14079402 - (R) (P.T.A.B. Mar. 4, 2020)

Thomas W. Heeter

Patent Trials and Appeals BoardMar 4, 2020

14079402 - (R) (P.T.A.B. Mar. 4, 2020)

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 03/04/2020 John R. Casperson P.O. Box 36369 Pensacola, FL 32516-6369 EXAMINER WEISBERGER, RICHARD C ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 03/04/2020 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 REQUEST FOR REHEARING Appeal 2018-008267 Application 14/079,402 2 STATEMENT OF CASE This is a decision on rehearing in Appeal No. 2018-008267. We have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. ISSUES ON REHEARING Appellant raises two issues in the Request for Rehearing. The first issue relates to whether the claims recite only ineligible subject matter. The second issue relates to whether it was obvious to delete one of the described functions in the prior art. ANALYSIS We found in our Decision that the rejection of claims 1–6 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. The Decision found that the rejection of claims 1–6 under 35 U.S.C. § 103 as unpatentable over Frantz is proper. The Decision found 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. See Decision 17. As to the eligibility rejection, Appellant argues that one of the several cases cited in support of the rejection is inapplicable, that the claims are not preemptive, and that the claims recite physical ways of accomplishing the claims making the claims eligible. Req. Reh’g 1–8. Appeal 2018-008267 Application 14/079,402 3 We are not persuaded by Appellant’s argument that the claims would not preempt the idea. Req. Reh’g 2. “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo [/Alice] framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The physical devices Appellant argues as recited in the claims are a bar code and smart-phone with camera. Req. Reh’g 4; Claim 1. Both are conventional generic apparatus and are recited as being used according to their known conventional operation. A bar code conventionally displays data in a bar shaped format. A smart-phone with camera conventionally takes and transmits pictures wirelessly. No technological details for these operations are recited in the claims or even described in the Specification. Thus, recitation of these elements is no more than the conceptual idea of using them. As an initial matter, TLI argues that, even if known in the prior art, the components recited in the claims cannot be “conventional” within the meaning of the Alice absent fact- finding by the court. While we must be mindful of extraneous fact finding outside the record, particularly at the motion *614 to dismiss stage, here we need to only look to the specification, which describes the telephone unit and server as either performing basic computer functions such as sending and receiving data, or performing functions “known” in the art. In other words, as will be discussed below, the claimed functions are “well-understood, routine, activit[ies]’ previously known to the industry.” Id. at 2359 (quoting Mayo, 132 S. Ct. at 1294). In re TLI Commc’ns LLC Patent Litigation, 823 F.3d 607,613–614 (Fed. Cir. 2016). Appeal 2018-008267 Application 14/079,402 4 [I]n Content Extraction, we found that a recitation of the use of “existing scanning and processing technology to recognize and store data from specific data fields such as amounts, addresses, and dates” did not amount to significantly more than the “abstract idea of recognizing and storing information from hard copy documents using a scanner and a computer.” Here, Ameranth claims no more than the use of existing handwriting and voice capture technologies using a computer system. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1245 (Fed. Cir. 2016) (citations omitted). Finally, as to our citation to Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1377–78 (Fed. Cir. 2017), (Decision 8), this was cited to show that cases directed to payment processing absent technological implementation details have been found ineligible. Appellant does not dispute this, but attempts to distinguish the instant claims from that case. But Appellant’s reasoning is that of the recitation of physical devices we responded to supra, and this is equally unpersuasive here. As to the obviousness rejection, Appellant argues that eliminating the step in Frantz of transmitting data to the merchant from the centralized platform precludes the vendor being paid. Req. Reh’g 10. Frantz paragraph 14, as transcribed at Decision 15–16, explicitly describes the centralized platform as having all of the transaction detail. Although Frantz describes transmitting these to the merchant for processing, one of ordinary skill would have understood and appreciated the efficiency of bypassing the vendor (omitting that step) and simply transmitting the data to the credit card processor directly. Appeal 2018-008267 Application 14/079,402 5 CONCLUSION Nothing in Appellant’s request has convinced us that we have overlooked or misapprehended the case law as argued by Appellant. Accordingly, Appellant’s Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. To summarize, our decision is as follows: • We have considered the REQUEST FOR REHEARING. • We DENY the request that we reverse the Examiner as to claims 1–6. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Granted Denied 1–6 101 Eligibility 1–6 1–6 103 Frantz 1–6 Overall Outcome 1–6 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/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 Appeal 2018-008267 Application 14/079,402 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)(1). REHEARING DENIED