Ex Parte Burke

Patent Trial and Appeal Board

Jul 11, 2017

13479221 (P.T.A.B. Jul. 11, 2017)

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.
13/479,221 05/23/2012 Bertram V. Burke Burke-MeMoneys-Trackl 9448
60033 7590
MARK TERRY, ESQ.
801 BRICKELL AVE., SUITE 900
Miami, FL 33131
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/13/2017 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):
mark@terryfirm.com
eofficeaction @ appcoll.com
yurie @ terry firm .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte BERTRAM V. BURKE
Appeal 2015-0043101
Application 13/479,2212
Technology Center 3600
Before JAMES A. WORTH, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Aug.
25, 2014), the Examiner’s Answer (“Ans.,” mailed Jan. 16, 2015), the Final
Office Action (“Final Act.,” mailed Mar. 28, 2014), and the Specification
(“Spec.,” filed May 23, 2012).
2 Appellant identifies MeMoneys, Inc. as the real party in interest. App.
Br. 1.
Appeal 2015-004310
Application 13/479,221
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to financial
industries and, more specifically, to processes for accumulating credits for
savings or donations programs over telecommunications networks.” Spec.
14.
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for accumulating funds in a target
account, the system comprising:
a mobile computing device operated by a user, the
computing device comprising:
a graphical user interface including a text field for
directly entering transaction data from the user, wherein
the transaction data includes at least a unique identifier for
the user and a spending amount;
a memory storage;
a network connection device communicatively
coupled to a communications network; and
a processing unit coupled to the memory storage,
wherein the processing unit is operative to:
generating a formatted message including the
transaction data; and
transmitting the message over the
communications network, via the network
connection device, to a central server;
the central server independent from, and having no control
over, a financial account provider, the central server comprising:
a receiver configured for receiving transaction data
from the user via the communications network, the user
being independent from the financial account provider;
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a memory storage;
a network connection device communicatively
coupled to the communications network; and
a processing unit coupled to the memory storage, wherein
the processing unit is configured for:
accessing in a connected database a record
associated with the user based on the unique identifier for
the user and storing the record in a memory storage;
reading at least a savings determinant, source
account data and target account data from the record
associated with the user;
calculating a savings amount based on the savings
determinant and the spending amount;
incrementing a current value based on the savings
amount, wherein the current value is associated with the
user; and
transmitting, over the communications network, via
the network connection device, a message to a provider of
a source account defined by the source account data,
wherein the message includes a request to transfer the
current value from the source account to a target account
defined by the target account data.
REJECTIONS
Claims 1, 4, 5, 7, 8, 10, 11, and 15—18 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Burke (US 7,571,849 B2, iss. Aug. 11, 2009)
and Ross (US 2012/0296809 Al, pub. Nov. 22, 2012).
Claims 2 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Burke, Ross, and Teicher (US 2010/0312692 Al, pub. Dec. 9, 2010).
Claims 3, 6, 9, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burke, Ross, and Young (US 2010/0049652 Al, pub. Feb.
25,2010).
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ANALYSIS
Independent Claims 1 and 11, and Dependent Claims 4, 5, 7, 8, 10, and 15—
18
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 11 under 35 U.S.C. § 103(a) because
Burke does not disclose or suggest the central server “receiving transaction
data from the user via the communications network,” and “transmitting ... a
message to a provider of a source account defined by the source account
data, wherein the message includes a request to transfer the current value
from the source account to a target account defined by the target account
data,” as recited in independent claim 1, and similarly recited in independent
claim 11. The Examiner cites column 2, lines 1—17, column 3, lines 44—56,
column 6, lines 33—45, column 7, lines 32-47, column 10, lines 17—51, and
column 12, line 9 through column 13, line 15, and claim 3 of Burke as
disclosing the argued limitations. Final Act. 4. However, we agree with
Appellant (App. Br. 7) that there is nothing in the cited portions of Burke
that discloses or suggests that the central server receives transaction data
from the user, and sends a message to a provider of a source account that
includes a request to transfer.
Burke describes creating excess funds from spending transactions that
are set aside in special accounts for future spending. Burke, col. 1,11. 30-34.
The excess funds are created at a point of sale (“POS”) counter by a
merchant collector (“MC”) on behalf of a subscriber payor (“SP”) who
tenders an excess payment. Id. at col. 2,11. 56—66. The SP provides the MC
with a transaction card or account number to deposit the excess amount into
a clearinghouse central computer (“CCC”). Id. at col. 2,1. 65— col. 3,1. 6.
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The MC captures the transaction data, such as the account number and
amount of funds to be deposited with the CCC, and prints a receipt for the
SP. Id. at col. 3,11. 6—12. The depositing transactions into the MC remote
terminal is completed off-line, or on-line, or a combination of both. Id. at
col. 3,11. 13—15. For example, the transactions may be accumulated in
transaction files stored at the MC terminal and batched to the CCC. Id. at
col. 3,11. 15—19. The transaction files transferred to the CCC contain details
of each deposited transaction. Id. at col. 3,11. 25—29. After the MC deposits
funds from the SP into the clearinghouse’s bank account, the CCC transfers
funds to each provider account (“PC”) indicated in the transaction files. Id.
at col. 3,11. 29-34.
The Examiner finds that Burke’s CCC constitutes the claimed central
server. Ans. 4. But Burke describes the MC receiving the transaction data
from the user, not the CCC, as required by claims 1 and 11. Instead, the MC
sends the transaction data to the CCC. In addition, Burke describes the MC
sending funds to a bank of the CCC, and the CCC distributing funds to the
PC, not the CCC sending a message to a source account that includes a
request to transfer the current value from the source account to a target, as
