Ex Parte Thomas et al

Patent Trial and Appeal Board

Aug 8, 2018

12917396 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/917,396 11/01/2010
83082 7590 08/10/2018
Vista IP Law Group LLP / Intuit Inc.
100 Spectrum Center Drive
Suite 900
Irvine, CA 92618
FIRST NAMED INVENTOR
Maria G. 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.
INT-074-2-USl (115582) 1424
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/10/2018 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):
gdl@viplawgroup.com
jll@viplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA G. THOMAS, MICHAEL J. TRETOLA,
KAREN J. BARSON, and ARIEN C. FERRELL
Appeal2017-004652
Application 12/917,396 1
Technology Center 3600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-13, 15-19, 21-30, and 47-53. Claims 5,
14, 20, and 31--46 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The present invention is a "[ c ]heck fraud protection method in which
[a] customer is automatically enrolled in check fraud protection service"
1 Appellants identify the real party in interest as "Intuit Inc." App. Br. 2.
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Application 12/917,396
(Abst.) and which "[d]etermin[es] whether the check is covered [based on
whether a certain] indicator is printed on the check" (Spec. ,r 8). Claim 1 is
reproduced below.
1. A computer-implemented check fraud protection method,
compnsmg:
an intermediate computer, hosted by a provider of a fraud
protection service and being in communication with a computer
of a check printer through a network, receiving an order to print
checks for a customer that has a first checking account at a
financial institution;
the intermediate computer transmitting a request for printing of
the checks for the first checking account per the order to the
check printer computer through a network;
the intermediate computer automatically enrolling the order of
printed checks into a fraud protection service, each check of the
order being covered by the fraud protection service without
requiring the customer to separately subscribe to the fraud
protection service;
the intermediate computer receiving a request from the customer
to be reimbursed for fraudulent activity that occurred and that
involved a check printed per the order and that resulted in a
financial loss to the customer;
the intermediate computer determining whether the check is
covered by the check fraud protection service in response to the
request based at least in part upon whether a first enrollment
indicator is printed on the check that was involved in the
fraudulent activity,
the first enrollment indicator being encoded with
enrollment data, wherein a first pre-determined segment
of the first enrollment indicator is encoded with data of the
customer,
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Application 12/917,396
a second pre-determined segment of the first enrollment
indicator, which is orthogonal relative to the first pre-
determined segment, is encoded with data about the
customer's first checking account, and
a third, diagonal pre-determined segment of the first
enrollment indicator is encoded with data indicating
whether the check is covered under the check fraud
protection service,
determining whether the check is covered by the check
fraud protection service comprising the intermediate
computer decoding the first enrollment indicator to
determine the enrollment data and whether the check is
covered by the check fraud protection service; and
when the intermediate computer determines that the check is
covered by the check fraud protection service, the intermediate
computer transmitting a claim for reimbursement for the
financial loss to the financial institution for the financial
institution to reimburse the customer, the customer retaining
exclusive right of recovery from the financial institution at all
times during processing of the claim such that neither the
provider nor a printer of the checks has any right at any time
during processing of the claim to any portion of any payment
made by the financial institution to the customer.
App. Br. 37-38 (Claims Appendix).
REJECTIONS
Claims 1--4, 6-13, 15-19, 21-30, and 47-53 are rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
PRINCIPLES OF LAW
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
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CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
"abstract ideas" category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice, 134 S. Ct. at 2354--55 (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. There is no definitive rule to
determine what constitutes an "abstract idea." Rather, the Federal Circuit
has explained that "both [it] and the Supreme Court have found it sufficient
to compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-eligible under § 101, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided"). The Federal Circuit also noted that
"examiners are to continue to determine if the claim recites (i.e., sets forth or
describes) a concept that is similar to concepts previously found abstract by
the courts." Amdocs, 841 F.3d at 1294 n.2 (internal citation omitted).
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If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the
second step is to "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."' Id. (quoting Mayo, 566 U.S. at 73). Mere use of
computers, even in conjunction with other hardware, does not alone
transform an abstract idea to significantly more. See, e.g., Content
Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (patent-ineligible claims requiring a computer and scanner);
CLS Bankint'l v. Alice Corp. Pty., 717 F.3d 1269, 1286 (Fed. Cir. 2013)
("[S]imply appending generic computer functionality to lend speed or
efficiency ... does not meaningfully limit claim scope for purposes of patent
eligibility."), ajf'd by Alice.
ANALYSIS
Claim 1 is representative. See 37 C.F.R. 4I.37(c)(l)(iv)
(representative claims). We are not persuaded the Examiner erred in
rejecting claim 1.
A. Alice's First Step
Appellants argue the Examiner fails to explain how the claim
elements map to patent-ineligible concepts and particularly to
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judicially-recognized abstract ideas. App. Br. 16-23; Reply Br. 1-2, 10-26.
We are not persuaded of error.
The Examiner finds claim 1 is directed to the abstract idea of
"providing a customer of a financial institution with protection coverage in
the event of financial loss experienced by the customer resulting from usage
of a financial product [in an automated manner.]" Final Act. 3--4; Ans. 4. 2
The Examiner finds this idea similar to other concepts that have been
identified by the courts as abstract, such as fundamental economic
principles, certain methods of organizing human activity, and an idea of
itself. Final Act. 4; Ans. 4 (citing, inter alia, buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014), Bancorp Servs., L.L.C. v. Sun life Assurance
Co. of Can. (US.), 687 F.3d 1266 (Fed. Cir. 2012)). In the Answer, the
Examiner further maps individual claim elements to judicially-recognized
abstract ideas (Ans. 4--15) including: "handling insurance-related
information" in Accenture Global Services, GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (id. at 4); "collecting and
comparing known information" in Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (id.); and "data collection,
recognition, and storage" in Content Extraction, 776 F.3d at 1347 (Fed. Cir.
2014) (id.). The Examiner finds only the recited computer devices are
"additional elements," i.e., not abstract ideas. Ans. 17-18.
2 The Answer does not include page numbers. We reference the pages as
starting with the cover sheet, stating "Examiner's Answer (not the prior
Form PTOL-90A), as the first page, i.e., page one.
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We agree that all claim elements are directed to collecting,
recognizing, and comparing data to provide an insurance service. Claim 1 is
generally directed to an insurance provider that receives an order for checks
from a customer, transmits a request for the checks to the check printer,
automatically enrolls the checks into the fraud protection service, receives
the customer's request for reimbursement for fraudulent use of one of the
checks, determines the check is insured/ covered by decoding a printed
enrollment indicator on the check, and transmits a claim for reimbursement
to the bank of the check on behalf of the customer. Having considered these
steps individually and the claim as a whole, we agree with the Examiner's
finding that it is directed to the abstract idea of "providing a customer ...
with protection coverage in the event of financial loss ... resulting from [the
covered] product" and collecting, recognizing, and comparing data for that
purpose. Ans. 4.
We also agree the claim elements sufficiently correspond to the
patent-ineligible concepts of Accenture, Classen, and Content Extraction.
The claim elements are, for example, analogous to Accenture 's "tasks to be
performed in an insurance organization, ... an insurance transaction, ...
claimants and an insured person[,] ... determining tasks to be completed
upon an occurrence of an event[, and] an assigned claim handler to
... achieve an insurance related goal[.]" Accenture, 728 F.3d at 1338 (claim
1 ). They are also analogous to Accenture 's processing of "information
related to the insurance transaction," such as "providing [the] information"
and "trigger[ing] ... events associated with ... the information[.]" Id.
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Appellants further argue "the Answer is confusing at best and fails to
provide sufficient notice to Appellant to respond." Reply Br. 18-19. The
argument mischaracterizes the notice requirement of 35 U.S.C. § 132. See
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (explaining the notice
requirement). The notice requirement is unmet if the rejection is "so
uninformative" it cannot be addressed. Id. Nothing more than the
Examiner's above-explained findings, however, are needed to understand
and counter the rejection. Appellants could have but did not, for example,
substantively dispute that "a similar or parallel descriptive nature can be
seen" between claim 1 and the above abstract ideas. Amdocs, 841 F.3d at
1294.
