13680332 (P.T.A.B. May. 18, 2017)

Ex Parte Simonian

Patent Trial and Appeal BoardMay 18, 2017

13680332 (P.T.A.B. May. 18, 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. 13/680,332 11/19/2012 Thomas A. Simonian ARR-10003/29 1064 131270 7590 BELZER PC ATTN: John G. Posa 2905 Bull Street Savannah, GA 31405 05/18/2017 EXAMINER CIV AN, ETHAN D ART UNIT PAPER NUMBER 3684 MAIL DATE DELIVERY MODE 05/18/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS A. SIMONIAN Appeal 2016-002442 Application 13/680,332 Technology Center 3600 Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRUCE T. WIEDER Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1—9 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were presented on May 1, 2017, by video conference. SUMMARY OF THE DECISION We AFFIRM. Appeal 2016-002442 Application 13/680,332 THE INVENTION The Appellant’s claimed invention is directed to enhancing the utility and effectiveness of gift cards (Spec., para. 14). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of enhancing the effectiveness of gift card transactions, comprising the steps of: establishing a website enabling a user to purchase or activate gift cards for gift recipients; purchasing a multi-digit code; activating the code upon confirmation of payment for the code; transferring the code to a recipient; entering the code at the website by the recipient, enabling the recipient to receive a gift card having a value corresponding to the payment for the code; delivering the gift card to the recipient, enabling the recipient to purchase goods or services with the card. THE REJECTIONS The following rejections are before us for review: 1. Claims 1—9 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1—9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Perlow (US 2007/0075134 Al, pub. Apr. 5, 2007) and Kwan (US 2002/0147658 Al, pub. Oct. 10, 2002). 2 Appeal 2016-002442 Application 13/680,332 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.1 ANALYSIS Rejection under 35 U.S.C. §101 The Appellant argues that the rejection of claim 1 is improper (App. Br. 2-4). The Appellant argues claim 1 is not directed to a fundamental economic practice but rather instead directed to enhancing gift cards which is a recent phenomenon and that the claimed Internet based code activation was invented by the Appellant (App. Br. 2). The Appellant also argues that the claim elements provide “significantly more” than an abstract idea (App. Br. 3, 4; Reply Br. 1, 2). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 2, 3, 6, 7). We agree with the Examiner. Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “laws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014). In judging whether claim 1 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal 2016-002442 Application 13/680,332 step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. If so, we then consider the elements of the 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 of the abstract idea. Id. This is a search for an “inventive concept,” an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. The Court also stated that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. Here, we find that the claim is directed to the concept of selling working products after payment is received, which in this case is a gift card activated after receiving payment. The concept of selling products after payment is received is a fundamental economic practice long prevalent in our system of commerce, and is an abstract idea beyond the scope of § 101. We next consider whether additional elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea over the Internet, using generic computer components. We conclude that it does not. Considering each of the claim elements in turn, the function performed by the computer system at each step of the process is purely conventional. Each step of the claimed method does no more than require a 4 Appeal 2016-002442 Application 13/680,332 generic computer to perform a generic computer function. For example, the elements of claim 1 include essentially only a conventional website and activation code. Here, both individually and as an ordered combination, the recited elements fail to transform the abstract nature of the claim. For these reasons, the rejection of claim 1 is sustained. While the dependent claims do recite additional features (claim 2, physical gift card; claim 3, smartphone message; claim 4, electronic mail or messaging; claim 6, multi-digit code imprinted on card; claim 7, target redeemer), these features fail to transform the abstract nature of the claim which is directed to the concept of selling products with an activation code. For these reasons, the rejection of the dependent claims is sustained as well. Rejection under 35 U.S.C. § 103(a) The Appellant argues that the rejection of claim 1 should not be sustained because the cited combination of Kwan and Perlow is improper (App. Br. 4—8). In contrast, the Examiner has determined the cited rejection of claim 1 under Kwan and Perlow is proper (Ans. 7—9). We agree with the Appellant. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme Court noted that in an obviousness analysis, “[rjejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Claim 1 requires in part: purchasing a multi-digit code; activating the code upon confirmation of payment for the code; [and] 5 Appeal 2016-002442 Application 13/680,332 transferring the code to a recipient. (Claim 1). The Examiner has cited to these elements being disclosed by Kwan at para. 12 (Final Act. 4; Ans. 8). Kwan at para. 12 discloses in contrast that an “activation code” is given, rather than purchased. Kwan at para. 12 further requires a password to open the sub account. Kwan does disclose at para. 12 the use of an “authorization code” but there is no disclosure it is purchased. Here, while Kwan does disclose a “verification” system of some kind, it is not shown to operate in the particular manner claimed, and the rejection further lacks articulated reasoning with rational underpinning to support the legal conclusion of obviousness to support the rejection. For these reasons, the rejection of claim 1 and its dependent claims are not sustained. CONCFUSIONS OF FAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1—9 under 35U.S.C. § 101. We conclude that Appellant has shown that the Examiner erred in rejecting claims 1—9 under 35 U.S.C. § 103(a). DECISION The Examiner’s rejection of claims 1—9 is sustained. AFFIRMED 6