Ex Parte PolkDownload PDFPatent Trial and Appeal BoardMar 14, 201812784176 (P.T.A.B. Mar. 14, 2018) 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. 12/784,176 05/20/2010 John D. Polk 06556.0040-01 8278 12237 7590 03/16/2018 ACS (Affiliated Computer Services)/Finnegan 901 New York Ave., NW Washington, DC 20001 EXAMINER JEANTY, ROMAIN ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 03/16/2018 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): regional-desk @ frnnegan. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN D. POLK Appeal 2017-000734 Application 12/784,176 Technology Center 3600 Before ALLEN R. MacDONALD, IRVIN E. BRANCH, and ADAM J. PYONIN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL1 1 The Real Party in Interest is ACS (Affiliated Computer Services) State & Local Solutions, Inc., which is a subsidiary of Xerox Corporation. App. Br. 3. Appeal 2017-000734 Application 12/784,176 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 28-32, 70-72, 87, 94, and 96-105. Claims 1-27, 33-69, 73-86, 88- 93, and 95 have been cancelled. App. Br. 22—26. We have jurisdiction under 35 U.S.C. § 6(b). Representative Claim Representative claim 28 under appeal reads as follows (emphases and bracketed material added). 28. A method for processing an employee garnishment for an employer at a national portal, comprising: [A.] receiving employee garnishment information of an employee from a third party at the national portal; [B.] receiving salary information of the employee from the employer at the national portal; [C.] transmitting payment information from the national portal to the third party, the payment information based on the employee garnishment information and the salary information; and [D.] processing the garnishment against a salary of the employee at the national portal, wherein processing the garnishment comprises: [i.] authorizing, by the national portal, a portion of the employee's salary to be made payable to a proper entity; and [ii.] deducting the portion of the employee’s salary at the national portal before the employee receives the salary. 2 Appeal 2017-000734 Application 12/784,176 Rejection2 The Examiner rejected “claims 28—32, 70-72, 87, 94, and 96—105 under 35 U.S.C. [§] 101 as being directed to non-statutory subject matter.” Final Act. 4. More particularly, the Examiner rejected all pending claims for being directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more, i.e., for being directed to patent-ineligible subject matter.3 Issue on Appeal Did the Examiner err in rejecting claim 28 for being directed to patent-ineligible subject matter? Section 101 Case Law 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. v. CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 579 U.S. 576, 588 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 2 The Examiner has withdrawn a second separate rejection of claims 96—105 (Final Act. 4) under 35 U.S.C. §101. Ans. 4. 3 Separate patentability is not argued for claims 29-32, 70-72, 87, 94, and 96—105. Except for our ultimate decision, claims 29—32, 70-72, 87, 94, and 96—105 are not discussed further herein. 3 Appeal 2017-000734 Application 12/784,176 U.S. 66, 82 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these 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. 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 Enfish, 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 in which 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 77, 79). 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. We agree with and adopt the Examiner findings, as well as the conclusion that the claims are not patent-eligible. We address Appellant’s several arguments presented in the Appeal Brief. 4 Appeal 2017-000734 Application 12/784,176 Step 1 of Alice!Mayo Turning to the first part of the Alice!Mayo analysis, as to method claim 1, the Examiner concludes: Abstract ideas are fundamental economic practice, methods of organizing human activities, an idea itself, or a mathematical relationship or formula. Here, the instant claims are clearly a fundamental economic practice. Providing electronic services over a national portal is a fundamental business practice and thus, the claims include an abstract idea. A system or method for performing business, however, novel, useful, or commercially successful, is not patentable apart from the means for making the system practically useful or carrying it out. The claims are directed towards providing electronic services over a national portal which is a fundamental business practice which includes an abstract idea. Final Act. 3 (emphasis added). Appellant contends the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: The Examiner, however, contends that. . . “the instant claims are clearly a fundamental economic practice. Providing electronic services over a national portal is a fundamental business practice and thus, the claims include an abstract idea.” [Final Office Action at 3.] This is incorrect for at least the following reasons. First, the final rejection fails to set forth a thorough analysis or a clear rejection. Patent eligibility is a question of law, and although factual findings are generally not required, a clearly-articulated rejection based on a thorough analysis is required. . . . The final