Ex Parte JAIN

Patent Trial and Appeal Board

Jul 30, 2018

13032722 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/032,722 02/23/2011
75127 7590 08/01/2018
DENTONS US LLP (CITI CUSTOMER NUMBER)
ATTN: Eric Sophir
P.O. BOX 061080
CHICAGO, IL 60606-1080
ManishJAIN
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.
CITI0385-US 7487
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
eric.sophir@dentons.com
patents.us@dentons.com
#sg.citi-docket@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANISH JAIN
Appeal2016-007309
Application 13/032,722 1
Technology Center 3600
Before JASON J. CHUNG, BETH Z. SHAW, and MICHAEL J. ENGLE,
Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to "using a template and extracting
information to generate a comprehensively populated payment file in an
industry standard format." Spec. ,r 1.
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1 Appellant states the real party in interest is Citicorp, N.A. App. Br. 1.
Appeal2016-007309
Application 13/032,722
1. A computer-implemented method for generating a payment
file, the method comprising:
receiving, by a payment configuration computer, a request
for a payment to a beneficiary;
receiving, by the payment configuration computer, a
request to pay the beneficiary using a template;
responsive to receiving the request, automatically
identifying, by the payment configuration computer, a single
template file from a plurality of template files in a database that
is associated with the beneficiary in the request, wherein the
template file has a plurality of business rules for completing a
plurality of data fields;
extracting, by the payment configuration computer,
information from a database to complete the data fields of the
identified template configured for the beneficiary; and
generating and transmitting, by the payment
configuration computer via a network gateway to a file exchange
server, a payment file by completing the data fields of the
identified template according to the plurality of business rules.
Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 2.
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as obvious over
the combination ofLovelett et al. (US 2007/0282743 Al; Dec. 6, 2007),
Miller et al. (US 2009/0089696 Al; Apr. 2, 2009), and Rolf et al. (US
2007/0219871 Al; Sept. 20, 2007). Final Act. 4.
ISSUES
1. Did the Examiner err in determining that claim 1 was directed
to ineligible subject matter without significantly more under § 101?
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Application 13/032,722
2. Did the Examiner err in finding Miller teaches or suggests
"generating and transmitting ... [a] file by completing the data fields of the
identified template according to the plurality of business rules," as recited in
claim 1?
ANALYSIS
§ 101
Section 101 defines patentable subject matter, but the Supreme Court
has "long held that this provision contains an important implicit exception"
that "[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) (quotation omitted). To determine patentable subject matter,
the Supreme Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
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character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "described step two of this analysis as a search for
an 'inventive concept'-i.e., an element or combination of elements that is
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself." Id. (quotation omitted).
Here, Appellant contends the Examiner erred on both steps. With
respect to step one, Appellant argues that "[t]he Examiner's asserted abstract
idea is not similar to an abstract idea previously identified by the courts."
App. Br. 5. The Examiner, however, determines that the claims are
"directed to generation and transmission of payment files from a template
according to business rules," which the Examiner says is "similar to other
concept[ s] found by the courts to be abstract such as comparing new and
stored information and using rules to identify options in SmartGene, and
obtaining and comparing intangible data in Cybersource." Ans. 2
(referencing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F.
App'x 950 (Fed. Cir. 2014) (unpublished); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)). Appellant does not address
those decisions directly, but does argue that the Examiner's stated abstract
idea "is a process rooted in computer technology and cannot be performed
by a human being." Reply Br. 4.
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We are not persuaded by Appellant's argument. Appellant provides
no explanation why templates would have been limited to or unique to
computers. For example, a paper copy of the Manual of Patent Examining
Procedure ("MPEP") includes numerous form paragraphs with bracketed
tags where data specific to each case should be filled in manually (i.e., a
template). A template on a computer may well be more efficient than a
template on paper or in the human mind, but the Federal Circuit is clear that
"relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible." OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); see also Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
("mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology").
At heart, claim 1 is about picking a template based on the entity
concerned ( a "beneficiary") and filling in the template to get a completed
document ( a "payment file"). The claim may be limited to a specific field of
use (paying a beneficiary), but the Supreme Court has instructed that
"limiting the use of an abstract idea to a particular technological
environment" is "not enough for patent eligibility." Alice, 134 S. Ct. at 2358
( quotation omitted). Thus, we are not persuaded the Examiner erred in step
one of the analysis.
Appellant further argues that certain dependent claims are limited to
XML files. Reply Br. 4; App. Br. 6. Yet the Federal Circuit recently
rejected a similar argument specific to XML: "While limiting the index to
XML tags certainly narrows the scope of the claims, in this instance, it is
simply akin to limiting an abstract idea to one field of use or adding token
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post solution components that do not convert the otherwise ineligible
concept into an inventive concept." Intellectual Ventures I LLC v. Erie
Indem. Co., 850 F.3d 1315, 1328-29 (Fed. Cir. 2017); see also id. at 1328
("merely using XML tags-as opposed to other kinds of tags-to build an
index is still abstract").
Therefore, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
Turning to step two, Appellant argues that the claims do not
"'monopolize' or 'tie up' the allegedly abstract idea." App. Br. 8. But the
Federal Circuit has "consistently held that claims that are otherwise directed
to patent-ineligible subject matter cannot be saved by arguing the absence of
complete preemption." Return Mail, Inc. v. US. Postal Service, 868 F.3d
1350, 1370 (Fed. Cir. 2017). "While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Id.
Appellant also argues that "use of any templates" and "extraction of
information from a database" are "significantly more than the routine steps
of generating a payment file." App. Br. 7. We are not persuaded by this
argument. First, use of a template is part of the abstract idea and therefore
cannot be "significantly more" than the abstract idea. Ans. 2 ("claim 1 ... is
directed to generation and transmission of payment files from a template
according to business rules"); see Alice, 134 S. Ct. at 2355. Second, the
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Federal Circuit has already held that "generic computer components such as
... [a] 'database' .... do not satisfy the inventive concept requirement."
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--
25 (Fed. Cir. 2016). For example, in one recent case, the Federal Circuit
held that "searching a database using an index" with "XML tags" did not
render the claims patent eligible. Intellectual Ventures I LLC v. Erie Indem.
Co., 850 F.3d at 1328. The same is true for the use of databases here.
We also are not persuaded by Appellant's unsupported attorney
argument that the claims are a "technical solution" to a "technical problem."
App. Br. 7-8; Reply Br. 4--5. As discussed above, templates are not
"technical" because automation of a manual process, by itself, does not
render a claim patentable. We agree with the Examiner that the additional
limitations of a "generic processor" and "a field of use" for "a particular
technological environment ... do not add significantly more." Ans. 3; see
also Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259
(Fed. Cir. 2016) ("The Supreme Court and this court have repeatedly made
clear that merely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claims any less
abstract."). Moreover, although Appellant argues that the "technical
solution" is "the template's mapping rules," App. Br. 7, we note that claim 1
merely recites (A) "the template file has a plurality of business rules"
without providing any technical solution for how the business rules are
derived and (B) "completing the data fields ... according to the plurality of
business rules" without providing any technical solution for how the
business rules are applied. "Indeed, the claim language here provides only a
result oriented solution, with insufficient detail for how a computer
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accomplishes it. Our law demands more." Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Moreover, the Specification provides little specificity regarding the
structural composition of technological elements. E.g., Spec. ,r 3 8 ("the
above-described technology can be implemented on known devices such as
a personal computer"). Thus, the Specification does not describe the system
as made up of special-purpose or specially-configured computer
components, but rather, as a general-purpose computer that includes generic
components. As a result, nothing recited by the claims "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers." Alice,
134 S. Ct. at 2360 (quoting Bilski, 561 U.S. at 610-11). Thus, Appellant has
not persuaded us that the claims provide a technical solution.
