Ex Parte Ferguson

Patent Trial and Appeal Board

Dec 22, 2017

12077863 (P.T.A.B. Dec. 22, 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.
12/077,863 03/24/2008 Anthony John Ferguson 8162
73927 7590
Anthony John Ferguson
PO Box 101
St Pauls, 2031
AUSTRALIA
EXAMINER
CRAWLEY, TALIA F
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/27/2017 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):
tonyferg477 @optusnet.com.au
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY JOHN FERGUSON
Appeal 2017-003752
Application 12/077,863
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Anthony John Ferguson (Appellant) seeks review under
35 U.S.C. § 134 of a final rejection of claims 1-18, the only claims pending
in the application on appeal. This is the second time this application has
come before us for appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed July 7, 2016) and the Examiner’s Answer (“Ans.,” mailed December 2,
2016), and Final Action (“Final Act.,” mailed February 18, 2016).
Appeal 2017-003752
Application 12/077,863
The Appellant invented a way of “creating a reconciled set of
electronic books.” Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of providing electronic-enabled accounting
or bookkeeping comprising the steps of:
(a) the inclusion of a classification category code or
codes corresponding to an accounting code of a chart of
accounts associated with a person, business or entity into a
financial transaction, by a person, business or other entity, with
a financial institution;
(b) on the server of a financial institution associated with
a person, business or other entity the capture and electronic
storage of classification data together with other bibliographical
data associated with a financial transaction to form a data
aggregate;
(c) on the server of a financial institution associated with
a person, business or other entity the provision of an electronic
bank or other financial institution statement containing the sum
of data aggregates for a given period;
(d) on a communications network, the access of data
aggregates associated with the person, business or other entity
and stored on the server of a financial institution;
(e) on a communications network the transmittal of data
aggregates associated with a person, business or other entity to
the server of a person, business or other entity;
(f) in a person, business or other entity's processing
system, the quarantine of data aggregates not in a form or state
compatible for use with the system requirements of that servers
accounting or bookkeeping program;
(g) in a person, business or other entity's processing
system, the amendment of faulty or invalid data aggregates into
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Application 12/077,863
a form or state compatible for use with the system requirements
of that servers accounting or bookkeeping program;
(h) in a person, business or other entity's server
processing system, the processing of data aggregates into a
form or state compatible for use with the system requirements
of that servers bookkeeping or accounting program;
(i) in a person, business or other entity's server
processing system, the transfer of the processed data
aggregates into the server's bookkeeping or accounting
program ledgers, [sic ;]
j) in a person, business or other entity's server processing
system, the reconciliation of program data with bank account
statement data and balances, [sic ;]
and
(k) in a person, business or other entity's server
processing system, the generation of reconciled accounting
reports.
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
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Application 12/077,863
ANALYSIS
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, [] determine whether the claims at issue are
directed to one of those patent-ineligible concepts. [] If so, we
then ask, “[w]hat else is there in the claims before us? [] To
answer that question, [] consider the elements of each claim
both individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two of this analysis 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 Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds the
claims directed to providing bookkeeping or accounting electronically,
wherein a reconciled set of electric books is created by introducing and
integrating accounting codes into transaction data to form a data aggregate
on the financial institution server. Final Act. 4-5.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method of providing
electronic-enabled accounting or bookkeeping. The steps in claim 1 result
in generating financial reports. The Specification at paragraph 1 recites that
the invention relates to providing bookkeeping or accounting electronically,
and more particularly, creating a reconciled set of electronic books. Thus,
all this evidence shows that claim 1 is directed to providing electronic-
enabled accounting or bookkeeping, i.e. bookkeeping. This is consistent
with the Examiner’s finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
bookkeeping is a fundamental business practice long prevalent in our system
of commerce. The use of bookkeeping is also a building block of
accounting. Thus, bookkeeping, like hedging, is an “abstract idea” beyond
the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., 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 risk hedging in Bilski and the concept of
bookkeeping at issue here. Both are squarely within the realm of “abstract
ideas” as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
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Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. 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”); see also In re TLI
Comma ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
presentation and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 1 is directed to the abstract idea of retrieving,
analyzing, and presenting data.