rejection merely concludes that “the instant claims are clearly a fundamental economic practice. Providing electronic services over a national portal is a fundamental business practice and thus, the claims include an abstract idea.” Final Office Action at 3. These conclusory and 5 Appeal 2017-000734 Application 12/784,176 unsupported statements in the Final Office Action are insufficient to properly establish a prima facie case. App. Br. 12—13 (emphasis added). Second, the Final Office Action sets forth no analysis regarding why the alleged concept of “processing the garnishment against a salary of the employee at the national portal” is “a fundamental economic processSee Final Office Action at 2-3. For an idea to be abstract under the reasoning of Alice Corp., it must be “long prevalent,” “longstanding,” “fundamental,” “taught in any introductory finance class,” or “a building block of the modem economy.” Alice Corp. v. CLS Banklnt’l, [134 S.Ct. 2347, 2356 (2014)]. But Alice Corp. did not do away with the USPTO’s burden to provide proof that the claimed idea is in fact “long prevalent,” “longstanding,” “fundamental,” “taught in any introductory finance class,” or “a building block of the modem economy.” The Final Office Action simply labels the claimed idea “a fundamental economic process,” which is insufficient in of itself to establish a prima facie case. App. Br. 14 (emphasis added). To the extent that the Examiner concludes the claimed “national portal” is part of the “fundamental economic practice,” we agree with Appellant that the “national portal” is not; however we address the “national portal” limitation at step 2 of the Alice!Mayo analysis. As to the Examiner’s conclusion that processing a garnishment against a salary of an employee is “a fundamental economic process,” we agree. That “garnishment” is an economic practice” is beyond dispute.4 That “employee garnishment” is 4 Garnishment: noun 1. Law. a warning, served on a third party to hold, subject to the court's direction, money or property belonging to a debtor who is being sued by a creditor. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/gamishment (accessed: March 12, 2018). 6 Appeal 2017-000734 Application 12/784,176 known to artisans is acknowledge by Appellant.5 That garnishment is “longstanding” is establish by the decisions of our reviewing courts.6 Contrary to Appellant’s argument, we conclude that as to step 1 of the Alice/Mayo analysis, the Examiner’s analysis is more than sufficient to place Appellant on notice as to the basis for the § 101 rejection and provides the required prima facie showing. Step 2 of Alice!Mayo Turning to the Second part of the Alice!Mayo analysis, as to method claim 1, the Examiner concludes: The claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of a computing device or computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Note that the limitations, in the instant claims, can merely be expressed by a generically recited computer system. The limitations can be merely instructions to implement the abstract idea on a processor or computing device and require no 5 “Examples of payment and reporting obligations include the payment of taxes, the payment of employee child support obligations, the payment of employee garnishments, the reporting of newly hired employees, registration of vehicles, and the payment of parking fees or tickets.” Spec. 1 3 (emphasis added). 6 Tiernan v. Jackson, 30 U.S. 580, 596 (1831) (“[T]hey attached the property by a writ of garnishment on the 8th of the same month.”). Wallace v. McConnell, 38 U.S. 136, 138 (1839) (“[I]n obedience to the said summons of garnishment, he, the said William, did appear before the said county Court of Mobile.”). Davis v. William M. Tileston & Co., 47 U.S. 114, 116 (1848) (“[CJomplainant knew, at the time he answered the garnishment against him, that no credit had been given for said cotton.”). 7 Appeal 2017-000734 Application 12/784,176 more than a generic computer or apparatus to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Final Act. 3^4. Appellant contends the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: [L]ike the claims in Diamond v. Diehr, 450 U.S. 175 (1981) which the Supreme Court upheld as patent-eligible, the pending claims provide a technological improvement to a problem in conventional industry practice. App. Br. 18 (emphasis added). Each independent claim . . . solves technical problems using technical solutions that do not exist in the vague, non-computerized environment the Examiner’s Answer relies upon in identifying an abstract idea. Reply Br. 7 (emphasis added). [A]s with the claimed technology discussed in the Interim Guidance, the above independent claim elements yield a “result that overrides the routine and conventional sequence of events,” to address a technical problem of which there is no “conventional” counterpart. Reply Br. 8 (emphasis added). [T]he claims recite the use of particular computer models with a plurality of information to process an employment garnishment for an employer. Indeed, the claims recite significantly more than implementing an alleged abstract idea on a generic computer. App. Br. 18 (emphasis added). Because the claims are directed to specific complex computer components, they are different from claims reciting no more than an implementation of an abstract idea on a generic computer, which the Federal Circuit has found to be patent-ineligible. App. Br. 19 (emphasis added). 8 Appeal 2017-000734 Application 12/784,176 Like the claims in Research Corp., the instant claims recite the application of a specific complex computer model (“National Portal For Employers, 300, Figure 3”) to tangible data (e.g., “employee garnishment information,” “salary information,” and “payment information”). App. Br. 20 (emphasis added). We are not persuaded by Appellant’s arguments. First, in the Specification, Appellant describes the claimed “national portal” as a “single location” (Spec 143) “on the World Wide Web of the Internet” (Spec. 144). Although Appellant’s claim 28 recites numerous limitations as to the garnishment process (abstract idea limitations), no particular limitations are recited as to the “national portal.” Beyond conventional central access of an Internet site, we do not find a claim limitation directed to a particular computer model or specific complex computer components as argued by Appellant. Second, as to Appellant’s arguments the claim addresses a technical problem, we disagree. According to Appellants, the specific problem addressed by claim 28 is the need for processing of garnishment payment and reporting obligations. See Spec. 13. This problem is one in the field of financial transactions. This problem existed in the era of paper based transactions and long predates the Internet. Our reviewing court addressed this issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (2014)). The claimed invention in DDR Holdings did not merely use the Internet but rather changed how interactions on the Internet operated. In contrast, Appellant’s claims are not directed to a problem rooted in computer technology, as outlined in DDR Holdings. Rather, Appellant’s argued “tangible data” being processed is financial data rather than data being processed to change the operation of the Internet itself as in DDR Holdings. 9 Appeal 2017-000734 Application 12/784,176 Contrary to Appellant’s arguments, we conclude that as to step 2 of the Alice/Mayo analysis, the Examiner’s analysis is more than sufficient to place Appellant on notice as to the basis for the § 101 rejection and provides the required prima facie showing. Additional 101 Arguments A Appellant also contends the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: [Tjhere is no reasonable basis to suggest that Appellant’s claims actually recite an abstract idea, and thus the claims should be held patent-eligible under a streamlined analysis. The Supreme Court in Alice explained that the exclusionary principle excluding abstract ideas from patent eligible subject matter is driven by a concern of preemption. See Alice, 134 S.Ct. at 2354. . . . [I]t is clear that the claims do not threaten to “monopolize” or “preempt’ or “tie-up” the purported abstract idea referenced in the Final Office Action-”processing the garnishment against a salary of the employee at the national portal,” because there are different ways to process the garnishment against a salary of the employee at the national portal, without practicing the claimed invention. App. Br. 15—16 (emphasis added). Appellant’s pre-emption arguments overlook that the Court’s Alice/Mayo two-step (abstract idea/significantly more) analysis is the Court’s framework for determining pre-emption. [W]e set forth a frame-work 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. 10 Appeal 2017-000734 Application 12/784,176 Moreover, “the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, [] preemption concerns are fully addressed and made moot.”). Contrary to Appellant’s arguments, the Examiner correctly applied the Alice/Mayo framework. Final Act. 2-4. B Appellant contends the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101 because: [T]he fact that the Final Office Action does not reject the claims for lack of novelty or non-obviousness demonstrates that other alternatives to the claimed invention are available. App. Br. 16 (emphasis added). [Tjthe claims recite a novel and non-obvious combination of ordered steps that transform a processor into a special purpose machine, and which are novel and non-obvious, and are thus directed to an innovation to the technical field of computerized portals. App. Br. 18 (emphasis added). Appellant’s “novel and non-obvious” (i.e., prior art) argument does not persuade us of Examiner error. Although the second step in the Alice/Mayo analysis includes a search for an inventive concept, the analysis is not an evaluation of novelty or nonobviousness, but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 134 S. Ct. at 2355 (quotingMayo, 566 at 71). A novel and nonobvious claim directed to a purely abstract idea is, 11 Appeal 2017-000734 Application 12/784,176 nonetheless, patent-ineligible. See Mayo, 566 at 89-91. Further, “under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). CONCLUSION The Examiner has not erred in rejecting claims 28—32, 70-72, 87, 94, and 96—105 under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. DECISION The Examiner’s rejection of claims 28—32, 70-72, 87, 94, and 96—105 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 12 Copy with citationCopy as parenthetical citation