Appellant further argues that the claims involve a "non-conventional
and non-generic arrangement of known, conventional pieces." Reply Br. 5
(quoting BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1350 (Fed. Cir. 2016)). However, what Appellant alleges to be
"non-conventional" are either (A) not reflected in the claim language, such
as "mapping rules for all 136 data fields" rather than "only about 80,"2 or
(B) things the Federal Circuit has already held do not constitute
"significantly more," such as being "automated." See Reply Br. 4--5
(quotation omitted); see also Berkheimer v. HP Inc., 881 F.3d 1360, 1369
2 We note that dependent claim 9 further undercuts Appellant's argument
because it recites that "a plurality of data fields are optional," not
"mandatory."
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(Fed. Cir. 2018) ("Thus, [claim 1] does not recite any of the purportedly
unconventional activities").
Accordingly, we sustain the Examiner's rejection under§ 101 of
claim 1, and claims 2-20, which Appellant argues are patentable for similar
reasons. See App. Br. 9; 37 C.F.R. § 4I.37(c)(l)(iv).
§ 103
Claim 1 recites "the template file has a plurality of business rules for
completing a plurality of data fields" and "generating and transmitting ... a
... file by completing the data fields of the identified template according to
the plurality of business rules."
Appellant argues that "Miller's 'rules' are directed to a format and
placement of fields, but not how the data is used to complete those fields."
App. Br. 11.
We are not persuaded by Appellant's argument. The Examiner relied
on paragraphs 15 and 29 of Miller for teaching this limitation. Final Act. 5.
There, Miller discloses:
The template creation system enables a graphical selection of one
or more fields from within a database system. For example, the
database system may be an ERP system that provides a graphical
interface for selecting fields of data to be exported. The ERP
system provides the selected fields as a data source to a document
editing system ( e.g., a word processing or spreadsheet
application) that accepts data from external data sources. For
example, a user may use a word processing application with a
mail merge function to incorporate the fields provided by the
ERP system into a document. The user can then use the
document editing system to graphically lay out the fields in a
particular format using familiar document editing functions. For
example, the user may bold a particular field, justify the text of a
field, place a field in a table, and so forth. After the user has
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created a document that describes the desired format for the data,
the template creation system creates one or more template rules
that convert data exported from the database system to the format
of the document created by the user in the document editing
system.
Miller ,r 15 ( emphases added). Thus, although Miller does refer to "template
rules" for formatting, Miller also teaches completing the data fields
according to the respective data exported from the database system.
Similarly, the Specification of the present application explains that a
template can have some "business rules" for "formatting" and others for
"completing data fields." Spec. ,r,r 21-22. We, therefore, are not persuaded
the Examiner erred in determining that Miller teaches or suggests
"generating and transmitting ... a ... file by completing the data fields of
the identified template according to the plurality of business rules."
Appellant also recites multiple lines of claim limitations in claims 1,
12, and 17, yet fails to explain why those limitations are missing in the prior
art. See App. Br. 10-11. By regulation, "[a] statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim." 37 C.F.R. § 41.37(c)(l)(iv); see also In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art").
Accordingly, we sustain the Examiner's rejection under§ 103 of
independent claims 1, 12, and 17, and their dependent claims 2-11, 13-16,
and 18-20, which Appellant argues are patentable for similar reasons. See
App. Br. 12; 37 C.F.R. § 4I.37(c)(l)(iv).
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DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-2 0.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±). 3
AFFIRMED
3 In the event of further prosecution, the Examiner may wish to consider
whether claim 1 is indefinite under 35 U.S.C. § 112, second paragraph, due
to the limitation "responsive to receiving the request." We note that the first
two steps of the method each recite "receiving ... a request," so it may be
unclear which of the two instances of "a request" is being referred to by "the
request."
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