Ex Parte Lin et al

Patent Trial and Appeal Board

Dec 7, 2017

12286488 (P.T.A.B. Dec. 7, 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.
12/286,488 09/30/2008 Gloria Lin 8802.187,NPUS00_P6713US1 5858
150004 7590 12/11/2017
DENTONS US LLP - Apple
P.O. Box 061080
Wacker Drive Station, Willis Tower
Chicago, IL 60606
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/11/2017 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):
patents.us@dentons.com
dentons_PAIR @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLORIA LIN, AMIR MAHMOOD MIKHAK,
TAIDO LANTZ NAKAJIMA, SEAN ANTHONY MAYO, and
MICHAEL ROSENBLATT
Appeal 2016-0026581
Application 12/286,488
Technology Center 3600
Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-8, 11-14, 22-24,
26-30, 36, 37, 42-51, and 53-57. We have jurisdiction to review the case
under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify “Apple, Inc.” as the real party in interest. Appeal
Br. 3.
Appeal 2016-002658
Application 12/286,488
The invention relates “generally to peer-to-peer transactions and,
more particularly, to various systems, methods, and electronic devices
configured to initiate and process such transactions.” Spec. ^ 1.
Independent claims 1, 22, 42, and 57 are the sole independent claims.
Independent claim 1 is illustrative of the claimed subject matter:
1. A method for receiving a payment in a peer-to-peer
transaction between a payee and a payor comprising:
determining, using a processor of a payee handheld
electronic device, an amount of a payment to be requested from
the payor in response to a first input provided by the payee to a
peer-to-peer transaction application executed on the payee
handheld electronic device by the processor;
using the processor of the payee handheld device to cause
an electronic payment request to be transmitted from a
communication interface of the payee handheld electronic device
to the payor, wherein the electronic payment request is
configured to indicate the requested payment amount to the
payor;
acquiring payment information provided by the payor, the
payment information comprising a default payment account
selected by the payor in response to the electronic payment
request;
determining, using the processor of the payee handheld
electronic device, a default crediting account for receiving the
payment; and
transmitting a request from the payee handheld electronic
device to obtain authorization for the payment of the requested
payment amount from the payor to the payee,
wherein transmitting the request to obtain authorization
for the payment, comprises transmitting the default payment
account and the default crediting account from the payee
handheld electronic device to at least one external server that is
separate from both the payee handheld electronic device and the
payor handheld electronic device, the at least one external server
being further configured to determine that the default payment
account and the default crediting account are incompatible;
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receiving, from the external server, a notification that the
default crediting account of the payee handheld electronic device
and the default payment account of the payor handheld electronic
device that are incompatible with one another;
receiving, using an interface element of the payee
handheld electronic device, a selection of an alternative crediting
account that is compatible with the default payment account;
wherein the at least one external server is further
configured to authorize the payment from the default payment
account and to credit the payment to the alternative crediting
account if the payment is authorized.
App. Br. 20-21 (Claims Appendix).
Claims 1-8, 11-14, 22-24, 26-30, 36, 37, 42-51, and 53-57 are
rejected under 35 U.S.C. § 101 as failing to recite patent-eligible subject
matter.
We AFFIRM-IN-PART.
II. ANALYSIS
1. Overarching Legal Framework
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’l, 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-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)).
In accordance with that framework, we first determine whether the claim is
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“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.”).
In determining what a claim is “directed to,” our reviewing court has
cautioned as follows:
[Describing the claims at such a high level of abstraction and
untethered from the language of the claims all but ensures that
the exceptions to § 101 swallow the rule. See Alice, 134 S. Ct. at
2354 (noting that “we tread carefully in construing this
exclusionary principle [of laws of nature, natural phenomena,
and abstract ideas] lest it swallow all of patent law”); cf.
Diamond v. Diehr, 450 U.S. 175, 189 n. 12, 101 S. Ct. 1048, 67
L.Ed.2d 155 (1981) (cautioning that overgeneralizing claims, “if
carried to its extreme, make[s] all inventions unpatentable
because all inventions can be reduced to underlying principles of
nature which, once known, make their implementation
obvious”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
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The following method is then used to determine whether what the
claim is “directed to” is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were
decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355-57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (footnote omitted).
