Ex Parte Chen et al

Patent Trial and Appeal Board

Nov 8, 2017

12875855 (P.T.A.B. Nov. 8, 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.
12/875,855 09/03/2010 Andrew Dali Chen P2395.10162US03 1056
132897 7590 11/13/2017
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
EXAMINER
VIZVARY, GERALD C
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/13/2017 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):
docket @ mabr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW DALI CHEN,
BRIAN ANDREW PHILLIPS, CHAD MEREDITH HURLEY,
DANTLEY DAVIS, PAUL ARTHUR MARTIN, and YU PAN
Appeal 2015-0046741
Application 12/875,855
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—20. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to facilitating payment transactions
between users of a payment system. Spec. 12.
1 The Appellants identify eBay Inc. as the real party in interest. Appeal
Br. 2.
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Application 12/875,855
Claim 1 is illustrative:
1. A payment system, comprising:
a database to store data for a plurality of payment
transactions for two or more items provided by two or more
providers, the plurality of payment transactions requested by at
least one requestor of the two or more items; and
a transaction aggregation engine configured to select a
first set of payment transactions from the plurality of payment
transactions as a first aggregated group based on determining that
each of the first set of payment transactions is associated with a
first provider selected from the two or more providers, to select
a second set of payment transactions from the plurality of
payment transactions as a second aggregated group based on
determining that each of the second set of payment transactions
is associated with a second provider selected from the two or
more providers, and to present, via a user device, the at least one
requestor with the first and second aggregated groups such that
the first set of payment transactions are distinguished from the
second set of payment transactions at least with respect to
provider information.
Claims 1—20 are rejected under 35 U.S.C. § 101 as reciting ineligible
subject matter in the form of an abstract idea.
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over O’Leary (US 2002/0077978 Al, pub. June 20, 2002) and Clemens
(US 2002/0111915 Al, pub. Aug. 15, 2002).
We AFFIRM.
II. ANALYSIS
A. Rejection under 35 U.S.C. $ 101
1. Overarching Legal Framework
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
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Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78—79 (2012)).
In accordance with that framework, we first determine whether the claim is
“directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”); Diamond v. Diehr, 450 U.S. 175, 184 (1981)
(“Analyzing respondents’ claims according to the above statements from our
cases, we think that a physical and chemical process for molding precision
synthetic rubber products falls within the § 101 categories of possibly
patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
In determining what a claim is “directed to,” our reviewing court has
cautioned as follows:
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[Describing the claims at such a high level of abstraction and
untethered from the language of the claims all but ensures that
the exceptions to § 101 swallow the rule. See Alice, 134 S. Ct. at
2354 (noting that “we tread carefully in construing this
exclusionary principle [of laws of nature, natural phenomena,
and abstract ideas] lest it swallow all of patent law”); cf.
Diamond v. Diehr, 450 U.S. 175, 189 n. 12, 101 S. Ct. 1048, 67
L.Ed.2d 155 (1981) (cautioning that overgeneralizing claims, “if
carried to its extreme, make[s] all inventions unpatentable
because all inventions can be reduced to underlying principles of
nature which, once known, make their implementation
obvious”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
The following method is then used to determine whether what the
claim is “directed to” is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were
decided. See, e.g.,Elec. Power Grp., 830 F.3d at 1353—54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Flewellyn, The Common Faw Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355—57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (footnote omitted).
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
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combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
2. Analysis
We are not persuaded by the Appellants’ arguments that claims 1—20
do not recite an abstract idea in the form of a fundamental economic
practice, because, according to the Appellants, the claims instead are
directed to “a system configured to perform a specific set of operations,” and
because the Examiner has not provided “substantial evidence” in support of
the rejection. Reply Br. 2—8. We will address each argument in turn.
i. What the Claims are “Directed to ”
The Examiner asserts the claims are “directed to an abstract idea,
specifically obtaining data for payment transactions, aggregating payment
transactions by groups of providers and presenting a requestor with the
groups distinguishing the payments of the first and second groups.” Ans. 2—
3 (emphasis omitted). The Appellants disagree, asserting the following:
Instead, independent claim 1 is directed to a system configured
to perform a specific set of operations pertaining to not only
“storing] data for a plurality of payment transactions for two or
more items provided by two or more providers, the plurality of
payment transactions requested by at least one requestor of the
two or more items” but also “selecting] a first set of payment
transactions from the plurality of payment transactions as a first
aggregated group based on determining that each of the first set
of payment transactions is associated with a first provider
selected from the two or more providers” and “presenting] . . .
the at least one requestor with the first and second aggregated
groups such that the first set of payment transactions are
distinguished from the second set of payment transactions at least
with respect to provider information.”