The remaining claims merely describe parameters for accepting
accounting codes. We conclude that the claims at issue are directed to a
patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
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,
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with the same deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to “implement[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
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. 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.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to provide, access, analyze, and present data amounts to electronic
data query and retrieval—one of the most basic functions of a computer. All
of these computer functions are well-understood, routine, conventional
activities previously known to the industry. 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
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of bookkeeping as performed by a generic
computer. To be sure, the claims recite doing so by advising one to provide
an accounting code and reformat the data as needed, holding further
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processing while doing so, and then analyze and present the data. But this is
no more than abstract conceptual advice on the parameters for such
bookkeeping and the generic computer processes necessary to process those
parameters, and does not recite any particular implementation.
The method 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. The 10+ pages of Specification do
not bulge with disclosure, but only spell out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
bookkeeping under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of bookkeeping using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. To
the extent Appellant relies on the limitation that the code is entered by some
person, this is typical. Transaction data are generally entered by some
person, even if machine-assisted.
As to the structural claims, they
are no different from the method claims in substance.
The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
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Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant’s argument that the introduction
of a code to transform the nature of that data; inclusion of a suspense code;
and provision of an accounting code to be applied to and included in bank
initiated transactions and for third party payees amount to significantly more
than the basic financial transaction in current use. App. Br. 6. Adding some
code to anything is no more than generic abstract conceptual advice
fundamental to all accounting and bookkeeping. Adding some new code,
even if novel, is itself an extension of the fundamental abstraction in
accounting and bookkeeping. The meaning of such a code is discemable
only to the human mind, and is afforded no weight. In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969). Any code as a piece of data usable for
aggregating and sorting is functionally identical to any other such code,
including codes already used in general and subsidiary ledgers. Thus,
adding some code is itself an abstraction and does not elevate an abstract
idea to the non-abstract realm.
We are not persuaded by Appellant’s argument that accounting will
become fully automated; manual identification of transactions and the
re-keying of data will be redundant and obsolete; a ink will now exist
between the currently discrete systems of financial institutions transaction
data with electronic accounting; trading results will be available in real time
and also sufficient information will be available to determine the tax
liabilities due shortly thereafter; and it will reduce compliance burden. App.
Br. 9. All of these are advantages of all electronic accounting and
bookkeeping systems generally. They all result from using codes that are
only meaningful to the human mind. That an abstract idea produces tangible
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benefits does not make it less abstract. The aphorism of “a stitch in time” is
the basis of the modem preventative maintenance industry and is perhaps
among the most beneficial pieces of advice ever related, but it remains
abstract conceptual advice.
We are not persuaded by Appellant’s argument that the claims
describe a complete process; the steps are clear, specific, consistent and
demonstrable; and the results are tangible. App. Br. 10. The steps are far
from complete and recite little more than results to be achieved along the
process. To the extent Appellant means that the steps include both the
beginning and end of the process, such is not indicative of a process being
non-abstract, as many items of advice cover as much. As to clarity and
specificity, again, the steps recite results to be achieved and offer no
implementation specifics or clarity as a result. As to tangible results, this is
the same argument presented earlier and is answered accordingly.
We are not persuaded by Appellant’s argument that the facts of this
case differ from those in Federal Circuit and Supreme Court decisions. App.
Br. 10-12. The facts of every case differ from other cases. This does not
negate the overriding fact that the facts of this case, when put through the
Alice tests, result in finding the claims non-eligible as we find supra.
We are not persuaded by Appellant’s argument that no one in the art
would be familiar with the introduction of a code by a party and the
subsequent download and automatic assimilation. App. Br. 12. “While the
claims may not have been anticipated or obvious because the prior art did
not disclose [the selection criteria], that does not suggest that the idea of
[‘selecting’ errant files] is not abstract.” Intellectual Ventures ILLC v.
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Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016); see Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981) (“The ‘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
possible patentable subject matter.” (footnote omitted)).
