Ex Parte Mueller et al

Patent Trial and Appeal Board

Apr 27, 2017

13760863 (P.T.A.B. Apr. 27, 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.
13/760,863 02/06/2013 Thomas Mueller 2003P00443US01 4107
62730 7590
SAP SE
3410 HILLVIEW AVENUE
PALO ALTO, CA 94304
05/01/2017 EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
APRIL.MENG@SAP.COM
GIPinhouse@sap.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS MUELLER and JURGEN KOHLING
Appeal 2015-0005321
Application 13/760,8632
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 5, 2014) and Reply Brief (“Reply Br.,” filed October 6, 2014), and the
Examiner’s Answer (“Ans.,” mailed Sept. 4, 2014) and Final Office Action
(“Final Act.,” mailed Mar. 10, 2014).
2 Appellants identify SAP AG as the real party in interest. App. Br. 2.
Appeal 2015-000532
Application 13/760,863
CLAIMED INVENTION
Appellants’ “invention generally relates to electronic data processing.
More particularly, the invention relates to methods, computer program
products and systems for automated bill presentment and, in one example,
internet based bill presentment and payment.” Spec. 12.
Claims 1, 7, and 13 are the independent claims on appeal and recite
substantially similar subject matter. Claim 1, reproduced below with added
bracketed notations, is illustrative of the claimed subject matter:
1. A method for processing one or more bills of a biller,
comprising:
[(a)] presenting, to a customer, a request to pay one or
more of a set of one or more bills in total or in part on a site of a
computer network;
[(b)] receiving from the customer, by at least one
processor, a selection of the one or more bills, said selection
responding to said request via said site;
[(c)] generating, by the at least one processor, an
electronic advice of settlement, wherein the electronic advice of
settlement comprises a list of the selected bills and a payment
amount for each of the selected bills;
[(d)] generating, by the at least one processor, an
identifier of the electronic advice of settlement;
[(e)] presenting, prior to settlement of the selected bills,
the identifier of the electronic advice of settlement to the
customer for inclusion with a payment order; and
[(f)] receiving, from the customer, the payment order
comprising the identifier of the electronic advice of settlement.
App. Br. 13, Claims Appendix.
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Application 13/760,863
REJECTIONS3
Claims 1—18 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—18 are rejected under 35 U.S.C. § 102(b) as anticipated by
Braco (US 2002/0002536 Al, pub. Jan. 3, 2002).
ANALYSIS
Non-Statutory Subject Matter
Appellants argue independent claims 1, 7, and 13 as a group. Reply
Br. 4. We select claim 1 as the representative claim for this group, and, thus,
claims 7 and 13 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
To determine whether claims are patent eligible under under
35 U.S.C. § 101, we apply the Supreme Court’s two-step framework
articulated in Alice Corp. Pty Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347 (2014).
First, we determine whether the claims are “directed to” a patent-ineligible
concept: laws of nature, natural phenomena, and abstract ideas. Id. at 2354—
55. If so, we then proceed to the second step and “examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 2357. The Supreme Court has explained that “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Id. at 2358.
3 The Non-Statutory Obviousness-Type Double Patenting Rejection of
claims 1—18 is withdrawn because the Terminal Disclaimer filed August 5,
2014 by Appellants was approved by the Office on August 6, 2014. See
Ans. 5.
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Appellants maintain that the Examiner has failed to establish a prima
facie case of unpatentability under 35 U.S.C. § 101. See Reply Br. 2—4. In
particular, Appellants argue that “[cjontrary to the examination instructions
outlined in the [USPTO] Memo,4 the Answer provides no reasoning or
analysis as to how any of the claims are directed to an abstract idea. Instead,
the Answer merely simply generalizes that the claims are directed to the
abstract idea of ‘processing one or more bills of a biller.’” Reply Br. 2—3.
Appellants contend that the Examiner’s assertion of the abstract idea as to
independent claim 1 “oversimplifies the language of the claims . . . [because
the] steps embody a level of detail beyond mere fundamental economic
practices, organization of human activity, and the alleged abstract idea.” Id.
at 3.
We disagree.
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). We also note that the guidelines are not legal
requirements. Cf. In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The
MPEP and Guidelines ‘are not binding on this court’”) (citations omitted);
and MPEP, Foreword (“The Manual does not have the force of law or the
force of the rules in Title 37 of the Code of Federal Regulations”).
4 Citing USPTO Memo of June 25, 2014 providing preliminary examination
instructions in view of the Supreme Court decision in Alice.
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Application 13/760,863
Here, the Examiner notified Appellants that the claims are directed to
the abstract idea of “[a] method for processing one or more bills of a biller,”
fulfilling step one under Alice, and “[hjaving considered the claims as a
whole, [the Examiner determined that] no element or combination of
elements in the claims are sufficient to ensure that the claims amount to
significantly more than the abstract idea itself.” Ans. 3^4. As instructed
under “Part 2” of the Office Memo, the Examiner considered whether the
claim limitations are enough to qualify as “significantly more,” and
determined that “the claims fail to recite any improvements to another
technology or technical field, improvements to the functioning of the
computer itself, and/or meaningful limitations beyond generally linking the
use of an abstract idea to a particular environment.” Id. at 4 (citing USPTO
Memo of June 25, 2014). Thus, the Examiner notified Appellants of the
reasons for the rejection “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” 35 U.S.C. § 132. And, in doing so, the Examiner set
forth a prima facie case of unpatentability under § 101.
Turning to the merits of the rejection under § 101, we determine that
claim 1 as a whole is directed to the abstract idea of bill presentment and
payment for processing one or more bills of a biller—which is consistent
with the Examiner’s finding under Alice step one. The implementation of
the abstract idea is recited in the steps of claim 1: presenting a request to pay
one or more bills to a customer, receiving a bill selection in response from
the customer, generating the selected bill settlement, and receiving the
payment order with the identifier from the customer. Indeed, we find that
the Specification is titled a method “for automated bill processing” and
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describes the invention as a method “for automated bill presentment and, in
one example, internet based bill presentment and payment.” Spec. 12. As
such, we determine that this is little more than the automation of the abstract
idea of bill presentment and payment—a fundamental economic and
conventional business practice long prevalent in our system of commerce.
See Alice, 134 S. Ct. 2356 (holding the concept of intermediated settlement
is an abstract idea directed to a “fundamental economic practice long
prevalent in our system of commerce”)(citation omitted); Content Extraction
and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014)(explaining claims directed to “the mere formation and
manipulation of economic relations” and “the performance of certain
financial transactions” have been held to involve abstract ideas).
Additionally, if a method can be performed by a human using pen and
paper, it is merely an abstract idea and is not patent-eligible under § 101.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (“[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”). This is
evident from the background of Appellants’ Specification which describes
the drawbacks of manual bill presentment and processing. See Spec. 113
and 4 (“The customer has to create the advice of settlement, either
electronically (by means of his business software) or by hand; he has to send
it to the biller (either by normal mail or by email), thereby addressing it to
the correct address and the responsible person, which is often very
difficult”); Spec. 125 (“the ID can e.g. be incorporated into the use section
of a payment order, e.g. manually on a paper form, or electronically on an
online- or internet banking form. The incorporation into the electronic form
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can be performed manually or automatically by a software application.”).
These processes remain unpatentable even when automated to reduce burden
to the user of what once could have been done with pen and paper.
CyberSource Carp., 654 F.3d at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson, [409 U.S. 63
(1972)].”).
Turning to the second step of the Alice analysis, the recited method
steps fail to transform the nature of the claim as they are directed to generic
computer structures (reciting “at least one processor” in steps (b), (c), and
(d)) that perform conventional computer processing functions. Considering
the claim elements individually and as an ordered combination, the claim
merely implements long known business practices related to billing on a
generic computer or processor. Given that the claim is directed to well-
known business practices, the claimed elements of a generic “computer
network” or “processor” are simply not enough to transform the abstract idea
into a patent-eligible invention. See Alice, 134 S. Ct. at 2358; see also, e.g.,
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324—
25 (Fed. Cir. 2016)(explaining that “generic computer components such as
an ‘interface,’ ‘network,’ and ‘database’ ... do not satisfy the inventive
concept requirement” (citations omitted)). Indeed, the Specification
provides that “a computer system can be a stand alone computer such as a
PC, a laptop, a series of computers connected as a network, e.g. a network
within a company, or a series of computers connected via the internet.”
Spec. 121. Thus, claim 1 does no more than simply instruct the practitioner
to implement the abstract idea on a generic computer or processor. Id.
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at 2359; Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir.
2012)(“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.”).
In view of the foregoing, we sustain the rejection under 35 U.S.C.
§ 101 of independent claim 1, and independent claims 7 and 13, which fall
with claim 1. We also sustain the rejection of dependent claims 2—6, 8—12,
and 14—18, which are not argued separately except based on their
dependence on each respective independent claim. Reply Br. 4 (“Claims 2-
6, 8-12, and 14-18 also comply with 35 U.S.C. § 101 at least due to their
dependence from independent claims 1, 7, and 13, respectively.”).
Anticipation
Appellants argue that the Examiner erred in rejecting claims 1—18
under 35 U.S.C. § 102(b) because Braco does not expressly or inherently
disclose the claimed “generating ... an identifier of the electronic advice of
settlement” as claimed. App. Br. 7—10. Appellants assert that contrary to
the Examiner’s contention,
coordinating payments to multiple billers does not inherently
require an “identifier of the electronic advice of settlement,”
wherein "the electronic advice of settlement comprises a list of
the selected bills and a payment amount for each of the selected
bills," as recited in claim 1. Braco does not expressly disclose
how to coordinate the payments to multiple billers, and Braco
does not inherently use “an identifier” of a list of selected bills
to coordinate the payments . . . Specifically, Braco does not
disclose or suggest that any identifier of the bill summary file
is used at all during the payment process. See,e.g., Braco at
para. 0043-0047 (making no mention of using the bill summary
file or any identifier of the bill summary file during the
payment process).
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App. Br. 8-9.
The Examiner asserts that “Braco demonstrates that a user may
receive a generation of an electronic advice of settlement upon request
identifying the selected bills and an identifier of the electronic advice of
settlement.” Ans. 7 (citing Braco 31—38, 43, and 47); see Final Act. 6
(citing Braco Tflf 21, 30, 37, 38, 46-48). We have reviewed the cited
paragraphs, but we agree with Appellants that Braco does not expressly
disclose generating an identifier of the electronic advice of settlement, as
required by claim 1. For instance, paragraph 21 discloses that Braco’s
electronic presentment and bill payment “employs a net settlement system
for tallying the total credits and debits at the end of a cut-off period instead
of processing each transaction thereby saving processing costs.” The only
mention of an identifier in Braco is in paragraph 44, which describes
obtaining “the unique identifier of the Biller” from the directory. But a
biller’s identifier cannot correspond to an identifier of the advice of
settlement. A biller’s unique identifier is associated with the identity of the
biller, not the advice of settlement generated in response to the customer’s
selection of one or more bills. See Spec. 122 (“an identifier (ID) is created
and assigned to the electronic advice of settlement.”). In other words,
although Braco generates an electronic bill summary or advice of settlement,
we fail to see any disclosure in Braco of generating an identifier associated
with the bill summary—which according to Appellants, solves “the problem
of identifying which partial amount of the total incoming payment amount
belongs to which bill.” Spec. 13.
To the extent that the Examiner’s anticipation rejection is based on a
finding that Braco inherently discloses generating an identifier of the
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generated advice of settlement, more than mere speculation is required. To
establish inheency, the Examiner must provide evidence and/or technical
reasoning that makes “clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill.” Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The Examiner has
provided no such evidence and/or technical reasoning here.
Accordingly, we do not sustain the anticipation rejection of
independent claim 1, and claims 2—6 dependent thereon. For the same
reasons, we also do not sustain the rejection of independent claims 7 and 13,
and dependent claims 8—12 and 14—18, which recite a similar limitation and
are rejected based on the same erroneous finding as claim 1.
DECISION
The rejection of claims 1—18 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 1—18 under 35 U.S.C. § 102 is reversed.
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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