Ex Parte Fernandes et al

Patent Trial and Appeal Board

Jan 26, 2018

13786408 (P.T.A.B. Jan. 26, 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.
13/786,408 03/05/2013 Jorge M. Fernandes BUCKP002 1021
67362 7590 01/30/2018
THE MUELLER LAW OFFICE, P.C.
12707 High Bluff Drive, Suite 200
San Diego, CA 92130
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/30/2018 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):
MLOPAIR@themuellerlawoffice.com
heather@themuellerlawoffice.com
julianne@themuellerlawoffice.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORGE M. FERNANDES and ZIAD ALSHOBAKI
Appeal 2016-0064511
Application 13/786,408
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1,2, 4—18, and
20-25. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to “a method of configuring a financial
account.” Spec. 14.
Independent claim 1 is illustrative:
1 The Appellants identify Quisk, Inc. as the real party in interest. Br. 3.
Appeal 2016-006451
Application 13/786,408
1. A computer-implemented method for configuring an
account associated with money or credit belonging to an initiator,
the method comprising:
receiving, at a server device from the initiator, a request to
configure the account for a later transaction;
sending, from the server device to the initiator, a list of
non-age related verification options and a plurality of account
limitations, each non-age related verification option having a
different verification level, each account limitation having a
different limitation level, and each account limitation being
associated with at least one of the non-age related verification
options;
receiving, at the server device from the initiator, a selected
non-age related verification option selected from the non-age
related verification options;
sending, from the server device to the initiator, a prompt
for non-age related verification information for the selected
non-age related verification option;
receiving, at the server device from the initiator, the
non-age related verification information; and
configuring, by the server device, the account with at least
one of the account limitations, the at least one of the account
limitations being associated with the selected non-age related
verification option, the at least one of the account limitations
being associated with the later transaction;
wherein the account limitations include a maximum
number of transactions per time period.
The Examiner rejected2 claims 1, 2, 4—18, and 20-25 under
35 U.S.C. § 101 as reciting ineligible subject matter in the form of an
abstract idea.
We AFFIRM.
2 We note that rejections under 35 U.S.C. § 103 are set forth in the Non-
Final Action mailed October 6, 2014, to which the Appellants responded in
the arguments filed February 6, 2015. We acknowledge th rejections are is
not mentioned in the Final Action mailed May 28, 2015.
2
Appeal 2016-006451
Application 13/786,408
ANALYSIS
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
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., 132 S. Ct. 1289, 1296—97
(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.”).
3
Appeal 2016-006451
Application 13/786,408
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. Llewellyn, The Common Law 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).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
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
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
4
Appeal 2016-006451
Application 13/786,408
The Examiner finds the claims are directed to the fundamental
economic practice of “configuring and managing accounts associated with
money or credit.” Answer 4. In addition, the Examiner finds this is a
method of organizing human activities. Final Act. 3. In other words, the
Examiner finds the claims are directed to “configuring financial accounts.”
Independent claim 1 involves receiving a request, responding by
sending a list, receiving a selection from the list, responding by prompting
for information about the selected option, receiving the requested
information, and “configuring, by the server device, the account” with the
selected option. The steps of receiving a request, sending a list, receiving a
selection, prompting for information, and receiving the information are
essentially data-gathering steps, which represent insignificant extra-solution
activity. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (characterizing
data gathering steps as insignificant extra-solution activity). For those
reasons, we focus our analysis on the recited “configuring” step.
In support of the “configuring” step, the Appellants direct us to
paragraph 35 of the Specification, which provides the examples of
configuring an account to include setting a personal identification number
(PIN) to use with the account, or asking the customer to supply a PIN. Br. 4
(citing Spec. 135). The Specification further describes that “configuration
includes limitations on later transactions, based on user identity information
provided at the time of configuration.” Spec. 14. “After the account is
configured, the server device receives data for an active transaction
associated with the account. The transaction data is compared to the
limitation, and the transaction is processed if the data is within the
limitation.” Id. | 5. The Specification further describes “sending to the
5
Appeal 2016-006451
Application 13/786,408
initiator a list of verification options including the account limitation
associated with each verification option.” Id. 1 6.
