Ex Parte Hockridge et al

Patent Trial and Appeal Board

Jul 31, 2018

14246932 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/246,932 04/07/2014 Mary Hockridge
39290 7590 07/31/2018
DUANE MORRIS LLP - DC
505 9th Street
Suite 1000
WASHINGTON, DC 20004-2166
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.
G4 l 44-00227 7155
EXAMINER
WARDEN, MICHAEL J
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
07/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY HOCKRIDGE, DINO D'AGOSTINO, and
LAUREN VAN HEERDEN
Appeal2018-003648
Application 14/246,932 1
Technology Center 3600
Before THU A. DANG, LARRY J. HUME, and JOHN D. HAMANN,
Administrative Patent Judges.
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 1-15, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is The Toronto-
Dominion Bank. App. Br. 3.
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Application 14/246,932
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
a computer-based method and network for clearing cheque payments."
Spec. ,r 1.
Exemplary Claims
Claims 1 and 7, reproduced below, are representative of the subject
matter on appeal (emphases added to contested prior-art limitations):
1. A method of cheque payment clearing, the method
compnsmg:
a payment terminal generating an electronic
representation of a paper cheque, and providing a payee
financial institution server with the electronic cheque
representation, the electronic cheque representation identifying
at least a payment amount, a payor financial institution and a
payor account with the payor financial institution, the payment
amount being payable from the payor account in a first financial
currency, the payee financial institution server being associated
with a payee financial institution;
the payment terminal displaying thereon an indication of
an applicable service charge and an equivalent amount
comprising the payment amount converted to a second financial
currency, and providing the payee financial institution server
with confirmation of acceptance of the service charge and the
equivalent amount, the second financial currency being
different from the first financial currency;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 13, 2017); Reply Brief ("Reply Br.," filed Feb. 20, 2018); Examiner's
Answer ("Ans.," mailed Dec. 18, 2017); Final Office Action ("Final Act.,"
mailed July 7, 2017); and the original Specification ("Spec.," filed
Apr. 7, 2014).
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after receiving the electronic cheque representation and
the confirmation of acceptance, the payee financial institution
server electronically transmitting to a payor financial institution
server via a cheque clearing network a transaction origination
message including the payor account with the payor financial
institution, the payment amount, and the equivalent amount, the
transaction origination message requesting payment in the
equivalent amount, the payor financial institution server being
associated with the payor financial institution;
the payee financial institution server electronically
receiving from the payor financial institution server via the
cheque clearing network, in response to the transaction
origination message, a transaction response message confirming
the payor financial institution server posting to the payor
account a debit entry in the payment amount, and posting to a
payee account of the payee financial institution a credit entry in
the equivalent amount, the equivalent amount being payable
from the payee account in the second financial currency; and
the payment terminal receiving from the payee financial
institution server a confirmation of the posting of the credit
entry to the payee account.
7. A cheque processor comprising:
a network interface;
a database comprising a plurality of records each
associated with a respective payee account;
a computer processing system coupled to the network
interface and the database and being configured to:
(i) receive from a payment terminal an
electronic representation of a paper cheque, the
electronic cheque representation identifying at
least a payment amount, a payor financial
institution and a payor account with the payor
financial institution, the payment amount being
payable from the payor account in a first financial
currency;
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(ii) receive from the payment terminal
confirmation of acceptance of an applicable
service charge and an equivalent amount
comprising the payment amount converted to a
second financial currency, the second financial
currency being different from the first financial
currency;
(iii) electronically transmit to a payor
financial institution server, over a cheque clearing
network, via the network interface a transaction
origination message including the payor account
with the payor financial institution, the payment
amount, and the equivalent amount, the transaction
origination message requesting payment in the
equivalent amount, the payor financial institution
server being associated with the payor financial
institution;
(iv) electronically receive from the payor
financial institution server, over the cheque
clearing network, via the network interface, in
response to the transaction origination message, a
transaction response message confirming the
payor financial institution server posting to the
payor account a debit entry in the payment amount
and, in response to the transaction response
message, post to a payee account defined in the
database a credit entry in the equivalent amount,
the equivalent amount being payable from the
payee account in the second financial currency;
and
(v) provide the payment terminal with a
confirmation of the posting of the credit entry to
the payee account.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Fredrickson et al. ("Fredrickson") US 2004/0143621 Al July 22, 2004
Travis et al. ("Travis")
Lin et al. ("Lin")
Gilder et al. ("Gilder")
US 2009/0063316 Al Mar. 5, 2009
US 2010/0078471 Al Apr. 1, 2010
US 7,702,588 B2 Apr. 20, 2010
Rejections on Appeal
RI. Claims 1-15 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 7.
