Robert William. Graham et al.Download PDFPatent Trials and Appeals BoardJul 31, 201913730999 - (D) (P.T.A.B. Jul. 31, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/730,999 12/29/2012 Robert William Graham Graham007 4102 25179 7590 07/31/2019 A PATENT LAWYER, LLC R WILLIAM GRAHAM 8586 Eagle Ridge Springboro, OH 45066 EXAMINER DANZIG, REVA R ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 07/31/2019 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): billg@apat1.com info@apat1.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT WILLIAM GRAHAM and DAVID B. JOHNSON ____________ Appeal 2018-006595 Application 13/730,9991 Technology Center 3600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and DEBORAH KATZ, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge ADAMS. Opinion dissenting filed by Administrative Patent Judge KATZ. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This Appeal under 35 U.S.C. § 134(a) involves claims 22–26 (Final Act.2 2; see App. Br. 1). Examiner entered a rejection under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify “Robert William Graham and David Johnson” as the real parties in interest (Appellants’ September 19, 2017 Appeal Brief (App. Br.) 1). 2 Examiner’s November 4, 2016 Final Office Action. Appeal 2018-006595 Application 13/730,999 2 STATEMENT OF THE CASE Appellants’ disclosure relates to “an improved method of tracking expenses. More particularly, the invention is directed to a system and process for tracking expenses employing in part a hand held computer.” (Spec. 1: 4–6). Appellants’ sole independent claim, claim 22, is representative and reproduced below: 22. A system for processing a transaction by a user at a transaction point, the system comprising: a processor disposed at the transaction point, the processor being configured to detect an initiation of the transaction by the user and generate transaction information data corresponding to the transaction; a communication device associated with the processor, the communication device configured to transmit the transaction information data; a remote processor configured to receive the transaction information data and store the transaction information data in a database; and a hand held device disposed in communication with the communication device, the hand held device configured to: store transaction authority data; receive the transaction information data from the communication device; enable the transaction at the transaction point based on the transaction information data and the transaction authority data; automatically displaying and prompting a user on said hand held device at said transaction point for tagging said transaction data at said transaction point as one of personal or business with tagging to a particular client, creating tagged transaction information data, receive a user input indicative of the transaction being one of a personal transaction or a business transaction with tagging to a particular client; and Appeal 2018-006595 Application 13/730,999 3 transmit the user input to the remote processor, wherein the remote processor is further configured to tag the stored transaction information data in the database based on the user input as one of a personal transaction or a business transaction thereby transforming transaction information data on said remote database through electronic communication therebetween. (App. Br. 17–18.) Claims 22–26 stand rejected under 35 U.S.C. § 101. ISSUE Does the preponderance of evidence of record support Examiner’s finding that Appellants’ claimed invention is directed to patent ineligible subject matter? PRINCIPLES OF LAW 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 Appeal 2018-006595 Application 13/730,999 4 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 (1853))); and manufacturing flour (Gottschalk, 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 Gottschalk and Parker); see, e.g., id. at 187 (“It is Appeal 2018-006595 Application 13/730,999 5 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). “[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 (January 7, 2019) (“Revised Guidance”). 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 MPEP § 2106.05(a)–(c), (e)–(h)). See 84 Fed. Reg. 54–55. 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: Appeal 2018-006595 Application 13/730,999 6 (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 84 Fed. Reg. 51. ANALYSIS The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Revised Guidance identifies three judicially-excepted groupings identified by the courts as abstract ideas: (1) mathematical concepts, (2) certain methods of organizing human behavior such as fundamental economic practices, and (3) mental processes. Examiner finds that Appellants’ expense tracking system comprises “the steps of generating transaction information; transmitting the transaction information; receiving and storing the transaction information in a database; and sending transaction data to a hand held device, that automatically prompts a user to tag the data as one of personal or business,” which represent a system/method of organizing human activity, such as fundamental economic practices, and, as such, is an abstract idea (Ans.3 7; see also id. at 4–5). See Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611. We agree with the Examiner’s finding. Having determined that Appellants’ claim 1 recites a judicial exception, the Revised Guidance directs us to next consider whether the claims integrate the judicial exception into a practical application. On this 3 Examiner’s January 11, 2018 Answer. Appeal 2018-006595 Application 13/730,999 7 record, Appellants’ claim 22 does not integrate the abstract idea, i.e., the system/method of organizing human activity, into a practical application. For example, the steps of Appellants’ claimed system do not improve the underlying computer/processor, because those steps require only a generic computer/processor (see Ans. 3–4; see also id. at 6). In this regard, we note that the limitations of Appellants’ claim 22 that require the processing of a transaction by a user at a transaction point, wherein transactions are tagged as either personal or business transactions, are not an improvement to technology. See MPEP § 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”); see also, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (holding that the claim in that case is directed to a technological improvement over existing 3-D animation techniques and, therefore, not directed to an abstract idea); BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) (holding that the ‘606 patent is claiming a technology-based solution (not an abstract idea based solution) to filter content on the Internet that overcomes existing problems with other Internet filtering systems). Further, the system of Appellants’ claim 22 does not transform matter; to the contrary, Appellants’ system, at best, transforms information, i.e., data. See MPEP § 2106.05(c); see also Gottschalk, 409 U.S. at 71–72 (holding that a computer based algorithm that merely