Ex Parte Thomas

Patent Trial and Appeal Board

Jun 18, 2018

12756346 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/756,346 04/08/2010
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
06/20/2018
FIRST NAMED INVENTOR
Tracey R. Thomas
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.
5109-LPV-0017 1473
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TRACEY R. THOMAS
Appeal2017-002936
Application 12/756,346
Technology Center 3600
Before THU A. DANG, JOHN A. EV ANS, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1, 3-10, 22, 24--28, and 30-34, i.e., all pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as Gula Consulting Limited
Liability Company. App. Br. 2.
Appeal2017-002936
Application 12/756,346
STATEMENT OF THE CASE
The Invention
According to the Specification, the "invention relates generally to
money management, and more particularly, to the hierarchical distribution of
income among a user's savings account and a user's debts, wherein the
distribution may include various forms of transferring funds." Spec. ,r 2. 2
The Specification explains that a system "provides recommendations related
to the prioritization of paying certain bills and the amount to pay for each
bill based upon, for example, savings goals, [a] community
recommendation, minimizing penalties/fees associated with [a] user's debts,
minimum amounts due, due dates and available income," and then the
system and/or the user "determine[s] a payment hierarchy." Abstract.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A method comprising:
receiving, by a computer-based system, financial
information relating to a user, wherein the financial information
includes information relating to a plurality of debt obligations
of the user and income information corresponding to the user;
determining, by the computer-based system, a proposed
payment hierarchy based on the received financial information;
the computer-based system receiving first web-based
community information gathered from one or more websites;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed April 8, 2010; "Final Act." for the Final Office Action,
mailed February 19, 2016; "App. Br." for the Appeal Brief, filed August 19,
2016; "Ans." for the Examiner's Answer, mailed October 20, 2016; and
"Reply Br." for the Reply Brief, filed December 19, 2016.
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Application 12/756,346
the computer-based system applying an artificial
intelligence tool to the first web-based community information
and to additional community information gathered from one or
more data sources to produce modified community information,
wherein applying the artificial intelligence tool
includes the computer-based system updating a machine-
readable knowledge base,
wherein the additional community information
includes information relating to a plurality of other users,
wherein the modified community information
includes one or more assessments of the proposed
payment hierarchy received from one or more of the
plurality of other users who have been determined, via an
objective analysis using a predetermined algorithm, to
share one or more particular financial characteristic
criteria with the user,
wherein the modified community information
produced via the application of the artificial intelligence
tool excludes data from at least one of the other users
who does not meet the one or more particular financial
characteristic criteria;
based on the modified community information produced
from applying the artificial intelligence tool, the computer-
based system determining a final payment hierarchy at least
partially based on the one or more assessments, wherein the
final payment hierarchy specifies a savings amount of the user,
a timing for transferring the savings amount to an account of
the user, and timings for paying one or more of the plurality of
debt obligations; and
the computer-based system transmitting the final
payment hierarchy to a web browser of the user via an
encrypted communication channel.
App. Br. 19--20 (Claims App'x).
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The Rejection on Appeal
Claims 1, 3-10, 22, 24--28, and 30-34 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 3-6.
ANALYSIS
We have reviewed the rejection in light of Appellant's arguments that
the Examiner erred. For the reasons explained below, we concur with the
Examiner's conclusion concerning ineligibility under§ 101. We adopt the
Examiner's findings and reasoning in the Final Office Action (Final Act. 3-
6) and Answer (Ans. 2-3). We add the following to address and emphasize
specific findings and arguments.
The§ 101 Rejection of Claims 1, 3-10, 22, 24-28, and 30-34
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981 ). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, "determine whether the claims at issue are directed to" a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
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"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F .3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Under step two, "an inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE
The Examiner determines that claim 1 is directed to the abstract idea
of "debt elimination strategies," in particular, "determining a proposed
payment hierarchy, receiving web-based community information, applying
an artificial intelligence tool and determining a final payment hierarchy."
Final Act. 3. The Examiner explains that the abstract idea resembles
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"certain methods of organizing human activity ... determined by the courts
to be abstract ideas." Id. at 3--4.
Appellant disputes the Examiner's determination and argues that "the
claims can better be characterized as a specific software and/or hardware
based solution in the realm of automated bill payment technologies." App.
