Matthew J. Brown et al.

Patent Trials and Appeals Board

Aug 2, 2019

14145485 - (D) (P.T.A.B. Aug. 2, 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.
14/145,485 12/31/2013 Matthew J. Brown 23632-002US/1000335595 2741
29053 7590 08/02/2019
NORTON ROSE FULBRIGHT US LLP
2200 ROSS AVENUE
SUITE 3600
DALLAS, TX 75201-7932
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW J. BROWN, MICHAEL BURKE, TED PIPER, and
BHARAT MALESHA
____________

Appeal 2018-006868
Application 14/145,485
Technology Center 3600
____________

Before JAMES R. HUGHES, JENNIFER L. McKEOWN, and
JOYCE CRAIG, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Smartstream
Technologies Limited. App. Br. 2.
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STATEMENT OF THE CASE
Appellants’ disclosed and claimed invention “is directed generally to
apparatuses, methods, and systems for capturing, processing, and managing
fees and expenses, particularly, but not limited to, brokerage, clearance, and
exchange (BCE) fees.” Spec. ¶ 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A system for expense calculation and management,
the system comprising:
a processor interfacing with a memory device;
an expense calculation module configured to run on the
processor, to receive BCE (Brokerage, Clearance, and
Exchange) transaction data from a plurality of source systems for
a plurality of organizations, to replicate the fee structure of each
of the plurality of organizations, and to apply at least one charge
rule, based on the replicated fee structure for each organization,
to the BCE transaction data to calculate expense data detailing
the expenses expected to be charged by each organization in
association with the transaction data;
an invoice reconciliation module configured to run on the
processor, to receive as inputs the expense data as well as invoice
data from each organization related to the transaction data and to
determine whether the invoice data matches the expense data for
each organization.

THE REJECTIONS
The Examiner rejected claims 1–25 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. Final Act. 6.
The Examiner rejected claims 1–25 under 35 U.S.C. § 102 as
anticipated by Crawshaw et al. (US 2001/0042032 A1, published Nov. 15,
2001). Final Act. 6–9.

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ANALYSIS
THE § 101 REJECTION
Claims 1–25
Based on the record before us, Appellants have not persuaded that the
Examiner erred in rejecting claims 1–25 as directed to patent ineligible
subject matter.
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. 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);
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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.
(15 How.) 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 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-
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eligible application.” Alice, 573 U.S. at 221 (citation 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). “[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
section 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that
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 MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)-(c), (e)-(h) (9th ed. 2018)).
See Memorandum 52, 55–56. 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.
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See Memorandum 56.
Analysis – Revised Step 1
In step one we consider whether the claimed subject matter falls
within the four statutory categories of patentable subject matter identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
The claimed invention here recites a process including a number of steps.
Accordingly, the claimed invention falls within the process category.
Analysis – Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claimed invention includes
an expense calculation module configured to run on the
processor, to receive BCE (Brokerage, Clearance, and
Exchange) transaction data from a plurality of source systems for
a plurality of organizations, to replicate the fee structure of each
of the plurality of organizations, and to apply at least one charge
rule, based on the replicated fee structure for each organization,
to the BCE transaction data to calculate expense data detailing
the expenses expected to be charged by each organization in
association with the transaction data
and “an invoice reconciliation module configured to run on the processor, to
receive as inputs the expense data as well as invoice data from each
organization related to the transaction data and to determine whether the
invoice data matches the expense data for each organization.”
At a high level, the claimed invention recites receiving financial
information or data and using that information to perform calculations
regarding financial transactions and, thus, the claimed invention recites a
fundamental economic practice and/or commercial interactions. See Final
Act. 6 (finding that the claimed invention is directed to “calculating and
managing fees and expenses” and noting that “[t]his concept is merely a
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series of steps instructing how to calculate expenses which is a fundamental
economic practice and merely the automation of human activity.”). As such,
the claimed invention recites certain methods of organizing human activity,
which is an abstract idea. See also OIP Tech., Inc. v. Amazon.com, Inc., 788
F.3d 1359 (Fed. Cir. 2015) (finding abstract a claimed invention that gathers
statistics, estimates outcomes based on the gathered statistics, and selects a
price for a product based on the estimated determined outcomes); Ans. 3–4.
The claimed invention additionally recites calculating expense data and
comparing the expense data to invoice data to determine whether they match
for each organization. As such, the claimed invention recites mathematical
concepts, which is also an abstract idea. See also Bancorp Services, LLC v.
Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012) (finding abstract a
claimed invention that calculates values and assesses fees related to
managing a life insurance policy).
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
by: (a) identifying whether there are any additional elements recited in the
claim beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
The claimed invention additionally recites “a processor interfacing
with a memory device.” We determine that this limitation individually and
the claimed invention in combination does not integrate the exception into a
practical application. As the Examiner explains,
Nothing in the claims seems to improve the functioning of the
computer itself or effect an improvement in another
technology or technical field. Nor do the claims solve a
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problem unique to the Internet. (This concept is not
“necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer
networks” see DDR Holdings, LLC vs Hotels.com et al (Fed. Cir.
2014)). This claimed invention is not a technical solution to a
technical problem.
Ans. 3.
Appellants, in particular, allege that the claimed invention
“improve[s] a machine to be able to manage the expense lifecycle of
brokerage, clearance, exchange, and other fees from accrual to payment,
since a human can obviously not manage in the same way and with the
resulting realization of expense efficiencies and transparencies.” App. Br. 5;
see also App. Br. 6 (comparing the claimed invention to McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed Cir. 2016) and
noting that the claimed invention improves computer technology).
Appellants additionally argue that the claimed invention “is a specific new
combination of steps rooted in computer technology” to “solve the problem
faced by the computer technology to produce an automatic machine output.”
App. Br. 7.
We disagree. Namely, the claimed invention does not address a
technical problem or provide a technical improvement. As the Examiner
points out, the claimed invention instead addresses a non-technical
economical problem. Ans. 5. For example, the claimed invention merely
performs calculations and does not focus on an improvement in computer
capabilities. Ans. 6. The claimed invention, here, merely uses the
computer, i.e. processor interfacing with a memory device, as a tool to
implement the abstract idea, calculating and managing fees for a brokerage,
clearance, and exchange transaction. See Gottschalk v. Benson, 409 U.S. 63
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(1972). Moreover, the Examiner points out that the Court in McRO
explained it was the “rules with specific characteristics” that improved the
prior art process, not the use of the computer. Ans. 4. Appellants do not
persuasively identify a similar improvement to the process here. Therefore,
we find Appellants’ arguments unpersuasive.
We further note that the steps of receiving data, such as receiving
transaction data, and processing data, such as comparing data to determine if
it matches, are insignificant extra-solution activity. Specifically, the claimed
invention’s receiving and processing data is merely conventional data
gathering and analysis. See MPEP § 2106.05(g); OIP Techs., Inc., 788 F.3d
at 1363; Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016). As such, based on the record before us, we determine that the
claimed invention is not integrated into a practical application.
Analysis – Revised Step 2B
Under step 2B, we determine that the claimed invention does not add
significantly more to the abstract idea. In particular, Appellants argue that
the claimed invention is not well-understood, routine, and conventional
(Reply Br. 2) and also argues that the Examiner fails to sufficiently support
the finding the additional limitations as well-understood, routine, and
conventional. Reply Br. 2–3.
We find this argument unpersuasive. As the Examiner explains,
[t]he processor[] is generically recited and performs basic
computer functions of retrieving, storing, manipulating, and
processing data, which are well-understood, routine and
conventional. Thus, these “additional limitations” merely
perform basic computer functions that are well-understood,
routine and conventional and the limitations amount to mere
instructions to implement the abstract idea on a computer.
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Taking these limitations as an ordered combination adds nothing
that is not already present when the elements are taken
individually. The claims do not amount to significantly more
than the recited abstract idea and the additional elements add no
inventive concept.
Ans. 4 (citing BuySAFE Inc. v Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)
and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)). See
also Elec. Power Grp., LLC, 830 F.3d at 1355 (finding that use of
“conventional computer, network, and display technology for gathering,
sending, and presenting the desired information” does not add significantly
more to the claimed abstract idea); Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(discussing that data collection, recognition, and storage is well-known);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“[T]he incidental use of a computer to perform the [claimed process]
does not impose a sufficiently meaningful limit on the claim’s scope.”).
Therefore, based on the record before us, we are not persuaded of
error in the Examiner’s determination that the appealed claims are directed
to patent ineligible subject matter. Accordingly, we affirm the Examiner’s
decision to reject claims as directed to patent ineligible subject matter.

