Ex Parte Hirka et al

Patent Trial and Appeal Board

Sep 14, 2017

13851322 (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.
13/851,322 03/27/2013 Jeffrey Hirka J47004.020078 8809
70813 7590 09/18/2017
GOODWIN PROCTER LLP
901 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20001
EXAMINER
OBEID, FAHD A
ART UNIT PAPER NUMBER
3687
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):
A Alpha-Kpetewama@ goodwinprocter. com
patentdc@goodwinprocter.com
fmckeon @ goodwinprocter. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY HIRKA and STEVEN FOX
Appeal 2016-002546
Application 13/851,3221
Technology Center 3600
Before HUBERT C. LORIN, KENNETH L. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 24^47, claims 1—23 having been canceled
previously. See Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify JPMorgan Chase Bank, N.A. as the real party in
interest. Appeal Br. 2.
Appeal 2016-002546
Application 13/851,322
ILLUSTRATIVE CLAIM
24. A method for authorizing a transaction and accessing
funds from at least one cash account, the method comprising
the steps of:
a) accessing, by a computer processor adapted for
communication and communicatively coupled to a
memory containing transactions data, an interface
coupled to the computer processor, to communicate to an
authorization server to authorize an individual transaction
initiated through use of a linked account instrument, said
linked account instrument having a link to said at least
one cash account, the link between the linked account
instrument and the at least one cash account enabling the
authorization server to authorize the transaction and to
access funds from the at least one cash account having a
predetermined cumulative spending limit and at least one
designated backing credit account, wherein the value of
the predetermined cumulative spending limit is set at a
time prior to the individual transaction, and wherein the
value of the predetermined cumulative spending limit is
set independently of the balances of said at least one cash
account and said at least one designated backing credit
account, and can be an amount greater than the balances
of said at least one cash account and said at least one
designated backing credit account;
b) authorizing, by at least one computer processor
communicatively coupled to the authorization server, the
individual transaction in near real-time upon determining
that a transaction amount of the individual transaction
results in a cumulative spending total below the
predetermined cumulative spending limit rather than
verifying a current balance of the said at least one cash
account or said at least one designated backing credit
account;
c) denying, by the at least one computer processor
communicatively coupled to the authorization server, the
individual transaction in near real-time upon determining
2
Appeal 2016-002546
Application 13/851,322
that the transaction amount of the individual transaction
results in a cumulative spending total above the
predetermined cumulative spending limit; and
d) performing, by the at least one computer
processor communicatively coupled to the authorization
server, at least one sweep of said at least one cash
account at at least one predetermined time to determine
whether charges incurred through use of the linked
account instrument can be satisfied by funds in said at
least one cash account, or charged against said at least
one designated backing credit account, wherein
performing at least one sweep includes:
determining, by the at least one computer
processor communicatively coupled to the
authorization server, whether said at least one cash
account has adequate funds for settling the
individual transaction initiated through use of the
linked account instrument;
withdrawing the funds from said at least one
cash account when said at least one cash account
has sufficient funds to settle the individual
transaction initiated through use of the linked
account instrument; and
withdrawing from said at least one
designated backing credit account when said at
least one cash account has insufficient funds to
settle the individual transaction initiated through
use of the linked account instrument, and wherein
upon determining that the sweeping of funds from
said at least one designated backing credit account
exceeds a certain threshold, the authorization
server processes business rules to determine
whether to suspend the use of said linked account
instrument, or charge a fee.
3
Appeal 2016-002546
Application 13/851,322
REJECTION
Claims 24-47 are rejected under 35U.S.C. § 101 as ineligible subject
matter.2
ANALYSIS
According to the Examiner, applying the first step of the analysis
delineated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014) (2014), claim 24 (the only independent claim in the
Appeal), as a whole, embodies an abstract idea, concerning the use of a card
for a transaction supported by funds supplied from a cash account and a
credit account under an agreed-upon methodology. See Answer 5—6; see
also Final Action 6. The Examiner regards this as a fundamental economic
practice and a method of organizing human activities. Final Action 8.
