a payment
transaction, comprising:
receiving the financial product data;
storing the financial product data in a first storage device
of the NFC enabled device;
during the payment transaction, transmitting the financial
product data from the first storage device to a second storage
device of the NFC enabled device;
transmitting the financial product data from the second
storage device to the reader device; and
removing the financial product data from the second
storage device after transmission to the reader device.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Apple US 2007/0038516 A1 Feb. 15,2007
Roberts US 2009/0271276 A1 Oct. 29,2009
The following rejection is before us for review:
Claims 9—13, 23—27, and 29—32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Roberts and Apple.
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Application 13/651,219
ANALYSIS
Independent claim 9 requires, inter alia, “during the payment
transaction, transmitting the financial product data from the first storage
device to a second storage device of the NFC enabled device;” (Appeal Br.
10, Claims App.).
The Examiner finds the claimed “transmitting data from a first device
to a second device of the NFC enabled device” disclosed in Figure 17 and
paragraph 448 of Apple (Ans. 3). According to the Examiner, the claim
“does not require the data that is transmitted to be financial data or for it to
be transferred during the course of a financial transaction” (id. at 7) and
Apple “clearly shows transmitting data from a first device to a second device
of the NFC enabled device, as advanced above” (id. at 8).
Appellant disputes this finding (App. Br. 6, 7; Reply Br. 2, 3) and
contends that the Examiner has failed to give weight to the claim limitations
“financial product data” and “during the payment transaction” (Reply Br. 3).
We are persuaded by Appellant’s arguments. A rejection based on
§103 clearly must rest on a factual basis. The Examiner has the initial duty
of supplying the factual basis for the rejection and may not resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in its factual basis.
Claim 9 plainly requires that the first transmitting step is performed
on “financial product data” “during the payment transaction.” Thus, the
Examiner’s statement to the contrary is erroneous. Moreover, the Examiner
has not specified any particular element in Figure 17 or paragraph 448 of
Apple as meeting the claimed “second storage device.” Figure 17 depicts
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Application 13/651,219
Wireless Device 120 including Financial Account Data 0750 stored in
memory. Paragraph 448 describes Wireless Device 0120 of Figure 17, and
discloses that Financial Account Data 0750 can be transmitted to NFC Chip
1700 “through one or more other means” such as Bus 0002 and Processor
0004, but the Examiner has not explained which element of Figure 17 meets
the “second storage device” limitation.
Moreover, claim 9 further requires “removing the financial product
data from the second storage device ...” (emphasis added). The Examiner
finds this limitation in paragraph 1097 of Apple, which discusses deletion of
records from Web Server Database 7210 (Ans. 3). Web Server Database
7210 is stored in Web Server 0100 and not Wireless Device 0120 (see
Figure 72 of Apple). We fail to see how the “second storage device” can be
found in both Wireless Device 0120 and in Web Server 0100.
Thus, we fail to see and the Examiner does not adequately explain
how Apple discloses the “second storage device” as required by claim 9.
Accordingly, we do not sustain the rejection of independent claim 9 as
obvious over Roberts and Apple. For the same reasons, we do not sustain
the rejections of dependent claims 10-13, 23—27, and 29—32. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are
nonobvious if the independent claims from which they depend are
nonob vious”).
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Application 13/651,219
NEW GROUND OF REJECTION
Claims 9—13, 23—27, and 29-32 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Id. at 2355.
Taking claim 9 as representative of the claims on appeal, the claimed
subject matter is directed to an information managing scheme for financial
product data. Managing financial product data is a method of organizing
human activity and/or fundamental economic practice. As such it is an
abstract idea.
Step two of Alice is “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.’” Id. at 2355 (citation omitted).
We see nothing in the subject matter claimed that transforms the
abstract idea of managing financial product data into an inventive concept.
The method of claim 9 includes five steps of gathering first
information (“receiving the financial product data”), storing the first
information (“storing the financial product data”), transmitting the first
information (“during the payment transaction . . .”), transmitting the first
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Application 13/651,219
information again (“transmitting the financial product data . . and
removing the first information (“removing the financial product data . .
All of the claim limitations are well-understood, routine, conventional
activities previously known to the industry. The information gathering,
transmitting, and removing steps are known information gathering
operations and transmitting operations for copying and deleting information
and thus, add little to patentably transform the abstract idea of managing
financial product data.
Furthermore, each of the information gathering, transmitting, and
removing steps are themselves abstract ideas. For example, transferring
information from one location to another is an abstract idea and routine
practice in information systems. See DataTreasury Corp. v. Fidelity
National Information Services, Inc., No. 2016-1046, 2016 WL 5939431
(Fed. Cir. Oct. 13, 2016). Merely combining several abstract ideas does not
render the combination any less abstract. Cf. Shortridge v. Found. Constr.
Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL 1739256, *11 (N.D.
Cal. Apr. 14, 2015), aff’d, No. 2015-1898, 2016 WL 3742816 (Fed. Cir. July
13,2016).
Finally, we note that claim 9 calls for “a NFD enabled device” and “a
reader device.” But any generic device having conventional NFC
capabilities available at the time the application was filed would have
satisfied these limitations. The Specification supports that view. See, e.g.,
paragraphs 2—6 of the Specification (“Near Field Communications
technology is commonly used for contactless short-range
communications.”). “[T]he mere recitation of a generic computer cannot
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Application 13/651,219
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.” Alice at 2358.
For the foregoing reasons, we find that claim 9 covers subject matter
that is judicially-excepted from patent eligibility under § 101. Dependent
claims 10-13, 23—27, and 29-32 describe various information gathering,
storing, transmitting, and managing schemes which do little to patentably
transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 9—13, 23—27,
and 29-32 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection under 35 U.S.C. § 103(a) is reversed.
Claims 9-13, 23—27, and 29-32 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
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Application 13/651,219
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
REVERSED; 37 C.F.R, $ 41.50(b)
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