Ex Parte Seifert et al

Patent Trial and Appeal Board

Dec 15, 2017

13248304 (P.T.A.B. Dec. 15, 2017)

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.
13/248,304 09/29/2011 Dean A. Seifert 90945-819874 (000832US) 1496
20350 7590 12/19/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
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12/19/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN A. SEIFERT and
MARK THOMPSON
Appeal 2016-0039181
Application 13/248,3042
Technology Center 3600
Before ANTON W. FETTING, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6, 9-11, 13—17, 20, and 22—28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed
August 12, 2015), Examiner’s Answer (“Ans.,” mailed December 17, 2015),
and Final Office Action (“Final Act.,” mailed January 14, 2015).
2 Appellants identify “[t]he Western Union Company of Englewood,
Colorado” as the real party in interest (Br. 2).
Appeal 2016-003918
Application 13/248,304
CLAIMED INVENTION
Appellants’ claims relate “generally to computer-implemented
transfer systems including systems and methods for introducing information
to and receiving information from a computer-implemented transfer
system,” and more specifically, “to transferring value and/or messages
associated with the value via a computer-implemented transfer system”
(Spec. 12).
Claims 1, 4, and 13 are the independent claims on appeal. Claim 1
reproduced below, is illustrative of the subject matter on appeal:
1. A method for transferring funds comprising:
[a] determining, with at least one processor, a plurality of
options for transferring funds to a recipient based on information
received about the recipient;
[b] transmitting, from the at least one processor, a plurality
of options for selection in completing a transfer of funds, wherein
the plurality of options are based at least in part on the
information received about the recipient, such that the plurality
of options are tailored to the recipient; and
[c] processing, with the at least one processor, a request to
transfer funds using one of the plurality of options.
REJECTION
Claims 1—4, 6, 9-11, 13—17, 20, and 22—28 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
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Appeal 2016-003918
Application 13/248,304
ANALYSIS
Independent claims 1, 4, and 13, and dependent claims 2, 3, 6, 9—11, 14^17,
20, and 22—28
Appellants argue independent claims 1, 4, and 13 as a group (see
Br. 3—6). We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting independent claim 1 under 35 U.S.C. § 101, the Examiner
finds “the claimed invention is directed toward to the performance of a
fundamental economic practice (i.e. preparing and performing a funds
transfer request) and, therefore, is a patent-ineligible abstract idea” (Final
Act. 3). The Examiner identifies that “the method is performed by a generic
computer (standard computer components)” {id. at 4 (citing Spec. 1 37)), and
further finds
the instant application simply instructs the practitioner to
implement the abstract idea (i.e. preparing and performing a
funds transfer request) with routine and conventional
computerized activity. While the steps of preparing and
performing a funds transfer request may be novel and/or non­
ob vious, the computerized activity (i.e. determination of options
by a computer, transmitting said options to a user for selection,
receiving selections and processing data based upon the
selections) are routine and conventional. As such the claim
elements are insufficient to transform an otherwise abstract idea
into patent-eligible subject matter.
(Final Act. 5).
Appellants do not dispute the Examiner’s finding that the claims are
directed to an abstract idea (see Br. 3). Instead, Appellants argue that the
claims are directed to patent-eligible subject matter “at least because
significantly more than the alleged abstract idea is present in these claims”
{id.).
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Appeal 2016-003918
Application 13/248,304
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “laws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
In determining whether independent claim 1 falls within the excluded
category of abstract ideas, we are guided in our analysis by the Supreme
Court’s two-step framework, described in Mayo and Alice. Id. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296—97 (2012)). In accordance with that framework, we first must
determine whether the claim is “directed to” a patent-ineligible abstract idea.
If so, we then consider the elements of the claim — both individually and as
an ordered combination — to assess whether the additional elements
transform the nature of the claim into a patent-eligible application of the
abstract idea. Id. This is a search for an “inventive concept” — an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Here, we agree with the Examiner that claim 1 is directed to
“preparing and performing a funds transfer request” (Final Act. 3), which,
like verifying credit card transactions (see CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), collecting and
analyzing information to detect and notify of misuses (see FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016)),
guaranteeing transactions (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1354 (Fed. Cir. 2014)), budgeting (see Intellectual Ventures I LLC v. Capital
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Appeal 2016-003918
Application 13/248,304
One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)), and intermediated
settlement {see Alice, 134 S. Ct. at 2356—57), falls squarely within the realm
of abstract ideas implemented on computers.
Turning to the second step of the framework, we find unpersuasive
