Trials@uspto.gov Paper No. 10 Paper No. 33
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`571-272-7822
`Filed: March 6, 2015
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`
`v.
`
` LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case CBM2014-00018
`Patent 8,037,158 B2
` ____________
`
`
`
`Before, KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and
` 37C.F.R. § 42.73
`
`
`
`
`571-272-7822
`Filed: March 6, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`
`v.
`
` LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case CBM2014-00018
`Patent 8,037,158 B2
` ____________
`
`
`
`Before, KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and
` 37C.F.R. § 42.73
`
`
`
`
`CBM2014-00018
`Patent 8,037,158 B2
`
`
`BACKGROUND
`
`On March 7, 2014, we entered a Decision to Institute (“Dec. to Inst.”)
`
`a trial in this proceeding on the ground that claims 9 and 10 are unpatentable
`
`under 35 U.S.C. § 101. In addition, we instituted a trial on the following
`
`grounds asserted under 35 U.S.C. § 103: claims 4–6 as unpatentable over
`
`Lawlor,1 Computerworld,2 and CORBA 1;3 claims 4–6 as unpatentable over
`
`Lawlor, Computerworld, and CORBA 2;4 claims 5 and 6 as unpatentable
`
`over Lawlor, Computerworld, CORBA1, and SNMP;5 claims 5 and 6 as
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`unpatentable over Lawlor, Computerworld, CORBA 2, and SNMP; claims
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`4–6 as unpatentable over EB,6 SFCU,7 and CORBA 1; claims 4–6 as
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`unpatentable over EB, SFCU, and CORBA 2; claims 5 and 6 as unpatentable
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`over EB, SFCU, CORBA 1, and SNMP; claims 5 and 6 as unpatentable over
`
`EB, SFCU, CORBA 2, and SNMP.
`
`
`1 Lawlor et al., U.S. Patent No. 5,220,501, issued June 15, 1993 (“Lawlor”).
`Ex. 1006.
`2 The Cyberbanks, Computerworld, 80 (June 26, 1995) ProQuest
`Telecommunications (“Computerworld”). Ex. 1007.
`3 Thomas J. Mowbray And Ron Zahavi, The Essential Corba: Systems
`Integration Using Distributed Objects (Robert Elliott ed., 1995)(“CORBA
`1”). Ex. 1009
`4 The Common Object Request Broker: Architecture And Specification, Rev.
`2.0, 1–463 (1995) (“CORBA 2”). Ex.1012.
`5 Jeffrey D. Case et al., Protocol Operations For Version 2 Of The Simple
`Network Management Protocol, 1–37 (1993) (“SNMP”). Ex. 1011.
`6 Allen H. Lipis et al., Electronic Banking, The Stock Market, 4th Edition,
`1–220, (1985) John Wiley & Sons, New York (“EB”). Ex. 1004.
`7 www.thefreelibrary.com/_/print/PrintArticle.aspx?id=17104850, (last
`visited Mar. 15, 2013) Stanford Federal Credit Union Pioneers Online
`Financial Services, (“SFCU”). Ex. 1005.
`
`
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`2
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`CBM2014-00018
`Patent 8,037,158 B2
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`In this Final Written Decision, we conclude that claims 9 and 10 do
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`not recite patent-eligible subject matter under 35 U.S.C. § 101. We further
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`conclude that claims 4–6 are unpatentable under 35 U.S.C. § 103.
`
`
`
`THE ’158 PATENT
`
`The ’158 Patent purports to provide “a method and apparatus for
`
`providing real-time, two-way transactional capabilities on the Web.” Ex.
`
`1001, Abstract. The ’158 Patent Specification states that “[a] ‘transaction’
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`for purposes of the present invention includes any type of commercial or
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`other type of interaction that a user may want to perform.” Id. at col. 5, ll.
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`22–25. The ’158 Patent also states that Figure 4A illustrates conceptually
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`the user value chain, depicting the types of transactions and the channels
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`through which the transactions are performed “today,” i.e., at least as early
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`as the priority date of the application that led to the ’158 Patent. Id. at col. 5,
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`ll. 19–25. Thus, Figure 4A represents a prior art value chain, rather than the
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`invention.
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`Figure 4B illustrates an embodiment of the invention in which a Web
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`merchant provides real-time transactional capabilities to users who access a
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`merchant’s services through switching sites on Web servers or on non-Web
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`network computer sites and cellular provider sites. Id. at col. 5, ll. 45–55.
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`The ’158 Patent Specification states that the embodiment shown in Figure
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`4B includes a service network running on top of a facilities network, namely
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`the Internet, the Web, or e-mail networks. Id. at col. 5, ll. 49–51. The
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`Specification further states that the following five components interact to
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`provide the service network functionality: an exchange, an operator agent, a
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`management agent, a management manager, and a graphical user interface.
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`Id. at col. 5, ll. 58–61.
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`3
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`CBM2014-00018
`Patent 8,037,158 B2
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`The difference between the prior art subject matter of Figure 4A and
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`embodiment of the invention in Figure 4B lies solely in the number of items
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`listed in the “Service Channels.” That is, in addition to the service channels
`
`in Figure 4A, Figure 4B also includes a TransWeb8 Exchange (hereinafter
`
`“Exchange”) that includes a Web page and point-of-service (POSvc)
`
`applications. The ’158 Patent states that “[a] POSvc application is an
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`application that can execute the type of transaction that the user may be
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`interested in performing.” Id. at col. 6, ll. 32–34. The type of services
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`offered by a POSvc application is determined by each Web merchant. Id. at
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`col. 7, ll. 1–2, 15–16.
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`The Exchange can reside on a web server or on a separate computer
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`system on the Internet with an Internet address. Id. at col. 6, ll. 16–20, ll.
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`49–55. The Exchange conceptually includes a switching component and an
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`object routing component, id. at col. 6, ll. 11–12, and may also include an
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`operator agent that interacts with a management manager, id. at col. 6, ll.
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`19–21. As previously noted, the switching site need not be a Web server but
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`may include non-Web network computer sites and cellular provider sites.
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`Id. at col. 5, ll. 54–58.
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`When the Exchange receives a consumer's request for a transactional
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`application, a graphical user interface displays on a Web page a list of
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`POSvc applications from which the user may select. Id. at col. 6, ll. 30–49.
`
`The ’158 Patent discloses that the embodiment of the invention supports
`
`
`8 The ’158 Patent refers to a TransWeb Exchange in Figure 4 and at column
`7, lines 55–56, describes the TransWeb™ Exchange as having a proprietary
`protocol (TransWeb™ Management Protocol (TMP)). Elsewhere, the ’158
`Patent uses the term “Exchange.”
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`4
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`Patent 8,037,158 B2
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`hypertext markup language (HTML), Virtual Reality Markup Language,
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`Java™, and other graphical user interface standards. Id. at col. 6, ll. 36–42.
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`By selecting a POSvc to activate, the user can access services and
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`perform transactions offered by that POSvc application, which can access
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`back-office data repositories. Id. at col. 6, l. 56 – col. 7, l. 42.
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`The ’158 Patent states that the connection between the user and the
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`services is managed by the Exchange, through an operator agent on a Web
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`server that ensures the availability of distributed functions and capabilities.
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`Id.at col. 6, ll. 62–67. However, as noted above, the ’158 Patent emphasizes
`
`that the Exchange may reside on a Web server or on a separate computer
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`system with an Internet address. Id. at col. 6, ll. 16–19, 49–55. The ’158
`
`Patent also states that a management manager, which may be on the
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`Exchange or on a separate computer system on the Internet, interacts with
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`the operator agent on the Exchange. Id. at col. 7, ll. 47–52.
`
` The Exchange and a management agent may act in various roles,
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`including client-server, peer-to-peer, or master-slave roles and constitute a
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`value-added network (VAN) switch. Id. at col. 7, ll. 43–47. The VAN
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`switch provides multiprotocol object routing, depending on the VAN
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`services chosen, using a proprietary protocol, the TransWeb™ Management
`
`Protocol (TMP). Id. at col. 7, ll. 53–56. However, the ’158 Patent does not
`
`describe TMP, except to state that it incorporates the same security features
`
`as the traditional Simple Network Management Protocol (SNMP). Id. at col.
`
`7, ll. 56–60. In addition, according to the ’158 Patent, TMP can incorporate
`
`s-HTTP, Java™, the WinSock API, or ORB with distributed on-line service
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`information bases (DOLSIBs) to perform object routing. Id. at col. 7, ll. 61–
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`66. Thus, object routing in the ’158 Patent is not limited to a specific
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`5
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`Patent 8,037,158 B2
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`implementation. The ’158 Patent, however, does not provide a description
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`of the proprietary TMP or how TMP incorporates these alternative
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`technologies.
