LaterPay GmbH

Patent Trials and Appeals Board

Jan 14, 2022

2021002529 (P.T.A.B. Jan. 14, 2022)

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. 14/283,885 05/21/2014 Cosmin-Gabriel ENE MBP0134PUSA1 8223 22045 7590 01/14/2022 Brooks Kushman 1000 Town Center 22nd Floor Southfield, MI 48075 EXAMINER HUANG, JAY ART UNIT PAPER NUMBER 3619 NOTIFICATION DATE DELIVERY MODE 01/14/2022 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): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte COSMIN-GABRIEL ENE ____________ Appeal 2021-002529 Application 14/283,885 Technology Center 3600 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and JAMES P. CALVE, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Cosmin-Gabriel Ene (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of claims 8-22, the only claims pending and not subject 1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal Br.,” filed August 28, 2020) and Reply Brief (“Reply Br.,” filed February 26, 2021), and the Examiner’s Answer (“Ans.,” mailed December 28, 2020), and Final Action (“Final Act.,” mailed April 17, 2020). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as LaterPay GmbH (Appeal Br. 1). Appeal 2021-002529 Application 14/283,885 2 to restriction in the application on appeal.3 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We affirm. The Appellant invented a payment system which ensures a secure payment transaction. Specification para. 6. An understanding of the invention can be derived from a reading of exemplary claim 8, which is reproduced below (bracketed matter and some paragraphing added). 8. A payment system comprising: at least one computer programed and configured to: [1] create a user account correlating to a unique identification number of a computer device; [2] track a total outstanding purchase balance for a plurality of purchases corresponding to the user account, [3.1] responsive to the outstanding purchase balance being less than a predetermined value, authorize the user to complete the plurality of purchases without requiring payment for the purchases and without requesting the user to register the account; and [3.2] responsive to the outstanding purchase balance exceeding the predetermined value, suspend authorization of the user to complete purchases, register the user account associated with the unique identification number, the registration including requesting the user to input identity information and settling at least a portion of the outstanding purchase balance using the identity information, 3 Claims 1-7 shown in the Claims Appendix are withdrawn. Final Act. 2; Appeal Br. 3. Appeal 2021-002529 Application 14/283,885 3 and authorize the user to complete further purchases responsive to registration of the user account. Claims 8-22 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired. ANALYSIS STEP 14 Claim 8, as a system claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. We note that although claim 8 is nominally a system claim, its only structural component is a generic computer. The remainder of the claim, which encompasses all substantive limitations, recites method steps. Accordingly, we will refer to claim 8 as a method claim in the remainder of the analysis. 4 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2021-002529 Application 14/283,885 4 STEP 2 The Supreme Court, set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, [] consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent- eligible application. [The Court] described step two of this analysis as a 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.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the Appeal 2021-002529 Application 14/283,885 5 additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 8 recites creating account data, checking whether criteria are met, authorizing purchase data, registering account data, and authorizing purchase data. Creating data is generating data. Checking criteria is rudimentary data analysis. Authorizing purchase data is generic data processing. Registering data is generating data. Thus, claim 8 recites generating, analyzing, and processing data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. From this we see that claim 8 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent in-eligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts5, (2) certain methods of organizing 5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). Appeal 2021-002529 Application 14/283,885 6 human activity6, and (3) mental processes7. Among those certain methods of organizing human activity listed in the Revised Guidance are commercial or legal interactions. Like those concepts, claim 8 recites the concept of managing commercial purchase transactions. Specifically, claim 8 recites operations that would ordinarily take place in advising one to register a user account for purchases if purchase amounts exceed some threshold. The advice to register a user account for purchases if purchase amounts exceed some threshold involves authorizing purchases, which is an economic act, and tracking purchases, which is an act ordinarily performed in the stream of commerce. For example, claim 8 recites “authorize the user to complete the plurality of purchases,” which is an activity that would take place whenever one is managing purchases. Similarly, claim 8 recites “track a total outstanding purchase balance,” which is also characteristic of purchase transactions. The Examiner determines the claims to be directed to the steps recited. Final Act. 7-8. The preamble to claim 8 does not recite what it is to achieve, but the steps in claim 8 result in managing commercial purchase transactions by registering a user account for purchases if purchase amounts exceed some threshold absent any technological mechanism other than a conventional computer for doing so. 6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160-61 (Fed. Cir. 2018). 7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2021-002529 Application 14/283,885 7 As to the specific limitations, limitations 1-3 recite generic and conventional generating, analyzing, and processing of purchase transaction data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for registering a user account for purchases if purchase amounts exceed some threshold. To advocate registering a user account for purchases if purchase amounts exceed some threshold is conceptual advice for results desired and not technological operations. The Specification at paragraph 6 describes the invention as relating to a payment system which ensures a secure payment transaction. Thus, all this intrinsic evidence shows that claim 8 recites managing commercial purchase transactions. This is consistent with the Examiner’s determination. This in turn is an example of commercial or legal interactions as a certain method of organizing human activity because managing commercial purchase transactions is managing commercial purchase interactions. The concept of managing commercial purchase transactions by registering a user account for purchases if purchase amounts exceed some threshold is one idea for controlling purchases. The steps recited in claim 8 are part of how this might conceptually be premised. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1054 (Fed. Cir. 2017) (financing a purchase). From this we conclude that at least to this degree, claim 8 recites managing commercial purchase transactions by registering a user account for purchases if purchase amounts exceed some threshold, which is a commercial and legal interaction, one of certain methods of organizing Appeal 2021-002529 Application 14/283,885 8 human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 8 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e., integrated into a practical application.8 At the same time, we tread carefully in construing this exclusionary principle lest it swallow[s] all of patent law. At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for [a] patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “‘to a new and useful end,’” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details. Steps 1 and 2 recite basic conventional data operations such as generating, updating, and storing data. The limitation of a user account correlating to a unique identification number of a computer is just that some 8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2021-002529 Application 14/283,885 9 data correlation, which is an attribute rather than an operation. Such data correlation is itself generic and conventional in computer operations. Steps 3.1 and 3.2 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 8 simply recites the concept of managing commercial purchase transactions by registering a user account for purchases if purchase amounts exceed some threshold as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and does not recite any particular implementation. Claim 8 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The 13+ pages of specification do not bulge with disclosure, but only spell out different generic equipment9 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing commercial purchase transactions by registering a user account for purchases if purchase amounts exceed some threshold under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, claim 8 at issue amounts to nothing 9 The Specification describes a laptop, a PC or a mobile terminal. Spec. para. 33. Appeal 2021-002529 Application 14/283,885 10 significantly more than an instruction to apply managing commercial purchase transactions by registering a user account for purchases if purchase amounts exceed some threshold using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26. None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other 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. We conclude that claim 8 is directed to achieving the result of managing commercial purchase transactions by advising one to register a user account for purchases if purchase amounts exceed some threshold, as distinguished from a technological improvement for achieving or applying that result. This amounts to commercial or legal interactions, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. Appeal 2021-002529 Application 14/283,885 11 STEP 2B The next issue is whether claim 8 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement [t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223-24 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for generating, analyzing, and processing data amounts to electronic data query and retrieval-one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional Appeal 2021-002529 Application 14/283,885 12 computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). None of these activities is used in some unconventional manner nor does any produce some unexpected result. Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted). Considered as an ordered combination, the computer components of Appellant’s claim 8 add nothing that is not already present when the steps are considered separately. The sequence of data generation-analysis- processing is equally generic and conventional. See 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) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, Appeal 2021-002529 Application 14/283,885 13 and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 8 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. REMAINING CLAIMS Claim 8 is representative. The remaining dependent claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. As to the remaining structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] . . . against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’ Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations, we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the commercial and legal interaction of managing commercial purchase transactions by advising Appeal 2021-002529 Application 14/283,885 14 one to register a user account for purchases if purchase amounts exceed some threshold, without significantly more. APPELLANT’S ARGUMENTS We are not persuaded by Appellant’s argument that “the payment system records a purchase made by a user in the form of a direct debit order. The payment system also stores identification information which enables the preferably unique identification of the shopper system that was used.” Appeal Br. 5. The claims recite no such direct debit order, which in any event is an accounting rather than technological feature. Storing identification or any other information is generic computer operation. At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). We are not persuaded by Appellant’s argument that the claims recite an “improved payment system (of allowing for anonymous small-value transactions before registration, while also requesting the user to register upon meeting the threshold) that is integrated as a practical application into the pending claims.” Appeal Br. 6. Appellant does not explain how this is a practical application. Presumably, Appellant means it is useful. But utility alone does not confer eligibility. “The method claims of Mayo and Ariosa were apparently also useful, and also invalid.” “Utility is not the test for patent-eligible subject matter.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1380 (Fed. Cir. 2016) (citations omitted). A practice of allowing Appeal 2021-002529 Application 14/283,885 15 for anonymous small-value transactions before registration, although also requesting the user to register upon meeting the threshold is a conceptual accounting rather than practical technological practice. We are not persuaded by Appellant’s argument that “allowing for anonymous small-value transactions before registration, while also requesting the user to register upon meeting the threshold does not fall within the grouping of ‘a certain method of organizing human activity.’” Appeal Br. 6. Appellant overlooks the remainder of the claim limitations, including those reciting purchase transactions. We show above how the claims are directed to the commercial and legal interaction of managing commercial purchase transactions by advising one to register a user account for purchases if purchase amounts exceed some threshold. We are not persuaded by Appellant’s argument that no citation or other evidence is provided that [] this approach to small transactions is a long-prevalent business practice. In contrast, no prior art rejections remain against the claims, evidencing that the technical features of the claims are not disclosed or suggested in the art. This being so, the novel and non-obvious approach as claimed cannot be long-prevalent. Appeal Br. 7. Novelty and obviousness are not at issue here. “[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). We show above that all of the recited computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. Appeal 2021-002529 Application 14/283,885 16 We are not persuaded by Appellant’s argument that only a computer implementation allows for transparent payment systems conditions, e.g., defined by invoice amount thresholds, which allow for confidential treatment and tracking of the users of the payment system before the threshold balance is met. It is the computer implementation of the payment system that makes the anonymous small-value transactions before registration possible, while also requesting the user to register upon meeting the threshold. This anonymity via computer hardware identifiers could not be performed in a human mind as a practical matter. As a result, a mental approach without computer hardware would not work. Appeal Br. 8. Saying that only a computer based process avoids human interaction to create anonymity is no more than to say automation allows anonymity by avoiding a human counterparty. But speed and automation do not confer eligibility. The claims here, in contrast, are not directed to an improvement in the way computers operate, nor does FairWarning contend as much. While the claimed system and method certainly purport to accelerate the process of analyzing audit log data, the speed increase comes from the capabilities of a general-purpose computer, rather than the patented method itself. Thus here, as in Electric Power, “the focus of the claims is not on . . . an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.” FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citations omitted). As to the use of a hardware identifier as an alias for anonymity, this is analogous to the use of a nom de guerre, a notoriously old device, for anonymity well prior to automation. Appeal 2021-002529 Application 14/283,885 17 CONCLUSIONS OF LAW The rejection of claims 8-22 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. CONCLUSION The rejection of claims 8-22 is affirmed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8-22 101 Eligibility 8-22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED