Ex Parte WEINFLASH et al

Patent Trials and Appeals Board

Jun 26, 2019

13326055 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/326,055 12/14/2011 LAURA E. WEINFLASH
20350 7590 06/28/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
90850-827245(002010USNP1) 1094
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURA E. WEINFLASH, JANIS E. SIMM, and JINGHONG QI
Appeal2018-004429
Application 13/326,055 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4--10, 15, 18-22, and 24--28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify Early Warning Services, LLC as the real party in
interest. Appeal Br. 3.
Appeal2018-004429
Application 13/326,055
ILLUSTRATIVE CLAIM
1. A method for detecting unauthorized transfers from an
originating account to a recipient account, wherein the
originating account is held by a customer of a financial
institution and is fraudulently taken over by an unauthorized
person in order to conduct the unauthorized transfer to the
recipient account, and wherein the recipient account is
controlled by the unauthorized person, the method comprising:
receiving, by one or more processors from a plurality of
institutions, account data associated with accounts maintained
by the institutions, wherein the account data includes
characteristics of each account;
storing, by one or more of the processors, the account
data in an account database;
receiving transfer transaction data associated with the
transfer of value from an originating account to a recipient
account, wherein the transaction data includes data identifying
the recipient account and the originating account associated
with the transfer;
analyzing, by one or more of the processors, the account
data stored in the account database for at least one of the
accounts, to determine a risk score for that account as a
recipient account, the risk score reflecting the risk that a
transfer into the recipient account is unauthorized;
when the risk score for the recipient account reflects that
the transfer of value is unauthorized, storing in the account
database, in association with the recipient account, a fraud flag;
monitoring the account database for fraud flags; and
if a plurality of fraud flags are stored in association with
the recipient account arising from transfers from multiple
originating accounts maintained by the same financial
institution, notifying the financial institution maintaining the
multiple originating accounts of possible compromise of
multiple accounts at the financial institution.
2
Appeal2018-004429
Application 13/326,055
REJECTION
Claims 1, 4--10, 15, 18-22, and 24--28 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter. 2
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply'" these basic tools of scientific and technological work.
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under these
judicial exclusions, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
2 The rejection refers to claims 1-10 and 15-28 (Final Action 4), but (in
addition to claims 11-14) claims 2, 3, 16, 17, and 23 had been canceled
previously. See Apr. 20, 2016 Amendment 2-7.
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Appeal2018-004429
Application 13/326,055
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Revised Guidance"). Under the 2019 Revised Guidance, a claim is "directed
to" an abstract idea, only if the claim recites any of ( 1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Id. at 52-55. The considerations
articulated in MANUAL OF PATENT EXAMINING PROCEDURE§ 2106.05(a}-(c)
and ( e }-(h) ("MPEP") bear upon whether a claim element ( or combination
of elements) integrates an abstract idea into a practical application. Id. at 55.
A claim that is "directed to" an abstract idea constitutes ineligible subject
matter, unless the claim recites an additional element ( or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
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Appeal2018-004429
Application 13/326,055
Although created "[i]n accordance with judicial precedent" (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court's Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of§ 101. Id. at 53-54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54--55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element ( or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
In the present Appeal, neither the Examiner nor the Appellants
question the satisfaction of Step 1 of the 2019 Revised Guidance- i.e., that
the claims are drawn to subject matter within the scope of§ 101.
In relation to Step 2A, Prong One, of the 2019 Revised Guidance, the
Examiner addresses claim limitations3 corresponding to the following
limitations of independent claim 1 :
analyzing, by one or more of the processors, the account
data stored in the account database for at least one of the
accounts, to determine a risk score for that account as a
recipient account, the risk score reflecting the risk that a
transfer into the recipient account is unauthorized;
3 The Appellants note that, at page 7 of the Final Office Action, "the
Examiner appears to cite elements of claim 25 [sic] rather than similar
elements of claim 1." Appeal Br. 10. The Examiner's quotation, at page 7
of the Final Office Action, corresponds to claim 28 (not claim 25).
Although the Appellants contend that certain language appearing in claim 1
(but not claim 28) might affect the analysis (Appeal Br. 10), the Appellants
present no such argument.
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Appeal2018-004429
Application 13/326,055
when the risk score for the recipient account reflects that
the transfer of value is unauthorized, storing in the account
database, in association with the recipient account, a fraud flag;
monitoring the account database for fraud flags; and
if a plurality of fraud flags are stored in association with
the recipient account arising from transfers from multiple
originating accounts maintained by the same financial
institution, notifying the financial institution maintaining the
multiple originating accounts of possible compromise of
multiple accounts at the financial institution.
Final Action 7. The Examiner regards these limitations as reciting an
abstract concept described variously as "fraud analysis," "risk detection and
risk mitigation," and "detecting fraud and flagging the account to prevent
unauthorized transfers to it" (id.), as well as "detecting fraud through
analysis and monitoring of account data and transfers between them and
flagging the account to prevent additional unauthorized transfers to it"
(Answer 3). Indeed, the identified concept corresponds to a fundamental
economic practice - a variety of"[ c ]ertain methods of organizing human
activity" acknowledged in the 2019 Revised Guidance as a form of ineligible
judicial exception to patent eligibility. See 2019 Revised Guidance, 84 Fed.
Reg. at 52. Similar concepts have been recognized as abstract ideas-for
example, as in Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1094 (Fed. Cir. 2016) ("collecting and analyzing information to detect
misuse and notifying a user when misuse is detected").
The Appellants argue that the Examiner describes the claimed subject
matter "at an impermissibly high level abstraction and also does not
properly reflect the concept recited in the claims." Appeal Br. 8. See also
id. at 8-11. Yet, "[a]n abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
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Appeal2018-004429
Application 13/326,055
(Fed. Cir. 2016). Moreover, the Examiner's characterization is consistent
with FairWarning and the 2019 Revised Guidance. Accordingly, the
rejection adequately shows that claim 1 recites an abstract idea, pursuant to
Step 2A, Prong One, of the 2019 Revised Guidance.
With regard to Step 2A, Prong Two, of the 2019 Revised Guidance,
unless a claim, reciting a judicial exception (such as an abstract idea),
"integrates the recited judicial exception into a practical application of that
exception," the claim is "directed to" the judicial exception. 2019 Revised
Guidance, 84 Fed. Reg. at 53. The analysis of such an "integration into a
practical application" involves "[i]dentifying ... any additional elements
recited in the claim beyond the judicial exception( s )" and "evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application." Id. at 54--55.
"[W]hether an additional element or combination of elements integrate the
exception into a practical application should be evaluated on the claim as a
whole." Id. at 55 n.24.
The Appellants articulate positions that concern whether there might
be additional elements of claim 1 that integrate the identified abstract idea
into a practical application, per Step 2A, Prong Two. According to the
Appellants:
[T]he Examiner's analysis does not consider the background
feature directed to originating accounts being fraudulently taken
over ( as recited in the preamble) and the recited receipt of data
from a plurality of institutions (for being analyzed for risk and
fraud flags), which is important to the concept of detecting
compromise of multiple originating accounts that may result in
unauthorized transfer to a recipient account ( e.g., at another
institution). See Specification, paragraphs 0013, 0016 and
0021.
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Appeal2018-004429
Application 13/326,055
Appeal Br. 11. See also id. at 9-10. However, the Examiner's consideration
of the claim limitations referenced above ( which describe the identified
abstract idea) include the features that the Appellants discuss. Therefore, the
Appellants do not identify additional elements, within the meaning of the
2019 Revised Guidance. Step 2A, Prong Two, concerns "additional
elements recited in the claim beyond the judicial exception( s)." 2019
Revised Guidance, 84 Fed. Reg. at 54--55. Moreover, the elements that the
Appellants describe do "no more than generally link the use of a judicial
exception to a particular technological environment or field of use." Id. at
55. See Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) ("[T]he prohibition
against patenting abstract ideas 'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant postsolution activity"') (quoting Diamond v. Diehr,
450 U.S. 175, 191-92 (1981)). Accordingly, we are not persuaded of error
regarding the aspects of the rejection corresponding to Step 2A, Prong Two,
of the 2019 Revised Guidance.
With regard to issues that correspond to Step 2B of the 2019 Revised
Guidance, the Appellants contend:
[T]he independent claims recite the specifically recited
computer implemented operations ( as described above)
involving receiving account data and transfer transaction data
from "a plurality of institutions," storing the account data in "an
account database," storing in the account database "a plurality
of fraud flags ... in association with the recipient account
arising from [ unauthorized] transfers from multiple originating
accounts maintained by the same financial institution," and
monitoring and use of such a plurality of fraud flags to alert the
same financial institution of "possible compromise of multiple
accounts at the financial institution" as a result of system
breach.
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Appeal2018-004429
Application 13/326,055
Taken together, all of these foregoing features of the
independent claims are clearly "more than a generic computer
to perform generic computer functions," and even more
importantly, they recite "specific limitations other than what is
well-understood, routine and conventional activities previously
known in the industry" (see Interim Guidance, 79 Fed. Reg.
page 74,624).
Appeal Br. 18.
Yet, in the effort to demonstrate the existence of additional elements
that amount to significantly more than the abstract concept at issue, the
Appellants again refer to the limitations that the Examiner cites as describing
the abstract concept itself. See Final Action 7. Accordingly, the Appellants
do not rely upon "additional elements" in attempting to establish
significantly more than the identified abstract idea. Notably, "it has been
clear since Alice that a claimed invention's use of the ineligible concept to
which it is directed cannot supply the inventive concept that renders the
invention 'significantly more' than that ineligible concept." BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Accordingly, we are not persuaded of error in the rejection of
independent claim 1-or any of the other claims 4--10, 15, 18-22, and 24--
28, as no claim is argued separately- such that we sustain the rejection
under 35 U.S.C. § 101.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 4--10, 15,
18-22, and 24--28 are rejected 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).
AFFIRMED
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