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`In describing the DOLSIB, the ’158 Patent states that networked
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`object identities, each of which is assigned an Internet address based on the
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`IP address of the node at which the networked object resides, identify
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`information entries and attributes in the DOLSIB. Id. at col. 7, l. 65–col. 8,
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`l. 6. The Internet address assigned to a networked object identifies branches
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`in a hierarchical tree structure from a node, such as a Web server, and
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`establishes the object as IP reachable. Id. at col. 8, ll. 7–14. The proprietary
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`TMP utilizes this Internet address to uniquely identify and access the object
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`from the DOLSIB, although the mechanism TMP uses to accomplish this
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`task is not described. Id. at col. 8, ll. 16–18. Each object has a name, a
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`syntax that defines the abstract data structure corresponding to that object
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`and encoding that defines how the object is represented by the object type
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`syntax while being transmitted over the network. Id. at col. 8, ll. 19–30.
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`The ’158 Patent does not describe the syntax or encoding of objects.
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`The ’158 Patent also discusses a conceptually layered architecture of
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`the VAN switch in the context of “services.” Id. at col. 8, ll. 33–40. It is not
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`clear if the “services” in this conceptually layered architecture constitute the
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`“service network” previously discussed. However, the ’158 Patent provides
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`no physical description of such a network.
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`A “boundary service” interfaces the VAN switch, the Internet and the
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`Web and end user media devices, e.g., PCs, television, telephones, as well as
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`interfacing to an on-line service provider. Id. at col. 8, ll. 35–40. As an
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`open systems interconnection (OSI) application layer switch, the “switching
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`Patent 8,037,158 B2
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`service” represents the core of the VAN switch and facilitates connectivity
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`with the Internet (a public switched network) and private networks,
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`including back office networks. Id.at col. 8, ll. 44–52. The switching
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`service routes user connections to remote VAN switches, multiplexes, and
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`prioritizes requests and provides flow control. Id. at col. 8, ll. 45–50. Users
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`use “management services” to manage network resources and perform
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`administrative and maintenance functions. Id. at col 8, l. 56–67.
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`The “application service” contains application programs that deliver
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`customer services, such as POSvc applications. Id. at col. 9, ll. 1–4. We
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`note that the terms “application service” and “VAN service” are referenced
`
`in the ’158 Patent using reference designator 704. As mentioned above, the
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`’158 Patent describes “services” of the layered architecture of a VAN
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`switch. The description of the “VAN service” as providing functions
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`including communication services for both management and end users of the
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`network (id. at col. 9, ll. 12–15), indicates that the functions carried out by
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`the VAN switch may be carried out in a POSvc application. However, the
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`type of customer services offered by a POSvc application is determined by
`
`each Web merchant. Id. at col. 7, ll. 1–2, 15–16. Thus, as opposed to the
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`VAN service, we understand the “application service” is the service being
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`provided by the application, e.g., desired banking functions, rather than a
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`switching or communications functions.
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`7
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`CBM2014-00018
`Patent 8,037,158 B2
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`RELATED PROCEEDINGS
`
`This proceeding is related closely to SAP America, Inc. v. Pi-Net
`
`Int’l., Case CBM2013-00013, which also concerns the ’158 Patent.9 In
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`CBM2013-00013, Petitioner challenged claims 1–6 and 11 as unpatentable
`
`under 35 U.S.C. § 101, unpatentable under 35 U.S.C. § 112(b) and
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`unpatentable under 35 U.S.C. § 103 as unpatentable over the combination of
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`(1) Lawlor and Computerworld, (2) EB and Applicant’s Admitted Prior Art,
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`(3) SFCU and EB. SAP America, Inc. v. Pi-Net Int’l., CBM2013-00013
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`Petition at 10. We instituted a trial of claims 1–6 and 11 under 35 U.S.C.
