Thomas W. HeeterDownload PDFPatent Trials and Appeals BoardDec 13, 201914079402 - (D) (P.T.A.B. Dec. 13, 2019) 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. 14/079,402 11/13/2013 Thomas W. Heeter HEEPAT007US 1209 43737 7590 12/13/2019 John R. Casperson P.O. Box 36369 Pensacola, FL 32516-6369 EXAMINER WEISBERGER, RICHARD C ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 12/13/2019 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 W. HEETER ____________ Appeal 2018-008267 Application 14/079,402 Technology Center 3600 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and BRADLEY B. BAYAT, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Thomas W. Heeter (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–6, the only claims pending in the application 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed April 26, 2017) and Reply Brief (“Reply Br.,” filed August 7, 2018), and the Examiner’s Answer (“Ans.,” mailed June 7, 2018), and Final Action (“Final Act.,” mailed June 29, 2016). Appeal 2018-008267 Application 14/079,402 2 on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a use of machine-readable codes for the purposes of conducting monetary and credit transactions in a secure manner. Specification 1:24–26. An understanding of the invention can be derived from a reading of exemplary claim 1 which is reproduced below (bracketed matter and some paragraphing added). 1. A method for conducting an electronic payment, said method employing a seller bar code encoding information solely to enable electronic payment to a seller's account, said seller's account belonging to an intended recipient of the electronic payment, a buyer's smart-phone with a camera function for scanning or capturing an image of the seller bar code and a keypad for entering a payment amount, a remote electronic payment center for maintaining a buyer's account and making electronic payments from the buyer's account, an electronic communication system for transmitting data, including data representative of the seller bar code image, and the payment amount, to the remote electronic payment center, and applications present on the smart-phone and at the remote payment center to enable data transmission of the data over the electronic communication system from the 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as himself. (Appeal Br. 2). Appeal 2018-008267 Application 14/079,402 3 buyer's smart-phone to the remote electronic payment center using a send command and to authorize the remote electronic payment center to electronically transfer funds from a buyer's account associated with the buyer's smart- phone to the seller's account, said data transmission being effected wirelessly from the buyer's smart-phone and bypassing seller equipment, said method comprising [1] providing an image of the seller bar code at a point of sale for goods or services, [2] scanning or capturing an image of the seller bar code with the camera function of the smart phone, [3] processing the image with the smart-phone application to form a wirelessly transmittable seller data file, [4] wirelessly transmitting the seller data file from the smart- phone and electronically receiving the seller data file at the electronic payment center, [5] wirelessly transmitting a payment data file representative of a payment amount from the smart-phone and electronically receiving the data file representative of the payment amount at the electronic payment center, [6] said steps of wirelessly transmitting being carried out from the buyer's smart-phone and bypassing seller equipment electronically debiting the buyer's account by the payment amount, [7] electronically crediting the seller's account by the payment amount, and [8] electronically transmitting data representative of the crediting of the seller's account to the seller. Appeal 2018-008267 Application 14/079,402 4 REJECTIONS Claims 1–6 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1–6 stand rejected under 35 U.S.C. § 103 as unpatentable over Frantz. Claims 1–6 stand rejected under 35 U.S.C. § 112, first paragraph,as lacking a supporting written description within the original disclosure. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired. The issues of obviousness turn primarily on whether the claims were predictable in view of the prior art. The issues of written description matter turn primarily on whether the claims are supported by the originally filed disclosure. ANALYSIS Claims 1–6 rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more STEP 13 Claim 1, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. STEP 2 3 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2018-008267 Application 14/079,402 5 The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, . . . consider the elements of each 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. [The Court] described step two of this analysis as 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.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the Appeal 2018-008267 Application 14/079,402 6 additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 1 recites providing, scanning or capturing, processing, and transmitting a bar code image, transmitting a payment data file, and crediting and transmitting data about an account. Providing an image is data display. Scanning, capturing, processing, and transmitting a bar code image is conventional data processing. Crediting an account is data update. Thus, claim 1 recites receiving, processing, updating, and transmitting data. None of the limitations recite technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. The claim preamble recites various conventional pieces of equipment that describe the context in which the steps occur. None of the steps depend on the nature of the equipment other than for the equipment’s ordinary, conventional functions. In particular, the operation of a generic transmission step and it implementing structural equipment is the same irrespective of the transmission recipient. From this we see that claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent in-eligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts4, (2) certain methods of organizing 4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Appeal 2018-008267 Application 14/079,402 7 human activity5, and (3) mental processes.6 Among those certain methods of organizing human activity listed in the Revised Guidance are commercial or legal interactions. Like those concepts, claim 1 recites the concept of making a commercial payment. Specifically, claim 1 recites operations that would ordinarily take place in advising one to allow a buyer to transmit a payment by acquiring the needed seller data from a barcode. The advice to allow a buyer to transmit a payment by acquiring the needed seller data from a barcode involves crediting the seller's account by the payment amount, which is an economic act, and transmitting a payment data file representative of a payment amount, which is an act ordinarily performed in the stream of commerce. For example, claim 1 recites “crediting the seller's account by the payment amount,” which is an activity that would take place whenever one is paying a merchant. Similarly, claim 1 recites “transmitting a payment data file representative of a payment amount,” which is also characteristic of paying a merchant. The Examiner determines the claims to be directed to the operations performed in claim 1. See Final Act. 2. The preamble to claim 1 recites that it is a method for conducting an electronic payment. The steps in claim 1 result in an electronic payment Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed. Cir. 2018). 6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2018-008267 Application 14/079,402 8 transaction absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitations 1 and 2 recite receiving data. Limitations 3–8 recite generic and conventional processing, updating, and transmitting of payment data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for allowing a buyer to transmit a payment by acquiring the needed seller data from a barcode. To advocate allowing a buyer to transmit a payment by acquiring the needed seller data from a barcode is conceptual advice for results desired and not technological operations. The Specification at 1:24–26 describes the invention as relating to the use of machine-readable codes for the purposes of conducting monetary and credit transactions in a secure manner. Thus, all this intrinsic evidence shows that claim 1 recites making a commercial payment. This is consistent with the Examiner’s determination. This in turn is an example of commercial or legal interactions as a certain method of organizing human activity because making a commercial payment is the established way of consummating commercial sales in market economies. The concept of making a commercial payment by allowing a buyer to transmit a payment by acquiring the needed seller data from a barcode is one idea for making such a payment. The steps recited in claim 1 are part of how this might conceptually be premised. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1377-78 (Fed. Cir. 2017) (local processing of payments for remotely purchased goods). Appeal 2018-008267 Application 14/079,402 9 From this we conclude that at least to this degree, claim 1 recites making a commercial payment by allowing a buyer to transmit a payment by acquiring the needed seller data from a barcode, which is a commercial and legal interaction, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 1 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application.7 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details. Steps 1 and 2 are pure data gathering steps. Limitations describing the nature of the data do not alter this. Steps 4–6 recite basic conventional data operations such as transmitting data. 7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2018-008267 Application 14/079,402 10 Steps 3, 7, and 8 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 1 simply recites the concept of making a commercial payment by allowing a buyer to transmit a payment by acquiring the needed seller data from a barcode as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. Claim 1 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The 9+ pages of specification prose8 do not bulge with disclosure, but only spell out different generic equipment9 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of making a commercial payment by allowing a buyer to transmit a payment by acquiring the needed seller data from a barcode under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, claim 1 at issue amounts to nothing significantly more than an instruction to apply making a commercial payment by allowing a buyer to 8 There are an additional 7+ pages that only list drawing references 9 The Specification describes using a smartphone, which is a conventional piece of equipment, throughout the Specification. Appeal 2018-008267 Application 14/079,402 11 transmit a payment by acquiring the needed seller data from a barcode using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. None of the limitations reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. We conclude that claim 1 is directed to achieving the result of making a commercial payment by advising one to allow a buyer to transmit a payment by acquiring the needed seller data from a barcode, as distinguished from a technological improvement for achieving or applying that result. This amounts to commercial or legal interactions, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. Appeal 2018-008267 Application 14/079,402 12 The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. the 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 it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223–24 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for receiving, processing, updating, and transmitting data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, Appeal 2018-008267 Application 14/079,402 13 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). None of these activities is used in some unconventional manner nor do any produce some unexpected result. Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claim 1 add nothing that is not already present when the steps are considered separately. The sequence of data reception-processing- update-transmission is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. Appeal 2018-008267 Application 14/079,402 14 We conclude that claim 1 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. REMAINING CLAIMS Claim 1 is representative. The remaining method claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. There are no structural claims. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the commercial and legal interaction of making a commercial payment by advising one to allow a buyer to transmit a payment by acquiring the needed seller data from a barcode, without significantly more. APPELLANT’S ARGUMENTS We are not persuaded by Appellant's argument that the rejection “fails a prima facie showing that the claim is ‘wholly directed to subject matter encompassing a judicially recognized exception’.” App. Br. 9. Such a showing is provided supra. We are not persuaded by Appellant's argument that as to the rejection “even if the claim is directed toward an abstract idea, it incorporates enough Appeal 2018-008267 Application 14/079,402 15 meaningful limitations to ensure that it requires something meaningful in addition to carrying out the abstract idea.” App. Br. 10. Such a showing that it does not is provided supra. In particular, we are not persuaded by Appellant’s argument that “getting paid for something is not an abstract idea, nor is being informed that you have been paid, nor is paying for something.” App. Br. 9. The concept of payment is among the most abstract of human concepts. It is no more than the exchange of paper or computer bits. See Ultramercial, 772 F.3d at 715 (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction). Claims 1–6 rejected under 35 U.S.C. § 103 as unpatentable over Frantz The Examiner set forth this rejection in the Non-Final Action mailed December 3, 2015. The Examiner refers back to this rather than replicating it in the Final Action. The Examiner determines that all of the limitations are described except for bypassing the seller equipment and the debit and credit limitation. Examiner determines that such debiting and crediting are conventional accounting entries for the claimed payment. This is not disputed. Appellant only contends that the art does not explicitly recite this. The Examiner also determines the bypassing is predictable. This is the core dispute. App. Br. 10–13; Reply Br. 7–9. Appellant cites: the client application establishes communication either directly with the vendor (when all of the required information is contained in the barcode and/or in the client application) or with a centralized platform that will relay the information to the vendor to process the payment. Use of a centralized platform will allow easy and secure storage of information related to the [a] the user (such as delivery address, bank or credit card information, preferred payment modalities, and/or to the vendor Appeal 2018-008267 Application 14/079,402 16 (such as vendor name, address, or banking information) and/or [b] the invoice (such as amount, tax amount, vendor identification key, etc.) Frantz para. 14. This describes two alternatives. One does go through the vendor, but the other first goes to a centralized platform that will relay the information to the vendor. As all of the information needed to process the payment goes to the centralized platform in the second alternative, there is no technological need to continue sending the data on to the vendor. Thus, any continuation on to the vendor is by way of convention rather than technological need. It is obvious to delete a function for the purpose of excluding its effects. See In re Larson, 340 F.2d 965 (CCPA 1965) (Omission of additional framework and axle which served to increase the cargo carrying capacity of prior art mobile fluid carrying unit would have been obvious if this feature was not desired.); and In re Kuhle, 526 F.2d 553 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient). Here, the only discernable purpose of the existing convention is to convey information that is unused. No practical or technological downside results from removing this part of the convention. Claims 1–6 rejected under 35 U.S.C. § 112, first paragraph, as lacking a supporting written description within the original disclosure We are persuaded by Appellant's argument that the claims are supported by the originally filed disclosure. App. Br. 13–15. The Examiner responds that he “finds ‘bypassing’ to be broader in scope from "without being routed from through the payee" and maintains the rejection.” Ans. 15. The Examiner provides no analysis or explanation for this determination, and no explanation of why this determination supports the rejection. Appeal 2018-008267 Application 14/079,402 17 CONCLUSIONS OF LAW The rejection of claims 1–6 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. The rejection of claims 1–6 under 35 U.S.C. § 103 as unpatentable over Frantz is proper. The rejection of claims 1–6 under 35 U.S.C. § 112, first paragraph, as lacking a supporting written description within the original disclosure is improper. CONCLUSION The rejection of claims 1–6 is affirmed. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–6 101 Eligibility 1–6 1–6 103 Frantz 1–6 1–6 112(1) Written Description 1–6 Overall Outcome 1–6 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)(1)(iv) (2011). AFFIRMED Copy with citationCopy as parenthetical citation