Ex Parte Baig et al

Patent Trials and Appeals Board

Mar 21, 2019

13774568 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/774,568 02/22/2013
20350 7590 03/25/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Aamer Ali Baig
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
90945-867357-012909US 1321
EXAMINER
POND, ROBERT M
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AAMER ALI BAIG, JAMES E. COWELL, PETER M. KARAS,
CHERYLL. NEOFYTIDES, MATTHEW F. GOLUB,
JAMES R. YODER, SUSAN M. MILBERGER, JEFF D. SHERRARD,
AMY M. DUNKER, JACKIE M. MACFARLANE,
ERIC L. PLATTE AND SUSAN F. ABRAHAMS
Appeal2018-000893
Application 13/774,568 1
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
LARRY J. HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 66-74 and 77-85, which are all claims pending in the
application. Appellants have canceled claims 1---65, 75, and 76. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Western Union Co.
Br. 2.
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Application 13/774,568
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
"computer-implemented financial transactions, and more particularly relate[]
to processing person-to-person payments and money requests using a
computer network." Spec. ,r 1.
Exemplary Claim
Claim 66, reproduced below, is representative of the subject matter on
appeal:
66. A method for transferring funds, the method
compnsmg:
receiving at a payment enabler computer system that
transmits and receives data over a network a communication
from a requestor computer device, wherein the communication
comprises a request to receive funds from one or more payors,
wherein the request includes identification information for the
one or more payors, and wherein the request includes data
entered using an electronically displayed form provided on the
requestor computer device;
sending by the money handler computer system an
invitation to a wireless payor computer device of the one or
more payors giving a notification of the request from the
requestor computer device;
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
July 3, 2017); Examiner's Answer ("Ans.," mailed Aug. 18, 2017); Final
Office Action ("Final Act.," mailed Jan. 30, 2017); and the original
Specification ("Spec.," filed Feb. 22, 2013). Appellants did not file a Reply
Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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receiving from the payor computer device an affirmative
response to the request, wherein the response includes data
entered using an electronically displayed form provided on the
payor computer device;
arranging by the payment enabler computer system for
the funds to be provided to a requestor from the payor.
Rejections on Appea/3
RI. Claims 66-74 and 77-85 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 7.
R2. Claims 66-74 and 77-85 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 10. 4
R3. Claims 66-74 and 77-85 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 11.
CLAIM GROUPING
Based on Appellants' arguments (Br. 4--5) and our discretion under 37
C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible subject
matter Rejection R3 of claims on the basis of representative claim 66.
3 The Examiner has withdrawn the 35 U.S.C. § 103(a) rejections. Ans. 2.
4 We herein reverse Rejection R2 of claims 66-74 and 77-85 for
indefiniteness as currently formulated. However, in the event of further
prosecution, we invite the Examiner's attention to the recitation of "the
money handler computer system" in the second limitation of claim 66 to
ensure proper antecedent basis has been provided. Although the Board is
authorized to reject claims under 37 C.F.R. § 4I.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
1. § 112, first paragraph, Rejection RI of Claims 66-74 and 77-85
Issue 1
Appellants argue (Br. 3) the Examiner's rejection of claim 66 under
35 U.S.C. § 112, first paragraph, as lacking written description support is in
error. These contentions present us with the following issue:
Did the Examiner err in rejecting claim 66 under§ 112, first
paragraph, as lacking written description support?
Analysis
Appellants argue the Examiner does not allege any particular claim
term in claim 66 as lacking written description support, in the rejection.
Br. 3.
We are persuaded by Appellants' arguments. We do not sustain the
Examiner's rejection because the Examiner fails to set forth a prima facie
case for the rejection of claim 66 (Final Act. 7-9) pursuant to the
requirements of 35 U.S.C. § I32(a). See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). We are left to speculate as to which claim term(s) in
claim 66 the Examiner finds lacks written description support.