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`§ 112, and on claims 1–3 and 11 as unpatentable over the combination of
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`Lawlor and Computerworld and EB and SFCU. SAP America, Inc. v. Pi-Net
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`Int’l., Case CBM2013-00013, slip op. at 36–37 (PTAB Sep. 19, 2013)
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`(Paper 15, Dec. to Inst.). We declined to institute on Petitioner’s challenges
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`to claims 4–6 under 35 U.S.C. § 101 and 35 U.S.C. § 103 because these
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`claims are limited to methods using “object routing.” Id. at 21, 27–28, and
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`32. On Sep. 18, 2014, we entered a Final Written Decision in CBM2013-
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`00013 in which we ordered that claims 1–3 and 11 are unpatentable under 35
`
`U.S.C. § 101, and are unpatentable under 35 U.S.C. § 103 over the
`
`combination of SFCU and EB and, separately, over the combination of
`
`
`9 The following proceedings in which Final Written Decisions have been
`rendered are also related: SAP America, Inc. v. Pi-Net International, Inc.,
`Case IPR2013-00194, which concerns U.S. Patent No. 8,108,492 B2 (“the
`’492 Patent”) and SAP America, Inc. v. Pi-Net International, Inc., Case
`IPR2013-00195, which concerns U.S. Patent No. 5,987,500 (“the ’500
`Patent”). The Specification of the ’492 Patent and the ’500 Patent is
`substantially the same as that of the ’158 Patent and claim constructions in
`those proceedings and in CBM2013-00013 have been applied in this
`proceeding.
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`
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`8
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`CBM2014-00018
`Patent 8,037,158 B2
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`Lawlor and Computerworld. SAP America, Inc. v. Pi-Net Int’l., Case
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`CBM2013-00013, slip op. at 15–18, 22–27 (PTAB Sep. 18, 2014) (Paper 61,
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`Final Written Decision). We further ordered that claims 1–6 and 11, which
`
`include claims 4–6 that are the subject of this proceeding, are unpatentable
`
`under 35 U.S.C. § 112(b) because the term “a routed transactional data
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`structure” in claim 1 is indefinite. Id. at 18–20. This decision, however,
`
`concerns only those challenges raised in the Petition in the current
`
`proceeding, i.e., that claims 9–10 do not recite patentable subject matter
`
`under 35 U.S.C. § 101 and that claims 4–6 are unpatentable under 35 U.S.C.
`
`§ 103.10
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`ILLUSTRATIVE CLAIM
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`
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`Claim 4, which depends from claim 1, is illustrative. Claim 4 recites
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`the added limitation on claim 1 that object routing is used to complete the
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`transfer of funds in a Web application. For convenience, claim 4 is written
`
`below with the limitations from claim 1 shown in italics.
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`4. The method of claim 1, [for performing a real time
`Web transaction from a Web application over a digital network
`atop the Web, the method comprising:
`providing a Web page for display on a computer system
`coupled to an input device;
`providing a point-of-service application as a selection
`within the Web page, wherein the point-of-service
`application provides access to both a checking and savings
`
`
`10 Although claims 4–6 were the subject of a final written decision in
`CBM2013-00013, all briefing was complete in this proceeding prior to entry
`of our final written decision in CBM2013-00013, neither party requested an
`oral hearing in this proceeding, and neither party made any motions
`concerning our resolution of claims 4–6 under 35 U.S.C. §103. Therefore,
`we exercise our discretion to address the patentability of claims 4–6 under
`35 U.S.C. § 103.
`
`
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`9
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`CBM2014-00018
`Patent 8,037,158 B2
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`account, the point-of-service application operating in a service
`network atop the World Wide Web;
`accepting a first signal from the Web user input device to
`select the point-of-service application;
`accepting subsequent signals from the Web user input
`device; and
`transferring funds from the checking account to the
`savings account in real-time utilizing a routed transactional
`data structure that is both complete and non-deferred, in
`addition to being specific to the point-of-service application,
`the routing occurring in response to the subsequent signals,]
`wherein object routing is used to complete the transfer of
`funds in a Web application.
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`CLAIM CONSTRUCTION
`
`We review the claim constructions that are material to this Final
`
`Written Decision:
`
`Web application
`
`We addressed the construction of this term in our Final Written
`
`Decision in IPR2013-00194. See SAP Am., Inc. v. Arunachalam, Case
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`IPR2013-00194, slip op. at 11–14 (PTAB Sep. 18, 2014) (Paper 67). We
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`apply the same construction in this proceeding. For the reasons discussed in
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`IPR2013-00194, we construe “Web application” to mean a computer
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`program to perform a certain type of work using the Web.
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`Point-of-service (POSvc) application
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`We addressed the construction of this term in our Final Written
`
`Decision in related case IPR2013-00194. See SAP Am., Inc. v.
`
`Arunachalam, Case IPR2013-00194, slip op. at 14-16 (PTAB Sep. 18, 2014)
`
`(Paper 67). We apply the same construction in this proceeding. Thus, we
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`construe POSvc application to mean a software program that facilitates
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`execution of transactions requested by a user.
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`10
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`CBM2014-00018
`Patent 8,037,158 B2
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`Service network running atop the World Wide Web
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`We addressed the construction of “service network (running on top of
`
`a facilities network)” in our Final Written Decision in related case IPR2013-
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`00194. See SAP Am., Inc. v. Arunachalam, Case IPR2014-00194, slip op. at
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`16–18 (PTAB Sep. 18, 2014) (Paper 67). In that proceeding, we construed
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`“service network” to mean a network on which services, other than
`
`underlying network communication services, are provided. We apply a
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`similar construction to this similar term in this proceeding. We construe
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`“service network running atop the World Wide Web” to mean a network on
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`which services other than underlying network communications services are
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`provided over the Web.
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`Utilizing a routed transactional data structure that is both complete
`and non-deferred
`
`In our Decision to Institute, we construed this term to mean “using a
`
`data structure that facilitates switching a user who selects a transactional
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`application to a service provider program that provides immediate
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`processing.” Dec. to Institute 11–12. In our Final Written Decision in
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`CBM2013-00013, we reconsidered our construction of this term and
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`concluded that “utilizing a routed transaction data structure” encompasses
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`using a data structure that facilitates switching the processing of
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`information associated with a user selected transactional application that
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`provides immediate processing. We apply this broadest reasonable
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`construction for purposes of our analysis under 35 U.S.C. §§ 101 and 103 in
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`this proceeding.11
`
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`11 In CBM2013-00013, we also concluded that this term is indefinite under
`35 U.S.C. § 112, second paragraph. That challenge is not before us in this
`proceeding, although we determined that claims 4–6 are unpatentable over
`
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`11
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`Object routing
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`In related proceeding CBM2013-00013, we construed “object
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`routing” in claim 4 to mean the use of individual network objects to route a
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`user from a selected transactional application to the processing provided by
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`the service provider. We apply the same construction in this proceeding.
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`Virtual Information Store
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`In our Decision to Institute, we construed “virtual information store”
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`to mean an information store in which information entries and attributes are
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`associated with a networked object identity. We apply that construction in
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`this final written decision.
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`TECHNICAL INVENTION
`
`A covered business method patent is “a patent that claims a method or
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`corresponding apparatus for performing data processing” or other operations
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`used in the practice, administration, or management of a financial product or
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`service. 37 C.F.R. § 42.301(a). A covered business method patent “does not
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`include patents for technological inventions.” Id. A technological invention
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`is determined by considering whether the subject matter of a particular claim
`
`as a whole recites a technical feature that is novel and unobvious over the
`
`prior art, and solves a technical problem using a technical solution. 37
`
`C.F.R. § 42.301(b).
`
`
`35 U.S.C. § 112, second paragraph in our final written decision in that
`proceeding. SAP America, Inc. v. Pi-Net Int’l., Case CBM2013-00013, slip
`op. at 18–20, 29 (PTAB Sep. 18, 2014) (Paper 61, Final Written Decision).
`
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`12
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`In our Decision to Institute, we cited to our construction of claim 1 in
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`our Decision to Institute CBM2013-00013, where we noted that because
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`claim 1 recites using a data structure that facilitates switching so that a
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`financial transaction can occur, we were not persuaded that claim 1 recites a
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`technical invention. Dec. to Inst. 20–21. As discussed above, in our Final
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`Written Decision in CBM2013-00013 we reconsidered our construction of
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`claim 1 and determined that the claim is drawn to using a data structure that
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`facilitates switching the processing of information associated with a user
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`selected transactional application. We also reconsidered whether claim 1 is
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`drawn to a technological invention and determined that it is not. SAP
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`America, Inc. v. Pi-Net Int’l., CBM2013-00013, slip op. at 13–15 (PTAB
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`Sep. 18, 2014) (Paper 61, Final Written Decision).
`
`Patent Owner contends that claim limitations such as a Web
`
`application, a point-of-service (“POSvc”) application operating in a service
`
`network atop the World WideWeb, and a routed transactional data structure,
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`indicate that the claim is directed to a technological invention. PO Resp.
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`22–30. Patent Owner contends that performing a Web transaction not in
`
`general, but specifically from a Web application in an OSI application layer
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`running on top of a facilities network and that provides VAN services is a
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`technological feature or solution. Id. at 25. Patent Owner also contends that
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`this approach solves a technological problem, because at the time of the
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`invention, there was no mechanism for performing a robust, real-time
`
`transaction with a bank, such that the bank could not be a true ‘Web
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`merchant’ capable of providing a complete transactional service on the Web.
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`Id.
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`13
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`The fact that claim 1 recites a transaction is performed from a Web
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`application or over a particular network does not mean that the claim is
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`drawn to a technological invention. Claim 1 is directed to performing a real-
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`time Web transaction. Claim 1 is not drawn to the Web application or the
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`network. It is drawn to a method of performing the transaction. We do not
`
`find that the recited limitations include technical features that result in claim
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`1 being drawn to a technological invention.
`
`The steps of the method recited in claim 1 include providing a
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`webpage for display, providing at least one application the user can select to
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`access checking and savings accounts, accepting signals from an input
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`device, and transferring funds. There is no technological invention in these
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`steps. Patent Owner argues, however, that certain elements of these steps
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`transform the claim into a technological invention. For example, citing the
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`prosecution history, Patent Owner contends that, because claim 1 recites a
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`“Web application” and a “POSvc application” operating over “a service
`
`network atop the web” utilizing “routing of a transactional data structure,”
`
`claim 1 was distinguished over the prior art based on technical features. PO
`
`Resp. 23–24. Patent Owner further argues that claim 1 solves a
`
`technological problem because the ’158 Patent describes limitations in the
`
`prior art as lacking a mechanism for performing a robust, real-time
`
`transaction with a bank. Id. at 25–26. Patent Owner argues that using a data
`
`structure routed in the application layer of the OSI model as a complete data
`
`structure within information entries and attributes specific to the POSvc
`
`application is a technical feature of the claim that is not drawn to Web
`
`transactions generally, but to a specific implementation of Web transactions,
`
`and solves technological problems identified in the Specification. Id. at 27–
`
`
`
`14
`
`
`
`CBM2014-00018
`Patent 8,037,158 B2
`
`28. Patent Owner’s citations to the Specification describe purported
`
`shortcomings in performing transactions, e.g., disadvantages of CGI scripts.
`
`The discussion of such shortcomings in the prior art does not change the
`
`nature of claim 1 as being drawn to a method of performing a transaction by
`
`carrying out certain non-technical steps. As we have construed the claim,
`
`the recited POSvc application is a software program that facilitates
`
`execution of transactions requested by a user and the recited service network
`
`is a network on which services other than underlying network
`
`communications services are provided over the Web. Utilizing a routed
`
`transactional data structure that is both complete and non-deferred means
`
`using a data structure that facilitates switching the processing of information
`
`associated with a user selected transactional application that provides
`
`immediate processing. A user’s selection of a transactional application
`
`operates to transfer processing to a service provider program, which, in turn,
`
`provides immediate processing. None of these features changes the non-
`
`technological nature of claim 1. Thus, the subject matter of claim 1 is
`
`directed to a non-technical invention, i.e., simply transferring funds using
`
`known technologies.
`
`CHALLENGES UNDER 35 U.S.C. § 101
`
` Claims 9 further limits claim 1 by reciting that the transaction is a
`
`loan requested from a lender across the Web from a Web application. Claim
`
`10 further limits claim 1, reciting that the Web transaction is vehicle
`
`purchased with bank financing across the Web from a Web application.
`
`Patent Owner asserts that claims 9 and 10 are patentable under 35 U.S.C.
`
`§ 101 because claim 1 recites patentable subject matter. PO Resp. 30–35.
`
`
`
`15
`
`
`
`CBM2014-00018
`Patent 8,037,158 B2
`
`
`In CBM2013-00013, we analyzed the subject matter recited in claim 1
`
`under 35 U.S.C. §101, applying the most recent guidance from the Supreme
`
`Court in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014),
`
`which was decided after the Patent Owner Response was filed. To
`
`determine whether a claim recites patent-ineligible subject matter, the first
`
`step is to determine whether the subject claim is drawn to a law of nature, a
`
`natural phenomenon, or an abstract idea. Id. at 134 S. Ct. 2356 (citing Mayo
`
`Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
`
`1296–97 (2012)). If the claim is directed to patent-ineligible subject matter,
`
`the second step is to 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. Id. This second step of the analysis searches for 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. (internal quotations omitted).