transforms data from one form to another is not patent-eligible). Having determined that the judicial exception is not integrated into a practical application, the Revised Guidance requires us to evaluate the additional elements of Appellants’ claimed invention, individually and in combination, to determine whether they provide an inventive concept, such Appeal 2018-006595 Application 13/730,999 8 as a specific limitation beyond the judicial exception that is not well- understood, routine, and conventional in the field, or instead simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 84 Fed. Reg. 51. “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent, however, is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). On this record, Examiner finds: The prior art of record neither anticipates nor renders oblivious [sic] a system for processing a transaction by a user at a transaction point, the system comprising: a hand held device disposed in communication with the communication device the hand held device configured to: automatically displaying and prompting a user on said hand held device at said transaction point for tagging said transaction data at said transaction point as one of personal or business with tagging to a particular client, creating tagged transaction information data, receive a user input indicative of the transaction being of a personal transaction or a business transaction with tagging to a particular client; and wherein the remote processor is further configured to tag the stored transaction information data in the database based on the user input as one of a personal transaction or a business transaction thereby transforming transaction information data on said remote database through electronic communication therebetween. (Final Act. 7–8.) In support of the foregoing finding, Examiner surveys the prior art of record and finds that “Keld[4] fails to disclose automatically displaying a prompt at the transaction point for tagging the transaction as 4 Keld, US 2009/0150265 A1, published June 11, 2009. Appeal 2018-006595 Application 13/730,999 9 personal or business transaction and transforming the data based on the user input,” “Ho[5] fails to teach configuring the stored data based on a user input indicating a transaction as personal or business,” and “Rathbun[6] fails to teach that the automatically prompted input is to tag a transaction as one of personal or business with tagging to a particular client” (id. at 8). Thus, on this record, Examiner evaluated the additional elements of Appellants’ claimed invention individually, and in combination, and made a factual determination that the additional elements of Appellants’ claimed invention provide an inventive concept, such as a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field (id. at 7–8; see also App. Br. 6 (“No such single or multiple components existed to perform the task claimed by the instant claimed invention”)). Therefore, we are compelled to reverse the rejection of record. CONCLUSION OF LAW The preponderance of evidence of record fails to support Examiner’s finding that Appellants’ claimed invention is directed to patent ineligible subject matter. The rejection of claims 22–26 under 35 U.S.C. § 101 is reversed. REVERSED 5 Ho, US 2012/0143702 A1, published June 7, 2012. 6 Rathbun, US 2012/0144461 A1, published June 7, 2012. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT WILLIAM GRAHAM and DAVID B. JOHNSON ____________ Appeal 2018-006595 Application 13/730,999 Technology Center 3600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge, dissenting. DECISION ON APPEAL I respectfully dissent from my colleagues’ reversal of the rejection under 35 U.S.C. § 101 in this case. I agree with my colleagues that, for the reasons articulated, the expense tracking system of Appellants’ claim 22 is directed to the abstract idea of a method of organizing human activity, such as a fundamental economic practice. I also agree with my colleagues that, again for the reasons articulated, claim 22 does not integrate this abstract idea into a practical activity. I disagree with my colleagues that because the Examiner found the prior art of record does not anticipate or render obvious the hand held device Appeal 2018-006595 Application 13/730,999 2 of the system of claim 22 (see Ans. 7–8), the claims must be drawn to eligible subject matter. The Supreme Court cautioned that even though the § 101 patent- eligibility inquiry and prior art inquiries might sometimes overlap, “to shift the patent-eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012). See also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). Putting this into practice, the Federal Circuit has held that “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) (holding claims to a method for converting a hardware-independent user description of a logic circuit are ineligible because the use of assignment conditions as an intermediate step in the translation process is an aid to a mental process and does not change the nature of the claims to being directed to more than an abstract idea). Rather than review whether the claims are patentable over the prior art, the rejection before us requires us to answer the question of whether the patent claims add enough to the judicial exception of the abstract idea to allow the processes they describe to qualify as patent-eligible processes that Appeal 2018-006595 Application 13/730,999 3 apply the abstract idea. See Mayo, 566 U.S. at 77. The Revised Guidance instruct us that if a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). 84 Fed. Reg. 56. The Examiner determined that the claims include the “additional limitations” performed on the hand held device of automatically prompting a user to tag the transaction information as personal or business and receiving and transmitting the tagged transaction data to a remote processor. See Ans. 8. But the Examiner also determined that [t]he use of multiple devices working together to perform authorization of a transaction and tagging of data at the contemporaneous point of the transaction do not amount to significantly more than concepts relating to processes or organizing information that can be performed mentally such as using categories to organize, store, and transmit as similarly found in Cyberfone. Id., citing Cyberfone Sys., LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014). I agree with the Examiner because the Examiner found that the difference between the hand held device claimed and those in the three prior art references noted are that the prior art fails to contemplate user determinations that a transaction is personal and business. See Final Office Action 7–8. This difference does not transform Appellants’ system into more than the abstract idea of organizing human activity, such as a fundamental economic practice. Appeal 2018-006595 Application 13/730,999 4 Accordingly, the Examiner did not err in rejecting the claims before us under 35 U.S.C. § 101 and I respectfully dissent from the majority opinion. Copy with citationCopy as parenthetical citation