Ex Parte Cochran et al

Patent Trials and Appeals Board

Mar 29, 2019

13711233 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/711,233 12/11/2012
20350 7590 04/02/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Chris Cochran
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.
90945-842155 (019910US) 6586
EXAMINER
PRESTON, JOHN 0
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/02/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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 CHRIS COCHRAN and RODRIGO SADA
Appeal2018-002940
Application 13/711,233
Technology Center 3600
Before CARL W. WHITEHEAD JR., JESSICA C. KAISER and
DAVID J. CUTITTA II, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 are appealing the final rejection of claims 1-20 under
35 U.S.C. § 134(a). Appeal Brief 5-10. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
Introduction
The invention is directed to "methods of routing funds from a single
money transfer into at least two different financial transactions, and
1 Appellants identify The W estem Union Company as the real party in
interest. Appeal Brief 2.
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Application 13/711,233
determining how to coordinate and identify such resultant transactions."
Specification ,r 2.
Representative Claim
1. A system for dividing and identifying
financial transfers, wherein the system comprises:
a server configured to:
receive an indication that an amount of funds has
been received, wherein the indication includes a first restriction
on a mechanism that can be used to release the amount of
funds, wherein the first restriction on the mechanism used to
release the amount of funds comprises a prohibition of at least
one of the following:
a cash payout;
a pre-paid financial instrument;
an e-wallet payment;
a diversion to a new money transfer by
recipient;
a bill payment;
a diversion to a wire transfer; and
an Automated Clearing House transfer;
associate, in a storage medium, in response to receiving
the indication, a first identifier with the amount of funds;
receive a first request to release a first portion of the
funds at a money transfer agent location, the first request including the
first identifier;
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Application 13/711,233
determine that the money transfer agent location has a
second restriction on the mechanism that can be used to release the
amount of the funds, wherein the second restriction on the mechanism
used to release the amount of funds comprises a prohibition of at least
one of the following:
a cash payout;
a pre-paid financial instrument;
an e-wallet payment;
a diversion to a new money transfer by
recipient;
a bill payment;
a diversion to a wire transfer; and
an Automated Clearing House transfer;
associate, in the storage medium, a first record of release
with the first identifier;
associate, in the storage medium, in response to receiving
the first request, a second identifier with a second portion of the
funds;
receive a second request to release at least a portion of
the second portion of the funds, the second request including the
second identifier; and
based on the first and second restrictions, instruct the
money transfer agent location to release the first and second portion of
the funds using mechanisms that are in compliance with the first and
second restrictions.
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Application 13/711,233
Rejections on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final
Action 3--4; Answer 2-3.
Claims 1-20 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Weichert (US Patent Publication 2004/0064405 Al;
published April 1, 2004), Linehan (US Patent 6,327,578 Bl; issued
December 4, 2001) and Modi (US Patent Publication 2006/0006224 Al;
published January 12, 2006). Final Action 4--17; Answer 3-16.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed May 30, 2017), the Final Action (mailed
November 25, 2016), and the Answer (mailed October 6, 2017), for the
respective details.
35 U.S.C. § 101 rejection
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the claims are "directed to the abstract idea of
dividing and identifying financial transfers." Final Action 3. The Examiner
further determines, "[t]his is a concept involving human activity related to
commercial practices, similar to the concept found in Ultramercial v. Hulu
and WildTangent (2014 U.S[] App. LEXIS 21633 (Fed. Cir. 2014))." Final
Action 3--4; see Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 217 (2014)
( describing the two-step framework "for distinguishing patents that claim
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts").
After the mailing of the Answer and the filing of the Appeal Brief in
this case, the USPTO published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the
Memorandum, the Office first looks 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 § 2106.0S(a}-(c), (e}-(h) (9th
ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office 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.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellants argue the pending claims are not directed to ineligible
subject matter because:
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With regard to the second step of the Alice framework, the
Office Action alleges that "significantly" more is not present in
the claims. Specifically, the Office Action alleges that "the
additional limitation of a server is an attempt to limit the use of
the abstract idea to a particular technological environment" and
"the claims simply instruct the practitioner to implement the
abstract idea with routine conventional activity." Office Action,
p. 4. Appellant respectfully traverses at least because the claims
do include significantly more for at least two reasons identified
by the USPTO Subject Matter Eligibility guidance.
Appeal Brief 5.
Claim 1 specifically recites, "[a] system for dividing and identifying
financial transfers" wherein the server "receive[ s] an indication that an
amount of funds has been received, wherein the indication includes a first
restriction on a mechanism that can be used to release the amount of funds."
Claim 1 recites, "receive a first request to release a first portion of the funds
at a money transfer agent location" wherein "the first request including the
first identifier" and "determine that the money transfer agent location has a
second restriction on the mechanism that can be used to release the amount
of the funds." Claim 1 further recites, "receive a second request to release at
least a portion of the second portion of the funds, the second request
including the second identifier" and determines "based on the first and
second restrictions, instruct the money transfer agent location to release the
first and second portion of the funds using mechanisms that are in
compliance with the first and second restrictions."
These steps comprise fundamental economic principles or practices
and/or commercial or legal interactions, which is one of "certain methods of
organizing human activity," identified in the Memorandum, and thus an
abstract idea. Memorandum, Section I (Groupings of Abstract Ideas); see
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Specification ,r 2 ("[T]he various embodiments of the invention discussed
herein relate at least to methods of routing funds from a single money
transfer into at least two different financial transactions, and determining
how to coordinate and identify such resultant transactions."). Our reviewing
court has found claims to be directed to abstract ideas when they recited
similar subject matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir.
2012) (claims directed to abstract idea of processing loan information
through a clearinghouse). It is noted that Appellants do not argue that the
claims do not recite an abstract idea, instead choosing to argue the second
step2 of the Alice test. See Appeal Brief 5-6; see also Memorandum.
Therefore, we conclude the claims recite an abstract idea pursuant to Step
2 The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 573 U.S. at 217 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the
analysis, we determine whether the claims at issue are "directed to" a
judicial exception, such as an abstract idea. Alice, 573 U.S. at 217. If not,
the inquiry ends. Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed.
Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016). If the claims are determined to be directed to an abstract idea, then
we consider under step two whether the claims contain an "inventive
concept" sufficient to "transform the nature of the claim into a patent-
eligible application." Alice, 573 U.S. at 217 ( quotations and citation
omitted).
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2A, Prong One of the guidance. See Memorandum, Section III( A)( 1) (Prong
One: Evaluate Whether the Claim Recites a Judicial Exception).
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
"additional elements that integrate the judicial exception into a practical
application." See MPEP § 2106.0S(a)--(c), (e)--(h).
Appellants argue:
First, the recitations of the claims are not executed with
generic computers, and are instead executed with particular
machines. Specifically, claims 1, 13, and 19 recites particular
non-generic machines: "a server," "a server computer," "a
nontransitory machine readable medium," and "a processor"
which are each particularly configured, as specifically recited by
the claims and as further detailed by the specification, to perform
particular functions as also recited by the claims and detailed by
the specification.
Appeal Brief 5.
We do not find Appellants' arguments persuasive because the claims
utilize a computer system as merely a tool to divide and identify financial
transfers to different accounts. See Enfish, 822 F.3d at 1335-36 ("[W]e find
it relevant to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea ... the focus
of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database) or,
instead, on a process that qualifies as an 'abstract idea' for which computers
are invoked merely as a tool."). The claims do not recite an additional
element or elements that reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field. See
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Answer 2; Alice, 573 U.S. at 222 ("In holding that the process was patent
ineligible, we rejected the argument that 'implement[ing] a principle in some
specific fashion' will 'automatically fal[l] within the patentable subject
matter of§ 101. "' (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))).
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application and thus are directed to a judicial
exception. See Memorandum, Section III(A)(2) (Prong Two: If the Claim
Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is
Integrated Into a Practical Application).
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217-18 (quoting Mayo,
566 U.S. at 72-73). Appellants argue, "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 guidance as constituting
'significantly more.'" Appeal Brief 6. Appellants further argue:
Namely, while the alleged abstract idea is "dividing and
identifying financial transfers" (Office Action, p. 3), the above
recitations limit the scope of the claim's use of that alleged
abstract idea to specific circumstances in which both the release
mechanism and agent location for release of funds are restricted
to particular means. The claim does not remotely appear to
subsume the alleged abstract idea of dividing and identifying
financial transfers, but rather focuses on the more specific and
particular purpose of limiting fund release mechanism where
established by parties and locations involved with the
transaction. At least by inclusion of the above specific recitations
which are not well-understood, routine, and conventional in the
field, preemption of use of the alleged abstract idea is protected
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against, therefore further establishing "significantly more" under
the US PTO' s Alice guidance, in addition to the aforementioned
use of particular machines to implement the claims.
Appeal Brief 7.
We do not find Appellants' argument persuasive. We find the claims
do not includes a specific limitation or a combination of elements that
amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept'
cannot be the abstract idea itself'); see Final Action 4; see also Specification
,r,r 4--5.
