Ex Parte Hu

Patent Trial and Appeal Board

Mar 26, 2018

13070382 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/070,382 03/23/2011 QilinHu
132897 7590 03/28/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P2395.10181US03 1924
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
docket@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QILIN HU
Appeal 2016-006351
Application 13/070,382 1
Technology Center 3600
Before ALLEN R. MACDONALD, JASON V. MORGAN, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7, 15-19, 26, and 29, which are all of the claims pending in the
application.
We AFFIRM.
Technology
The application relates to "metadata driven methods and systems to
process financial data." Spec. i-f 2.
1 According to Appellant, the real party in interest is eBay, Inc. App. Br. 2.
Appeal2016-006351
Application 13/070,382
Representative Claim
Claim 1 is illustrative and reproduced below with formatting and
bracketed numbering added:
1. A system including:
a processor;
a database that stores financial transaction information that
includes a first set of financial transaction records; and
a tool that is, comprised of software components[: 1 )] that
are executable by the processor to identify a first acquirer from a
plurality of acquirers based on the first set of financial transaction
records, the first acquirer associated with a financial clearing
house system, [ 2)] that [are] executable by the processor to
generate into existence a plurality of first acquirer dependent
software components based on a first acquirer settlement
metadata file associated with the first acquirer, and[ 3)] that [are]
further executable by the processor to generate into existence a
first acquirer settlement file based on the first set of financial
transaction records and to use the plurality of first acquirer
dependent software components to process the first set of
financial transaction records to generate the first acquirer
settlement file and to communicate the first acquirer settlement
file to the financial clearing house system.
Rejections
Claims 1-7, 15-19, 26, and 29 stand rejected under 35 U.S.C. § 101
as being directed to a judicial exception without significantly more. Ans. 2-
6.
Claims 1-3, 15-19, 26, and 29 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of James (US 5,717,868; iss.
Feb. 10, 1998), Kompella (US 7,350,191 Bl; iss. Mar. 25, 2008), and
Gooding (US 7,792,716 B2; iss. Sept. 7, 2010). Final Act. 2-13.
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Application 13/070,382
Claims 4--7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over James, Kompella, Gooding, and Kim (US 2005/0071512 Al; publ.
Mar. 31, 2005). Final Act. 13-14.
ANALYSIS
Obviousness Rejections
The Examiner concludes claim 1 is obvious over the combination of
James, Kompella, and Gooding. Final Act. 2-5. Appellant contends the
Examiner erred in rejecting claim 1 because, inter alia:
1) James does not "generate into existence a first acquirer
settlement file based on ... [a] first set of financial transaction
records" (App. Br. 9);
2) Kompella's "data access application is not the first acquirer
dependent software" (id. at 12);
3) "combining the teachings of Kompella, asserted by the
Examiner and in the manner suggested by the Examiner, would
change the principle of operation of James" (id. at 14); and
4) "a person with ordinary skill in the art would have no
motivation to combine the teaching in Kompella with the teaching in
James" (id. at 15).
Appellant argues claims 2-7, 15-19, 26, and 29 are patentable for the same
reasons as claim 1 and further argues claims 4--7 are patentable because Kim
does not overcome the shortcomings in the rejection of claim 1. Id. at 16-
18. Accordingly, our decision as to the obviousness rejections turns on
whether we find error in the Examiner's rejection of claim 1.
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Application 13/070,382
Appellant's arguments (App. Br. 8-16) do not persuade us of error in
the Examiner's rejection of claim 1 for the reasons stated by the Examiner
(Ans. 6-8). We adopt the Examiner's findings, as set forth in the Answer
(id.) and as set forth in the Final Rejection (Final Act. 3-5). We further
concur with the Examiner's conclusion that claims 1-7, 15-19, 26, and 29
are unpatentable as obvious. Final Act. 2-14.
35 US.C. § 101 Rejection
The Examiner concludes that "[c]laims 1-7, 15-19, 26, and 29 are
directed to the abstract idea of comparing new and stored information and
using rules to identify options which is a type of 'idea "of itself" similar to
those found by courts to be abstract." Ans. 2 (citing SmartGene). 2
Appellant contends the Examiner erred in rejecting claims 1-7,
15-19, 26, and 29 as patent ineligible because the Examiner has not shown
the claims to be directed to an abstract idea without significantly more.
Reply Br. 2-15. We are not persuaded.
Section 101 defines patentable subject matter: "[ w ]hoever 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 therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
2 SmartGene v. Advanced Biological Laboratories, 555 Fed.Appx. 950, 955
(2014) (non-precedential).
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Application 13/070,382
(internal citation and quotations omitted). To determine patentable subject
matter, the Supreme Court has set forth a two-part test.
Step 1 - Whether the Claims Are Directed to an Abstract Idea
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017) (internal citation omitted).
A court must be cognizant that "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), and "describing the claims at ... a
high level of abstraction and untethered from the language of the claims all
but ensures that the exceptions to§ 101 swallow the rule." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, "the claims
are considered in their entirety to ascertain whether their character as a
whole is directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Appellant's arguments do not persuade us the Examiner erred in
concluding the claims are directed to an abstract idea. "In addressing the
first step of the section 101 inquiry, as applied to a computer-implemented