Br. 9. Appellant also argues that the Examiner generalizes claim features
"to an arbitrary degree" and "is not addressing the actual claim language."
Reply Br. 2-3.
Appellant's arguments do not persuade us of Examiner error because
the Examiner accurately assesses claim 1 's "focus" and its "character as a
whole." See Elec. Power Grp., 830 F.3d at 1353; Final Act. 3--4. We agree
with the Examiner that claim 1 encompasses a method of organizing human
activity. Final Act. 3--4.
Claim 1 recites a series of steps for generating and communicating a
payment plan. App. Br. 19-20. The claimed series of steps resembles the
claimed "series of steps instructing how to hedge risk" in a commodities
marketinBilskiv. Kappas, 561 U.S. 593,599 (2010). InAlice, the Supreme
Court explained that the claims in Bilski concerned a method of organizing
human activity. Alice, 134 S. Ct. at 2356; see also Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)
( deeming the claim at issue "not meaningfully different from the ideas found
to be abstract in other cases before the Supreme Court and our court
involving methods of organizing human activity").
In addition, claim 1 covers data collection, manipulation, and
communication. App. Br. 19-20 (Claims App'x). The Federal Circuit has
ruled that claims covering data collection, manipulation, and communication
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were directed to abstract ideas. See, e.g., SAP Am., Inc. v. Investpic, LLC,
No. 2017-2081, 2018 WL 2207254, at *2, 4--5 (Fed. Cir. May 15, 2018);
Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1368-73
(Fed. Cir. 2017); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1047, 1054--56 & n.6 (Fed. Cir. 2017); Elec. Power Grp., 830 F.3d
at 1351-54.
MAYO/ALICE STEP Two
The Examiner determines that claim 1 includes additional elements
for collecting, manipulating ( analyzing/filtering), and communicating data.
Final Act. 4; see Ans. 2. The Examiner also determines that: (1) the
additional elements are not "sufficient to amount to significantly more than
the judicial exception because the limitations of the claim[] do not improve
another technology or technical field or the functioning of the computer
itself'; and (2) "there are no meaningful limitations beyond generally linking
the use of the abstract idea to a particular technological environment." Final
Act. 4--6; see Ans. 2-3.
Appellant quotes a May 2016 Memorandum from Deputy
Commissioner Bahr ("May 2016 Update") that provides examination
instructions, i.e., "it is particularly critical to address the combination of
additional elements, because while individually-viewed elements may not
appear to add significantly more, those additional elements when viewed in
combination may amount to significantly more than the exception by
meaningfully limiting the judicial exception." App. Br. 9-10 (quoting
May 2016 Update 3) (emphasis omitted). Appellant then contends that the
Examiner "neglects to address a substantial majority of the language of the
claim, and thus fails to account for the claim language as a whole, as the
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Office requires." Id. at 10. Further, Appellant asserts that the Examiner
"fails to provide a reasoned explanation that supports the conclusion that the
additional elements individually and in combination with each other are
'well-understood, routine, conventional elements."' Id. at 11; see Reply
Br. 2-3.
Appellant's arguments do not persuade us of Examiner. As additional
elements, claim 1 recites "a computer-based system," "a machine-readable
knowledge base," "a web client of a user computing device," and
"an encrypted communications channel." App. Br. 19-20 (Claims App'x).
The Examiner finds that "the claimed computer/ system is a general use
computer and the claimed processes may be practiced on any computer so
programmed." Final Act. 6; see Spec. ,r,r 139, 142, 144--150. Further, the
Specification demonstrates that the additional elements are conventional to a
skilled artisan. See, e.g., Spec. ,r,r 142, 148-149, 152-153, 163-164, 209.
The Specification explains that: (1) a "machine-readable knowledge
base stores knowledge in a computer-readable form"; and (2) "one of skill in
the art will recognize" that "a knowledge based system may comprise an
artificial intelligence tool working to provide intelligent decisions with
justification." Spec. ,r 209. The Specification cites a textbook concerning
knowledge-based systems, i.e., Rajendra A. Akerkar and Priti S. Sajja,
Knowledge-Based Systems (2009). Id.
