Ex Parte Poole

Patent Trial and Appeal Board

Aug 23, 2018

14203713 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/203,713 03/11/2014
121629 7590
Finnegan/Capital One
901 New York Ave., NW
Washington, DC 20001
08/27/2018
FIRST NAMED INVENTOR
Thomas Poole
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.
05793.3332-00000 1060
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
CapOne_USPTO@finnegan.com
regional-desk@finnegan.com
terri.mcmillan-solomon @finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS POOLE
Appeal2016-008705
Application 14/203,713 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, ROBERT J. SILVERMAN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-28. We have jurisdiction under 35 U.S.C.
§ 6(b ). Oral arguments were presented on August 16, 2018.
We AFFIRM, designating the affirmance as a NEW GROUND OF
REJECTION, pursuant to 37 C.F.R. § 41.50(b).
1 The Appellant identifies Capital One Financial Corporation as the real
party in interest. Appeal Br. 3.
Appeal 2016-008705
Application 14/203,713
ILLUSTRATIVE CLAIM
1. A system for providing funding changes regarding
financial transactions, comprising:
one or more memory devices storing software
instructions; and
one or more processors configured to execute the
software instructions to:
provide an interface on a computing device;
identify a first financial transaction for a first amount that
has previously occurred within a determined period of time, the
financial transaction involving a first financial account
associated with a user;
generate a notification based on the first financial
transaction;
provide the notification over a network to the interface;
determine a second financial account associated with the
user that can be used to fund the first financial transaction for
the first amount;
provide a funding type change option to the interface that
identifies the second financial account as an alternate financial
account for funding the first financial transaction;
receive a funding type change indication to change the
funding type of the first financial transaction from the first
financial account to the second financial account; and
process the funding type change indication such that the
first amount is applied to the second financial account and the
first amount is credited to the first financial account.
REJECTION
Claims 1-28 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
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Appeal 2016-008705
Application 14/203,713
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Independent claims 1, 10, 15, and 24 - along with their dependent
claims 2-9, 11-14, 16-23, and 25-28 - stand rejected as constituting
subject matter that is not eligible for patenting. See Final Action 2---6.
The Appellant argues claims 1-28 as a group. See Appeal Br. 8-15.
Claim 1 is selected for analysis herein. See 37 C.F.R. § 4I.37(c)(l)(iv).
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply"' these basic tools of scientific and
technological work. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354
(2014) ( citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
into a patent-eligible invention." Id. (internal quotation marks and citation
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
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Appeal 2016-008705
Application 14/203,713
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
The "directed to" inquiry of the first Alice step "applies a stage-one
filter to claims, considered in light of the specification, based on whether
'their character as a whole is directed to excluded subject matter."' Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls [for] look[ing] at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Notably,
in such an inquiry, a claim may be characterized properly, in various ways,
because "[ a ]n abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Because the first step is consequential- among other things,
framing the terms for what may ( or may not) constitute meaningful claim
elements, under the second Alice step - it must strike an appropriate
balance between opposing concerns. Hewing too closely to the recited
details of the claim might undermine any sense that the claim really
threatens to cover a "basic tool[] of scientific and technological work,"
Gottschalk v. Benson, 409 U.S. 63, 67 (1972), that would merit the exclusion
from patenting. By contrast, describing a claim in broad and general terms
might make it more likely for claim elements of dubious importance to be
distinct from the identified abstract idea, such that these elements could be
sufficient to establish patent eligibility, under the second Alice step.
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Appeal 2016-008705
Application 14/203,713
In view of these principles, we regard claim 1 as being directed to an
abstract idea - specifically, the basic commercial practice of using funds in
one account to pay off a debt in another account. This focus is consistent