R2. Claims 1--4, 7-10, and 13-15 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Fredrickson, Travis,
and Lin. Final Act. 11.
R3. Claims 5, 6, 11, and 12 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over the combination of Fredrickson, Travis, Lin, and
Gilder. Final Act. 34.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 22--46) and our discretion
under 37 C.F.R. 4I.37(c)(iv), we decide the appeal of patent-ineligible
subject matter Rejection RI of claims 1-15 on the basis of representative
claim 1.
Based on Appellants' arguments (App. Br. 8-22), we decide the
appeal of obviousness Rejection R2 of claims 1--4, 7-10, and 13-15 on the
basis of representative claim 7.
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Remaining claims 5, 6, 11, and 12 in Rejection R3, not argued
separately or substantively, stand or fall with the respective independent
claim from which they depend. 3
ISSUES AND ANALYSIS 4
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).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to Rejection RI of claims 1-15 under§ 101 for the specific reasons
discussed below.
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4 We note this application was filed under a "Petition to Make Special
Under Accelerated Examination Program." In that Petition, subsection 1.b.
states "Applicant hereby agrees not to separately argue the patentability
of any dependent claim during any appeal in the application. Specifically,
the applicant agrees that the dependent claims will be grouped together with
and not argued separately from the independent claim from which they
depend in any appeal brief filed in the application (37 CPR
4I.37(c)(l)(vii))." Contrary to this agreement, we further note Appellants
present arguments at least with respect to dependent claims 4 and 10. See
App. Br. 19-22.
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However, we disagree with Appellants' arguments with respect to
Rejections R2 and R3 of claims 1-15 under§ 103 and, unless otherwise
noted, we incorporate by reference herein and adopt as our own: ( 1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's
Answer in response to Appellants' arguments.
We highlight and address specific findings and arguments regarding
claims 1 and 7 for emphases as follows.
1. § 101 Rejection RI of Claims 1-15
Issue 1
Appellants argue (App. Br. 22--46; Reply Br. 10-12) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Did the Examiner err in concluding claim 1 is directed to a judicial
exception, i.e., an abstract idea, without significantly more, and thus is
patent-ineligible under§ 101?
Analysis
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
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technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court 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., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
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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, an idea of
itself, and mathematical formulas or relationships. Alice, 134 S. Ct. at 2355-
57. 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 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
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, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step 1 -Abstract Idea
Our reviewing court has held claims ineligible as being 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., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
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apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. 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. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
The Examiner concludes, "[c]laims 1-15 are directed to the abstract
idea of cheque payment clearing." Final Act. 7. The Examiner further
concludes:
[The claim] steps describe the concept of cheque payment
clearing, which corresponds to concepts identified as abstract
ideas by the courts, such as intermediate settlement in Alice,
risk hedging in Bilski. All of these concepts relate to
fundamental economic practices in which monetary transactions
between people are managed. The concept described in claim 1
is not meaningfully different than fundamental economic
concepts found by the courts to be abstract ideas. As such, the
description in claims 1, 7, and 13 of cheque payment clearing is
an abstract idea.
Final Act. 8.
Appellants argue, "the Final Office Action fails to include sufficient
analysis or evidence to demonstrate that the invention of independent
claims 1, 7 and 13 is directed to the 'fundamental economic practice of
cheque payment clearing."' App. Br. 25. Along these lines, Appellants
further argue, "the Final Office Action oversimplifies each of the pending
claims and ignores both the elements of the claims and the sequence
performed by those claim elements." Id.