Further, under the second Alice step, the Examiner determines that the
claimed elements do not improve the function of a computer or other
technology and amount to no more than instructions to employ the abstract
idea with a generic computer. See id. at 6—7, 9; see also Answer 6.
According to the Appellants, the rejection states that the claimed
subject matter “contains” an abstract idea, but fails to establish that the
“entire claim is directed to an abstract idea.” Id. at 12. See also Reply Br. 3.
The Appellants argue that the rejection is deficient, because “every invention
necessarily includes some abstract idea.” Id.
2 We regard as inadvertent, the identification of claims 1—24 in the Final
Office Action, as opposed to the then-pending claims 24-47. See Appeal Br.
4; see also Answer 3.
4
Appeal 2016-002546
Application 13/851,322
This argument is not persuasive of error, however, because it is
sufficiently clear that the Examiner’s position is that the entirety of
independent claim 24 is directed to an abstract idea. See Answer 5—6.
The Appellants further contend that the rejection provides no “factual
basis” for determining that the claimed subject matter is a basic or
foundational tool of economic practice. Id. at 13. Additionally, the
Appellants contend that the claimed activities of server communications and
automatic account sweeps cannot be manually performed and, as such, may
not be regarded as organizing human behavior. See Reply Br. 3^4.
Yet, we are aware of no controlling authority that requires the Office
to provide factual evidence to support a finding that a claim is directed to an
abstract idea. Moreover, the rejection sufficiently establishes that the
claimed subject matter may be characterized as either a fundamental
economic practice or a method of organizing human activities, as these
expressions are used in the Supreme Court’s treatment of subject-matter-
eligibility. Claim 24 essentially concerns contractual relationships, which
typify the category of organizing human activities. In Alice, the Supreme
Court explained that similar contractual arrangements (involved in risk
hedging) amounted to a “longstanding commercial practice” and a “method
of organizing human activity.” Alice, 134 S. Ct. at 2356 (citing Bilski v.
Kappos, 561 U.S. 593, 599 (2010)).
The Appellants contend that the claimed subject matter amounts to
significantly more that the purported abstract idea, because the claim
requires machine features (“authorization server,” “computer processor,” as
well as transmission and routing of data). See Appeal Br. 14; see also Reply
Br. 5—6. Also, the claimed subject matter is a “practical application of
5
Appeal 2016-002546
Application 13/851,322
ideas” involving “several concrete steps” with “a myriad of practical, non­
abstract elements” and “physical elements.” Appeal Br. 10—11. In addition,
“the independent claim 24 is almost two pages long with 1.5 line spacing.”
Reply Br. 5.
Yet, the recitation of physical features, alone (regardless of the textual
length of a claim), does not necessarily constitute significantly more than an
abstract idea, under the prevailing case law.
The Appellants also argue that “[n]one of the case law to date has
negated the notion that a general-purpose computer programmed with new
functions is transformed into a special-purpose computer which is
effectively a new machine.” Appeal Br. 15.
To the contrary, the Appellants’ reference to a programmed generic
computer (as constituting a special-purpose computer) ostensibly relies upon
In reAlappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc). The Federal Circuit
has acknowledged that such a position is superseded by Bilski and Alice.
Eon Corp. IP Holdings LLCv. AT&T Mobility LLC, 785 F.3d 616, 622 (Fed.
Cir. 2015).
The Appellants also argue that the recitation of computer features in
the claims “clearly meets the machine prong of the machine-or-
transformation test” and thus amounts to significantly more than the
proposed abstract idea. Appeal Br. 14. See also Reply Br. 5—6.
Yet, the machine-or-transformation test is not dispositive of subject-
matter eligibility. In particular, it does not provide a route to circumvent the
analysis required under Alice, 134 S. Ct. at 2355.
The Appellants argue that the claims pose no risk of preemption for
“any field of human endeavor.” Appeal Br. 15. See also Reply Br. 6.
6
Appeal 2016-002546
Application 13/851,322
Yet, “[wjhile preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Finally, the Appellants note that the rejection did not analyze any of
the dependent claims. Appeal Br. 12.
However, the Appellants present no reason why any dependent claim
might be regarded differently, for subject-matter-eligibility purposes.
Indeed, according to the Examiner, the dependent claims are similar in
nature to independent claim 24. See Answer 5.
In view of the foregoing, we are not persuaded of error in the rejection
and, accordingly, sustain the rejection of claims 24-47 under 35 U.S.C.
§101.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 24-47 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
7