Dominic Crosthwaite et al.Download PDFPatent Trials and Appeals BoardOct 24, 201913858595 - (D) (P.T.A.B. Oct. 24, 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. 13/858,595 04/08/2013 Dominic Crosthwaite 03-6144-C2 7463 63710 7590 10/24/2019 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 EXAMINER RANKINS, WILLIAM E ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 10/24/2019 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): lkorovich@cantor.com patentdocketing@cantor.com phowe@cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOMINIC CROSTHWAITE, LEWIS C. FINDLAY and ADAM BURGIS ____________ Appeal 2018-006090 Application 13/858,5951 Technology Center 3600 ____________ Before ROBERT E. NAPPI, JOHN A. EVANS, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4, 10–12, and 15–18, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Cantor Index, LLC as the real party in interest. App. Br. 3. We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2018-006090 Application 13/858,595 2 STATEMENT OF THE CASE Introduction The present invention relates to “online accounts and, more particularly, to a system and method for establishing and providing access to various types of online accounts.” Spec. ¶ 1. Claim 1 is exemplary: 1. A method comprising: transmitting, by at least one processor, to a workstation, one or more web pages; receiving, by the at least one processor, a request to open an account on an online platform for placing online bets; in response to receiving the request to open the account, transmitting, by the at least one processor, a request to the workstation to provide via one or more web pages identification verification information; transmitting, by the at least one processor, to the workstation, terms and conditions of the platform; receiving, by the at least one processor, an indication that the workstation activated a web link on a web page, wherein activation of the web link causes a submission of identification information provided by the workstation and signifies acceptance of the terms and conditions; generating, by the at least one processor, an account decision matrix in a memory; generating, by the at least one processor, a credit check rules table in the memory; Appeal 2018-006090 Application 13/858,595 3 searching, by the at least one processor, the account decision matrix and the credit check rules table for information that corresponds to an individual; approving, by the at least one processor, the request to open an account on the platform based at least partially on the search of the account decision matrix and the credit check rules table stored in the memory; responsive to approving the request to open the account on the platform, establishing by the at least one processor the account for the workstation including establishing a user ID and a password; and in response to receiving the user ID and the password from the workstation, establishing, by the at least one processor, a communication session during which the workstation has access to the online platform to place bets. Rejection2 Claims 1, 4, 10–12, and 15–18 are rejected under 35 U.S.C. § 101 because they are directed to patent-ineligible subject matter. Final Act. 3–5. ANALYSIS3 2 Throughout this opinion, we refer to the (1) Final Office Action dated Sept. 14, 2017 (“Final Act.”); (2) Appeal Brief dated Feb. 12, 2018 (“App. Br.”); (3) Examiner’s Answer dated Mar. 27, 2018 (“Ans.”); and (4) Reply Brief dated May 24, 2018 (“Reply Br.”). 3 To the extent Appellant advances new arguments in the Reply Brief without showing good cause, Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2). Appeal 2018-006090 Application 13/858,595 4 35 U.S.C. § 101 We disagree with Appellant’s arguments. To the extent consistent with our analysis below, we adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer. Section 101 of the Patent Act provides “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“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.”); see also 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.”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); Appeal 2018-006090 Application 13/858,595 5 mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a Appeal 2018-006090 Application 13/858,595 6 patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev. 08.2017, 2018) (Step 2A, Prong 2). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54–56. Turning to Step 2A, Prong 1 of the Guidance, claim 1 (with emphases) recites: 1. A method comprising: Appeal 2018-006090 Application 13/858,595 7 transmitting, by at least one processor, to a workstation, one or more web pages; receiving, by the at least one processor, a request to open an account on an online platform for placing online bets; in response to receiving the request to open the account, transmitting, by the at least one processor, a request to the workstation to provide via one or more web pages identification verification information; transmitting, by the at least one processor, to the workstation, terms and conditions of the platform; receiving, by the at least one processor, an indication that the workstation activated a web link on a web page, wherein activation of the web link causes a submission of identification information provided by the workstation and signifies acceptance of the terms and conditions; generating, by the at least one processor, an account decision matrix in a memory; generating, by the at least one processor, a credit check rules table in