Ex Parte McKernan et al

Patent Trials and Appeals Board

May 28, 2019

13622020 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/622,020 09/18/2012
20350 7590 05/30/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Patty M. McKernan
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.
90945-842245 (024000US) 3729
EXAMINER
ANDERSON, JOHN A
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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 PATTY M. McKERNAN, SCOTT R. PAINTIN, and
ANDREW MOORE SULLIVAN III
Appeal 2018-004048
Application 13/622,020
Technology Center 3600
Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner's final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2018-004048
Application 13/622,020
BACKGROUND
This patent application concerns "systems and methods for loading
prepaid accounts." Specification ,i 5, filed September 18, 2012 ("Spec.").
Claims 1, 13, and 22 are independent. Claim 1 illustrates the claimed
invention:
1. A method comprising:
[a] receiving, at a money transfer platform computer
system, an account number from a consumer, wherein the
account number is associated with a prepaid account;
[b] receiving, at a money transfer platform computer
system, a request from the consumer to load the prepaid account,
wherein the request is associated with a reload identifier;
[ c] associating, at a money transfer platform computer
system, the account number with the reload identifier;
[ d] receiving, at a money transfer platform computer
system, the reload identifier and a fund amount after receiving
the request from the consumer;
[ e] comparing the account number using the reload
identifier, at a money transfer platform computer system; and
[ fJ in response to the account number corresponding to the
reload identifier, loading the reload amount onto the prepaid
account, at a money transfer platform computer system.
Appeal Brief 9, filed June 26, 2017 ("App. Br.") (bracketed letters added).
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Application 13/622,020
1-22
1-22
1-22
1, 2, 7, 10, 12, and 22
3 and4
5,6, 8, 13-18,20,and
21
9
11
19
REJECTIONS
§ 101
§ l 12(a)
§ 112(b)
§102 b Dixon1
§ 103(a) Dixon and Sobek2
§ 103(a) Dixon and Hartmaier3
§ 103(a) Dixon and Alvarez4
§ 103(a) Dixon and Smith5
§ 103(a)
Dixon, Hartmaier, and
Alvarez
DISCUSSION
We have reviewed the Examiner's rejections and Appellants'
arguments. Except for the § l 12(b) rejection, Appellants have not persuaded
us that the Examiner erred. For the§§ 101, 112(a), 102(b), and 103(a)
rejections, as consistent with the discussion below, we adopt the Examiner's
findings, reasoning, and conclusions in the Final Office Action mailed
January 26, 2017 ("Final Act.") and the Answer mailed November 30, 2017
("Ans.").
We address these rejections below. Appellants argue the rejected
claims together for each of the appealed rejections. As permitted by 37
C.F.R. § 41.37(c)(l)(iv), we decide the appeal for the§§ 101, l 12(a),
1 Dixon et al. (US 2011/0166914 Al; July 7, 2011).
2 Sobek (US 2012/0221422 Al; Aug. 30, 2012).
3 Hartmaier (US 8,095,463 Bl; Jan. 10, 2012).
4 Alvarez et al. (US 2007/0168283 Al; July 19, 2007).
5 Smith et al. (US 2004/0133511 Al; July 8, 2004).
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Appeal 2018-004048
Application 13/622,020
l l 2(b ), and 102(b) rejections based on independent claim 1 and for the
§ 103(a) rejection based on independent claim 13.
Section 101 Rejection
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
[the] claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 573 U.S. at 217 ( quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an "inventive concept," "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, 573 U.S. at 217-18 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently revised its guidance about this framework.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to
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Application 13/622,020
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim ( 1) recites subject matter that falls within one of the abstract idea
groupings identified in the Revised Guidance and (2) fails to integrate the
recited abstract idea into a practical application. See Revised Guidance, 84
Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, as noted
above, we then determine whether the claim has an inventive concept. The
Revised Guidance explains that when making this determination, we should
consider whether the additional claim elements add "a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field" or "simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we tum to the § 101 rejection.
Abstract Idea
The Examiner determined that claim 1 recites a fundamental
economic practice, which falls within the "certain methods of organizing
human activity" abstract idea grouping identified in the Revised Guidance.
See Final Act. 2-3; Revised Guidance, 84 Fed. Reg. at 52. For the reasons
explained below, we agree with the Examiner that claim 1 recites a
fundamental economic practice.
Claim 1 recites a method that includes limitations [a]-[ fJ reproduced
in full above. These limitations recite using "a money transfer platform
computer system" to load funds onto a prepaid account. See App. Br. 9. The
written description suggests that loading funds onto a prepaid account is a
longstanding business practice. See, e.g., Spec. ,-J 3 (disclosing that "[t]here
are several ways that consumers may currently load funds onto a prepaid
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Application 13/622,020
card including, for example, using credit card, checks, ACH (Automated
Clearing House) debit, payments at a physical location, and Pay[P]alâ„¢").
And using a computer system to load funds onto a prepaid account is an
economic act that is not meaningfully different from economic acts that
courts have determined are fundamental economic practices. See, e.g., Alice,
573 U.S. at 219 (intermediated settlement); Smart Sys. Innovations, LLC v.
Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (determining
that claims "directed to the formation of financial transactions in a particular
field (i.e., mass transit) and data collection related to such transactions" are
drawn to an abstract idea). We thus determine that claim 1 recites a
fundamental economic practice, one of the certain methods of organizing
human activity identified in the Revised Guidance, see Revised Guidance,
84 Fed. Reg. at 52. Claim 1 therefore recites an abstract idea.
Because we determine that claim 1 recites an abstract idea, we next
consider whether claim 1 integrates the abstract idea into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
consider whether there are any additional elements beyond the abstract idea
that, individually or in combination, "integrate the [ abstract idea] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit." Revised Guidance, 84 Fed. Reg. at
54-55.
Claim 1 recites one additional element: "a money transfer platform
computer system." See App. Br. 9. The written description indicates that this
system encompasses generic computer components. For example, the
written description discloses that "[ m Joney transfer platform 110 can include
any financial system that associates a prepaid account with funds." Spec.
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Application 13/622,020
,i 15 ( emphasis added). The written description also discloses computer
system 400 used to implement the invention. Computer system 400 consists
of generic computer components such as central processing units, keyboards,
printers, and disk drives. See Spec. ,i,i 10, 43-47, Fig. 4 (showing computer
system 400).
Given these disclosures, the recited "money transfer platform
computer system" is simply a generic computer system that serves as a tool
to perform the abstract idea. Claim 1 thus does not integrate the abstract idea
into a practical application. See Alice, 573 U.S. at 223-24 ("[W]holly
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."' ( quoting
Mayo, 566 U.S. at 77)); see also Revised Guidance, 84 Fed. Reg. at 55
( explaining that merely using a computer as a tool to perform an abstract
idea may show that an abstract idea has not been integrated into a practical
application).
Inventive Concept
Finally, we consider whether claim 1 has an "inventive concept." That
is, we examine "the elements of [the] claim both individually and 'as an
ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). Under the Revised
Guidance, we evaluate whether the additional claim elements add "a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field" or "simply append[] well-
understood, routine, conventional activities previously known to the
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Application 13/622,020
industry, specified at a high level of generality." Revised Guidance, 84 Fed.
Reg. at 56.
The Examiner determined that the additional element recited in claim
1 consists of components "generally found in computer implementations"
and performs "well-known, routine and conventional computer functions."
Final Act. 4. In response, Appellants contend that the Examiner erred
because claim 1 executes the recited method with "very particular machines"
that "have been configured for a special purpose," not "generic computers."
App. Br. 4.
We disagree. The only additional element in claim 1 is the recited
"money transfer platform computer system." See App. Br. 9. As discussed
above, the written description indicates that this system consists of generic
computer components. See, e.g., Spec. ,-J,-J 15, 43-47, Fig. 4. The claimed
invention uses this system to perform generic computer functions such as
receiving, associating, comparing, and loading data. See App. Br. 9; cf
Alice, 573 U.S. at 226 ("Nearly every computer will include a
'communications controller' and 'data storage unit' capable of performing
the basic calculation, storage, and transmission functions required by the
method claims."). The written description provides few details about the
system or the functions it performs, which indicates that both are well
known. Cf Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1384 (Fed. Cir. 1986) (explaining that "a patent need not teach, and
preferably omits, what is well known in the art"). As a result, the written
description adequately supports the Examiner's determination that the
additional element recited in claim 1 is conventional and performs well-
understood, routine, and conventional activities. See Robert W. Bahr,
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Application 13/622,020
Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites/default
/files/documents/memo-berkheimer-20180419.PDF ( explaining that a
specification that describes additional elements "in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § l 12(a)" can show that the elements are well
understood, routine, and conventional).
Finally, Appellants contend that limitations [ c ]-[ fJ "are not well-
understood, routine, and conventional in the field" and protect against
"preemption of ... the alleged abstract idea." App. Br. 5. But except for the
recited "money transfer platform computer system," these limitations form
part of the abstract idea and thus are not "additional elements" that
"'transform the nature of the claim' into a patent-eligible application." Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). And as discussed above,
the recited "money transfer platform computer system" consists of
conventional computer components that perform well-understood, routine,
and conventional computer functions and thus does not provide the
necessary inventive concept. As for Appellants' preemption argument, even
if these limitations prevent claim 1 from preempting the identified abstract
idea, this fact alone does not show that claim 1 is patent eligible. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.").
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Application 13/622,020
At bottom, the additional element in claim 1 "simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality." Revised Guidance, 84 Fed.
Reg. at 56. We thus determine that claim 1 does not contain an inventive
concept.
Conclusion
For at least the above reasons, we determine that claim 1 is directed to
a fundamental economic practice and does not have an inventive concept.
We therefore sustain the Examiner's rejection of claim 1 under§ 101.
Section l 12(a) Rejection
Claim 1 recites "comparing the account number using the reload
identifier, at a money transfer platform computer system." App. Br. 9. The
Examiner determined that this limitation lacks written description support
and therefore rejected claim 1 under§ l 12(a). See Final Act. 4-5.
Appellants contend that paragraph 5 of the written description
provides adequate support for this limitation. See App. Br. 5. Appellants
point out that this paragraph states "[ u ]sing the reload identifier received
from the agent, the account number can be identified" and argue that, along
with unspecified "further discussion therein," this statement provides the
necessary support, "implicitly or inherently ... if not explicitly." App. Br. 5.
We find Appellants' arguments unpersuasive. To satisfy the written
description requirement, "the disclosure of the application relied upon" must
"reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
"[W]hile the description requirement does not demand any particular form
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Application 13/622,020
of disclosure, or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement." Ariad, 598 F.3d at 1352 ( citations omitted).
The limitation at issue requires comparing the account number using
the reload identifier. See App. Br. 9. In contrast, the cited part of paragraph 5
discusses using the reload identifier to identify the account number, but does
not explicitly mention comparing the account number using the reload
identifier. Although Appellants argue that the recited comparison is implicit
or inherent in this part of paragraph 5, Appellants have not explained why
this is so. See App. Br. 5. And Appellants' vague reference to "further
discussion" in the written description does not fill this gap. On this record,
Appellants have not persuaded us that the Examiner erred. We therefore
sustain this rejection.
Section l 12(b) Rejection
Claim 1 recites "the account number corresponding to the reload
identifier." App. Br. 9. The Examiner found the word "corresponding" in
this limitation unclear and rejected claim 1 under§ l 12(b) as indefinite. See
Final Act. 5-6.
Appellants contend that "the context of the claim" and paragraph 5 of
the written description "render this [limitation] well understandable by any
person of skill in the art." App. Br. 6.
We agree with Appellants that the word "corresponding" is clear in
this context. The plain and ordinary meaning of the word "corresponding"
includes related or accompanying. See Corresponding, Merriam-
Webster.com, https://www.merriam-webster.com/dictionary/corresponding.
The written description describes the relationship between the account
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Application 13/622,020
number and the reload identifier in a manner consistent with the plain and
ordinary meaning of "corresponding." See, e.g., Spec. ,i,i 5 ("The account
number and/the reload identifier can be associated together."), 26 ("[T]he
account number can then be preassociated with the reload identifier at the
[money] transfer platform."), 29 ("The consumer can provide their account
number and it can be associated with a reload identifier."), 31 ("In each of
the examples above, the reload identifier is associated with the consumer's
account number through a number of different mechanisms.") We thus agree
with Appellants that the word "corresponding" in the limitation at issue does
not make claim 1 indefinite. We therefore do not sustain this rejection.
Section 102(b) and 103(a) Rejections
Appellants assert that claim 1 recites that "a reload identifier along
with funds are provided by a consumer to reload a prepaid account" and that
"the money transfer platform computer system looks up the prepaid account
number using the reload identifier." App. Br. 6. For the§ 102(b) rejection,
Appellants contend that Dixon fails to disclose these limitations because
"Dixon does not have to compare anything to determine where to load
funds." App. Br. 7. Appellants also argue that in Dixon "there is no lookup
of information" and "no 'translation' of one identifying number ... for
another." App. Br. 7. Appellants assert that therefore Dixon does not
disclose "comparing of an account number and a reload identifier to
determine correspondence and consequent allowance of a reloading
function." App. Br. 7.
Appellants have not persuaded us that the Examiner erred. First, claim
1 does not explicitly recite the limitations argued by Appellants. Claim 1
recites "receiving ... a request from the consumer to load the prepaid
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account, wherein the request is associated with a reload identifier" and
"receiving ... the reload identifier and a fund amount after receiving the
request from the consumer"; the claim does not explicitly require that a
consumer provide the funds and the reload identifier as Appellants contend.
See App. Br. 9. Similarly, claim 1 recites "comparing the account number
using the reload identifier" and "in response to the account number
corresponding to the reload identifier, loading the reload amount onto the
prepaid account." App. Br. 9. Claim 1 does not explicitly recite looking up
the prepaid account number using the reload identifier, comparing an
account number and a reload identifier and then allowing a reloading
function, or translating one number for another as asserted by Appellants.
See App. Br. 9. Because the limitations argued by Appellants do not
explicitly appear in claim 1, we find these arguments unpersuasive. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of appellant's arguments
fail from the outset because, as the solicitor has pointed out, they are not
based on limitations appearing in the claims.").
Second, if Appellants contend that Dixon does not disclose the
"comparing" limitation recited in claim 1, Appellants have not persuaded us
that the Examiner erred. The Examiner mapped the "comparing" limitation
to paragraph 96 of Dixon, but Appellants have not addressed this paragraph.
Compare Final Act. 8, with App. Br. 6-7. Appellants have thus not
persuaded us that the Examiner erred.
For the above reasons, we sustain the Examiner's rejection of claim 1
under § 102(b ). Because Appellants rely on largely similar arguments for the
rejection of claim 13 under§ 103(a), we also sustain the Examiner's
rejection of this claim.
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Application 13/622,020
1-22 § 101
1-22 § l 12(a)
1-22 § 112(b)
1, 2, 7, 10,
§102(b)
12, and 22
3 and4 § 103(a)
5, 6, 8, 13-
18,20,and § 103(a)
21
9 § 103(a)
11 § 103(a)
19 § 103(a)
Outcome
CONCLUSION
1-22
1-22
1-22
Dixon
1, 2, 7, 10,
12, and 22
Dixon and
3 and4
Sobek
Dixon and
5,6, 8, 13-
Hartmaier
18,20,and
21
Dixon and
9
Alvarez
Dixon and
11
Smith
Dixon,
Hartmaier, 19
and Alvarez
1-22
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner's decision. See 37 C.F.R. § 41.50(a)(l). No
time for taking any action in connection with this appeal may be extended
under 37 C.F.R. § l.136(a). See 37 C.F.R. § 41.50(±).
AFFIRMED
14