Ex Parte Miller et al

Patent Trial and Appeal Board

Aug 30, 2017

13102086 (P.T.A.B. Aug. 30, 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.
13/102,086 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