Appellants further argue that the claims cannot be directed to an
abstract idea because they "involve printed checks (physical objects) and an
enrollment indicator (a physical object) printed thereon." App. Br. 19-21;
Reply Br. 12-15. Even claims that involve the processing of physical
objects like checks, however, may be directed to an abstract idea. See
Datatreasury Corp. v. Fidelity National Information Servs., 669 F. App'x
572 (Oct. 13, 2016) (affirming, under Rule 36, Final Written Decisions in
CBM2014-00020 and CBM2014-00021, which held claims directed to
capturing images of paper checks and processing them to be unpatentable
under 35 U.S.C. § 101).
B. Alice's Second Step
Appellants argue the Examiner fails to explain why the claimed
computer devices and functions do not, in combination with the other claim
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elements, amount to significantly more than the applied abstract ideas. App.
Br. 23-30; Reply Br. 32-34. We are not persuaded.
The Examiner finds the claimed computer devices are "additional
elements" (i.e., not abstract ideas) that perform only "basic functions of
storing (encoding) data and/or information [and] processing (transmitting a
request, determining enrollment, decoding data)." Ans. 17. The Examiner
also states, correctly, that "[ m Jere recitation of generic computer functions is
not enough to save a claim that is directed to an abstract idea." Id.; accord
CLS Bank Int 'l, 717 F.3d at 1286 ("simply appending generic computer
functionality to lend speed or efficiency" does not impart patent eligibility).
We agree the claimed computer devices and functions are "basic" and
do not add significantly more to the claimed abstract ideas of collecting,
recognizing, and comparing data to handle insurance tasks and information.
There is no indication that, beyond the above abstract ideas, the claimed
computer devices provide more than "well-understood, routine, conventional
activit[ies]." Alice, 134 S. Ct. at 2359 (quoting Mayo, 566 U.S. at 73). For
example, there is no indication that the structure of the claimed enrollment
indicator3 provides a "technical detail ... to solve a specific problem."
Secured Mail Solutions LLC v. Universal Wilde, Inc, 873 F.3d 905, 912
(Fed. Cir. 2017).
3 The Examiner found claim 1 allowable, over the prior art, in response to
Appellants' requested Examiner's Amendment adding the segment
structures to the enrollment indicator (adding the "pre-determined
segments"). See App. Br. 32-33; Notice of Allowability, June 10, 2014, p.
14 (presenting amendment); Interview Summary, June 14, 2014 (requesting
amendment).
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Appellants also argue the structure of the claimed enrollment indicator
in claim 1 constitutes a technological improvement. App. Br. 30-31; Reply
Br. 27-29. Appellants present no evidence, however, of a technological
improvement. Id. The Federal Circuit instructs in Secured Mail that, absent
evidence of a technological improvement, such an indicator is directed to the
abstract idea of communicating about an object (via a printed mark). 873
F.3d at 909. Secured Mail explains:
Secured Mail's patents are not directed to an improvement in
computer functionality. For example, the claims are not directed
to a new barcode format, an improved method of generating or
scanning barcodes, or similar improvements in computer
functionality.
The fact that an identifier can be used to make a process more
efficient . . . does not necessarily render an abstract idea less
abstract.
Id. at 910. Even when evaluating a mark with a two-dimensional structure
(id. at 907 (QR code)), Secured Mail found the "method is not limited to any
particular technology of generating, printing, or scanning a barcode [but
rather] directed to the abstract process of communicating information ...
using a personalized marking" (id. at 911). In view of Secured Mail, we find
the claimed enrollment indicator is not a "technological improvement"
because it does not improve conventional barcodes.
Finally, Appellants argue that "the claims clearly do not preempt all
'check fraud protection' methods or all encoding and decoding methods,
which is yet another factor supporting the conclusion that the claims recite
patent eligible subject matter." App. Br. 34. Even if claim 1 does not cover
all check fraud protection methods, however, "the absence of complete
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preemption does not demonstrate patent eligibility." FairWarning IP LLC v.
Iatric Systems, Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract."). Where, as here, "a patent's claims are deemed
only to disclose patent ineligible subject matter under the [Alice] framework
... preemption concerns are fully addressed and made moot." Ariosa, 788
F.3d 1379.
C. Conclusion
We are unpersuaded of error in the rejection of claims 1--4, 6-13, 15-
19, 21-30, and 47-53 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 6-13, 15-19,
21-30, and 47-53.
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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