John J. Roach et al.

Patent Trials and Appeals Board

Jul 26, 2019

13526532 - (D) (P.T.A.B. Jul. 26, 2019)

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.
13/526,532 06/19/2012 John J. Roach 117313-001CP4 1091
27189 7590 07/26/2019
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
EXAMINER
BORLINGHAUS, JASON M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/26/2019 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):
PTONotifications@procopio.com
docketing@procopio.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN J. ROACH and GRISHA NEPOMNIACHTCHI
____________

Appeal 2018-006580
Application 13/526,5321
Technology Center 3600
____________

Before DAVID C. McKONE, JOHN P. PINKERTON, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–12, 15–17, and 19–21, which constitute all
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). An Oral
Hearing was held on June 25, 2019.
We REVERSE.

1 The real party in interest is identified as MITEK SYSTEMS, INC. Appeal
Br. 2.

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STATEMENT OF THE CASE
The invention relates to mobile enrollment in automated clearing
house (ACH) transactions using mobile-captured images of financial
documents. Abstract; Spec. ¶¶ 323–325, Figs. 47, 48. Claim 1, reproduced
below, is exemplary of the subject matter on appeal (emphasis added):

1. A non-transitory computer-readable medium comprising
instructions which, when executed by a computer, perform a
process of mobile enrollment in automated clearing house
(ACH) transactions, comprising:
receiving a first image of a first document of a user captured by a
mobile device of the user;
processing the first image of the first document to identify an
originator from the first image, wherein the user has not enrolled in ACH
transactions with the originator;
prompting the user to select from the identified originator and at
least another originator on a screen of the mobile device;
in response to receiving a selection of the identified originator by
the user, receiving a second image of a second document containing an
unique identity of the user, wherein the second image is captured by the
mobile device of the user;
correcting at least one aspect of the second image to create a
corrected image;
executing one or more image quality assurance tests on the
corrected image to assess the quality of the corrected image, wherein the
corrected image satisfies the image quality assurance tests based on the
assessment; and
in response to the corrected image satisfying the image quality
assurance tests,
extracting ACH enrollment data from the corrected image to be
used to enroll the user in ACH transactions with the identified originator;
and
enrolling the user in ACH transactions with the identified
originator based at least on the extracting ACH enrollment data.

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Appeal Br. 20 (Claims Appendix).

THE REJECTIONS2
Claims 1–12, 15–17, and 19–21 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 2–4.
Claims 1–10 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Final Act. 7–9.

ANALYSIS
The § 101 Rejections
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “‘[l]aws of
nature, natural phenomena, and abstract ideas.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation
omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
70 (2012) (brackets in original).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo

2 The Examiner states that “[t]he § 103 rejection of Claims 1–12, 15–17, and
19–21 has been withdrawn.” Final Act. 4.
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and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
In accordance with that framework, we first determine what concept the
claim is “directed to.” See id. 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. Kappos, 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 (Gottschalk v. 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, 191
(1981)); “tanning, dyeing, making water-proof 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 191–92 (“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
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of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (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.”).
If the claim is “directed to” an abstract idea, we turn 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). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (quoting Mayo, 566 U.S. at 77, (alteration in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of § 101. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under that guidance, we first determine 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)).
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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, 84 Fed. Reg. at 54–56.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See Guidance,
84 Fed. Reg. at 54. When the judicial exception is so integrated, then the
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
The § 101 Rejection of claims 1–12, 15–17, and 19–21
The Examiner determines the claims are directed to “automated
document processing and more particularly, to systems and methods for
mobile capture and processing of documents for enrollment in an automated
clearing house (ACH) transaction.” Final Act. 2 (citing Spec. ¶ 2). The
Examiner then concludes that, “[a]s such, the claimed invention is directed
toward a fundamental economic practice, and thus an abstract idea.” Id. at
2–3. The Examiner determines that the claims do not include limitations
that are significantly more than the abstract idea. Id. at 3.
Appellants argue that the Examiner’s conclusion is based on an
inadequate analysis of all the claim limitations to identify which limitations
recite an abstract idea, and whether the remaining claim elements add
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significantly more than the abstract idea. Appeal Br. 8–9 (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Appellants argue
the Examiner then incorrectly applies this analysis to identify court cases
with similar claims. Id. at 9–15. Appellants argue
The step of “executing one or more image quality assurance tests
on the corrected image to assess the quality of the corrected image,
wherein the corrected image satisfies the image quality assurance tests
based on the assessment” alone goes beyond merely a fundamental
economic practice. Thus, and as in Enfish, the claims cannot properly
be said to be directed to an abstract idea when the first step of the
Mayo/Alice test is applied.