Based on paragraphs 4—6 of the Specification, we construe claim 1 ’s
“configuring” to encompass assigning an account number to a customer
account, which the customer must supply to use the account, for example,
for depositing money into an account, or for having money withdrawn from
the account. We are unclear as to how assigning account identification
information to the abstract concept of a financial account, such as a
merchant’s customer credit account, or a bank’s deposit account, can be
fairly characterized as anything other than a fundamental economic practice
in our system of commerce that has been employed for countless years.
Therefore, we agree with the Examiner that claim 1 is directed to an abstract
idea.
We find no meaningful distinction between independent method
claim 1 and independent medium claim 17; each claim is directed to the
same underlying invention. As the Federal Circuit has made clear “the basic
character of a process claim drawn to an abstract idea is not changed by
claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.” See
CyberSource, 654 F.3d 1366, 1375—76 (Fed. Cir. 201 inciting In reAbele,
684 F.2d 902 (CCPA 1982)).
Therefore, we agree with the Examiner that claims 1 and 17 are
directed to abstract ideas. The Examiner addresses all the dependent claims
in a group, along with the independent claims (Final Act. 3), and the
Appellants do not argue any dependent claim with any specificity.
6
Appeal 2016-006451
Application 13/786,408
Therefore, we accept the Examiner’s finding that dependent claims 2, 4—16,
18, and 20—25 are abstract ideas.
We next turn to step two of the Alice/Mayo analysis, and examine the
claims looking for “significantly more” than the abstract idea of configuring
financial accounts.
To that end, independent claim 1 recites a “server device.” The
Specification describes what server device 130 does, but does not
specifically explain what server device 130 is. When construing the recited
“server device” in light of the Specification, the server device appears to be
a general purpose computer. See Spec. 122 (“It is to be understood that the
various actions (receiving, storing, sending, communicating, displaying, etc.)
are performed by a hardware device, even if the action may be authorized,
initiated or triggered by a user, or even if the hardware device is controlled
by a computer program, software, firmware, etc.”). Independent claim 17
recites a “machine,” which is not described in the Specification. We view
the “machine” of claim 17, like the “service device” of claim 1, as a general
purpose computer.
Therefore, we find nothing in claims 1 and 17 that represents an
inventive concept that takes the claim out of the realm of abstract ideas.
The Appellants argue that “none of the examples mentioned in the
July 2015 update covers the general concept to which claims 1 and 17 are
directed.” Br. 11; see also Id. 5—11. The Appellants also argue “there is no
evidence that shows the added limitation ‘wherein the account limitations
include a maximum number of transactions per time period’ to be well-
understood, routine or conventional,” and the new limitation “represents an
‘inventive concept’ that applies the stated abstract idea to a ‘new and useful
7
Appeal 2016-006451
Application 13/786,408
end’ for a ‘business practice not known from the pre-Internet world.’”
Br. 13—14. In addition, the Appellants argue claims 1 and 17 do not recite a
mathematical operation, and “do not preempt the entire fields of online
account configuration, electronic/computer payment account services,
computerized account management systems, transaction processing or
handling account services generally.” Br. 14—15. Finally, the Appellants
argue the claims:
represent significantly more than the identified abstract concept
of a “fundamental economic practice” or a “method of
organizing human activities,” because they 1) are an
improvement over the established state of the industry,
technology or technical field related to computerized systems for
payment service technologies, 2) are significantly more than
what an ordinary computer has been shown to do, 3) improve the
function and speed of a computerized system performing account
registration, account configuration, account management and
transaction processing, 4) enable a faster and more secure way to
perform such account registration, account configuration,
account management, transaction processing and handling
account services, and 5) add specific limitations or
unconventional steps other than what are well-understood and
routine in the field of systems for payment service technologies.
Br. 14.
We find these arguments unpersuasive, in light of our analysis, above.
Specifically, a threshold on transactions per period of time is itself an
abstract concept, which we are unpersuaded alters the abstract ideas of
claims 1 and 17 into patentable subject matter. In addition, we do not
discern from the Appellants’ arguments any evidence or persuasive analysis
that configuring financial accounts, through sending and receiving data and
assigning account numbers, cause general purpose computers used in the
8
Appeal 2016-006451
Application 13/786,408
method do more than what general purpose computers are capable of, i.e., in
a faster or in a more secure manner.
Therefore, we sustain the rejection under 35 U.S.C. § 101 of claims 1,
2, 4—18, and 20—25 as reciting ineligible subject matter in the form of
abstract ideas.
DECISION
We AFFIRM the rejection under 35 U.S.C. § 101 of claims 1, 2, 4—18,
and 20—25.
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