The Specification describes a "web client" as: (1) "any hardware
and/or software suitably configured to facilitate input, receipt and/or review
of any information" discussed in the Specification; (2) "any device ( e.g.,
personal computer, mobile device, phone, etc.) which communicates via any
network"; and (3) "any suitable personal computer, network computer,
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workstation, personal digital assistant, cellular phone, smart phone,
minicomputer, mainframe or the like." Spec. ,r,r 148-149. The
Specification notes that a "web client" may include "conventional" software
"typically associated with computers." Id. ,r 149.
The Specification describes a "user computing device" as a
"computing unit in the form of a personal computer" and "computing units"
including "laptops, notebooks, hand held computers, set-top boxes, cellular
telephones, touch-tone telephones and the like." Spec. ,r 164; see id. ,r 148.
The Specification notes that a "user computer" may include a commercially
available operating system and "conventional" software "typically
associated with computers." Id. ,r 152.
Further, the Specification explains that "the present invention" may
employ: (1) a wide variety of commonly used "communication channels,
such as, for example, a telephone network, an extranet, an intranet, Internet,
point of interaction device (point of sale device, personal digital assistant,
cellular phone, kiosk, etc.), online communications, off-line
communications, wireless communications, transponder communications,
local area network (LAN), [and] wide area network (WAN)"; and (2) "any
number of conventional techniques for data transmission, signaling, data
processing, network control, and the like." Spec. ,r,r 153, 163; see id. ,r 142.
The Specification notes that "information related to the protocols, standards,
and application software utilized in connection with the Internet is generally
known to those skilled in the art." Id. ,r 153. The Specification cites three
textbooks concerning "cryptography and network security": (1) Bruce
Schneier, Applied Cryptography: Protocols, Algorithms, and Source Code
in C (2d ed. 1996); (2) Jonathan Knudson, Java Cryptography (1998); and
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(3) William Stalling, Cryptography and Network Security: Principles and
Practice (3d ed. 1999). Id. ,r 163.
Court decisions have recognized that generic computer components
operating to collect, manipulate, and communicate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 134 S. Ct.
at 2360; SAP Am., 2018 WL 2207254, at *2, 6; Intellectual Ventures Iv.
Symantec Corp., 838 F.3d 1307, 1318-20 (Fed. Cir. 2016); Versata Dev.
Grp., Inc. v. SAP Am., Inc.,793 F.3d 1306, 1334 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d. 709, 715-16 (Fed. Cir. 2014);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014);
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 993
(Fed. Cir. 2014).
Appellant also contends that "the fact that no prior art rejections have
been advanced against the claims" demonstrates that "the claims as a whole
are novel and nonobvious, and therefore not 'conventional."' App. Br. 11
( emphasis omitted). According to Appellant, to the extent claim 1 recites
"claim elements [that] are novel and non-obviousness, the claim elements
are similarly non-conventional and non-generic." Id. at 12 (emphasis
omitted). Further, Appellant asserts that claim 1 "provides an improvement
in the technological field of computer-based automatic bill payment
systems." Id. at 12-13.
Appellant's arguments do not persuade us of Examiner error. "The
search for a § 101 inventive concept is ... distinct from demonstrating § 102
novelty." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016); see Diehr, 450 U.S. at 188-89; Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
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"[U]nder the Mayol Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016). "[A] claim for a new abstract idea is still an abstract idea."
Synopsys, 839 F.3d at 1151. Similarly, a claim for a beneficial abstract idea
is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379--80 (Fed. Cir. 2015). Further, the Federal Circuit has
expressly rejected the notion that "abstract ideas remain patent-eligible
under § 101 as long as they are new ideas, not previously well known, and
not routine activity." Ultramercial, 772 F.3d. at 714--16; see Ans. 2 (citing
Ultramercial, 772 F.3d. at 716).
Thus, claim 1 's alleged novelty, nonobviousness, and benefits fail to
provide an "inventive concept" needed to satisfy Mayo/Alice step two. As
the Examiner determines, the claimed subject matter does not "improve
another technology or technical field or the functioning of the computer
itself." Final Act. 5---6.