`
`Applying the broadest reasonable construction, claim 1 recites a
`
`method of carrying out a transaction from a Web application (a computer
`
`program to perform a certain type of work on the Web) in which a user
`
`selects a POSvc application (a software program that facilitates execution of
`
`transactions requested by a user). Thus, claim 1 recites an abstract method,
`
`i.e., performing a real-time Web transaction by displaying and providing at
`
`least one application a user selects to access checking and savings accounts,
`
`and transferring funds (i.e., debiting or crediting) in response to user signals
`
`from an input device. Patent Owner contends that our Decision to Institute
`
`ignores concrete limitations of claim 1, e.g., the routed transactional data
`
`
`
`16
`
`
`
`CBM2014-00018
`Patent 8,037,158 B2
`
`structures, the point of service application running on only a particular OSI
`
`model layer. PO Resp. 35.
`
`According to Patent Owner, we misunderstand that:
`
`[c]laim 1 requires that the real-time Web transaction of
`transferring funds from a checking to savings account from a
`Web application be accomplished through OSI application layer
`routing of a transactional data structure as a whole, as a
`complete data structure with information entries and attributes
`specific to a POSvc application (unlike in CGI, where field by
`field is sent as standard I/O) from a point-of-service application
`as a selection within the Web page, and the complete data
`structure with information entries and attributes routed in the
`OSI application layer in a non-deferred manner and wherein the
`point-of-service application provides access to both a checking
`and savings account, the point-of-service application operating
`in a service network atop the World Wide Web.
`
`PO Resp. 31.
`
`These specific features are not recited in claim 1. Patent Owner’s
`
`arguments are based on a claim construction of “routed transactional data
`
`structure” that we declined to adopt. Patent Owner argues that, even
`
`applying the construction in our Decision to Institute, we ignore the
`
`limitation in claim 1 that the “structure be routed.” PO Resp. 32. However,
`
`the only mention of “data structure” in the Specification is a statement that
`
`“[t]he syntax of an object type defines the abstract data structure
`
`corresponding to that object type.” Ex. 1001, col. 8, ll. 27–39 (emphasis
`
`added). Thus, the Specification states that, even if an object is considered to
`
`be physical, its data structure is abstract. In addition, although the syntax of
`
`an object type may impose a data structure on objects of a particular type,
`
`the Specification does not mention a transactional object type.
`
`
`
`17
`
`
`
`CBM2014-00018
`Patent 8,037,158 B2
`
`
`Patent Owner discusses the limitation “routed transactional data
`
`structure” extensively, arguing that the claim
`
` [r]equires routing of that data structure in OSI application layer
`as a whole (unlike in CGI, where field by field is sent as
`standard I/O) from a point-of-service application as a selection
`within the Web page, wherein the point-of-service application
`provides access to both a checking and savings account the
`point-of service network operating in a service network atop the
`Web.
`PO Resp. 32–33. (emphasis in original).
`
`These features are not recited in claim 1. Claim 1 makes no mention
`
`of routing a data structure as a whole, does not compare a routed data
`
`structure to standard I/O, and recites only that the point of service
`
`application provides access to the checking and savings account. Although
`
`claim 1 recites that transferring funds from checking to savings utilizes a
`
`routed transactional data structure that is specific to the POSvc application,
`
`claim 1 does not recite specifically what steps are taken to transfer funds in
`
`this manner. This recitation does not impose a meaningful limitation on the
`
`scope of claim1 because it does not play a significant part in permitting the
`
`claimed method to be performed.12 See SiRF Tech. Inc. v. Int’l Trade
`
`Comm., 601 F.3d 1319, 1333 (Fed. Cir. 2010). The Specification does not
`
`describe clearly how a data structure is transactional, as opposed to non-
`
`transactional, or routed, as opposed to non-routed. To the extent that
`
`“utilizing a routed transactional data structure that is both complete and non-
`
`deferred,” can be construed, we have interpreted it to mean using a data
`
`structure that facilitates switching the processing of inf
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