Ex Parte Rubin et al

Patent Trial and Appeal Board

Jun 28, 2018

12549866 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/549,866 08/28/2009 Idan Rubin
25315 7590 07/02/2018
LOWE GRAHAM JONES, PLLC
701 FIFTH A VENUE
SUITE4800
SEATTLE, WA 98104
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.
WSDN-1-2401 9831
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
patentdocketing@lowegrahamjones.com
docketing-patent@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IDAN RUBIN, ORI KREMER,
and
RAJU AYYAGARI
Appeal2017-003613
Application 12/549,866
Technology Center 3600
Before CARLA M. KRIVAK, SHARON PENICK, and
PHILLIP A. BENNETT, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Idan Rubin (App. Br. 1 ).
Appeal2017-003613
Application 12/549,866
STATEMENT OF THE CASE
Appellants' invention is directed to "methods, techniques, and
systems for helping users donate online to organizations using their social
connectedness" (Spec. ,r 1 ).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A computer-implemented method in a social network
computing system for automatically and electronically
distributing funds to a plurality of non-governmental
organizations on behalf of a participant donor, comprising:
receiving one or more electronic indications of a plurality
of donation accounts and a plurality of non-governmental
organizations;
arranging the indicated plurality of non-governmental
organizations according to the indicated plurality of donation
accounts, wherein each of the plurality of donation accounts
includes a plurality of the non-governmental organizations;
receiving an electronic indication of a budget specified
by the participant donor for each of the plurality of donation
accounts, each budget of each respective donation account
indicating a total amount of funds to be automatically
distributed amongst the plurality of non-governmental
organizations of the respective donation account at a designated
donation frequency and from a participant designated payment
method, wherein at least two of the donation accounts have
different associated donation frequencies and/or different
associated payment methods;
for each of the plurality of non-governmental
organizations of the plurality of donation accounts, receiving an
electronic indication of a donation specification that indicates a
participant specified donation weighting relative to the
participant specified budget specified for the respective
donation account; and
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for each of the plurality of donation accounts, at a time
indicated by the designated donation frequency of the donation
account, automatically and electronically causing the total
amount of funds indicated by the participant specified budget
specified for the donation account to be distributed using the
participant designated payment method of the donation account
to the non-governmental organizations of the donation account
in accordance with the received donation specifications, such
that a portion of the total amount of funds specified for each
donation account is automatically and electronically distributed
to each organization on behalf of the participant in accordance
with the participant specified donation weighting for the
organization.
REFERENCES and REJECTIONS
The Examiner rejected claims 1-22 under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
The Examiner rejected claims 1-22 under 35 U.S.C. § I03(a) based
upon the teachings of Nair (US 2002/0099654 Al, published July 25, 2002),
Fitzpatrick (US 2010/0241476 Al, published Sept. 23, 2010), Carrozzi (US
2006/0287871 Al, published Dec. 21, 2006), Fung (US 2004/0230536 Al,
published Nov. 18, 2004), Costin (US 2002/0049816 Al, published Apr. 25,
2002), and Stremler (US 2007/0021973 Al, published Jan. 25, 2007). This
obviousness rejection was withdrawn in the Examiner's Answer (Ans. 2-3).
ANALYSIS
Analytical Framework
The Supreme Court identifies laws of nature, physical phenomena,
and abstract ideas as three exceptions of subject matter ineligible for patent
protection (Bilski v. Kappas, 561 U.S. 593, 601 (2010)). In Alice Corp. v.
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CLS Bank International, the Court provides the following framework for
analysis:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[ w ]hat else is there in the claims before us?" To answer that
question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. We have described step
two of this analysis as a search for an "'inventive concept'"-
i.e., 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 Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
Step 1
Appellants argue the Examiner errs by not providing a "proper prima
facie case for rejecting the claims under 35 U.S.C. 101" (Br. 7). That is,
Appellants contend, "the Examiner has not provided any evidence
supporting the allegation that the claims are directed to an abstract idea";
rather the Examiner merely states the claims are directed to a "a series of
steps for electronically distributing funds (including: ... receiving ... ,
arranging ... , receiving ... , ... receiving ... , and ... causing ... ) which is a
fundamental economic practice, as well as a method of organizing human
activities, and thus an abstract idea" (Br. 8). Appellants then assert the
Examiner did not properly interpret Alice or Mayo (id.). Appellants contend
claim 1 is "directed to a method and a user interface in a computing system
for automatically and electronically distributing funds to a plurality of non-
governmental organizations on behalf of a participant donor by arranging [ a
