Gil Don et al.Download PDFPatent Trials and Appeals BoardSep 5, 201914687013 - (D) (P.T.A.B. Sep. 5, 2019) Copy Citation 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. 14/687,013 04/15/2015 Gil Don PIS-PU-004-US1 5520 60956 7590 09/05/2019 Professional Patent Solutions P.O. BOX 654 HERZELIYA PITUACH, 46105 ISRAEL EXAMINER OYEBISI, OJO O ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 09/05/2019 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): office@propats.com utalmi@propats.com vsherman@propats.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GIL DON, ALON FEIT and VICTORIA NIEL KRAINE ___________ Appeal 2018-007351 Application 14/687,013 Technology Center 3600 ____________ Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and GREGG I. ANDERSON, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 are appealing the Non-final rejection of claims 11–17 and 19–26 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Pay It Simple LTD. as the real party in interest. Appeal Brief 2. Appeal 2018-007351 Application 14/687,013 2 Introduction According to Appellants: The present invention includes methods, systems, devices and associated computer executable code for facilitating credit transactions or securitizations. According to some embodiments of the present invention, as part of a transaction between a merchant, or first party, and a Consumer/Customer of goods and/or services and/or monetary means (e.g.[,] cash), which may be initiated at or through any point of access (e.g.[,] online, point of sale, mobile point of sale, automatic teller machine; and/or any communication device, such as a mobile phone, or attachment thereof, and or any other point of access known today or to be devised in the future), the Consumer may request to split the transaction cost into a set of payments/installments, by which costs may be spread over a period of time. Said set of payments and said period of time may be pre-defined or predetermined. Specification ¶ 24. Representative Claim 11. A system for providing automatically secured installment services to users of an online marketplace, said system comprising: an interface adapted to interface with the users of the online marketplace, via a user interface of the online marketplace, and receive from the users: (a) identifying details of a first purchasing party of a first online transaction facilitated by the online marketplace, (b) details of a credit line the first purchasing party has with a first primary credit provider, and (c) details of a first amount associated with the first online transaction; a credit server comprising: i. communication circuitry to communicate with automated authorization systems of primary credit providers over a distributed data network (DDN); and Appeal 2018-007351 Application 14/687,013 3 ii. processing circuitry adapted to: (i) automatically generate, using the received details (a) and (b), one or more credit requests for the first amount, and (ii) transmit the requests to the one or more credit providers over the DDN; a transaction server adapted to, upon receiving the authorizations of the requests, issue payment of the first amount to a selling party of the first online transaction; one or more data storages adapted to store a record for each of multiple online transactions, which records include, for each given online transaction: details of credit lines a purchasing party of the given online transaction has with one or more primary credit providers, a given amount associated with the given online transaction, details of received credit authorizations relating to the given online transaction , terms of payment of the given amount, a history of payments relating to the given amount and a current outstanding balance of the given amount; a monitoring unit comprising processing circuitry adapted to monitor dates of expiration of authorizations within the records stored in said data storages and trigger said credit server to re-securitize each individual current outstanding balance stored in each of the records stored in said data storages, prior to expiration of a latest authorization relating to the individual current outstanding balance; wherein said credit server is further adapted to: (i) automatically generate, upon being triggered by said monitoring unit, a second set of one or more credit requests for a current outstanding balance of the first amount, based on the data stored in said records, and (ii) transmit the second set of credit requests to the one or more credit providers over the DDN. Appeal 2018-007351 Application 14/687,013 4 Rejection2 on Appeal Claims 11–17 and 19–26 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent ineligible subject matter. Non-final Action 4–7. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed December 12, 2017), the Reply Brief (filed July 10, 2018), the Non-final Action (mailed January 12, 2017) and the Answer (mailed May 10, 2018), for the respective details. The Examiner determines the claims are patent ineligible under 35 U.S.C. § 101 because the claims are directed to an abstract idea comprising organizing human activity, and do not include additional elements that are sufficient to amount to significantly more than the abstract idea. Non-final Action 5–6 (“Providing secured installment services to users of an online market place is a fundamental economic practice.”); see Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-part framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts”). After the mailing of the Answer and the filing of the Briefs in this case, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 2 The Examiner withdrew the 35 U.S.C. § 112 (a) and § 102 (a)(1) rejections. Answer 3. Appeal 2018-007351 Application 14/687,013 5 (Jan. 7, 2019) (hereinafter “Memorandum”). Under the Memorandum, we first looks 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 MPEP3 § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)). 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 are 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 generally Memorandum. We are not persuaded the Examiner’s rejection is in error. Unless otherwise specified, we adopt the Examiner’s findings and conclusions as our own and we add the following primarily for emphasis and clarification with respect to the Memorandum. Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong One Appellants argue the pending claims are not directed to an abstract idea because: 3 Manual of Patent Examining Procedure. Appeal 2018-007351 Application 14/687,013 6 It has been repeated by the courts, and by the USPTO Guidelines on this subject, a “fundamental economic practice” type abstract idea, as defined for the purpose of patentability analysis, is characterized by well-understood, routine, conventional activit[ies] previously known to the industry performed by a generic computer. In contrast, unconventional and novel practices cannot be considered “fundamental human practices”. Appeal Brief 15. We agree with the Examiner’s determination that the claims are directed to an abstract idea. See Non-final Action 5 (“Claim 11 is rejected under 35 U.S.C. [§] 101 because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.”). The Abstract discloses that the invention is directed to, “[M]ethods and systems for facilitating credit based transactions associated with purchase of goods, services or real estate having a cost, any other transaction and/or for providing a security.” See Specification ¶¶ 21–35. Claim 11 recites a “system for providing automatically secured installment services to users of an online marketplace” comprising: “identifying details of a first purchasing party of a first online transaction facilitated by the online marketplace;” “details of a credit line the first purchasing party has with a first primary credit provider;” “details of a first amount associated with the first online transaction;” “issue payment of the first amount to a selling party of the first online transaction;” “details of credit lines a purchasing party of the given online transaction has with one or more primary credit providers;” “a given amount associated with the given online transaction;” “details of received credit authorizations relating to the Appeal 2018-007351 Application 14/687,013 7 given online transaction;” “terms of payment of the given amount;” “ a history of payments relating to the given amount and a current outstanding balance of the given amount;” “automatically generate, upon being triggered by said monitoring unit, a second set of one or more credit requests for a current outstanding balance of the first amount, based on the data stored in said records” and “transmit the second set of credit requests to the one or more credit providers over the DDN [distributed data network].” These steps recite fundamental economic principles or practices and/or commercial or legal interactions; thus, the claim recites “certain methods of organizing human activity,” an abstract idea. See Memorandum, Section I (Groupings of Abstract Ideas); see also Specification ¶¶ 21–31. Our reviewing courts have found claims to be directed to abstract ideas when they recited similar subject matter. See Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”(citation omitted)); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (claims directed to abstract idea of processing loan information through a clearinghouse); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract). Therefore, we conclude the claims recite an abstract idea pursuant to Step 2A, Prong One of the Guidance. See Memorandum, Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). Appeal 2018-007351 Application 14/687,013 8 Step 2A, Prong Two Under Prong Two of the Revised Guidance, we must determine “whether the claim as a whole integrates the recited judicial exception into a practical application of the exception” it is noted that a “claim that integrates a judicial exception into a practical application will apply, rely on, or use 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.” Memorandum, Section III(A)(2). Appellants contend, “The unconventionality of the components recited in the pending claims, and specifically the re-securitizing device and associated data storage, as well as the novel structures and functionalities of the recited systems, clearly distinguish the recited subject matter from a fundamental economic practice.” Appeal Brief 15. Further, “The Appellants do not claim to have invented a server or a processor, rather the specific novel structure and elements recited in the pending claims designed to achieve automated credit results far improved over existing automated credit systems.” Appeal Brief 21. We do not find Appellants’ arguments persuasive. The recited limitations do not reflect an improvement in the functioning of a computer or other technology or technical field. See Memorandum, 84 Fed. Reg. at 55; cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem.”). Further, as the Federal Circuit has explained, a “claim for a new abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d Appeal 2018-007351 Application 14/687,013 9 1138, 1151 (Fed. Cir. 2016). Even assuming the technique claimed was “[g]roundbreaking, innovative, or even brilliant,” that would not be enough for the claimed abstract idea to be patent eligible. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). In addition, we find Appellants’ claims are distinguished from those claims that our reviewing court has found to be patent eligible by virtue of reciting technological improvements to a computer system. See, e.g., DDR Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting computer processor for serving “composite web page” were patent eligible because “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to “an improved computer memory system” having many benefits were patent eligible). Also, in McRO, the Federal Circuit concluded that the claim, when considered as a whole, was directed to a “technological improvement over the existing, manual 3–D animation techniques” through the “use[] [of] limited rules . . . specifically designed to achieve an improved technological result in conventional industry practice.” McRO, Inc. v. Bandai Namca Games America Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the Federal Circuit found that the claimed rules allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators; and the rules are limiting because they define morph weight sets as a function of phoneme sub-sequences. McRO, 837 F.3d at 1313 (internal citations omitted). Appeal 2018-007351 Application 14/687,013 10 We find no evidence of record here that the present situation is like the one in McRO where computers were unable to make certain subjective determinations, i.e., regarding morph weight and phoneme timings, which could only be made prior to the claimed invention by human animators. Accordingly, we determine the claims do not integrate the judicial exception into a practical application. See Memorandum, Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Step 2B Next, we determine whether the claims include additional elements that provide significantly more than the recited judicial exception, thereby providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73). Appellants contend, “even if the pending claims are nevertheless seen to be directed to an abstract idea, they clearly recite significantly more than the alleged abstract idea, thereby rendering them proper under 35 U.S.C. § 101.” Appeal Brief 14. Appellants further contend: Upon examination of the claims the “inventive concept” being searched for can clearly be seen in the structure and components that comprise the cyclic re-securitization mechanism that automatically monitors, generates and executes the cyclic credit authorization process unique to the claimed systems. This clearly amounts to elements and combinations of elements ensuring that the patent amounts to significantly more than a patent upon the alleged ineligible concept of providing secured Appeal 2018-007351 Application 14/687,013 11 installment services to users of online marketplaces itself, as required according to the Alice decision. Appeal Brief 17. We are not persuaded and, as we addressed above, we find the claims do not include a specific limitation or a combination of elements that amounts to significantly more than the judicial exception itself. Non-final Action 6 (The “generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system” and therefore “taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).”); see Appeal Brief 21; see also Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) (“the ‘inventive concept’ cannot be the abstract idea itself”). Accordingly, we conclude claims 11–17 and 19–26 are directed to a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Memorandum and thus an abstract idea, and the claims do not recite limitations that amount to significantly more than the abstract idea itself. We sustain the Examiner’s § 101 rejection of claims 11–17 and 19–26. DECISION The Examiner’s patent ineligible subject matter rejection of claims 11–17 and 19–26 is affirmed. Appeal 2018-007351 Application 14/687,013 12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(v). AFFIRMED Copy with citationCopy as parenthetical citation