Reply Br. 8 (emphasis added).
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We begin our analysis of what the claims at issue here are “directed
to” with express claim language. For example, independent method claim
12 recites accessing data about “payment transactions” for a single
“requestor” from a data store, and then selecting groups of payment
transactions, where within each group, the “provider” is the same entity. In
evaluating the express claim language, we discern that it would be helpful to
further construe certain claim terms, namely, “payment transaction,”
“requestor,” and “provider.” Accordingly, to aid in those constructions, we
turn to the Specification.
Beginning with “payment transaction,” the Specification does not
specifically use this term. The Specification, however, does describe the
claimed invention as directed to facilitating “payment in satisfaction of a
payment obligation imposed by a transaction.” Spec. 16. The Specification
also describes “an automatic payment process with respect to at least a
subset of the purchase transactions.” Id. We, therefore, construe “payment
transaction” as a purchase transaction from which arises an obligation to
pay.
The Specification also does not specifically use either of the terms
“requestor” and “provider.” The Specification does, however, describe
comparing retrieved transaction records for “identifying purchase
transactions under which a user 20 has payment obligations, and for which
no payment is recorded.” Spec. 136. We, thus, construe the term
“requestor” to encompass not only a party requesting transaction records, as
claimed, but also the party that incurred the payment obligation of each
transaction record, i.e., the buyer who has an obligation to pay for the
purchase. The Specification also describes that it “determines whether any
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of the multiple transactions previously identified as having outstanding
payment obligations require payment to a common user or entity (or payee).
This determination is made by, for example, identifying records with
outstanding payment obligations and reflecting a common seller user
identifier.” Spec. 148. We, therefore, construe “provider” as being a seller,
who is also a payee under the payment obligations arising from the grouped
purchased transactions.
Finally, the Specification describes its overall system as operating to
“identify transactions for which records exist within the transaction table 40
for which an unsatisfied and extant payment obligation exists.” Spec. 137.
Based on all of the above, we construe the recited data about “payment
transactions” as invoice data from a supplier about purchase transactions for
which a payment obligation is unmet.
Accordingly, when all of the above is considered in the aggregate, we
determine that independent claim 12 is directed to “sorting invoices into
groups by seller.” We consider each limitation of independent claim 12,
discern that they are consistent with this determination, and further discern
that our determination is not an overgeneralization of the type cautioned
against in Enfish. Furthermore, the dependent claims additionally refine
details about the transactions, such as being unpaid or in a particular
currency, and provide functions to take against the unpaid invoices, such as
paying or removing them, paying from particular accounts, including
shipping insurance costs, and determining how many invoices or groups are
concurrently displayed. We discern, however, that the dependent claims do
not alter our above determination as to what the independent claim 12 is
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“directed to.” We also determine that our above analysis applies equally to
independent claims 1 and 15, and their respective dependent claims.
Returning to the Examiner’s and the Appellants’ positions, we see
little substantive difference between our determination and the Examiner’s
assertion that claims are directed to “obtaining data for payment
transactions, aggregating payment transactions by groups of providers and
presenting a requestor with the groups distinguishing the payments of the
first and second groups.” By contrast, we are unclear as to the relevance of
the Appellants’ assertion that “independent claim 1 is directed to a system
configured to perform a specific set of operations” (Reply Br. 8), in that the
Examiner’s formulation of what the claims are directed to does include a
specific set of operations, namely, obtaining, aggregating, and presenting
payments. Accordingly, we are unpersuaded of Examiner error in this
regard.
ii. Whether What the Claims are “Directed to ” is a
Fundamental Economic Practice
The Examiner asserts as follows:
Here, Claims 12—19 have been found to be directed to an
abstract idea, specifically obtaining data for payment
transactions, aggregating payment transactions by groups of
providers and presenting a requestor with the groups
distinguishing the payments of the first and second groups.
This is a fundamental economic concept.
Ans. 2—3. Fundamentally, the Appellants take issue with the Examiner’s
failure to provide evidence in support of their determination as to what is a
“fundamental economic concept.” Reply Br. 2—10. In support of their
position, the Appellants assert that “the Alice and Bilski Courts sought out
and found authoritative documentation to show that an abstract idea in a
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claim was, in fact, a fundamental economic practice long prevalent in our
system of commerce.” Reply Br. 3. While at times we may agree that it
may be helpful to cite evidence in support of the Examiner’s assertion, we
are unpersuaded that is the case here. The Appellants do not identify any
disputed facts, nor do they explain how extrinsic evidence potentially bears
on the ultimate legal issue. Absent any suggestion of a factual dispute on
which the legal question of subject-matter eligibility turn, we are
unpersuaded that it is proper, or appropriate, to require the Examiner to
submit evidence in the manner set forth above. Cf. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“The panel then reviews
the obviousness rejection for error based upon the issues identified by
appellant, and in light of the arguments and evidence produced thereon.”).
As indicated above, the instant claims are directed to “sorting invoices
into groups by seller.” We have little difficulty in agreeing with the
Examiner that one familiar with accounts payable systems would have
understood that “sorting invoices into groups by seller” are a common
practice in many industries, where a remittance advice2 is normally enclosed
to list the invoices that are included in the single remitted payment. See,
e.g., Spec. H3^4 (“[A] purchase transaction may impose payment
obligations on one or more of the parties to a purchase transaction. . . .
Where a particular user has engaged in multiple purchase transactions,
2 What is Remittance Advice? Online Accounting Software j e-conomic,
https:// www.revi so, co m/accoimtingsoftware/accounting-words/remittance-
advice (last visited Nov. 2, 2017) (“Remittance advices are notes to suppliers
sent from their customers to let them know that they have paid their
invoices. Remittance advices can include items like invoice numbers,
invoice amounts and text notes,”).
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utilizing one or more transaction systems, making payments for these
multiple transactions can be cumbersome.”). We, thus, have no issue with
the Examiner concluding that “sorting invoices into groups by seller” is a
fundamental economic practice long prevalent in our system of commerce
and, thus, patent-ineligible subject matter. Ans. 2—3. See also Intellectual
Ventures I v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) (“routing
email messages based on specific criteria (rules)” is patent ineligible subject
matter); Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d
1306 (Fed. Cir. 2015) (“using organizational and product group hierarchies
to determine a price” is patent ineligible subject matter); Content Extraction
and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343
(Fed. Cir. 2014) (“1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory” is patent
ineligible subject matter), cert denied, 136 S. Ct. 119 (2015).
ii. Whether the Claims Recite “Significantly More
Addressing the second step of the Alice analysis, the Appellants only
argument that the claims are patentable by being directed to “significantly
more” than an abstract idea, is that “the arguments presented in Section IV
of the Appeal Brief, showing that the claims are not rendered obvious by the
cited art, are incorporated by reference here,” thus, allegedly showing the
claim are “directed to ‘something more’ than an abstract idea in Part 2” of
the Mayo test. Reply Br. 9-10. We are not persuaded by the Appellants’
arguments, which merely and conclusorily identify shortcomings in the cited
prior art, without explaining why such shortcomings amount to
“significantly more.” Id.', see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (“[T]he addition of merely novel or non-routine
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components to the claimed idea [does not] necessarily tum[] an abstraction
into something concrete.”).
Instead, we agree with the Examiner that “[although the claims do
recite the use of a computer, i.e. one or more processors, that is nothing
more than a generic computer, performing generic, well-understood and
routine computer functions and nothing more would be required to
implement the aforementioned abstract idea.” Ans. 3 (emphasis omitted).
