Ex Parte Hitchmoth

Patent Trial and Appeal Board

Jul 12, 2017

13834425 (P.T.A.B. Jul. 12, 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.
13/834,425 03/15/2013 Peter HITCHMOTH BTLNP0109US 1057
43076 7590 07/14/2017
MARK D. SARALINO (GENERAL)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE, NINETEENTH FLOOR
EXAMINER
ANDERSON, MICHAEL W
CLEVELAND, OH 44115-2191 ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/14/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER HITCHMOTH
Appeal 2015-005416
Application 13/834,4251
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s rejection of claims 1—12 and 14—18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed “invention relates to an electronic invoice
payment system, and more particularly to systems and methods for
1 According to Appellant, the real party in interest is Bottomline
Technologies (DE), Inc. (Appeal Br. 2.)
Appeal 2015-005416
Application 13/834,425
analyzing vendor behavior propensities in such an electronic invoice
payment system.” (Spec. 1,11. 5—7.)
Claim 1 is the sole independent claim on appeal. It recites (emphasis
added):
1. An electronic invoice payment system comprising:
a database stored on a non-transitory computer readable
medium, the database including a plurality of vendor records
containing information pertaining to a plurality of vendors;
a network interface configured to receive presented
invoices from multiple vendors for payment by multiple buyers,
wherein the presented invoices are stored in an invoice database
stored on the non-transitory computer-readable medium; and
a processor configured to analyze at least a portion of the
vendor records to determine whether a subject vendor selected
from among the plurality of vendors satisfies one or more
predetermined criteria, and when the processor determines that
the subject vendor satisfies the one or more predetermined
criteria, to calculate a vendor propensity factor that operates as
a measure of the subject vendor’s propensity to participate in an
aspect of the electronic invoice payment system pertaining to
processing invoices for payment by buyers to vendors based on
the presented invoices and generate a vendor propensity record
including the vendor propensity factor for the subject vendor.
REJECTIONS
Claims 1—12 and 14—18 are rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter.
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Claims 1, 2, 4, 5, 7, 10-12, and 14—18 are rejected under 35 U.S.C.
§ 103(a)2 as unpatentable in view of Gindlesperger (US 7,451,106 Bl, iss.
Nov. 11, 2008) and Rojahn (US 2007/0260776 Al, pub. Nov. 8, 2007).
Claims 3 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
in view of Gindlesperger, Rojahn, and Suchan Chae & Paul Heidhues,
Buyer’s Alliances for Bargaining Power, 13 J. Econ. & Mgmt. Strategy 4,
Winter 2004, at 731-54.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Gindlesperger, Rojahn, and David S. Evans, It Takes Two to Tango: The
Economics of Two-Sided Markets, The Payment Card Econs. Rvw.,
Winter 2003, at 1—12.
Claim 8 is ejected under 35 U.S.C. § 103(a) as unpatentable in view of
Gindlesperger, Rojahn, and Ibrahim Gurler, Supplier Selection Criteria of
Turkish Automotive Industry, 2 J. YasarUniv. 6, 555—69 (2007).
ANALYSIS
The §101 rejection
After the Final Action was mailed, the Supreme Court decided Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014). Alice applies a
two-part framework, earlier set out in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012), “for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
2 The Examiner states that “[cjlaim 13 is cancelled.” (Final Action 2.)
Therefore, we treat the statement that “[cjlaims 1, 2, 4, 5, 7, and 10—18 are
rejected under . . . 103(a)” as a typographical error. (See id.)
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claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second part of the framework is applied to determine if “the
elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.” Id.
at 2357 (citing Mayo, 566 U.S. at 72—73, 79).
In the Answer, the Examiner enters a new ground of rejection
rejecting claims 1—12 and 14—18 under § 101. Appellant does not separately
argue the subject matter eligibility of the rejected claims. Therefore, we
select claim 1 as representative and claims 2—12 and 14—18 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
With regard to part one of the Alice framework, the Examiner
determines that the claims “are directed to an electronic invoice payment
system, which is a fundamental economic practice, as well as a method of
organizing human activities, and thus an abstract idea.” (Answer 2.)
Appellant disagrees and argues that “[t]he Examiner has taken too
limited a view of what constitutes the nature of the invention.” (Reply
Br. 3.) In particular, Appellant argues that
although invoice processing in a broad sense may be considered
a fundamental economic practice or a method of organizing
human activities, in operation the claimed invention goes beyond
such basic activity. Rather, the claimed invention conducts a
new analysis of otherwise conventional invoice records, to
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automatically calculate the vendor propensity factor and then
generate the vendor propensity record.
(Id.)
Under part one of the Alice framework, we “look at 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 of Texas, LLC
v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the invention is
directed. In this case, “[t]he present invention provides a system and
methods that provide an algorithm to predict or identity a vendor’s
propensity to participate in one or more aspects of a third party invoice
processing system. An improved electronic invoice system thus has a
vendor propensity analysis feature.” (Spec. p. 7,1. 30 — p. 8,1. 2.) In short,
Appellant’s invention is directed to an electronic invoice system that
