Ex Parte BAIG et al

Patent Trial and Appeal Board

Aug 21, 2018

12241453 (P.T.A.B. Aug. 21, 2018)

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;
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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.
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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
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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).
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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.
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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).
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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
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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
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"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
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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
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(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.
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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).
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