Ex Parte Mann et al

Patent Trial and Appeal Board

Feb 23, 2018

11398281 (P.T.A.B. Feb. 23, 2018)

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.
47004.000404 6660
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
11/398,281 04/05/2006 William Frederick Mann III
21967 7590 02/23/2018
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
02/23/2018 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 WILLIAM FREDERICK MANN III and JEFFREY L. HIRKA
Appeal 2016-003257
Application 11/398,281
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
William Frederick Mann III and Jeffrey L. Hirka (Appellants2) seek
review under 35 U.S.C. § 134 of a final rejection of claims 119-151, 154,
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 17, 2015) and Reply Brief (“Reply Br.,” filed February
8, 2016), and the Examiner’s Answer (“Ans.,” mailed December 9, 2015),
and Final Action (“Final Act.,” mailed February 4, 2015).
2 According to Appellants, the real party in interest is JPMorgan Chase
Bank, N.A. App. Br. 1.
Appeal 2016-003257
Application 11/398,281
and 155, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of performing transactions related to an
account, so as to eliminate the need for the physical presence of a transaction
card during the transaction. Specification 1:7—9.
An understanding of the invention can be derived from a reading of
exemplary claim 119, which is reproduced below (bracketed matter and
some paragraphing added).
119. A method for
completing an authorization of a financial transaction
relating to a financial account of an account-holder,
the financial account having an account identifier and
being associated with an alias and a personal
identification entry,
the alias being linked with both the account identifier and
the personal identification entry,
the method comprising:
[1] receiving, from a handheld computer,
an alias for a financial account submitted to the handheld
computer by the account-holder,
the alias identifying the financial account;
[2] at least one computer processor searching a database to
identify a stored alias that matches the submitted alias;
[3] the at least one computer processor retrieving, from the
database,
a stored personal identification entry
and
a stored account identifier
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that are linked to the matching stored alias;
[4] receiving, from the handheld computer, a personal
identification entry submitted by the account-holder;
[5] the at least one computer processor determining whether the
submitted personal identification entry matches the stored
personal identification entry;
[and]
[6] based on the determination,
the at least one computer processor outputting an
authorization determination,
the authorization determination being one of
an authorization
and
a non-authorization.
Claims 119-151, 154, and 155 stand rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter.
Claims 119-151 and 154 stand rejected under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice about what a computer is to do
without inventive details as to how to do so.
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Application 11/398,281
ANALYSIS
Claims 119—151, 154, and 155 rejected under 35 U.S.C. § 101 as directed to
non—statutory subject matter
Method claim 119 recites receiving a personal identification entry and an
identifier alias and using that identifier alias in a search that retrieves another
alias and another personal identification entry, and performing a logical
decision as to whether the personal identification entries match as a basis for
determining authorization. Thus, claim 119 receives two data items and
looks up two corresponding data items to match against as an authorization
test. None of the limitations recite implementation details for any of these
steps, but instead recite functional results to be achieved by any and all
possible means. Data reception, look up, and matching are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
look up-matching is equally generic and conventional. The ordering of the
steps is therefore ordinary and conventional. The remaining claims merely
describe various parameters used for identification and authentication, with
no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
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, [] consider the elements of each claim both
individually and “as an ordered combination” to determine
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whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two of this analysis as a 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.”
Alice Corp., Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to a user entering information into a handheld device and to
retrieving account information from a storage medium and matching the
identification information against stored account information. Final Act. 5.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 119 recites that it is a method for completing an
authorization of a financial transaction. The steps in claim 119 result in
authorizing or not authorizing a financial transaction. The Specification at
1:7—9 recites that the invention relates to performing transactions related to
an account, so as to eliminate the need for the physical presence of a
transaction card during the transaction. Thus, all of this evidence shows that
claim 119 is directed to authorizing a financial transaction.
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It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of
authorizing a financial transaction is a fundamental business practice long
prevalent in our system of finance. The use of authorizing a financial
transaction is also a building block of credit financing. Thus, authorizing a
financial transaction, like hedging, is an “abstract idea” beyond the scope of
§ 101. See Alice, 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of authorizing a financial transaction
at issue here. Both are squarely within the realm of “abstract ideas” as the
Court has used that term. See Alice, at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing
it, and displaying certain results of the collection and analysis” are “a
familiar class of claims ‘directed to’ a patent-ineligible concept”); see also
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 119, unlike the claims found as non-abstract in prior cases,
uses generic computer technology to perform data retrieval, analysis and
output and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
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F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims non-abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 119 is directed to the abstract idea of retrieving, analyzing,
and outputting data.
The remaining claims merely describe various parameters used for
identification and authentication. We conclude that the claims at issue are
directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, at 2358 (citations omitted).
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“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, identify, and analyze data, amounts to electronic data
query and retrieval—one of the most basic functions of a computer. In
short, each step does no more than require a generic computer to perform
generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of authorizing a financial transaction as performed
by a generic computer. To be sure, the claims recite doing so by advising
one to use an alias to index and authorize use of an account and let one know
when the person using the alias is authenticated. But this is no more than
abstract conceptual advice on the parameters for such authorizing a financial
transaction and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 36 pages of Specification spell
out different generic equipment and parameters that might be applied using
this concept and the particular steps such conventional processing would
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entail based on the concept of authorizing a financial transaction under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of
authorizing a financial transaction using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, at 2360 (citation omitted).
We are not persuaded by Appellants’ argument that retrieving account
information from a storage medium and matching the identification
information against stored account information is not an abstract idea. App.
Br. 7. As we find supra, these are the necessary parts of authorizing a
financial transaction. These steps are abstract conceptual advice on generic
financial authorization. They impart no details on how to actually perform
such advice.
We are not persuaded by Appellants’ argument that the problem solved
is rooted in technology. Id. The use of an alias is as old as banking which
uses an account holder’s name as an alias for an account number and
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requires looking up the account number when the account holder does not
have it available. This predates computer technology.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated
the eligibility of claims “address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were
patent eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. The Court cautioned, however, “that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
Id. For example, in DDR Holdings, the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258—59 (citing Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715—16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were “‘directed to a specific method of advertising
and content distribution that was previously unknown and never
employed on the Internet before.’” Id. at 1258 (quoting Ultramercial,
772 F.3d at 714). Nevertheless, those claims were patent ineligible
because they “merely recite[d] the abstract idea of ‘offering media content
in exchange for viewing an advertisement,’ along with ‘routine additional
steps such as updating an activity log, requiring a request from the
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consumer to view the ad, restrictions on public access, and use of the
Internet.’” Id. (citation omitted).
Appellants’ asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellants’ asserted claims recite
reading, receiving, analyzing, and posting data. This is precisely the type
of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants’ argument that the claims include
meaningful limitations beyond generally linking the abstract idea to a
particular technological environment. App. Br. 9. The limitations
Appellants refer to are conventional data reading, analyzing, and posting.
Apparently, it is the particular data elements used that Appellants rely on as
meaningful. But data, being an arbitrary sequence of binary digits
dependent on the coding scheme, is ubiquitous and without intrinsic
meaning. Meaning is in the mind of the beholder, which is afforded no
patentable weight. See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
We find that even the limitation of outputting an authorization determination
is an abstraction, as this only outputs a binary value and does nothing that
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actually implements a response based on the binary value referred to as an
authorization determination.
We are not persuaded by Appellants’ argument that
Applicant disagrees that it has not invented the claimed “alias”
and “PIE.” Indeed, there are no prior art rejections pending;
thus, the Examiner must agree, at some level, that the alias and
PIE are inventive. Regardless, the claimed alias and PIE cannot
be considered to be “well-known tools.” And with regard to the
dependent claims, the use of “fingerprints” and “voice
recognition” as either an alias or PIE is certainly inventive.
Reply Br. 4. “[A] claim for a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from demonstrating §
102 novelty.” Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d
1138, 1151 (2016). The notoriety of aliases for data (indexes) and personal
identifying data (authentication), particularly in the financial sector, are too
great to find Appellants’ implication that we must allow for their having
invented them persuasive. For example, financial organizations have used
social security numbers as both aliases and personal identification entries for
decades.
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Claims 119—151 and 154 rejected under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent
Appellants do not contest this rejection.3
CONCLUSIONS OF LAW
The rejection of claims 119—151, 154, and 155 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is proper.
The rejection of claims 119—151 and 154 under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent is proper.
DECISION
The rejection of claims 119—151, 154, and 155 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
3 Appellants state they filed a terminal disclaimer. Response After Final
Action filed April 2, 2015 at 10. A copy of such a disclaimer is not in the
record and the Examiner does not indicate the existence or disposition of
such a disclaimer.
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