Ex Parte Walker et al

Patent Trial and Appeal Board

Jul 27, 2017

13920474 (P.T.A.B. Jul. 27, 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.
13/920,474 06/18/2013 Jay S. Walker P2395.10481US19 9848
132897 7590 07/31/2017
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
docket @ mabr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY S. WALKER, ANDREW S. VAN LUCHENE,
DEIRDRE O'SHEA, GEOFFREY M. GELMAN, and
DEAN ALDERUCCI
Appeal 2015-003614
Application 13/920,474
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY,
and BRUCE T. WIEDER, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 2—31. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
Appeal 2015-003614
Application 13/920,474
Claim 2 is illustrative:
2. An apparatus, comprising:
a processor; and
a storage device operatively coupled to the processor and
containing instructions configured to direct the processor to:
receive information for a post relating to personal
characteristics associated with a person;
determine a value based on the information;
verify the information;
provide the value in response to the information
being verified; and
provide a different value in response to the
information being not verified.
Appellants appeal the following rejection(s):
1. Claims 2—31 are rejected under 35 U.S.C. 101 because the
claimed invention is directed to non-statutory subject matter.
2. Claims 2—31 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over Claim 22 of
Walker (US 6,415,264 Bl; iss. July 2, 2002) (“Walker”).
3. Claims 2—5, 7—8, 11—19, 22—23, 26—31 are rejected under pre-
AIA 35 U.S.C. 103(a) as being unpatentable over Salmon et al. (US
5,592,375; iss. Jan. 7, 1997) (“Salmon”) in view of Ferguson et al. (US
5,819,092; iss. Oct. 6, 1998) (“Ferguson”) and Berson (US 6,532,459 Bl; iss.
Mar. 11,2003) (“Berson”).
4. Claims 6 and 20-21 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Salmon in view of Ferguson and Berson,
and further in view of Story (US 5,673,430 iss. Sept. 30, 1997) (“Story”).
5. Claims 9—10 and 24—25 are rejected under pre-AIA 35 U.S.C.
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103(a) as being unpatentable over Salmon in view of Ferguson and Berson.
ISSUES
Did the Examiner err in rejecting claims 2—31 under 35U.S.C. §101
because (1) the claims are not directed to an abstract idea (2) the Examiner
has not provided evidence that the claims are directed to an abstract idea,
(3) the claims do not preempt work in the technological field and (4) the
claims effect a transformation of an article to a different state or thing and as
such recite significantly more than an abstract idea?
Did the Examiner err in rejecting claim 2 because the prior art does
not disclose a processor configured to provide a different value in response
to the information being not verified?
ANALYSIS
Rejection under 35 U.S.C. §101
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims are not directed to an abstract idea.
As an initial matter, we note that 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 implicit exceptions: “[ljaws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLSBankInt 7, 134 S.Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
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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. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
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If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. 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.
We are not persuaded of error on the part of the Examiner by
Appellants argument that the Examiner has not provided evidence that the
claims are directed to an abstract idea. Appellants argument related to
whether the claims are directed to an algorithm or a mathematical formula
are not relevant because the Examiner does not hold that the claims are
directed to an algorithm or a mathematical formula. Rather, the Examiner
holds that the claims are directed to a fundamental economic practice.
Specifically the Examiner holds that the claims are directed to the abstract
idea of payment for posting and verification of personal information, which
would further include the concept of rewarding for signing up and providing
accurate information. Ans. 2
In regard to the holding of the Examiner that the claims relate to a
fundamental economic practice, the Appellants argue that the Examiner is
required to provide authoritative documentation and evidence that the
identified economic component is long prevalent in our system of
commerce. We do not agree.
Consideration of evidence in making a determination under the first
step of the Alice framework has merit. See Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229 (Fed. Cir. 2016). But there is no requirement that examiners must
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provide evidentiary support in every case before a conclusion can be made
that a claim is directed to an abstract idea. See, e.g., para. IV “July 2015
Update: Subject Matter Eligibility” to “2014 Interim Guidance on Subject
Matter Eligibility (2014 IEG),” 79 Fed. Reg. 74618 (Dec. 16, 2014) (“The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.”) (emphasis added). Evidence may be helpful in certain
situations where, for instance, facts are in dispute, but it is not always
necessary. It is not necessary' in this case.
In addition, we agree with the Examiner that the claims are directed to
a fundamental economic practice i.e. providing value for information based
on whether the information is verified or nonverified. The practice of
providing value for information based on whether the information is verified
or not verified is a long standing practice in the field of commerce as
evidenced by, for example, valuing certified or notarized copies of
documents differently than copies of those documents which have not been
notarized or certified.
We recognize that our articulation of the fundamental economic
principle upon which forms the abstract idea of the claims di ffers somewhat
from that articulated by the Examiner. However, such difference only
relates to the level of abstraction and such abstraction could be done at
various levels. See Apple, Inc., 842 at 1240—1241 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