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Accordingly due to the failure to set forth a prima facie case, we
reverse the Examiner's written description Rejection RI of claims 66-74
and 77-85 rejected under this rejection.
2. § 112, second paragraph, Rejection R2 of Claims 66-74 and 77-85
Issue 2
Appellants argue (Br. 4) the Examiner's rejection of claims 66, 79
and 85 under 35 U.S.C. § 112, second paragraph, is in error. These
contentions present us with the following issue:
Did the Examiner err in interpreting the limitation in claim 66 of
"requestor" under 35 U.S.C. § 112, second paragraph, as being indefinite?
Analysis
The Examiner concludes the term "requestor" recited in independent
claims 66, 79, and 85 is unclear and renders the claim indefinite. Final
Act. 10.
Appellants argue "no person of any skill in the art would read the
claims alone, much less in light of the specification, and not immediately
understand that a 'requestor' is a person requesting a transaction." Br. 4.
We conclude the Examiner erred in concluding claim 66 is indefinite
because the Examiner contrarily interprets the claim term "requestor" to be
synonymous with payee. See Ans. 4. The Specification further describes a
payee as requesting money from a payor which, in our view, provides
additional support for the definiteness of the claim term "requestor."
Spec. 5.
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Therefore, based upon the findings above regarding the Specification,
on this record, we are persuaded of error in the Examiner's conclusion the
term "requestor" is indefinite such that we do not sustain the Examiner's
indefiniteness rejection of independent claims 66, 79, and 85 and dependent
claims 67-74, 77, 78 and 80-84, which depend therefrom.
3. § 101, Rejection R3 of Claims 66-74 and 77-85
Issue 3
Under the USPTO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 66 patent-ineligible under
§ 101?
Analysis
The Examiner concludes the claims are drawn to abstract ideas, i.e., as
fundamental economic practices, certain methods of organizing human
activities, an idea of itself, and mathematical relationships/formulas. Final
Act. 11. Appellants traverse the Examiner's rejection and argue at least step
two of the Alice framework is satisfied by the claims. Br. 4. We review the
rejection de nova under the USPTO's Revised Guidance:
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
"Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo." SiRF Tech., Inc. v. Int'! Trade Comm 'n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
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An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.5
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 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. Kappas, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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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 "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 187; 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.").
However, the Federal Circuit has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1353-54 (Fed.
Cir. 2016) ( collecting cases). At the same time, "all inventions at some level
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embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Abstract ideas may include, but
are not limited to, fundamental economic practices, methods of organizing
human activities, and mathematical formulas or relationships. Alice, 573
U.S. at 217-221. Under this guidance, we must therefore ensure at step one
that we articulate what the claims are directed to with enough specificity to
ensure the step one inquiry is meaningful. Id. at 217 ("[W]e tread carefully
in construing this exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum 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.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
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Under the Revised 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); 6 and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP
§§ 2106.0S(a}-(c), (e}-(h)). 7
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 § 2106.0S(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. 8
See Revised Guidance.
Step 2A(i)-Abstract Idea
Informed by our judicial precedent, the recent Revised Guidance
extracts and synthesizes key concepts identified by the courts as abstract
6 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
7 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
8 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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ideas to explain that the abstract idea exception includes the following
groupings of subject matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
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Step 2A(ii)-Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) 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 seven identified "practical application" sections of the MPEP, 10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05([) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
10 See MPEP §§ 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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Step 2B - "Inventive Concept" or "Significantly More"
Under the Revised Guidance, it is possible that a claim that does not
"integrate" a recited judicial exception into a practical application under Step
2A(ii) is nonetheless patent eligible. For example, the claim may recite
additional elements that render the claim patent eligible even though a
judicial exception is recited in a separate claim element. 11 The Federal
Circuit has held claims eligible at the second step of the Alice/Mayo test
(USPTO Step 2B) because the additional elements recited in the claims
provided "significantly more" than the recited judicial exception ( e.g.,
because the additional elements were unconventional in combination). 12
Therefore, if a claim has been determined to be directed to a judicial
exception under Revised Step 2A, we must 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). 13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he 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).
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limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 14
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s).
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
14 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ).
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s ).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
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ANALYSIS
Step 1
Claim 66, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 66 is directed to "fundamental
economic practices; certain methods of organizing human activities; an idea
of itself; and mathematical relationships/formulas." Final Act. 11.
We conclude claim 66 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate whether claim 66 recites
an abstract idea based upon the Revised Guidance. We conduct our review
for abstractness de nova.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
"relates generally to computer-implemented financial transactions, and more
particularly relates to processing person-to-person payments and money
requests using a computer network." Spec. ,r 1 ( emphasis added).
Appellants' Abstract describes the invention as:
According to the invention, transferring money using a
computer network is disclosed. In one step, information is
saved on credit received for a first user (110) in a stored value
account on a server computer system (170). At the server
computer system (170), a request from the first user (110) to
send money to a second user (130) based on the stored value
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account is received. An electronic notification is sent from the
server computer (170) to the second user (130) to notify the
second user (130) of the request. A debit in the stored value
account of the first user (110) is created. The requested money
is sent to the second user (130) upon a receipt of a request at the
server computer (170) from the second user (130).
Spec. 38.
Claim 66 recites, in pertinent part, "[a] method for transferring funds,"
that includes the steps of:
(1) "receiving ... a communication from a requestor ...
[that] comprises a request to receive funds from one or more
payors."
(2) "sending ... an invitation to a ... payor ... giving a
notification of the request."
(3) "receiving ... an affirmative response to the request."
( 4) "arranging ... for the funds to be provided to a
requestor from the pay or."
Claims App'x.
We also determine that claim 66 recites a fundamental economic
practice as a certain method of organizing human activity that may also be
performed by pen and paper. This type of activity, i.e., requesting and
affirming the request for funds transfer and arranging for the funds transfer
as recited in each of limitations (1) through ( 4), for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
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performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). 15
Under the broadest reasonable interpretation standard, 16 we conclude
limitations ( 1) through ( 4) recite steps that would ordinarily occur when
requesting that funds be transferred from a payor to a payee. See Final
Act. 7. For example, communicating a request or invitation for payment to a
payor from a requestor or payee is an operation that generally occurs before
any transfer of funds is initiated. Further, affirming the request by the payor
and subsequently arranging for the funds to be provided to the requestor or
payee by the payor would typically conclude the funds transfer operation,
whether initiated person-to-person, on paper, or using a computer.
Thus, under Step 2A (i), we agree with the Examiner that claim 66 's
method for transferring funds is a fundamental economic practice. We
conclude claim 66, as a whole, under our Revised Guidance, recites a
15 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241.
16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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judicial exception of certain methods of organizing human activity, i.e., a
fundamental economic principle or practice, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which 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.
We find each of the limitations of claim 66 recite abstract ideas as
identified in Step 2A(i), supra, and none of the limitations integrate the
fundamental economic practice of requesting and providing funds transfer
into a practical application as determined under one or more of the MPEP
sections cited above. The claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea. Thus, on this record,
Appellants have not shown under the guidance of Manual of Patent
Examining Procedure section 2106.0S(a) ("Improvements to the Functioning
of a Computer or to Any Other Technology or Technical Field") or section
2106.0S(e)("Other Meaningful Limitations"). Nor do Appellants advance
any arguments in the Brief(s) that are directed to the Bilski machine-or-
transformation test, which would only be applicable to the method (process)
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claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and
2106.05( c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B - "Inventive Concept" or "Significantly More"
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B we
must "look with more specificity at what the claim elements add, in order to
determine 'whether they identify an "inventive concept" in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" (or an
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equivalent) with an abstract idea 17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 19
Evaluating representative claim 66 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
transferring funds into a patent-eligible application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he 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, 881 F.3d at 1368.
As evidence of the conventional nature of the recited "payment
enabler computer system," "network," "money handler computer system,"
and "wireless payor computer device" in method claim 66; and "payment
enabler computer system," "network," "wireless requestor computer
device," and "payor computer device" in system claim 79, the Specification
discloses:
The payor computer 120, the payee computer 140, and
the server hosting the payment enabler 170 may each have
typical features of a computer system, such as a processing unit,
17 Alice, 573 U.S. at 221-23.
18 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
19 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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a system memory containing random access memory (RAM)
and read only memory (ROM), and a system bus that couples
the system memory to the processing unit. The computer may
also include various memory storage devices, such as a hard
disk drive, a magnetic disk drive ( e.g., to read from or write to a
removable magnetic disk), and an optical disk drive (e.g., to
read from or write to optical media such as a CD-ROM). The
payor computer 120 and the payee computer 140 may also
comprise devices capable of wireless access to the Internet 150.
Further, the payment enabler 170 may be implemented with a
number of such computers interconnected by a network as is
well known in the art.
Spec. ,r 51.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants'
Specification, as quoted above. 20
Appellants argue:
Second, the claims also include specific limitations other
than what is well understood, routine, and conventional in the
field which confine the claims to particular useful applications,
another factor established by the USPTO Alice Revised
Guidance as constituting "significantly more." Specifically,
"sending by the money handler computer system an invitation
to a wireless payor computer device of the one or more payors
giving a notification of the request from the requestor computer
device[,]" has not been demonstrated as being well understood,
routine, and conventional in the field. Indeed, in the separate
2° Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Br. 5.
and distinct § 103 analysis of the claims, the Office has not
successfully demonstrated such recitations were known at all,
much less well-understood, routine, and conventional (which
terms by their very nature would seem to indicate an abundance
of easily applicable prior art references would be available).
In response, we note the Supreme Court emphasizes, "[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." Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court
further guides that "[ e ]ligibility and novelty are separate inquiries." Two-
Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a
particular claimed feature was novel does not "avoid the problem of
abstractness").
The Manual of Patent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words "apply it" ( or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
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"'more than simply stat[ e] the Liudicial exception] while adding
the words 'apply it"'. Alice Corp. v. CLS Bank, 573 U.S._,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 ( warning against a § 101 analysis that turns on "the
draftsman's art") ....
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
67 6 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that "apply it" in a
computer. Id.
MPEP § 2106.05(±) ("Mere Instructions To Apply An Exception").
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method for transferring funds that includes "a payment
enabler computer system," a "money handler computer system," a "wireless
payor computer device," and "an electronically displayed form provided on
the payor computer device," and which includes the recited "sending"
limitation ( claim 66) as argued by Appellants, and similarly for claim 79, is
simply not enough to transform the patent-ineligible abstract idea here into a
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patent-eligible invention under Step 2B. See Alice, 573 U.S. at 221
("[C]laims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention.").
We conclude the claims fail the Step 2B analysis because claim 66, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner's§ 101 rejection of independent claims
66, 79 and 85, and grouped claims 67-74, 77, 78, 80-84, not argued
separately, and which fall therewith. See Claim Grouping, supra.
CONCLUSIONS
(1) The Examiner erred with respect to the § 112, first paragraph,
Rejection RI of claims 66-74 and 77-85, and we do not sustain the
rejection.
(2) The Examiner erred with respect to the§ 112, second paragraph,
Rejection R2 of claims 66-74 and 77-85, and we do not sustain the
rejection.
(3) Claims 66-74 and 77-85 in Rejection R3 under 35 U.S.C.
§ 101 are directed to patent-ineligible subject matter, and we sustain the
rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 4I.50(a)(l).
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DECISION
We affirm the Examiner's decision rejecting claims 66-74 and 77-85.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
26