Other than the abstract idea itself, the remaining claim elements only
recite generic computer components that are well-understood, routine, and
conventional. See Final Action 4--5; Specification ,r,r 3, 15, 30-35 and
Figure 3; Alice, 573 U.S. at 226.
Accordingly, we conclude that claims 1-20, argued together, are
directed to a fundamental economic practice, which is one of certain
methods of organizing human activity identified in the Memorandum and
thus an abstract idea, and those claims do not recite limitations that amount
to significantly more than the abstract idea itself. See Appeal Brief 9-10.
We sustain the Examiner's§ 101 rejection of claims 1-20.
35 U.S.C. § 103 rejection
Appellants contend, "claim 1 recites, and claims 13 and 19 similar[ly]
recite, that the first and second restrictions associated with the funds transfer
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and money transfer agent location, respectively, are limitations on the
financial channel in which funds can be distributed (i.e., a cash payout, a
pre-paid financial instrument, an e-wallet payment, etc.)." Appeal Brief 7-8.
Claim 1 recites "determine that the money transfer agent location has
a second restriction on the mechanism that can be used to release the amount
of the funds." Modi discloses, "the sender might give the recipient some
choice, by allowing the recipient to choose cash or a prepaid card when the
recipient arrives at the bank." Modi ,r 47.
The Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to combine the elements cited
in W eichert/Linehan with the elements as taught by Modi
because the claimed invention is merely a combination of old
elements, and in the combination each element merely would
have performed the same function as it did separately with a
reasonable expectation of success and predictable results.
Final Action 6.
Appellants contend:
Paragraph 40 of W eichert only discusses determining if a
partial shipment of goods has been made by a vendor before
funds are released to them. Paragraph 47 of Modi only relevantly
discusses that a sender of funds could specify if a recipient is
given a choice of funds disbursement means, but does not discuss
providing prohibitions.
Appeal Brief 9-10.
The Examiner finds, "Modi teaches a money transfer system wherein
a service provider allows a sender to choose from a pre-determined list of
fund delivery options (Modi: pgh 47)" wherein "[t]he service provider
imposes a restriction on the financial channel in which funds can be
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distributed by limiting the options for the sender to choose from during the
compilation of the pre-determined list" and therefore "[t]he sender imposes
an additional restriction on the financial channel in which funds can be
distributed by choosing an option from the pre-determined list." Answer 1 7.
The Examiner determines that "[i]n this way, two restrictions are placed on
the transfer, similar to the restrictions described in the claimed invention."
Answer 17.
Appellants surmise, "even if we assumed that specifying possible
means implies specifying prohibited means, nothing in the [ cited] portion of
Modi [] discusses prohibitions associated with a money transfer agent
location (as opposed to the possible and/or prohibited means specified by the
sender of Modi)." Appeal Brief 10. Appellants contend that paragraph 18
of the Specification discloses support for the disputed limitations -
"determine that the money transfer agent location has a second restriction on
the mechanism that can be used to release the amount of the funds" and
"based on the first and second restrictions, instruct the money transfer agent
location to release the first and second portion of the funds using
mechanisms that are in compliance with the first and second restrictions."
See Appeal Brief 2-3. Specification, paragraph 18 is reproduced below in
its entirety:
The sender may also provide instructions regarding receipt
of the money transfer by an intended recipient, and these
instructions may also be transmitted to server 110. For example,
the sender may dictate when, where, and how the intended
recipient may take delivery of funds. How a recipient may take
delivery of funds may include restrictions on the manner in
which the funds are received. For example, the restrictions may
limit the mechanism used to receive the funds to one or more of
a cash payout, a pre-paid financial instrument or card, a payment
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to an e-wallet, a diversion to a new money transfer by the
recipient, a bill payment, a diversion to a new wire-transfer by
the recipient, or an Automated Clearing House ("ACH") transfer.
Paragraph 18 fails to disclose anything distinctive about the money
transfer agent location that would support Appellants' proposed narrow
claim interpretation. Nor does paragraph 18 disclose anything that would
distinguish the disputed limitations over the cited art. Accordingly, we do
not find Appellants' arguments persuasive of Examiner error because the
combination of W elchert/Linehan/Modi discloses prohibitions associated
with a money transfer agent location. See Final Action 5---6. Subsequently,
we sustain the Examiner's obviousness rejection of independent claims 1, 13
and 19, as well as, dependent claims 2-12, 14--18 and 20, not argued
separately. See Appeal Brief 10.
DECISION
The Examiner's non-statutory subject matter rejection of claims 1-20
is sustained.
The Examiner's obviousness rejection of claims 1-20 is sustained.
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). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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