Stacy S. Pourfallah et al.

Patent Trials and Appeals Board

Oct 1, 2019

13411562 - (D) (P.T.A.B. Oct. 1, 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.
13/411,562 03/03/2012 Stacy S. Pourfallah P-40998US01/090426-30157 2852
113349 7590 10/01/2019
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STACY S. POURFALLAH and RENEE Y. LUTZEN
____________

Appeal 2019-000055
Application 13/411,562
Technology Center 3600
____________

Before JOHN A. EVANS, JAMES W. DEJMEK, and SCOTT E. BAIN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–16, 19, and 20, which constitute all claims
pending in the application. Claims 17 and 18 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies Visa International Service
Association as the real party in interest. Br. 2.
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BACKGROUND
The Claimed Invention
The invention relates to a healthcare payment platform, and
specifically, a platform that facilitates a healthcare payment from a user to a
qualified account in real-time. Spec. ¶ 23. Claims 1, 19, and 20 are
independent. Claim 1 is representative of the invention and the subject
matter in dispute, and reads as follows:
1. A healthcare payment collection portal processor-
implemented method, comprising:
identifying, by a computer processor, a social media
profile of a user, on a social media platform, said social media
platform, managed by a platform server, comprising a message
exchange platform among users, said social media profile
stored with the platform server for defining access
authorizations of messages posted on the social media platform
between the user and other users, said social media profile
comprising a user authorization granting a healthcare provider
accessing messages of the user;
intercepting, by the computer processor, social message
post requests communicated by the user on the social media
platform, wherein at least one of the social message post
requests include a pay command string therein;
identifying a healthcare payment bill, by the computer
processor, from the intercepted social message post requests
communicated by the user via the social media platform;
applying, by the computer processor, a pay command
rule and template to parse the social message post requests for
differentiating between social message post requests that do and
do not include the pay command string for paying the
healthcare payment bill;
in response to applying the pay command rule and
template to determine that a particular one of the social message
post requests comprises the pay command string, generating,
by the computer processor, a user social payment initiation
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trigger instruction; and
initiating, by the computer processor, a funds payment
transaction to the healthcare provider in response to the
generated user social payment initiation trigger instruction to
complete the payment of the healthcare payment bill.
Br. 22–23 (Claims Appendix) (emphases added).
The Rejections on Appeal
Claims 1–16, 19, and 20 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–5.
Claims 1–16, 19, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Smith (US 2007/0282637 A1; pub. Dec. 6,
2007), Moritsu et al. (US 2002/0049670 A1; pub. Apr. 25, 2002)
(“Moritsu”), and Cohen et al. (US 2012/0208634 A1; pub. Aug. 16, 2012)
(“Cohen”). Final Act. 6–11.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has not persuaded us
of error.
Rejection under 35 U.S.C. § 101
The Examiner determined that the claims are directed to “healthcare
payment collection,” which is a fundamental economic practice and,
accordingly, constitutes an abstract idea. Final Act. 2; Ans. 4–5; Alice Corp.
v. CLS Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-step framework
“for distinguishing patents that claim laws of nature, natural phenomena, and
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abstract ideas from those that claim patent-eligible applications of those
concepts”). Further, the Examiner found that additional elements in the
claims merely constituted conventional steps performed on a generic
computer, and therefore did not amount to significantly more than the
abstract idea. Final Act. 2–5; Ans. 4–5. Accordingly, the Examiner
concluded that the claims constitute ineligible subject matter.
Appellant argues that the claims “recite a specific way to implement
initiation of payment of healthcare provider bills,” and analogizes the
invention to highway “[t]oll collection technologies.” Br. 15–16. Appellant
argues the specific payment structure of the invention is not an abstract idea.
Further, according to Appellant, the unique “pay command string [and] pay
command rule” enhance capabilities of social media platforms, and therefore
constitute additional elements that make the claims patent-eligible even if
they also recite an abstract idea. Br. 16–18.
After the Brief was filed and Answer mailed in this case, the USPTO
published “Revised Subject Matter Eligibility Guidance” synthesizing case
law and providing agency instruction on the application of § 101. See
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we must look to
whether a 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) (“Step 2A, Prong One”); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(“Step 2A, Prong Two”).
See 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and 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 id. at 56 (collectively “Step 2B”).
We begin our de novo review with Step 2A, Prong One of the
Guidance, as applied to Appellant’s claim 1.2 Claim 1 recites the following
steps: (1) “identifying” a “social media profile” which includes
“authorization” for a healthcare provider to access messages (i.e., data);
(2) “intercepting” (i.e., receiving) messages that include a “pay command
string”; (3) “identifying” a healthcare payment bill; (4) “applying” a pay
command “rule”; (5) “generating” a payment trigger instruction; and (6)
“initiating” a payment transaction. Br. 22–23 (Claims Appendix). Upon
reviewing the foregoing steps, we agree with the Examiner’s determination

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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that the recited steps merely constitute the idea of online healthcare
payment, which is a fundamental economic practice. The steps constitute a
fundamental economic practice because each of the foregoing steps either
recites collecting data regarding a user, sending or receiving data related to
healthcare payment, processing that data according to rules (not specifically
recited), or initiating the healthcare payment.
Accordingly, we determine that, like the claims to hedging in Bilski,
and the claims to mitigating settlement risk in Alice, claim 1 recites a
fundamental economic practice, which is one of the certain methods of
organizing human activity deemed to be an abstract idea under the
Guidance. See Bilski v. Kappos, 561 U.S. 593 (2010); Alice, 573 U.S. at
208.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellant argues that claim 1 recites a
“technical improvement” analogous to improvement of highway toll
collection systems using computerized systems, and similar to the claims
held patent eligible in DDR and Enfish. Br. 16–17 (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” See Guidance Section III. Appellant,
however, does not explain, and we do not discern, any improvement in
technology or computers from the claimed invention. Compare DDR, 773
F.3d at 1258 (“[T]he claims at issue here specify how interactions with the
Internet are manipulated to yield a desired result––a result that overrides the
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routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.”). The claims in Enfish were directed to a “specific
improvement to the way computers operate,” i.e., an improved database
configuration that permitted faster searching for data. Enfish, 822 F.3d
at 1330–33, 1336. Appellant does not describe an advance in hardware or
software that, for example, causes a computer to operate faster or more
efficiently. Similarly, the claims in DDR were “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” See DDR, 773 F.3d at 1257.
Appellant’s claim 1, in contrast, recites a healthcare payment method
that merely uses generic computing elements. See e.g., Spec. ¶¶ 16, 36,
369–372, 382, 384. The Specification, for example, explains that the
invention may be implemented on a “wide variety of different
communications devices and technologies,” including but not limited to
“terminal computers, work stations, servers, cellular telephony handsets,
smart phones, PDAs, and/or the like.” Id. ¶ 36. The Specification further
describes generic elements of a computer system, including a clock, CPU,
processors, ROM, RAM, various input/output devices, and integrated
circuits. Id. ¶ 369–372.
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites healthcare payment by collecting profile data,
providing “access” to particular providers, and receiving and processing user
instructions for payment. Br. 22–23 (Claims Appendix). Reciting a result-
oriented solution that lacks any details as to how the computer performed the
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modifications is the equivalent of the words “apply it.” Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2017)
(citing Elec. Power Grp., LLC, v. Alstom S.A., 830 F.3d 1350, 1356 (Fed.
Cir. 2016) (cautioning against claims “so result focused, so functional, as to
effectively cover any solution to an identified problem”)); see also
CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
(mere data gathering does not make a claim patent eligible). The data
gathering and processing steps in claim 1 do not add meaningfully to the
recited fundamental economic practice.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites an online healthcare payment method facilitated by
various data gathering and data processing steps. See supra. We agree with
the Examiner’s finding that simply using standard computer elements (as
described in the Specification, see supra) to implement rules for healthcare
payment through a social media platform (e.g., website) is well understood,
routine, and conventional. Ans. 5–6. As discussed above, the Specification
explains at length that the invention is implemented on standard,
conventional computing elements. Spec. ¶¶ 16, 32, 36, 369–372. Although
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Appellant asserts that the claims recite a “novel” configuration to “enable
the social media platform to have healthcare payment capabilities,” Br. 13,
Appellant does not rebut the Examiner’s findings or identify any
unconventional elements, and we discern none. See supra. To the extent
Appellant implies that it is a particular algorithm, not the hardware, that
constitutes “something significantly more” in claim 1, such elements are not
recited in claim 1.
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter. Appellant does not argue
any of the remaining claims separately from claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). We, therefore, sustain the rejection of claims 1–16, 19,
and 20 under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 103(a)
Appellant argues the Examiner erred in finding the prior art teaches or
suggests “intercepting . . . social message post requests communicated by
the user on the social media platform,” wherein the requests “include a pay
command string,” as recited in claim 1. Br. 19–20. Appellant argues that
Smith is merely a payment portal web site, not a social media platform, and
Moritsu and Cohen fail to cure the deficiencies of Smith. According to
Appellant, Cohen teaches social media information sharing, but nothing
about applying payment processing to the invention, and Moritsu teaches an
electronic payment system unrelated to social media. Br. 20–21. We,
however, are unpersuaded of error.
As the Examiner finds, Smith teaches a “website” accessible to a
patient, healthcare provider, and healthcare payer (insurer), through which
the patient can provide payment instructions (i.e., a pay command string) by
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entering a message (i.e., post). Smith ¶¶ 8, 35; Ans. 6. Although Smith does
not describe the website as a “social media platform,” we agree with the
Examiner’s finding (as supported by Appellant’s Specification) that the
interface of a social media platform is (or can include) a website, e.g.,
“Facebook” or “Twitter.” Ans. 6; Spec. ¶ 32, Fig. 14A. As the Examiner
finds, Cohen teaches that social media applications such as “Facebook,”
“Twitter,” and “LinkedIn” are implemented on “websites that are configured
to permit users to post or otherwise transmit information . . . in near real-
time.” Cohen ¶ 24.
As the Examiner finds, the “simple substitution” of any of Cohen’s
social media websites for the website taught in Smith would yield a
“predictable” result to one of ordinary skill in the art, and teaches or
suggests the disputed limitation of claim 1. Ans. 6. Appellant does not
point to any evidence of record that the resulting arrangements of the cited
references were “uniquely challenging or difficult for one of ordinary skill in
the art” or “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418–19 (2007)). The
Examiner’s findings are reasonable because the skilled artisan, who is “a
person of ordinary creativity, not an automaton,” would “be able to fit the
teachings of [the references] together like pieces of a puzzle” because both
Smith and Cohen rely on a website as an interface for accepting user input.
KSR, 550 U.S. at 420–21. As the Examiner finds, applying the wide range
of uses for social media websites as taught in Cohen, to the healthcare
payment website in Smith, would have the predictable result of using a
social media website to submit healthcare payment information. Ans. 6.
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Thus, we are persuaded the claimed subject matter exemplifies the principle,
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1, as well as the obviousness rejection of the remaining claims, which
were not argued separately.
DECISION
We affirm the Examiner’s decision rejecting claims 1–16, 19, and 20.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED