Ex Parte MooreDownload PDFPatent Trial and Appeal BoardSep 28, 201710316977 (P.T.A.B. Sep. 28, 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. 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 2 Appeal 2016-003900 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? 3 Appeal 2016-003900 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 4 Appeal 2016-003900 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. 5 Appeal 2016-003900 Application 10/316,977 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 6 Appeal 2016-003900 Application 10/316,977 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 7 Appeal 2016-003900 Application 10/316,977 (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 8 Appeal 2016-003900 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 9 Copy with citationCopy as parenthetical citation