Ex Parte Erbey et al

Patent Trial and Appeal Board

Jan 10, 2018

13924260 (P.T.A.B. Jan. 10, 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.
13/924,260 06/21/2013 William C. Erbey 10531-009US3 1319
124539 7590 01/12/2018
Altisource
EXAMINER
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
PATEL, JAGDISH
Suite 1300
Atlanta, GA 30309
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
docketing@mcciplaw.com
ipcounsel @ altisource. com
Sunette.Pilat@ altisource.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM C. ERBEY, CHRISTOPHER KENNEDY, and
BRYAN HURLEY
Appeal 2016-003461
Application 13/924,2601
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 4, 5, 7, 8, 12-18, and 20-23. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Altisource Solutions
S.a.r.l. of Luxembourg. (Appeal Br. 3.)
Appeal 2016-003461
Application 13/924,260
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to “managing financial
transactions that require goods or services from multiple vendors and, in
particular, to methods and systems for facilitating real estate closing
transactions.” (Spec. ^ 2.)
Claims 1,13, and 17 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method for electronically facilitating a transaction, the
method implemented on a suitably programmed computer
comprising at least one processor, and at least one user interface,
the method comprising:
accessing, via a memory unit, a database comprising a
plurality of transaction data items associated with a the [sic]
transaction;
receiving, via the at least one processor in communication
with the memory unit, the plurality of transaction data items
associated with the transaction;
populating, via the at least one processor, a transaction
document with the plurality of transaction data items;
outputting, via the at least one processor to the at least one
user interface, the transaction document populated with the
plurality of transaction data items for interaction with a first user;
determining, via the at least one processor, at least one
necessary documentation element according to at least one of (a)
the plurality of transaction data items or (b) the transaction;
transmitting, via the at least one processor, an order to one
or more third parties for the at least one necessary documentation
element;
updating the transaction document, wherein updating the
transaction document further comprises:
receiving, via the at least one user interface, a
request from the first user to change at least one of the
plurality of transaction data items in the transaction
document;
2
Appeal 2016-003461
Application 13/924,260
receiving, via the at least one user interface, from
the first user a replacement transaction data item
corresponding to at least one of the plurality of transaction
data items;
receiving, via the at least one user interface,
authorization from a second user for the request and the
replacement transaction data item; and
transmitting, via the at least one processor, the
request, the replacement transaction data item, and the
authorization for the request;
outputting, via the at least one processor to the at least one
user interface, the updated transaction document.
REJECTION
Claims 1, 2, 4, 5, 7, 8, 12-18, and 20-23 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CIS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
3
Appeal 2016-003461
Application 13/924,260
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to part one of the Alice framework, the Examiner
determines that the claims are directed to the “abstract idea of processing
financial transactions involving a plurality of users (or participants).”
(Answer 5.) Additionally, the Examiner finds that “[transaction processing
via [a] user interface and changing a transaction data item by [an] authorized
person is a well-known and fundamental economic practice.” (Final
Action 4.)
Appellants disagree and argue that “although Appellants’ claims may
involve an economic practice, the claims do not involve a fundamental
economic practice and importantly, the claims are not ‘directed to’ (i.e.
recite or describe) a fundamental economic practice.” (Appeal Br. 11.2)
Under part one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses “managing financial
transactions that require goods or services from multiple vendors and, in
2 “Appeal Br.” refers to the Supplemental Appeal Brief filed
September 1, 2015.
4
Appeal 2016-003461
Application 13/924,260
particular, to methods and systems for facilitating real estate closing
transactions.” (Spec. ^ 2.) Claim 1 recites “[a] method for . . . facilitating a
transaction . . . comprising: accessing ... a database,” “receiving . . . data
items associated with the transaction,” “populating ... a transaction
document with . . . data items,” “outputting ... the transaction document,”
“determining ... at least one necessary documentation element,”
“transmitting ... an order to one or more third parties for the . . . necessary
documentation element,” “updating the transaction document,” “receiving
... a request... to change at least one of the plurality of transaction data
items in the transaction document,” “receiving ... a replacement transaction
data item,” “receiving . . . authorization ... for the request and the
replacement transaction item,” “transmitting . . . the replacement transaction
data item, and the authorization request,” and “outputting ... the updated
transaction document.”
In short, without the processor elements, nothing remains in the
claims but the abstract idea of “processing financial transactions involving a
plurality of users” (see Answer 5), or, more particularly, processing a
financial transaction “via [a] user interface and changing a transaction data
item by [an] authorized person” (see Final Action 4). As in Alice, 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 collecting information to
facilitate loan shopping in Mortgage Grader, Inv. v. First Choice Loan
Services Inc., 811 F.3d 1314 (Fed. Cir. 2016) and the concept of
collecting/receiving data and using that data to populate a document for
financial transactions, at issue here. Both are squarely within the realm of
5
Appeal 2016-003461
Application 13/924,260
“abstract ideas” as the Court has used that term. See Alice, 134 S. Ct. at
2357
Part two of the Alice framework has been described “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, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 72-73).
The introduction of a computer into the claim does not alter the
analysis at step two.
[T]he 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 preemption concern
that undergirds our §101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation 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.”
Id. at 2358 (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.” Id. at 2359. They do not. Claim 1 relates to a method
for facilitating a transaction by populating a transaction document with
received data items, outputting the document, determining and ordering from
6
Appeal 2016-003461
Application 13/924,260
a third party one or more necessary documentation elements, updating the
document, and transmitting the updated document.
Appellants argue “that the claims herein go far beyond merely
offering any ‘token extra-solution activity’ as the Office Action suggests.
For example, independent claim 1 recites a new and nonobvious method for
electronically facilitating a transaction on a computer.” (Appeal Br. 13.)
We disagree. As an initial matter, we note that “[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188-89 (1981). Additionally, taking the claim elements
separately, the function performed by the processor at each step is purely
conventional. Receiving data, displaying the data, updating the data, and
displaying the updated data, are basic computer functions. Moreover, the
Specification discloses that the invention can be implemented using generic
computer components. (See, e.g., Spec. ^ 25-26.) 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
Appellants’ method add nothing that is not already present when the steps
are considered separately. The 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 using some unspecified, generic computer. That is not enough
7
Appeal 2016-003461
Application 13/924,260
to transform an abstract idea into a patent-eligible invention. Alice, 134 S.
Ct. at 2360.
Nonetheless, Appellants seek to analogize the present claims to those
in DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
(Appeal Br. 8, 11-12.) But unlike the claims here, the claims in DDR
Holdings “specify how interactions with the Internet are manipulated to
yield a desired result — a result that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink.'''’ DDR
Holdings, 773 F.3d at 1258 (emphasis added). In other words, the invention
claimed in DDR Holdings does more than “simply instruct the practitioner to
implement the abstract idea with routine, conventional activity.” See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see
also DDR Holdings, 773 F.3d at 1259.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 101. Appellants also argue that “[independent
claims 13 and 17 recite similar, but not identical features, as independent
claim 1 and are similarly directed to improvements to tangible and concrete
improvements to the technology field of electronic transaction facilitation.”
(Appeal Br. 14.) However, for the reasons discussed above, we are also not
persuaded that the Examiner erred in rejecting claims 13 and 17. Dependent
claims 2, 4, 5, 7, 8, 12, 14-16, 18, and 20-23 are not separately argued and
fall with their respective independent claims. See 37 C.F.R. § 41.37(c)(iv).
DECISION
The Examiner’s rejection of claims 1, 2, 4, 5, 7, 8, 12-18, and 20-23
under 35 U.S.C. § 101 is affirmed.
8
Appeal 2016-003461
Application 13/924,260
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
9