Ex Parte Fiacable

Patent Trial and Appeal Board

Sep 14, 2017

14075723 (P.T.A.B. Sep. 14, 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.
14/075,723 11/08/2013 Anthony J. Fiacable ONET01-00006 6277
23990 7590
DOCKET CLERK
P.O. DRAWER 800889
DAT!.AS, TX 75380
09/18/2017 EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
patents @ munckwilson. com
munckwilson @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY J. FIACABLE
Appeal 2016-0024151
Application 14/075,7232
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—3, 5—10, 12—16, and 18—23. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
June 19, 2015) and Reply Brief (“Reply Br.,” filed Dec. 16, 2015), the
Examiner’s Answer (“Ans.,” mailed Oct. 19, 2015), and Final Office Action
(“Final Act.,” mailed Jan. 14, 2015).
2 Appellant identifies One Technologies, LP. as the real party in interest.
App. Br. 2.
Appeal 2016-002415
Application 14/075,723
CLAIMED INVENTION
Appellant’s claimed invention relates generally to enrollment in
services over a network and, more specifically, to enrollment in credit
reporting and credit monitoring services. Spec. 12.
Claims 1, 7, 8, 14, 15, and 20 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A method comprising:
using at least one processing device:
receiving, over a network from a user device
associated with a customer attempting to enroll in a credit
reporting service or a credit monitoring service, a name of
the customer, an email address of the customer, and at
least a partial address of the customer;
using at least the email address of the customer to
determine whether an account associated with the email
address already exists;
receiving first information over the network from
the user device, the first information comprising a date of
birth and a Social Security number of the customer;
resolving the date of birth and the Social Security
number to verily that the date of birth and the Social
Security number are associated with a common individual;
obtaining security information associated with the
customer, wherein the security information is obtained
from a source other than the customer using the first
information, and wherein the security information
comprises one or more questions;
verifying an identity of the customer using the
security information and second information received
from the user device, wherein the second information
comprises one or more answers to the one or more
questions; and
after the identity of the customer is verified,
enrolling the customer in the credit reporting service or the
credit monitoring service, wherein enrolling the customer
comprises
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Application 14/075,723
establishing a recurring payment by the customer
using credit card information obtained from the user
device, and wherein enrolling the customer in the credit
reporting service or the credit monitoring service after the
identity of the customer is verified allows the customer to
retrieve service-related information immediately after
enrollment;
wherein at least verifying the identity of the
customer occurs in response to determining that the
account associated with the email address does not already
exist.
REJECTION
Claims 1—3, 5—10, 12—16, and 18—23 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ANALYSIS
Claim 1
In rejecting claims 1—3, 5—10, 12—16, and 18—23 under 35 U.S.C.
§101, the Examiner finds the claims are “directed to the abstract idea of
enrolling a customer in a service.” Final Act. 4. The Examiner determines
that “enrolling a customer in a service may be considered a fundamental
economic practice or a method of organizing human activities.” Id. at 2.
The Examiner also finds that the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the claims do not provide meaningful limitations to transform the
abstract idea into a patent eligible application. Id. at 4. In so doing, the
Examiner applies the two-step framework set forth in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012),
“for distinguishing patents that claim laws of nature, natural phenomena, and
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abstract ideas from those that claim patent-eligible applications of these
concepts.” Alice Corp. PtyLtd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014); cf Reply Br. 7—8 (charging the Examiner with failing to apply the
Mayo test). Guidelines issued by the Office (see Reply Br. 2, 8—9) and
nonprecedential decisions from the Board (see Reply Br. 4—5) do not alter
the Mayo/Alice two-step framework.
Appellant argues that the Examiner erred in rejecting claim 1 under 35
U.S.C. § 101 because the Examiner fails to consider the claims as a whole.
In this regard, Appellant contends that the claim is not directed to enrolling a
customer in a service, and the Examiner “erred by distilling claim 1 down to
a six-word description.” App. Br. 17; see also Reply Br. 2, 8—9. Yet aside
from charging the Examiner with overgeneralization, Appellant presents no
persuasive argument or technical reasoning to rebut the Examiner’s finding
that the claims are directed to an abstract idea, and we are not apprised of
error. To the contrary, the Specification supports the Examiner’s
determination that the claims, considered as a whole and in light of the
Specification, are directed to enrolling a customer in a service. See Spec. 12
(claimed invention “relates to a method and apparatus for enrollment in
credit reporting, credit monitoring, or other services”), 124 (invention
“enables more accurate and complete collection of customer information and
helps to ensure that a customer is able to retrieve service-related information
after enrollment in a service”).
Appellant argues that the claims do not pre-empt the entire field of
“enrolling a customer in a service,” because there are countless other
approaches for enrollment. App. Br. 18; see also Reply Br. 2—3. Yet
although “preemption may signal patent ineligible subject matter, the
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Application 14/075,723
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014)).
Appellant argues that the Examiner improperly “cite[s] nothing,” and
“relies on literally no evidence whatsoever to assert that Claim 1 is a
fundamental economic practice.” App. Br. 18—19; see also Reply Br. 2, 6—9.
Yet there is no requirement for Examiners to provide evidentiary support to
establish that a claim is directed to an abstract idea. See, e.g., para. IV “July
2015 Update: Subject Matter Eligibility’'’ (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf) (determination of patent eligible subject matter is a question of
law; thus, “courts do not rely on evidence that a claimed concept is a judicial
exception, and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings.”).
Appellant argues that the claim cannot be directed to a fundamental
economic practice because the Examiner “admits that the Appellant’s claims
contain details ‘not found in the prior art,’” and ‘Taj claim cannot possibly
encompass a fundamental economic practice if it has never been done
before.” App. Br. 19 (citing Final Act. 2—3); see also Reply Br. 6—7. Yet,
Appellant cannot reasonably deny that enrolling a customer in a service is a
fundamental, long-standing, and well-known economic practice.
To the extent that Appellant relies on aspects of the claim language
not being found in the prior art, a finding of novelty or non-obviousness
does not necessarily lead to the conclusion that subject matter is patent-
eligible. See, e.g., Ass ’n for Molecular Pathology v. Myriad Genetics, Inc.,
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133 S. Ct. 2107, 2117 (2013) (“Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.”). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
Appellant also argues that “[w]ith respect to the allegation that the
Appellant is claiming a method for organizing human activity ...[,] there is
no blanket ban on claims directed to methods of organizing human
activities.” Id. We agree with Appellant that not every method of
organizing human activity necessarily qualifies as an abstract idea.
Nonetheless, the Supreme Court, in Alice, referred to the concept of risk
hedging (which the Court, in Bilski v. Kappos, 130 S. Ct. 3218 (2010),
identified as an abstract idea) as “a method of organizing human activity.”
Alice Corp., 134 S. Ct. at 2356. Here, Appellant presents no persuasive
argument or technical reasoning to explain why the pending claims are not
directed to a method of organizing human activity that qualifies for
treatment as an abstract idea.
Appellant argues that claim 1 is similar to the claims DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014), because the
claims are rooted in computer technology and directed to solving a specific
technical problem. See App. Br. 19-20, 22—23; see also Reply Br. 5—6. In
this regard, Appellant contends that the solution is necessarily rooted in
technology because pre-Internet devices could not verily a customer’s
identity using data received over a network. App. Br. 20, 22. And that the
invention solves a specific technical problem wherein service providers
typically require a customer to enroll in a service before verifying the
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customer’s identity. App. Br. 22—23 (citing Spec, 54—55); see also Reply
Br. 6 (citing Spec. Tflf 54—55). Appellant’s argument is unpersuasive.
Unlike the situation in DDR Holdings, Appellant does not identify any
problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. To the contrary, it could not be clearer that, rather
than addressing a technical problem, the method of claim 1 is used to solve
the business problem of enrolling a customer in a service only after verifying
the customer’s identity. See, e.g., Spec. 1 54 (verifying identify before
enrolling “solve[s] various problems in the industry,” such as avoiding “a
customer [being] billed monthly for a credit monitoring service [when] the
customer [is] not be able to access the customer’s credit reports or other
sensitive information.”); | 55 (“[t]he approach described above helps to
alleviate these problems by verifying the customer’s identity before allowing
the customer to . . . officially enroll.”).
Appellant argues that “[l]iterally all of Claim 1 provides meaningful
limitations beyond the alleged abstract idea of enrolling a customer in a
service” under step two of the Mayo/Alice analysis. App. Br. 21.
Specifically, Appellant argues that the recited steps “describe a specific
process where a customer is enrolled in a credit reporting service or a credit
monitoring service after the identity of the customer is verified (which
allows the customer to retrieve service-related information immediately after
enrollment)” and “covers ‘significantly more’ than the concept of ‘enrolling
a customer in a service.’” Id. at 21—22. Appellant’s arguments are not
persuasive.
