Ex Parte Hansen

Patent Trial and Appeal Board

Dec 11, 2017

14253219 (P.T.A.B. Dec. 11, 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.
14/253,219 04/15/2014 Kurt Hansen 90945-906682 (004330US) 5468
20350 7590 12/18/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT HANSEN
Appeal 2016-005672
Application 14/253,2191
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and CARL L. SILVERMAN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Western Union
Company. Br. 2.
Appeal 2016-005672
Application 14/253,219
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to financial transactions. More specifically, this application relates
to methods and systems for coordinating pooled financial transactions."
Spec. ^ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method comprising:
receiving, at a host computer system, information that
defines a beneficiary and a first condition for execution of a
financial transaction;
receiving, at the host computer system, information
regarding collection of a plurality of partial payments, wherein
each of the plurality of partial payments is prohibited from
originating from a particular source;
recording, by the host computer system, an accumulation
of collected funds for support of the financial transaction;
determining by the host computer system, whether the
first condition has been satisfied; and
causing, by of the host computer system, the
accumulation of collected funds to be transferred to the
beneficiary upon or after satisfaction of the first condition.
2 Our decision relies upon Appellant's Appeal Brief ("Br.," filed
Oct. 22, 2015); Examiner's Answer ("Ans.," mailed Mar. 2, 2016); Final
Office Action ("Final Act.," mailed Apr. 22, 2015); and the original
Specification ("Spec.," filed Apr. 15, 2014). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
2
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Application 14/253,219
Rejection on Appeal3
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 3.
CLAIM GROUPING
Based on Appellant's arguments (Br. 3-6), we decide the appeal of the
non-statutory subject matter rejection of claims 1-20 on the basis of
representative claim l.4
ISSUE
Appellant argues (Br. 3-6) the Examiner's rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
Did the Examiner err in concluding that representative claim 1 as well
as independent claims 8 and 15 and claims depending therefrom are patent
ineligible because the claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea, i.e., the claims are directed to a fundamental economic practice
and a method of organizing human activities?
3 In the event of further prosecution, we invite the Examiner to consider an
objection or rejection of claim 1 under 35 U.S.C. § 112(b) for indefiniteness
because of the apparent typographical error in the recitation of the step of
"causing, by of the host computer system . . . ."
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
3
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Application 14/253,219
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1-20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Appellant contends the Examiner erred "at least because (1) the Office
Action overreaches on what an abstract idea is, and therefore what it is in
these claims, and (2) significantly more than the alleged abstract idea is
present in these claims." Br. 3.
Step 1 —Abstract Idea
With respect to contention (1), Appellant relies upon the USPTO's
2014 Examiner Guidelines, which Appellant purports
gives 13 examples of what constitutes an abstract idea, with
each containing an average of 6.5 words. The most words any
of the examples have is 12 words ("a mathematical procedure
for converting one form of numerical representation to
another"). The instant independent claims have 109, 83, and 89
words, respectively, after the preamble, which include concrete
and tangible (i.e., non-abstract) steps of things like causing
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Application 14/253,219
funds transfers to occur. For at least this reason, the Office
Action's analysis under § 101 is deficient.
Br. 4.5
In response, the Examiner finds,
It is clearly seen in the claims that series of steps are performed
in the claims for the purpose of "coordinating pooled funds for
the financial transactions" involved particular behaviors that are
"interpersonal activities" of "managing relationships or
transactions between people, social activities, or behaviors,"
"satisfying or avoiding a legal obligation," and "sales activities
or behaviors," which are subcategories of activities that the
precedential courts have found to be abstract idea under "certain
methods of organizing human activity." Furthermore,
"coordinating pooled funds for the financial transactions" is a
"fundamental economic practice"; as stated in the July 2015
Update, ". . . phrase "fundamental economic practices" is used
to describe concepts relating to the economy and commerce
such as agreements between people in the form of contracts,
legal obligations, and business relations ..." Therefore, it is
clear that applicant's claims are directed to an abstract idea.
Ans. 3.
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
5 As a threshold matter, we find Appellant's argument (Br. 4), based upon a
word count of the claim limitations on appeal compared to examples in
Examination Guidelines, facially unavailing to persuade us the Examiner
erred in concluding the claims on appeal are directed to an abstract idea.
5
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Application 14/253,219
Alice Corp. Pty Ltd. v. CLS Bank Infl, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo!Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice, 134 S. Ct. at 2354. First, we "determine whether
the claims at issue are directed to a patent-ineligible concept." Id. at 2355.
If so, we "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." Id. at 2357 (quoting Mayo, 566 U.S.
at 72, 79). While the two steps6 of the Alice framework are related, the
"Supreme Court's formulation makes clear that the first-stage filter is a
meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp.,
LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the
Supreme Court "has not established a definitive rule to determine what
constitutes an 'abstract idea'" for the purposes of step one. Enflsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S.
Ct. at 2357).
However, our reviewing court has held claims ineligible as being
directed to an abstract idea when they merely collect electronic information,
display information, or embody mental processes that could be performed by
6 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
6
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Application 14/253,219
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Under the "abstract idea" step we must evaluate "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, 838 F.3d at
1257 (citation omitted).
Turning to the claimed invention, claim 1 recites:
A method comprising:
receiving, at a host computer system, information that
defines a beneficiary and a first condition for execution of a
financial transaction;
receiving, at the host computer system, information
regarding collection of a plurality of partial payments, wherein
each of the plurality of partial payments is prohibited from
originating from a particular source;
recording, by the host computer system, an accumulation
of collected funds for support of the financial transaction;
determining by the host computer system, whether the
first condition has been satisfied; and
causing, by of the host computer system, the
accumulation of collected funds to be transferred to the
beneficiary upon or after satisfaction of the first condition.
Br. 8 (Claims App'x).
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Thus, as a whole, we find method claim 1 recites recording
accumulation of collected funds by a host computer, and effecting
conditional transfer of the accumulated funds based upon satisfaction
of a condition determined by information (data) received by the host
computer. See also Final Act. 4.
The Examiner concludes:
The claimed invention is directed to non-statutory subject
matter because the claim(s) as a whole, considering all claim
elements both individually and in combination, do not amount
to significantly more than an abstract idea. The claim(s) is/are
directed to a fundamental economic practice and a method of
organizing human activities. The additional element(s) or
combination of elements in the claim(s) other than the abstract
idea per se amount(s) to no more than: mere instructions to
implement the idea on a computer, and recitation of generic
computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry. Viewed as
a whole, these additional claim element(s) do not provide
meaningful limitation(s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the
claim(s) amounts to significantly more than the abstract idea
itself.
Final Act. 3; see also Ans. 3, quoted, supra.
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 8, and 15 are directed to an abstract
idea, i.e., organizing human activities pertaining to financial transactions
involving receiving, processing, evaluating/determining whether a condition
has been met and, based upon the evaluation of the condition being met,
transferring accumulated funds.
8
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Application 14/253,219
As the Specification itself observes, "this application relates to
methods and systems for coordinating pooled financial transactions." Spec.
^ 2.7 8We find this type of activity, i.e., managing financial transactions,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson.")}
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has altered the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146—47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
7 See also. Spec. 19 ("Abstract"):
Methods and systems are provided for processing a financial
transaction. A set of conditions is received that define
circumstances for execution of the financial transaction. Funds
are collected for each of a plurality of partial payments prior to
satisfaction of the set of conditions, with at least two of the
partial payments being collected from different persons. The
collected funds are accumulated for support of the financial
transaction until satisfaction or failure of the set of conditions.
8 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101." CyberSource, 654 F.3d at 1373.
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In this regard, the claims are similar to claims our reviewing court has
found patent ineligible in Elec. Power Grp., 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category").
Therefore, in agreement with the Examiner, we conclude independent
claims 1, 8, and 15 involve nothing more than receiving and evaluating data
to determine whether a condition has been met before carrying out an
operation, i.e., causing accumulated funds to be transferred, without any
particular inventive technology — an abstract idea. See Elec. Power Grp.,
830 F.3d at 1354. We further refer to Content Extraction, where the Federal
Circuit has provided additional guidance on the issue of statutory subject
matter by holding claims to collecting data, recognizing certain data within
the collected data set, and storing that recognized data in memory were
directed to an abstract idea and therefore unpatentable under § 101. Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343
(Fed. Cir. 2014).
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner’s conclusion the claims are directed to an abstract idea.
Step 2 —Inventive Concept
Appellant relies upon USPTO Examination Guidelines to rebut the
Examiner's legal conclusions regarding whether the claims provide
something more than implementation of the abstract idea itself. Br. 4-6.
We have considered these guidelines, which are based on controlling case
law and USPTO policy at the time the guidelines were issued. However, the
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PTAB applies relevant U.S. Supreme Court and the Federal Circuit case law
to the facts of each patent application on appeal, and does not rely on
guidelines intended to train Patent Examiners as controlling legal authority.
As our reviewing court has held, if the concept is directed to a patent-
ineligible concept, as we conclude under Step 1, above, we proceed to the
"inventive concept" step. For that step we must "look with more specificity
at what the claim elements add, in order to determine 'whether they identify
an "inventive concept" in the application of the ineligible subject matter' to
which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec.
Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an "inventive concept" that
transforms the abstract idea of a fundamental economic practice and method
of organizing human activities into a patent-eligible application of that
abstract idea. See Final Act. 3; and see Ans. 3—4. We agree with the
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Examiner because, as in Alice, we find the recitation of a method that
receives and evaluates information (data) by a computer before taking a
conditional action is simply not enough to transform the patent-ineligible
abstract idea here into a patent-eligible invention. See Alice, 134 S. Ct. at
2357 ("[CJlaims, which merely require generic computer implementation,
fail to transform [an] abstract idea into a patent-eligible invention.").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2-20
which fall therewith.9
CONCLUSION
The Examiner did not err with respect to the non-statutory subject
matter rejection of claims 1-20 under 35 U.S.C. § 101, and we sustain the
rejection.
9 We note, with respect to the dependent claims on appeal, Appellant merely
states "the Office Action makes no effort to analyze these claims and state
any grounds for why the recitations of these claims do not amount to
significantly more than the alleged abstract idea. This is contrary to the
Interim Guidance which states that '[e]very claim must be examined
individually, based on the particular elements recited therein, and should not
be judged to automatically stand or fall with similar claims in an
application.'" Br. 6. We find this is not a substantive argument as to how
any of the dependent claims cures the deficiencies of the independent claims
addressed herein.
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DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
13