Ex Parte James et al

Patent Trial and Appeal Board

Mar 20, 2017

13275080 (P.T.A.B. Mar. 20, 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.
13/275,080 10/17/2011 Sheila H. James 90945-822553 (019310US) 1023
20350 7590 03/22/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHEILA H. JAMES, MARWAN FORZLEY,
JOHN A. MACMILLAN, DAVID KOCH, and
SAMER FORZLEY
Appeal 2015-0041881
Application 13/275,0802
Technology Center 3600
Before JAMES A. WORTH, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—6 and 9—19. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Oct. 6, 2014) and Reply Brief (“Reply Br.,” filed Feb. 23, 2015), and the
Examiner’s Final Office Action (“Final Act.,” mailed Apr. 22, 2014) and
Answer (“Ans.,” mailed Dec. 23, 2014).
2 According to Appellants, the real party in interest is The Western Union
Company (Appeal Br. 2).
Appeal 2015-004188
Application 13/275,080
Introduction
Appellants’ application relates to “payment processing [and more
specifically] the processing of cash payments for electronic purchase
transactions” (Spec. 12).
Claims 1, 12, and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A system for initiating a payment to a merchant from a
bill payment system for a purchaser in an electronic purchase
transaction, the purchaser being a subscriber of the bill payment
subsystem, wherein the system comprises:
a gateway subsystem for:
receiving electronic purchase transaction information, the
electronic purchase transaction information including:
a payment request authorized by the purchaser;
and
an identifier associated with the merchant;
determining that the purchaser is registered with the
gateway subsystem by at least:
determining that the purchaser subscribes to the bill
payment system;
determining that the purchaser has, prior to the gateway
subsystem receiving the electronic purchase transaction
information, approved the gateway subsystem as an auto-pay
payee in the bill payment subsystem;
based upon a determination that the purchaser is
registered with the gateway subsystem, sending the payment
request to the bill payment subsystem;
receiving a payment notification from the bill payment
subsystem; and
causing a first payment to be made from a first account
associated with the gateway subsystem to a second account
associated with the merchant.
(Appeal Br., Claims App.)
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Appeal 2015-004188
Application 13/275,080
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1—6 and 9-19 stand rejected under 35 U.S.C. § 103(a)
as being is unpatentable over Fuerstenberg (US 2011/0093387
Al, pub. Apr. 21, 2011) and Kitchen (US 2012/0209766 Al,
pub. Aug. 16, 2012).
ANALYSIS
Independent claim 1 and its dependent claims
We are persuaded by Appellants’ argument that the prior art relied on
by the Examiner fails to disclose a single pre-authorized intermediary for the
payment of multiple billers, as recited in independent claim 1, i.e.,
“determining that the purchaser has, prior to the gateway subsystem
receiving the electronic purchase transaction information, approved the
gateway subsystem as an auto-pay payee in the bill payment subsystem” (see
Appeal Br. 5—6; Reply Br. 2). Appellants assert that there is no intermediary
party in Kitchen between the merchant and the bill pay service and that a
consumer in Kitchen must pre-approve each merchant (Reply Br. 2).
The Examiner relies on CF station 140 of Kitchen (^f 96—98 & Figs.
10A, 10B) (Final Act. 5; Ans. 14). We have reviewed the portions of
Kitchen relied on by the Examiner and do not find adequate support for the
Examiner’s finding that CF station 140 meets the “determining” limitation.
In particular, we find that CF station 140 does not serve as a “payee,” as
required by independent claim 1. CF station 140 serves as an administrative
intermediary to arrange for payments to billers and receives payment
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Appeal 2015-004188
Application 13/275,080
instructions but Kitchen does not disclose that CF station 140 itself receives
payment. See Kitchen flflf 63—64) (“CF processor 410 [of CF station 140]
generates an electronic funds transfer instruction to electronically transfer
the appropriate amount from the applicable payor’s checking account
maintained at one of the financial institutions represented by stations 130a-
130c to the appropriate biller’s deposit account maintained at one of the
financial institutions represented by stations 130a-130c”); see also id. 197.
Therefore, we do not sustain the Examiner’s rejection under § 103(a) of
independent claim 1 and its dependent claims.
Independent claims 12 and 16 and their dependent claims
Independent claims 12 and 16 contain similar language and
requirements as independent claim 1. We do not sustain the Examiner’s
rejection under § 103(a) of independent claims 12 and 16 and their
dependent claims, for similar reasons as for independent claim 1.
NEW GROUND OF REJECTION
Claims 1—6 and 9-19 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
The Court in Alice emphasized the use of the two-step framework for
analysis of patentability:
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, “[w]hat else is there in the claims before us?” To
answer that question, 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.
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Appeal 2015-004188
Application 13/275,080
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289 (2012)).
Under step one of the Alice framework, we determine that
independent claim 1 is directed to arranging for the payment of bills through
an intermediary as part of a system of credit. Our reviewing courts have
held certain fundamental economic and conventional business practices, like
verifying credit card transactions (see CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011), collecting and
analyzing information to detect and notify of misuses (see FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016),
guaranteeing transactions (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1354 (Fed. Cir. 2014), budgeting {see Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)), and intermediated
settlement {see Alice, 134 S. Ct. at 2356—57), as being abstract ideas
implemented on computers. This is an abstract idea because it is a
fundamental economic practice similar to those above, and is a longstanding
practice.
Under step two of the Alice framework, we determine that the
Specification (e.g., ]Hf 39-42) discloses only generic computer equipment
and does not disclose any advances in computer technology. For example,
paragraphs 40 and 41 of the Specification disclose only conventional
computer equipment. Paragraph 43 refers to software that may implement
the claimed payment system without further detail. We have reviewed the
additional limitations as well, which include “receiving electronic purchase
transaction information,” “determining that the purchaser is registered,”
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Application 13/275,080
“determining that the purchaser subscribes,” “determining that the purchaser
has . . . approved,” “sending the payment request,” “receiving a payment
notification,” and “causing a first payment to be made.” We determine that
the additional limitations, taken individually or as an ordered combination,
are merely directed to the same abstract idea of payment of bills through an
intermediary, and that the application of computer technology to the abstract
idea does not transform the abstract idea into patentable subject matter.
For these reasons, we enter a new ground of rejection under § 101 as
to independent claim 1. Further, based on a review of the remaining claims
and their additional limitations, we enter a new ground of rejection under
§ 101 as to claims 2—6 and 9—19, for similar reasons, as for independent
claim 1.
DECISION
The Examiner’s decision to reject claims 1—6 and 9-19 under § 103(a)
is reversed.
Claims 1—6 and 9-19 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
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Application 13/275,080
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
REVERSED; 37 C.F.R, $ 41.50(b)
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