Ex Parte Avari et al

Patent Trial and Appeal Board

Aug 24, 2018

13569249 (P.T.A.B. Aug. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/569,249 08/08/2012 Mishez A vari
13708 7590 08/24/2018
Johnson, Marcou & Isaacs, LLC
PO Box 691
Hoschton, GA 30548
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.
CITI-0728 7322
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
08/24/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MISHEZ AV ARI and ANDREW ERIC ZIESMER
Appeal2017-005344
Application 13/569,249 1
Technology Center 3600
Before LARRY J. HUME, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-5 and 8-20. Appellants have canceled claims 6 and 7. See Br. 19.
We have jurisdiction over the remaining pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Citicorp Credit Services, Inc. (USA) as the real party in
interest. Br. 3.
Appeal2017-005344
Application 13/569,249
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
"managing cardholder spending on a transaction card account." Spec. ,r 2;
see also Spec. ,r 4 ("managing cardholder spending"). In a disclosed
embodiment, a monthly spending budget comprising a plurality of budget
categories may be established. Spec. ,r 5. Expenditures are tracked against
the budgeted amount. Spec. ,r 7. Additionally, the Specification describes if
the spending budget for a category is met or exceeded in a month, future
expenditures may be declined, the budget may be adjusted for that category,
or future (i.e., the succeeding month) budget amounts may be adjusted.
Spec. ,r,r 8-10.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A method of managing cardholder spending on a bankcard
account for a bankcard issued by a bankcard issuer, comprising:
generating, by a bankcard account budget program
processor coupled to memory, via a communication platform of
the bankcard issuer, a web interface prepopulated with
recommended budget figures corresponding to a cardholder's
level of annual income;
receiving, using the bankcard account budget program
processor, a monthly spending budget for the cardholder by a
bankcard account budget program database via the
communication platform of the bankcard issuer and a setup
screen of the web interface prepopulated with the recommended
budget figures;
tracking, by the bankcard account budget program
processor, amounts spent by the cardholder in a current month
against the monthly spending budget; and
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Application 13/569,249
adjusting, by the bankcard account budget program
processor, the monthly spending budget for a succeeding month
when the amounts spent by the cardholder in the current month
exceed a bankcard account credit line extended by the bankcard
issuer to the cardholder, said adjustment being made by reducing
a plurality of budget categories according to a reverse order of a
predetermined prioritization of the plurality of budget categories
up to the amounts spent by the cardholder in the current month
that exceed the bankcard account credit line extended by the
bankcard issuer to the cardholder or by reducing each of the
plurality of budget categories by a percentage equal to a
percentage by which the amounts spent by the cardholder in the
current month exceed the bankcard account credit line extended
by the bankcard issuer to the cardholder in the absence of a
predetermined prioritization.
The Examiner's Rejection
Claims 1-5 and 8-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 7-11.
ANALYSIS 2
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. Br. 7-16. In particular,
Appellants assert the Examiner failed to make an evidentiary showing to
establish a prima facie case of ineligibility. Br. 8-9. Further, Appellants
assert the Examiner oversimplifies the features of the claimed invention in
concluding the claims are directed to patent-ineligible subject matter. Br. 9-
11. Additionally, Appellants argue the claimed invention involves computer
2 Throughout this Decision, we have considered the Appeal Brief, filed
August 8, 2016 ("Br."); the Examiner's Answer, mailed December 15, 2016
("Ans."); and the Final Office Action, mailed March 8, 2016 ("Final Act."),
from which this Appeal is taken. Appellants did not file a Reply Brief.
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technology and provides "significant improvements to a web interface,
communication platform, and database that enable specific credit card spend
prioritizations and limits." Br. 13-14.
Contrary to Appellants' assertions, there is no requirement that
Examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
para. IV "July 2015 Update: Subject Matter Eligibility" to 2014 Interim
Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) ("The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
do not rely on evidence that a claimed concept is a judicial exception, and in
most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings.") (Emphasis added.) Further, the Office did
not change the standard in the May 4, 2016 Memorandum, Formulating a
Subject Matter Eligibility Rejection and Evaluating the Applicant's
Response to a Subject Matter Eligibility Rejection. Evidence may be helpful
in certain situations where, for instance, in concluding the claims are
directed to an abstract idea, facts are in dispute. 3 However, it is not always
necessary. It is not necessary in this case.
Additionally, the Federal Circuit has repeatedly noted that "the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed.
3 Cf Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
("Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.").
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Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
court has, thus, held that the USPTO carries its procedural burden when its
rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011 ). Thus, all that is required of the Office is that it set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner as to
meet the notice requirement of 35 U.S.C. § 132. Jung, 637 F.3d at 1362; see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132
"is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection."). As set forth in the Final Office Action, we find the Examiner
has met the notice requirements of Section 132(a) in rejecting claims 1-5
and 8-20 under 35 U.S.C. § 101. See Final Act. 7-11.
The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Bank Int'!,
134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the
second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
134 S. Ct. at 2355.
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Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 7-11. In