We are not persuaded by Appellant’s argument that the claims are
specifically directed to actual, physical, financial transactions and apply to
every transaction; the claims are implemented in a tangible way; the claims
have a specific application; the mechanism of the steps in the performance
of the method is observable and verifiable; the claims are apparatus specific;
and the claims produce tangible, verifiable results. App. Br. 15. Any advice
as to financial transactions, such as verifying the transaction amount, would
be specifically directed to actual, physical, financial transactions and apply
to every transaction. There is no evidence the claims are implemented in a
tangible way. Indeed adding a transaction code and altering the process flow
to find and correct formatting or other data problems is fundamental to
bookkeeping per se, even in manual systems. Advice as such may have a
specific application. Steps in advice are typically observable and verifiable,
for otherwise there would be little way to follow the advice. There is no
evidence the claims are apparatus specific. Indeed, the Specification only
describes generic computers loaded with financial transaction software that
is absent any implementation details. Thus, all of these points either lack
supporting evidence or are not indicative of something non-abstract.
We are not persuaded by Appellant’s argument that
The inclusion of a code into transaction data transforms
the data aggregate into a form or state now compatible with
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accounting system requirements then capable of providing that
data to business, person or other entity in a manner not
currently possible, makes the functioning of the specific
apparatus i.e. the financial institution computer, more efficient
in its operation by now being able to provide customers with
data in a form that can be now utilised (by the customer) in a
manner not previously possible.
App. Br. 17. Any recitation of adding a code into a transaction stream
is no more than abstract conceptual advice. It is also no more than
conventional data processing, which our reviewing court finds ineligible.
Elec. Power Grp. v. Alstom S.A.,id. See also Smart Systems Innovations,
LLCv. Chicago Transit Authority, 873 F.3d 1364, 1372 (2017) (claims
directed to the collection, storage, and recognition of data are directed to an
abstract idea under Alice step one).
We are not persuaded by Appellant’s argument that “the illustrative
flow charts and the computer functions revealed at each new step clearly
show that the computer recitations amount to more than mere instructions to
implement an abstract idea on a computer.” App. Br. 18. Figure 1 contains
the sole flow chart, and presents purely conventional data steps at a level of
detail so high as to be no more than parts of abstract conceptual advice.
We are not persuaded by Appellant’s argument that “[t]he transfer or
download of data in the manner disclosed in the claims is not possible at
present as the data stored by financial institutions are not in a form or state
compatible or suitable for system requirements.” Id. The fact that trillions
of dollars are successfully transacted daily across the world shows this
allegation to be erroneous on its face. To the extent the statement is
narrower in meaning that no system uses the recited code, then the argument
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is almost meaningless, as it devolves down to arguing the use of such a code,
which as we find supra is abstract conceptual advice.
We are not persuaded by Appellant’s argument that in the recent
judicial decision in Motio Inc. v BSP Software, LLC et al, Case No. 4:12-cv-
647(E.D. Tex. January 4 2016) the court found that an automated invention
was patent eligible due to the manner of automation. App. Br. 18. This is a
district court case of different facts and does not bind panels of this Board.
We are not persuaded by Appellant’s argument that the only means
for the data aggregates to be downloaded and automatically assimilated is
via the internet, and that the only way that the currently discrete systems of
banking and electronic accounting can be linked or become interactive so as
to implement the method of the pending claims, is via the internet. App.
Br. 20. Appellant presents no evidence for this argument, and the argument
is erroneous on its face. Data can be downloaded and aggregated from any
source, and networks can be linked by any communications mechanism.
Appellant conflates technical constraints with industry practice constraints.
Merely because industries follow a common practice to minimize cost and
confusion does not mean that such common practice is a technological
problem requiring a technological solution. The steps recited in the claims
would be applicable to manual bookkeeping systems that rely on data from
external entities that might require reformatting.
The remaining arguments are variations on those we respond to supra.
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CONCLUSIONS OF LAW
The rejection of claims 1-18 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is proper.
DECISION
The rejection of claims 1-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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