Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardNov 8, 201712875855 (P.T.A.B. Nov. 8, 2017) 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. 12/875,855 09/03/2010 Andrew Dali Chen P2395.10162US03 1056 132897 7590 11/13/2017 Maschoff Brennan/ PayPal 1389 Center Drive, Ste 300 Park City, UT 84098 EXAMINER VIZVARY, GERALD C ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 11/13/2017 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): docket @ mabr. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW DALI CHEN, BRIAN ANDREW PHILLIPS, CHAD MEREDITH HURLEY, DANTLEY DAVIS, PAUL ARTHUR MARTIN, and YU PAN Appeal 2015-0046741 Application 12/875,855 Technology Center 3600 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1—20. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates generally to facilitating payment transactions between users of a payment system. Spec. 12. 1 The Appellants identify eBay Inc. as the real party in interest. Appeal Br. 2. Appeal 2015-004674 Application 12/875,855 Claim 1 is illustrative: 1. A payment system, comprising: a database to store data for a plurality of payment transactions for two or more items provided by two or more providers, the plurality of payment transactions requested by at least one requestor of the two or more items; and a transaction aggregation engine configured to select a first set of payment transactions from the plurality of payment transactions as a first aggregated group based on determining that each of the first set of payment transactions is associated with a first provider selected from the two or more providers, to select a second set of payment transactions from the plurality of payment transactions as a second aggregated group based on determining that each of the second set of payment transactions is associated with a second provider selected from the two or more providers, and to present, via a user device, the at least one requestor with the first and second aggregated groups such that the first set of payment transactions are distinguished from the second set of payment transactions at least with respect to provider information. Claims 1—20 are rejected under 35 U.S.C. § 101 as reciting ineligible subject matter in the form of an abstract idea. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable over O’Leary (US 2002/0077978 Al, pub. June 20, 2002) and Clemens (US 2002/0111915 Al, pub. Aug. 15, 2002). We AFFIRM. II. ANALYSIS A. Rejection under 35 U.S.C. $ 101 1. Overarching Legal Framework An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The 2 Appeal 2015-004674 Application 12/875,855 Supreme Court, however, has long interpreted § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78—79 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 (“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.”); 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 . . . .”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978) (“Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) (“They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals.”). In determining what a claim is “directed to,” our reviewing court has cautioned as follows: 3 Appeal 2015-004674 Application 12/875,855 [Describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule. See Alice, 134 S. Ct. at 2354 (noting that “we tread carefully in construing this exclusionary principle [of laws of nature, natural phenomena, and abstract ideas] lest it swallow all of patent law”); cf. Diamond v. Diehr, 450 U.S. 175, 189 n. 12, 101 S. Ct. 1048, 67 L.Ed.2d 155 (1981) (cautioning that overgeneralizing claims, “if carried to its extreme, make[s] all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious”). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). The following method is then used to determine whether what the claim is “directed to” is an abstract idea: [T]he decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided. See, e.g.,Elec. Power Grp., 830 F.3d at 1353—54. That is the classic common law methodology for creating law when a single governing definitional context is not available. See generally Karl N. Flewellyn, The Common Faw Tradition: Deciding Appeals (1960). This more flexible approach is also the approach employed by the Supreme Court. See Alice, 134 S. Ct. at 2355—57. We shall follow that approach here. Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (footnote omitted). If the claim is “directed to” a patent-ineligible abstract idea, we then consider the elements of the claim—both individually and as an ordered combination—to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an “inventive concept”—an element or 4 Appeal 2015-004674 Application 12/875,855 combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. 