with the Specification's description of the purpose of the invention as
"provid[ing] mechanisms that allow the user to select an alternate financial
account for funding selected one or more of the previous transactions."
Spec. ,r 5.
Courts have regarded such rudimentary economic practices as abstract
ideas, which are not eligible for patenting. See Alice, 134 S. Ct. at 2356
(holding "the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk" is an abstract idea), Bilski v. Kappas, 561
U.S. 593, 611 (2010) (determining "the basic concept ofhedging, or
protecting against risk" is an abstract idea). Furthermore, concepts similar to
the present characterization of claim 1, and set forth in even greater detail,
have been identified as abstract ideas. See US. Bancorp v. Ret. Capital
Access Mgmt. Co., No. CBM2013-00014, 2014 WL 4229953, *7 (PTAB
Aug. 22, 2014) ("Similar to the concept of intermediated settlement in Alice
Corp. and the concept of risk hedging in Bilski, we find that the concept of
advancing funds based on future retirement payments is an economic
practice long prevalent in our system of commerce and squarely within the
realm of abstract ideas."), ajf'd, 611 F. App'x 1007 (Fed. Cir. 2015); CMG
Fin. Servs., Inc. v. Pac. Tr. Bank, F.S.B., 50 F. Supp. 3d 1306, 1325 (C.D.
Cal. 2014) (determining that claims are directed to "the abstract idea of a
mortgagee paying down a mortgage early when funds are available and
borrowing funds as needed to reduce the overall interest charged by the
mortgage"), ajf'd, 616 F. App'x 420 (Fed. Cir. 2015).
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Appeal 2016-008705
Application 14/203,713
In regard to the second Alice step, the claimed elements - insofar as
they do not simply re-state the identified abstract idea identified above -
primarily constitute features for implementing the abstract idea in the
technological environment of electronic financial transactions ( e.g.,
"memory devices storing software instructions," "processors configured to
execute the software instructions," "provide an interface on a computing
device," "identify a first financial transaction," "determine a second
financial account," and "process the funding type change indication"). Such
claim elements cannot give rise to patent eligibility. See Alice, 134 S. Ct. at
2358 ("[L ]imiting the use of an abstract idea to a particular technological
environment" is "not enough for patent eligibility.") (internal citations and
quotation omitted); Elec. Power Grp., 830 F.3d at 1354 ("[L]imiting the
claims to the particular technological environment of power-grid monitoring
is, without more, insufficient to transform them into patent-eligible
applications of the abstract idea at their core."); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) ("Narrowing the abstract idea of
using advertising as a currency to the Internet is an 'attempt[ ] to limit the
use' of the abstract idea 'to a particular technological environment,' which is
insufficient to save a claim.") ( quoting Alice, 134 S. Ct. at 2358).
The remaining claim elements amount to pre-solution or post-solution
activities ( e.g., "generate" and "provide" a "notification based on the first
financial transaction"), which also cannot render the claim patent-eligible.
See Bilski, 561 U.S. at 610-11 ("[T]he prohibition against patenting abstract
ideas 'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or adding 'insignificant
postsolution activity"') (quoting Diamond v. Diehr, 450 U.S. 175, 191-92
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(1981)); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315,
1328-29 (Fed. Cir. 2017) ("While limiting the index to XML tags certainly
narrows the scope of the claims, in this instance, it is simply akin to limiting
an abstract idea to one field of use or adding token post solution components
that do not convert the otherwise ineligible concept into an inventive
concept.")
We have considered all of the Appellant's arguments and regard them
as unpersuasive in view of the analysis set forth above.
Accordingly, for the reasons discussed above we sustain the rejection
of claims 1-28 under 35 U.S.C. § 101. Although we sustain this rejection,
because we depart from the Examiner's reasoning, we designate this aspect
of the Decision as a new ground of rejection, under 37 C.F.R. § 4I.50(b).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-28 under
35 U.S.C. § 101, designating this affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 4I.50(b).
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision,
the appellant, within two months from the date of the
decision, must exercise one of the following two options
with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
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Application 14/203,713
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the
proceeding be reheard under§ 41.52 by the Board upon
the same Record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
AFFIRMED; 37 C.F.R. § 4I.50(b)
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