Ex Parte Armenta et al

Patent Trial and Appeal Board

Feb 27, 2019

12189950 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/189,950 08/12/2008
20350 7590 03/01/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Ernest Armenta
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
90945-750005 (Ol 1600US) 7920
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERNEST ARMENTA and GAIL GALUPPO
Appeal2017-007761
Application 12/189,950 1
Technology Center 3600
Before HUNG H. BUI, DAVID J. CUTITT A II, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
non-final rejection of claims 1, 4--8, 12, 13, 15, and 16. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants' Brief ("Br.") identifies The Western Union Company as the
real party in interest. Br. 2.
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Application 12/189,950
CLAIMED SUBJECT MATTER
The claims are directed to conducting money transfers via cable
and/or satellite providers. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of providing a money transfer executed in
connection with a television provider, the method comprising:
receiving, at a set top box, a signal from a remote control
associated with the set top box, wherein the signal indicates that
a money transfer initiation button built into the remote control
has been pressed by a user;
in response to receiving the signal, presenting, with the set
top box, an interface to the user on a television, the interface
configured to receive a money transfer initiation request and a
first identifier from the user;
receiving, at the set top box, the money transfer initiation
request and the first identifier;
sending, to a television provider server from the set top
box, the money transfer initiation request and the first identifier;
verifying, at the television provider server, the user's
identity by comparing the first identifier with a second identifier
stored by the television provider server;
in response to the user's identity being verified by the
television provider server, forwarding, from the television
provider server, the money transfer initiation request to a money
transfer provider server;
receiving, at the television provider server, from the
money transfer provider server, a money transfer control number
associated with a money transfer initiated in response to the
money transfer initiation request;
sending from the television provider server to the set top
box, the money transfer control number;
presenting, on the television via the set top box, the money
transfer control number to the user via the interface and
instructions on how to activate the money transfer control
number, the instructions comprising instructions for using a
mobile device of the user to send the money transfer control
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Application 12/189,950
number and a form of personal identification to the money
transfer provider server;
receiving, at the money transfer provider server from the
mobile device of the user, the money transfer control number and
the form of personal identification;
verifying, with the money transfer provider server, that the
money transfer control number is associated with the user by
comparing the form of personal identification with information
stored in a customer database;
in response to verification of the money transfer control
number being associated with the user, activating the money
transfer control number with the money transfer provider server;
and
in response to activation of the money transfer control
number, and later receipt of a request to withdraw funds
associated with the money transfer control number, authorizing,
with the money transfer server, distribution of funds associated
with the money transfer control number.
Br. 13 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Linehan
Hill
Campagna
US 2004/0249726 Al Dec. 9, 2004
US 2008/0249928 Al Oct. 9, 2008
US 2009/0300668 Al Dec. 3, 2009
REJECTIONS
Claims 12 and 13 stand rejected 35 U.S.C. § 112, second paragraph as
being indefinite. 2 Final Act. 3.
2 Appellants do not challenge this rejection. As a result we summarily
affirm the rejection of claims 12 and 13 under 35 U.S.C. § 112, second
paragraph.
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Application 12/189,950
Claims 1, 4--8, 12, 13, 15, and 16 stand rejected under 35 U.S.C. § 101
as being directed to ineligible subject matter. Final Act. 3-7.
Claims 1, 4--8, 12, 13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Linehan, Hill, and Campagna. Final
Act. 7-17.
REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int'!, 573 U.S. 208 (2014). The Supreme Court
instructs us to "first determine whether the claims at issue are directed to a
patent-ineligible concept," Id. at 217, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we "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. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court
describes the second step as a search for "an 'inventive concept'-i.e., 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. (quoting Mayo, 566 U.S. at 72-73).
The USPTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
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Subject Matter Eligibility Guidance ("Memorandum"). Under that
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 interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
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
§ 2106.0S(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.
See Memorandum.
Examiner's Findings and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
claims are directed to an abstract idea of "initiating a money transfer request
using a set top box, which is an idea of itself and a certain method of
organizing human activity." Ans. 3.
At Alice step 2, the Examiner determines the claims do not recite
elements sufficient to amount to significantly more than the abstract idea
because:
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[T]he claim limitations do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the claim limitations simply describe the
abstract idea. The limitations directed to sending data ( e.g.
sending the money request and first identifier, forwarding the
money request, sending the control number) are well-understood,
routine, and conventional in the field; thus, they do not add
significantly more to the abstract idea. Examples of well-
understood, routine, and conventional computer functions
include performing repetitive calculations; receiving, processing,
and storing data; electronically scanning or extracting data from
a physical document; electronic recordkeeping; automating
mental tasks; and receiving or transmitting data over a network,
e.g. using the Internet to gather data.