2. Analysis We are not persuaded by the Appellants’ arguments that claims 1—20 do not recite an abstract idea in the form of a fundamental economic practice, because, according to the Appellants, the claims instead are directed to “a system configured to perform a specific set of operations,” and because the Examiner has not provided “substantial evidence” in support of the rejection. Reply Br. 2—8. We will address each argument in turn. i. What the Claims are “Directed to ” The Examiner asserts the claims are “directed to an abstract idea, specifically obtaining data for payment transactions, aggregating payment transactions by groups of providers and presenting a requestor with the groups distinguishing the payments of the first and second groups.” Ans. 2— 3 (emphasis omitted). The Appellants disagree, asserting the following: Instead, independent claim 1 is directed to a system configured to perform a specific set of operations pertaining to not only “storing] data for a plurality of payment transactions for two or more items provided by two or more providers, the plurality of payment transactions requested by at least one requestor of the two or more items” but also “selecting] a first set of payment transactions from the plurality of payment transactions as a first aggregated group based on determining that each of the first set of payment transactions is associated with a first provider selected from the two or more providers” and “presenting] . . . the at least one requestor with the first and second aggregated groups such that the first set of payment transactions are distinguished from the second set of payment transactions at least with respect to provider information.” Reply Br. 8 (emphasis added). 5 Appeal 2015-004674 Application 12/875,855 We begin our analysis of what the claims at issue here are “directed to” with express claim language. For example, independent method claim 12 recites accessing data about “payment transactions” for a single “requestor” from a data store, and then selecting groups of payment transactions, where within each group, the “provider” is the same entity. In evaluating the express claim language, we discern that it would be helpful to further construe certain claim terms, namely, “payment transaction,” “requestor,” and “provider.” Accordingly, to aid in those constructions, we turn to the Specification. Beginning with “payment transaction,” the Specification does not specifically use this term. The Specification, however, does describe the claimed invention as directed to facilitating “payment in satisfaction of a payment obligation imposed by a transaction.” Spec. 16. The Specification also describes “an automatic payment process with respect to at least a subset of the purchase transactions.” Id. We, therefore, construe “payment transaction” as a purchase transaction from which arises an obligation to pay. The Specification also does not specifically use either of the terms “requestor” and “provider.” The Specification does, however, describe comparing retrieved transaction records for “identifying purchase transactions under which a user 20 has payment obligations, and for which no payment is recorded.” Spec. 136. We, thus, construe the term “requestor” to encompass not only a party requesting transaction records, as claimed, but also the party that incurred the payment obligation of each transaction record, i.e., the buyer who has an obligation to pay for the purchase. The Specification also describes that it “determines whether any 6 Appeal 2015-004674 Application 12/875,855 of the multiple transactions previously identified as having outstanding payment obligations require payment to a common user or entity (or payee). This determination is made by, for example, identifying records with outstanding payment obligations and reflecting a common seller user identifier.” Spec. 148. We, therefore, construe “provider” as being a seller, who is also a payee under the payment obligations arising from the grouped purchased transactions. Finally, the Specification describes its overall system as operating to “identify transactions for which records exist within the transaction table 40 for which an unsatisfied and extant payment obligation exists.” Spec. 137. Based on all of the above, we construe the recited data about “payment transactions” as invoice data from a supplier about purchase transactions for which a payment obligation is unmet. Accordingly, when all of the above is considered in the aggregate, we determine that independent claim 12 is directed to “sorting invoices into groups by seller.” We consider each limitation of independent claim 12, discern that they are consistent with this determination, and further discern that our determination is not an overgeneralization of the type cautioned against in Enfish. Furthermore, the dependent claims additionally refine details about the transactions, such as being unpaid or in a particular currency, and provide functions to take against the unpaid invoices, such as paying or removing them, paying from particular accounts, including shipping insurance costs, and determining how many invoices or groups are concurrently displayed. We discern, however, that the dependent claims do not alter our above determination as to what the independent claim 12 is 7 Appeal 2015-004674 Application 12/875,855 “directed to.” We also determine that our above analysis applies equally to independent claims 1 and 15, and their respective dependent claims. Returning to the Examiner’s and the Appellants’ positions, we see little substantive difference between our determination and the Examiner’s assertion that claims are directed to “obtaining data for payment transactions, aggregating payment transactions by groups of