THE § 102 REJECTION BASED ON CRAWSHAW
Claims 1–25
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1–25 as anticipated over Crawshaw.
Appellants argue that the Examiner fails to sufficiently show that
Crawshaw discloses “an invoice reconciliation module configured to run on
the processor, to receive as inputs the expense data as well as invoice data
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from each organization related to the transaction data and to determine
whether the invoice data matches the expense data for each organization.”
App. Br. 9-10. Appellants explain that Crawshaw’s system generates
reports, based on entered time entries and expense data, that are sent to
clients, and Crawshaw further discloses that the internal time entries and
expense data are “not manipulated, modified, or otherwise changed prior to
reporting to the client as external data.” App. Br. 10. According to
Appellants, this fails to disclose the claimed receiving of invoice and
expense data for each organization and comparing the received data to
determine if they match, as required by claim 1. Id.
We agree that the Examiner fails to support sufficiently Crawshaw’s
disclosure of the disputed limitation. The Examiner finds that
Crawshaw’s system is directed to accurate expense and time
invoicing (see at least paragraph [0003]). The system
automatically converts the raw time and expense data by
considering any client or project-specific billing requirements
(e.g., flat-fee, maximum fee, discount, write-offs, etc.) and by
applying such specific requirements to the raw time and/or
expense data in generating an invoice {see at least abstract,
paragraphs [006-007, 011). The system further facilitates the
generation and reporting of various data to clients etc. The
external data (invoices) may or may not differ from the internal
data. A relational database maintains the internal and external
data (see at least paragraph [0007, 0011, 0033]).
Ans. 7–8; see also Final Act. 7. Notably absent in the Examiner’s findings
is how Crawshaw discloses receiving the expense and invoice data for each
organization and determining whether the invoice and expense data match.
See Final Act. 7. Crawshaw, instead, describes taking raw entry data and
modifying that data based on billing requirements for a particular client.
While Crawshaw includes a set of data for each client and notes that certain
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data may or may not match (see Crawshaw ¶ 7), the Examiner does not
sufficiently explain how each data set includes the claimed invoice and
expense data and whether Crawshaw determines whether the received
invoice and expense data matches. As such, we are persuaded that the
Examiner erred in determining that Crawshaw anticipates claims 1–25 and
reverse the rejection.

DECISION
We affirm the Examiner’s decision to reject claims 1–25 as directed in
ineligible subject matter, but reverse the Examiner’s decision to reject claims
1–25 as anticipated by Crawshaw.
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)(iv).

AFFIRMED