Ans. 5---6 (citing USPTO July 2015 Update: Subject Matter Eligibility). The
Examiner further finds "[ t ]he limitations directed to activating the control
number and withdrawing funds simply add insignificant extrasolution
activity (i.e. generally link the use of the judicial exception to a particular
technological environment) to the judicial exception." Ans. 6. The
Examiner also finds the various hardware components recited in the claims
are not sufficient to supply an inventive concept:
Furthermore, using well-known computer functions to execute
an abstract idea does not constitute significantly more. The
recitations to "set top box", "remote control", "television", and
"server" are generically recited computer structure. Using a
general purpose computer to perform the limitations is not
sufficient to transform a judicial exception into a patentable
invention. The computer components are recited at a high level
of generality and perform the basic functions of a computer.
Generically recited computer elements do not add a meaningful
limitation to the abstract idea since they would be routine in any
computer implementation.
Ans. 6.
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Appellants 'Contentions
Appellants present five brief arguments in favor of eligibility, which
we reproduce in their entirety:
First, using a set top box to initiate money transfers is not an
abstract idea. It's a concrete technical solution to a technical
problem (novelly using a device not intended for such activities
to cause a money transfer to occur). Second, this is not an "idea
of itself such as comparing one set of data to another and the
like. It's a concrete method for directing the operation of a
machine. This is almost the exact opposite of an idea of itself
Third, the alleged abstract idea is not a method of organizing
human activities. Applicant cannot parse out any interpretation
of the claims where using financial networks and television
content distribution systems such as set top boxes is a
representation of human activities. Fourth, substantially more is
present because generic computers are not being used to
implement an alleged abstract idea. Instead, specialized
equipment, including reprogrammed set top boxes and financial
server/networks that interact with television content delivery
systems, are employed. Fifth, as will be demonstrated below,
novel techniques are claimed, and therefore specific limitations
other than what is well understood in the art are recited which
limit the claims to specific applications.
Br. 4--5 (emphasis omitted).
Our Review
Applying the guidance set forth in the Memorandum, we are not
persuaded of Examiner error. The Memorandum instructs us first to
determine whether any judicial exception to patent eligibility is recited in the
claim. The guidance identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human behavior
such as fundamental economic practices, and (3) mental processes. We
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focus here on the second grouping----certain methods of organizing human
behavior such as fundamental economic practices. See Memorandum.
Claim 1 recites the following limitations: ( 1) "[a] method of providing
a money transfer," (2) "receiving ... a signal ... wherein the signal
indicates [a] money transfer initiation ... by a user," (3) "in response to
receiving the signal ... presenting ... an interface to the user ... the
interface configured to receive a money transfer initiation request and a first
identifier," (4) "receiving ... the money transfer initiation request and the
first identifier," (5) "sending ... the money transfer initiation request and the
first identifier," (6) "verifying ... the user's identity by comparing the first
identifier with a second identifier," (7) "in response to the user's identity
being verified ... forwarding ... the money transfer initiation request to a
money transfer provider," (8) "receiving ... from the money transfer
provider ... a money transfer control number associated with a money
transfer initiated in response to the money transfer initiation request," (9)
"sending ... the money transfer control number," (10) "presenting ... the
money transfer control number to the user ... [ and] instructions on how to
activate the money transfer control number," (11) "receiving at the money
transfer provider ... the money transfer control number and the form of
personal identification," (12) "verifying, with the money transfer
provider ... that the money transfer control number is associated with the
user by comparing the form of personal identification with information
stored in a customer database," (13) "in response to verification of the
money transfer control number being associated with the user, activating the
money transfer control number with the money transfer provider," and (14)
"in response to activation of the money transfer control number, and later
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receipt of a request to withdraw funds associated with the money transfer
control number, authorizing ... distribution of funds associated with the
money transfer control number." Br. 9--10 (Claims Appendix).
These limitations, under their broadest reasonable interpretation,
recite the fundamental economic practice of money transfer because the
limitations all recite the operations that would ordinarily take place in
executing a money transfer. Like the concept of intermediated settlement in
Alice, and the concept of hedging in Bilski, the concept of money transfer
recited in Appellants' claims "is a fundamental economic practice long
prevalent in our system of commerce." Alice, 134 S. Ct. at 2356 (citations
and internal quotation marks omitted). Accordingly, we conclude the claims
recite a judicial exception of a fundamental economic practice.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
"additional elements that integrate the judicial exception into a practical
application." See MPEP § 2106.05(a}-(c), (e}-(h)). Appellants' claim 1
recites various computer-related and/or hardware-related limitations,
including "a set top box," "a remote control associated with the set top box
[having] a money transfer initiation button," "a television provider server,"
"a money transfer provider server," "a television," and a "mobile device."
