Ex Parte Kessler et al

Patent Trial and Appeal Board

Nov 16, 2017

13011823 (P.T.A.B. Nov. 16, 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.
13/011,823 01/21/2011 Barry Kessler TREFOIL.001A 5487
7590 11/16/2017
Trefoil Technology, LLC
c/o Barry Kessler
1202 LEXINGTON AVENUE
Suite 192
New York, NY 10028
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
11/16/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY KESSLER, DUANE JACOBSEN,
and STEVE WILLIAMS
Appeal 2016-0046671
Application 13/011,8232
Technology Center 3600
Before MICHAEL W. KIM, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEDLOCK, 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—5 and 7—17. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
October 5, 2015) and Reply Brief (“Reply Br.,” filed April 4, 2016), and the
Examiner’s Answer (“Ans.,” mailed February 2, 2016) and Final Office
Action (“Final Act.,” mailed December 5, 2014).
2 Appellants identify Trefoil Technology, LLC as the real party in interest.
App. Br. 4.
Appeal 2016-004667
Application 13/011,823
CLAIMED INVENTION
Appellants’ claimed invention “relates to providing direct deposit
enrollment services” and, in particular, “to a system and method for allowing
third parties such as card issuers and program administrators to facilitate
direct deposit enrollment of accountholder customers” (Spec. 12).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of providing
enrollment of direct deposits from a payor to a payee’s deposit
account, the deposit account associated with an account issuer,
wherein the enrollment is initiated by the account issuer, the
method comprising:
receiving, over a computer network, payee deposit account
information from the account issuer;
generating direct deposit enrollment data from the
received deposit account information;
storing, in a computer memory, the direct deposit
enrollment data in a database;
packaging the stored direct deposit enrollment data for
transmission to a payor;
transmitting, via a network interface, at least some of the
enrollment data package to the payor;
receiving from an issuing processor, data indicative of a
direct deposit into the payee’s deposit account;
processing the received data and storing the received data
as direct deposit data in the database;
associating within the database each direct deposit to its
respective enrollment; and
transmitting and displaying, to the account issuer, a list of
the direct deposits made into the payee’s deposit account
referenced to its associated enrollment.
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REJECTION
Claims 1—5 and 7—17 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
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 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 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.” Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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 there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 78).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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or abstract ideas.” Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)).
Appellants maintain here that the § 101 rejection cannot be sustained
because the “Examiner’s findings regarding Section 101, namely that the
claims are merely ‘directed to the abstract idea of a fundamental practice of
direct deposit enrollment, ’ are entirely lacking in evidentiary support and
constitute nothing more than an improper use of official notice” (App.
Br. 13). More particularly, Appellants argue that Examiner fails to “provide
any evidence or analysis as to how account issuer initiated direct deposit
enrollment, as claimed, is a fundamental economic practice,” and also fails
to provide any evidence or analysis to support “the ‘something more’
analysis,” i.e., the analysis under step two of the Mayo/Alice framework (id.
at 13-15; see also Reply Br. 3). Appellants note that the Supreme Court, in
Bilski v. Kappos, 561 U.S. 593 (2010), and also in Alice, cited authority (i.e.,
three finance textbooks in Bilski and a textbook from 1896 in Alice), to
substantiate its finding in Bilski, that “hedging,” and in Alice, that
“intermediated settlement,” is a fundamental economic practice (App.
Br. 14). And Appellants ostensibly maintain that the Examiner is likewise
required to cite authority here in order to establish a prima facie case of
patent-ineligibility (id.). We disagree.
As an initial matter, we find nothing in Bilski ox Alice that requires the
Office to identify specific references to support a finding that a claim is
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directed to an abstract idea. Nor have Appellants articulated sufficiently
their assertion (id. at 15—16) that the USPTO’s July 2015 Subject Matter
Eligibility guidelines and/or the Administrative Procedure Act impose any
such requirement.
The Federal Circuit has repeatedly observed that “the prima facie case
is merely a procedural device that enables an appropriate shift of the burden
of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has,
thus, held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for the rejection, “together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” See In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office
is that it sets forth the statutory basis of the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 “is violated when the rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.”).
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the Mayo!Alice two-step framework, consistent with the
guidance set forth in the USPTO’s June 25, 2014 “Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et al.,” in effect at the time the Final
Office Action was mailed. Specifically, the Examiner notified Appellants
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that the claims are directed to “direct deposit enrollment,” which the
Examiner found is a fundamental economic practice and, therefore, an
abstract idea; and that the additional elements or combination of elements in
the claims amounts to “no more than: (i) mere instructions to implement the
idea on a computer, and/or (ii) recitation of generic computer structure that
serves to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry” (Final Act. 2). The Examiner, thus, notified Appellants of the
reasons for the rejection “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” 35 U.S.C. § 132. And we find that, in doing so, the
Examiner set forth a prima facie case of patent-ineligibility such that the
burden shifted to Appellants to demonstrate that the claims are patent-
eligible. Appellants’ bare assertion that evidence is needed, without any
supporting reasoning as to why, is insufficient to require the Examiner to
provide evidentiary support.
Appellants further argue that rejection cannot be sustained because the
claimed “system and method for issuer effectuated direct deposit... is not a
fundamental economic practice that has long been known, but rather a new,
innovative solution to a problem characteristic of traditional computer
systems and methods for direct deposit enrollment that was recognized by
the inventors” (App. Br. 14). Yet, to the extent Appellants maintain that the
claimed invention is patent-eligible, i.e., that the claim amount to
“significantly more” than an abstract idea, and/or that the recited functions
are not “well-understood, routine, and conventional activities,” because the
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claims are allegedly novel and/or non-obvious in view of the prior art,3
Appellants misapprehend the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo I Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non­
obviousness, but rather, a search for “an element or combination of elements
that is sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.” Alice Corp.,
134 S. Ct. at 2355. “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass ’n. for Molecular Pathology
v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188—89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within categories of possibly patentable
subject matter.”).
3 See, e.g., App. Br. 15 (“The fact that there is no prior art-based rejection
demonstrates that the recited functions are not ‘well-understood, routine, and
conventional activities’, but rather inventive and previously unknown
functions”); id. at 17 (“The claims involve more than just simple direct
deposit enrollment. Were that not the case, the claims would still stand
rejected under Section 102 and/or Section 103.”); id. at 23 (“The fact that the
Examiner was unable to find any prior art relating to issuer-effectuated
direct deposit enrollment makes it clear that the elements recited in Claim 1
were not well-understood, routine or conventional.”)).
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We also cannot agree with Appellants that the Examiner has
oversimplified the claimed invention as directed to direct deposit enrollment,
or that the Examiner has, otherwise, failed to consider the claims as a whole
(App. Br. 16—17). Taking claim 1 as an example, Appellants argue that
claim 1 recites “much more than” performing direct deposit in a computer
environment, and ostensibly maintain that in order to find that claim 1 is
directed to an abstract idea, the Examiner must “engage in an element by
element analysis which provides an explanation as to why the various
limitations recited in the claim are simply directed to the abstract idea of ‘a
fundamental economic practice of direct deposit enrollment’” {id. at 17).
We are aware of no controlling precedent, nor, for that matter, do Appellants
identify any controlling authority, that imposes any such requirement or that,
otherwise, holds that the abstract idea must be expressly recited in every
claim limitation. This is especially true where, as here, Appellants only
make a conclusory assertion that the Examiner must engage in such analysis,
with insufficient explanation as to why any particular claim limitation
requires alteration of the Examiner’s finding as to what the claim is directed
to.
The same is true for Appellants’ argument that the Examiner has
failed to consider the claims as a whole {id. at 16—17). Indeed, the Examiner
explicitly found that “the claim(s) as a whole, considering all claim
elements, both individually and in combination, do not amount to
significantly more than” the abstract idea of direct deposit enrollment {see
Final Act. 2 (emphasis added)) — a finding fully consistent with the
Specification {see, e.g., Spec. 12 (“This application relates to providing
direct deposit enrollment services” and “[i]n particular,. . . relates to a
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system and method for allowing third parties ... to facilitate direct deposit
enrollment of accountholder customers.”)).
Further referencing claim 1, Appellants note that claim 1 recites a
“complex multiparty computer network transaction, which includes data
being generated and transmitted among and between four different entities”
(i.e., an account issuer, a payor, a payee, and an issuing processor), as
distinguished from traditional direct deposit enrollment, which involves only
a payor and payee (id.; see also Reply Br. 8). However, we find no
indication in the record, nor do Appellants point us to any indication, that the
particular operations recited in claim 1 require any specialized computer
hardware or other inventive computer components, invoke any assertedly
inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform the claimed method
steps, which, as the Examiner observes (Ans. 3—4), involve no more than
receiving, processing, transmitting, and displaying information, i.e., generic
computer functions. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (claims held to be directed to an abstract idea
where “[t]he advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions.”); DDR Holdings, 773 F.3d at 1256 (“After Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible.”).
We also fail to see why, and Appellants do not explain why, the
involvement of “four different entities” somehow puts the claimed invention
outside the realm of abstract ideas when Appellants effectively admit that
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allowing payees (e.g., account holders) to enroll a deposit account in direct
deposit over the Internet is a fundamental economic practice and, therefore,
an abstract idea (see id. at 18 (“The Examiner contends that the claimed
invention is merely an abstract idea of ‘a fundamental economic practice of
direct deposit enrollment. ’ If the claims simply related to allowing account
holders (e.g. payee/deposit account holder) to enroll their deposit accounts in
direct deposit over the Internet, that might be an accurate characterization.
But that is not the solution that is claimed here.”); id. at 20 (“Were Claim 1
directed merely to computerizing the traditional payor/payee initiated direct
deposit enrollment, the Examiner’s assertion regarding Mayo step 1 might
have merit. But the claim is not so broad. Rather, it is directed to a concrete
implementation of an issuer effectuated direct deposit enrollment that
includes the processing of data and information received from various
different parties involved in the enrollment process”)).
Appellants further argue that the Examiner’s rejection contravenes
binding Federal Circuit precedent, i.e., DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) {id. at 17—18; see also Reply Br. 6).
But, we find no parallel between the present claims and those at issue in
DDR Holdings.
The claims at issue in DDR Holdings were directed to retaining
website visitors, and in particular to a system that modified the conventional
web browsing experience by directing a user of a host website, who clicks
an advertisement, to a “store within a store” on the host website, rather than
to the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257—
1258. The court determined that “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
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Id. at 1257. The court also determined that the invention was “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
Appellants maintain here that the pending claims, like the claims in
DDR Holdings, are necessarily rooted in computer technology in order to
overcome a problem (i.e., “allowing] account issuers (the institution
holding the payee’s account) to proactively establish and manage the
continuation of direct deposit of payments into the payee’s account”)
specifically arising in the realm of computer networks (id. at 18 (explaining
that the need for a system which allows an account issuer to coordinate and
direct the direct deposit enrollment process only arises in the realm of
computer networks because “it is the computer network which allows a party
other than the payee/deposit account holder to assist in this previously error-
prone, insecure, and complicated process”)). Yet, unlike the situation in
DDR Holdings, we are unclear as to how coordinating and directing a direct
deposit enrollment process is “a challenge particular to the Internet.” Direct
deposit enrollment existed before and still exists outside of computer
technology and computer networks (see Reply Br. 8 (acknowledging that
“[historically, direct deposit enrollment was a paper-based process”)).
Also, unlike the situation in DDR Holdings, there is no indication here that a
computer network, or the Internet, in particular, is used other than in its
normal, expected, and routine manner, e.g., for receiving and transmitting
information.
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Addressing each of claims 1—5 and 7—17 in turn, Appellants further
argue that the claims independently satisfy the Mayo!Alice two-part test
(App. Br. 18-42).
Independent Claim 1
Focusing first on claim 1, Appellants argue that claim 1 is not directed
to an abstract idea because, unlike traditional direct deposit enrollment, “it is
directed to a concrete implementation of an issuer effectuated direct deposit
enrollment that includes the processing of data and information received
from various different parties involved in the enrollment process” {id. at 20).
That argument is not persuasive of Examiner error for the same reasons set
forth above.
We also are not persuaded of Examiner error by Appellants’ argument
that even if claim 1 is directed to an abstract idea, the claim is nonetheless
patent-eligible because claim 1 does not seek to “tie up” the abstract concept
of direct deposit enrollment and is confined to a particular useful application
{id. at 20, 23; see also Reply Br. 4—5).
There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice Corp.,
134 S. Ct. at 2354. But characterizing pre-emption as a driving concern for
patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
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Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
The recitation of a practical application for an abstract idea also is
insufficient to transform the abstract idea into a patent-eligible invention.
Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011) (“The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection.
Dependent Claim 2
Claim 2 depends from claim 1, and recites that “transmitting the
enrollment data package to the payor comprises transmitting the enrollment
data package to a communication intermediary for processing.” Appellants
argue that the introduction of “a communication intermediary,” which
receives the enrollment data package for processing, takes claim 2 “away
from the realm of an abstract idea” because it provides “an additional
concrete step which involves a specific data flow within the [recited]
computer network environment” (App. Br. 24). But, Appellants do not point
to anything in the Specification to indicate that any specialized hardware or
inventive technology is involved, or that the communication intermediary is
other than a generic computer component. See Alice Corp., 134 S. Ct.
at 2358 (“[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.”). Receiving
and processing data also are exactly the kind of activities that the Federal
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Circuit has repeatedly held are within the realm of abstract ideas. See, e.g.,
Elec. Power Grp, 830 F.3d at 1354.
Appellants further argue that, even if claim 2 is directed to an abstract
idea, the claim is nonetheless patent-eligible because, like claim 1, claim 2 is
confined to a particular useful application and does not preclude others from
engaging in “the fundamental economic practice of direct deposit
enrollment” (App. Br. 24). That argument is not persuasive for the same
reasons set forth above with respect to claim 1.
Finally, we are not persuaded of Examiner error, to the extent that
Appellants argue that the Examiner failed to establish a prima facie case of
patent-ineligibility with respect to claim 2 because the Examiner failed to
explicitly address claim 2, and “merely provided a generic statement that the
remaining claims do not meet the second part of the Mayo test” {id.; see also
Reply Br. 3 (arguing that summary reversal is required in view of the
Examiner’s failure to address the dependent claims individually)).
Appellants do not contend that the Examiner’s rejection was not
understood or that the rejection otherwise fails to satisfy the requirements of
35 U.S.C. § 132. The Examiner’s discussion in the Final Office Action
begins, “[cjlaims 1—5 and 7—17 are rejected under 35 U.S.C. 101 because the
claimed invention is directed to non-statutory subject matter because the
claim(s) as a whole, considering all claim elements both individually and in
combination, do not amount to significantly more than an abstract idea”
(Final Act. 2), and the Examiner finds that that the claimed subject matter,
generally, is directed to the abstract idea of “direct deposit enrollment” {id.).
Without more analysis by Appellants, we decline to find error in the
Examiner’s decision not to recite each claim individually, and address its
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patent-eligibility separately. Cf. Content Extraction & Transmission v.
Wells Fargo Bank, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that
when all claims are directed to the same abstract idea, “addressing each
claim of the asserted patents [is] unnecessary.”).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 2 under 35 U.S.C. § 101.
Dependent Claim 3
Claim 3 depends from claim 1, and recites that “packaging the stored
direct deposit enrollment data comprises formatting the data in accordance
with payor requirements for processing.” Appellants argue that “the
packaging of direct deposit enrollment data in accordance with payor
requirements” distances claim 3 from the realm of abstract ideas (App.
Br. 24—25). But, as with claim 2, we find nothing in the Specification, nor
do Appellants point us to anything in the Specification, to indicate that any
specialized hardware or inventive technology is involved. And we fail to see
how, and Appellants do not explain how, “formatting data in accordance
with payor requirements,” takes claim 3 out of the realm of abstract idea,
when claim 3 essentially describes a result without meaningfully limiting
how the claimed method achieves that result. Cf. Clarilogic, Inc. v.
FormFree Holdings Corp., 681 F. App’x 950, 954 (Fed. Cir. 2017)
(concluding that claims reciting “collecting financial data, transforming the
data into a desired format, validating the data by ‘applying an algorithm
engine,’ analyzing certain exceptions, and generating a report” were directed
to an abstract idea).