Appellants’ arguments “that [independent] claims 1, 4, and 13 include
‘significantly more’ than an abstract idea to which the claims are allegedly
directed” (see Br. 3—5).
Appellants first argue that the claims include “significantly more”
than an abstract idea because “[e]ach of the claims improves at least two
other technical fields beyond preparing and performing a funds transfer
request (the alleged abstract idea): personal finance management, and
security and cost reduction of financial institution procedures” (Br. 4).
However, we agree with the Examiner that
[t]he claimed invention does not improve technology. The
claimed invention does recite an improvement to the technology
making the performance of the method steps on the technology
possible. The claimed invention merely recites the performance
of a series of method steps, with a high level of generality, by
technology.
(Ans. 3). In this regard, we note that there is a fundamental difference
between computer functionality improvements, on the one hand, and uses of
existing computers as tools to perform a particular task, on the other. Here,
the alleged improvements that Appellants refer to, e.g., “allowing greater
control of a person’s financial assets,” “choice,” “costs,” do not concern an
improvement to computer capabilities, but instead relate to improvements in
marketing and customer service, that simply instructs the practitioner to
implement the abstract idea on a generic computer.
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Appeal 2016-003918
Application 13/248,304
There is no inventive concept or technological advance here that
would support patent eligibility. Claim 1 is not focused on an improvement
to the claimed “at least one processor.” Cf. In re TLI Communications LLC
Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (The claims’ focus
“was not on an improved telephone unit or an improved server.”). And
merely limiting the scope of the claims to a particular technological
environment or application, without more, does not change the outcome.
Alice, 134 S. Ct. at 2358.
Appellants next argue that the claims include “significantly more”
than an abstract idea because “[particular, non-generic, machines/computers
are necessary to implement the systems and methods of the claims” (Br. 4).
More particularly, Appellants argue that the claims require “a server capable
of implementing the systems and methods must be able to communicate
digital data with a multitude of differing financial networks and their
associated protocols” and “[o]ff-the-shelf generic computers are not capable
of performing such functions, much less concurrently during an period of
intense heavy transaction load as may be necessary in such industry” (id.).
However, as the Examiner points out, “[n]one of these features are in
the claimed invention” (Ans. 4). Instead, exemplary independent claim 1
recites “[a] method for transferring funds” including steps for “determining,
with at least one processor, a plurality of options,” “transmitting, from the at
least one processor, a plurality of options,” and “processing, with the at least
one processor, a request to transfer funds using one of the plurality of
options.” Thus, independent claim 1 merely employs “standard computer
components” (see Final Act. 3 (citing Spec. 137)) to perform generic
computer functions, i.e., “determining,” “transmitting,” and “processing”
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Application 13/248,304
information, which is not enough to transform an abstract idea into a patent-
eligible invention.
We last are not persuaded by Appellants’ argument that because the
“claims do not stand rejected under § 102 or § 103,” the claims cannot be
“labeled a fundamental economic practice,” and as such, “significantly more
than the alleged abstract idea is present in the claim” (Br. 5). To the extent
that Appellants argue that independent claim 1 necessarily contains an
“inventive concept” because Appellants’ claims recite particular features
which they alleged are not disclosed in the prior art (id.), Appellants
misapprehend the controlling precedent. Although the second step in the
Alice!Mayo framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, 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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1 and independent claims 4 and 13,
which fall with independent claim 1.
Appellants also argue address dependent claims 2, 3, 6, 9-11, 14—17,
20, and 22—28 (see Br. 5—6). In this regard, Appellants state “the Office
Action makes no effort to analyze these claims and state any grounds for
why the recitations of these claims do not amount to significantly more than
the alleged abstract idea” (id. at 5).
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Application 13/248,304
Appellants’ argument is not persuasive at least because Appellants
offer no arguments in support of the patent eligibility of the dependent
claims. As we find, however, that dependent 6, 11, 15, 16, 20, and 22—27
merely describe further characteristics of the underlying concept and lack
additional elements that would render the claims patent-eligible, we also
sustain the rejection under § 101 of these dependent claims on the same
basis as the independent claims from which they depend. In particular, the
dependent claims merely recite variations of transmitting and displaying
information related to the abstract idea, which we discern sits squarely
within, and does not alter appreciably, the broader concept of “preparing and
performing a funds transfer request” (cf. Ans. 5).
DECISION
The Examiner’s rejection of claims 1—4, 6, 9—11, 13—17, 20, and
22—28 under 35 U.S.C. § 101 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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