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In addition, Appellants also contend:
[T]he Final Office Action is devoid of any analysis explaining
why, when all the claim limitations of each claim are
considered in light of the specification, each claim as a whole is
still directed to a "fundamental economic practice of cheque
payment clearing". The Final Office Action also fails to identify
any of the steps that are allegedly involved in the alleged
"fundamental economic practice of cheque payment clearing"
or explain why when all the claim elements are considered as
an ordered combination, each claim corresponds to the alleged
"fundamental economic practice of cheque payment clearing".
Therefore, the limited "analysis" presented in the Final Office
Action is insufficient to demonstrate that the invention of
independent claim[ s] 1, 7, and 13 is directed to the
"fundamental economic practice of cheque payment clearing".
App. Br. 26.
In response, the Examiner states:
[T]he claims were directed to the concept of cheque payment
clearing. Examiner explained that the claimed steps of
"generating", "providing", "displaying" ... and "receiving"
describe the concept of cheque payment clearing. Examiner
determined Appellant's claims describe a fundamental
economic practice and compared this concept to those in Alice
and Bilski. By being directed to a fundamental economic
practice, Appellant's claims are directed to an abstract idea and
thus are a judicial exception.
Ans. 9.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 ( citation omitted).
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Turning to the claimed invention, claim 1 recites: "A method of
cheque payment clearing." Claim 1 (preamble). Method claim 1 's
limitations also require, inter alia, the steps of:
and
a payment terminal generating an electronic
representation of a paper cheque, and providing a payee
financial institution server with the electronic cheque
representation, the electronic cheque representation identifying
at least a payment amount, a payor financial institution and a
payor account with the payor financial institution, the payment
amount being payable from the payor account in a first financial
currency, the payee financial institution server being associated
with a payee financial institution
after receiving the electronic cheque representation and
the confirmation of acceptance, the payee financial institution
server electronically transmitting to a payor financial institution
server via a cheque clearing network a transaction origination
message including the payor account with the payor financial
institution, the payment amount, and the equivalent amount, the
transaction origination message requesting payment in the
equivalent amount, the payor financial institution server being
associated with the payor financial institution.
Appellants argue the "machine-or-transformation test" of Bilski5 is
satisfied by the claims. App. Br. 29-31.
5 The Examiner and the Appellants both refer to the "machine-or-
transformation" test associated with In re Bilski, 545 F.3d 943, 959-960
(Fed. Cir. 2008) (en bane). App. Br. 29-31; Reply Br. 11; Ans. 12. The
Supreme Court clarified in Bilski v. Kappas that the machine-or-
transformation test "is not the sole test for deciding whether an invention is a
patent-eligible 'process' under§ 101;" however, it remains a "useful and
important clue or investigative tool." Bilski v. Kappas, 130 S. Ct. 3218, 3221
(2010); see also Mayo, 566 U.S. at 76-77.
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We agree with Appellants' arguments and analysis that the claimed
subject matter of claim 1 satisfies both prongs of the machine-or-
transformation test, such that claim 1 is not directed to a judicial exception,
i.e., an abstract idea.
With respect to the first prong or "machine" portion of the Bilski test,
we agree with Appellants because claim 1 at least implicates use of "a
payment terminal" and a "cheque clearing network." See App. Br. 30-31.
More importantly, we agree with Appellants on the second prong, i.e.,
"transformation" portion of the Bilski test because "the sequence recited in
independent claim[ s 1 and] 7 operates on a paper cheque and transforms the
paper cheque into an electronic representation of the paper cheque, and
subsequently into a transaction origination message." App. Br. 31.
In support of this determination, and as the Specification discloses,
"[t]his document discloses a cheque payment clearing network, cheque
processor and associated cheque payment clearing method that can post
debit transactions in a first financial currency from cheques made payable in
a second financial currency different from the first financial currency."
Spec. ,r 6.
While conventional check [cheque] clearing arguably might appear to
be a fundamental economic practice, we conclude the claimed type of
activity is not an abstract idea based upon our analysis of the claim as a
whole and Appellants' arguments, in light of the Examiner's determinations
cited above.
Accordingly, on this record, and under step one of Alice, we disagree
with the Examiner's conclusion the claims are directed to an abstract idea.
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Because we determine the claims are not directed to a patent-ineligible
concept, we need not proceed to the "inventive concept" step.
