Ex Parte Clayton et al

Patent Trial and Appeal Board

Jan 19, 2018

12620875 (P.T.A.B. Jan. 19, 2018)

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.
12/620,875 11/18/2009 Robert Clayton 6857-31809 1413
35690 7590 01/23/2018
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT CLAYTON, ANDREW JAMISON,
PRASHANT HURRIA, and JITIN GAMBHIR1
Appeal 2016-007139
Application 12/620,875
Technology Center 3600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
BETH Z. SHAW, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—8, 10, 13—15, 17, 18, and 21—26, all
the pending claims in the present application. Claims 9, 11, 12, 16, 19, and
20 are canceled. See App. Br. 4. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants name III Holdings 1, LLC as the real party in interest.
App. Br. 2.
Appeal 2016-007139
Application 12/620,875
The present invention relates generally to enabling buyer initiated
payments. See Abstract.
Claim 1 is illustrative:
1. A method, comprising:
receiving, by a computing system, respective
financial account attribute sets for ones of a plurality of
different financial account types, wherein the ones of the
different financial account types are associated with different
geographic areas, and wherein the financial account attribute
sets each specify at least: account information fields, field sizes,
and rules for validating the account information fields;
receiving, by the computing system, account
information for an account of a particular account type of the
plurality of different financial account types;
determining, by the computing system, a data
structure for storing the account information, wherein the data
structure is determined based on the account information fields
and field sizes for the particular account type;
storing, by the computing system, the account
information using the data structure;
validating, by the computing system, account
information stored using the data structure, wherein the
validating is based on the rules for validating the account
information fields; and
processing, by the computing system, a payment
transaction for the account based on the validated account
information.
Appellants appeal the following rejection:2
Claims 1—8, 10, 13—15, 17, 18, and 21—26 are rejected under
2 It appears that the Examiner has withdrawn both the rejection of claims
1—8, 10, 13—15, 17, 18, and 21—26 under 35 U.S.C. § 112, first paragraph,
and the rejection of claims 1—8, 10, 13—15, 17, and 24—26 under 35 U.S.C.
§112, second paragraph, because the Examiner only states that “the
[Ejxaminer maintains the [§] 101 rejection” (see Advisory Action dated July
17,2015).
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Application 12/620,875
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Rejection under § 101
Issue: Did the Examiner err in finding that the claims are directed to
non-statutory subject matter?
With respect to independent method claim 1, and similarly,
independent system claim 21 and independent computer-readable medium
claim 24, the Examiner finds these claims are directed to an abstract idea of
“enabling buyer initiated payments via a payment management system”
which is “a fundamental economic practice” (Final Act. 2). The Examiner
further finds that “[t]he claims do not include limitations that are
‘significantly more’ than the abstract idea because the claims do not include
an improvement to another technology or technical field, an improvement to
the functioning of the computer itself’ (id.) and “require no more than a
generic computer . . . that are well-understood, routine[,] and conventional
activities” (id. at 3).
Appellants contend that the asserted abstract idea “is extremely broad
and ignores most of the features of claim 1 [,] . . . the Examiner has not
considered the claim ‘as a whole’” (App. Br. 15). Appellants further
contend that “the claims recite limitations that amount to significantly more
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. . . [because they] improve an area of technology: database processing” {id.
at 16), for example, “claim 1 in the present case solves a database-centric
problem with a claimed solution that is necessarily rooted in computer
database technology. . . [by] allowing] a database to be used to store data
for various different account types, while genericizing certain account
fields” {id. at 17).
We disagree with Appellants’ contentions. Instead, we find that the
Examiner has provided a sufficient response supported by a preponderance
of evidence (Ans. 2—5). As such, we refer to, rely on, and adopt the
Examiner’s findings and conclusions set forth in the Final Rejection and the
Answer. Our discussions here will be limited to the following points of
emphasis.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has 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 Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work”). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012). In
Mayo, the Court stated that “to transform an unpatentable law of nature into
a patent eligible application of such a law, one must do more than simply
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state the law of nature while adding the words ‘apply it. Id. at 72 (internal
citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that ‘“transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 79, 78).
In other words, the second step is to “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.’” Id. (brackets in original) (quoting
Mayo, 566 U.S. at 72—73). The prohibition against patenting an abstract
idea “cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment or adding insignificant post[-]
solution activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (internal
citation and internal quotation marks omitted). The Court in Alice noted that
“‘[sjimply appending conventional steps, specified at a high level of
generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’”
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82, 77, 72).
Step one: Are the claims at issue directed to a patent-ineligible concept?
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Application 12/620,875
Claim 1 recites six steps: (a) receiving; (b) receiving; (c) determining;
(d) storing; (e) validating; and (f) processing. Each of these steps involve
account information. Financial account attribute sets and account
information are received. A data structure is determined. The account
information is stored and validated using the data structure. Finally, a
payment transaction for the account is processed. However, information as
such is intangible. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451
n.12 (2007). Thus, this is merely the essence of enabling buyer initiated
payments via a payment management system.
On the record before us, Appellants dispute that the claims are
directed to an abstract idea, in essence because they believe the asserted
abstract idea “is extremely broad and ignores most of the features of claim
1” (App. Br. 15).
We are not persuaded of error at least in part because Appellants have
not persuasively argued why any ignored features would change the
Examiner’s determination that the claims are directed to an abstract idea.
Furthermore, information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that “collecting information, analyzing it, and displaying certain
results of the collection and analysis” are “a familiar class of claims
‘directed to’ a patent-ineligible concept”); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
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Application 12/620,875
1370 (Fed. Cir. 2011). Further, claim 1 employs little more than receiving
various account identifier formats (see Spec. 192). Such processes have
been found to be abstract ideas. See Digitech, 758 F.3d at 1351 (quoting
Parker v. Flook, 437 U.S. 584, 595 (1978)); see also In re Maucorps, 609
F.2d 481, 485—86 (CCPA 1979) (holding a method of “optimizing the
organization of sales representatives” unpatentable), cited in CyberSource,
654 F.3d at 1371 n.2.
Because the claims are directed to information collection and analysis
to enable buyer initiated payments, an abstract idea, the claims at issue are
directed to patent-ineligible subject matter.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
The Examiner finds that in the claims “the computer processor is
recited at a high level of generality to simply perform the generic computer
functions of generating, receiving, processing, transmitting[,] and storing
information” (Ans. 4). We agree with the Examiner.
“A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Alice, 134 S. Ct. at 2357 (brackets in
original) (quoting Mayo, 566 U.S. at 77—78). The prohibition against
patenting an abstract idea “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment or adding
insignificant post-solution activity.” Bilski, 561 U.S. at 610—11 (internal
citation and internal quotation marks omitted). The recitations in claim 1
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pertaining to “a computer system” are analogous to the recitation of a
conventional “computer” discussed in Alice.
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can also provide a ‘“useful clue’” in the second
step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s
MoT test, a claimed process can be considered patent-eligible under § 101 if:
(1) “it is tied to a particular machine or apparatus”; or (2) “it transforms a
particular article into a different state or thing.” In re Bilski, 545 F.3d 943,
954 (Fed. Cir. 2008) (citing Gottschalk, 409 U.S. at 70).
Here, Appellants merely contend that “the claims are directed to
improvements in computer-related technology for similar reasons to the
claims in EnfislT (Reply Br. 4) and the “Examiner’s allegation that there are
no improvements to the technical field and computer technology is undercut
by the lack of art-based rejections” {id. at 5). In essence, Appellants merely
contend that method claim 1 and its corresponding system and medium
claims 21 and 24 are tied to a computer and offer improvements to computer
technology, but do not argue that the claims are involved in any type of
transformation of any particular article.3 Claim 1 merely recites that each
step is performed “by a computing system” (see claim 1). We agree with the
Examiner that claim 1 simply incorporates a generic component, i.e., a
computing device, into the method to perform the abstract concept of
enabling buyer initiated payments.
3 Alice also confirmed that if patent systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent media claims. Id.
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As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
2013) (claims reciting “generalized software components arranged to
implement an abstract concept... [of generating insurance-policy-related
tasks based on rules to be completed upon the occurrence of an event] on a
computer” not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333—34 (Fed. Cir. 2012) (“[s]imply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible” (internal citation omitted)).
Limiting such an abstract concept of “enabling buyer initiated payments” to
generic components, such as a computing system, does not make the abstract
concept patent-eligible under 35 U.S.C. § 101.
In addition, we note Appellants’ claims are neither rooted in computer
technology as outlined in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), nor do they seek to improve any type of computer
capabilities, such as a “self-referential table for a computer database”
outlined in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336—37 (Fed.
Cir. 2016). Instead, Appellants’ claims simply recite an abstract concept of
collecting “financial account attribute sets and account information and
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determining a data structure for storing the information, then validating the
information and processing a payment transaction,” i.e., collecting and
analyzing information.
Finally, addressing Appellants’ argument regarding the absence of a
prior art rejection, we stress that such absence does not necessarily imply
that the claims are defined over prior art or non-obvious. Moreover, while
“novelty in implementation of the idea is a factor to be considered ... in the
second step of thq Alice analysis” (Ultramercial, 772 F.3d at 715 (emphasis
added)), “the addition of merely novel or non-routine components to the
claimed idea [does not] necessarily tum[] an abstraction into something
concrete” (Ultramercial, Inc., 772 F.3d at 715). “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry” (Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2117 (2013)). “[PJatent-eligibility does not turn on ease of execution
or obviousness of application. Those are questions that are examined under
separate provisions of the Patent Act.” Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (citing Mayo, 566
U.S. at 89-90). Thus, merely because the Examiner has not presented a
prior art rejection under §§102 and/or 103 does not overcome a § 101
rejection.
Because Appellants’ independent claims 1,21, and 24 are directed to
a patent-ineligible abstract concept and do not recite something
“significantly more” under the second prong of the Alice analysis, we sustain
the Examiner’s rejection of these claims as well as respective dependent
claims 2—8, 10, 13—15, 17, 18, 22, 23, 25, and 26 under 35 U.S.C. § 101 as
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being directed to non-statutory subject matter in light of Alice and its
progeny.
For the foregoing reasons, Appellants’ contentions are unpersuasive
as to error in the rejection under 35U.S.C. § 101.
DECISION
We affirm the Examiner’s § 101 rejection.
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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