Moreover, claim 1 automates steps for generating a payment plan. 3
See Ans. 2. The "mere automation of manual processes using generic
3 In the event of continued prosecution, the Examiner should consider (1) the
applicability of 35 U.S.C. § 112 ,r 6 to the limitations in the computer-
readable medium claims and (2) whether under 35 U.S.C. § 112 ,r 2 the
Specification discloses adequate corresponding structure, e.g., a suitable
algorithm, for accomplishing the functions assigned to each limitation, e.g.,
the "determining a proposed payment hierarchy" limitation. See, e.g.,
Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341, 1349--50
(Fed. Cir. 2016); Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348-54
(Fed. Cir. 2015) (en bane in relevant part); EON Corp. IP Holdings LLC v.
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computers does not constitute a patentable improvement in computer
technology." Credit Acceptance, 859 F.3d at 1055.
Appellant further "asserts that the present claims do not preempt the
alleged abstract idea" and "do not preempt every possible computer-based
system that is directed to 'debt elimination strategies."' App. Br. 13-14
(citing BASCOM, 827 F.3d at 1352).
Appellant's assertions do not persuade us of Examiner error. See
Ans. 3 (addressing preemption). While preemption may denote patent
ineligibility, its absence does not demonstrate patent eligibility. See
FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016). For claims covering a patent-ineligible concept, preemption concerns
"are fully addressed and made moot" by an analysis under the Mayol Alice
framework. Ariosa, 788 F.3d at 1379.
BASCOM does not help Appellant. There, the claims recited a
"specific method of filtering Internet content" requiring "the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user." BASCOM,
827 F.3d at 1345--46, 1350. The Federal Circuit reasoned that the claims
covered "a technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems" and
AT&T Mobility LLC, 785 F.3d 616, 624 (Fed. Cir. 2015). Where a means-
plus-function limitation recites two or more functions, the specification
"must disclose adequate corresponding structure to perform all of the
claimed functions." Media Rights Techs., Inc. v. Capital One Fin. Corp.,
800 F.3d 1366, 1374 (Fed. Cir. 2015); see Williamson, 792 F.3d at 1351-52;
see also Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1318-19 (Fed. Cir.
2012) (means-plus-function limitation specifying two functions).
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"improve[s] an existing technological process." Id. at 1351 (citing Alice,
134 S. Ct. at 2358); see Alice, 134 S. Ct. at 2358 (explaining that "the claims
in Diehr were patent eligible because they improved an existing
technological process").
In contrast to BASCOM, the claims here do not cover a technology-
based solution that improves an existing technological process. See Final
Act. 5---6. Among other things, they do not require any unconventional
network configurations or any uncommon communications. "[C]laiming the
improved speed or efficiency inherent with applying the abstract idea on a
computer" does not "provide a sufficient inventive concept." Intellectual
Ventures, 792 F.3d at 1367.
Based on BASCOM, Appellant asserts that "[t]he Federal Circuit uses
a preemption analysis in determining that the claims at issue recite
significantly more than the alleged abstract idea." Reply Br. 3--4. We
disagree.
In BASCOM, the Federal Circuit discussed certain cases cited by the
parties where the claims preempted all use of the claimed abstract idea on
the Internet or on generic computer components performing conventional
activities. BASCOM, 827 F.3d at 1352. But that discussion does not mean
that the Federal Circuit uses a preemption analysis to determine patent
eligibility. Instead, the court has explained that for claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa, 788 F.3d
at 1379; see FairWarning, 839 F.3d at 1098.
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SUMMARY FOR INDEPENDENT CLAIM 1
For the reasons discussed above, Appellant's arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
claim 1.
INDEPENDENT CLAIMS 22 AND 28 AND
DEPENDENT CLAIMS 3-10, 24--27, AND 30-34
Appellant does not argue patentability separately for independent
claims 22 and 28 or dependent claims 3-10, 24--27, and 30-34. App.
Br. 7-14; Reply Br. 2--4; see In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ( explaining that the applicable rules "require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion" of patentability). Because Appellant does not argue the
claims separately, we sustain the § 101 rejection of claims 3-10, 22, 24--28,
and 30-34 for the same reasons as claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision to reject claims 1, 3-10, 22, 24--
28, and 30-34 under 35 U.S.C. § 101.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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