providers and presenting a requestor with the groups distinguishing the payments of the first and second groups.” By contrast, we are unclear as to the relevance of the Appellants’ assertion that “independent claim 1 is directed to a system configured to perform a specific set of operations” (Reply Br. 8), in that the Examiner’s formulation of what the claims are directed to does include a specific set of operations, namely, obtaining, aggregating, and presenting payments. Accordingly, we are unpersuaded of Examiner error in this regard. ii. Whether What the Claims are “Directed to ” is a Fundamental Economic Practice The Examiner asserts as follows: Here, Claims 12—19 have been found to be directed to an abstract idea, specifically obtaining data for payment transactions, aggregating payment transactions by groups of providers and presenting a requestor with the groups distinguishing the payments of the first and second groups. This is a fundamental economic concept. Ans. 2—3. Fundamentally, the Appellants take issue with the Examiner’s failure to provide evidence in support of their determination as to what is a “fundamental economic concept.” Reply Br. 2—10. In support of their position, the Appellants assert that “the Alice and Bilski Courts sought out and found authoritative documentation to show that an abstract idea in a 8 Appeal 2015-004674 Application 12/875,855 claim was, in fact, a fundamental economic practice long prevalent in our system of commerce.” Reply Br. 3. While at times we may agree that it may be helpful to cite evidence in support of the Examiner’s assertion, we are unpersuaded that is the case here. The Appellants do not identify any disputed facts, nor do they explain how extrinsic evidence potentially bears on the ultimate legal issue. Absent any suggestion of a factual dispute on which the legal question of subject-matter eligibility turn, we are unpersuaded that it is proper, or appropriate, to require the Examiner to submit evidence in the manner set forth above. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon.”). As indicated above, the instant claims are directed to “sorting invoices into groups by seller.” We have little difficulty in agreeing with the Examiner that one familiar with accounts payable systems would have understood that “sorting invoices into groups by seller” are a common practice in many industries, where a remittance advice2 is normally enclosed to list the invoices that are included in the single remitted payment. See, e.g., Spec. H3^4 (“[A] purchase transaction may impose payment obligations on one or more of the parties to a purchase transaction. . . . Where a particular user has engaged in multiple purchase transactions, 2 What is Remittance Advice? Online Accounting Software j e-conomic, https:// www.revi so, co m/accoimtingsoftware/accounting-words/remittance- advice (last visited Nov. 2, 2017) (“Remittance advices are notes to suppliers sent from their customers to let them know that they have paid their invoices. Remittance advices can include items like invoice numbers, invoice amounts and text notes,”). 9 Appeal 2015-004674 Application 12/875,855 utilizing one or more transaction systems, making payments for these multiple transactions can be cumbersome.”). We, thus, have no issue with the Examiner concluding that “sorting invoices into groups by seller” is a fundamental economic practice long prevalent in our system of commerce and, thus, patent-ineligible subject matter. Ans. 2—3. See also Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) (“routing email messages based on specific criteria (rules)” is patent ineligible subject matter); Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015) (“using organizational and product group hierarchies to determine a price” is patent ineligible subject matter); Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343 (Fed. Cir. 2014) (“1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” is patent ineligible subject matter), cert denied, 136 S. Ct. 119 (2015). ii. Whether the Claims Recite “Significantly More Addressing the second step of the Alice analysis, the Appellants only argument that the claims are patentable by being directed to “significantly more” than an abstract idea, is that “the arguments presented in Section IV of the Appeal Brief, showing that the claims are not rendered obvious by the cited art, are incorporated by reference here,” thus, allegedly showing the claim are “directed to ‘something more’ than an abstract idea in Part 2” of the Mayo test. Reply Br. 9-10. We are not persuaded by the Appellants’ arguments, which merely and conclusorily identify shortcomings in the cited prior art, without explaining why such shortcomings amount to “significantly more.” Id.', see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“[T]he addition of merely novel or non-routine 10 Appeal 2015-004674 Application 12/875,855 components to the claimed idea [does not] necessarily tum[] an abstraction into something concrete.”). Instead, we agree with the Examiner that “[although the claims do recite the use of a computer, i.e. one or more processors, that is nothing more than a generic computer, performing generic, well-understood and routine computer functions and nothing more