Ex Parte Cachey et al

Patent Trial and Appeal Board

Jun 23, 2017

10321783 (P.T.A.B. Jun. 23, 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.
10/321,783 12/16/2002 Joseph Cachey 90945-660180 (006030US) 2628
20350 7590 06/27/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH CACHEY, DEAN SEIFERT, MARK THOMPSON,
JUDY FLEMING, CAROL DARLAND, and KENNETH ALGIENE
Appeal 2016-001281
Application 10/321,7831
Technology Center 3600
Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 45—48, 50-58, and 74—81. We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellants identify Western Union Company of Englewood, Colorado as
the real party in interest. Br. 2.
Appeal 2016-001281
Application 10/321,783
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims methods and systems for checking an identity of a
customer before authorizing a transaction. (Spec. 1).
Claim 45 reproduced below, is representative of the subject matter on
appeal.
45. A method for processing a money-order request, the method
comprising:
maintaining, at a transaction computing device, a list of prohibited persons;
collecting, at the transaction computing device, name information from a
customer as part of the money-order request;
instructing a money-order dispenser to issue a requested money order with
the transaction computing device, the money order having a serial number;
associating the name information with the serial number with the transaction
computing device;
comparing, by the transaction computing device, the name information with
the list of prohibited persons, wherein comparing the name information
comprises performing a partial name comparison with entries on the list of
prohibited persons;
flagging, by the transaction computing device, the money-order request if
the name information matches an entry on the list of prohibited persons;
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declining to authorize payment of the money order if the name information
matches an entry on the list of prohibited persons; and
periodically, by the transaction computing device, reviewing collected name
information to identify anomalous repetition of certain names, wherein
reviewing collected name information comprises performing a statistical
analysis of collected name information.
THE REJECTION
Claims 45—48, 50-58, and 74—81 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 45—48, 50—58, and 74—81 under
35 U.S.C. § 101.
Each of independent claims 45, 74, and 78 requires in one form or
another, viz. 1) maintaining a list of prohibited persons; 2) collecting name
information from a customer as part of the money-order request; 3)
instructing a money-order dispenser to issue a requested money order, the
money order having a serial number; 4) associating the name information
with the serial number; 5) comparing the name information with the list of
prohibited persons, wherein comparing the name information comprises
performing a partial name comparison with entries on the list of prohibited
persons; 6) flagging the money-order request if the name information
matches an entry on the list of prohibited persons; 7) declining to authorize
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payment of the money order if the name information matches an entry on the
list of prohibited persons; and 8) periodically reviewing collected name
information to identify anomalous repetition of certain names, wherein
reviewing collected name information comprises performing a statistical
analysis of collected name information. Appx. Claim 45.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . 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. [The Court] described step two of
this analysis 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
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While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The steps listed above result in declining to authorize payment of the
money order if name information matches an entry on the list of prohibited
persons. The Specification at paragraph 2 recites that the “application
relates to methods and systems for checking an identity of a customer before
authorizing a transaction.” In paragraph 4, the Specification describes
.. .anonymity provided by such transactions has
been abused. This is of particular concern where
the transaction is used as part of an illegal purpose
or as part of providing funding for an illegal
purpose, as may be the case when it is used, for
example, in a money-laundering scheme. There is
accordingly a general need in the art for structuring
certain types of transactions that have a risk of
being used for illegal purposes to mitigate or
discourage such misuse.
Thus, all this evidence shows that the independent claims are directed to
lowering the risk of illegal purposes in a financial transaction.
It follows from prior Supreme Court cases, and Gottschalk v. Benson,
409 U.S. 63 (1972) in particular, that the claims at issue here are directed to
an abstract idea. Like the algorithm in Gottschalk, lowering the risk of
illegal purposes in a financial transaction is a mathematical algorithm that
preempts all implementations and uses. We find that lowering the risk of
illegal purposes in a financial transaction is a fundamental economic practice
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because fraud/illegal purposes debases the balance of economic equilibrium.
Fundamental economic practices are an “abstract idea” beyond the scope of
§ 101. See Alice Corp. Pty. Ltd. 134 S. Ct. at 2356-57.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of performing a mathematical algorithm in Gottschalk
and the concept of lowering the risk of illegal purposes in a financial
transaction at issue here. Both are squarely within the realm of “abstract
ideas” as the Court has used that term. See Alice Corp. Pty. Ltd. 134 S. Ct.
at 2357. That the claims do not preempt all forms of the abstraction or may
be limited to the abstract idea in the financial services setting does not make
them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1360-1361 (Fed. Cir. 2015). Perhaps more to the point, claim 45 does
no more than compare name information to evaluate if the orderer is trust­
worthy. Evaluating a person’s trustworthiness is the epitome of abstraction.
The introduction of a computer and computer-readable storage medium
into the claims does not alter the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
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deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement^]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ claims simply
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recite the concept of lowering the risk of illegal purposes in a financial
transaction as performed by a generic computer. The method claims do not,
for example, purport to improve the functioning of the computer itself. Nor
do they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of selecting a part using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd. 134 S. Ct, at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. 134 S. Ct. at 2360 (alterations in original).
We are not persuaded by Appellants’ argument that because the
Office Action “does not reject the claims under § 102 or § 103... it must be
true that that allowing such a claim to proceed to allowance would not pre­
empt all implementations of the abstract idea itself.” (Appeal Br. 7). This is
because the standard for patentability under 35 U.S.C. § 103(a) is
obviousness, the standard for patentability under 35 U.S.C. § 102 is novelty,
and the standard for patent eligibility under 35 U.S.C. § 101 is abstract idea.
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Each of these standards are separately required to be met before patentability
can be conferred on invention, which is not the case here based on the latter
standard.
Appellants do not argue the specifics of the dependent claims under
this rejection. (Appeal Br. 5—7). Thus, we summarily sustain the rejection of
these claims.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 45—48, 50—
58, and 74—81 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 45—48, 50—58, and 74—
81 is affirmed.
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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