invention, it is often helpful to ask whether the claims are directed to 'an
improvement in the functioning of a computer,' or merely 'adding
conventional computer components to well-known business practices."'
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Application 13/070,382
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1270 (Fed.
Cir. 2016) (quoting Enfzsh, 822 F.3d at 1338).
Here, we agree with the Examiner that "the claims perform purely
generic computer functions." Ans. 3. Looking at the claims as an ordered
combination to generate dependent software components, to use the
dependent software components and transaction records to generate an
acquirer settlement file, and to communicate the results, the claims identify
data, process data, and present results. See claim 1. Ans. 2-3. The Federal
Circuit has "previously held other patent claims ineligible for reciting
similar abstract concepts that merely collect, classify, or otherwise filter
data." Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327
(Fed. Cir. 2017); see also BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("filtering content is an
abstract idea because it is a longstanding, well-known method of organizing
human behavior, similar to concepts previously found to be abstract"). For
example, in one recent case, the Federal Circuit affirmed the ineligibility of
claims involving "acquiring identification data ... , using the data to verify
the validity ... , and denying access ... if ... invalid." Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1371 (Fed. Cir.
2017). In Smart Systems, the Federal Circuit held:
The Asserted Claims are not directed to a new type of bankcard,
turnstile, or database, nor do the claims provide a method for
processing data that improves existing technological processes.
Rather, the claims are directed to the collection, storage, and
recognition of data. We have determined that claims directed to
the collection, storage, and recognition of data are directed to an
abstract idea.
873 F.3d at 1372. The claims here are analogous in that they are directed to
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Application 13/070,382
"comparing new and stored information and using rules to identify options,"
a type of "idea 'of itself."' Ans. 2.
Appellant has not sufficiently explained what aspects of the claim
recitations allegedly improve computer technology or otherwise direct the
claims to a non- abstract idea. See Reply Br. 3-11.
Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available
information in a particular field, stating those functions in
general terms, without limiting them to technical means for
performing the functions that are arguably an advance over
conventional computer and network technology.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016). "[M]erely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas." Id. at 1355; see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097-98 (Fed. Cir.
2016).
Thus, we agree with the Examiner that the claims are directed to an
abstract idea.
Step 2 - Whether the Claims Amount to Significantly More
In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78, 79).
The Supreme Court has "described step two of this analysis as a search for
an inventive concept-i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
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Application 13/070,382
than a patent upon the [ineligible concept] itself." Id. (internal citation and
quotations omitted).
For computer-related technology, the Federal Circuit has held that a
claim may pass the second step if "the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer ... [technology]." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., "a challenge
particular to the Internet").
Appellant argues "the claims include limitations that recite a specific
way for generating settlement files according to different acquirer specified
formats that improves the functioning of the communication function of the
computer itself" Reply Br. 15. We agree with the Examiner, however, that
"the claims perform purely generic computer functions." Ans. 3. Appellant
has not sufficiently explained how the recited elements improve the
functioning of the communication function. Reply Br. 15. We agree with
the Examiner that the
claim limitations do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements of a processor,
database, software components and tool are generic recitation of
computers or computer components, recited at a high level of
generality, in a computer network, to perform the generic
computer functions of transmitting, receiving, and processing
data.
Ans. 3. Merely naming the components (e.g., "a tool") without explaining
what technical problem they overcome or technical solution they provide is
insufficient.
Rather, the claims recite both a generic computer element-a
processor-and a series of generic computer "components" that
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merely restate their individual functions-i.e., orgamzmg,
mapping, identifying, defining, detecting, and modifying. That
is to say, ... [the claims] merely describe the functions of the
abstract idea itself, without particularity. This is simply not
enough under step two.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341
(Fed. Cir. 2017); see also Smart Sys., 873 F.3d at 1374 ("When claims like
the Asserted Claims are directed to an abstract idea and merely requir[ e]
generic computer implementation, they do[] not move into section 101
eligibility territory") (internal citation and quotations omitted).
Appellant has not directed us to any particular element in any claim
that adds significantly more than the abstract idea. See Reply Br. 15.
Moreover, we are unable to discern, in representative claim 1 or any of the
other pending claims, "an 'inventive concept' that transforms the
corresponding claim into a patent-eligible application of the otherwise
ineligible abstract idea." Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1349 (Fed. Cir. 2014).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-7, 15-19, 26, and 29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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