Ex Parte Miller et alDownload PDFPatent Trial and Appeal BoardAug 30, 201713102086 (P.T.A.B. Aug. 30, 2017) Copy Citation 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. 13/102,086 05/06/2011 J. Mark Miller 007131.01023 6345 71733 7590 09/01/2017 BANNER & WITCOFF, LTD 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER PRESTON, JOHN O ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 09/01/2017 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): PTO-71733 @bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte J. MARK MILLER, PETER CHARLES MOIR, FRANK LEROY GAUDIOS, GARY LYNN HARTLEY, DAWN RENEE JAMES, STEPHEN CHARLES MCAULIFFE, and CHERYL LYNNE LOWREY Appeal 2016-002143 Application 13/102,0861 Technology Center 3600 Before JOSEPH A. FISCHETTI, ANTON W. FETTING, and MATTHEW S. MEYERS, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1—5, 8—12, 15—19, and 22—27. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify Bank of America Corp. as the real party in interest. App. Br. 2. Appeal 2016-002143 Application 13/102,086 THE INVENTION Appellants’ claims are directed to a system and method for providing uninterrupted transaction processing and/or backup data centers for processing transactions. Specification 14. Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A system, comprising: a primary data center for processing financial transactions associated with a financial institution; a secondary data center for processing financial transactions associated with the financial institution; a communication interface; at least one processor; and a memory storing instructions that when executed by the at least one processor cause the system to: receive, via the communication interface and from a computing device, a request to withdraw funds from an account of the financial institution; identify the primary data center as designated to process the request to withdraw the funds from the account of the financial institution; responsive to a determination, by the at least one processor, that the primary data center is not available to process the request to withdraw the funds from the account of the financial institution: identify, by the at least one processor, the secondary data center as designated as a backup to process the request to withdraw the funds from the account of the financial institution; process, by the secondary data center, the request to withdraw the funds from the account of the financial institution; and 2 Appeal 2016-002143 Application 13/102,086 transmit, from the secondary data center and to the primary data center, data associated with processing the request to withdraw the funds from the account of the financial institution; and subsequent to transmitting the data associated with processing the request to withdraw the funds from the account of the financial institution: receive, via the communication interface and from the primary data center, a first sample of data, the first sample of data comprising a user-defined percentage of data that has been updated within a user-defined date range, and the first sample of data comprising the data associated with processing the request to withdraw the funds from the account of the financial institution; receive, via the communication interface and from the secondary data center, a second sample of data, the second sample of data comprising the user-defined percentage of data that has been updated within the user-defined date range, and the second sample of data comprising the data associated with processing the request to withdraw the funds from the account of the financial institution; and compare the first sample of data to the second sample of data to verify that the first sample of data matches the second sample of data with respect to the data associated with processing the request to withdraw the funds from the account of the financial institution. 3 Appeal 2016-002143 Application 13/102,086 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Filgate US 6,178,521 B1 Jan. 23,2001 Singh et al. US 7,774,402 B2 Aug. 10, 2010 The following rejections are before us for review: Claims 1—5, 8—12, 15—19, and 22—27 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. Final Act. 3. Claims 1—5, 8—12, and 15—19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Filgate and in view of Singh. Final Act. 4. ANALYSIS 35 U.S.C. §101 REJECTION Claim 1 is representative of the independent claims before us on appeal, which contain similar limitations, and is a method claim with the pertinent part steps, viz., receive ... a request to withdraw funds from an account of the financial institution; identify the primary data center as designated to process the request to withdraw the funds from the account of the financial institution; responsive to a determination . . . that the primary data center is not available to process the request to withdraw the funds from the account of the financial institution: identify ... the secondary data center as designated as a backup to process the request to withdraw the funds from the account of the financial institution; 4 Appeal 2016-002143 Application 13/102,086 process . . . the request to withdraw the funds from the account of the financial institution; and transmit, from the secondary data center and to the primary data center, data associated with processing the request to withdraw the funds from the account of the financial institution; and subsequent to transmitting the data associated with processing the request to withdraw the funds from the account of the financial institution: receive . . . from the primary data center, a first sample of data, the first sample of data comprising a user-defined percentage of data that has been updated within a user-defined date range, and the first sample of data comprising the data associated with processing the request to withdraw the funds from the account of the financial institution; receive . . . from the secondary data center, a second sample of data, the second sample of data comprising the user- defined percentage of data that has been updated within the user defined date range, and the second sample of data comprising the data associated with processing the request to withdraw the funds from the account of the financial institution; and compare the first sample of data to the second sample of data to verify that the first sample of data matches the second sample of data with respect to the data associated with processing the request to withdraw the funds from the account of the financial institution. 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 5 Appeal 2016-002143 Application 13/102,086 question,. . . consider the elements of each 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. . . . [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 CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., 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. 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 steps in claim 1 result in comparing a first sample of data to a second sample of data to verify that the first sample of data matches the second sample of data with respect to data associated with processing the request to withdraw the funds from the account of the financial institution. The Specification at paragraph 2 recites: “[a]vailability of services to customers, particularly to customers of a financial institution, is a top priority. Customers expect to initiate a transaction, such as at an automated teller machine (ATM), online banking system, etc. and have the transaction completed.” At paragraph 4 the Specification states: “[accordingly, a system and method for providing uninterrupted transaction processing and/or backup data centers for processing transactions would be 6 Appeal 2016-002143 Application 13/102,086 advantageous.” The Specification at 132 further states: “[t]hat is, the customer may request the transaction and the transaction will be processed in a similar amount of time, with similar confirmation, etc. regardless of whether the primary or secondary data center is processing the transaction.” Thus, all this evidence shows that claim 1 is directed to providing uninterrupted transaction processing and/or backup data centers for processing transactions. It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are directed to an abstract idea. Like the algorithm in Gottschalk, providing uninterrupted transaction processing and/or backup data centers for processing transactions by comparing a first sample of data to a second sample of data to verily that the first sample of data matches the second sample of data associated with processing a request to withdraw funds from an account of a financial institution is a mathematical algorithm in that the process utilizes first and second data samples for comparison to insure data integrity, and that preempts all implementations and uses. We treat “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Also, the claims are directed to requesting withdrawal of funds from the account of a financial institution, a fundamental economic practice. Thus, providing uninterrupted transaction processing and/or backup data centers for processing transactions is an “abstract idea” beyond the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355—57. 