Monday, December 09, 2013

Loss under 35 USC 101 dooms appellant in Shaper

In Ex parte Shaper, all 20 claims were found not patentable under 35 USC 101, even though appellant prevailed on 112 P2 issues.

We note that claim 1 does not require that the computer perform the guaranteeing step. Therefore, we find that this recitation of a “computer” is, at best, a nominal recitation of a machine and provides no meaningful limits on the scope of the claim. See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972) and Parker v. Flook, 437 U.S. 584, 590 (1978).

Second, Appellant argues that transforming transaction data into predictive data satisfies the transformation test. However, “[t]he mere manipulation or reorganization of data . . . does not satisfy the transformation prong.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).

The appellants prevailed on the rejection under 112 P 2:

A claim is considered indefinite under 35 U.S.C. § 112, second paragraph, if it does not reasonably apprise those skilled in the art of its scope. IPXL Holdings, L.L.C. v., Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005). Only when a claim remains insolubly ambiguous, without a discernible meaning after all reasonable attempts at construction, must a court declare it indefinite. ExxonResearch & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).

As to obviousness:

At the crux of these arguments, is a dispute as to whether one of ordinary skill in the art would have found it obvious to use a third-party to guarantee against the risk of non-payment in card-not-present transactions, given the teachings of the prior art. (...)

Given this, we agree with the Examiner that one of ordinary skill in the art would have found it obvious to use a third-party guarantor of card-present transactions in a card-not-present transaction. We note that the Appellant’s own Specification describes that third-party guarantors for checks (another type of payment method) were previously known in the art. Spec. 1:19-23. We find that the Examiner has established a prima facie showing of obviousness.

To rebut the Examiner’s prima facie showing of obviousness, the Appellant submits evidence of secondary considerations of unexpected results or unpredictability.


To be given substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore we must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). Here, inventor Mr. Shaper’s Affidavit merely asserts, in pertinent part, that:

1) “the level in risk involved in accepting “card not presented” transactions for a merchant is at least an order of magnitude beyond that for card presented transactions;”
2) “it was not obvious that my invention would work for its intended purpose;” and
3) “it was necessary to test prototypes of my invention to prove to myself, and to commercial entities interested in implementing the invention, that the invention would work for its intended purpose.”
Evidence Appx. Attachment F, p. 2. Mr. Shaper’s Affidavit does not provide any details regarding the
tested prototypes or invention mentioned in the Affidavit in order to establish a nexus with the claimed invention.

As to teaching away

Finally, as to the Appellant’s numerous arguments that the prior art teaches away from the Examiner’s combination (for example see App. Br. 17),

A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (explaining that when the prior art teaches away from a combination, that combination is more likely to be nonobvious). We see nothing in Nair, Weller, or Gopinathan that discourages or criticizes the Examiner’s proposed modification of Nair to include card-not-present transactions.


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