Ex Parte BAIG et alDownload PDFPatent Trial and Appeal BoardAug 21, 201812241453 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/241,453 09/30/2008 20350 7590 08/23/2018 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 UNITED ST A TES OF AMERICA Aamer Ali BAIG 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. 90945-771598 (012906US) 7117 EXAMINER DUNHAM, JASON B ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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 AAMER ALI BAIG, JAMES E. COWELL, PETER M. KARAS, CHERYLL. NEOFYTIDES, MATTHEW F. GOLUB, JAMES R. YODER, SUSAN M. MILBERGER, JEFF D. SHERRARD, AMY M. DUNKER, JACKIE M. MACFARLANE, ERIC L. PLATTE, and SUSAN F. ABRAHAMS Appeal2017-003792 Application 12/241,453 Technology Center 3600 Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and CATHERINE SHIANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 51-55, 57, 58, and 67. Claims 1-50, 56, and 59---66 are cancelled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We Affirm. 1 According to Appellants, the real party in interest is W estem Union Company of Englewood, Colorado. App. Br. 2. Appeal2017-003792 Application 12/241,453 STATEMENT OF THE CASE Introduction Appellants' invention "generally relates to computer-implemented financial transactions, and more particularly relates to processing person-to-person payments and money requests using a computer network." (Spec. ,r 1 ). Exemplary Claim 1. A method for transferring money using a wide-area computer network, the method comprising: maintaining a database of counter parties accessible by either a sender or one or more recipients, wherein the database of counter parties comprises senders and recipients from past transactions; maintaining a database of e-mail addresses corresponding to individuals having accounts that provide the individuals with functionality offered by the server computer system for online management of financial transactions; receiving at a server computer system a first request from the sender to transfer money to a plurality of recipients selected by the sender, wherein the first request comprises email addresses of the plurality of recipients; sending, if the e-mail address of a particular recipient is not found in the database of e-mail addresses, an e-mail message to notify the particular recipient that the particular recipient can receive a credit by registering for a stored value account of the particular recipient via a link in the e-mail message; 2 Appeal2017-003792 Application 12/241,453 in response to at least the particular recipient activating the link in the e-mail message, registering the particular recipient for the stored value account with the server computer system; saving, if the e-mail address of the particular recipient is found in the database of e-mail addresses, information on the credit in the stored value account of the particular recipient; sending electronic notifications from the server computer system to the recipients to notify the recipients of the first request; and providing payment to the recipients upon a receipt of a second request at the server computer system from each recipient. App. Br. 7, Claims appendix. Rejection Claims 51-55, 57, 58, and 67 are rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 6. Issue on Appeal Did the Examiner err in rejecting claims 51-55, 57, 58, and 67 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter? ANALYSIS We have considered all of Appellants' arguments and any evidence presented. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We highlight and address specific findings and arguments for emphasis in our analysis below. 3 Appeal2017-003792 Application 12/241,453 Mayo/Alice Analysis under 35 USC§ 101 Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in that analysis is to determine whether the claims at issue are directed to one of those patent-ineligible concepts, such as an abstract idea. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If the claims are not directed to a patent-ineligible concept, the inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017). Otherwise, the inquiry proceeds to the second step in which the elements of the claims are considered "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of 4 Appeal2017-003792 Application 12/241,453 whether the claims are directed to a specific improvement in the capabilities of the computing devices, or, instead, "a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). We, therefore, decide under step two whether the claims: (a) set forth an inventive concept that provides a specific means or method that improves the relevant technology, or (b) are directed to a result or effect that itself is the abstract idea, in which the claims merely invoke generic processes and machinery. See Enfzsh, 822 F.3d at 1336. The Examiner's Rejection under 35 USC§ 101 Regarding the first step of the Alice/Mayo analysis, the Examiner concludes claims 51-55, 57, 58, and 67 are directed to an abstract idea, because: 2 [t]he abstract idea consists of allowing consumers to transfer funds via intermediaries. The abstract idea includes compiling directories of descriptive materials, notifying the recipient that he can receive the money subject to certain conditions. The apparatus and functions claimed are considered to be an abstract idea because the structure and activities are considered both [i] a fundamental economic practice and [ii] a method of organizing human activity by providing an opportunity for parties to enter into a specified agreement. Final Act. 7-8 (underline omitted and emphasis added in italics). 