particular, the Examiner concludes the claims are directed to the abstract
idea of "managing spending on a card account," which the Examiner
determines is similar to a fundamental economic concept. Final Act. 8.
Further, the Examiner concludes the claims do not recite significantly more
than the abstract idea to transform the application into a patent-eligible
application. Final Act. 8-11. Additionally, the Examiner finds the claims
recite generic computer components performing generic computer functions
that are "well-understood, routine and conventional." Final Act. 9.
Instead of using a definition of an abstract idea, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
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Our reviewing court has concluded that abstract ideas include the
concepts such as the collection and analysis of information. Elec. Power,
830 F.3d at 1353; see also Elec. Power, 830 F.3d at 1354 ("analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category"). Additionally, the collecting of data, recognizing
certain data within the collected data set, and storing the data in memory are
also abstract ideas. Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see
also SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018)
("merely presenting the results of abstract processes of collecting and
analyzing information ... is abstract as an ancillary part of such collection
and analysis") ( quotations omitted).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
Here, Appellants' claims are generally directed to tracking and
adjusting a monthly budget to manage spending associated with a
cardholder. A prepopulated monthly budget is received and amounts spent
by the cardholder are tracked against the allotted amounts in the budget.
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The budget is provided via a user interface. The amount in a budget
category may be adjusted for a succeeding month if the amount spent in a
month exceeds the budgeted amount. Additional options to configuring the
budget include electing for notification when the expended amount in a
month reaches a specified threshold; prioritizing certain budget categories;
and declining authorization for expenditures after the budget threshold has
been reached.
The receipt of data (i.e., a budget or expenditures) and categorization
of expenditures into budget categories are similar to the abstract ideas of
collecting data and recognizing data within the collected data. See Content
Extraction, 776 F.3d at 1347; Smart Sys. Innovations, LLC v. Chicago
Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017). Further, applying
the spent amount to a budgeted category is similar to the abstract idea of
performing a mathematical operation on the data. See Elec. Power, 830 F.3d
at 1354; Digitech Image Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d
1344, 1350-51 (Fed. Cir. 2014); see also Parker v. Flook, 437 U.S. 584, 595
(1978) ("If a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is [patent-ineligible]."). Also, displaying the data (i.e.,
budget) has been recognized as an abstract idea. See Intellectual Ventures I,
850 F.3d at 1340; SAP Am., 890 F.3d at 1021. Neither these steps, nor those
recited in the dependent claims alters the character of the claims, which is
directed to a fundamental economic practice (i.e., tracking and adjusting a
budget}--an abstract idea. See Alice, 134 S. Ct. at 2356.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
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to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297-98 (2012)).
The implementation of the abstract idea involved must be "more than [the]
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original). "Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer, 881 F.3d at
1369.
Appellants do not dispute the Examiner's findings that the claims
recite "generic computer components performing generic computer
functions ... [that] are well-understood, routine and conventional." See
Final Act. 9. Rather, Appellants argue the claims recite significantly more
than the alleged abstract idea because they provide "significant
improvements to a web interface, communication platform, and database
that enable specific credit card spend prioritizations and limits." Br. 13. We
disagree. As the Examiner explains, the claims are not directed to a
technological improvement, nor is an actual improvement claimed relating
to the claimed operations or physical structures. Ans. 8. In other words, the
claims do not recite improvements to the computer elements and functions
(i.e., web interface, communication platform, and database) but rather uses
the computer elements as a tool. See Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1335-36 (Fed. Cir. 2016); see also Alice, 134 S. Ct. at 2359
("use of a computer to create electronic records, track multiple transactions,
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and issue simultaneous instructions" is not an inventive concept). Moreover,
contrary to Appellants' assertions (see Br. 13-14), the claims are not
addressing a problem rooted in computer technology. Maintaining a budget
is not restricted to operation within computer technology, and may be
performed without a computer. See Gottschalk v. Benson, 409 U.S. 63, 66
(1972); Bancorp Servs. LLC v. Sun Life Assurance Co. of Can., 687 F .3d
1266, 1279 (Fed. Cir. 2012) ("the computer simply performs more
efficiently what could otherwise be accomplished manually").
To the extent Appellants contend the claims are not preemptive (see
Br. 14--16) of the abstract idea, we are unpersuaded of Examiner error.
"' [W]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."'
Fair Warning IP, 839 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat
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."). Further, "[w]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. According! y, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 101. For similar reasons, we sustain the
Examiner's rejection of independent claim 20, which recites similar
limitations and was not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv)
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(2015). Additionally, we sustain the Examiner's rejection under 35 U.S.C.
§ 101 of claims 2-5 and 8-19, which depend directly or indirectly from
claim 1 and were not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1-5 and 8-20
under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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