Ex Parte MacMillan et al

Patent Trial and Appeal Board

Jun 7, 2018

14171466 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/171,466 02/03/2014
20350 7590 06/11/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
John A. MacMillan
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.
90945-899143 (019420US) 5895
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. MACMILLAN, MARW AN FORZLEY,
SAMER FORZLEY, and SHEILAH. JAMES
Appeal2017-001081
Application 14/171,466
Technology Center 3600
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1 and 4--20, which are all of the claims
pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is W estem Union
Company of Englewood, Colorado. App. Br. 2.
2 Claims 2 and 3 have been canceled. Non-Final Act. 2.
Appeal2017-001081
Application 14/171,466
INVENTION
Appellants' invention relates to loading stored value accounts.
Abstract. Claim 1 is illustrative and reads as follows:
1. A system comprising:
a processor; and
a non-transitory storage medium having instructions thereon, the
instructions executable by the processor for at least:
receiving a request from a user which includes a stored value
account identifier of a stored value account and an identification of an
amount of funds to load into the stored value account;
sending, in response to receiving the request, a bill to an online
banking bill payment system of which the user is a subscriber,
wherein the bill includes the identification of the amount of funds and
at least a portion of the stored value account identifier;
receiving a notification from the online banking bill payment
system that a first payment for the amount of funds has been made
from a first account of the user in the online banking bill payment
system to a second account associated with the system; and
causing a second payment to be made from the second account
to a third account associated with the stored value account in
response, at least in part, to the first payment.
REJECTION
Claims 1and4--20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Non-Final
Act. 2.
ANALYSIS
We have reviewed the rejections of claims 1 and 4--20 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
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Application 14/171,466
other arguments Appellants could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Appellants' arguments
are not persuasive of error. We agree with and adopt as our own the
Examiner's findings of facts and conclusions as set forth in the Answer
(Ans. 3---6) and in the Action from which this appeal was taken (Non-Final
Act. 2--4). We provide the following explanation for emphasis.
In rejecting the claims under § 101, the Examiner concluded claim 1
is directed to "certain methods of organizing human activities" because
"making fund transfers between accounts to make payment is a fundamental
economic practice." Non-Final Act. 3. The Examiner also concluded the
remainder of the claim elements do not amount to significantly more than
the abstract idea itself. See Ans. 5.
In Alice, the Supreme Court sets forth an analytical "framework 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. Pty, Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts," such
as an abstract idea. Id. (citing Mayo, 566 U.S. at 77-78). If the claims are
directed to a patent-ineligible concept, 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
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Application 14/171,466
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.'" Id.
(brackets in original) (quoting Mayo, 566 U.S. at 72-73). 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 postsolution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of the claims are directed to "certain methods of
organizing human activity." See Ans. 4. The Federal Circuit has repeatedly
confirmed since Alice that the category of abstract ideas embraces
"fundamental economic practice[ s] long prevalent in our system of
commerce," including "longstanding commercial practice[ s ]" and
"method[s] of organizing human activity." See, e.g., Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016).
Appellants contend the Examiner erred because "[i]t cannot possibly
be correct that 154 words constitute an abstract idea as intended by Alice,
and the Office Action does not support such a conclusion with any evidence
as required by Alice." App. Br. 4.
Appellants' arguments are not persuasive. Appellants do not cite, and
we are not aware of, any legal authority to support the argument that the
number of words in a claim somehow prevents the claim from being directed
to an abstract idea. See App. Br. 4, 5. Moreover, the determination of
whether a claim is directed to an abstract idea is a legal issue, 3 and we are
3 See, e.g., i-f IV, "July 2015 Update: Subject Matter Eligibility" to 2014
Interim Guidance on Patent Subject Matter Eligibility (2014 IEG), 79 Fed.
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Application 14/171,466
not persuaded evidence is necessary in this case. See Ans. 3--4.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything "significantly more" to transform the abstract
concept into patentable subject matter. Alice Corp., 134 S. Ct. at 2357.
Appellants argue the Examiner erred because claim 1 poses no risk of
preempting the abstract idea. See App. Br. 6. Appellants' argument is not
persuasive because,"'[w]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility."' FairWarning IP, LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1098
(Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015)). Further, "[w]here a patent's claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Ariosa, 788 F.3d at 1379.
In arguing claim 1 recites novel and nonobvious steps, Appellants
misapprehend the controlling precedent. See App. Br. 6. Although the
second step in the Alice/ Mayo 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
Reg. 7 4618 (Dec. 16, 2014) ("The courts consider the determination of
whether a claim is eligible (which involves identifying whether an exception
such as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed concept is a
judicial exception, and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings." (emphasis added) (footnote
omitted)).
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Application 14/171,466
significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355 (alteration in original) (quoting Mayo, 566 U.S. at
77). A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 79.
For these reasons, we are not persuaded the Examiner erred in
concluding claim 1 is judicially-excepted from patent eligibility under § 101.
Accordingly, we sustain the Examiner's§ 101 rejection of
representative claim 1, as well as the Examiner's § 101 rejection of claims
4--20, not argued separately. App. Br. 3-7; see also 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1 and 4--20.
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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