Ex Parte Selway et alDownload PDFPatent Trial and Appeal BoardJan 24, 201813451039 (P.T.A.B. Jan. 24, 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. 13/451,039 04/19/2012 Anthony J. Selway 90850-838277 (002410US) 5824 20350 7590 01/26/2018 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER AKINTOLA, OLABODE ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 01/26/2018 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTHONY J. SELWAY, MATTHEW J. COTTRELL, LAURA E. WEINFLASH, and ROBERT W. WEYRAUCH Appeal 2016-0047411 Application 13/451,03 92 Technology Center 3600 Before NINA L. MEDLOCK, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. MEDLOCK, 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—3, 8, 14—16, 21, and 23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed October 9, 2015) and Reply Brief (“Reply Br.,” filed March 31, 2016), and the Examiner’s Answer (“Ans.,” mailed February 9, 2016) and Final Office Action (“Final Act.,” mailed May 12, 2015). 2 Appellants identify Early Warning Services, LLC. as the real party in interest. App. Br. 3. Appeal 2016-004741 Application 13/451,039 CLAIMED INVENTION Appellants’ claimed invention relates to “systems and methods for identifying duplicate transactions, such as the presentment of duplicate checks and other negotiable instruments” (Spec. 13). Claims 1 and 14 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for determining that a transaction instrument has been used for conducting more than one transaction, comprising: receiving, by a computer and at a duplicate detection system, data records identifying instruments being presented to conduct transactions at one or more institutions, including an indication of a type of presentment at the one or more institutions as represented by the data records; storing, by the computer, the data records at the duplicate detection system; when a data record is received at the duplicate detection system, comparing, by the computer, the received data record to the stored data records, to determine if the received record identifies the same instrument that is identified in any of the stored data records; if any two data records appear to identify the same instrument, generating, by the computer, an alert at the duplicate detection system for at least one of the institutions where that instrument has been presented; assessing, by the computer, the risk that the identified same instrument is being used to conduct an improper transaction; and providing, by the computer, the alert and the assessed risk to at least one of the institutions; and applying a filter to suppress an alert at the duplicate detection system for at least one of the institutions, wherein the suppression of the alert is based on one or more of the following: a purpose of an account against which the instrument is drawn; 2 Appeal 2016-004741 Application 13/451,039 a type of presentment represented by the data records that appear to identify the same instrument; and an elapsed time between presentment of the same instrument; wherein the risk that the identified same instrument is being used to conduct an improper transaction is based on the type of presentment, wherein multiple types of presentment are represented by the data records, wherein the multiple types of presentment include at least the following types of presentment: remote instrument image capture; instrument presentment at a teller window of a financial institution; deposit of the instrument at an automated teller machine (ATM); and deposit received electronically at a financial institution through an automated clearinghouse (ACH). REJECTION Claims 1—3, 8, 14—16, 21, and 23 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. ANALYSIS 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: “[ljaws 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). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66 (2012), “for distinguishing patents that 3 Appeal 2016-004741 Application 13/451,039 claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice Corp., 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.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). 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). Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner finds that the claims are directed to “determining that a transaction instrument has been used for conducting more than one transaction using risk assessment based on [the] type of presentation,” i.e., to an abstract idea; and that the claims do not include additional elements that are sufficient to amount to significantly more than an abstract idea because “the generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation” (Final Act. 2). 4 Appeal 2016-004741 Application 13/451,039 Appellants ostensibly do not dispute that the claims are directed to an abstract idea. Instead, Appellants argue that the § 101 rejection cannot be sustained because the claims recite “non-routine features and steps that are significantly more than the abstract idea characterized by the Examiner” (App. Br. 8). Appellants point to various steps recited in claim 1 (id.; see also Reply Br. 3—4), but Appellants do not explain how or why these steps constitute significantly more than the identified abstract idea of “determining that a transaction instrument has been used for conducting more than one transaction using risk assessment based on [the] type of presentation.” For example, Appellants do not maintain that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, invoke any assertedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform the claimed method steps. Appellants further argue that the claims recite significantly more than an abstract idea because the claims improve the functioning of the computer itself (App. Br. 8—9). But that argument is similarly unpersuasive. Appellants maintain that the claims provide an improvement in the functioning of the computer at the duplicate detection system, i.e., “the prevention of false positives that arise in such systems through the use of a noise suppression feature” (id. at 9). But, even accepting Appellants’ argument, 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. The Federal Circuit, in fact, applied this distinction in Enfish — rejecting a § 101 challenge at the step one stage in the Alice analysis because 5 Appeal 2016-004741 Application 13/451,039 the claims at issue focused on a specific type of data structure, i.e., a self- referential table for a computer database, designed to improve the way a computer carries out its basic functions of storing and retrieving data, and not merely on asserted advances in uses to which existing computer capabilities could be put. Enfish, 822 F.3d at 1335—36. The alleged improvement that Appellants tout here does not concern an improvement in computer capabilities but instead relates to an alleged improvement in detecting fraudulent duplicate transactions for which a computer is used as a tool in its ordinary capacity. Noting that the Examiner has not rejected the claims under 35 U.S.C. § 102 or § 103, Appellants further argue that the rejection cannot be sustained because the subject matter recited in the claims is not well- understood, routine, or conventional in the field, and the claims add unconventional steps that confine the claim to a particular useful application (App. Br. 9—10; see also Reply Br. 4). Yet, to the extent Appellants maintain that the claimed invention is patent-eligible, i.e., that the claim amount to “significantly more” than an abstract idea, and/or that the recited functions are not well-understood, routine, or conventional activities, because the claims are allegedly novel and/or non-obvious in view of the prior art, Appellants misapprehend the controlling precedent. A finding of novelty or non-obviousness does not automatically lead to the conclusion that the claimed subject matter is patent-eligible. Although the second step in the Mayo!Alice 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 6 Appeal 2016-004741 Application 13/451,039 significantly more than a patent upon the [ineligible concept] itself.’” Alice Corp., 134 S. Ct. at 2355 (citation omitted). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S. 175, 188—89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). The recitation of a practical application for an abstract idea also is insufficient to transform the abstract idea into a patent-eligible invention. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court [in Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation of a practical application for the calculation could alone make the invention patentable.”). We also are not persuaded of Examiner error by Appellants’ argument that the claims are patent-eligible because they “do not attempt to preempt every application of the idea of ‘determining that a transaction instrument has been used for conducting more than one transaction using risk assessment based on type of presentation’” (App. Br. 10). There is no dispute that the Supreme Court has described “the concern that drives [the exclusion of abstract ideas from patent-eligible subject matter] as one of pre-emption.” Alice Corp., 134 S. Ct. at 2354. But characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. 7 Appeal 2016-004741 Application 13/451,039 “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. We are not persuaded for the foregoing reasons that the Examiner erred in rejecting claims 1—3, 8, 14—16, 21, and 23 under 35 U.S.C. § 101. Therefore, we affirm the Examiner’s rejection. DECISION The Examiner’s rejection of claims 1—3, 8, 14—16, 21, and 23 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 8 Copy with citationCopy as parenthetical citation