Therefore, for essentially the same reasons argued by Appellants as
cited above, we reverse the Examiner's rejection of independent claim 1, and
also the rejection of independent claims 7 and 13. For the same reasons, we
also reverse the rejections of all claims 2---6, 8-12, 14, and 15 that variously
depend therefrom. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1--4, 7-10, and 13-15
Issue 2
Appellants argue (App. Br. 9-19; Reply Br. 2-9) the Examiner's
rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious over the
combination of Fredrickson, Travis, and Lin is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "cheque processor" that includes "a computer processing
system coupled to the network interface and the database and being
configured to," inter alia,
and
(iii) electronically transmit to a payor financial institution
server, over a cheque clearing network, via the network
interface a transaction origination message including the payor
account with the payor financial institution, the payment
amount, and the equivalent amount, the transaction origination
message requesting payment in the equivalent amount,
(iv) electronically receive from the payor financial
institution server, over the cheque clearing network, via the
network interface, in response to the transaction origination
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message, a transaction response message confirming the payor
financial institution server posting to the payor account a debit
entry in the payment amount and, in response to the transaction
response message, post to a payee account defined in the
database a credit entry in the equivalent amount,"
as recited in claim 7?
Analysis
Transaction Origination Message is Taught or Suggested
Appellants contend, "the Examiner provides neither an articulated
reasoning nor a rational underpinning explaining how the aforementioned
claim element is taught by the cited references, much less by the
combination of Frederickson, Travis, and Lin." App. Br. 10-11.
Appellants further assert the Examiner merely reproduced text from
cited portions of Fredrickson, but "does not identify the features identified in
the reproduced text passage allegedly correspond to this claim element, or
otherwise explain how the reproduced text corresponds to the
aforementioned claim element." App. Br. 11. "Although Fredrickson
discloses that the system 100 sends a cash letter to request payment from the
endpoint institution (see, e.g., Fredrickson, para. [O 157]), the cash letter does
not identify the account upon which each check is drawn, the payment
amount of each check, or an equivalent amount of the payment amount
converted to the financial currency of the depositing financial institution."
App. Br. 12.
Appellants also argue:
[T]he system of Fredrickson does not request a payment from a
payor financial institution server but instead, initiates a payment
on collection items, the second embodiment of Fredrickson
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does not teach a computer processing system configured to
"electronically transmit to a payor financial institution server,
over a cheque clearing network, via the network interface fl:
transaction origination message including the payor account
with the payor financial institution, the payment amount, and
the equivalent amount, the transaction origination message
requesting payment in the equivalent amount," as recited by
independent claim 7 ( emphasis added).
App. Br. 13. "Therefore, the Final Office Action is deficient since it does
not include, among other things, any articulated reasoning explaining why it
would be reasonable in light of the specification for the claim element
'transaction origination message ... requesting payment in the equivalent
amount" to include a SWIFT, fax or paper notification that initiates a
payment." Id. 6
Moreover, nothing in the specification remotely suggests
that the claim element "transaction origination message ...
requesting payment" should encompass a message that
performs the complete opposite function of initiating a
payment. Therefore, the claim construction advanced by the
Examiner is clearly contrary to the teachings of the
specification, and Frederickson fails to teach or suggest the
aforementioned claim element recited by independent claim 7.
App. Br. 14.
We first note, the test for obviousness is what the combined teachings
of the prior art would have suggested to the hypothetical person of ordinary
6 Appellants' argument is not persuasive of Examiner error because it is not
responsive to the rejection as articulated by the Examiner. Non-obviousness
cannot be established by attacking references individually where, as here,
the ground of unpatentability is based upon the teachings of a combination
of references. Keller, 642 F.2d at 426. Further, limitations not appearing in
the claims cannot be relied upon for patentability. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
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skill in the art. In re Keller, 642 F.2d 413,425 (CCPA 1981). Appellant has
not challenged the combinability of the teachings of Fredrickson, Travis, and
Lin.
As our reviewing court has held with respect to the combination of
references in an obviousness rejection, the relevant inquiry is whether the
Examiner has set forth II some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. 11 In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
The Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time of filing to modify the payment processing of the
Fredrickson to include not charging processing fees as taught
by Travis ( which would result in the posted amount being the
equivalent amount), since the claimed invention is merely a
combination of old elements and in the combination each
element would have performed the same function as it did
separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
Additional financial motivation includes not charging
processing fees allows a user to save money/not spend money
on processing payments.
Final Act. 25-26.
In support of the Examiner's finding, we note the Court stated in KSR,
11
[ t ]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results. 11
KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
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either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill .... [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
finds:
With respect to the combination including Lin, the Examiner further
It would have been obvious to one of ordinary skill in the art at
the time of filing to modify the payment processing of the
combined references to include confirmation message that a
check has been processed as taught by Lin, since the claimed
invention is merely a combination of old elements and in the
combination each element would have performed the same
function as it did separately, and one of ordinary skill in the art
would have recognized that the results of the combination were
predictable. Additional financial motivation includes providing
a confirmation message will alert a payee when funds have
been deposited in their account.
Final Act. 27. We determine these findings of motivation meet the
articulated reasoning and rational underpinning requirements of KSR, cited
above.
Additionally, the Examiner finds, under the broadest reasonable
interpretation of this contested limitation, Frederickson teaches or suggests
this limitation because "any electronic communication (containing the
specified information) to a payor financial institution that requests payment
would read on the transaction origination message." Ans. 4--5.
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Moreover, Appellants have not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Transaction Response Message is Taught or Suggested
Appellants contend (App. Br. 17-18) Lin does not teach or suggest
the second contested limitation of claim 7, i.e.,
(iv) electronically receive from the payor financial
institution server, over the cheque clearing network, via the
network interface, in response to the transaction origination
message, a transaction response message confirming the payor
financial institution server posting to the payor account a debit
entry in the payment amount and, in response to the transaction
response message, post to a payee account defined in the
database a credit entry in the equivalent amount ....
In response, the Examiner finds the combination of Frederickson and
Lin teaches this limitation, because "Frederickson teaches the actions of
crediting the payee account in the equivalent amount and debiting the payor
account in the payment amount." Ans. 6 ( citing Frederickson ,r,r 17 6, 181 ).
And,
Lin teaches the act of sending a confirmation message that a
transaction has been processed. This confirmation message
would read on a transaction response message ( that confirms
that a particular transaction occurred). When the two references
are combined, the result is a transaction where a payor account
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is debited, a confirmation message/transaction response
message would be sent confirming that the debiting, and a
payee account is credited.
Ans. 6. The Examiner further determined:
While Lin teaches the confirmation of a different underlying
transaction, it is the ability to confirm that a transaction
occurred which is being incorporated into Frederickson.
Whatever the underlying transaction is ( e.g., deposit,
withdrawal, balance transfer, debiting an account in one
currency, crediting an equivalent amount, in a second currency,
into a second account) Lin teaches the ability to send a
confirmation message that the transaction was completed.
Ans. 7.
Thus, we agree with the Examiner's finding that the combination of
Frederickson and Lin teaches or suggests contested limitation (iv), as recited
in claim 7.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 7, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 7, and grouped claims 1--4, 8-10, and 13-15 which fall therewith. See
Claim Grouping, supra.
3. Rejection R3 of Claims 5, 6, 11, and 12
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 5, 6, 11, and 12 under§ 103 (see
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App. Br. 22), we sustain the Examiner's rejection of these claims.
Arguments not made are waived. 7
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-12) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner erred with respect to patent-ineligible subject
matter Rejection RI of claims 1-15 under 35 U.S.C. § 101, and we do not
sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1-15 under 35 U.S.C. § I03(a) over the
cited prior art combinations of record, and we sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 3 7
C.F.R. § 4I.50(a)(l).
7 Appellants merely argue, "claims 5, 6, 11, and 12 also depend from
respective ones of independent claims 1 and 7, and as such, include all
elements recited by their respective independent claims. As described
above, Frederickson, Travis, and Lin collectively fail to teach or suggest
each element recited by independent claim[s] 1, 7, and 13." App. Br. 22.
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DECISION
We affirm the Examiner's decision rejecting claims 1-15.
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
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