Ex Parte Weinflash et al

Patent Trials and Appeals Board

Jun 27, 2019

13213975 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/213,975 08/19/2011
20350 7590 07/01/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Laura Weinflash
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.
90850-795996 (002200US) 9310
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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 WEINFLASH, DAWN MEL VIN, TOM MCLAUGHLIN,
JANIS E. SIMM, CHRISTOPHER E. SWECKER, and
LUCIUS L. LOCKWOOD1
Appeal 2018-001209
Application 13/213,975
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BART A. GERSTENBLITH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the rejection
of claims 1-49 and 53-58, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 According to the Appellants, the real party in interest is Early W aming
Services, LLC. (App. Br. 3).
Appeal 2018-001209
Application 13/213,975
THE INVENTION
The Appellants' claimed invention is directed to systems and methods
for locating and accessing assets, such as accounts (Spec., para. 7). Claim 1,
reproduced below with the italics added, is illustrative of the subject matter
on appeal.
1. A computer-implemented method for a third party
requester to locate accounts of an account holder, comprising:
providing a database;
storing, in the database, account data for accounts maintained
at a plurality of different institutions, the account data for each
respective account comprising at least a personal identifier for an
account holder of that respective account that is separate from an
account identifier of that respective account;
receiving, by one or more processors from a third party
requester, a request to locate an account of the account holder, the
request including a submitted personal identifier of the account
holder;
locating, by one or more of the processors, an account, at any
of the institutions by matching the submitted personal identifier to the
personal identifier stored in the database for the located account;
retrieving, by one or more of the processors, at least some of
the account data for the located account; and
providing, by one or more of the processors, the retrieved
account data to the third party requester.
THE REJECTION
The following rejection is before us for review:
Claims 1-49 and 53-58 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Application 13/213,975
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 7; Reply Br. 2). The
Appellants argue further that the claim is "significantly more" than the
alleged abstract idea (App. Br. 9-12; Reply Br. 3-5).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 3-17; Ans. 2-16).
We agree with the Examiner. An invention is patent eligible if it
claims a "new and useful process, machine, manufacture, or composition of
matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bank Int'!, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice,
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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573 U.S. at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
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Id. (internal citation omitted) ( citing Benson and Flook); see, e.g., id. at 187
("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
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Application 13/213,975
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
Here, the Examiner has determined that the claim is directed to the
concept of receiving, locating, and providing account data which is a
fundamental economic practice and therefore an abstract idea (Ans. 4). The
Examiner has also determined that the claimed steps translate to collecting,
locating, and providing data, which are also an idea in itself and directed to
an abstract idea. Id. We substantially agree with the Examiner in this regard
as claim 1 is directed to the steps in italics in the claim above. These steps
are directed to the concept of receiving account data and providing that data
in response to a request for the account data which is a fundamental
economic practice and an abstract concept. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting information,
analyzing it, and displaying results from certain results of the collection and
analysis was held to be an abstract idea). Courts have found claims directed
to collecting, recognizing, and storing data in a computer memory to be
directed to an abstract idea. Content Extraction and Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014). In
Intellectual Ventures I LLC v. Capital One Financial, 850 F.3d 1332, 1340
(Fed. Cir. 2017), it was held that collecting, displaying, and manipulating
data was directed to an abstract idea. The Appellants, in the Appeal Brief at
page 7, cite to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), to show that the claim is not abstract, but the claims in Enfish were
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Application 13/213,975
not similar in scope to those here and were, in contrast, directed to a self-
referential data table.
The Appellants, in the Appeal Brief at page 7, also cite to McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), but
the claims in that case are distinguished from this case in being directed to
rules for lip sync and facial expression animation.
Thus, we consider the claim to be directed to an abstract idea as
identified above.
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
"transform" the abstract nature of the claim into a patent-eligible application.
The claim does not improve computer functionality, improve another field or
technology, utilize a particular machine, or effect a physical transformation.
Rather, we determine that nothing in the claim imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort to
monopolize the judicial exception.
For example, in claim 1 the steps of [ 1] "providing a database";
[2] "storing, in the database, account data for accounts maintained at a
plurality of different institutions"; [3] "receiving ... a request to locate an
account of the account holder"; [4] "locating, by one or more of the
processors, an account, at any of the institutions by matching the submitted
personal identifier to the personal identifier"; [5] "retrieving, by one or more
of the processors, at least some of the account data for the located account";
and [ 6] "providing, by one or more of the processors, the retrieved account
data to the third party requester," are merely conventional steps performed
by a generic computer that do not improve computer functionality. That is,
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these recited steps [l]-[6] "do not purport to improve the functioning of the
computer itself' but are merely generic functions performed by a
conventional processor. Likewise, these same steps [ 1 J-[ 6] listed above do
not improve the technology of the technical field and merely use generic
computer components and functions to perform the steps. Also,
steps [ 1 J-[ 6] do not require a "particular machine" and can be utilized with a
general purpose computer, and the steps performed are purely conventional.
In this case the general purpose computer is merely an object on which the
method operates in a conventional manner and does not provide
"significantly more" to the claim beyond a nominal or insignificant
execution of the method. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state in a manner that
would render the claim "significantly more" than the abstract idea. The
recited steps [ 1 J-[ 6] fail to provide meaningful limitations to limit the
judicial exception and rather are mere instructions to apply the method to a
generic computer. Considering the elements of the claim both individually
and as "an ordered combination," the functions performed by the computer
system at each step of the process are purely conventional. Each step of the
claimed method does no more than require a generic computer to perform a
generic computer function.
Further the claim fails to add a specific limitation beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
Rather, the claim uses well-understood, routine, and conventional activities
previously known in the art at a high level of generality to the judicial
exception. The Specification at paragraphs 24 and 59, for example,
describes using conventional computer components such as database
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Application 13/213,975
management systems in a conventional manner. The claim specifically
includes recitations for one or more processors and a database to implement
the method but these computer components are all used in a manner that is
well understood, routine, and conventional in the field. The Appellants have
not shown these claimed generic computer components, which are used to
implement the claimed method, are not well understood, routine, or
conventional in the field. Nor have Appellants demonstrated that the
database and one or more processors are not general purpose computer
components beyond those known to be routine and conventional known to
perform similar functions in a well-understood manner.
For these reasons, the rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims,
which are drawn to similar subject matter, and the rejection of these claims
is sustained for the same reasons given above as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-49 and 53-58 under 35 U.S.C. § 101.
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DECISION
The Examiner's rejection of claims 1-49 and 53-58 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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