Liz Mccutcheon et al.

Patent Trials and Appeals Board

Aug 29, 2019

13554486 - (D) (P.T.A.B. Aug. 29, 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.
13/554,486 07/20/2012 Liz McCutcheon 15548.0295 9925
27890 7590 08/29/2019
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
hfox@steptoe.com
ipdocketing@steptoe.com
lfielding@steptoe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LIZ MCCUTCHEON, JEFF JILES, and RACHEL LEWIS
____________

Appeal 2018-005240
Application 13/554,4861
Technology Center 3600
____________

Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
SCOTT RAEVSKY, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–13, 15–17, 19–40, and 422. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Regions Financial Corporation as the real party in
interest. App. Br. 3.
2 Claims 14, 18, and 41 are cancelled. Response to Notice of Defective
Appeal Brief 5–9.
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BACKGROUND
THE INVENTION
According to Appellants:
The present invention relates to automated garnishments
processing. More specifically, the present invention provides
an automated garnishments processing method and system
which automatically populates a customer’s financial and case
information, and places holds on the customer’s account in an
amount corresponding to an amount of debt due to the
customer’s respective creditors. Furthermore, the garnishments
processing system relates to the integration of a data
management repository module and an automated workflow
processing module which further interface with other external
systems that relate to garnishments processing, including court
docketing systems, agency docketing systems and/or imaging
systems.
Spec. 1:8–15.
Exemplary independent claim 1 is reproduced below.
1. A computer-implemented garnishments processing
system comprising:
a computer processor;
a data management repository module;
an automated workflow processing module integrated
with the data management repository module, the automated
workflow processing module configured to assess a debt
amount, and provide amount and increment options for placing
a hold in a customer’s account corresponding to the debt due,
the automated workflow processing module configured to
exchange data with an external system(s) related to garnishment
processing;
a portal tier, a services tier, an integration tier and a data
tier; and
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a non-transitory computer readable medium containing
stored instructions directing the garnishments processing
system to execute the steps of:
processing and storing case milestones, critical dates, and
customer data comprising customer account balances, activity
and history via said data management repository module;
exchanging data with external systems relating to
garnishment processing via said automated workflow
processing module by transmitting the data over a
communications channel and thereby automatically populate
customer information and case information from the data
management repository module and the external systems
relating to said garnishments processing via said automated
workflow processing module;
evaluating an amount owed to a creditor associated with
said customer; and
after exchanging data and the evaluated amount,
incrementing and placing a hold on said customer’s account in
the evaluated amount according to an assessment of the
automated workflow processing module; and
a case correspondence module configured to
automatically generate communications to customers through a
wireless communication channel and display the
communications to the customers; and
a server configured to transmit the data relating to
garnishment processing over a communications channel and
display the customer account balances, activity and history on a
client device.

REJECTION
Claims 1–13, 15–17, 19–40, and 42 stand rejected under 35 U.S.C.
§ 101. Final Act. 2–16.

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DISCUSSION
LEGAL PRINCIPLES
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’l, 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, 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. 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
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rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 176; 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.” 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 (quotation marks omitted). “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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO 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 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.
GUIDANCE STEP 2A - WHETHER THE CLAIMS ARE
DIRECTED TO A JUDICIAL EXCEPTION
The Examiner finds the claims are “directed to the abstract idea of
processing garnishments.” Final Act. 2. The Examiner finds the claims are,
therefore, directed to fundamental economic practices, a method of
organizing human activities, an idea in and of itself, and a mathematical
relationship or formula. Id.

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(a) Prong 1 of Step 2A
Under the first prong of step 2A of the Guidance, we determine if the
claims recite an abstract idea. Claim 1 recites: “[a] computer-implemented
garnishments processing system.” The claimed “garnishments processing
system” comprises (1) a computer processor, (2) a data management
repository module, (3) an automated workflow processing module, (4) a
portal tier, (5) services tier, (6) integration tier, (7) a data tier, (8) a case
correspondence module, and (9) a server. The data management repository
is involved with “storing case milestones, critical dates, and customer data
comprising customer account balances, activity and history.” The automated
workflow processing module is configured to “assess a debt amount, and
provide amount and increment options for placing a hold in a customer’s
account corresponding to the debt due . . . [and] exchange data with an
external system(s) related to garnishment processing.” This exchange of
data with an external system occurs “over a communications channel” and
“automatically populate[s] customer information and case information from
the data management repository module and the external systems.” The
system then “evaluat[es] an amount owed to a creditor [by] said customer”
and “increment[s] and plac[es] a hold on said customer’s account in the
evaluated amount.” The case correspondence module is configured to
“automatically generate communications to customers through a wireless
communication channel and display the communications to the customers”
and a server is “configured to transmit the data relating to garnishment
processing over a communications channel and display the customer account
balances, activity and history on a client device.”
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We agree with the Examiner that the claims recite a fundamental
economic practice and also recite mental processes. For example, the claims
requires the garnishment processing system to “assess a debt amount, and
provide amount and increment options for placing a hold in a customer’s
account corresponding to the debt due . . . [and] exchange data with an
external system(s) related to garnishment processing.” The claim also
recites “evaluating an amount owed to a creditor associated with said
customer” and “incrementing and placing a hold on said customer’s account
in the evaluated amount.” Garnishment of funds is a fundamental economic
practice, as is assessing a debt amount and placing a hold on a customer’s
account corresponding to the debt due.
Similarly, other limitations reciting determining or evaluating an
amount owed, storing of information (e.g. case milestones, critical dates, and
customer data), and transmitting data over a communications channel, recite
mental steps. Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 Fed.
App’x 988, 992 (Fed. Cir. 2014) (“[U]sing categories to organize, store, and
transmit information is well-established. Here, the well-known concept of
categorical data storage, i.e., the idea of collecting information in classified
form, then separating and transmitting that information according to its
classification, is an abstract idea that is not patent-eligible.”). In connection
with displaying activity (e.g. displaying communications, account balances
etc.), the Federal Circuit has held claims ineligible as reciting an abstract
idea when they merely collect electronic information, display information, or
embody mental processes that could be performed by humans. Elec. Power
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Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016)3. Thus,
the displaying step does not remove the claim from the category of mental
processes.
A fundamental economic practice falls under “[c]ertain methods of
organizing human activity” which, according to the Guidance, is an abstract
idea. Guidance, 84 Fed. Reg. at 52. Similarly, mental processes are also a
category of abstract ideas. Id. Thus, under prong 1 of step 2A, we find the
claims recite an abstract idea.
(b) Prong 2 of Step 2A
Next we determine whether the claims recite a practical application of
the recited judicial exception. Appellants argue their invention is an
improvement over the prior art and analogizes the claims to those in Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir.
2018) and other Federal Circuit cases. App. Br. 7, 9–10. For example,
Appellants argue
[t]he Applicants invented a system and method of automated
garnishment which obviated much of the problems in the
conventional systems. The conventional systems were slow
and complex and difficult to learn, requiring many layers of
separate actions, including manual customer data entry, access
to multiple systems, and processing that was not easily
modified or scalable.
Id. at 7. Appellants also highlight that they invented a
seamless system that utilizes an automated and structured
workflow module which is integrated with a data management

3 “[M]erely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas.” Elec. Power Grp., 830
F.3d at 1355.
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repository module to receive and store customer information
via a customer accounts module and case information via a case
details module and that also interfaces with external systems
such as a court docketing system, an agency docketing system
and an imaging system in retrieving the customer and case
information.
App. Br. 7. Appellants emphasize that their invention leads to “a significant
reduction in cost and burden.” Id.
We are unpersuaded by Appellants’ arguments. Under prong 2 of step
2A, we look to see, amongst other things, if the claims include any
additional elements that reflect an improvement in the functioning of a
computer or to another technological field. Guidance, 84 Fed. Reg. at 54–
55. Analyzing the claims limitations as a whole and individually, we do not
find the claimed invention improves the functioning of a computer. The
various modules that Appellants point to as evidence of improvement over
the prior art are described in the Specification as being implemented by
standard computer technology. For example, the Specification states that
the automated workflow processing module, data management
repository module 800, exempt funds module 900, imaging
systems 400, court docketing systems 500 and/or agency
docketing systems 600 may include a general-purpose
computer and can have an internal or external memory for
storing data and programs such as an operating system (e.g.,
DOS, Windows 2000™, Windows XP™, Windows NT™,
OS/2, UNIX, iOS, Android, or Linux) and one or more
application programs.
Spec. 8:22–27 (emphasis added). The various elements of the claimed
invention merely use a general purpose computer in order to implement the
system, rather than improve the computers on which they are implemented.
We also determine that the additional claim limitations do not reflect an
application of the judicial exception with, or by use of, a particular machine,
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a transformation or reduction of a particular article to a different state or
thing, or a use of the judicial exception in some other meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h).
GUIDANCE STEP 2B - WHETHER THE CLAIMS
PROVIDE AN INVENTIVE CONCEPT
In our analysis under step 2B, we look to see if the claims add
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)). Appellants’
arguments falling under this step are largely the same as those discussed
above with respect to prong 2 of step 2A. Namely, Appellants argue that the
claimed invention improves and enhances “the functioning of the computer
itself by improving the computer software’s abilities to carry out an
integrated flow of data.” App. Br. 11.
We find Appellants’ arguments unpersuasive. As explained above,
the functions performed by the various software and hardware elements,
such as the assessment of the debt, placing a hold on the customer’s account,
and exchanging and transmitting data (i.e. flow of data) with various other
systems are not additional elements beyond the abstract idea, but rather are
part of the abstract idea. Meanwhile, the hardware and software elements
themselves are described as part of a general purpose computer and, thus,
are well-understood, routine, and conventional.
REMAINING ARGUMENTS
Appellants argue “the claims are specific and detailed” and “make
clear that the field of data processing is not being tied up.” App. Br. 12.
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Appellants’ argument is unpersuasive. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover, “[w]here a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Id.; see also OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701
(2015).

DECISION
The Examiner’s rejection of claims 1–13, 15–17, 19–40, and 42 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED