Ex Parte Shanker et al

Patent Trial and Appeal Board

Apr 15, 2016

12895191 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/895,191 09/30/2010
15757 7590 04/19/2016
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross A venue
Suite 3600
Dallas, TX 75201-7932
FIRST NAMED INVENTOR
Naresh Kumar Shanker
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.
82594685 7329
EXAMINER
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NARESH KUMAR SHANKER, SHARAD MATHUR, and
WILLIAM STEVENSON
Appeal2013-009707 1
Application 12/895,191 2
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
January 11, 2013) and Reply Brief ("Reply Br.," filed August 5, 2013), and
the Examiner's Answer ("Ans.," mailed June 6, 2013) and Final Office
Action ("Final Act.," mailed September 13, 2012).
2 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. App. Br. 2.
Appeal2013-009707
Application 12/895,191
CLAIMED INVENTION
Appellants' claimed invention "relates generally to systems and
methods for processing transactions. According to various exemplary
embodiments, the present disclosure relates to processing transactions (e.g.,
micro payment transactions) made using mobile computing devices"
(Spec. ii 1 ).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system for processing transactions, comprising:
a transaction processing circuit configured to receive
transaction data relating to one or more transactions for the
purchase of software applications from a digital application
store, to apply one or more business rules to the transaction data,
and to generate one or more transaction summary files, wherein
the transaction summary files are transmitted to a payment
system configured to perform, based on the transaction summary
files, at least one of recording revenue related to the transactions
and causing payment to be distributed to developers of the
software applications,
wherein at least a portion of the transaction processing
circuit is implemented using a shared, scalable computing
system, wherein a level of resources of the shared, scalable
computing system requested for implementation of the
transaction processing circuit is varied based on a volume of
transactions processed by the transaction processing system.
REJECTIONS
Claims 1-15 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 2, 5, 7, 9-11, 14, 15, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Callahan (US 2011/0196761 Al, pub.
Aug. 11, 2011) and Ghosh (US 2004/0010499 Al, pub. Jan. 15, 2004).
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Appeal2013-009707
Application 12/895,191
Claims 3, 4, 12, 13, 16-18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Callahan, Ghosh, and Albert (US 5,870,722,
iss. Feb. 9, 1999).
Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Callahan, Ghosh, and Official Notice.
ANALYSIS
Non-Statutory Subject Matter
Independent claim 1 and dependent claims 2-9
The Examiner asserts, in the Final Office Action, that although
claims 1-9 are directed to a "system," the "bodies of these claims merely
recite a series of 'circuit[s]'" (Final Act. 2). Citing paragraph 37 of the
Specification, the Examiner notes, "the specification defines circuit as 'In
various embodiments, one or more components of transaction processing
circuit 205 may be implemented as instructions stored on one or more
computer-readable media (e.g., memories) and executable by one or more
processors'" (id. at 2-3). And the Examiner concludes that "[t]hese circuits
do not appear to be anything more than software," which does not fall within
any of the statutory categories of patent-eligible subject matter (id. at 3).
As an initial matter, we do not agree that the Specification defines the
term "circuit," which is commonly understood to refer to an assemblage of
electronic elements, to be synonymous with software. Instead, the
Specification merely states (in paragraph 37) that processor instructions may
be a "component" of a transaction processing circuit.
We agree with Appellants that there is no basis on this record to
equate "a transaction processing circuit," as called for in claims 1-9, to a
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Application 12/895,191
piece of software (App. Br. 11 ). Therefore, we do not sustain the
Examiner's rejection of claims 1-9 under 35 U.S.C. § 101.
Independent claim 10 and dependent claims 11-15
The Examiner finds that independent claim 10 fails the machine-or-
transformation test because the claimed method steps are neither tied to a
particular machine nor result in a particular article being transformed from
one state to another (Final Act. 3). And the Examiner concludes that
claim 10, and claims 11-15, which depend therefrom, are, therefore, directed
to non-statutory subject matter (id.).
Before the mailing date of the Examiner's Answer, the Supreme Court
held in Bilski v. Kappas, 561 U.S. 593 (2010) that a patent claim's failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry (id. at 604). Because the Examiner relies only on the machine-or-
transformation test, the Examiner has failed to establish a prima facie case of
patent ineligibility.
Therefore, we do not sustain the Examiner's rejection of claims 10-15
under 35 U.S.C. § 101.
Obviousness
Independent claim 1 and dependent claims 2, 5, 7, 9, and 19
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1under35 U.S.C. § 103(a) because Ghosh, on which the
Examiner relies, does not disclose or suggest that "at least a portion of the
transaction processing circuit is implemented using a shared, scalable
computing system, wherein a level of resources . . . requested for
implementation of the transaction processing circuit is varied based on a
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Application 12/895,191
volume of transactions processed by the transaction processing system," as
recited in claim 1 (App. Br. 13-15).
The Examiner cites the Abstract and paragraphs 8 and 82 of Ghosh as
disclosing the argued limitation (Final Act. 5; see also Ans. 4). But we
agree with Appellants that there is nothing in the cited portions of Ghosh
that discloses or suggests implementing a transaction processing circuit with
a variable level of resources based on a volume of transactions processed by
the transaction processing system.
Ghosh is directed to a database system for providing improved
methods for asynchronous logging of transactions (see Ghosh i-f 8, Abstract),
and discloses an "asynchronous logging service" ("ALS") that addresses the
problem of contention of logging resources (id. i-f 82). Ghosh states that
"[t]he system of the present invention makes a database system more
scalable, particularly in supporting large OLTP [on-line transaction
processing] applications handling large transaction volumes on multi-
processor machines" (id.).
We agree with Appellants that Ghosh merely indicates that the system
can be scaled up to handle large transaction volumes. There is nothing in
paragraph 82 that expressly discloses that this scaling is dynamic, rather than
a one-time, static upscaling, or that otherwise mentions a varying volume of
transactions.
To the extent that the Examiner maintains that dynamic scaling is
inherently disclosed, more than speculation is required. In particular, the
Examiner must provide evidence and/or technical reasoning that makes
"clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
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Application 12/895,191
ordinary skill." Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed.Cir.1991 ). "Inherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." Id. at 1269 (quoting
In re Oelrich, 666 F.2d 578,581(CCPA1981)).3
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1under35 U.S.C. § 103(a). We also do not sustain the
Examiner's rejection of dependent claims 2, 5, 7, 9, and 19. 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 nonobvious").
Independent claim 10 and dependent claims 11, 14, and 15
Independent claim 10 includes language substantially similar to the
language of claim 1. Therefore, we do not sustain the Examiner's rejection
under 35 U.S.C. § 103(a) of claim 10, and claims 11, 14, and 15, which
depend therefrom, for the same reasons set forth above with respect to
claim 1.
Dependent claims 3, 4, 6, 8, 12, 13, and 20
Each of claims 3, 4, 6, 8, 12, 13, and 20 depends, directly or
indirectly, from one of independent claims 1 and 10. Neither the Examiner's
rejection of claims 3, 4, 12, 13, and 20 based on Albert, in combination with
3 "The inherent teaching of a prior art reference, a question of fact, arises
both in the context of anticipation and obviousness." In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995) (affirming 35 U.S.C. § 103 rejection based in part
on inherent disclosure in one of the references). The question of
obviousness is "based on underlying factual determinations including ...
what th[e] prior art teaches explicitly and inherently .... " In re Zurko,
258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted).
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Callahan and Ghosh, nor the rejection of claims 6 and 8 based Official
Notice, in combination with Callahan and Ghosh, cures the deficiency in the
Examiner's rejection of independent claims 1and10. Therefore, we do not
sustain the Examiner's rejections of claims 3, 4, 6, 8, 12, 13, and 20 under
35 U.S.C. § 103(a) for the same reasons set forth above with respect to the
independent claims.
Independent claim 16 and dependent claims 17 and 18
Independent claim 16 includes language substantially similar to the
language of claim 1 and is rejected based on the same erroneous finding
described above with respect to claim 1. Therefore, we do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claim 16, and claims 17
and 18, which depend therefrom, for the same reasons set forth above with
respect to claim 1.
DECISION
The Examiner's rejection of claims 1-15 under 35 U.S.C. § 101 is
reversed.
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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