Independent method claim 12 recites that the claimed selecting step
uses “one or more processors,” and independent “medium” claim 20 recites
that the claimed steps are “executed by a processor.” The Specification
describes that “exemplary computer system 200 includes a processor 202
(e.g., a central processing unit (CPU) a graphics processing unit (GPU) or
both), a main memory 204 and a static memory 206, which communicate
with each other via a bus 208.” Spec. 1 56. The claimed “processor(s)” are
therefore merely a component of a general purpose computer, which does
not satisfy the inventive concept. “[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.” DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(internal citations and quotation marks omitted).
We find no meaningful distinction between independent method claim
12 and either independent system claim 1 or independent storage device
claim 20; the claims all are directed to the same underlying invention.
Nothing in claims 1—20 purports to improve computer functioning or “effect
an improvement in any other technology or technical field.” Alice, 134
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S. Ct. at 2359. Nor do claims solve a problem unique to the Internet. See
DDR Holdings, 773 F.3d at 1257. The claims also are not adequately tied to
“a particular machine or apparatus” because they merely rely on a general
purpose computer. Bilski, 561 U.S. at 601.
ii. Conclusion
Because we are unpersuaded that the Examiner has erred in asserting
that claims 1—20 are directed to a fundamental economic practice, and also
are unpersuaded that anything in the claims adds an inventive concept, we
sustain the Examiner's rejection of claims 1—20 under 35 U.S.C. § 101.
B. Rejection under 35 U.S.C. $ 103(a)
Independent claims 12 recites “presenting, via a user device, the at
least one requestor with the first and second aggregated groups such that the
first set of payment transactions are distinguished from the second set of
payment transactions at least with respect to provider information.”
We are persuaded by the Appellants’ argument that paragraph 50 of
Clemens, cited by the Examiner as disclosing the aggregation of groups of
invoices by biller, at pages 6—7 of the Final Action, does not disclose or
suggest the claim language. Appeal Br. 9-11. Paragraph 50 of Clemens
merely discloses customer, financial, and preference information about a
user stored in a user profile or other database. See Clemens 1 50.
We are persuaded also by the Appellants’ arguments that the
additional citations to Clemens provided by the Examiner (see Ans. 6—7) do
not disclose the selecting or displaying groups of transactions by payee, as
claimed, because Clemens instead discloses only profile information,
general rules, and gathering order information from multiple order systems
to a single payment system. Reply Br. 13—14. We agree that cited
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paragraphs 39, 48, and 63 of Clemens do no more than disclose basic profile
information and stored generic rules (Clemens H 39, 48) and retrieval of
order information from multiple order systems, in that “payment manager 20
may obtain order information from multiple order tracking systems and
group it with payment information in a single location.” {Id. 1 63). Though
it is possible that multiple orders could be from a single supplier, that
possibility is not recited or required by Clemens’ system, which does not
disclose grouping any such orders by biller, or displaying multiple orders
from a single biller together, as claimed.
Finally, we are persuaded by the Appellants’ arguments that the
Examiner’s new assertions, that O’Leary discloses at least a portion of the
claim language previously asserted to be disclosed in Clemens (see Ans. 5—
6), are incorrect because O’Leary instead discloses only a consolidation of
multiple billers into a single billing provider’s system, not the grouping of
transactions by provider, as claimed. Reply Br. 11—13. The first two cited
paragraphs of O’Leary merely discuss, generally, a system to pay bills
electronically online (O’Leary H 20, 25). O’Leary further discloses bill
consolidation generally {Id. 1126), and “a central service provider [which]
consolidates e-bills from many different billers” {Id. 1131, Fig. 7). Rather
than grouping transactions from “many different billers,” the claims instead
group multiple transactions from the same biller, which is thus not disclosed
at the cited sections of O’Leary.
For these reasons, we agree with the Appellants that the Examiner has
failed to establish a prima facie case of obviousness of independent claims 1,
12, and 20 based on the cited sections of O’Leary and Clemens. For this
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reason, we do not sustain the rejection of claims 1, 12, and 20, nor of
dependent claims 2—11 and 13—19, rejected along with claims 1, 12, and 20.
DECISION
We AFFIRM the rejection of claims 1—20 under 35 U.S.C. § 101.
We REVERSE the rejection of claims 1—20 under 35 U.S.C. § 103(a).
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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