Ex Parte Larsen et al

Patent Trial and Appeal Board

Dec 15, 2017

13658626 (P.T.A.B. Dec. 15, 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.
13/658,626 10/23/2012 Jeannie Larsen 90945-855782 1037
20350 7590 12/19/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
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12/19/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEANNIE LARSEN, ALLEN HOFFMANN, and
EYAL TZARFATI
Appeal 2016-005685
Application 13/658,626
Technology Center 3600
Before ALLEN R. MacDONALD, ERIC B. CHEN, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 2, 3, 6, 15, 16, 19, and 23. Claims 1, 4, 5, 7—14, 17, 18, and 20-22
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention relates to analyzing negotiated negotiable
instruments. (Spec., Abstract.)
Appeal 2016-005685
Application 13/658,626
Claims 2 is exemplary:
2. A computerized method for categorizing negotiable
instruments, the method comprising:
receiving a plurality of electronic files, wherein each electronic
file of the plurality of electronic files is associated with a different
negotiable instrument and includes a plurality of data fields;
sorting the electronic files of the plurality of electronic files
according to either a return location routing number or a bank of first
deposit indicator contained within each electronic file;
identifying a first subset of the plurality of electronic files,
wherein each of the electronic files of the first subset have a deposit
account number identifier in a same first data field;
preventing the first subset of electronic files from being
identified as part of another subset of the plurality of electronic files;
and
identifying a second subset of the plurality of electronic files,
wherein each of the electronic files of the second subset have a second
identifier present in a same second data field.
Claims 2, 3, 6, 15, 16, 19, and 23 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
ANALYSIS
We are not persuaded by Appellants’ arguments (Br. 4—6) that
independent claims 2, 15, and 23 comply with 35 U.S.C. § 101 as statutory
subject matter.
The Examiner concluded that “the claimed invention is not directed to
patent eligible subject matter because the claimed invention is directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more.” (Final Act. 2.) In particular, the
Examiner found that “[t]he claims involve using a computer to sort files,
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[e.g.,] by return location routing number, and to compare various data fields,
[e.g.,] by account number, in order to categorize the negotiable instruments.”
{Id. at 3.) Moreover, the Examiner found that “[t]he use of these computing
devices is merely what computers do, [i.e.,] ‘receiving, processing, and
storing data’, ‘electronic recordkeeping’, and ‘automating mental tasks’, and
does not change the analysis” and that “the claims’ invocation of the
computer merely amounts to the limiting of the use of the abstract idea
[mental task of categorizing negotiable instruments] to a particular
technological environment.” (Ans. 4.) We agree with the Examiner.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
(1972) (“Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work.”). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 71—72 (2012). In Mayo, the Court
stated that “to transform an unpatentable law of nature into a patent-eligible
application of such a law, one must do more than simply state the law of
nature while adding the words ‘apply it.’” Mayo, 566 U.S. at 72.
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
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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
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “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 79, 78). In other words, the second step is to “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 than a patent
upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72—73). “A claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].”’ Id. at 2357
(alteration in original) (quoting Mayo, 566 U.S. at 77—78). The prohibition
against patenting an abstract idea “cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment or
adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593,
610—11 (2010) (internal quotation marks omitted). The Court in Alice noted
that “[s]imply appending conventional steps, specified at a high level of
generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.”
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82—83, 77—78, 72—73).
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Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 2 is a method claim comprised of five steps, each of which can
be performed in the human mind or by a human using pen and paper.
The first and second steps of “receiving a plurality of. . . files,
wherein each . . . file of the plurality of. . . files is associated with a different
negotiable instrument and includes a plurality of data fields” and “sorting the
. . . files of the plurality of. . . files according to either a return location
routing number or a bank of first deposit indicator contained within each . . .
file” can be performed by a bank teller, who accepts multiple checks and
sorts such checks manually according to either a return location routing
number or a bank of first deposit. The third and fourth steps of “identifying
a first subset of the plurality of. . . files, wherein each of the . . . files of the
first subset ha[s] a deposit account number identifier in a same first data
field” and “preventing the first subset of. . . files from being identified as
part of another subset of the plurality of. . . files” can also be performed
manually by the bank teller. For example, the bank teller can further sort the
checks by payor’s identity using visual inspection and placing such checks
in a separate pile, thus, separating such checks from being further sorted.
Last, the fifth step, “identifying a second subset of the plurality of. . . files,
wherein each of the . . . files of the second subset ha[s] a second identifier
present in a same second data field” can also be performed manually by the
bank teller. For example, the bank teller can further sort the checks by the
recipient’s identity using visual inspection.
Because all the method steps of claim 2 can be performed either by
human thought alone or by a human using pen and paper, claim 2 is directed
to a patent-ineligible abstract idea. See CyberSource Corp. v. Retail
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Decisions, Inc., 654 F.3d 1366, 1372—73 (Fed. Cir. 2011) (explaining that
“unpatentable mental processes” include “steps [that] can be performed in
the human mind, or by a human using a pen and paper”). Claims 15 and 23
recite limitations similar to those discussed with respect to claim 2. Thus,
claims 15 and 23 are also directed to a patent-ineligible abstract idea.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
Because claims 2, 15, and 23 are directed to an abstract idea, the
question to be settled next, according to Alice, is whether claims 2, 15, and
23 recite an element, or combination of elements, that is enough to ensure
that the claim is directed to significantly more than an abstract idea.
Claim 2 is a “computerized” method claim. Similarly, claim 15 is a
system claim, including “one or more processors” and “a memory,” and
claim 23 is a computer program product claim, including a “non-transitory
processor-readable medium.”
The claimed hardware components, including the “computer[],”
“processors,” “memory,” and “non-transitory processor-readable medium”
are generic, purely conventional computer elements. Thus, the claims do no
more than require generic computer elements to perform generic computer
functions, rather than improve computer capabilities. Appending various
combinations of a conventional “computer[],” “processors,” “memory,” and
“non-transitory processor-readable medium” to an abstract idea is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2358 (“[T]he mere recitation of a generic computer
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cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.”).
Appellants argue that “[e]ach of claims 2, 15, and 23 includes specific
limitations other than what is well-understood, routine and conventional in
the field, or add unconventional steps that confine the claim to a particular
useful application.” (Br. 5.) In particular, Appellants argue that “[t]he
Office Action admits this implicitly because these claims do not stand
rejected under §102 or §103. . . . Novel and nonobvious claims, by their very
definition, must include limitations other than what is well-understood,
routine, and conventional in the field, or else they wouldn’t be novel and
non-obvious.” (Id. ) However, even if Appellants are correct that the claims
are distinguishable over the prior art, “[t]he ‘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 the § 101 categories of
possibly patentable subject matter.” Intellectual Ventures ILLC v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diamond v. Diehr,
450 U.S. 175, 188-89 (1981)).
Accordingly, we sustain the rejection of independent claims 2, 15, and
23 under 35 U.S.C. § 101. Claims 3, 6, 16, and 19 depend from claim 2, 15,
and 23, and Appellants have not presented any additional substantive
arguments with respect to these claims. Therefore, we sustain the rejection
of claims 3, 6, 16, and 19 under 35 U.S.C. § 101, for the same reasons
discussed with respect to independent claims 2, 15, and 23.
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DECISION
The Examiner’s decision rejecting claims 2, 3, 6, 15, 16, 19, and 23 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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