would be required to implement the aforementioned abstract idea.” Ans. 3 (emphasis omitted). Independent method claim 12 recites that the claimed selecting step uses “one or more processors,” and independent “medium” claim 20 recites that the claimed steps are “executed by a processor.” The Specification describes that “exemplary computer system 200 includes a processor 202 (e.g., a central processing unit (CPU) a graphics processing unit (GPU) or both), a main memory 204 and a static memory 206, which communicate with each other via a bus 208.” Spec. 1 56. The claimed “processor(s)” are therefore merely a component of a general purpose computer, which does not satisfy the inventive concept. “[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm is beside the point.” DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations and quotation marks omitted). We find no meaningful distinction between independent method claim 12 and either independent system claim 1 or independent storage device claim 20; the claims all are directed to the same underlying invention. Nothing in claims 1—20 purports to improve computer functioning or “effect an improvement in any other technology or technical field.” Alice, 134 11 Appeal 2015-004674 Application 12/875,855 S. Ct. at 2359. Nor do claims solve a problem unique to the Internet. See DDR Holdings, 773 F.3d at 1257. The claims also are not adequately tied to “a particular machine or apparatus” because they merely rely on a general purpose computer. Bilski, 561 U.S. at 601. ii. Conclusion Because we are unpersuaded that the Examiner has erred in asserting that claims 1—20 are directed to a fundamental economic practice, and also are unpersuaded that anything in the claims adds an inventive concept, we sustain the Examiner's rejection of claims 1—20 under 35 U.S.C. § 101. B. Rejection under 35 U.S.C. $ 103(a) Independent claims 12 recites “presenting, via a user device, the at least one requestor with the first and second aggregated groups such that the first set of payment transactions are distinguished from the second set of payment transactions at least with respect to provider information.” We are persuaded by the Appellants’ argument that paragraph 50 of Clemens, cited by the Examiner as disclosing the aggregation of groups of invoices by biller, at pages 6—7 of the Final Action, does not disclose or suggest the claim language. Appeal Br. 9-11. Paragraph 50 of Clemens merely discloses customer, financial, and preference information about a user stored in a user profile or other database. See Clemens 1 50. We are persuaded also by the Appellants’ arguments that the additional citations to Clemens provided by the Examiner (see Ans. 6—7) do not disclose the selecting or displaying groups of transactions by payee, as claimed, because Clemens instead discloses only profile information, general rules, and gathering order information from multiple order systems to a single payment system. Reply Br. 13—14. We agree that cited 12 Appeal 2015-004674 Application 12/875,855 paragraphs 39, 48, and 63 of Clemens do no more than disclose basic profile information and stored generic rules (Clemens H 39, 48) and retrieval of order information from multiple order systems, in that “payment manager 20 may obtain order information from multiple order tracking systems and group it with payment information in a single location.” {Id. 1 63). Though it is possible that multiple orders could be from a single supplier, that possibility is not recited or required by Clemens’ system, which does not disclose grouping any such orders by biller, or displaying multiple orders from a single biller together, as claimed. Finally, we are persuaded by the Appellants’ arguments that the Examiner’s new assertions, that O’Leary discloses at least a portion of the claim language previously asserted to be disclosed in Clemens (see Ans. 5— 6), are incorrect because O’Leary instead discloses only a consolidation of multiple billers into a single billing provider’s system, not the grouping of transactions by provider, as claimed. Reply Br. 11—13. The first two cited paragraphs of O’Leary merely discuss, generally, a system to pay bills electronically online (O’Leary H 20, 25). O’Leary further discloses bill consolidation generally {Id. 1126), and “a central service provider [which] consolidates e-bills from many different billers” {Id. 1131, Fig. 7). Rather than grouping transactions from “many different billers,” the claims instead group multiple transactions from the same biller, which is thus not disclosed at the cited sections of O’Leary. For these reasons, we agree with the Appellants that the Examiner has failed to establish a prima facie case of obviousness of independent claims 1, 12, and 20 based on the cited sections of O’Leary and Clemens. For this 13 Appeal 2015-004674 Application 12/875,855 reason, we do not sustain the rejection of claims 1, 12, and 20, nor of dependent claims 2—11 and 13—19, rejected along with claims 1, 12, and 20. DECISION We AFFIRM the rejection of claims 1—20 under 35 U.S.C. § 101. We REVERSE the rejection of claims 1—20 under 35 U.S.C. § 103(a). 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). AFFIRMED 14 Copy with citationCopy as parenthetical citation