Id. at 10.
Appellants argue that the additional elements of claims 1 and 11 recite
significantly more than the alleged abstract idea. Id. at 11–15. According to
Appellants, the claims provide improvements including: improvements upon
the technical field of fundamental economic practices, enrolling in ACH
transactions, the functioning of the mobile devices used, and computational
techniques of the computer. Id. at 11 and 13–15.
In the Answer, the Examiner additionally determines “the abstract
idea in the claimed invention is similar to concepts that have been
identified as abstract by the courts as being a certain method of organizing
human activity, such as collecting information, analyzing it and displaying
certain results of the collection and analysis, as in Electric Power Group
LLC v. Alstom SA (Fed. Cir. 2016).” The Examiner determines “[t]he
claimed invention is directed toward enrollment in an automated clearing
house (ATM) transactions wherein the steps involved (i.e. receiving a first
image, identifying an originator from the first image, prompting a selection
. . . ), the steps currently recited as being performed by a computer, are
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method steps that ‘can be performed in the human mind, or by a human
using a pen and paper’ and ‘[as] such, the claimed invention based upon
those steps is an ‘an idea ‘of itself’’ and, therefore, an abstract idea.” Ans. 7.
The Examiner has not persuasively explained how these steps could
be performed in the human mind, or with pen and paper. Ans. 7. For
example, the Examiner has not explained persuasively how a human,
without the aid of a computer, could receive an image of a document
captured by a mobile device and process the image to identify an originator
from that image. Likewise, the claimed image capture, processing,
correcting, and quality assurance testing are not the type of activities that can
be performed by a human mind or by a human using pen and paper. Thus,
we are not persuaded that claim 1 recites a method that can be performed in
the human mind, or with pen and paper.
The Examiner also finds that claim 1 recites a fundamental economic
activity. The Examiner notes that the claims do not constitute an
improvement that imparts patent eligibility because an improvement to
another technology or technical field requires an improvement to another
technology (i.e. machinery or equipment developed from the application of
scientific knowledge) or a technical field (i.e. a field concerned with applied
and industrial sciences). Id. at 9. Here, the Examiner determines that the
claimed invention (and any improvement) is an improvement to a
fundamental economic practice, not a technical field. Id.
In the Reply Brief, Appellants argue, inter alia, the Examiner errs
because the step of “‘executing one or more image quality assurance tests
on the corrected image to assess the quality of the corrected image, wherein
the corrected image satisfies the image quality assurance tests based on the
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assessment’ alone goes beyond merely a fundamental economic practice.”
Reply Br. 3–8.
Regarding the alleged abstract idea of “systems and methods for
mobile capture and processing of documents for enrollment in an automated
clearing house (ACH) transaction,” the claim 1 limitations may be parsed as
set forth below wherein elements that reflect recitation of enrolling in ACH
transactions are set forth in italics:
1. A non-transitory computer-readable medium comprising
instructions which, when executed by a computer, perform a
process of mobile enrollment in automated clearing house
(ACH) transactions, comprising:
receiving a first image of a first document of a user captured by a
mobile device of the user;
processing the first image of the first document to identify an
originator from the first image, wherein the user has not enrolled in ACH
transactions with the originator;
prompting the user to select from the identified originator and at
least another originator on a screen of the mobile device;
in response to receiving a selection of the identified originator by
the user, receiving a second image of a second document containing an
unique identity of the user, wherein the second image is captured by the
mobile device of the user;
correcting at least one aspect of the second image to create a
corrected image;
executing one or more image quality assurance tests on the
corrected image to assess the quality of the corrected image, wherein the
corrected image satisfies the image quality assurance tests based on the
assessment; and
in response to the corrected image satisfying the image quality
assurance tests,
extracting ACH enrollment data from the corrected image to be
used to enroll the user in ACH transactions with the identified originator;
and
enrolling the user in ACH transactions with the identified
originator based at least on the extracting ACH enrollment data.
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We agree with the Examiner that enrolling in ACH transactions is a
fundamental economic practice. The Specification explains that “[a]
Automatic Clearing House (ACH) transaction is a type of electronic funds
transfer (EFT) that occurs between two separate entities, often known as a
receiver and an originator.” Spec. ¶ 3. In its Background section, the
Specification gives examples of enrolling in ACH transactions, for example,
“an ACH transaction requires authorization from the receiver in the form of
a blank or voided check which contains the routing number, account
number, name and address of the receiver. The receiver must then mail the
check to the originator to complete ACH enrollment for a particular
transaction.” Id. ¶ 6. We agree with the Examiner that ACH enrollment “is
similar to concepts that have been identified as abstract by the courts as
being a fundamental economic practice, such as processing an application
for financing a purchase in Credit Acceptance Corp. v. Westlake Services[,
859 F.3d 1044] (Fed. Cir. 2017).” Ans. 6. A fundamental economic
practice is an example of a certain method of organizing human activity, one
of the categories of abstract ideas identified in the Guidance, at 52.
Further, even if claim 1 recites an abstract idea, the Federal Circuit
explains the “directed to” inquiry is not simply asking whether the claims
involve a patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to”
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inquiry applies a stage-one filter to claims, considered in light of
the specification, based on whether “their character as a whole is
directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Therefore, we proceed to Step 2A, Prong 2, of the Guidance to
determine whether additional elements of claim 1 integrate the abstract idea
into a practical application. Such additional elements may reflect an
improvement to a technology or technical field. See Guidance, 84 Fed. Reg.
at 55.
We determine additional elements of claim 1 integrate the abstract
idea into a practical application. We refer to the claim 1 limitations, which
utilize a computer and mobile device for enrollment in ACH transactions
for:
receiving a first image of a first document of a user captured by a
mobile device of the user;
processing the first image of the first document to identify an
originator from the first image, wherein the user has not enrolled in ACH
transactions with the originator;
prompting the user to select from the identified originator and at
least another originator on a screen of the mobile device;
in response to receiving a selection of the identified originator by
the user, receiving a second image of a second document containing an
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unique identity of the user, wherein the second image is captured by the
mobile device of the user;
correcting at least one aspect of the second image to create a
corrected image;
executing one or more image quality assurance tests on the
corrected image to assess the quality of the corrected image, wherein the
corrected image satisfies the image quality assurance tests based on the
assessment; and
in response to the corrected image satisfying the image quality
assurance tests,
extracting ACH enrollment data from the corrected image to be
used to enroll the user in ACH transactions with the identified originator;
and
enrolling the user in ACH transactions with the identified
originator based at least on the extracting ACH enrollment data.