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the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”).
In addition, the steps of claim 2 essentially are receiving information
and determining a value for the information based on whether the
information is verified and as such amounts to receiving and analyzing data
and which is an abstract process. “[MJerely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis.” Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016).
We are not persuaded of error on the part of the Examiner because the
claims do not preempt work in the technological field. “While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Arioso Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”). And, “[w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379
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We are not persuaded of error on the part of the Examiner because the
claims effect a transformation of an article to a different state or thing and as
such recite significantly more than an abstract idea. Appellants argue that by
providing a value in response to information being verified, a value is
created where one did not exist before and as such an account balance is
being transformed to a different state or thing. Reply. 8. However, in order
for transformation to constitute statutory subject matter, a particular article
needs to be transformed into a different state or thing. See Diamond, 450
U.S. at 176 (holding that use of mathematical formula in process
“transforming or reducing an article to a different state or thing” constitutes
patent-eligible subject matter); see also Flook, 437 U.S. at 589 n.9 (1978)
(“An argument can be made [that the Supreme] Court has only recognized a
process as within the statutory definition when it either was tied to a
particular apparatus or operated to change materials to a ‘different state or
thing’”); Cochrane v. Deener, 94 U.S. 780, 788 (1876) (“A process is... an
act, or a series of acts, performed upon the subject-matter to be transformed
and reduced to a different state or thing.”). The transformation must be of a
physical or tangible object or something representative of a physical or
tangible object. See In re Abele, 684 F.2d 902, 909 (CCPA 1982). As to the
meaning of “article,” the court explained that chemical or physical
transformation of physical objects or substances is patent-eligible
under § 101, Bilski, 545 F.3d at 962. The court also explained that
transformation of data is sufficient to render a process patent-eligible if the
data represents physical and tangible objects, i.e., transformation of such raw
data into a particular visual depiction of a physical object on a display.
Bilski, 545 F.3d at 962—63. Here the data that the Appellants argue is
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transformed does not represent physical or tangible objects and as such we
agree with the Examiner that claim 2 does not recite significantly more than
the abstract idea.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 2 under 35 U.S.C. §101. We will also sustain this rejection as it is
directed to the remaining claims because the Appellants do not argue the
separate eligibility of the remaining claims.
Double Patenting Rejection
The Appellants do not appeal to the Double Patenting Rejection,
therefore we summarily sustain this rejection. App. Br. 7.
Rejections under 35 U.S.C. §103(a)
We will not sustain these rejections because we agree with the
Appellants that the Examiner has not established that the prior art discloses
or suggests a processor configured to provide a different value in response to
information being not verified.
The Examiner relies on Salmon for teaching the processor configured
to receive information for a post relating to personal characteristics and
Ferguson for teaching a processor configured to determine a value based on
information and to provide that value and a different value in response to the
information. The Examiner, realizing that the different value is not based on
information being verified and not verified, relies on Berson for teaching
information that is verified and information that is not verified. Fin. Act. 9.
The Examiner concludes that it would have been obvious to combine
the teachings of Berson with the teachings of Salmon and Ferguson in order
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to identify, track and correct personal information about an individual on a
computer network. Fin. Act. 10.
We agree with the Appellants that the Examiner has not established
that the combined teachings of Salmon, Ferguson and Berson teach a
processor configured to provide a value in response to information that is
verified and a different value in response to information that is not verified.
As argued by the Appellants the value is determined not based on the
information itself, but based on whether the information is verified or not.
Although Ferguson does disclose a fee schedule to pay for information, there
is no disclosure in Ferguson that the fee schedule is based on whether the
information is verified or not. And although, Berson discloses that
information may be verified or not, Berson does not teach that a value is
determined based on whether the information is verified or not. We note
that the Examiner does not address this aspect of claim 2 and as such does
not establish the obviousness of the claim.
In view of the foregoing, we will not sustain the rejection of claim 2
and claims 3—5, 7—8 and 11—15 dependent therefrom. We will also not
sustain this rejection as it is directed to claim 16 and claims 17—19, 22, 23
and 26—31 dependent therefrom because claim 16 recites the step of
providing value in response to verified information and providing different
value to information that is not verified.
We will also not sustain the rejection of claims 6, 20 and 21 which are
dependent from claim 2 or claim 16 for the same reasons given above.
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DECISION
We affirm the Examiner’s rejection under 35 U.S.C. §101.
We affirm the Examiner’s rejection on non-statutory obvious-type
double-patenting grounds.
We reverse the Examiner’s rejections under 35 U.S.C. § 103(a).
ORDER
AFFIRMED
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