Ex Parte Tobin

Patent Trial and Appeal Board

Nov 23, 2016

13420888 (P.T.A.B. Nov. 23, 2016)

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.
13/420,888 03/15/2012 John Patrick Edgar Tobin P1493US1/70481.532 4546
132906 7590 11/28/2016
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN PATRICK EDGAR TOBIN
Appeal 2014-007818
Application 13/420,8881
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Patrick Edgar Tobin (Appellant) seeks our review under
35 U.S.C. § 134 of the final rejection of claims 1—9 and 21—25. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellant identifies eBay, Inc., as the real party in interest. App.
Br. 2.
Appeal 2014-007818
Application 13/420,888
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
receiving, electronically by a processor of a payment provider,
a request to create a proxy payment account from an account owner of
a primary payment account, wherein the primary payment account is
linked to a method of payment; and
creating, by the processor, the proxy payment account, in which
the proxy payment account is linked to the primary payment account
but is not linked directly to the method of payment, in which
payments to and from the proxy payment account are cleared through
the primary payment account;
further in which the primary payment account has first
credentials, and in which the proxy payment account has second
credentials, the first and second credentials being different.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Cohen US 6,422,462 B1 July 23,2002
Fisher US 2007/0192245 A1 Aug. 16,2007
The following rejections are before us for review:
1. Claims 1—9 and 21—23 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Cohen.
2. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen and Fisher.
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Application 13/420,888
ISSUES
Did the Examiner err in rejecting claims 1—9 and 21—23 under
35 U.S.C. § 102(b) as being anticipated by Cohen?
Did the Examiner err in rejecting claims 24 and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Cohen and Fisher?
ANALYSIS
The rejection of claims 1—9 and 21—23 under 35 U.S.C. § 102(b) as being
anticipated by Cohen.
The Appellant argues, in part, that Cohen does not describe the claim
limitation “payments to and from the proxy payment account are cleared
through the primary payment account,” a limitation which is present in all
the independent claims (claims 1 and 22). App. Br. 6—7. We agree.
The Examiner cited column 4, lines 32—45 and column 5, lines 5—15
and 37-40 as evidence that said limitation is described in Cohen. Final
Act. 5. The passages are reproduced below:
• The vendor could read the number off the disposable or customized card,
could scan the number with a bar code scanner, could read a magnetic
strip on the disposable card, or so forth. Upon being used once, the credit
card can be marked, if desired, to show both that it has been processed to
charge money to the person's account, and to show that it is no longer
usable. This disposable card could be returned to the cardholder, saved as
a receipt by either of the cardholder or the vendor, be returned to the
credit card company, destroyed, or so forth. As noted above, signature
could be provided once, or two signature lines could be provided, for the
user to sign and countersign. (Cohen, column 4, lines 32-45.)
• In addition, since they are for use either on a one shot only or on a
customized basis, the credit card or number could also be associated with
a certain sublimit of the individual's or a corporation's credit limit. Thus,
for example, a user with a $500 limit, for example, could call into the
credit card company and obtain a disposable or a customized card which
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Application 13/420,888
itself only has a $50 charge limit (for example, when the individual only
intends to charge up to $50 in the next transaction, or to allow someone
else to charge up to $50). This further limits the potential losses from a
credit card fraud. (Cohen, column 5, lines 1—15.)
• That vendor then verifies the transaction and obtains an authorization
code from the credit card company authorizing the purchase, as is
currently standard practice with credit card transactions. (Cohen, column
5, lines 37^40.)
We do not see any express description of “payments to and from the
proxy payment account are cleared through the primary payment account”
(claims 1 and 22) in any of the passages the Examiner has cited. Regarding
an inherent description, it is possible that Cohen’s charging of money to a
person’s account may involve a “payment[ ] to and from [a] proxy payment
account [that is] cleared through [a] primary payment account” (claims 1 and
22) but “‘[ijnherency, however, 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.’” Hansgirg v. Kemmer, 102 F.2d 212,
214 (CCPA 1939) (quoting Continental Can Co. USA, Inc. v. Monsanto Co.,
948 F.2d 1264, 1269 (Fed. Cir. 1991)).
The rejection is not sustained.
The rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Cohen and Fisher.
Claims 24 and 25 depend from claim 1 and their rejection
incorporates the argument that Cohen describes “payments to and from the
proxy payment account are cleared through the primary payment account”
(claims 1 and 22). Because the facts do not bear that out as explained, the
rejection of claims 24 and 25 is not sustained for the same reasons.
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NEW GROUND OF REJECTION
Claims 1—9 and 21—25 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 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. Alice, 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to proxy account implementation. Proxy account
implementation is a fundamental economic practice. As such, it is an
abstract idea.
Step two 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. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of proxy account implementation into an inventive concept.
The method of claim 1 sets out two steps whereby a request to create a
proxy payment account is received and a proxy payment account is created
(claim 1). The requesting to create and the subsequent creating are known
account-creating operations that add little to patentably transform the proxy
account implementation abstract idea.
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We note that the steps as claimed include specific relationships
between the proxy payment account and (a) a primary payment account
(linked) and (b) a method of payment (not linked) as well as provide for
different credentials for the primary payment account and the proxy payment
account. However, the relationships and credentials do no more than limit
the proxy account implementation to a particular application “for using
proxy accounts associated with a primary account” (Specification para. 1).
Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.
Cir. 2011) (“The Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the
notion that the recitation of a practical application for the calculation could
alone make the invention patentable.”).
Finally, we note that claim 1 calls for using “a processor of a payment
provider.” But any conventional computer system available at the time the
application was filed would have satisfied this limitation. The Specification
supports that view. See Spec., para. 26. “[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea ‘while adding the words apply if
is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.
For the foregoing reasons, we find that claim 1 covers claimed subject
matter that is judicially excepted from patent eligibility under §101. The
other independent claim — method claim 22 parallels claim 1 — similarly
covers claimed subject matter that is judicially excepted from patent
eligibility under § 101. The dependent claims describe various limitations to
the proxy account implementation abstract idea which do little to patentably
transform it.
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Therefore, we enter a new ground of rejection of claims 1—9 and 21—
25 under 35 U.S.C. § 101.
For the foregoing reasons, the rejections are reversed but the claims
are newly rejected under §101.
CONCLUSIONS
The rejection of claims 1—9 and 21—23 under 35 U.S.C. § 102(b) as
being anticipated by Cohen is reversed.
The rejection of claims 24 and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Cohen and Fisher is reversed.
Claims 1—9 and 21—25 are newly rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1—9 and 21—25 is
reversed.
Claims 1—9 and 21—25 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, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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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 rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution 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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