Appellants’ further arguments (i.e., that claim 3 meets the second part
of the Mayo!Alice test and that the Examiner failed to analyze the claim
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separately and, thus, failed to establish a prima facie case of patent-
ineligibility (see App. Br. 25)) are substantially identical to Appellants’
arguments with respect to claims 1 and 2, and are unpersuasive of Examiner
error for the same reasons set forth above.
Therefore, we sustain the Examiner’s rejection of claim 3 under
35 U.S.C. § 101.
Dependent Claims 4, 5, 7—10, 12, and 14—17
Each of claims 4, 5, 7—10, 16, and 17 depends, directly or indirectly,
from claim 1, and further characterizes the method of claim 1 to include
additional steps for receiving, processing, displaying, and/or transmitting
direct deposit information.4 Claim 12 depends from claim 1, and recites that
an issuing agent acts on behalf of the account issuer to provide enrollment
services. And claims 14 and 15, which depend from dependent claim 8,
recite that an enrollment/deposit lifecycle, as recited in claim 8, comprises a
dataset of information about each deposit associated with the enrollment
(claim 14), and that the information about each deposit comprises
4 I.e., receiving data in response to the enrollment data package, processing
the received data, evaluating the data to identify errors in the enrollment data
package, and modifying the enrollment data package to correct the identified
errors (claim 4); receiving data from the issuing processor and updating
direct deposit enrollment data to indicate that the enrollment was successful
(claim 5); linking the stored direct deposit data to corresponding enrollment
data stored in the database (claim 7); building an enrollment/deposit
lifecycle from the linked data (claim 8); displaying the enrollment/deposit
lifecycle on a user interface (claim 9); displaying enrollment data in
response to a request from the account issuer (claim 10); transmitting
cancellation information to an enrollment service client and receiving data
indicative of an inquiry to the accountholder about a reason for the
cancellation (claim 16); and transmitting data indicative of the inquiry to the
accountholder (claim 17).
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information indicative of a cancellation of direct deposit services on an
account (claim 15).
Addressing each of claims 4, 5, 7—10, 16, and 17 in turn, Appellants
variously argue that the additional steps recited in the claims go beyond
mere “direct deposit enrollment,” and that these steps are not “a basic
function of traditional direct deposit enrollment” such that the claims are not
directed to an abstract idea (see App. Br. 25—32 and 41 42). Yet, there is no
indication in the record that the particular operations recited in the claims
require any specialized computer hardware or other inventive computer
components, invoke any assertedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions, e.g., receiving,
processing, transmitting, and displaying information, which is not enough
for patent eligibility.
Appellants further assert that claims 12, 14, and 15 are not directed to
an abstract idea because claim 12 provides an additional concrete limitation
which involves an additional party (i.e., an issuing agent, acting within the
computer network environment) and the information provided in the
enrollment/deposit lifecycle dataset, as recited in claims 14 and 15, is not a
basic function of traditional direct deposit enrollment but instead amounts to
the “more concrete concept of providing information which enables an
enrollment services client to provide payee support” (App. Br. 39-40). But,
we fail to see how, and Appellants do not explain how, involving an
additional party and merely providing particular information, e.g.,
cancellation information, makes the claimed invention any less abstract.
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Appellants’ further arguments with respect to claims 4, 5, 7—10, 12,
and 14—17 (i.e., that the claims met the second part of the MayolAlice test
and that the Examiner failed to analyze the claims separately and, thus,
failed to establish a prima facie case of patent-ineligibility (see id. at 26—32
and 38—42)) are substantially identical to Appellants’ arguments with respect
to claims 1 and 2, and are unpersuasive of Examiner error for the same
reasons set forth above.
Therefore, we sustain the Examiner’s rejection of claims 4, 5, 7—10,
12, and 14-17 under 35 U.S.C. § 101.
Independent Claim 11 and Dependent Claim 13
Appellants’ arguments with respect to claim 11 (id. at 32—38) are
substantially identical to Appellants’ arguments with respect to claim 1.
And Appellants argue that dependent claim 13 is patent-eligible for the same
reasons set forth with respect to dependent claim 12 (id. at 39).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1 and 12 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection of claims 11 and 13 for the
same reasons.
DECISION
The Examiner’s rejection of claims 1—5 and 7—17 under 35 U.S.C.
§ 101 is affirmed.
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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