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.
2. Analysis
We are unpersuaded by the Appellants’ arguments (App. Br. 9-15;
Reply Br. 3-10) that the Examiner erred in asserting the claims are directed
to receiving a specific type of a payment in a peer-to-peer transaction
between a payee and a payor (fulfillment of a contract), “which is considered
to be an abstract idea, inasmuch as such activity is considered to be a
fundamental economic practice,” and does not constitute “significantly
more” because “[t]he specifics and details of the process recited in the
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claims do not change the abstract idea into something concrete.” Ans. 11-
17. For the moment, we focus our analysis on independent claim 1 only,
however, our analysis is applicable to all pending claims, unless indicated
otherwise.
The Appellants assert that the Examiner’s characterization of
independent claim 1 is directed to receiving a specific type of a payment in a
peer-to-peer transaction between a payee and a payor (fulfillment of a
contract) is “unfairly simplistic and overbroad.” App. Br. 11; Reply Br. 3—4.
In making that assertion, however, the Appellants do not articulate
sufficiently what is “unfairly simplistic and overbroad” concerning the
Examiner’s characterization. At best, the Appellants list some limitations,
but fail to specify the manner in which those limitations should inform any
modifications to the Examiner’s characterization. Instead, we discern that
the Examiner’s characterization appears to largely acknowledge the
preamble, and then adds the words “a specific type” to account for the
language recited in the two receiving steps, while properly ignoring generic
computer components. Absent more specific assertions made by the
Appellants, we are unpersuaded the Examiner has erred in this regard.
The Appellants assert next that, unlike the abstract concepts of risk
hedging and intermediated settlement identified in Bilski and Alice,
respectively, independent claim 1 is distinguishable because it involves a
solution for a uniquely modemly created problem concerning mobile
payments. App. Br. 12. The Appellants’ assertion is misplaced, for we are
unclear as to how the Examiner’s characterization of independent claim 1, as
directed to receiving a specific type of a payment in a peer-to-peer
transaction between a payee and a payor (fulfillment of a contract), requires
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mobile payments. By its own terms, the Examiner’s characterization of
independent claim 1 encompasses payment of any type, and the Appellants
have not shown why analogizing such “payment” to risk hedging and
intermediated settlement, identified in Bilski and Alice, respectively, is in
error. Indeed, we would opine that the Examiner identifies an economic
concept, payment, even more fundamental than risk hedging or
intermediated settlement.
Insofar as the Appellants may, perhaps, be asserting that “peer-to-peer
transaction” is a term of art limited to computerized devices, bringing the
Examiner’s characterization squarely into the realm of computers, we are
unpersuaded. While the Appellants may certainly be attempting to limit
“peer-to-peer transaction” to transaction made using certain computerized
devices and protocols, the specification is not so limiting. See, e.g., ^ 7
(“The present disclosure generally relates to various techniques for
performing peer-to-peer transactions using a portable device.”); ^ 10 (“[T]he
presently described techniques, which may include methods, systems, and
devices, may provide for a convenient method and system for performing
peer-to-peer financial exchanges . . . .”); 83, 128, 135.
The Appellants assert relatedly that independent claim 1 provides a
service that can only be provided by modem technology, in that the inability
to complete payments arises because of digital interfaces. App. Br. 14-15.
As an initial matter, we are unclear as to why the inability to complete
payments arises because of digital interfaces, as we discern that certain
reasons preventing completion of payments, such as mismatches in currency
or a lack of an account at the requisite financial institution, existed long
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before the advent of digital interfaces. Indeed, the Appellants admit as
much, as follows:
The closest analogy to a long standing practice would have been
for a consumer to look through a variety of credit cards, debit
cards, pre-paid cards, gift cards, etc. to determine a compatible
method of payment to a payee. However, manually looking
through every card is inconvenient at best and oftentimes does
not include complete information about account compatibility.
