Ex Parte Ebeling et al

Patent Trials and Appeals Board

Jun 28, 2019

13829552 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/829,552 03/14/2013
29053 7590 07/02/2019
NORTON ROSE FULBRIGHT US LLP
2200 ROSS A VENUE
SUITE 3600
DALLAS, TX 75201-7932
FIRST NAMED INVENTOR
Michael William Ebeling
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MNGM.P0052US/1000361478 6112
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL WILLIAM EBELING and
MICHAEL E. HERMANSEN
Appeal2018-002122
Application 13/829,552 1
Technology Center 3600
Before MARC S. HOFF, BARBARA A. PARVIS, and SCOTT E. BAIN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 6-8, 10, 13, 15, 16, 21-24, 27, and 29-36. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Appellants' invention is a method, computer program product, and/or
apparatus for conducting a money transfer transaction. A money transfer
1 Appellants state that the real party in interest is Moneygram International
Inc. App. Br. 2.
2 Claims 2-5, 9, 11, 12, 14, 17-20, 25, 26, and 28 have been cancelled.
Final Act. 2.
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service server establishes an account configured to receive funds from a
direct deposit transaction. Such received funds may be used to fund a money
transfer transaction. Spec. ,r 6. In an embodiment, money transfer
transactions may be pre-staged by a sending party and completed upon
receiving the transaction funds via one or more direct deposit transactions.
Spec. ,r,r 5, 7.
Claim 1 is reproduced below:
1. A method for conducting a money transfer transaction
implemented in a system in which a money transfer service
server, a plurality of money transfer agent devices, a plurality of
user devices and a third party financial service server are
communicatively connected via the World Wide Web, the
method comprising:
receiving information, by the money transfer service
server, from a remote user device via the World Wide Web;
establishing, by the money transfer service server, based
on the information, an account configured to receive funds from
a direct deposit transaction, said account administered by the
money transfer service and said account including an account
number and a routing number associated with the account;
establishing the money transfer transaction prior to
receiving funding for the money transfer transaction;
receiving, by the money transfer service server, after the
establishing of the money transfer transaction, funds from a
direct deposit transaction, said funds received directly from a
payer of the funds, via the third party financial service server,
and transmitted to the established account; and
automatically and directly funding the established money
transfer transaction with the funds from the direct deposit
transaction and when the funds from the direct deposit
transaction are insufficient to meet a specific amount of the
established money transfer transaction, said funding comprises:
compiling funds, by the money transfer service server,
from a plurality of direct deposit transactions until the specific
amount is reached; and
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funding, by the money transfer service server, the
established money transfer transaction when the specific
amount is reached.
Claims 1, 6-8, 10, 13, 15, 16, 21-24, 27, and 29-36 stand rejected
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. 3
Throughout this Decision, we make reference to the Appeal Brief
("App. Br.," filed June 26, 2017), the Reply Brief ("Reply Br.," filed Dec.
19, 2017), and the Examiner's Answer ("Ans.," mailed Oct. 19, 2017) for
their respective details.
ISSUES
1. Is the claimed invention directed to a judicial exception?
2. Is the judicial exception integrated into a practical application?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category,
we are guided by the Supreme Court's two-step framework, described in
Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed
3 The Examiner has withdrawn the previous rejections under 35 U.S.C.
§ 103(a). Ans. 2.
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to." See Alice, 573 U.S. at 219 ("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."); see also Bilski v. Kappas, 561 U.S.
593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978));
and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); "tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning
v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 at 176; see also id. at 192 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be
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circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. (citing Benson and Flook); see, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "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]."' Id. (alterations in original) (quoting
Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-
eligible invention." Id.
The United States Patent and Trademark Office "USPTO" recently
published revised guidance on the application of§ 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance ("Memorandum"). 84 Fed. Reg. 50 (January 7, 2019). 4
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
4 https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf
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processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(seeMPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance.
ANALYSIS
SECTION 101 REJECTION
With regard to subject matter eligibility, Appellants make a unitary
argument directed to all pending claims. App. Br. 7-10. Accordingly, we
will select independent claim 1 as representative of the rejected claims.
Claim 1 recites, in pertinent part, the following limitations:
(a) receiving information, by a money transfer service server, from a
remote user device via the World Wide Web;
(b) establishing, by the money transfer service server, an account
configured to receive funds from a direct deposit transaction;
( c) establishing the money transfer transaction prior to receiving
funding for the money transfer transaction;
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( d) receiving, by the money transfer service server, after the
establishing of the money transfer transaction, funds from a direct deposit
transaction, said funds received directly from a payor of the funds;
( e) automatically and directly funding the established money transfer
transaction with the funds from the direct deposit transaction;
(f) when the funds from the direct deposit transaction are insufficient
to meet a specific amount, compiling funds, by the money transfer service
server, from a plurality of direct deposit transactions until the specific
amount is reached, and funding the established money transfer transaction
when the specific amount is reached.