2 "Patent eligibility under§ 101 presents an issue of law .... " Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013). 5 Appeal2017-003792 Application 12/241,453 The Examiner additionally notes that "[ c ]ontractual relationships have been deemed by the Federal Circuit to be an abstract idea." Final Act. 8 (citing buySAFE, Inc. v. Google Inc. 765 F.3d 1350 (Fed. Cir. 2014)). The Examiner concludes that intermediated settlement is a fundamental economic practice long prevalent in our system of commerce, which is in the realm of abstract ideas identified by the Supreme Court ( citing, e.g., Alice, 134 S. Ct. at 2357 (2014)). Final Act. 8. Regarding the second step of the Mayo/Alice analysis, the Examiner provides claim charts that detail the Examiner's claim interpretation (Final Act. 8-11). The Examiner finds: Taking the claim elements individually, the functions performed by the computer at each step of the process are purely conventional. Storing data ( e.g. data representing a conditional offering), displaying data ( e.g. present to the customer a display offering said conditional option), and receiving input ( e.g. inputs from a customer) are within the most basic functions of a computer. Even when applied within the scenario claimed, these functions are well-understood, routine, and conventional activities as each step does no more than require a generic computer to perform generic computer functions. Similar to the discussion in SmartGene Inc. v. Advanced Biological Lab, the claimed functions can be carried out in existing computers long in use without any new machinery being necessary. The claims at issue do not purport to identify new computer hardware, but rather, [the claims] assume[] the availability of generic computer components for data input, storage, retrieval, comparison, and output. The claims at issue recite only use of a computer in facilitation of a commercial interaction, the computer defined only by its function. 6 Appeal2017-003792 Application 12/241,453 Final Act. 11-12 ( emphasis added). 3 For the aforementioned reasons, the Examiner concludes that all claims 51-55, 57, 58 and 67 on appeal are not patent-eligible under 35 U.S.C. § 101. Mayol Alice Analysis - Step 1 Regarding Alice Step 1, Appellants contend "the Office Action does not support such a conclusion with any evidence as required by Alice." App. Br. 3. In support, Appellants urge, inter alia: The present Office Action cites no references whatsoever to justify its position that the alleged abstract idea here is a "long prevalent" and "longstanding" fundamental economic practice or method of organizing human activity, as was provided by the Supreme Court in Alice. Indeed, the Office Action does not even attempt to categorize the alleged abstract idea as a fundamental economic practice or method of organizing human activity, much less provide the necessary evidence to justify such a conclusion. App. Br. 4. In response, the Examiner further explains the basis for the rejection: [N]either Alice nor the Interim Guidance specify that documentary evidence is required for identifying an abstract idea. Rather, court decisions, e.g. Ultramercial Inc. v. Hulu, Cyberfone Systems v. CNN Interactive Group, construed the claims (a) more broadly in terms of the abstract idea they directed themselves to despite the claims, on their face, 3 The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, "[ t ]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 7 Appeal2017-003792 Application 12/241,453 reciting more complex ideas/interactions, and (b) did not set forth documentary evidence in doing so. Ans. 11 ( emphasis added). We note the Examiner provides additional evidence in the Answer that electronic methods of transferring money are well-known, routine, and conventional. In particular, the Examiner cites a New York Times article, published in the 1871, that discloses "telegraphic transfers of money to any desired point." Ans. 12. Our reviewing court has concluded that abstract ideas include the concepts of collecting data, recognizing certain data within the collected data set, and storing the data in memory. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection, storage, and recognition of data are directed to an abstract idea."). Additionally, the collection of information and analysis of information ( e.g., recognizing certain data within the dataset) are also abstract ideas. Elec. Power, 830 F.3d at 1353. 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). Moreover, our reviewing court recently has concluded that acts of parsing, comparing, storing, and editing data are 8 Appeal2017-003792 Application 12/241,453 abstract ideas. Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018). Applying this guidance here, we agree with the Examiner (Final Act. 8) that Appellants' claimed method for "providing payment to the recipients" (if the recited conditions are satisfied), is directed to a fundamental economic practice. Claim 51. Claim 19. Moreover, but for the recitation of a generic computer network, computer system, and database (sole independent claim 51 ), we find the recited steps or acts, could be performed as mental steps, or with the aid of pen and paper. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016) ("While the Supreme Court altered the§ 101 analysis since CyberSource in cases like Mayo and Alice, we continue to 'treat[] 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."') ( quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson"). The Supreme Court additionally guides that contractual relations constitute "a fundamental economic practice long prevalent in our system of commerce." Bilski v. Kappas, 561 U.S. 593, 611(2010); see also Alice, 134 S.Ct. at 2356, 2357, as cited in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014). Applying this guidance here, we also agree with the Examiner (Final Act. 8) that the claimed method involves contractual relations, e.g., between 9 Appeal2017-003792 Application 12/241,453 "counter parties accessible by either a sender or one or more recipients." Claim 51 ( emphasis added). For at least these reasons, we conclude claims 51-55, 57, 58, and 67 are directed to the abstract idea of a fundamental economic practice that could additionally be performed as mental steps, albeit with the aid of pen and paper. Mayo/Alice Analysis - Step 2 Because we conclude the claims are directed to an abstract idea for essentially the same reasons articulated by the Examiner (Final Act. 8; Ans. 7-15), we tum to the second part of the Alice/Mayo analysis. We analyze the claims 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 2357. Regarding Alice Step 2, Appellants address the purported inventive concept of the claims: even if we assume, in arguendo, that the Office Action has properly identified that the present claims are directed to an abstract idea, the Office Action is incorrect that the remainder of the claims do not add significantly more the potential abstract idea itself The requirement that a claim add significantly more to an abstract idea in order to be patent eligible subject matter is rooted in reducing the risk that allowing such a patent claim would tie up the use of the underlying abstract idea to all of those in the art. Alice at 6. Claims which do not risk tying up the use of an abstract idea do not pose a risk of pre-empting others from exploiting these "building blocks" of human ingenuity. Id. In essence then, claims that recite an abstract idea and then merely include instructions to apply the abstract idea are not patent eligible. In the converse, if claims recite only one of many particular ways of implementing an abstract idea, such claims are patent 10 Appeal2017-003792 Application 12/241,453 eligible. App. Br. 4 ( emphasis added). However, our reviewing court provides applicable guidance: "[ w ]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Therefore, we are not persuaded by Appellants' argument regarding the absence of complete preemption. See App. Br. 4. Further, regarding the use of the recited generic server computer system, computer network, and database ( claim 51 ), the Supreme Court held "the mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet computer network' or on a generic computer is still an abstract idea."). Although claim 51 effects the result of "providing payment to the recipients upon a receipt of a second request at the server computer system from each recipient," our reviewing court guides: "[t]he abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (2016) (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) ( emphasis added). Our reviewing court has "repeatedly held that such invocations of computers and networks that are not even arguably inventive are 'insufficient to pass the test of an inventive concept in the application' of an abstract idea." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 11 Appeal2017-003792 Application 12/241,453 (Fed. Cir. 2016) (internal citations omitted); see also Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic computer element-a processor- and a series of generic computer 'components' that merely restate their individual functions . . . . That is to say, they merely describe the functions of the abstract idea itself, without particularity. This is simply not enough under step two."). Moreover, we find Appellants' claims that include a database are clearly distinguished from the claims considered by the court in Enfzsh, 822 F.3d at 1336, because Appellants' method claims 51-55, 57, 58, and 67 are not directed to an improvement in the database itself, such as a "self- referential table" that "is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory." Enfish, 822 F.3d at 1339. Because we find none of Appellants' claims are directed to an improvement in the recited computer network, server computer system, or database ( claim 51 ), we conclude that none of the claim limitations, viewed both individually and as an ordered combination, amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. In light of the foregoing, we conclude, under the Mayo/Alice analyses, that each of Appellants' claims 51-55, 57, 58, and 67 considered as a whole, is directed to a patent-ineligible abstract idea (under step one), and under step two, does not recite something "significantly more" to transform the nature of the claim into a patent-eligible application. 12 Appeal2017-003792 Application 12/241,453 We note Appellants did not file a Reply Brief to further address the Examiner's responsive explanations, and the additional evidence proffered by the Examiner in the Answer (12-13, see New York Times articles). Accordingly, for the reasons discussed above, we sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 51-55, 57, 58, and 67, as being directed to patent-ineligible subject matter. 4 CONCLUSION The Examiner did not err in rejecting claims 51-55, 57, 58, and 67 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter. DECISION We affirm the Examiner's decision rejecting claims 51-55, 57, 58, and 67 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. § 4I.50(f). AFFIRMED 4 To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). 13 Copy with citationCopy as parenthetical citation