These limitations set forth an ACH enrollment process (employing a
mobile device and computer) that includes capturing, processing, and
correcting images that are used in a mobile enrollment process. By
capturing, processing, and correcting images, the claimed mobile enrollment
processing results in improvements to ACH enrollment. Our determination
is supported by the Specification, which describes the ACH enrollment. For
example, the limitations are less complicated and less time consuming than
conventional ACH enrollment process employing physical documents, such
as voided checks and mailing such documents. See Spec. ¶ 6. Additionally,
correcting the captured and processed images by a mobile device converts
the image to a format that can be processed by a remittance processing
service, and enable the claimed enrollment process to test the quality of the
mobile device and correct defects into an acceptable format. See Spec.
¶¶ 77, 78–308.
The additional elements of claim 1 reflect a technological
improvement to the ACH enrollment process. See claim 1; see also DDR,
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773 F.3d at 1257 (holding the claims satisfy Alice step two because “the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks”). Additionally, these limitations use the alleged abstract idea
in a meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim
as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP § 2106.05(e).
Because the additional elements of claim 1 integrate the abstract idea
into a practical application, we determine claim 1, and independent claim 11
which is commensurate in scope with claim 1, are not directed to an abstract
idea. See Guidance, Step 2A, Prong 2. For similar reasons, each of claims
2–10, 12, 15–17, and 19–21 integrates the abstract idea into a practical
application, and is not directed to an abstract idea.
Therefore, we do not sustain the rejection of claims 1–12, 15–17, and
19–21 under 35 U.S.C. § 101.
The § 112, second paragraph, rejection of claims 1–10
In the Final Action, the Examiner determines that the following
claim 1 limitations are indefinite as they constitute “optional” claim
limitations:
prompting the user to select from the identified originator and
at least another originator on a screen of the mobile device;
in response to receiving a selection of the identified originator
by the user, receiving a second image of a second document
containing a[n] unique identity of the user, wherein the second image
is captured by the mobile device of the user.

Final Act.7–8.
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In the Appeal Brief, Appellants argue that “[a] person of ordinary skill
in the art, in light of the specification, would understand claim 1 to represent
a process of mobile enrollment in automated clearing house (ACH)
transactions and the claims positively recite receiving the second image”
and “would understand the second image is ‘in response to’ characterizes the
second image containing a unique identity of the user.” Appeal Br, 16–17.
In the Answer, the Examiner states:
In essence, Claim 1 recites a method wherein the user is
presented with two options, option A and option B, and in response to
selection of option A, a designated function is performed.
Usage of the term “in response to receiving a selection of the
identified originator” is deemed to be optional language, as there
remains the possibility that the claim limitations based upon the
condition (i.e. selection of the identified originator) are not exercised or
triggered.
Essentially, Claim 1 recites that a function is performed in
response to option A. If option A is selected (i.e. the condition is
satisfied) then the designated function is exercised or triggered.
Claim 1 does not recite that option A is selected. Claim 1 does not
recite a method comprising determining that option A has been
selected. Claim 1 just recites that, if option A is selected, then a
designated function is performed.
Claim 1, as written, allows for an interpretation that option B is
selected or, alternatively, that no option is selected. Under such an
interpretation the designated function does not occur, as the condition
that the designated function is premised upon has not been satisfied.
Under such an interpretation later method steps premised on the
designated function do not occur.
As such, the claim limitations based upon the “in response to
receiving a selection of the identified originator” condition are optional
claim limitations. As a matter of linguistic precision, optional claim
limitations do not narrow the scope of the invention, since they can
always be omitted. see MPEP § 2103 IC; In re Johnson, 77 USPQ2d
1788 (Fed Cir 2006). As the Applicant does not address what happens
should the optional claim limitations fail, Examiner assumes that
nothing happens (i.e. the method stops). An alternate interpretation is
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that merely the claim limitations based upon the “in response to
receiving a selection of the identified originator” condition are not
triggered or performed.

Ans. 12.
In the Reply Brief, Appellants reiterate their arguments and argue that
the Examiner provides inadequate basis to support a determination that “in
response to receiving a selection of the identified originator” is optional
language.” Reply Br. 8–9.
We are persuaded by Appellants’ arguments because one of ordinary
skill in the art would understand the plain language of the claim to mean
that, in response to receiving a selection of the identified originator by the
user, receiving a second image of a second document containing a unique
identity of the user, wherein the second image is captured by the mobile
device of the user. In re Packard, 751 F.3d 1307 (Fed. Cir. 2014). This
interpretation is also consistent with the Specification. See Spec. ¶¶ 323–
325, Fig. 48. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the Specification, as understood by
one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004). Moreover, because the claim is directed to the user selecting the
“identified originator,” the selection of “another originator” is outside the
scope of the claim. See Spec. ¶¶ 323–325, 329, Figs. 47–54.
Therefore, we do not sustain this rejection of claim 1, and dependent
claims 2–10.
Because our decision is dispositive of the rejection of these claims, we
do not address additional arguments raised by Appellants.

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DECISION
We reverse the Examiner’s decision rejecting claims 1–12, 15–17, and
19–21 under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1–10 under 35
U.S.C. § 112, second paragraph.

REVERSED