We regard the claimed limitations of receiving information,
establishing an account configured to receive funds, establishing a money
transaction, receiving funds from a payor, automatically funding the money
transfer transaction, and compiling funds from a plurality of deposits to
correspond to a method of organizing human activity, to wit, the
fundamental economic principle of banking, and of employing a bank to pay
money to a particular payee via a banking instrument such as a check. See,
e.g.,Alice, 573 U.S. at219--20 (concluding that use ofa third party to
mediate settlement risk is a "fundamental economic practice" and thus an
abstract idea); id. (describing the concept of risk hedging identified as an
abstract idea in Bilski as "a method of organizing human activity''); Bilski,
5 61 U.S. at 611---612 ( concluding that hedging is a "fundamental economic
practice" and therefore an abstract idea); Bancorp, 687 F.3d at 1280
( concluding that "managing a stable value protected life insurance policy by
performing calculations and manipulating the results'' is an abstract idea);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378-
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79 (Fed. Cir. 2017) (holding that concept of "local processing of payments
for remotely purchased goods" is a "fundamental economic practice, which
Alice made clear is, without more, outside the patent system.''); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015)
( concluding that claimed concept of "offer-based price optimization" is an
abstract idea "similar to other 'fundamental economic concepts' found to be
abstract ideas by the Supreme Court and this court").
In the principal Brief, Appellants do not contest the Examiner's
conclusion that the claimed invention is directed to a judicial exception -
"a fundamental economic practice, an idea 'of itself,' and certain methods of
organizing human activity." Final Act. 3. In the Reply Brief, Appellants
analogize the invention under appeal to the invention in McRO, arguing that
the claims provide an arrangement of features that does not represent a
previously known process. Appellants' only evidence in support is the "lack
of prior art showing the specific arrangement of the claimed features." Reply
Br. 4--5. Appellants then argue that the claims "provide features for
improving a technological process for executing money transfers," i.e.
creating a deposit account and compiling funds until a specific amount is
reached, at which point the established money transfer transaction is
executed. Reply Br. 5.
Appellants' argument is not persuasive, however, because the
disputed limitation concerning compiling funds from a plurality of direct
deposit transactions is a conditional limitation in a method claim. The claim
calls for "compiling funds, by the money transfer service server, from a
plurality of direct deposit transactions until the specific amount is reached,"
and then "funding ... the established money transfer transaction when the
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specific amount is reached," only in the case that "the funds from the direct
deposit transaction are insufficient to meet a specific amount." Under Ex
parte Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB Apr. 28,
2016) (precedential), conditional limitations in a method claim are not
limiting under a broadest reasonable interpretation, because the claim covers
at least two possibilities - one in which the condition is satisfied and one in
which the condition is not satisfied. Here, if funds from a single direct
deposit transaction are sufficient, the conditional limitation is not performed.
Because the claim covers a situation in which funds from the direct deposit
transaction are sufficient to meet a specific amount of the established money
transfer transaction, we give no weight to the alternate situation in which the
funds are insufficient, and thus we give no weight to the limitation of
compiling funds from a plurality of direct deposit transactions until the
specific amount is reached.
Accordingly, we conclude that the claims recite a fundamental
economic practice (specifically, banking, and employing a bank to pay
money to a particular payee via a banking instrument such as a check),
which constitutes one of certain methods of organizing human activity
identified in the Revised Guidance. 84 Fed. Reg. at 52. We thus conclude
that the claims recite an abstract idea.
INTEGRATED INTO A PRACTICAL APPLICATION
Under Prong Two of Step 2A of the Revised Guidance, we next
evaluate whether the claims integrate the identified abstract idea of banking,
and employing a bank to pay a particular payee. See Revised Guidance, 84
Fed. Reg. at 54. We consider whether there are any additional elements
beyond the abstract ideas that, individually or in combination, "integrate the
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[ abstract ideas] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit."
Revised Guidance, 84 Fed. Reg. at 54--55.
Appellants argue that the claims include limitations that amount to
"significantly more" than an abstract idea, in that the invention represents
"an efficient technological system to transfer money between parties" and
"addresses a problem of insufficient funds to facilitate money transfer."
App. Br. 8; see Spec. ,r 32.
Appellants' argument that the claimed invention recites "significantly
more" is not persuasive, because the disputed limitation concerning
compiling funds is a conditional limitation in a method claim. As we
discussed supra under Step 2A, Prong One, the claimed invention covers, in
the alternative, a situation in which a direct deposit transaction contains
sufficient funds to meet a specific amount of an established money transfer
transaction, or a situation in which said direct deposit transaction does not
contain sufficient funds to meet that specific amount. If funds from the direct
deposit transaction are sufficient, the conditional limitation is not performed.
Because we give no weight to the argued limitation concerning compiling
funds, we determine that the claim does not recite limitations beyond the
characterized abstract idea of banking and directing a payment transaction.
Accordingly, we conclude under Step 2A, Prong Two of the Revised
Guidelines that the claimed abstract idea is not integrated into a practical
application.
The claimed invention, under our construction, does not constitute an
improvement to the functioning of a computer; rather, it merely constitutes
the adaptation of the abstract idea of banking, and employing a bank to pay a
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particular payee, to performance by a computer. MPEP § 2106.05(a). There
is no disclosure to the effect that the claimed invention is applied with, or by
use of, a particular machine or manufacture that is integral to the claim; the
claim generally recites the communicative connection of "servers" via the
World Wide Web. MPEP § 2106.05(b). Appellants do not disclose or claim
the transformation or reduction of a particular article to a different state or
thing. MPEP 2106.05(c).
Turning to further elements under the Guidelines for determining
whether an abstract idea is integrated into a practical application, as
discussed supra we determine that Appellants' invention constitutes mere
instructions to implement an abstract idea on a computer. MPEP
§ 2106.05(±). We determine that the claim limitation directed to receiving
information from a remote user device constitutes insignificant extra-
solution activity. See MPEP § 2106.05(g).
WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL
Having determined that the claims recite a judicial exception, and do
not integrate that exception into a practical application, we consider whether
the claim adds a specific limitation beyond the judicial exception that is not
"well understood, routine, and conventional" in the field. US PTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50, 56
(January 7, 2019) ("Revised Guidance").
Appellants contend that the "features of claim 1 are not well-
understood, routine, and conventional" because "all cited references, either
alone or in combination, fail to teach or suggest the above features of claim
1," in that "none of the references teaches or suggests any solution to the
problem of insufficient funds by compiling multiple funds until the specific
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amount is reached." App. Br. 8-9. We are not persuaded by this argument.
First, subject matter eligibility under 35 U.S.C. § 101 is an inquiry distinct
from the question of anticipation or obviousness. The presence or absence of
a prior art rejection does not impact a determination concerning patent
eligibility under § 101. Second, under our claim construction, discussed
supra, we give no weight to the limitation concerning compiling funds.
Appellants' claimed invention includes a money transfer service
server, money transfer agent devices, and a third party financial service
server.
Appellants disclose no structural or technical details of the claimed
money transfer service server.
Appellants disclose money transfer agent devices as either "special
purpose computers programmed to implement steps described herein, or
could be conventional processing devices configured to run software which
facilitates the described money transfer transactions." Spec. ,r 17.
Appellants disclose a third party financial service server that is
administered by a bank or other financial service. Spec. ,r 20. Appellants do
not disclose any structural or technological details of the third party financial
service server.
We determine that Appellants disclose and claim generic computer
components used conventionally. We are not persuaded that Appellants
provide a non-generic arrangement of known, conventional elements.
Rather, we conclude that the disclosed and claimed invention uses generic
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computer components as a mere tool to implement the abstract idea of
conducting a money transfer transaction.
As Appellants have not disclosed any features of the claimed
computer system, executable instructions, or calculating hardware/software
that would be considered as other than "well-understood, routine, and
conventional," these claim limitations fail to indicate the presence of an
inventive concept. We further find that Appellants' disclosure, discussed
supra, is specified at a high level of generality.
We conclude that none of the claim limitations, viewed "both
individually and as an ordered combination," amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355
(internal quotations omitted) (quoting Mayo, 132 S. Ct. at 1297).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims
1, 6-8, 10, 13, 15, 16, 21-24, 27, and 29-36.
CONCLUSIONS
1. The claimed invention is directed to a judicial exception.
2. The judicial exception is not integrated into a practical application.
ORDER
The Examiner's decision to reject claims 1, 6-8, 10, 13, 15, 16, 21-
24, 27, and 29-36 under 35 U.S.C. § 101 is affirmed.
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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).
AFFIRMED
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