recited in claim 1, and similarly recited by claim 11.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 11 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 4, 5, 7, 8,
10, and 15—18.
Dependent Claims 2, 3, 6, 9, and 12—14
Claims 2, 3, 6, 9, and 12—14 depend from independent claims 1 and
11, respectively. The Examiner’s rejections of these claims do not cure the
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deficiency in the Examiner’s rejection of independent claims 1 and 11.
Therefore, we do not sustain the Examiner’s rejections under 35 U.S.C.
§ 103(a) of these claims for the same reasons set forth above with respect to
claims 1 and 11.
NEW GROUND OF REJECTION
Claims 1—18 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. We select independent claim 1 as
representative of the claims being rejected.
The Court in Alice emphasized the use of the two-step framework for
analysis of patentability:
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we then
ask, “[wjhat else is there in the claims before us?” To answer
that question, 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.
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012))(Intemal citations omitted).
We determine that the subject matter of the claims, as reasonably
broadly construed, is about accumulating funds in a target account (i.e.,
saving money in an account). Claim 1, for example, recites a system for
accumulating funds in a target account that comprises a mobile computing
device, and a central server. The mobile unit operated by a user generates a
formatted message including transaction data, and transmits the message
with transaction data to a central server over a communications network.
The central server receives transaction data, accesses a record associated
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with the user, reads a savings determinate associated with the user,
calculates a savings amount based on the savings determinant, increments a
current value based on the savings amount, and transmits a message to
transfer the current value from a source account to a target account. A
savings determinate is defined by the Specification at paragraph 38 as “any
data indicating] which of the savings schemes defined above is used for a
particular spending transaction,” and savings scheme information defines
how the user intends to save funds, credits, or money using the invention
(see Spec, 28—37). In other words, the claimed system recites steps for
accumulating funds in a target account based on a savings scheme associated
with a user.
Our review of the Specification also supports the determination that
the claims are directed to accumulating funds in a target account. For
example, the Specification describes that “a need exists for improvements
over the prior art. . . that provide more flexibility when accumulating funds
or credits in a savings or charitable account.” Id. 1 6. Likewise, the
Specification characterizes the technical field of the invention as relating to
“processes for accumulating credits for savings or donations programs over
telecommunications networks.” Id. 14.
Similar to Bilski v. Kappos, 561 U.S. 593 (2010), which involved risk
hedging, Alice, which involved intermediated settlement (see Alice, 134 S.
Ct. at 2356—57), Intellectual Ventures, which involved budgeting (see
Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1367 (Fed. Cir. 2015)), Cybersource, which involved verifying credit card
transactions (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011)), accumulating funds in a target account is a
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fundamental economic practice long prevalent in our system of commerce
and, as such, is abstract. Bilski, 561 U.S. at 611; see Alice, 134 S. Ct. at
2356, 2357.
In addition, the claimed steps performed by the system of claim 1
could be performed entirely through mental thought or with pen and paper.
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (“[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent eligible under § 101.”)
Turning to step two of the analysis, we see nothing in the subject
matter claimed, when considering the claimed elements both individually
and as an ordered pair, that transforms the abstract idea of accumulating
funds in a target account into an inventive concept. Nothing in the claims
purports to improve computer functioning or “effect an improvement in any
other technology or technical field.” Alice, 134 S. Ct. at 2359.
Claim 1 additionally recites various generic computer devices and
technology, including a “central server” and “mobile computing device” that
perform steps recited in the claims over a “communications network.”
Nothing in the claims or Specification indicates any technological
improvements to these elements (or their recited sub-components). See, e.g.,
Spec. H 18, 23—26, 56—63 (describing that the invention employs known
technology).
The Specification at paragraph 8 describes that the claimed central
server’s performance of the recited steps “solves [a] . . . problem that
requires the entity providing the savings or donation accounts [to] hav[e]
access to the consumer’s spending transaction data.” But this solution,
recited by the ordered combination, does not address any technical problem,
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such as a problem particular to computer networks or the Internet, nor does
it involve an improvement to computers or other technology. To the
contrary, it addresses a business challenge particular to implementing the
abstract idea of accumulating funds to a target account based on a user’s
savings scheme, that is, accumulating funds without providing the target
account with access to the user’s transaction data that the savings scheme
employs. The performance of the recited steps by generic computer
hardware, taken individually or as an ordered combination, are merely
directed to the same abstract idea of accumulating funds in a target account.
See also Cybersource, 654 F.3d at 1375 (“[t]hat purely mental processes can
be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson, [409 U.S. 63
(1972)]”).
For these reasons, we enter a new ground of rejection under § 101 as
to independent claim 1. Further, based on a review of the remaining claims
and their additional limitations, we enter a new ground of rejection under
§ 101 as to claims 2—18, for similar reasons, as for independent claim 1.
DECISION
The Examiner’s rejections of claims 1—18 under 35 U.S.C. § 103(a)
are reversed.
A NEW GROUND OF REJECTION has been entered for claims 1—6,
8—54, and 61 under 35 U.S.C. § 101.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE
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OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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).
REVERSED: 37 C.F.R, $ 41.50(b)
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