Ex Parte Swift et al

Patent Trial and Appeal Board

Feb 28, 2017

10184012 (P.T.A.B. Feb. 28, 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.
10/184,012 06/26/2002 Amy Swift 90945-791390 (018700US) 7332
20350 7590 03/02/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMY SWIFT, LISA TIDWELL, and CASSANDRA MOLLETT
Appeal 2015-0012751
Application 10/184,0122
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, 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 19, 20, 22, 36-40, 48, and 50. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Mar. 26, 2014), Reply Brief (“Reply Br.,” filed Jan. 20, 2015), and the
Examiner’s Answer (“Ans.,” mailed Nov. 18, 2014).
2 “The Western Union Company of Englewood, Colorado is the real party of
interest”. App. Br. 3.
Appeal 2015-001275
Application 10/184,012
CLAIMED SUBJECT MATTER
Appellants’ “invention relates to the field of electronic commercial
transactions. More specifically, the invention relates to electronic check
processing systems which process transactions from payment devices
presented as payment for goods or services.” (Spec. 12).
Independent claim 19, reproduced below, is illustrative of the claimed
subject matter.
19. A method of enrolling a user in a transaction processing
system which provides for payment for goods or services by a
user through a payment device associated with a checking
account, wherein the payment device is not a paper check,
credit card, or debit card, the method comprising:
receiving, at a transaction processor, instructions from a
merchant system to initiate at least one validation transaction;
formatting, with the transaction processor, at least one
validation transaction from enrollment data provided by a user,
wherein:
the enrollment data includes data associated with a
checking account;
the at least one validation transaction comprises:
at least one debit from the checking account; and
at least one credit to the checking account, wherein
the at least one credit is equal in amount to the at least
one debit;
transmitting, from the transaction processor to a
clearinghouse system, the at least one validation transaction for
processing;
receiving, at the transaction processor, confirmation from
the user indicating whether the at least one validation
transaction was properly settled and for what amount or
amounts; and
transmitting, with the transaction processor, an indication
of the confirmation to be used in the determination of whether
to enroll the user in a transaction processing system which
provides for payment for goods or services through a payment
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Application 10/184,012
device other than a paper check, credit card, or debit card, the
payment device being associated with the checking account.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Hills US 5,484,988 Jan. 16, 1996
Templeton US 7,430,537 B2 Sept. 30, 2008
REJECTIONS ON APPEAL
The following rejections are before us.
I. Claims 19, 20, 22, 36-40, 48, and 50 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject
matter.3
II. Claims 19, 20, 36-40, 48, and 50 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Templeton.
III. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Templeton and Hills.
3 Following the mailing of the September 5, 2014 Examiner’s Answer, this
New Ground of Rejection was entered in a subsequent Answer. See Ans. 3—
5.
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Appeal 2015-001275
Application 10/184,012
ANALYSIS
Rejection I
Alice sets forth “a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp. PtyLtd. v. CLS
BankInt7, 134 S. Ct. 2347, 2355 (2014) {citing Mayo, 132 S. Ct. 1289, 1294
(2012)). According to the Supreme Court’s framework, it must first be
determined whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas) (id. ). If so, a
second determination must be made to “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 (id.).
In rejecting claims 19, 20, 22, 36-40, 48, and 50 under § 101, the
Examiner finds
The claims are directed to the abstract idea of validating that a
person is the true owner of a funding account (e.g. a checking
account) in order to enable the person to authorize future
payments from the account. This is deemed to be abstract first
because such a validation is considered to be a fundamental
economic practice, and second because the steps involved in the
inventions are considered to be a method of organizing human
activities. The additional elements or combination of elements
in the claims other than the abstract idea per se amount(s) to no
more than mere instructions to implement the idea on a
computer.
Viewed as a whole, these additional claim elements do
not provide meaningful limitations to transform the abstract
idea into a patent eligible application of the abstract idea such
that the claims amount to significantly more than the abstract
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Application 10/184,012
idea itself. Therefore, the claims are rejected under 35 U.S.C.
101 as being directed to nonstatutory subject matter.
Ans. 3—5. The Examiner applies this reasoning to all the claims in the
rejection.
Appellants argue that even assuming that the claims are directed to an
abstract idea,
a prima facie case of ineligible subject matter is not
established. . . . [because] the Answer merely states, in a single
conclusory sentence, that “[t]he additional elements or
combination of elements in the claims other than the abstract idea
per se amount(s) to no more than mere instructions to implement
the idea on a computer.”
Reply Br. 3.
We are persuaded that even if the claims are directed to an abstract
idea, the Examiner has not adequately explained why the claims fail to recite
limitations that are “significantly more” than the abstract idea itself. The
Office issued preliminary examination instructions in view of Alice
instructing examiners under “Part 2” of the test to “determine whether any
element, or combination of elements, in the claim is sufficient to ensure that
the claim amounts to significantly more than the abstract idea itself.”4
USPTO Memorandum 3 (“Memo,” issued June 25, 2014). In considering
the claim as a whole, by considering all claim elements both individually
and in combination, the Office provided several examples for consideration
“that may be enough to quality as ‘significantly more’ when recited in a
claim with an abstract idea” such as improvements to another technology
https://www.uspto.gov/sites/default/files/patents/announce/alice_pec_25jun2
014.pdf
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Appeal 2015-001275
Application 10/184,012
of technical field, improvements to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. Id. For instance, the Examiner
does not explain why Appellants’ claimed invention would not be
considered an improvement in the technical field of electronic check
processing, as asserted by Appellants, See Spec. Iff 3—10. Instead, the
Examiner summarily concludes, without any analysis, that the limitations
beyond the abstract idea are “no more than mere instructions to
the idea on a computer.” See Ans. 4.
Accordingly, to the extent that a prima facie case of nonstatutory
subject matter has not been established in the record as articulated by the
Examiner, we reverse the rejection under 35 U.S.C. § 101.
Rejections II & III
Independent claims 19, 40, and 48, and dependent claims 20, 36—38, and 50
Appellants argue independent claims 19, 40, and 48 as a group (see
App. Br. 6—9). We select claim 19 as being representative. The remaining
claims therefore, stand or fall with claim 19. 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed Appellants’ arguments against the Examiner’s
findings and rationale, but we find them unpersuasive as to error in the
rejection. We note the following for emphasis.
Appellants argue that “Templeton fails to establish a prima facie case
of obviousness with respect to claims 19, 40, and 48 at least because
Templeton does not teach or suggest all of the recitations of these claims.”
App. Br. 6. According to Appellants, “[wjhether Templeton teaches or
suggests zero-sum enrollment transactions is the crux of this appeal.” Id.',
see also id. at 8 (“Templeton never once discloses that one or more debit
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Application 10/184,012
transactions should equal one or more credit transactions in value as recited
by the instant claims.”).
We find this argument unpersuasive at least because the test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
teachings of Templeton. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Contrary to Appellants’ assertion supra, the relevant question in considering
obviousness is not whether the claimed invention is different from the prior
art, but rather “whether the difference between the prior art and the subject
matter in question is a difference sufficient to render the claimed subject
matter unobvious to one skilled in the applicable art.” Dann v. Johnston,
425 U.S. 219, 228 (1976).
Templeton is directed to a
method for verifying a financial instrument or a user’s
authorization to use a financial instrument. The system initiates
one or more verifying transactions involving the instrument, with
details that may vary from one transaction to another, such as the
type of transaction (e.g., deposit, credit, debit), amount of the
transaction, number of transactions, the merchant or vendor
name or account for the transaction, and so on.
Templeton, Abstract. Templeton discloses a substantially similar process for
verifying a financial instrument as recited in claim 19. See Templeton,
Fig. 2. The difference between Templeton and the subject matter of
claim 19 is that Templeton does not expressly disclose verifying transactions
wherein the at least one credit is equal in amount to the at least one debit.
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The Examiner determines that this difference is insufficient to render
the claimed subject matter unobvious to one skilled in the applicable art.
The Examiner arrives at this determination because
Templeton teaches wherein the at least one validation transaction
comprises at least one debit from the checking account and at
least one credit to the checking account (Templeton: col 2,
Ins 53-56; col 6, Ins 21-37, note that debits and credit are taught,
and that varying the details of the transaction such as the number
and type of transactions is taught.).
Ans. 7—8
We disagree that “Templeton very nearly teaches away from making
deposit and withdrawal transactions in the same amounts.” App. Br. 8; see
also Reply Br. 4—5. “A statement that a particular combination is not a
preferred embodiment does not teach away absent clear discouragement of
that combination.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371,
1380 (Fed. Cir. 2005). In fact, the Supreme Court made clear that when
considering obviousness, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). In this case, Appellants present no evidence that
the amount of the transactions are in any way functionally related to
performance of the claimed process. In fact, the transaction amounts are
merely viewed by an account holder, and those amounts are inputted as part
of the claimed process to verily that the user is the rightful account owner.
Contrary to Appellants’ teaching away argument, Templeton’s
disclosure that “[cjertain details may vary from one transaction to another,
thereby decreasing the likelihood that the user could guess them. . . .
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Application 10/184,012
Illustrative variable details include number of transactions, type of
transactions (e.g., deposit or withdrawal, debit or credit), amount of the
transaction,” at least suggests Templeton considered both options. See
Templeton 6:24—29. Templeton appears to have considered selecting equal
transaction amounts, as claimed by Appellants, but found that to be less
secure because the user could guess correctly once. In other words,
Templeton determined that using differing transaction amounts would at
least require two correct guesses to be verified—decreasing the likelihood of
fraud. As such, we agree with the Examiner because Appellants do not
present any persuasive argument or technical reasoning to show that the
argued limitation is more than a predictable variation that would have been
obvious, in view of Templeton, to a person of ordinary skill in the art using
no more than the inferences such a person would employ. See Ans. 17.
We are not persuaded, on the present record, of error on the part of the
Examiner. Therefore, we sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claim 19, and independent claims 40 and 48, which
fall with claim 19. We also sustain the rejection of claims 20, 36—38, and
50, which are argued based on their dependence from the independent
claims. See App. Br. 10.
Dependent claim 39
Claim 39 recites, inter alia, “wherein the instructions from the
merchant system that at least one debit from the checking account not
exceed the particular amount originates from the user.” App. Br. 14, Claims
App.
Appellants argue that the citations relied upon by the Examiner do not
explicitly, implicitly, or inherently teach or suggest the recitations of
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Application 10/184,012
claim 39 (see App. Br. 10-11). However, whether the specific instruction as
to the maximum amount of a validation transaction comes from the
merchant or the user does not affect the performance of the claimed process.
As such, the origination of the maximum transaction amount constitutes
non-functional descriptive material that may not be relied on for
patentability. See, e.g., In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(mere informational content of non-functional descriptive material is not
entitled to patentable weight); see also Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative). Therefore, we sustain the rejection of
claim 39.
Dependent claim 22
Appellants argue that claim 22 “depends, either directly or indirectly,
from claim 19, and is therefore believed to be allowable at least by virtue of
its dependence from an allowable base claim.” App. Br. 11. Therefore, we
sustain the rejection of claim 22 for the same reasons discussed above as to
claim 19.
DECISION
The Examiner’s rejection under 35 U.S.C. § 101 is improper.
The Examiner’s rejections under 35 U.S.C. § 103 are proper.
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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