includes a predictive algorithm.
The Federal Circuit has “treated 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.”
Elec. Power Grp., 830 F.3d at 1354. Additionally, the Federal Circuit has
“recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Id. Thus, a system, like the claimed system, “that
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employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.” See Digitech Image
Techs, LLC v. Elecs. for Imaging, Inc., 758F.3d 1344, 1351 (Fed.
Cir. 2014).
Appellant, however, argues that the present claims are not directed to
an abstract idea and can be analogized to the claims in DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Reply Br. 3-5.) We
disagree.
The claims in DDR “do not recite a mathematical algorithm.” Id.
at 1257. Appellant’s claims recite “calculating] a vendor propensity
factor,” i.e., applying an algorithm. (See Claim 1.) Moreover, the claims in
DDR “specify how interactions with the Internet are manipulated to yield a
desired result — a result that overrides the routine and conventional sequence
of events ordinarily triggered by the click of a hyperlink.” DDR Holdings,
773 F.3d at 1258. Although Appellant argues that “the claimed invention
conducts a new analysis of otherwise conventional invoice records,” (Reply
Br. 4), Appellant simply applies an algorithm to conduct the analysis. And,
as discussed above, “a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.” Digitech, 758 F.3d at 1351.
In view of the above, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
With regard to part two of the Alice framework, the Examiner
determines that
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
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because the claims do not provide improvements to another
technology or technical field, improvements to the functioning
of the computer itself, and do not provide meaningful limitations
beyond general linking the use of an abstract idea to a particular
technological environment.
(Answer 2.)
Appellant again argues that “[t]he claimed invention conducts a new
analysis on otherwise conventional invoice records.” (Reply Br. 6.)
However, for the reasons discussed above, we are not persuaded of error.
Appellant additionally argues that the claims “avoid[] preemption of
conventional aspects of invoice processing.” (Id.)
Preemption, however, is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013), affd, 134 S. Ct. 2347 (2014). Moreover, “[w]here a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Id.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claims 1—12 and 14—18 under § 101.
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The §103 rejection
In relevant part, claim 1 recites: “to calculate a vendor propensity
factor that operates as a measure of the subject vendor’s propensity to
participate in an aspect of the electronic invoice payment system pertaining
to processing invoices for payment by buyers to vendors based on the
presented invoices.”
The Examiner finds that Gindlesperger discloses ‘“pertaining to
processing invoices for payment by buyers to vendors based on the
presented invoices’ (‘system can prepare the invoice data ... for proper
allocation of costs’ . . ., Col. 17 lines 2—17).” (Final Action 4.) The
Examiner also finds that Rojahn discloses “‘and when the processor
determines that the subject vendor satisfies the one or more predetermined
criteria, to calculate a vendor propensity factor that operates as a measure of
the subject vendor’s propensity to participate in an aspect of the electronic
invoice payment system’ (‘total requirement assessment score’ |100—102).”
(Id.)
Gindlesperger discloses “selecting a lowest bidding vendor from a
plurality of vendors of a customized good or service, including receiving a
set of vendor’s attributes from each of the plurality of vendors representing
their respective capabilities.” (Gindlesperger, Abstract.) Gindlesperger
further discloses receiving invoice data from vendor and generating, “for the
buyer’s approval, a corresponding invoice at the buyer’s web site portal
workspace.” (Id. at 17,11. 2—6.)
Rojahn discloses “assessing vendors for meeting requirements of a
service provider for deploying a selected service.” (Rojahn, Abstract.)
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Rojahn further discloses that for each relevant vendor, “a score is provided
representing this vendor’s actual capability.” {Id. 1100.)
The Examiner determines that
[i]t would be obvious of one of ordinary skill in the art at the time
of invention to modify Gindlesperger to include the teachings of
Rojahn because one goal of the Gindlesperger invention is to
eliminate time-consuming assessments of each bidder (Col. 16
lines 35—37). Incorporating the vendor scoring taught by Rojahn
would further this goal and allow the user to better evaluate
vendors with a more comprehensive vendor management tool.
(Final Action 4.)
But the Examiner does not sufficiently explain why it would have
been obvious to modify Gindlesperger’s teaching of a system that can
prepare invoice data in view of Rojahn’s teaching of a requirement
assessment score. Specifically, the Examiner does not sufficiently explain
why it would have obvious to modify the prior art so as to calculate a vendor
propensity factor “based on the presented invoices,” as recited in claim 1.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘“[Tjhere must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’”).
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1 and dependent claims 2—12 and 14—18 under § 103(a).
DECISION
The Examiner’s rejection of claims 1—12 and 14—18 under 35 U.S.C.
§ 101 is affirmed.
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The Examiner’s rejections of claims 1—12 and 14—18 under 35 U.S.C.
§ 103(a) are reversed.
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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