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Application 12/549,866
hierarchy ofJ donation accounts and NGO funds within them" (Br. 9
(alteration in original)). We disagree.
We initially note the claims do not recite "a hierarchy" and it is
mentioned only once in Appellants' Specification (Spec ,r 3 6 ("donation
specifications may be hierarchically organized into accounts")).
Particularly, the Examiner does provide reasoning and evidence supporting a
prima facie case that Appellants' claims are directed to a fundamental
economic practice as well as organizing human activities (Non-Final Act. 3).
The Examiner, for support, cites to the Federal Register and Cyberfone (id.).
We do not agree with Appellants that the Examiner's characterization
of the claims constitutes reversible error for failing to set forth a prima facie
case for the first step of the analysis required under Alice.
We also agree with the Examiner the claims are directed to an abstract
idea (Ans. 4--5). Appellants assert claim 1 provides "implementation
complexity and added capabilities as evidenced by the claimed hierarchical
system [ not claimed] of account specifications into donation accounts with a
plurality of funds," which makes the claim non-abstract (Br. 9). We do not
agree. We agree with the Examiner the claimed steps "describe the concept
of transferring funds based on specified donation conditions and
preferences," "concepts identified as abstract ideas by the courts," including
"managing a transaction or relationship between people" (Br. 5); see also
Versata Dev. Group v. SAP America, Inc., 793 F.3d 1306, 1312-13 (Fed.
Cir. 2015) ( a system and method for determining a price of a product offered
to a purchasing organization, comprising arranging a hierarchy of
organizational groups and a hierarchy of product group). The court in
Versata stated that "[u]sing organizational and product group hierarchies to
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determine a price is an abstract idea that has no particular concrete or
tangible form or application. It is a building block, a basic conceptual
framework for organizing information." Versata, 793 F.3d at 1333-34.
We also agree the claims can be performed by a human (Ans. 9; Non-
Final Act. 3 (Appellants claim is "a method of organizing human
activities")). Mental processes (thinking) that "can be performed in the
human mind, or by a human using a pen and paper" are abstract ideas (see
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011)). The Federal Circuit explained, "methods which can be performed
mentally, or which are the equivalent of human mental work, are
unpatentable abstract ideas--the 'basic tools of scientific and technological
work' that are open to all." CyberSource 654 F.3d at 1371 (citing
Gottschalkv. Benson, 409 U.S. 63 (1972)). "Courts have examined claims
that required the use of a computer and still found that the underlying,
patent-ineligible invention could be performed via pen and paper or in a
person's mind." Versata, 793 F.3d at 1335.
Therefore, as we are not convinced by Appellant of error in the
Examiner's rejection, we agree with the Examiner that Appellants' claims
are directed to an abstract idea under the Alice/Mayo framework (Ans. 4).
Step 2
Appellants also argue their claims add significantly more under step 2
of the Alice/Mayo test, such as the search engine in independent claim 20
(Br. 10). Initially, we note the search engine is only in claim 20 and not
independent claims 1 and 15. Contrary to Appellants' assertions, search
engines are generic, as evidenced by Appellants' Specification, paragraph
19, which states "The NGO Search Engine 201 is responsible for searching
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for organizations that match the criteria or factors submitted by a
participant," which is what search engines do--they perform searches that
match criteria submitted by a user. Appellants provide no evidence their
search engine performs substantially more than the functions of a generic
search engine.
Appellants' also argue a computer cannot perform the claimed
operations recited in the claims because "specialized configuration and
programming" is required (Br. 11 ). However, neither Appellants'
Specification nor their arguments provide how anything more than routine
programming of a generic computer is required. Appellants also argue the
computer system in claims 1 and 15 "automatically and electronically causes
the correct amount of funds" to be distributed (id.). However, automating a
system does not "go beyond merely implementing the alleged abstract ideas"
(Br. 10). Further, as noted above, the argued "significantly more" of
"assigning different budgets and frequencies to different donation accounts,
and a plurality of funds, weighted, to each donation account," can all be
performed using pen and paper (Br. 12). Lastly, Appellants' argument that
the claims do not monopolize (preempt) the claimed methods of and
computer system, does not make the claims any less abstract (see buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases);
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) ("While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility");
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir.
2015)).
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As we are not convinced by Appellant of error in the Examiner's
rejection, we agree with the Examiner claims 1-22 are directed to non-
statutory subject matter.
DECISION
The Examiner's decision rejecting claims 1-22 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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