Further, this practice does not take into account the modem
challenge that many payment accounts are no longer associated
with a physical card that can be browsed.
App. Br. 14. The fact that such an action may have been inconvenient, or
does not take into account complexities of modem variations, does not
override the existence of the basic premise itself. Regardless, however,
again, the Appellants’ assertion is misplaced, as the Examiner’s
characterization of independent claim 1, as directed to receiving a specific
type of a payment in a peer-to-peer transaction between a payee and a payor
(fulfillment of a contract), does not involve digital interfaces.
The Appellants assert further that independent claim 1 recites steps
that are not recited in the claims of Bilski and Alice determined to be patent-
ineligible. App. Br. 12-13. The Appellants’ assertion is misplaced, as while
that is almost certainly tme of any claim not identified in Bilski or Alice, the
Appellants have not explained sufficiently why any differences in claim
language are relevant.
The Appellants assert additionally that the independent claim 1 is
directed to more than performing a financial transaction, as follows: “[T]he
invention makes an initial determination of which account can be used based
on far more information than that available to a human at a point of
payment, since the compatibility of various accounts, some or all of which
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may be non-currency accounts, may only be determined after
communication with account providers.” App. Br. 14. The Appellants’
assertions are misplaced, as they are not commensurate in scope with the
claim. Specifically, the Appellants have not identified sufficiently the
limitations of independent claim 1 that recite “far more information than that
available to a human at a point of payment.” As best as we are able to
ascertain, those limitations may be concerning the incompatibility of the
default payment account and the default crediting account, however, we are
unclear as to why that information is “far more information than that
available to a human at a point of payment,” in that the claim later recites
that such information is, in fact, relayed to the payee.
In its Reply Brief, the Appellants assert that the Examiner improperly
trivializes entire limitations of independent claim 1, as well as the order of
those limitations, by asserting, in a conclusory manner, that they merely
recite “comparing new and stored information using rules to identify
options” or “using categories to organize, store, and transmit information,”
when, in fact, the combination has been determined to be novel and non-
obvious. Reply Br. 5-9. While the Appellants’ assertions may have some
merit, they are misplaced, as even if the Examiner’s above assertions are
improperly conclusory, or the combination is novel and non-obvious, it does
not alter the fact that the Appellants have not met their burden of showing
persuasively that independent claim 1 is directed to receiving a specific type
of a payment in a peer-to-peer transaction between a payee and a payor
(fulfillment of a contract), and that such a characterization is not a
fundamental economic concept.
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The Appellants assert relatedly that “the relevant limitations do not
even compare data, which only highlights Appellant’s assertion that the
Examiner gave little consideration to the actual claim limitations.” Reply
Br. 6. We disagree. For example, independent claim 1 recites “receiving,
from the external server, a notification that the default crediting account of
the payee handheld electronic device and the default payment account of the
payor handheld electronic device that are incompatible with one another.”
We are unclear as to why such a step would not involve a comparison
between the default crediting account of the payee and a listing of crediting
accounts compatible with the default payment account of the payor. The
other claim limitations suffer from the same deficiency.
The Appellants assert further that it is improper to discount computer-
based limitations unless they are claimed in a generic manner, and that the
Examiner has not provided a sufficient analysis to show that those computer-
based limitations are generic. Reply Br. 5-6. We disagree. While the
Examiner’s analysis may, perhaps, be short, we are persuaded that the
Examiner’s position is conveyed in a manner sufficient to provide notice to
the Appellants. Fundamentally, the problem is that independent claim 1
recites a step, that does not appear to require a computer component for
completion, and then merely adds a recitation of a computer component,
without providing any further detail as to how the computer component
implements that function. Under those circumstances, we are hard-pressed
to characterize such an addition as anything other than a “generic computer
component.” For example, independent claim 1 recites “receiving, using an
interface element of the payee handheld electronic device, a selection of an
alternative crediting account that is compatible with the default payment
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account.” When the computer portion is removed, we are left with
“receiving ... a selection of an alternative crediting account that is
compatible with the default payment account.” We are unclear as to why a
computer is needed to implement this step. To that, we do not discern that
the addition of the words “using an interface element of the payee handheld
electronic device” indicates any more than a generic computer component
for implementing the aforementioned step. The other claim limitations
suffer from the same deficiency.
The Appellants assert additionally the following:
[(1)] The claims in the instant application do not preempt
all forms of contracts, or all payment transactions, or even all
peer-to-peer payment transactions. [(2)] Additionally, the claims
do not merely apply the Abstract idea in a new environment.
Further, the claims do not merely apply making a payment in a
peer-to-peer environment. Accordingly the claimed invention
does not foreclose future innovation involving payments, even in
the field of peer-to-peer payments.
Reply Br. 7. For (1), as an initial matter, we note that the lack of preemption
is not dispositive in a patent eligibility analysis. Ariosa 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 ecommerce
setting do not make them any less abstract.”). And, “[wjhere 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. In any case,
however, the assertion is misplaced, as the Appellants have not shown that
independent claim 1 does not preempt receiving a specific type of a payment
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in a peer-to-peer transaction between a payee and a payor (fulfillment of a
contract).
For (2), we disagree as, for the reasons set forth above, we are
unpersuaded the Examiner erred in asserting that independent claim 1
merely applies to receiving a specific type of a payment in a peer-to-peer
transaction between a payee and a payor (fulfillment of a contract) in a
generic computerized environment.
The Appellants assert also that independent claim 1 recites
“significantly more,” because of the following:
The limitations in the claims allow a handheld electronic
device to learn and make a decision about the compatibility of a
crediting account and then authorize those payments when the
crediting account and payment account are compatible. These
steps cannot be considered mere instructions and/or generic
computer activity because the invention dynamically determines
and authorizes payments between compatible accounts based on
what the handheld electronic device has learned from the payee
as well as information beyond what a payee would have known
at the point of payment.
App. Br. 15-17; Reply Br. 9-10. We disagree because, as noted above, the
Appellants admit that determining compatibility of a crediting account is a
long standing, if inconvenient, practice. Furthermore, and more importantly,
the Appellants’ assertions are not commensurate in scope with the claim, as
the Appellants’ have not shown sufficiently how the claim recites a handheld
electronic device “learning,” “making a decision,” or “authorizing” anything
“dynamically.” Specifically, the “learning” appears to be no more than a
generic computer applying the recited rules, with no further technical details
on how such a rule is implemented by the generic computer, and the
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“making a decision” and “authorizing” are done by human input, albeit via
input entered by a human into computerized components.
For dependent claims 4, 13, 27, and 45, the Appellants assert that the
recitation of one of near-field communications and non-cash accounts
constitutes “significantly more.” App. Br. 17-18. We disagree with the
Appellants, and, instead, agree with and adopt the Examiner’s responsive
findings and rationales, as set forth on pages 18-19 of the Answer.
For dependent claims 6-8, the Appellants assert that the recitation of
“acquiring an image of a payment instrument and extracting payment
information data from the acquired image” constitutes “significantly more.”
Reply Br. 7-8. The Examiner asserts that these claim limitations
“correspond to comparing new and stored information and using rules to
identify options and using categories to organize, store and transmit
information (identified as an example of abstract idea in the 2014 Interim
Guidance on Patent Subject Matter Eligibility).” Ans. 8. No further analysis
of dependent claims 6-8 is provided in either the Final Rejection or Answer.
We are persuaded that the Examiner has not shown sufficiently how
“acquiring an image” fits into the above rubric.
We sustain the Examiner’s rejection of claims 1-5, 11-14, 22-24, 26-
30,36, 37, 42-51, and 53-57.
We do not sustain the Examiner’s rejection of claims 6-8.
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DECISION
We AFFIRM the Examiner’s rejection of claims 1-5, 11-14, 22-24,
26-30, 36, 37, 42-51, and 53-57.
We REVERSE the Examiner’s rejection of claims 6-8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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