Ex Parte Kaufman et al

Patent Trial and Appeal Board

May 30, 2018

14078164 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/078,164 11112/2013
116886 7590 06/01/2018
Marshall, Gerstein & Borun LLP (State Farm)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
FIRST NAMED INVENTOR
Mark Comer Kaufman
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.
32060/47845 6565
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK COMER KAUFMAN, KAY SCHNELL LARRISON, and
LATRICIA FAYE JOHNSON
Appeal2017-001337
Application 14/078, 164
Technology Center 3600
Before ALLEN R. MACDONALD, JEREMY J. CURCURI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals under 35 U.S.C.
§ 134(a)fromthefinalrejectionofclaims 1-7, 10-12, 14, 15, 17,and 19-
28. Claims 8, 9, 13, 16, and 18 have been canceled. See App. Br. 5. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant is the Applicant, State Farm Mutual Automobile Insurance
Company, which, according to the Appeal Brief, is the real party in interest.
App. Br. 3.
Appeal2017-001337
Application 14/078, 164
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to "real-time financial account
validation, verification or confirmation during the process of opening a new
financial account." Spec. i-f 1. Claim 1, which is illustrative, reads as
follows:
1. A system for opemng financial accounts m real-time,
compnsmg:
a data storage device configured to store respective
information corresponding to each of a plurality of accounts;
a network interface communicatively coupling the system
to another system; and
an external account validator communicatively coupled to
the data storage device and to the network interface; the external
account validator configured to cause the system to:
(a) receive, via the network interface or via another
interface of the system, a first request to open a new
financial account at a first institution, wherein the new
financial account, after being opened, is associated with an
owner of the new financial account;
(b) store information corresponding to the new
financial account in an entry of the data storage device, the
information corresponding to the new financial account
including an indication of the owner of the new financial
account and an indication of an account balance;
( c) receive, via the network interface or the another
interface, a second request to fund the new financial
account by an electronic funds transfer from a source
financial account corresponding to a second institution;
( d) cause a query to be transmitted, using the
network interface, to a first computing device of the
another system and corresponding to the second
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Application 14/078, 164
institution, to determine a particular type of validation
information of a plurality of types of validation
information, the particular type of validation information
specified by the second institution, and each type of
validation information included in the plurality of types of
validation information is indicative of associations
between accounts and account owners;
( e) obtain, via the network interface or the another
interface, (i) information indicative of the source financial
account, and (ii) validation information indicative of the
association between the source financial account and the
new financial account owner, the validation information
having the particular type indicated in a response to the
query;
(f) cause the information indicative of the source
financial account and the validation information indicative
of the association between the source financial account
and the new financial account owner to be transmitted,
using the network interface, to the first computing device
or to another computing device for validation that the new
financial account owner is associated with the source
financial account, the another computing device
corresponding to the second institution;
(g) receive, via the network interface, a validation
indication that the new financial account owner is verified
as being associated with the source financial account, the
validation indication generated by the first or the another
computing device corresponding to the second institution;
and
(h) upon receiving the validation indication, initiate
an electronic funds transfer from the source financial
account to the new financial account, and update the
information corresponding to the new financial account
stored in the entry of the data storage device based on the
electronic funds transfer,
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wherein (a) through (h) is performed during a contiguous
interval of time less than or equal to one business day.
Rejection
Claims 1-7, 10-12, 14, 15, 17, and 19-28 stand rejected under
35 U.S.C. § 101 because the claimed subject matter is judicially-excepted
from patent eligibility under § 101. Final Act. 2--4.
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. 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. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1311,
1314 (Fed. Circ. 2016). If the claims are not directed to a patent-ineligible
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concept, the inquiry ends. Otherwise, the inquiry proceeds to the second
step, where the elements of the claims are considered "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 79--80, 1297). We, therefore,
look to whether the claims focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
Turning to the first step of the analysis, we agree with the Examiner
that the claims are directed to the abstract ideas of opening financial
accounts and a process for obtaining and validating information associated
with accounts and account owners. Final Act. 2. Opening a financial
account and obtaining and validating information associated with accounts
and account owners are fundamental business practices, long prevalent in
our system of commerce, like the risk hedging in Bilski (see Bilski v.
Kappas, 561 U.S. 593 (2010)), the intermediated settlement in Alice (see
Alice, 134 S. Ct. at 2356-57), verifying credit card transactions
in CyberSource (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 in FairWarning (see FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)), and guaranteeing
transactions (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed.
Cir. 2014) ). Opening a financial account and obtaining and validating
information associated with accounts and account owners are also building
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blocks of a market economy. Thus, opening a financial account and
obtaining and validating information associated with accounts and account
owners, like risk hedging and intermediated settlement, are each an "abstract
idea" beyond the scope of§ 101. See Alice 134 S. Ct. at 2356.
We are not persuaded by Appellant's argument that "the Examiner's
cursory analysis under Alice step one consisted of mere conclusory
generalizations that did not address at all any specific claim elements, let
alone the claim elements' significance." Reply Br. 3. The Examiner has a
duty to give notice of a rejection with sufficient particularity to give
Appellant a fair opportunity to respond to the rejection. See 35 U.S.C.
§ 132(a). Here, we find the Examiner's rejection satisfies the initial burden
of production by identifying that the claims are directed to opening a
financial account and obtaining and validating information associated with
accounts and account owners, i.e., an abstract idea, and explaining why the
claims are similar to other claims found to be directed to abstract ideas.
Final Act. 2-3; see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a definition [for what an
'abstract idea' encompasses], then, the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel descriptive
nature can be seen-what prior cases were about, and which way they were
decided."). Accordingly, the Examiner set forth the statutory basis for the
rejection, namely 35 U.S.C. § 101; concluded that the claims are directed to
a judicial exception to § 101, namely an abstract idea; and explained why the
claims are directed to an abstract idea in sufficient detail to permit Appellant
to respond meaningfully to the rejection. See In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011).
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Turning to the second step of the analysis, the Examiner finds
although the claims recite the additional elements of data storage, network
interface, and an account validator,
These elements are recited at a high level of generality and
their broadest reasonable interpretation comprise of a processor,
memory and computer program to simply perform the generic
computer functions of receiving, storing, processing and
transmitting information. Generic computers performing generic
computer functions, alone, do not amount to significantly more
than the abstract ideas. Finally, the network limitations are
simply a field of use that is an attempt to limit the abstract idea
to a technological environment and, so do not add anything
further than looking at the limitations individually. When
viewed either individually, or as an ordered combination, the
additional limitations do not amount to a claim as a whole that is
significantly more than an abstract idea.
Final Act. 3--4.
Appellant contends the claims recite "significantly more" than the
abstract idea. App. Br. 17-20; Reply Br. 4---6. Appellant argues independent
claims 1, 11, and 20 recite additional limitations that were not considered by
the Examiner and these additional limitations "render each of the
independent claims as being 'significantly more' than merely some business
practice from the pre-Internet world formed on the Internet or no computer
networks, and as being necessarily rooted in computer technology." App.
Br. 17. Appellant argues the limitation "validation information indicative of
the association between the source financial account and the new financial
account owner," as recited in claim 1, and similarly recited in claims 11 and
20, was not considered by the Examiner, is not known from the pre-
Internet/pre-computer network realm, is unique and specific to the realm of
Internet/ computer networks realm, and, therefore, is necessarily rooted in
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computer technology. App. Br. 17. According to Appellant, the information
exchanged between bankers in the pre-Internet/ computer network realm was
information that was solely indicative of the source financial account and
information solely indicative of the new account owner. App. Br. 18.
Appellant argues the bankers did not exchange information indicative of an
association between the source financial account and a new account owner,
as required by the independent claims. Id.
Appellant further argues the limitation
( d) cause a query to be transmitted, using the
network interface, to a first computing device of the
another system and corresponding to the second
institution, to determine a particular type of validation
information of a plurality of types of validation
information, the particular type of validation information
specified by the second institution, and each type of
validation information included in the plurality of types of
validation information is indicative of associations
between accounts and account owners,
as recited in claim 1, and similarly recited in claims 11 and 20, is another
limitation that was not considered by the Examiner and is not merely some
known business practice of the pre-Internet/pre-computer network realm
implemented on the Internet or in computer networks. App. Br. 18-19.
Appellant argues:
[I]n the pre-Internet/pre-computer network realm, two
distinct pieces information, i.e., (1) the source financial account
number solely indicative of the source account and (2) the
identification information that is solely indicative of the account
owner, were sufficient for account validation purposes when
using pen, paper, the telephone, letter, or face-to-face
conversations. As such, in the pre-Internet/pre-computer
network realm, not only would the banker at the new financial
institution have no need for validation information indicative of
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the association between source accounts and account owners, the
banker at the new financial institution would have no need to
query the banker at the source account financial institution to
ascertain the types of validation information indicative of the
association between source accounts and account owners that are
accepted at the source financial account's institution.
Id. Appellant argues the independent claims, therefore, recite additional
limitations or elements that were not used, needed, available, or even known
in the pre-Internet/pre-computer network realm and, therefore, are
necessarily rooted in computer technology. App. Br. 20 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
Appellant further argues the claims are directed to patent-eligible
subject matter because the recited limitations are focused on a specific
means or method that improves previously known technology and
technological processes. Reply Br. 4--6. Appellant argues the Examiner's
analysis "fails to account for the specific requirements as claimed, and fails
to look to whether these specific requirements of the invention as claimed
focuses on means or method that improves previously known technology."
Reply Br. 4 (citing McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016)). In this regard, Appellant argues the prior art of
record does not teach or suggest "the particular type of validation
information [is] specified by the second institution" and "each type of
validation information included in the plurality of types of validation
information is indicative of the association of the source financial account
and the new financial account owner," as recited in claim 1 and similarly
recited in independent claims 11 and 20. Reply Br. 4. Appellant further
argues "the prior art of record does not and cannot specify which particular
authentication tokens are used to verify an association between an online
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service and a user" and "the prior art's authentication tokens are indicative
of only the user, and not of an association between the user and the online
service." Id. Appellant argues, therefore, the claims are not directed to an
abstract idea because the claims focus on a specific means or method that
improves upon the known technology and technological processes. Id.
We are not persuaded. The Federal Circuit has held that receiving
transmitted data over a network merely implicates purely conventional
activities that are the "most basic functions of a computer." Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017)
(quoting Alice, 134 S. Ct. at 2359). Put another way, "[a]n abstract idea on
'an Internet computer network' or on a generic computer is still an abstract
idea." BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016). Appellant has not sufficiently explained how
providing the information via a computer network is any different than
providing the same information via phone, paper, or in person. See
CyberSource, 654 F.3d at 1371 ("methods which can be performed mentally,
or which are the equivalent of human mental work, are unpatentable abstract
ideas") (citing Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). We agree
with the Examiner that this is neither a technical problem nor a technical
solution, but merely the application of an abstract idea on a computer via the
Internet. "We have repeatedly held that such invocations of computers and
networks that are not even arguably inventive are insufficient to pass the test
of an inventive concept in the application of an abstract idea." Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (quotation
omitted).
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For the reasons discussed supra, Appellant's contentions of error in
connection with the rejection of claims 1-7, 10-12, 14, 15, 17, and 19-28
under 35 U.S.C. § 101 are unpersuasive of Examiner error.
DECISION
WeaffirmtheExaminer'srejectionofclaims 1-7, 10-12, 14, 15, 17,
and 19-28 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)(l )(iv).
AFFIRMED
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