Ex Parte Polk

Patent Trial and Appeal Board

Mar 14, 2018

12784176 (P.T.A.B. Mar. 14, 2018)

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.
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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.
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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.
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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
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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).
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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.”).
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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).
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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.
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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.
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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,
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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
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