7 Appeal 2016-002143 Application 13/102,086 As in Alice Corp. Pty. Ltd., 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 performing a mathematical algorithm in Gottschalk and the concept of providing uninterrupted transaction processing and/or backup data centers for processing transactions by comparing data samples, at issue here. Both are squarely within the realm of “abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. That the claims do not preempt all forms of the abstraction or may be limited to the abstract idea to financial transactions settings, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015). The introduction of a computer into the claims does not alter the analysis at Mayo step two. [T]he 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 it’” 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 “implement[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” 8 Appeal 2016-002143 Application 13/102,086 Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations omitted). “[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 take in data and compute a result from a database amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. 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’ claims simply recite the concept of providing uninterrupted transaction processing and/or backup data centers for processing transactions by comparing a first sample of data to a second sample of data to verify that the first sample of data matches the second sample of data associated with the request to withdraw funds from the account of a financial institution, performed by a generic computer. 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. Instead, the claims at issue amount to nothing significantly more than an instructions to provide uninterrupted transaction processing and/or backup data centers for processing transactions 9 Appeal 2016-002143 Application 13/102,086 by comparing a first sample of data to a second sample of data to verily that the first sample of data matches the second sample of data associated with the request to withdraw funds from the account of a financial institution, on a generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. 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 Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original). 35 U.S.C. § 103 REJECTION The Appellants argued independent claims 1,8, and 15 as a group. (Appeal Br. 12). We select claim 1 as the representative claim for this group, and the remaining independent claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). The only substantive argument advanced by Appellants is made in the Reply Brief of page 3 which states: With respect to the allegation that the recited ‘user-defined percentage of data that has been updated within a user-defined date range’ constitutes ‘nonfunctional description material’ that should not be ‘given patentable weight,’ Examiner’s Answer, pp. 15-16, Appellants submit that even if the recited “first sample of data comprising a user-defined percentage of data that has been updated within a user-defined date range,” were 10 Appeal 2016-002143 Application 13/102,086 considered to be nonfunctional, the claims recite ‘receiving], via the communication interface and from the secondary data center, a second sample of data, the second sample of data comprising the user-defined percentage of data that has been updated within the user-defined date range,’ which clearly is functional and should be accorded patentable weight. (Reply Br. 3^4 (emphasis omitted).) The Examiner found, “Singh teaches dynamically updating data in a database where the new data must be differentiated from the existing data (Singh: col 11, line 40 - col 12, line 16). This process implies determining whether the two data sets match.” (Answer 15.) We disagree with Appellants that the Examiner’s findings constitute error in the rejection because we need not make a determination based on non-functional descriptive material here, because it would be cumulative to the obviousness finding. That is because the Examiner found (Answer 5) that Singh discloses differentiated data at column. 11, line 40-column 12, line 16, and that this implies determining whether the two data sets match. See KSR Inti. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making the obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Appellants’ remaining arguments, in their Appeal Brief, are not persuasive because Appellants do not rebut the prima facie case by distinctly and specifically pointing out supposed error in the Examiner’s action, as well as the specific distinctions believed to render a claim patentable over the cited art. See 37 C.F.R. § 41.37(c)(iv) (2015); see also In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that 11 Appeal 2016-002143 Application 13/102,086 the corresponding elements were not found in the prior art.”). Appellants have failed to carry this burden. The Federal Circuit has 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 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 to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.” Jung, 637 F.3d at 1363. Here, the Examiner notified Appellants that independent claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over Filgate in view of Singh (Final Act. 4), and the Examiner cited specific portions of Singh, by paragraph number, that are the basis for one part of the rejection (see Final Act. 4—5; see also Answer 3—4), and cited specific portions of Filgate for the other part of the rejection to complete the obvious combination (see Final Act. 5—6; see also Answer 4—5). The cited portions of the references together with the accompanying explanations (see Answer 5) constitute the objectively verifiable evidence of the obvious combination, which Appellants allege is lacking. We find that the Examiner has made a prima facie case of unpatentability for each rejected claim. Rather than explaining how the cited portions of Filgate and Singh do not disclose the limitations of claim 1 for example, Appellants merely quote the language of claim 1 without contrasting the cited portions of Filgate and 12 Appeal 2016-002143 Application 13/102,086 Singh do not disclose the listed claim language. In view of the foregoing, which is representative of the Appellants’ arguments throughout their Appeal Brief, we find that the Examiner established a prima facie case of obviousness. Appellants do not rebut the prima facie case by distinctly and specifically pointing out supposed error in the Examiner’s action, as well as the specific distinctions believed to render a claim patentable over the cited art. See 37 C.F.R. § 41.37(c)(iv) (2015); see also Lovin, 652 F.3d at 1357 (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Appellants have failed to carry this burden. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1—5, 8—12, 15-19, and 22-27 under 35 U.S.C. § 101. We conclude the Examiner did not err in rejecting claims 1—5, 8—12, and 15—19 under 35 U.S.C. § 103. DECISION The decision of the Examiner to reject claims 1—5, 8—12, 15—19, and 22—27 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation