Ex Parte Chazen

Patent Trial and Appeal Board

Dec 18, 2017

13100155 (P.T.A.B. Dec. 18, 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.
13/100,155 05/03/2011 Aron L. Chazen TCRV 1000-2 2305
22470 7590 12/20/2017
HAYNES BEFFEL & WOLFELD LLP
P O BOX 366
HALF MOON BAY, CA 94019
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/20/2017 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):
docket @ hmbay .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARON L. CHAZEN
Appeal 2016-004587
Application 13/100,1551
Technology Center 3600
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, 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 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
held an oral hearing on September 11, 2017.
We AFFIRM.
According to Appellant, the “invention relates to a method, system[,]
and platform for money market mutual fund purchasing (and redemption)
for cash management. In particular, it relates to facilitating book order entry
1 According to Appellant, “[t]he real party in interest is Treasury Curve,
LLC.” Appeal Br. 1.
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Application 13/100,155
transactions for cash managers . . . that diversify their cash management by
purchasing money market mutual funds from multiple unaffiliated
providers.” Spec. ^ 2. Claims 1, 10, 14, and 18 are the only independent
claims on appeal. Below, we reproduce claim 1 as illustrative of the
appealed claims.
1. A computer-implemented method of supporting
cash management, the method including:
executing a plurality of overnight money market mutual
fund purchases on a book order entry basis for a cash
management client and confirming via SWIFT messages to the
cash management client resulting same-day transfers between
depositories holding funds for the cash management client and
money market fund providers, wherein the executing further
includes,
receiving by a computer instructions to purchase
certain overnight money market mutual funds for the cash
management client from a plurality of unaffiliated money
market providers and to draw settlement funds against
certain account balances at a plurality of unaffiliated
depositories;
electronically issuing from the computer binding
orders on behalf of the cash management client to
purchase the certain overnight money market mutual funds
and binding same-day transfer instructions against the
certain account balances to settle the purchase of the
certain overnight money market mutual funds; and
confirming resulting same-day transfers between
the depositories and the overnight money market fund
providers responsive to the instructions and binding orders
and sending one or more confirming SWIFT messages to
the cash management client.
2
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Application 13/100,155
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
The Examiner rejects claims 1, 3, 8, 10, 14, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Edmonds (US 2013/0144780 Al, pub. June 6,
2013), Earle (US 5,262,942, iss. Nov. 16, 1993), Rodriguez
(US 2008/0071665 Al, pub. Mar. 20, 2008), and Gianakouros
(US 2006/0031157 Al, pub. Feb. 9, 2006).
The Examiner rejects claims 2, 4-7, 9, 11-13, 15-17, 19, and 20
under 35 U.S.C. § 103(a) as unpatentable over Edmonds, Earle, Rodriguez,
Gianakouros, and Geoghegan (US 2011/0208640 Al, pub. Aug. 25, 2011).
ANALYSIS
101 Rejection
With respect to the 101 rejection, Appellant argues claims 1-20 as a
group (i.e., without providing separate subheadings). See Appeal Br. 4-11.
We base our analysis on claim 1, and claims 2-20 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv) (“For each ground of rejection applying to
two or more claims, the claims may be argued separately . . ., as a group . . .,
or as a subgroup .... When multiple claims subject to the same ground of
rejection are argued as a group or subgroup by appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone. . . . Under each heading identifying the
ground of rejection being contested, any claim(s) argued separately or as a
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subgroup shall be argued under a separate subheading that identifies the
claim(s) by number.”).
We determine whether a claim is directed to patent-eligible subject
matter based on the Supreme Court’s framework, as articulated in Alice
Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), which
follows the two-part test set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (2012). That is, a claim fails to
recite patent-eligible subject matter if, in accordance with the first part of the
Alice test, the claim is directed to patent-ineligible subject matter, e.g., an
abstract idea, and if, in accordance with the second part of the test, the claim
lacks any further claim limitations that, when “considered] . . . both
individually and ‘as an ordered combination’ . . . ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 78, 79).
Appellant argues that the rejection is in error because
[t]he [Non-Final] Office Action [mailed Oct. 15, 2017, (“Non-
Final Action”)] at 3—4 mistakenly asserts that the claims do not
move beyond “supporting cash management” to improving
another technology or technical field, that we merely disclose
well-understood, routine and conventional technology. This is
mistaken because it ignores the claim limitations by asserting a
three word “gist” of the invention and because our claims
actually describe a technical integration of a multisupplier
interface network interface with a specialized treasury
workstation or other treasury accounting package using
specialized SWIFT format messages and the secure SWIFT
network.
Appeal Br. 5 (footnote omitted). To the extent that Appellant are arguing
that the Examiner incorrectly determines that the claims are directed to the
abstract idea of supporting cash management (see Non-Final Action 3—4; see
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Application 13/100,155
also Answer 18), in accordance with the first part of the Alice test, we
disagree with Appellant.
The “directed to” inquiry [] . . . cannot simply ask whether
the claims involve a patent-ineligible concept, because
essentially every routinely patent-eligible claim involving
physical products and actions involves a law of nature and/or
natural phenomenon—after all, they take place in the physical
world. See Mayo, 132 S. Ct. at 1293 (“For all inventions at some
level embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.”) Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light of
the specification, based on whether “their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016
WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into “the focus of
the claimed advance over the prior art”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The
court put the question as being “whether the focus of the claims is on [a]
specific asserted improvement in computer capabilities ... or, instead, on a
process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool.” Id. at 1335-36. In this case, according to Appellant,
claim 1 improves the previously known practice where “[t]he treasury or
another operating officer of a corporation, state or local government, or
financial firm who might want to buy money market mutual funds from 10
sources would call the sources or go to each of their individual websites or
software interface packages,” by using one computer. Spec. ]|3. Thus,
claim 1 is a process that qualifies as the abstract idea of supporting cash
management, which uses computers as a tool.
With respect to Appellant’s argument above that the claims do not
“merely disclose well-understood, routine[,] and conventional technology”
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(Appeal Br. 5) and, thus, presumably that the claims are transformed into a
patent-eligible application in accordance with the second part of the Alice
test, we disagree with Appellant. Appellant does not argue or otherwise
establish, for example, that they invented SWIFT messages, overnight
money market funds, or the computers (e.g., treasury workstations) used to
implement the claimed method. Instead, the Specification supports the
Examiner’s finding that each of these is well-known and conventional. See,
e.g.. Spec. 1H3,4.
Appellant further argues that the “rejection should be overruled due to
lack of evidence to support the [Examiner’s] factual [findings].” Appeal
Br. 7. However, there is no requirement that the Examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See USPTO’s June 25, 2014
“Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.C
see also, 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) (footnote
omitted)). We agree that evidence may be helpful in certain situations
where, for instance, facts are in dispute. But it is not always necessary.
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Based on the above analysis in light of the claims themselves, we are
unpersuaded it is necessary in this case.
Appellant argues that “[t]he [Sjection 101 rejection on pages 3—4 [of
the Non-Final Office Action] does not come close to satisfying the currently
effective guidance or to following the USPTO’s Abstract Idea Worksheet.”
Appeal Br. 7-8. This is unpersuasive, however, as Appellant’s argument
does not demonstrate that the rejection fails to satisfy the legal requirements
for a rejection under Section 101.2
Appellant argues that the claims are not directed to an abstract idea.
See Appeal Br. 8-9. We disagree with Appellant. Claim 1 recites a
computer-implemented method of supporting cash management, the method
including: executing a plurality of overnight money market mutual fund
purchases on a book order entry basis for a cash management client and
confirming via SWIFT messages to the cash management client resulting
same-day transfers between depositories holding funds for the cash
management client and money market fund providers, wherein the executing
further includes: receiving by a computer instructions to purchase certain
2 35 U.S.C. § 132 sets forth a general notice requirement whereby Appellant
is notified of the reasons for a rejection together with such information as
may be useful in judging the propriety of continuing with prosecution of the
application. See, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). In
this case, the Examiner provided adequate explanation to meet the notice
requirement. The Examiner set forth the statutory basis of the rejection,
applied Alice’s two-part framework, and sufficiently articulated reasoning in
an informative manner, thus, meeting the notice requirement of 35 U.S.C.
§ 132. 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.”).
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Application 13/100,155
overnight money market mutual funds for the cash management client from
a plurality of unaffiliated money market providers and to draw settlement
funds against certain account balances at a plurality of unaffiliated
depositories; electronically issuing from the computer binding orders on
behalf of the cash management client to purchase the certain overnight
money market mutual funds and binding same-day transfer instructions
against the certain account balances to settle the purchase of the certain
overnight money market mutual funds; and confirming resulting same-day
transfers between the depositories and the overnight money market fund
providers responsive to the instructions and binding orders and sending one
or more confirming SWIFT messages to the cash management client. See
Appeal Br., Claims App. Appellant’s claim is similar to fundamental
economic and conventional business practices that our reviewing courts have
found patent ineligible, such as the concept of intermediated settlement in
Alice, and the concept of risk hedging in Bilski v. Kappos, 561 U.S. 593
(2010), held as abstract ideas beyond the scope of § 101. See Alice, 134 S.
Ct. at 2356; see also Bilski, 561 U.S. at 611.
We also do not agree with Appellant that “[t]he technology claimed
could not arise from a pre-Internet, pre-SWIFT network business
practice[, and, thus,] the claimed solution and improved system are
necessarily rooted in computer technology that overcomes a problem
specifically arising in the realm of specialized financial computer networks”
like the claims in DDR Holdings3 or Research Corporation Technologies,4
3 DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
4 Research Corporation Technologies, Inc. v. Microsoft Corporation, 627
F.3d 859 (Fed. Cir. 2010).
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Appeal Br. 8-9; see also Reply Br. 4-8; cf. Intellectual Ventures ILLCv.