In addition to the enrolling step, claim 1 recites the following steps:
(1) “receiving ... a name of the customer, an email address of the customer,
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and at least a partial address of the customer;” (2) “using at least the email
address ... to determine;” (3) “receiving first information;” (4) “resolving;”
(5) “obtaining security information;” and (6) “verifying an identity.” Yet
these steps recite nothing more than collecting and analyzing information—
steps that the Federal Court has repeatedly held to be in the realm of the
abstract. See, e.g., Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1354—
55 (Fed. Cir. 2016).
Appellant argues that the claim limitations, taken as a whole, include
specific elements other than what is well-understood, routine, and
conventional in the field. App. Br. 22. But, here, Appellant merely
contends that claim 1 recites “details not found in the prior art,” which is
insufficient to confer patent eligibility. Id. Appellant also argues that the
combination of features “confine the claim to a particular useful
application.” Yet, limiting the use of the abstract idea to a particular
technological environment does not make the claims any less abstract. See
Alice Corp., 134 S. Ct. at 2358 (citing Bilski, 561 U.S. at 610-11). Here, the
ordered combination does not add anything to the abstract idea that is not
already present when the steps are considered individually.
Finally, to the extent Appellant contends that claim 1 requires “the use
of computers or the Internet” (see App. Br. 22—23), the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention. See DDR Holdings, 773 F.3d at 1256 (“After
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
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Application 14/075,723
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 1 under 35 U.S.C. § 101.
Dependent Claims 2, 3, 5, and 6
Each of claims 2, 3, 5, and 6 depends from claim 1. Appellant argues
that claim 2 “imparts a timing requirement on the collection of certain
information,” claim 3 “imparts a content requirement on the security
information,” claim 5 “imparts both an additional step [i.e., “using the Social
Security number of the customer to determine”] and a prerequisite on the
verification of a customer’s identity [i.e., “verifying . . . occurs in response
to determining”], and claim 6 “imparts an additional data collection step and
an electronic account activation along with a timing requirement on those
operations.” App. Br. 23—25. Yet each of these additional limitation further
specifies the type of information and/or the processing of information related
to the underlying concept, which is insufficient to confer patent eligibility
under 35 U.S.C. § 101.
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 2, 3, 5, and 6 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claims 2, 3, 5, and 6 under 35 U.S.C.
§101.
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Independent Claims 7, 8, 14, 15, and 20
Independent claims 7, 8, 14, 15, and 20 include language substantially
similar to claim 1. And Appellant advances the same arguments for these
claims as advanced for claim 1. See App. Br. 26-41, 43—58, 60-68; see also
Reply Br. 2—9 (arguing the pending claims as a group). Appellant offers no
additional arguments for the patent-eligibility of these independent claims
that is persuasive of Examiner error.
We are not persuaded for the reasons set forth above with respect to
claim 1 that the Examiner erred in rejecting claims 7, 8, 14, 15, and 20 under
35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claims 7,
8, 14, 15, and 20 under 35 U.S.C. § 101.
Dependent Claims 12, 13, 16, 18, and 19
Claims 12, 13, 16, 18, and 19 each depends from one of claims 8 and
15. Claim 16 recites language substantially similar to dependent claim 2;
claims 12 and 18 recite language substantially similar to dependent claim 5;
and claims 13 and 19 recite language substantially similar to dependent
claim 6. Appellant advances the same arguments for dependent claims 16,
12 and 18, and 13 and 19 as advanced with respect to dependent claims 2, 5,
and 6, respectively. See App. Br. 42-43, 58—61.
We are not persuaded for the reasons set forth above with respect to
claims 2, 5, and 6 that the Examiner erred in rejecting claims 12, 13, 16, 18,
and 19 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s
rejection of claims 12, 13, 16, 18, and 19 under 35 U.S.C. § 101.
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Dependent Claims 21—23
Claims 21—23 each depends from one of claims 1, 7, and 14.
Appellant argues that claim 21 “imparts both additional steps [i.e.,
“receiving from the user device,” “using at least the email address of the
customer to determine,” and “using the Social Security number of the
customer to determine”] and a prerequisite on the verification of a
customer’s identity,” claim 22 “imparts a prerequisite on various
operations,” and claim 23 “imparts both additional steps and a prerequisite
on the verification of a customer’s identity.” App. Br. 68—69.
Yet each of these additional limitations further specifies the collection
and/or the processing of information related to the underlying concept,
which is insufficient to confer patent eligibility under 35 U.S.C. § 101.
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 21—23 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—3, 5—10, 12—16, and 18—23
under 35 U.S.C. § 101 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)(l)(iv).
AFFIRMED
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