the memory; searching, by the at least one processor, the account decision matrix and the credit check rules table for information that corresponds to an individual; approving, by the at least one processor, the request to open an account on the platform based at least partially on the search of the account decision matrix and the credit check rules table stored in the memory; responsive to approving the request to open the account on the platform, establishing by the at least one processor the account for the workstation including establishing a user ID and a password; and Appeal 2018-006090 Application 13/858,595 8 in response to receiving the user ID and the password from the workstation, establishing, by the at least one processor, a communication session during which the workstation has access to the online platform to place bets. All of the italicized limitations are associated with establishing an account. For example, “transmitting . . . one or more . . . pages,” “receiving . . . a request to open an account on an . . . platform for placing . . . bets,” “in response to receiving the request to open the account, transmitting . . . a request to . . . to provide via one or more . . . pages identification verification information,” and “transmitting . . . terms and conditions of the platform” facilitate establishing an account by transmitting the necessary information after receiving a request to open an account for placing bets. Likewise, “receiving . . . an indication that . . . activated . . . , wherein activation . . . causes a submission of identification information provided . . . and signifies acceptance of the terms and conditions,” “generating . . . an account decision matrix . . .,” “generating . . . a credit check rules table . . .,” “searching . . . the account decision matrix and the credit check rules table for information that corresponds to an individual,” and “approving . . . the request to open an account on the platform based at least partially on the search of the account decision matrix and the credit check rules table” facilitate establishing an account by using submitted identification information for searches in an account decision matrix and a credit check rules table, and approving the request to open an account based at least partially on the search results. And “responsive to approving the request to open the account on the platform, establishing . . . the account . . . including establishing a user ID and a Appeal 2018-006090 Application 13/858,595 9 password” and “in response to receiving the user ID and the password . . ., establishing . . . a communication session during which . . . has access to the . . . platform to place bets” establish an account by allowing a user to access the account to place bets. Our determination is supported by the Specification, which describes the need to reduce delays in establishing an account, and a new system to fulfill that need: To establish an account with an online gambling service, a user typically completes an account application, which must be approved by the online gambling service. For a deposit account, the user typically completes an online account application and funds the account through a credit card transaction with the online gambling service or by physically mailing a check, cash, or similar payment to the online gambling service. For a credit account, the user may be required to mail particular items, such as a credit card or bank statement for example, to the online gambling service in order for the gambling service to determine whether to approve the account application. Such mailings introduce delays into the account opening process, which may discourage potential users from opening an account with the gambling service. Spec. 2:10–20. According to one embodiment, a method of providing an account is provided. The method includes receiving identification information associated with a user during a communication session. The method further includes communicating a request for credit information. The request includes at least a portion of the identification information. The method further includes receiving the requested credit information, and for each of a plurality of different types of accounts, determining whether to approve that type of account based at least in part on the received credit information. The method further includes communicating an indication of at least a portion of the approved types of accounts, and receiving a Appeal 2018-006090 Application 13/858,595 10 selection of at least one of the approved types of accounts. The method further includes opening at least one of the selected types of accounts and providing access to at least one of the opened accounts during the communication session. Spec. 3:1–13. Similar to the concepts of intermediated settlement in Alice and hedging in Bilski, the concept of establishing an account “is a fundamental economic practice long prevalent in our system of commerce.” Alice, 573 U.S. at 216 (citations and internal quotation marks omitted). Accordingly, we conclude claim 1 recites a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Guidance, and thus an abstract idea. Independent claim 4 recites similar functions. See claim 4. Therefore, for similar reasons, we conclude claim 4 recites a fundamental economic practice (establishing an account), which is one of certain methods of organizing human activity identified in the Guidance, and thus an abstract idea. Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant’s assertions (App. Br. 8–17; Reply Br. 2–3), Appellant has not shown the rejected claims 1 and 4 recite additional elements that integrate the judicial exception into a practical application. Appellant cites BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 11–12; Reply Br. 2), but does not persuasively explain why that case is similar to the present case. In BASCOM, the court determined that at the pleading stage and Appeal 2018-006090 Application 13/858,595 11 construed in favor of the nonmovant, The inventive concept described and claimed . . . is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. BASCOM explains that the inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account. BASCOM Global Internet Services, 827 F.3d at 1350 (emphasis added). Unlike the claims of BASCOM, claims 1 and 4 are not directed to an “installation of a filtering tool at a specific location, remote from the end- users, with customizable filtering features specific to each end user” or similar improvements. Id. at 1350. Nor do the claims “give[] the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server” or provide similar benefits. Id. In particular, Appellant’s argument that “the claimed operations approve accounts that satisfy the account decision matrix and credit check rules . . . . These operations filter out individual accounts that fail to meet the . . . requirements” (Reply Br. 2; see also App. Br. 11–12) is unpersuasive, because determining whether individuals meet the requirements for opening accounts is a necessary step associated with establishing an account, which is an abstract idea (discussed above). Regarding the “real-time” techniques argued by Appellant (App. Br. 13; see also App. Br. 12, 14), our reviewing court has declared: Appeal 2018-006090 Application 13/858,595 12 While the claimed system and method certainly purport to accelerate the process of analyzing audit log data, the speed increase comes from the capabilities of a general-purpose computer, rather than the patented method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (emphases added). Applying this reasoning to the rejected claims, we similarly find any purported “real-time” techniques come from the capabilities of general- purpose computers (the recited “processor” and “workstation”), rather than the claimed steps or functions. Similar to the claims of FairWarning, the rejected claims “are not directed to an improvement in the way computers operate” and “the focus of the claims is not on . . . an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” FairWarning, 839 F.3d at 1095. Further, Appellants’ assertion regarding pre-emption (App. Br. 15) is unpersuasive, because [w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility . . . . Where 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 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– Appeal 2018-006090 Application 13/858,595 13 63 (Fed. Cir. 2015) (“that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract”). Appellant’s arguments that “[t]he claims recite a set of rules that allow the computer to perform a function that it could not previously perform. That is, the instant claims do recite rules that improve the technological process by customizable filtering” and “the claims recite a set of rules that allow the computer to perform a new function and the specification teaches how the claimed subject matter improves the computer” (App. Br. 12, 14 (emphases omitted); see also App. Br. 10) are unpersuasive, as Appellant has not explained why using a processor and workstation to implement an abstract idea (establishing an account) renders the claims patent eligible. In addition, Appellant’s argument about the absence of a prior art rejection (App. Br. 16) is unpersuasive, because a prior art rejection is determined under 35 U.S.C. § 102 and § 103, which are different statutory requirements. As the Supreme Court emphasizes: “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added). Our reviewing court further guides that “[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017). As a result, Appellant’s As a result, we conclude the rejected claims 1 and 4 do not recite additional elements that integrate the judicial exception into a practical Appeal 2018-006090 Application 13/858,595 14 application. See Guidance, Step 2A, Prong 2. Turning to Step 2B of the Guidance, Appellant does not persuasively argue any specific limitation is not well-understood, routine, or conventional in the field. Nor does Appellant persuasively argue the Examiner erred in finding the additional claim limitations represent routine and conventional activities (Final Act. 4). As a result, Appellant has not persuaded us the Examiner erred with respect to the Guidance’s Step 2B analysis. See Guidance, Step 2B. Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner’s rejection of independent claims 1 and 4 under 35 U.S.C. § 101. We also sustain the Examiner’s rejection of corresponding dependent claims 10–12 and 15–18 under 35 U.S.C. § 101, as Appellant does not advance separate substantive arguments about those claims. CONCLUSION We affirm the Examiner’s decision rejecting claims 1, 4, 10–12, and 15–18. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 4, 10–12, 15– 18 101 Eligibility 1, 4, 10–12, 15– 18 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)(iv). See 37 C.F.R. § 41.50(f). Appeal 2018-006090 Application 13/858,595 15 AFFIRMED Copy with citationCopy as parenthetical citation