These computer and/or hardware-related limitations are described at a high
level in the Specification without any meaningful detail about their structure
or configuration. As such, we do not find the computer and/ or hardware-
related limitations are sufficient to integrate the judicial exception into a
practical application.
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Claim 1 also recites additional limitations which focus on providing
instructions on how to activate the money transfer: "presenting ...
instructions on how to activate the money transfer control number, the
instructions comprising instructions for using a mobile device [to initiate the
money transfer]." We conclude that these limitations are insufficient to
integrate the recited judicial exception of money transfer into a practical
application. In particular, these additional elements merely implement the
familiar practice of providing instructions to consumers for completing a
transaction. The presentation of these instructions does not improve the
functioning of a computer, nor do the instructions solve any technological
problem with a technological solution. Indeed, the "instructions" described
in the Specification include no detail, as the extent of the description is
"[ t ]he message may include instructions as to how to activate the control
number." Spec. ,r 26. Accordingly, we conclude claim 1 is directed to a
judicial exception.
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not "well-understood, routine, conventional" in
the field (see MPEP § 2106.0S(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Memorandum.
We agree with the Examiner that the claim does not add specific limitations
beyond what is well-understood, routine, and conventional. We note
Appellants' do not challenge the Examiner's determination under Alice
step 2 other than the brief contention that "novel techniques are claimed, and
therefore specific limitations other than what is well understood in the art are
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recited which limit the claims to specific applications." Br. 5. However,
Appellants do not identify what the specific inventive concept is, nor do they
explain why it is an inventive concept in the non-abstract realm. SAP Am.,
Inc. v. InvestPic, LLC, No. 2017-2081, 2018 U.S. App. LEXIS 12590, Slip.
Op. 13 (Fed. Cir. May 15, 2018) ("[w]hat is needed is an inventive concept
in the non-abstract realm"). Accordingly, we do not discern in claim 1 any
"specific limitation beyond the judicial exception that is not 'well-
understood, routine, conventional,"' and instead agree with the Examiner
that the claims do not provide an inventive concept sufficient to transform
the judicial exception into patent-eligible subject matter.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellants do not identify any error in the
Examiner's determination under Alice step 2, we sustain the rejection of
claim 1 under 35 U.S.C. § 101. Appellants do not present arguments for any
other claim. Accordingly, we treat claim 1 as representative, and sustain the
patent-eligibility rejection of the remaining claims for the same reasons.
REJECTION UNDER 35 U.S.C. § 103(a)
The Examiner rejects claim 1 as obvious over Linehan, Hill, and
Campagna. Final Act. 7-11; Ans. 7-8. Relevant here, the Examiner finds
Hill teaches the limitation of "sending from the television provider server to
the set top box, the money transfer control number," because it describes
transmitting a recipient's mobile telephone number in a money transfer
transaction. Final Act. 9 ( citing Hill ,r 86); Ans. 8 ("Hill is cited to teach
sending the money transfer control number (recipient's mobile telephone
number, see [0086]) from the television server back to the set top box.")
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Appellants argue Hill is deficient because to the extent a mobile telephone
number can be considered a "money transfer control number," Hill describes
that "the recipient mobile telephone number is never provided to a television
provider server as recited by the claim." Br. 7. We agree with Appellants.
Hill makes no mention of any television provider server, nor of any set top
box. The Examiner does not explain why the teachings of Hill would have
made it obvious to send the mobile telephone number to these destinations.
Accordingly, we are persuaded the Examiner has not sufficiently explained
how the cited prior at renders this limitation obvious, and we do not sustain
the rejection of claim 1 under 35 U.S.C. § 103(a). For the same reason, we
also do not sustain the rejection of independent claim 16, nor of the
remaining dependent claims.
DECISION
We summarily affirm the Examiner's rejection of claims 12 and 13
under 35 U.S.C. § 112, second paragraph.
We affirm the rejection of claims 1, 4--8, 12, 13, 15, and 16 under
35 U.S.C. § 101.
We reverse the rejection of claims 1, 4--8, 12, 13, 15, and 16 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 4I.50(a)(l).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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