Capital One Bank (USA), Natl Assn, 792 F.3d 1363, 1371 (Fed. Cir. 2015)
(“The patent claims here do not address problems unique to the Internet, so
DDR has no applicability.”).5 For example, in DDR Holdings, the Federal
Circuit determined that, although the patent claims at issue involved
conventional computers and the Internet, the claims addressed the problem
of retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
away from a host’s website after “clicking” on an advertisement and
activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal
Circuit, thus, held that the claims were directed to statutory subject matter
because they recite a solution “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” Id. Unlike the situation in DDR Holdings, Appellant does not
identify any problem particular to computer networks and/or the Internet that
claim 1 overcomes. Instead, as stated above, claim 1 improves the
previously known practice where “[t]he treasury or another operating officer
5 Moreover, even if a claimed concept solves a challenge existing in a
network (e.g., Internet) environment, this alone is insufficient to transform a
patent-ineligible abstract idea into patent-eligible subject matter. In
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014), for
example, the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was previously unknown
and never employed on the Internet before.” However, the recited steps
relating to the Internet, “such as updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access, and use of
the Intemetf]” were insufficient to transform the patent-ineligible abstract
idea (i.e., offering media content exchange for viewing an advertisement)
into patent-eligible subject matter. Id. at 715-16.
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of a corporation, state or local government, or financial firm who might want
to buy money market mutual funds from 10 sources would call the sources
or go to each of their individual websites or software interface packages,” by
using one computer to buy mutual funds. Spec. ^ 3.
Finally, Appellant argues that “[ljooking at the added limitations as an
ordered combination, the invention as a whole amounts to significantly more
than supporting cash management.” Appeal Br. 10. We disagree. Instead,
as set forth above, claim 1 improves the previously known practice where
“[t]he treasury or another operating officer of a corporation, state or local
government, or financial firm who might want to buy money market mutual
funds from 10 sources would call the sources or go to each of their
individual websites or software interface packages,” by using one computer
to purchase mutual funds. Spec. ^ 3. As also discussed above, Appellant
did not invent the SWIFT messaging system, or the computers used to
implement the claimed process. It is well-established by now that the
introduction of a generic computer or computing environment into the
claims does not alter the analysis here because
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
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” 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
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is not generally the sort of “additional featur[e]” that provides
any “practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.”
Alice at 2358 (alterations in original) (citations omitted). The relevant
question is whether the claim here does more than simply instruct the
practitioner to implement the abstract idea on a generic computer. Id.
at 2359. We agree with the Examiner, and conclude that it does not. See,
e.g., Answer 18-19.
103 Rejection
Independent claim 1 recites, among other recitations, “executing . . .
overnight money market mutual fund purchases . . . [through] receiving by a
computer instructions to purchase certain overnight money market mutual
funds for the cash management client. . . ; [and] electronically issuing from
the computer binding orders on behalf of the cash management client to
purchase the certain overnight money market mutual funds.” Appeal Br.,
Claims App.
Appellant argues that the rejection is in error, because “none of [the
applied references] . . . even mention[s] overnight money market mutual
funds.” Appeal Br. 13. See also id. at 15, 16 (citing Spec. 3, 23, 24).
The Examiner does not respond to Appellant’s arguments (see, e.g.,
Answer 19-20), and it is not apparent to us that any of the references alone
or in combination teaches purchasing overnight money market mutual funds,
as recited in claim 1. For example, although the Examiner states that
“Rodriquez shows . . . transfers between the depositories and the overnight
money market fund providers . . . (Rodriquez: pages 4-5, ^ 47)” (Non-Final
Action 6), this portion of Rodriquez mentions nothing about overnight
money market funds, but instead discusses SWIFT messages. Further,
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although the Examiner finds (see, e.g., Answer 4) that Edmonds’s
paragraph 101 is directed to overnight transactions, neither this paragraph
nor any other paragraph refers to mutual funds, or overnight money market
mutual funds. Thus, the Examiner does not adequately explain or support
how the combination of references would have yielded the purchase of the
claimed financial instrument, i.e., overnight money market mutual funds.
Consequently, based on our review, we agree with Appellant that the
Examiner’s combination lacks a rational underpinning and appears to be
based on impermissible hindsight.
Therefore, based on the foregoing, we do not sustain the Examiner’s
obviousness rejection of independent claim 1. We also do not sustain the
Examiner’s obviousness rejection of independent claims 10, 14, and 18, each
of which recites similar recitations as claim 1. Further, inasmuch as the
Examiner does not show how any other reference remedies the obviousness
rejection of the independent claims, we also do not sustain the obviousness
rejections of claims 2-9, 11-13, 15-17, 19, and 20 that depend on
independent claims 1, 10, 14, and 18.
DECISION
We AFFIRM the Examiner’s rejection of claims 1-20 under
35U.S.C. § 101.
We REVERSE the Examiner’s rejections of claims 1-20 under
35 U.S.C. § 103(a).
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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)
AFFIRMED
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