Ex Parte MORGAN et al

Patent Trial and Appeal Board

May 17, 2018

13827913 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/827,913 03/14/2013
23505 7590 05/21/2018
CONLEY ROSE, P.C.
575 N. Dairy Ashford Road
Suite 1102
HOUSTON, TX 77079
FIRST NAMED INVENTOR
Gerald A. MORGAN
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.
7065-04000 1049
EXAMINER
FELTEN, DANIELS
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD A. MORGAN
and CHRISTOPHER M. MA CHECA 1
Appeal2017-002656
Application 13/827 ,913
Technology Center 3600
Before JOHNNY A. KUMAR, LARRY J. HUME, and
JOHN D. HAMANN, Administrative Patent Judges.
KUMAR, Administrative Judge.
DECISION ON APPEAL
1 Appellant is the applicant, Gordon*Howard Associates, Inc., which is
identified as the real party in interest. App. Br. 3.
Appeal2017-002656
Application 13/827,913
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
Appellant's Invention
The claimed invention generally relates to automated collection
technology. Abstract.
Representative Claims
Representative claims 1, 8, and 14 read as follows:
1. A method comprising:
receiving, at a computer system of an operations center,
information regarding a payment schedule for an asset loan;
setting, by a computer system of the operations center, a
first disablement date for the asset, the setting based on the
payment schedule, and the disablement date set without human
involvement;
tracking the first disablement date by a computer system
of the operations center, the operations center remotely located
from the asset;
recording information related to a payment made for the
asset loan; and then
setting, by a computer system of the operations center, a
second disablement date in response to the payment, the second
disablement date set without human involvement, and the
second disablement date based on the information related to the
payment made.
8. A method comprising:
receiving, at a computer system of an operations center,
information regarding a payment schedule for an asset loan;
setting, by a computer system of the operations center, a
first disablement date for the asset, the setting based on the
payment schedule, and the disablement date set without human
involvement;
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Application 13/827,913
tracking the first disablement date by a computer system
of the operations center, the operations center remotely located
from the asset; and after the first disablement date;
disabling the asset by a computer system of the
operations center, the disabling occurring without human
involvement.
14. A system comprising:
a processor;
a wireless interface coupled to the processor;
a memory coupled to the processor, the memory storing a
program that, when executed by the processor, causes the
processor to:
receive information regarding a payment schedule for an
asset loan;
set an action date for the asset, the setting based on the
payment schedule, and the action date set without human
involvement;
record information related to a payment made for the
asset loan;
track a current date in relation to the action date;
take an action when the current date meets or exceeds the
action date, the action undertaken without human involvement.
Rejection
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 "because
the claimed invention is directed to a judicial exception (i.e. a law of nature,
a natural phenomenon or an abstract idea) without 'significantly more"'
(Final Act. 6), i.e., for being patent-ineligible subject matter. 2
2 Based on Appellant's arguments (App. Br. 6-13), we select claim 8 as
representative. Separate patentability, in compliance with 37 C.F.R.
§ 4I.37(c)(l)(iv), is not argued for claims 1-7 and 9-14. Except for our
ultimate decision, this rejection of claims 1-7 and 9-14 is not discussed
further herein.
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Application 13/827,913
Issue on Appeal
Did the Examiner err in rejecting claim 8 for being directed to patent-
ineligible subject matter?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant's conclusions and concur with the conclusions
reached by the Examiner. Except as noted below, we adopt as our own the
reasoning set forth by the Examiner in the Examiner's Answer. We
highlight the following points.
A. Section 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. (citing
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Mayo, 566 U.S. at 77-78). For example, a fundamental economic practice is
an abstract idea.
[In Bilski v. Kappas], the Court grounded its conclusion that all
of the claims at issue were abstract ideas in the understanding
that risk hedging was a "'fundamental economic practice."'
561 U.S. [593,] 611 [(2010)].
Alice, 134 S. Ct. at 2357.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 78-79).
B. Alice/Mayo - Step 1
The Examiner concludes claims 1, 8, and 14 are directed to the
abstract idea of enforcement of the terms of a loan via a payment schedule
which is a fundamental economic practice of making a payment. Final
Act. 3.
Appellant contends:
[C]laim 8 is not directed merely to an abstract idea, but rather to
a concrete and unique method for automatically establishing
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and instituting payment schedules for an asset loan that results
in "disabling the asset by a computer system ... the disabling
occurring without human involvement," ....
App. Br. 7.
Appellants respectfully submit there is nothing
foundational or basic about enforcing the terms of a loan by
disabling an asset, such as a physical vehicle, without human
involvement. That is, humans have enforced loan payments
without disabling an asset, much less disabling an asset such as
a vehicle for a long time. Thus, unlike the general concept of
enforcing loan payments, which might be for the sake of
argument, foundational, enforcing loan payments by disabling
an asset, such as a physical vehicle, without human
involvement is not fundamental or foundational.
App. Br. 9.
The Examiner responds:
The Appellants limitations in claim 8 of "receiving ...
information regarding a payment schedule for an asset loan; ...
setting ... a first disablement date for the asset, the setting
based on the payment schedule; ... tracking the first
disablement date ... and after the first disablement date ...
disabling the asset" is directed to an abstract concept of
enforcement of the terms of a loan via a payment schedule,
which is considered a certain method of organizing human
activities to contract a payment-being a fundamental economic
practice. The phrase "certain methods of organizing human
activity" is being used to describe concepts relating to
interpersonal and intrapersonal activities, such as managing
relationships or transactions between people, satisfying or
avoiding a legal obligation ( e.g., a loan); and managing mental
activities. Some methods of organizing human activity and a
fundamental economic practice practices or "ideas."
Ans. 6-7.
The Examiner also finds:
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Appellant's limitation, with the claim language as a whole,
maintains that the limitation of "disabling the asset" is similar
to either
[ 1] re-possession of a vehicle after the non-payment on the
loan, or
[2] the 'shutting off' (or termination) of an asset until the
payment is current and up-to-date [ similar to utility services
(e.g., water bill, gas bill, electric bill, cable bill, etc.,) for non-
payment wherein the company has a set date that the company
would like to stop the utility of the asset- the asset here being
gas, water or electricity ( or good) and the service providing the
utility].
Ans. 8.
Appellant's arguments are not persuasive. Enforcement of the terms
of a loan via a payment schedule is a fundamental business practice long
prevalent in our system of commerce, like the risk hedging in Bilski (see
Bilski v. Kappas, 561 U.S. 593 (2010)), the intermediated settlement in Alice
(see Alice, 134 S. Ct. at 2356-57), verifying credit card transactions in
CyberSource (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011)), collecting and analyzing information to detect
and notify of misuses in FairWarning (see FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)), and guaranteeing
transactions (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed.
Cir. 2014)). Enforcement of the terms of a loan via a payment schedule is
also a building block of a market economy. Thus, enforcement of the terms
of a loan via a payment schedule, like risk hedging, intermediated
settlement, and verifying credit card transactions, is an "abstract idea"
beyond the scope of § 101. See Alice, 134 S. Ct. at 2356.
Our reviewing court has further noted that fundamental economic and
conventional business practices are often found to be abstract ideas, even if
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performed on a computer. See, e.g., OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362---63 (Fed. Cir. 2015). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (2016) (quoting O'Reilly v.
Morse, 56 U.S. 62, 113 (1854)).
Appellant argues (Reply Br. 1--4) the claims are similar to the claims
in McRO, because "Appellants' claims improve the existing technological
process by allowing the automation of further tasks, i.e. tracking the first
disablement date, and disabling the asset after the first disablement date,"
which is not persuasive. Unlike the claims in McRO, the claims in the
present application fail to recite the technical details that describe the alleged
improvement of the technical process of scheduling a remote disablement
feature. Instead, the claims merely recite the abstract idea of scheduling the
remote disablement feature with generic computer terminology. See Ans. 8.
Contrary to Appellant's assertion, we conclude the character of
claim 8 as a whole is directed to a fundamental economic practice in the
form of a method for enforcement of contract terms found in a loan via a
payment schedule.
C. Alice/Mayo - Step 2
Turning to the second part of the Alice/ Mayo analysis, the Examiner
finds that in claim 8
a computer operation center which is a computer system [is]
being used to set a disablement date, track the disablement date,
record payment information for a loan and setting a second
disablement date based upon information related to the payment
made ....
Final Act. 4.
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Simply programming a computer to perform what would otherwise be
an abstract idea is not sufficient to impart patent eligibility. See Alice, 134
S. Ct. at 2359. In light of Appellant's Specification, we find the claimed
computer components are generic.
Further, Appellant's argument overlooks that, to impart eligibility
under 35 U.S.C. § 101, the claimed "solution" must be a technical solution.
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1351 (Fed. Cir. 2016). Appellant's argument does not explain how
either the problem or claimed solution here are technical in nature. Unlike
the claims at issue in cases such as DDR Holdings LLC v. Hotels.com LP,
773 F.3d 1245, 1257 (Fed. Cir. 2014) (Claims at issue are "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks."), and Enfish, 822 F.3d at 1339
(Claims at issue are "directed to a specific implementation of a solution to a
problem in the software arts."), Appellant merely addresses a business issue
through the use of generic, computer-related recitations that do not add
meaningful limitations to steps otherwise directed to an abstract idea.
Because Appellant's claims 1-20 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
CONCLUSION
The Examiner has not erred in rejecting claims 1-20 under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter.
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DECISION
We affirm the Examiner's rejection of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). See 3 7
C.F.R. § 4I.50(f).
AFFIRMED
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