Ex Parte Moore

Patent Trial and Appeal Board

Sep 28, 2017

10316977 (P.T.A.B. Sep. 28, 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.
10/316,977 12/10/2002 Raymond Moore 90945-772616 (013200US) 4863
20350 7590 10/02/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND MOORE
Appeal 2016-003900
Application 10/316,9771
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Raymond Moore (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the final rejection of claims 1, 3—8, 18, 20, 21, and 27^40. We
have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellant identifies The Western Union Company as the real party in
interest. Br. 2.
Appeal 2016-003900
Application 10/316,977
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for authorizing a commercial transaction, the method
comprising:
providing an interface to a user, the interface including:
an indication of one or more transaction instruments to
which transaction criteria are to be applied;
a plurality of fields, wherein the plurality of fields
comprises a field of goods/services, a field of merchants,
a field of time/frequency, and a field of locations, and
wherein the field of goods/services, the field of
merchants, and the field of locations each include a
restriction section and an allowance section;
receiving from the interface, at least one selection from the
user, the at least one selection comprising at least one selection or
input from the plurality of fields, wherein the transaction criteria
comprise the at least one selection of the user;
receiving a single transaction request at a computer system
from a point of sale device, wherein the single transaction request
identifies a transaction instrument, an item type for each of one or
more items identified by the point of sale device via one or more
barcodes, a merchant, and a location;
accessing, by the computer system, transaction criteria associated
with the transaction instrument;
if the single transaction request is consistent with any merchant,
time, and location restrictions in the transaction criteria:
determining, by the computer system, for each item type
of the one or more items, whether the single transaction
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Application 10/316,977
request is consistent with the transaction criteria by
comparing each item type of the one or more items with
the transaction criteria;
approving, by the computer system, a first portion of the
single
transaction request and denying a second portion of the
single transaction request in accordance with the
transaction criteria, wherein the second portion is
associated with items having a type defined by the
negative specifications in the transaction criteria; and
sending, from the computer system to the point of sale
device, a notification of partial approval; and
if the single transaction request is not consistent with any
merchant, time, and location restrictions in the transaction criteria,
sending, from the computer system to the point of sale device, a denial
of the single transaction request.
THE REJECTION
The following rejection is before us for review:
1. Claims 1, 3—8, 18, 20, 21, and 27-40 are rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1, 3—8, 18, 20, 21, and 27 40
under 35 U.S.C. § 101 as being directed to judicially-excepted subject
matter?
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Application 10/316,977
ANALYSIS
Albeit the Brief provides two separate headings (for the independent
claims and dependent claims), the Appellant argued the claims as a group.
See Br. 6—9. We select claim 1 as the representative claim for this group,
and the remaining claims 3—8, 18, 20, 21, and 27-40 stand or fall with claim
1. 37C.F.R. §41.37(c)(l)(iv).
We affirm for essentially the same reasons given by the Examiner.
Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In the regard, the Examiner determined that “[t]he claim(s) is/are
directed to the abstract idea of approving transaction instruments using
transaction criteria for financial transactions which is a fundamental
economic practice.” Final Rej. 6. The Appellant does not challenge this
determination.
Rather, the Appellant argues only that “[t]he 2014 Interim Guidance
on Patent Subject Matter Eligibility (the ‘Interim Guidance’) states that even
if a claim is directed to an abstract idea, if the claim includes ‘significantly
more’ then the claim will constitute statutorily eligible subject matter.” Br.
6. This implicates step two of the Alice framework.
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
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Application 10/316,977
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73
(2012)).
In that regard, the Examiner determined that “[t]he additional
element(s) or combination of elements in the claim(s) other than the abstract
idea per se amount(s) to no more than recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry.” Final Rej. 6.
The Appellant argues that
[t]he Interim Guidance goes on to list the following elements, among
others listed and unlisted, as establishing "significantly more" is
present in a claim:
(1) Improvements to another technology or technical field
(2) Applying the abstract idea with, or by use of, a particular machine
(e.g., not a generic computer).
(3) Adding a specific limitation other than what is well-understood,
routing and conventional in the field, or adding unconventional steps
that confine the claim to a particular useful application.
(Final Rej. 3) and then proceed to discuss how these listed elements are
present in the claims at issue.
First, the Appellant argues that
[e]ach of the claims improves at least three other technical fields
beyond approving transaction instruments using transaction criteria
for financial transactions (the alleged abstract idea): personal finance
management, merchant return processing, and financial institution
security and chargeback management.
Br. 6.
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We agree with the Examiner. (Ans. 4: “They are activities related to
the economy and commerce.”) We do not see and the Appellant does not
adequately explain how “personal finance management, merchant return
processing, and financial institution security and chargeback management”
are “technical” as that term is used in the Guidance (which cites “Alice
Corp., 134 S. Ct. at 2359 (citing Diehr, 450 U.S. at 177—78) (a mathematical
formula applied in a specific rubber molding process),” Fed. Reg., Vol. 79,
No. 241, 74624 (Dec. 14, 2014), footnote 34).
The Appellant then discusses certain benefits said to be obtained for
“personal finance management, merchant return processing, and financial
institution security and chargeback management.” See Br. 6. But the claims
are not so limited. (As the Examiner points out. Ans. 6.) At best, these are
possible practical applications for the abstract idea of approving transaction
instruments using transaction criteria for financial transactions to which the
claims are directed to. But that does not make what they are directed to (as
claimed) any less abstract. (Also pointed out by the Examiner. See Ans. 5.)
See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.
Cir. 2011). “The Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the
notion that the recitation of a practical application for the calculation could
alone make the invention patentable.” See also Return Mail, Inc. v. United
States Postal Service, United States, 2017 WL 3687450, *13 (Fed. Cir.
2017) (quoting In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016)). “[F]imit[ing] the abstract idea to a particular
environment,” here a mail processing system with generic computing
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technology, “does not make the claims any less abstract for the step 1
analysis.”
Second, the Appellant argues that “[particular, non-generic,
machines/computers are necessary to implement the systems and methods of
the claims.” Br. 7. According to the Appellant, “[o]ff-the-shelf generic
computers are not capable of performing such functions [“communicate
digital data with point of sale devices at any number of merchants which
could be located anywhere” (Br. 7)], much less concurrently during an
period of intense heavy transaction load as may be necessary in such
industry.” Br. 7—8.
But, as the Examiner correctly shows, the Specification in fact
discloses using generic computer elements. See Ans. 7—8. The evidence on
record supports the view that the broadest reasonable interpretation of such
claim terms as “interface,” “computer system,” and “point of sale device”
(see e.g., claim 1) should be construed to cover generic devices. There is
insufficient evidence to the contrary.
Also, the Examiner makes a good point: “‘heavy transaction’ is not
taught in the disclosure as the problem being solved.” Ans. 8. With respect
to “[t]he ‘abstract idea’ step of the inquiry[, it] calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs
of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016), quoted in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241
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(Fed. Cir. 2016). Given no disclosure of overcoming a problem with intense
heavy transaction load, it cannot serve as a focus for determining if the
claims’ ‘character as a whole’ are directed to excluded subject matter. And,
consequently, it cannot be a basis for showing an element or combination of
elements sufficient to ensure that the claims in practice amount to
significantly more than to be on the abstract idea itself.
Third, the Appellant argues that:
Each of claims 1,18, 27, and 34 include specific limitations
other than what is well-understood, routine and conventional in the
field, or add unconventional steps that confine the claim to a particular
useful application. The Office Action admits this implicitly because
these claims do not stand rejected under §102 or §103.
Br. 8.
We agree with the Examiner’s response. See Ans. 9. Claim
limitations found to be novel and/or nonobvious can affect a patent-
eligibility determination. Cf. Ariosa Diagnostics, Inc., v. Sequenom, Inc.,
788 F.3d 1371, 1377 (Fed. Cir. 2015) (“For process claims that encompass
natural phenomenon, the process steps are the additional features that must
be new and useful.”) Thus, novelty is a factor to be considered when
determining “whether the claims contain an ‘inventive concept’ to
‘transform’ the claimed abstract idea into patent-eligible subject matter.”
Ultramercial, Inc. v. Hutu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
“[Njovelty in implementation of the idea is a factor to be considered only in
the second step of the Alice analysis.” Id. However, a finding of novelty or
nonobviousness does not necessarily lead to the conclusion that subject
matter is patentable eligible. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass ’n for Molecular
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Application 10/316,977
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Notwithstanding that “the § 101 patent-eligibility inquiry and, say, the § 102
novelty inquiry might sometimes overlap,” [ ] a claim for a new abstract idea
is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (quoting Mayo, 566 U.S. at 90). The question in step two of the
Alice framework is not whether an additional feature is novel but whether
the implementation of the abstract idea involves “more than [the]
performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347-48 (quoting
Alice, 134 S.Ct. at 2359). In that regard, the Appellant has not shown the
novel features transform the abstract idea into patent-eligible subject matter.
In fact, no specific limitation is discussed.
All the arguments having been addressed, the rejection is sustained for
the foregoing reasons.
DECISION
The decision of the Examiner to reject claims 1, 3—8, 18, 20, 21, and
37-40 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)(l)(iv).
AFFIRMED
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