Ex Parte MYKLEBUST et al

Patent Trials and Appeals Board

May 20, 2019

14264690 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/264,690 04/29/2014
96592 7590 05/22/2019
FIS/FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK A VENUE
WASHINGTON, DC 20001-4413
FIRST NAMED INVENTOR
Hans E. MYKLEBUST
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.
l 1360.0187-01000 8306
EXAMINER
PRESTON, JOHN 0
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/22/2019 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):
jeffrey.berkowitz@finnegan.com
regional-desk@finnegan.com
michael. wrobel@fisglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS E. MYKLEBUST, DUSHYANT SHARMA,
TIMOTHY J. PATNEAUDE, MICHAEL J. KAMINSKI,
JOHN L. WATRY, MURALI CHIRALA, and
SHANKAR SRINIVASAN
Appeal2017-008028
Application 14/264,690
Technology Center 3600
Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CHEN.
Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 63 and 65-72. Claims 1-62 and 64 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to an integrated bill presentment and
payment system that can accomplish the entire process of bill presentment
and payment directly with billers, customers, and financial institutions.
(Abstract.)
Claim 63 is exemplary:
63. An integrated system for the presentation and
payment of bills, comprising:
a scanning device;
at least one processor; and
a memory coupled to the at least one processor and
storing:
a first module which, when executed by the processor:
[i] receives billing information from billers, from
biller service providers, and from biller-side
consolidators, the billing information comprising first
billing information in paper format, and second billing
information in digital format;
[ii] controls the scanning device to scan the first
billing information;
[iii] extracts data from the first billing information,
the data comprising information which identifies at least
one business, information which identifies data
associated with at least one customer, and information
which identifies data for the at least one customer;
[iv] converts the extracted data to first billing
information in a digital format;
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[ v] converts the converted first billing information
and the second billing information to a database format;
and
[ vi] stores the converted first billing information
and the converted second billing information in a
database;
a second module which, when executed by the processor,
[ vii] communicates billing and payment information with
customers, to customer service providers, and customer-side
consolidators, based on the first and second billing information
stored in the database;
a third module which, when executed by the processor,
initiates payment in response to received payment instructions,
the third module configured to select a payment type based on
payment type preference criteria maintained by the system; and
a connection logic module which facilitates
communication between said first, second, and third modules,
the connection logic module configured to, when executed by
the processor, initiate provision of service from each module,
and to:
receive a request from a customer to pay a biller; and
initiate paying the biller.
Claims 63 and 65-72 stand rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter.
The Examiner has withdrawn the rejection of claims 63 and 65-68
under the judicially created doctrine of obviousness-type double patenting.
(Ans. 3.)
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ANALYSIS
We are persuaded by Appellants' arguments (App. Br. 17-18) that the
Examiner has not satisfied the proper burden for making a prima facie case
for patent ineligibility under 35 U.S.C. § 101.
The Examiner determined that independent claims 63 and 69 "are
directed to the abstract idea of receiving first billing information" (Non-
Final Act. 4), which is "similar to concepts that have been identified as
abstract by the courts, such as using categories to organize, store, and
transmit information in Cyberfone [Sys. v. CNN Interactive Grp., 558 Fed.
Appx. 988, 993 (Fed. Cir. 2014)]" (id. at 3). The Examiner further
determined that the claims "do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the additional limitations of a scanning device, at least one
processor, and a memory coupled to the at least one processor is an attempt
to limit the use of the abstract idea to a particular technological
environment." (Ans. 2.) We do not agree with the Examiner's ultimate
conclusion that the claims are directed to patent-ineligible subject matter.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
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Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
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of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed.
2019).
See 84 Fed. Reg. at 52-55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Step One
Are the claims at issue directed
to a patent-ineligible concept?
Claim 63 is a system claim, which falls within the "manufacture"
category of 35 U.S.C. § 101. Likewise, claim 69 is a method claim having
several steps, which falls within the "process" category of 35 U.S.C. § 101.
Although claims 63 and 69 fall within the statutory categories, we must still
determine whether the claims are directed to a judicial exception, namely an
abstract idea. See Alice, 573 U.S. at 217-18. Thus, we must determine
whether the claims recite a judicial exception, and fail to integrate the
exception into a practical application. See 84 Fed. Reg. at 54-55. If both
elements are satisfied, the claims are is directed to a judicial exception under
the first step of the Alice/Mayo test. See id.
Step 2A-Prong One
Independent claim 63 is a system claim, which includes a processor
for executing the following limitations: "[i] receives billing information
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from billers, from biller service providers, and from biller-side
consolidators," "[iii] extracts data from the first billing information," "[iv]
converts the extracted data to first billing information in a digital format,"
"[ v] converts the converted first billing information and the second billing
information to a database format,""[ vi] stores the converted first billing
information and the converted second billing information in a database,"
and "[vii] communicates billing and payment information with customers."
Such limitations of claim 63 are directed to a patent-ineligible abstract idea
of commercial or legal interactions, which includes obtaining, separating,
and sending information. See, e.g., Cyberfone, 558 Fed. Appx. at 993
("[ n ]or does the particular configuration of steps-obtaining, separating, and
then sending information-confer patentability"); see also Content
Extraction and Transmission LLC v. Wells Fargo Bank, National Ass 'n, 776
F.3d 1343, 1347 (Fed. Cir. 2014) ("collecting data, ... recognizing certain
data within the collected data set, and ... storing that recognized data in a
memory" is an abstract idea). Accordingly, claim 63 recites a patent-
ineligible abstract idea of certain methods of organizing human activity,
such as a obtaining, separating, and sending information.
Claim 69 recites limitations similar to those discussed with respect to
claim 63. Thus, claim 69 is directed to a judicial exception.
Step 2A-Prong Two
Because claims 63 and 69 recite an abstract idea, we next determine if
they recite additional elements that integrate the judicial exception into a
practical application. See 84 Fed. Reg. at 56.
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System claim 63 further recites "a connection logic module which
facilitates communication between said first, second, and third modules, the
connection logic module configured to, when executed by the processor,
initiate provision of service from each module, and to: receive a request
from a customer to pay a biller; and initiate paying the biller." Method
claim 69 recites similar limitations.
In the "Background of the Invention" section, Appellants'
Specification discloses certain "significant drawbacks" with respect to prior
art electronic bill payment models, as follows:
At the present time, four different electronic presentment
and payment models are being used: the direct model, the biller
service provider ("BSP") direct model, the service provider
model (which uses a customer service provider ("CSP")), and the
"cafeteria" model (which introduces consolidators) .... For
various reasons, none of these systems have succeeded, since
each suffers from significant drawbacks.
(Spec. ,-J 7.) In particular, Appellants' Specification discloses the following
drawbacks:
Of the four models mentioned herein, the direct model
[(i.e., first electronic bill presentment and payment model)]
presents the most obstacles to its success, with consumers being
required to navigate many different websites each month to pay
the bills.
(Id. ,-J 8.)
The second electronic bill presentment and payment
model is the biller service provider direct model, a modification
of the direct model . . . . The biller service provider model
requires customers to log into a different web address for each of
the billers serviced, and thus does not allow a single logon to
review and pay all the bills hosted by the biller service provider.
(Id. ,-J 9.)
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The third electronic bill presentment and payment model
is the service provider model, in which customers enroll with a
third party customer service provider, which then delivers
electronic bills obtained from billers or biller service providers
to the customers. . . . Unfortunately, like the biller service
provider direct model described above, the service provider
model is only as good as the number of billers it obtains bills
from.
(Id. iJiJ 12-13.)
The fourth electronic bill presentment and payment model
is the "cafeteria" model, which combines aspects of the three
previous models and cobbles these pieces together in a sort of
electronic jigsaw puzzle using yet another service provider
referred to as a consolidator. The function of the consolidator is
to route and distribute bills from BSP's to CSP's .... In the
cafeteria model, each of the service providers has a cost, and the
ultimate cost (which is borne by the biller and passed on to its
customers) is the sum of these costs.
(Id. iJ 14.)
Moreover, Appellants' Specification discloses the following
deficiency:
In addition, while the number of bills which can be
accessed by a consumer at a single customer service provider is
certainly increased by the cafeteria model, there are a number of
"non-collaborative" networks which to date have prevented
consumers from reaching all of their bills on a single service
provider.
(Id. ,i 15.) Accordingly, Appellants' Specification discloses the following
needs:
It is accordingly the primary objective of the present
invention that it provide an open, integrated, end-to-end bill
presentment and payment system which interfaces with both
billers and customers to electronically present bills to the
customers and to allow the customers to electronically pay the
bills. As such, it is an objective of the integrated bill presentment
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and payment system that it present all of the advantages of a
biller service provider in its interface with billers, as well as all
of the advantages of a customer service provider in its interface
with customers.
(Id. iJ 17.)
In reference to Figure 7, Appellants' Specification discloses the
following:
There are four essential components within the open EPP
integrator 230: a biller service provider (BSP) module 300, a
customer service provider (CSP) module 302, a bill payment
module 304, and a connection logic module 306. The biller
service provider module 300, the customer service provider
module 3 02, and the bill payment module 3 04 are each
connected to the connection logic module 3 06, which integrates
them and first serves to detect how much of the electronic bill
presentment and payment service that the open EPP
integrator 230 may provide in each instance, and then acts to
initiate the provision of that service.
(Id. ,i 83 (emphasis added).) Moreover, Appellants' Specification further
discloses:
All connections to customers which are made through
external customer service providers or consolidators are made
with the connection logic module 306. Accordingly, a
connection 328 to the first customer service provider, a
connection 330 to the second customer service provider, a
connection 332 to the second consolidator, and a connection 334
to the third consolidator are made with the connection logic
module 306.
(Id. ,i 86 ( emphasis added).)
Thus, the limitation "a connection logic module which facilitates
communication between said first, second, and third modules, the
connection logic module configured to, when executed by the processor,
initiate provision of service from each module, and to: receive a request
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from a customer to pay a biller; and initiate paying the biller," as recited in
independent claim 63, integrates the recited abstract idea into a practical
application by solving the problem presented in the prior art of multiple
"non-collaborative" networks for on-line bill presentment and payment
model. Because the claimed "connection logic module" overcomes a
problem in the context of on-line bill presentment and payment, "the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
and accordingly, claim 63 is not directed to an abstract idea. DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014).
Therefore, we are persuaded by Appellants' arguments that:
The Specification explains that, at the time of filing, there
were four models for Internet-based bill payment services - the
"direct model," the "biller service provider (BSP) direct model,"
the "service provider model," and the "cafeteria" model. Each
of these models provides Internet-based bill presentment and
payment abilities. However, each of these models has technical
flaws that make them inconvenient or unusable .... The claims
provide for an improvement upon the technical problems listed
above by providing for a single point that can receive bills,
present bills, and pay bills.
(App. Br. 17-18 (footnotes omitted).)
Accordingly, claims 63 and 69 recite additional elements that
integrate the judicial exception into a practical application.
Thus, we do not sustain the rejection of independent claims 63 and 69
under 35 U.S.C. § 101. Claims 65-68 and 70-72 depend from independent
claims 63 and 69. We do not sustain the rejection of claims 65-68 and 70-
72 under 35 U.S.C. § 101 for the same reasons discussed with respect to
independent claims 63 and 69.
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DECISION
The Examiner's decision rejecting claims 63 and 65-72 is reversed.
REVERSED
13
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS E. MYKLEBUST, DUSHYANT SHARMA,
TIMOTHY J. PATNEAUDE, MICHAEL J. KAMINSKI,
JOHN L. WATRY, MURALI CHIRALA, and
SHANKAR SRINIVASAN
Appeal2017-008028
Application 14/264,690
Technology Center 3600
Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge, concurring.
I generally agree with the Majority's disposition of the appeal. I write
separately to note some minor disagreements in the reasoning that underlies
the disposition.
I.
The Majority characterizes all of claim limitations [i] and [iii]-[ vii] as
being directed to "a patent-ineligible abstract idea of commercial or legal
interactions, which includes obtaining, separating, and sending information."
Maj. Op. 7-8. Limitations [i] and [vii] read as follows: "[i] receives billing
information from billers, from biller service providers, and from biller-side
consolidators" and"[ vii] communicates billing and payment information
Appeal2017-008028
Application 14/264,690
with customers." I agree that these limitations reasonably can be
characterized as reciting certain methods of organizing human activity.
More specifically, these limitations recite obtaining and sending
information, which reasonably may be characterized as commercial or legal
interactions.
In contrast, limitations [iii]-[vi] of claim 63 recite the following
limitations: "a first module which ... [iii] extracts data from the first billing
information," "[iv] converts the extracted data to first billing information in
a digital format," "[ v] converts the converted first billing information and
the second billing information to a database format," and"[ vi] stores the
converted first billing information and the converted second billing
information in a database." In my view, these limitations do not recite
methods of organizing human activity. These limitations more reasonably
are characterized as reciting abstract ideas that include mental processes.
More specifically, extracting received data, converting the format of data,
and storing data in a database constitute concepts that were carried out in the
pre-Internet world either mentally or with the aid of pen and paper.
I agree, though, with the Majority's ultimate conclusion that
limitations [i] and [iii]-[ vii] reasonably are characterized as reciting abstract
ideas.
II.
The Majority also determines that the claims are directed to patent-
ineligible subject matter. Maj. Op. 4 ("We do not agree with the Examiner's
ultimate conclusion that the claims are directed to patent-ineligible subject
matter"); id. at 12 ("claims 63 and 69 recite additional elements that
integrate the judicial exception into a practical application").
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The Majority's reasoning for reaching this conclusion is as follows:
the limitation "a connection logic module which facilitates
communication between said first, second, and third modules,
the connection logic module configured to, when executed by the
processor, initiate provision of service from each module, and to:
receive a request from a customer to pay a biller; and initiate
paying the biller," as recited in independent claim 63, integrates
the recited abstract idea into a practical application by solving
the problem presented in the prior art of multiple "non-
collaborative" networks for on-line bill presentment and
payment model. Because the claimed "connection logic module"
overcomes a problem in the context of on-line bill presentment
and payment, "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks," and accordingly,
claim 63 is not directed to an abstract idea. DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014).
Maj. Op. 11-12.
I would not reach a determination on whether the claims, in fact,
integrate the abstract ideas into a practical application. In my opinion, it
would be more prudent for the Panel to restrict itself to determining that the
Examiner has provided insufficient evidence to support the conclusion that
the claims fail to integrate the claimed abstract idea into a practical
application. My reasoning is as follows:
The limitation "a connection logic module which facilitates
communication between said first, second, and third modules, the
connection logic module configured to, when executed by the processor,
initiate provision of service from each module, and to: receive a request
from a customer to pay a biller; and initiate paying the biller," as recited in
independent claim 63, addresses the problem presented in the prior art of
multiple "non-collaborative" networks for on-line bill presentment and
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payment model. The question to be answered, then, is whether Appellants
address the problem of non-collaborative bill-presentment-and-payment
networks by providing a concrete improvement to the computer
technology-that is, by integrating the abstract idea into a practical
application-, or alternatively, whether they address the problem by merely
relying upon a routine or conventional use of the Internet. Bascom Global
Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed.
Cir. 2016). This inquiry is a factual determination. Berkheimer v. HP Inc.,
881 F.3d 1360, 1369 (Fed. Cir. 2018).
The present record indicates that the Examiner did not provide
evidence to support this factual inquiry, instead relying on unsupported
conclusions and treating this inquiry as a question of law:
In the field of data processing, it has long been routine to scan
data from different sources, combine said data, and present the
data to a user. The finding of patent-eligible subject matter is a
finding of law, not a finding of fact, so there is no evidentiary
requirement to support Examiner's findings (see July 2015
Update: Subject Matter Eligibility, page 6 and 7). No existing
technology has been improved, including the operation of any
combined system.
Final Act. 4.
The reasoning provided in the Examiner's Answer is equally
unsupported:
Unlike the content filtering system of BASCOM, the claimed
invention does not improve upon a combination of components
by providing additional functionality. The combination
presented by the claimed invention performs in a standard
fashion and does not present any additional functionality to the
claimed combination of a scanner and a computer.
Ans. 5.
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Because the Examiner has not undertaken a factual inquiry to
determine whether the claimed "connection logic module" overcomes a
technical problem in the context of on-line bill presentment and payment,
the Examiner has not established that independent claims 63 and 69 fail to
integrate the recited abstract idea into a practical application, as required by
Step 2A, Prong 2, of the 2019 Guidance. The fact that the Examiner has
failed to establish a prima facie of patent ineligibility is a sufficient basis to
reverse the rejection. As stated above, I reach no conclusions and express no
opinion as to whether the claims, in fact, integrate the abstract idea into a
practical application or whether the claims are, in fact, patent eligible.
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