Ex Parte Sorenson et alDownload PDFPatent Trial and Appeal BoardNov 14, 201710558907 (P.T.A.B. Nov. 14, 2017) Copy Citation 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. 10/558,907 02/07/2007 Timothy N. Sorenson 021382-8025.US08 5916 25096 7590 11/16/2017 PFRKTNN TOTF TIP- NFA General EXAMINER PATENT-SEA SHAPIRO, JEFFREY ALAN P.O. BOX 1247 SEATTLE, WA 98111 -1247 ART UNIT PAPER NUMBER 3653 NOTIFICATION DATE DELIVERY MODE 11/16/2017 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): patentprocurement @perkinscoie. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY N. SORENSON and MARK L. EVANS Appeal 2015-007812 Application 10/558,9071 Technology Center 3600 Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 1—14 and 16—31. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, the real party in interest is Outerwall, Inc. Br. 2. Appeal 2015-007812 Application 10/558,907 STATEMENT OF THE CASE Claimed Subject Matter Claims 1,16, and 26 are the independent claims on appeal. Claim 1, reproduced below, with bracketed notations added, is illustrative of the subject matter on appeal. 1. A method for providing Internet service, the method comprising: [1] providing a kiosk having: a user interface; and a funds input portion; [2] receiving a selection from a user via the user interface, the selection being related to a purchase of Internet service; [3] receiving account information from the user via the user interface, wherein the account information identifies an existing Internet service account of the user; [4] receiving funds from the user via the funds input portion; [5] at least partially in response to receiving the funds from the user, communicating with an Internet service provider to request that at least a portion of the funds received from the user be applied to the Internet service account identified by the user to increase the amount of Internet service available to the user via the account; [6] receiving confirmation from the Internet service provider that at least a portion of the funds received from the user have been applied to the Internet service account identified by the user to increase the amount of Internet service available to the user via the account; [7] at least partially in response to receiving the confirmation from the Internet service provider, providing the user with a unique code; [8] receiving the unique code from the user at the Internet service provider; [9] at least partially in response to receiving the unique code at the Internet service provider, enabling the user to obtain the Internet service with a computer separate from the kiosk. 2 Appeal 2015-007812 Application 10/558,907 Rejections I. Claims 1—14 and 16—31 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. II. Claims 1—8, 12—14, 16—18, and 20-31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mennie et al. (US 2003/0081824 Al, issued May 1, 2003) (“Mennie”), Wu (US 2003/0046249 Al, published Mar. 6, 2006), Trabandt et al. (US 2003/0223558 Al, published Dec. 4, 2003) (“Trabandt”), and Paschini (US 2003/0095646 Al, published May 22, 2003). III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Mennie, Wu, Trabandt, Paschini, and Molbak (US 5,620,079, issued Apr. 15, 1997). IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Mennie, Wu, Trabandt, Paschini, and Capobianco et al. (US 2002/0147683 Al, published Oct. 10, 2002) (“Capobianco”). V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Mennie, Wu, Trabandt, Paschini, and Neto (US 2002/0162895 Al, published Nov. 7, 2002). VI. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Mennie, Wu, Trabandt, Paschini, and Oishi (US 2004/0081109 Al, published Apr. 29, 2004). ANALYSIS Rejection I 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.” 3 Appeal 2015-007812 Application 10/558,907 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” See, e.g., Alice Corp. Pty. Ltd. v. CLS BankInt7, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (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., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” id., e.g., to an abstract idea. If the claims are not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). 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 acknowledged in Mayo that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine “whether their character as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312 4 Appeal 2015-007812 Application 10/558,907 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Independent Claims 1 and 16 The Appellants argue claims 1 and 16 as a group. See Br. 8—10. We select claim 1 as the representative claim for this group. Claim 16 stands or falls with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Turning to the first step of the Alice framework, we find supported and agree with the Examiner that claim 1 is “directed to the abstract idea of applying funds to an existing internet service account while also providing the user with a unique code for accessing said internet service account, which is a fundamental economic practice,” a fundamental economic practice. Non-Final Act. 3 (mailed July 17, 2014). The preamble of claim 1 provides that the claim is directed to “[a] method for providing Internet service.” Br., Claims App. The Specification provides that the foregoing method of providing Internet service is an example of “exchanging one form of value for another form of value are described in the context of computer- executable instructions performed by a general-purpose computer.”2 Spec. 126; see also id. 12. The abstract idea here is similar to certain fundamental economic and conventional business practices that our reviewing courts have found patent ineligible, like intermediated settlement {see Alice, 134 S. Ct. at 2356—57), 2 The Specification defines “value” as “anything of monetary worth, such as money, credit, time (e.g., long-distance or cell phone minutes), event and travel tickets, merchandise, Internet service, digital content, and the like.” Spec. 122. 5 Appeal 2015-007812 Application 10/558,907 creating a contractual relationship in guaranteeing performance of an online transaction (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014)), “verifying the validity of a credit card transaction over the Internet” (CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), using advertising as a currency on the Internet (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)), and “conditioning and controlling access to data based on payment” (Smartflash LLC v. Apple Inc., 680 F. App’x 977, 983 (Fed. Cir. 2017)) to be ineligible. Thus, independent claim 1 is directed to a patent-ineligible abstract idea. As such, we find unpersuasive the Appellants’ arguments that claim 1 is not directed to “fundamental economic practices.” Br. 8—9. We note that although the quoted statement from Alice does identify “practices Tong prevalent in our system of commerce and taught in any introductory finance class’” as a means to identify fundamental economic practices, the statement is not restrictive. Stated otherwise, identifying “practices Tong prevalent in our system of commerce and taught in any introductory finance class’” is included, but not the only way to identify a fundamental economic practice. See Ans. 4, 5. To the extent the Appellants argue that the claims are not directed to a fundamental economic practice because “the use of unique codes for obtaining Internet service is not a financial concept at all,” {id.), we disagree. The unique codes are effectively acting as currency with which to purchase/obtain the Internet service, similar to the use of advertising as currency found to be a fundamental economic practice in Ultramercial. Turning to the second step of Alice, the Appellants argue that claim 1 “amount[s] to ‘significantly more’ than the judicial exception recognized for 6 Appeal 2015-007812 Application 10/558,907 abstract ideas under Section 101.” Br. 9. In particular, the Appellants assert that claim 1 involves a “kiosk[] that communicate[s] with a user’s Internet service provider, increas[ing] Internet service on the user’s account, and providing] the user with a unique code that enables the user to access the Internet service at a time and on a computer of the user’s choosing.” Id. Additionally, the Appellants argue that claim 1 is directed to an invention that ‘improve[s] an existing technological process,’ since [claim 1] give[s] users a new way to add Internet service to their existing accounts.” Id. The Appellants’ arguments are not persuasive of Examiner error. We determine that Appellants do not provide adequate evidence or technical reasoning that claim 1 improves some existing technological process or solves some technological problem in conventional industry practice. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 2510, 195 L. Ed. 2d 841 (2016) (finding that the “claims recit[ed] a commonplace business method aimed at processing business information despite being applied on a general purpose computer.”). The Specification describes the technological process associated with claim 1 as “computer-executable instructions performed by a general-purpose computer,” which “are known.” Spec. 126; see also id. 1 46. And, as the Federal Circuit has made clear “the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium.” See CyberSource, 654 F.3d, 1366, 1375-76 (citing In reAbele, 684 F.2d 902 (CCPA 1982)); EON Corp. IP Holdings LLCv. AT & TMobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient 7 Appeal 2015-007812 Application 10/558,907 structure only to basic functions of a microprocessor. All other computer- implemented functions require disclosure of an algorithm.”); Alice, 134 S. Ct. at 2357—60 (applying an abstract idea, such as an algorithm, on a general purpose computer is not enough to transform a patent-ineligible abstract idea into a patent-eligible invention). We further note that, contrary to the Appellants’ assertion (Br. 9), claim 1 does not require a kiosk that communicates with a user’s Internet service provider. Rather, claim 1 only calls for a step of “communicating with an Internet service provider,” and does not specify that a kiosk communicate with the Internet service provider. See Br., Claims App. Because claim 1 is directed to an abstract idea, and nothing in the claim adds an inventive concept, we are unpersuaded that the Examiner erred in determining that the claim is not patent-eligible under § 101. Thus, we sustain the Examiner’s rejection of independent claims 1 and 16 under 35 U.S.C. § 101. Dependent Claims 2—5, 8—11, 13—19, 21, and 23—25 The Appellants provide a separate heading, but do not add further argument for the rejection of dependent claims 2—5, 8—11, 13—19, 21, and 23—25. Br. 10. Thus, for the reasons discussed above, we sustain the Examiner’s rejection of claims 2—5, 8—11, 13—19, 21, and 23—25 under 35 U.S.C. § 101. Dependent Claims 6, 7, 12, 20, and 22 The Appellants argue claims 6, 7, 12, 20, and 22 as a group. See Br. 10—11. We select claim 6 as the representative claim for this group. 8 Appeal 2015-007812 Application 10/558,907 Claims 7, 12, 20, and 22 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(l)(iv). The Appellants argue that the Examiner’s rejection of dependent claim 6 under 35 U.S.C. § 101 is in error because the claim “further require[s] receiving a plurality of randomly oriented coins of arbitrary denomination from the user,” which is not a “fundamental economic process” and “amount[s] to ‘significantly more’ than the judicial exception . . . [by] ‘improving] an existing technological process.’” Br. 10. For reasons similar to those discussed above with respect to claim 1, we disagree. The elements of dependent claim 6 merely narrows the manner in which funds are received. Thus, we sustain the Examiner’s rejection of dependent claims 6, 7, 12, 20, and 22 under 35 U.S.C. § 101. Independent Claim 26 and Dependent Claims 27—31 The Appellants argue that “claim 26 is directed to a consumer- apparatus having hardware components that receive and count coins, and a dispenser,” which “falls squarely within the statutory category of ‘a machine’ under Section 101” and is not directed or implementing an abstract idea. Br. 11. We agree. Thus, we do not sustain the Examiner’s rejection of claims 26—31 under 35 U.S.C. § 101. Rejections II—VI The Appellants argue that the Examiner’s rejection fails to establish that the combination of teachings from Mennie, Wu, Trabandt, and Paschini result in a “unique code be[ing] given to the user in response to the user applying funds to an existing account,” as required by the claims. See 9 Appeal 2015-007812 Application 10/558,907 Appeal Br. 14, 16, 19-20. We determine that the Appellants’ argument is persuasive of Examiner error. Initially, we agree with the Appellants that independent claims 1,16, and 26, require a “unique code be given to the user in response to the user applying funds to an existing account.” Id. at 16; see id. at 19-20. For example, one of ordinary skill in the art would readily understand Claim 1 ’s limitations 3—7 to include the foregoing requirement. Supra. The Examiner relies on Trabandt and/or Paschini, and not Mennie or Wu, to teach a unique code as required by the claims 1,16, and 26. See Non-Final Act. 4—9; Ans. 9—14. The Examiner relies on Trabandt’s teaching of a primary access code (“PAC”)/user name and password to teach a “unique code.” See Non-Final Act. 8. Indeed, the Examiner finds “Trabant’s algorithm enables receiving the unique code in the form of a PAC/user name and a password, as mentioned at Trabant, paragraph 16, from the user at the internet service provider.” Non-Final Act. 8; see Trabandt || 13—14. However, the Examiner also finds that “Trabant’s PAC identifies an existing internet service account of the user.” Non-Final Act. 7. In response, the Appellants assert that the Trabant’s PAC/user name and password “is created when the user purchases and registers a new account,” i.e., “at the time of registration.” Appeal Br. 16. The Examiner’s finding that “Trabant’s PAC identifies an existing internet service account of the user” (Non-Final Act. 7) is not adequately supported on the record by evidence and/or technical reasoning. The Examiner finds Trabant describes — in the Background of the Invention section — that “existing systems do not readily, or easily, allow a user to add credits to an existing account.” Ans. 10 (citing Trabant 14). However, this description is merely an 10 Appeal 2015-007812 Application 10/558,907 acknowledgement of the weakness of existing systems, rather than a teaching of a unique code given to the user in response to the user applying funds to an existing account. Moreover, we agree with the Appellants that “it is not clear how the Examiner . . . arrives at the conclusion that the PAC is a unique code given to the user for a subsequent purchase of access time for the existing account.” Br. 16. Additionally, although the Examiner appears to rely on Paschini to teach a “unique code,” the Examiner does not appear to rely on Paschini to teach that the unique code given to the user in response to the user applying funds to an existing account. See Non-Final Act. 9; Ans. 12—14. In sum, we agree with the Appellants’ argument that the Examiner fails to establish that the combination of teachings from Mennie, Wu, Trabandt, and Paschini do not result in a unique code given to a user in response to the user applying funds to an existing account. Thus, we do not sustain the Examiner’s rejection of claims 1—8, 12— 14, 16—18, and 20-31 under 35 U.S.C. § 103(a) as unpatentable over Mennie, Wu, Trabandt, and Paschini. The remaining rejections based on Mennie, Wu, Trabandt, and Paschini in combination with Molbak, Capobianco, Neto, or Oishi rely on the same error as discussed above. As such, we do not sustain the rejections under 35 U.S.C. § 103(a) of: claim 9 as unpatentable over Mennie, Wu, Trabandt, Paschini, and Molbak; claim 10 as unpatentable over Mennie, Wu, Trabandt, Paschini, and Capobianco; claim 11 as unpatentable over Mennie, Wu, Trabandt, Paschini, and Neto; and claim 19 as unpatentable over Mennie, Wu, Trabandt, Paschini, and Oishi. 11 Appeal 2015-007812 Application 10/558,907 DECISION We AFFIRM the Examiner’s decision rejecting claims 1—14 and 16— 25 under 35 U.S.C. § 101. We REVERSE the Examiner’s decision rejecting: claims 26—31 under 35 U.S.C. § 101; and claims 1—14 and 16—31 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 12 Copy with citationCopy as parenthetical citation